Ex Parte Colnot

Patent Trial and Appeal Board

Aug 27, 2014

11533030 (P.T.A.B. Aug. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte VINCENT CEDRIC COLNOT
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Appeal 2012-004535
Application 11/533,030
Technology Center 2400
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Before JOHNNY A. KUMAR, JOHN G. NEW, and
CATHERINE SHIANG, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-004535
Application 11/533,030

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 21, 23, 26, 29, and 52–55. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellant’s invention relates to electronic transactions carried out
over a network connection while ensuring identity security for the
transaction parties. See Spec. 1, ll. 15–17.
Representative Claim on Appeal
Claim 21 is exemplary with key disputed language highlighted:

21. A system enabling secure transacting over a network
comprising:
a network server having an application storing client
information and configured to activate a client for secure
transacting in the network, the client connecting to the server
through a network-connected digital appliance;
a software driver configured to perform authentication,
the software driver accessible to and executable by the network
server application;
a software applet configured to create a secure data
record and for managing transmission and update of the
contents of the record; and
a token comprising an encrypted text string, the token
stored on a data storage device coupled to the client’s digital
appliance, and also in a data repository coupled to the server;
wherein, upon a client seeking authorization from the
server, the server downloads the software applet and a
timestamp of the request time to the client, the applet executes
at the client, retrieves the token from the data storage device,
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concatenates the token file and the time stamp, hashes the result
creating the secure data record, sends the secure data record to
the server, and the server, executing the software driver,
compares the secure data record to a similarly hashed result of
the time stamp and token value taken from the data repository
coupled to the server, authorizing the client with a match.

Rejection on Appeal
The Examiner rejected claims 21, 23, 26, 29, and 52–55 under
35 U.S.C. § 103(a) as being unpatentable over Colnot (US 2004/0093496
A1, May 13, 2004), Bo (US 2005/0262573 A1, Nov. 24, 2005), and Kocher
(US 6,188,766 B1, Feb. 13, 2001). Ans. 4–21.

ISSUES AND ANALYSIS
Based on Appellant’s arguments in the Appeal Brief (Br. 11–14), the
principal and dispositive issue of whether the Examiner erred in rejecting
claims 21, 23, 26, 29, and 52–55 turns on whether the combination of
Colnot, Bo, and Kocher teaches or suggests “a software applet configured to
create a secure data record and for managing transmission and update of the
contents of the record,” as recited in independent claim 21.1
Appellant has presented several arguments as to why the combination
of the references does not teach or suggest the features recited in
independent claim 21. The Examiner has provided a comprehensive
response to each argument presented by the Appellant on pages 5 through 27
of the Answer. We have reviewed this response and concur with the
Examiner’s findings and conclusions.

1 Independent claim 52 was argued together with claim 21. Br. 13.
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We observe that no Reply Brief is of record to rebut such findings
including the Examiner’s responses to Appellant’s arguments. Therefore,
we adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken and (2) the reasons set forth by
the Examiner in the Examiner’s Answer in response to Appellant’s Appeal
Brief. We concur with the conclusions reached by the Examiner.
Appellant’s first argument is that paragraphs 237 and 238 of Bo do
not teach “a software applet configured to create a secure data record and for
managing transmission and update of the contents of the record” (hereinafter
“software applet” limitation). Br. 11. The Examiner finds, and we agree,
that paragraphs 242, 243, and 253 of Bo teach the software applet limitation.
Ans. 22.
Appellant’s next argument is that in Kocher “all time stamping of
documents occur at the receiving computer or via a request to a remote
device for the time stamp,” and that “Kocher fails to teach the actions taken
at the client, as claimed, or communication from the client to the server of
the hash result, or a comparison of the data at the server,” and thus, Kocher
would not be properly combinable with Colnot and Bo. Br. 13.
The Examiner finds “Kocher was cited to show that trusted time
stamping was a well known well established function in the art at the time of
invention was made” (Ans. 25), and “[w]hile the comparison for
authentication happens at the time of document retrieval, this is not seen as
stopping Kocher from teaching a well known time stamping technique
especially as Kocher is being used to demonstrate obviousness as [o]pposed
to anticipation.” Ans. 26. The Examiner also finds,
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It would have been obvious to one of ordinary skill in the
art at the time of invention was made to incorporate the trusted
time stamping techniques taught by Kocher in to the method of
Colnot and Bo et al. as a timestamping would be particularly
helpful in enhancing the integrity of a digital key/encryption
system as it provides an extra verification layer without adding
a disclosure of a key.
Ans. 11.
We agree with the Examiner’s findings because all of the features of
the structure in the secondary reference need not be bodily incorporated into
the primary reference, but consideration should be given to what the
combined teachings, knowledge of one of ordinary skill in the art, and the
nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA
1981).
In that regard, the Supreme Court has indicated that:
[It is error to] assum[e] that a person of ordinary skill
attempting to solve a problem will be led only to those elements
of prior art designed to solve the same problem. . . . Common
sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (citation omitted).
Furthermore, the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984). As such, Colnot and Bo would have been
adjusted to accommodate teachings from Kocher by one of ordinary skill in
the art. In particular, the combination as a whole would have taught one of
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ordinary skill in the art to enhance the integrity of the digital key/encryption
system.
For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claims 21 and 52 and dependent claims 23, 26, 29, and 53–55,
not separately argued by Appellant, is sustained.

CONCLUSION
The Examiner did not err in rejecting claims 21, 23, 26, 29, and 52–55
under 35 U.S.C. § 103(a) as being unpatentable over Colnot, Bo, and
Kocher.

DECISION
We affirm the Examiner’s decision to reject claims 21, 23, 26, 29, and
52–55.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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