Ex Parte Conrado et al

Patent Trial and Appeal Board

Feb 24, 2014

10549885 (P.T.A.B. Feb. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CLAUDINE VIEGAS CONRADO,
FRANCISCUS LUCAS KAMPERMAN, and
GEERT JAN SCHRIJEN
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Appeal 2011-005486
Application 10/549,885
Technology Center 2400
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005486
Application 10/549,885

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-10 and 12-32. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
The invention is directed to “providing privacy in relation to
authorization certificates for digital content” (Spec. 1:3-4). Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of associating data with users, and
involving associations between user identifying information
and data, the method comprising:

concealing a user identity using concealing data in the
user identifying information,

wherein the concealing data remains fixed for reissued
associations,

such that it is possible to check for a given user identity
whether the association applies to it.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Micall

Alldredge
US 5,717,758

US 2007/0189542 A1
Feb. 10, 1998

Aug. 16, 2007

Takamichi Saito et al., Privacy Enhanced Access Control by SPKI,
Proc. 7th Int’l Conference on Parallel and Distributed Systems: Workshops,
301-306 (2000) (“Saito”).
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REJECTIONS
Claims 1, 2, 5-9, 12-19, 22-26, and 29-32 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Saito and Micall.
Claims 3, 4, 10, 20, 21, 27, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Saito, Micall, and Alldredge.

ANALYSIS
Appellants contend “Saito and Micall are not properly combinable,
and that the reasoning advanced by the examiner for the hypothetical
combination of these references to yield the subject matter of Applicants’
claims is not supportable” (Br. 10). Specifically, Appellants argue
“[c]onsidering the well-recognized and significant differences between PKI
and SPKI, the examiner’s hypothesis that one skilled in the art would modify
Saito (embodying SPKI) to include features of Micall (embodying PKI) is
not supportable” (Br. 14). That is,
Saito discloses a SPKI system specifically designed to permit
clients to verify certificates by themselves without use of a
server or third party. In contradiction to Saito, Micall discloses
a PKI system that requires use of a certificate authority, in
conjunction with a witness (intermediary). The proposed
modification of Saito to include an infrastructure using a third
party to verify certificates (according to Micall) would
contradict a primary operating principle of Saito to permit
clients to verify certificates without help of a server or third
party.

(Br. 15).
We disagree with Appellants’ argument (see Br. 9-16) that Saito and
Micall are not properly combinable.
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The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what
the combined teachings of those references would have
suggested to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner relies on
Saito’s infrastructure, and only relies on Micall for teaching and suggesting
reissuing valid certificates (Ans. 4, 13). In the Examiner’s proposed
combination, valid certificates would be reissued by Saito’s authorized
server (Ans. 14). Thus, there would be no need to physically combine
Micall’s infrastructure with that of Saito. Absent any evidence or persuasive
argument as to why the specific function of reissuing valid certificates as
taught by Micall could not be performed with Saito’s infrastructure per the
Examiner’s rejection, we are not persuaded that Saito and Micall are not
properly combinable.
We are also not persuaded by Appellants’ additional argument that the
“rationale advanced by the examiner for combining Micall and Saito does
not constitute ‘articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness’ as required by KSR [Int’l Co. v.
Teleflex Inc., 550 U.S. 398 (2007)]” (Br. 17). Appellants assert that
modifying Saito according to Micall’s more complex PKI key management
system “would increase processing overhead” in contravention to the
Examiner’s reason for combining the references (Ans. 17), which is to
“reduce processing overhead by reissuing a valid certificate instead of
generating a new certificate” (Ans. 4). However, as discussed above, the
Examiner proposes modifying Saito to perform the reissuing function
without physically combining Micall’s infrastructure with that of Saito. One
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of ordinary skill in the art would reasonably expect reissuing a valid
certificate with Saito’s infrastructure to save processing overhead as
compared to generating a new certificate with Saito’s infrastructure.
Accordingly, the Examiner has presented a reasonable motivation for
combining the references that is supported by a rational underpinning.
We are therefore not persuaded that the Examiner erred in rejecting
claim 1, and claims 2-10 and 12-32 not specifically argued separately.

CONCLUSION
The Examiner did not err in rejecting claims 1-10 and 12-32 under
35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1-10 and 12-32 is affirmed.
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). See
37 C.F.R. § 41.50(f).

AFFIRMED

msc