Ex Parte Dutta

Board of Patent Appeals and Interferences

Nov 21, 2008

10103502 (B.P.A.I. Nov. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SANTANU DUTTA
____________

Appeal 2008-1456
Application 10/103,502
Technology Center 2400
____________

Decided: November 21, 2008
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Before JAMES D. THOMAS, JOSEPH L. DIXON, and JAY P. LUCAS,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-33. We have jurisdiction under
35 U.S.C. § 6(b).

We AFFIRM.

Appeal 2008-1456
Application 10/103,502

THE INVENTION
Appellant’s invented a system and method for secure handling of
stored-value data objects. An understanding of the invention can be derived
from a reading of exemplary claim 1, which is reproduced below.
1. A method in a communication device of securely
managing stored-value data objects, the method comprising:

receiving a stored-value data object comprising a value portion
and an authentication portion at the communication device;

performing, in a secure element comprising a portion of the
communication device, the steps of:

verifying the stored-value data object;

associating the stored-value data object with an index value
stored in the security element;

protecting the authentication portion of the stored-value data
object; and

generating a binding value that binds the value portion, the
authentication portion, and the index value; and

storing the binding value, the index value, the value portion as
clear text, and the protected authentication portion, together as a
processed stored-value data object in non-secure memory accessible
to the communication device.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Sasmazel US 6,032,260 Feb. 29, 2000

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Henderson US 2002/0188845 A1 Dec. 12, 2002
(filed May 17 ,2001)
Mankovich US 2003/0097338 A1 May 22, 2003
(filed February 3, 2000)
Nonaka US 2004/0267671 A1 Dec. 30, 2004
(eff. filing date Oct. 18, 2000)

REJECTIONS
Claims 1, 5-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Henderson in view of Mankovich further in view of
Sasmazel.
Claims 19-21, 25-29, 32, and 33 stand rejected under 35 U.S.C.
§ 103(a) as being anticipated by Henderson in view of Mankovich.
Claims 2-4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Henderson in view of Mankovich in view of Sasmazel and
further in view of Nonaka.
Claims 22-24, 30, and 31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Henderson in view of Mankovich and further in
view of Nonaka.
Rather than reiterate the conflicting viewpoints of the Examiner and
Appellant regarding the above-noted rejection, we refer to the Examiner's
Answer (mailed Jun. 25, 2007) for the reasoning in support of the rejections,
and to Appellant’s Brief (filed Apr. 17, 2007) and Reply Brief (filed Aug.
23, 2007) for the arguments thereagainst.

OPINION
In reaching our decision in this appeal, we have carefully considered
Appellant’s Specification and claims, the applied prior art references, and
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the respective positions articulated by Appellant and the Examiner. As a
consequence of our review, we determine the following:
Appellant’s main contention in the Brief and Reply Brief relates to the
proper interpretation of the claimed "binding value that binds the value
portion, the authentication portion, and the index value." (App. Br. 5-8 and
Reply Br. 6-9). Appellant contends that the claimed “binding value” should
be interpreted as used in the Specification. The Specification identifies that
the “binding value” restrains the bound components from being used with
more than one stored-value data object rather than merely being
concatenated or attached as the Examiner maintains at page 17 of the
Answer. We do not find Appellant’s argument to be persuasive of error in
the Examiner's interpretation. We find that those portions of the
Specification identified by the Appellant do not expressly define the
characteristics of the “binding value.” While the Specification at page 30
does identify various traits of the ESO (encrypted signed object), which is a
binding value, we do not find that the requisite steps to achieve that
disclosed level of “binding” are set forth in the instant claim language. To
agree with Appellant’s interpretation, we would be required to interpret the
claims by reading additional steps into the claim to achieve that level of
"binding." Here, we find that the language of independent claim 1 does not
necessarily require the “restraining” limitation. Therefore, we do not find
Appellant’s argument to show error in the Examiner's reasonable
interpretation of the claim and hence does not show error in the Examiner's
initial showing of obviousness.
Appellant contends that the Examiner's rejection ignores the claim
limitations of "protecting..." and " generating..." (App. Br. 8-10 and Reply
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Br. 2-5). Here, the Examiner further sets forth a more detailed explanation
responding to Appellant’s argument at pages 18-19 of the Answer. We find
the Examiner's reasoned explanation to further evidence the obviousness of
independent claim 1 wherein the source of the stored-value data object is not
recited in the express language of independent claim 1. Here, the Examiner
has set forth a reasoned explanation for the application of the teachings of
Henderson, and Appellant has not set forth persuasive argument showing
error therein.
Appellant further contends that the Examiner’s proffered motivation
for the combination of Henderson and Mankovich is unsupported. (App. Br.
10-12). The Examiner further discusses the motivation for the combination
in the Answer at pages 19-21. While slightly conclusory, we find the
Examiner’s proffered motivations and conclusion to be reasonable and
sufficient under the guidance of KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct.
1727, 1742 (2007). Therefore, Appellant’s argument does not show error in
the Examiner’s initial showing of obviousness.
Appellant contends that Sasmazel fails to teach the clear text
limitation of claim 1. (App. Br. 12-13 and Reply Br. 5-6). Appellant bases
this contention on a grammatical interpretation of the relied upon text of
Sasmazel. While we agree with Appellant that a grammatical evaluation of
the sentence is useful, we note that not all patent publications are drafted
with such attention to grammatical rules. Here, we find the Examiner's
interpretation to be reasonable and additionally note that figure 4 of
Sasmazel appears to show both encrypted signature 306 and unencrypted
user extension information 304. Further, we note that numerous
embodiments are discussed in column 2 of Sasmazel which discuss the
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signature and a data packet in various encrypted/hashed combinations.
Therefore, we do not find Appellant’s grammatical argument to be
persuasive of error in the Examiner's initial showing of obviousness.
Since we do not find that Appellant has shown error in the Examiner's
initial showing of obviousness, we will sustain the rejection of independent
claim 1 and dependent claims 5-18 grouped therewith by Appellant.
With respect to independent claim 19, Appellant relies upon the same
arguments advanced with respect to independent claim 1 (App. Br. 13-14)
which we did not find persuasive above. Therefore, we will sustain the
rejection of independent claim 19, and dependent claims 20, 21, 25-29, 32,
and 33 grouped therewith by Appellant.
With respect to dependent claims 2-4, Appellant relies upon the same
arguments advanced with respect to independent claim 1 (App. Br. 14-15)
which we did not find persuasive above. Therefore, we will sustain the
rejection of dependent claims 2-4.
With respect to dependent claims 22-24, 30, and 31, Appellant relies
upon the same arguments advanced with respect to independent claim 1
(App. Br. 15) which we did not find persuasive above. Therefore, we will
sustain the rejection of dependent claims 22-24, 30, and 31.

CONCLUSION
In summary, we have sustained the rejection of claims 1-33 under
35 U.S.C. § 103(a).

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Application 10/103,502

DECISION
The rejection of claims 1 to 33 under 35 U.S.C. § 103 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).

AFFIRMED

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