Ex Parte Evans

Board of Patent Appeals and Interferences

Dec 10, 2008

09766142 (B.P.A.I. Dec. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILLIAM D. EVANS
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Appeal 2008-0804
Application 09/766,142
Technology Center 2100
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Decided: December 10, 2008
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Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 15-29, 35, 37, 38, 41, and 42. We have
jurisdiction under 35 U.S.C. § 6(b). Claims 1-14, 30-34, 36, 39, and 40 were
cancelled. We reverse.
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The Invention
The disclosed invention relates generally to controlling access to
electronic documents (Spec. 1). More particularly, a user may make and
may limit access to annotations or comments to an electronic document
(Spec. 6).
Independent claim 15 is illustrative:
15. A secure content object for distributing and
controlling access to a document and annotations
associated with the document, comprising:

an electronic document, the electronic document
having been encrypted with a document encryption key,
wherein access to the electronic document is available to
a first set of authorized users;

an encrypted header comprising information
pertaining to the electronic document;

a first multi-key encryption table for use in a
multi-key encryption method associated with the
electronic document, the first table comprising at least
one multi-key component associated with each
authorized user in the first set and a plurality of dummy
encryption components, wherein the multi-key
encryption table includes no information that may
identify a user or the electronic document;

a plurality of annotations associated with the
electronic document, generated by an annotation author
and having been encrypted with an annotation encryption
key, wherein access to the plurality of annotations is
available to authorized annotation users comprising the
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annotation author and those users in the first set having
been designated by the annotation author as having
access to the plurality of annotations;

a second multi-key encryption table for use in a
multi-key encryption method associated with the
plurality of annotations, the second table comprising at
least one multi-key component associated with each
authorized annotation user; and

a user interface device comprising unencrypted
information for identifying the electronic document and
an interactive element for enabling a user to input a user
authorization for access to at least a portion of the
encrypted electronic document, for inputting the user
authorization to a decryption engine using the multi-key
encryption method for combining the user authorization
with each of the multi-key components in the first multi-
key encryption key table to decrypt the encrypted header,
and for combining the user authorization with each of the
stored multi-key components in the second multi-key
encryption key table to decrypt an annotation,

wherein upon a valid decryption of the annotation
indicates the correct annotation encryption key has been
found and the user is an authorized annotation user; and
upon a valid decryption of the encrypted header, for
enabling decryption of the portion of the encrypted
electronic document.

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The References
The Examiner relies upon the following references as evidence in
support of the obviousness rejection:
Saito US 5,740,246 Apr. 14, 1998
Carter US 5,787,175 Jul. 28, 1998
Follendore US 6,011,847 Jan. 4, 2000

The Rejection
The Examiner rejects claims 15-29, 35, 37, 38, 41, and 42 under
35 U.S.C. § 103(a) as being unpatentable over Carter, Follendore and Saito.

ISSUE
The Examiner finds that “Saito teaches that an original document is
edited by an editor (annotation author) and the edited material is encrypted
with a key” (Ans. 17).
Appellant asserts that “Saito does not teach that “access to the
plurality of annotations is available to authorized annotation users
comprising the annotation author and those users in the first set having been
designated by the annotation author as having access to the plurality of
annotations” (App. Br. 9).
Did Appellant demonstrate that the Examiner erred in concluding that
Saito discloses access to a plurality of annotations in a document to users
having been designated by the annotation author?

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FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Saito discloses that “new data is produced by editing a plurality of
encrypted data which are obtained from the database and is
encrypted to be supplied to others” (col. 12, ll. 42-44).
2. Saito discloses that “the user decrypts the encrypted second secret-
key by the second private-key so that the decrypted second secret-
key is used as a crypt key for data storage, copy and transfer after the
decryption of the data” (col. 12, ll. 34-38).
3. Saito discloses that “the crypt key . . . with a digital signature are
used as a use permit key” (col. 12, ll. 44-47).
4. Saito discloses that a user “requests . . . [to] use [data] by presenting
the digital signature” to a management center and the management
center “recognizes the editor (of the data) on the basis of the digital
signature” (col. 12, ll. 48-52).
5. Saito discloses that “[o]nly in the case where it is recognized that the
editor is the authorized user of the edited data, the crypt key for use
is provided to those who request for use” (col. 12, ll. 52-54).

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PRINCIPLES OF LAW
35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007). In KSR, the Supreme Court
emphasized "the need for caution in granting a patent based on the
combination of elements found in the prior art," Id. at 1739, and discussed
circumstances in which a patent might be determined to be obvious. KSR,
127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." Id. The
operative question in this "functional approach" is thus "whether the
improvement is more than the predictable use of prior art elements according
to their established functions." Id. at 1740.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
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skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. 1727,
1739 (2007)). The Federal Circuit relied in part on the fact that Leapfrog
had presented no evidence that the inclusion of a reader in the combined
device was “uniquely challenging or difficult for one of ordinary skill in the
art” or “represented an unobvious step over the prior art." Id. at 1162 (citing
KSR, 127 S. Ct. at 1740-41).

ANALYSIS
We agree with the Examiner that Saito discloses an editor editing
encrypted data (FF 1) and that the edited data may include “annotations” of
the data. Also, Saito discloses that a user requests access to the edited data
(FF 4) and a crypt key is provided to the requesting users (FF 5). However,
the Examiner has not demonstrated that Saito also discloses that the users
having access to the annotations or edited data are designated by the
annotation author. Rather, Saito discloses that the management center
recognizes the editor of the data (i.e., the annotation author) and provides
access to the requesting user based on recognition of the editor such that data
access is granted to a user based on whether the editor (or annotation author)
is a recognized user. We find that this system differs from one in which an
editor (or annotation author) designates which users are given access to the
edited data as recited in independent claim 15.
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Similarly, independent claim 35 recites “each authorized user having
been designated by the first user as having access to the annotation” in
which the first user generates the “plurality of annotations pertaining to the
electronic document” (App. Br. A-4). As set forth above, although Saito
discloses a system in which data access is granted to users based on
recognition of an editor of the data, Saito does not disclose that data access
is granted to users designated by the editor of the data (i.e., “first user”) as
recited in independent claim 35.
Accordingly, we conclude that Appellant has met the burden of
showing that the Examiner erred in rejecting independent claims 15 and 35.
Therefore, we reverse the Examiner’s rejection of independent claims 15 and
35, and of claims 16-29, 37, 38, 41, and 42, which depend therefrom.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants demonstrated that the Examiner erred in concluding that Saito
discloses access to a plurality of annotations in a document to users having
been designated by the annotation author.

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DECISION
We reverse the Examiner’s decision rejecting claims 15-29, 35, 37,
38, 41, and 42 under 35 U.S.C. § 103.

REVERSED

pgc

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