Ex Parte Fadili et alDownload PDFPatent Trial and Appeal BoardNov 24, 201411507551 (P.T.A.B. Nov. 24, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/507,551 08/22/2006 Moulay Fadili LUC-853/ALU 114912 1610 47382 7590 11/24/2014 Carmen Patti Law Group, LLC One N. LaSalle Street 44th Floor Chicago, IL 60602 EXAMINER PAN, PEILIANG ART UNIT PAPER NUMBER 2492 MAIL DATE DELIVERY MODE 11/24/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MOULAY FADILI, JERREMY ZRIHEN, and ABDELKRIM MOULEHIAWY ____________________ Appeal 2012-004997 Application No. 11/507,551 1 Technology Center 2400 ____________________ Before JAMES T. MOORE, JOHN A. JEFFERY, and MARC S. HOFF, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1–5, 8–16, and 19–27. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ invention is a device and method for the secure transmission of facsimile data by exchange of encryption information. First facsimile communications equipment transmits to second facsimile 1 The real party in interest is Alcatel. Appeal 2012-004997 Application No. 11/507,551 2 communications equipment a first message containing, in a non-standard facilities field, first data for determining a primary encryption key. The second equipment responds by sending a second message to the first equipment, containing second data representative of its ability to encrypt/decrypt data, said second data being encrypted by means of said primary encryption data. The first equipment then attempts to decrypt the second data by means of said primary encryption data. If this attempt is successful, then both sets of equipment are able to encrypt/decrypt data, and encryption is activated in the equipment having data to be transmitted. If either equipment is unable to encrypt/decrypt data, facsimile data is then transmitted without encryption (Spec. 3, 4, 15). Claim 1 is exemplary of the claims on appeal: 1. A method for secure transmission of data between a first and a second facsimile equipments via at least one communication network entailing modulation/demodulation, wherein, in the event of setting up a call between said equipments with a view to transmitting data, comprising: in said first facsimile equipment, selecting first data and determining a primary encryption key as a function of said first data, wherein said first facsimile equipment is able to encrypt/decrypt data; transmitting from said first facsimile equipment to said second facsimile equipment via said at least one communication network a first message containing in a Non- Standard Facilities field said first data for determining a primary encryption key; on reception of said first message by said second facsimile equipment, determining said primary encryption key as a function of said first data in said second facsimile equipment, wherein said second facsimile equipment is able to encrypt/decrypt data and Appeal 2012-004997 Application No. 11/507,551 3 wherein functions used to determine said primary encryption keys in first and second facsimile equipments are identical; transmitting from said second facsimile equipment to said first facsimile equipment via said at least one communication network a second message containing in a standardized Training Check Field second data representative of its ability to encrypt/decrypt data, said second data being encrypted by means of said primary encryption key; on reception of said second message by said first facsimile equipment, attempting to decrypt the second data in the first facsimile equipment by means of said primary encryption key to determine if it was encrypted by means of said primary encryption key and, if so, to conclude that said second facsimile equipment is able to encrypt/decrypt data using said primary encryption key; and if and only if said facsimile equipments are both able to encrypt/decrypt data, activating encryption means in the facsimile equipment having data to be transmitted and activating decryption means in the other facsimile equipment that is to receive that data, the encryption means and the decryption means using said primary encryption key, otherwise sending/receiving unencrypted facsimile type data. The Examiner relies upon the following prior art in rejecting the claims on appeal: Bousis US 2004/0187001 A1 Sept. 23, 2004 Miura US RE38,739 E May 31, 2005 Takagi US 6,917,593 B2 July 12, 2005 Eronen US 2005/0273609 A1 Dec. 8, 2005 Claims 1–5, 8–16, and 19–27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Eronen in view of Bousis, Takagi, and Miura. Appeal 2012-004997 Application No. 11/507,551 4 Throughout this decision, we make reference to the Appeal Brief (“App. Br.,” filed Aug. 26, 2011) and the Examiner’s Answer (“Ans.,” mailed Nov. 7, 2011) for their respective details. ISSUE Appellants contend that Miura does not disclose transmitting from said second facsimile equipment to said first facsimile equipment via said at least one communication network a second message containing in a standardized Training Check Field second data representative of its ability to encrypt/decrypt data, as the independent claims require. Appellants argue that in Miura, the first (calling side) equipment identifies the ability of the second (called side) equipment to encrypt and decrypt data before instructing that the training-check signal and image signal are to be transmitted upon being encrypted, whereas the opposite sequence pertains in the invention under appeal (App. Br. 6–7). Appellants’ contentions present us with the following issue: Does the combination of Eronen with Bousis, Takagi, and Miura disclose or fairly suggest activating decrypting means to decrypt received encrypted data by means of a primary encryption key, upon reception by second communications equipment from first communications equipment of a second message containing second data in the Training Check Field representative of its ability to encrypt data to be transmitted? PRINCIPLES OF LAW Section 103(a) 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 Appeal 2012-004997 Application No. 11/507,551 5 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., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). See also KSR, 550 U.S. at 407, (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”) ANALYSIS We are not persuaded by Appellants’ arguments. The Examiner’s rejection relies on Eronen for disclosure of a number of limitations, including transmitting from second communication equipment (back) to first communication equipment, via at least one communication network, a second message containing second data representative of the ability to encrypt/decrypt data, said second data being encrypted by means of primary encryption (Ans. 5). The Examiner recognizes that Eronen does not disclose using the Training Check Field for this purpose (Ans. 6). The Examiner relies on Miura for a teaching of using facsimile equipment, for sending unencrypted data if the two devices are not capable of encryption and decryption, and for the use of the Training Check Field (Ans. 6–7). Contrary to Appellants’ contention, the Examiner does not and need not rely on Miura for a teaching that the first and second communication equipment determine whether they are capable of encrypting and decrypting Appeal 2012-004997 Application No. 11/507,551 6 data with one another after the training check field is used, rather than before (Ans. 18–20). The Examiner relies on paragraphs 33 and 35 of Eronen, rather than any section of Miura, for a teaching that the second communications equipment transmits a second message containing second data representative of the ability to encrypt/decrypt data (Ans. 5). Eronen, relied upon by the Examiner, discloses communication of an initial determination that the second communication equipment is capable of encryption/decryption. This determination occurs prior to any facsimile data communication using that encryption/decryption, just as Appellants’ claims recite. Appellants have not made any persuasive argument that the Examiner erred in combining Eronen, Bousis, Takagi, and Miura to achieve the invention under appeal. We conclude that the Examiner did not err in rejecting claims 1–5, 8–16, and 19–27 under § 103. We sustain the rejection. CONCLUSION The combination of Eronen with Bousis, Takagi, and Miura discloses activating decrypting means to decrypt received encrypted data by means of a primary encryption key, upon reception by second communications equipment from first communications equipment of a second message containing second data in the Training Check Field representative of its ability to encrypt data to be transmitted. Appeal 2012-004997 Application No. 11/507,551 7 ORDER The Examiner’s rejection of claims 1–5, 8–16, and 19–27 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). AFFIRMED ELD Copy with citationCopy as parenthetical citation