Ex Parte Fadili et al

Patent Trial and Appeal Board

Nov 24, 2014

11507551 (P.T.A.B. Nov. 24, 2014)

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.
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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
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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.
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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
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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
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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.

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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