10852554 (B.P.A.I. Feb. 15, 2011)

Ex Parte Ferlitsch

Board of Patent Appeals and InterferencesFeb 15, 2011

10852554 (B.P.A.I. Feb. 15, 2011)

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. 10/692,140 10/23/2003 Robert J. Torres AUS920030650US1 9210 7590 02/03/2011 Robert V. Wilder, Attorney at Law 4235 Kingsburg Drive Round Rock, TX 78681 EXAMINER AUGUSTINE, NICHOLAS ART UNIT PAPER NUMBER 2179 MAIL DATE DELIVERY MODE 02/03/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ANDREW RODNEY FERLITSCH ____________ Appeal 2009-006816 Application 10/852,5541 Technology Center 2100 ____________ Before THU A. DANG, CAROLYN D. THOMAS, and DEBRA K. STEPHENS, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL2 1 Application filed May 24, 2004. The real party in interest is Sharp Laboratories of America, Inc. 2 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-006816 Application 10/852,554 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-28, which are all the claims pending in the application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. The present invention relates to a method for controlling access to an imaging device while securing the imaging job information when it is transmitted between imaging clients and imaging devices. (Spec., 1. ll. 7-9.) Claim 1 is illustrative: 1. A method for imaging job authorization, the method comprising: at an authorization server, receiving a request from a first node print subsystem to communicate an imaging job; in response to analyzing imaging job information, sending an access inquiry to a second node; at the authorization server, receiving an authorization, including a one-time use public encryption key, from the second node; sending a confirmation, including the public key, to the first node print subsystem; at the first node, encrypting the imaging job using the public key; and sending the encrypted imaging job to the second node from the first node. Appellant appeals the following rejection: Claims 1-28 under 35 U.S.C. § 102(e) as anticipated by Someshwar (US Patent Application Pub. 2004/0117655 A1, Jun. 17, 2004). Appeal 2009-006816 Application 10/852,554 3 FACTUAL FINDINGS Someshwar 1. Someshar discloses: Other approaches allow users to encrypt documents and send the encrypted documents to a printer. . . . The invention offers a distinct advantage over the prior art by providing an encryption key and access rights external from the printer and independent from the transmission path of the actual encrypted file. . . . where a different encryption key can be used for each individual document. (¶[0027].) 2. In Someshar: The user’s computer 301 packages the policy server’s name and address into the document and encrypts the document. The user selects the desired print server 303 and sends the encrypted document 307 to the print server 303. Print server 303 stores the encrypted document on its local storage for later access. The document can also be sent to the print server 303 on a one- time basis for printing. (¶[0030].) 3. Somershar discloses that “[t]he policy server 302 . . . sends the related decryption key and access rules 308 to the print server 303.” (¶[0032].) ANALYSIS Our representative claim, claim 1, recites, inter alia, “at the authorization server, receiving an authorization, including a one-time use public encryption key, from the second node” and “sending a confirmation, including the public key, to the first node print subsystem.” Independent Appeal 2009-006816 Application 10/852,554 4 claim 15 recites similar limitations. Thus, the scope of each of the independent claims includes sending a one-time use encryption key that originates from a second node to the first node. Issue1: Did the Examiner err in finding that Someshwar discloses receiving at the authorization server a one-time use public encryption key from the second node and sending the public key to the first node, as set forth in claim 1? Appellant contends that “Someshar does not disclose a one-time encryption key that originates from the destination (second) node, and that is only transmitted to the sender node upon a request.” (App. Br. 9.) We agree with Appellant. While the Examiner has found that “the destination node is the policy server # 502 and the sender is the printer server # 503 + the user . . . the print server will request the decryption key from the policy server . . . the policy server # 502 will send the decryption key to the print server # 503 . . .” (Ans. 19-20)(emphasis added), the Examiner has not shown, and we do not readily find, any “encryption key” being sent to the sender in Someshar from the dedicated recipient. Claim 1 recites, inter alia, receiving an authorization, including a one- time use public encryption key, from the second node (i.e., recipient node). In claim 1, the first node encrypts the imaging job using the encryption key received from the second node. Similarly, Someshar allows a user to encrypt documents and send the encrypted documents to another node (FFs 1-2). However, the Examiner has Appeal 2009-006816 Application 10/852,554 5 not identified in Someshar, nor can we find, where the encryption key comes from. Instead, the Examiner directs our attention to Someshar’s policy server which sends a decryption key to the sender (i.e., print server + user), not an encryption key (Ans. 19-20; FF 3). In contrast with the present invention, Someshar merely suggests that the encryption key is only stored locally at the user as Someshar discloses that the encryption key is external from the printer and independent from the transmission path of the encrypted file (FF 2). In other words, Someshar appears to teach away from sending an encryption key from the printer to the user, i.e., from the recipient (second node) to the sender (first node). “[A]nticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim . . . .” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984)). “[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). Here, the Examiner has failed to show that Andrew discloses an encryption key originating from the recipient node. Since we agree with at least one of the arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. It follows that Appellant has shown that the Examiner erred in finding that Andrew renders claim 1 anticipated. Accordingly, we reverse the rejection of claim 1, as well as claims 2- 28, which have limitations commensurate in scope with the argued limitation. Appeal 2009-006816 Application 10/852,554 6 DECISION We reverse the Examiner’s § 102(e) rejection. REVERSED ke Gerald W. Maliszewski P.O. Box 270829 San Diego, CA 92198-2829