Ex Parte Gentry et alDownload PDFPatent Trial and Appeal BoardSep 15, 201512840437 (P.T.A.B. Sep. 15, 2015) 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. 12/840,437 07/21/2010 Craig B. Gentry M-15971-5C US (70216.443) 1146 27683 7590 09/16/2015 HAYNES AND BOONE, LLP IP Section 2323 Victory Avenue Suite 700 Dallas, TX 75219 EXAMINER BELL, KALISH K ART UNIT PAPER NUMBER 2435 MAIL DATE DELIVERY MODE 09/16/2015 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 CRAIG B. GENTRY, ZULFIKAR AMIN RAMZAN, and BERNHARD BRUHN1 ________________ Appeal 2012-003730 Application 12/840,437 Technology Center 2400 ________________ Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants state the real party-in-interest is NTT DOCOMO, Inc. App. Br. 2. Appeal 2012-003730 Application 12/840,437 2 SUMMARY Appellants file this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–18 as unpatentable under 35 U.S.C. § 102(b) as being anticipated by Yagasaki et al. (US 2001/0034833 A1, October 25, 2001) (“Yagasaki”). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellants’ invention is directed to public key cryptography and, more particularly, to digital certificate revocation. Spec. 1. REPRESENTATIVE CLAIM Claim 1 is representative of the claims on appeal and recites: 1. A transmission method comprising transmitting, in an electromagnetic carrier wave, one or more computer instructions operable to cause a computer system to generate computer data comprising a validity or invalidity proof for a first digital certificate certifying that a cryptographic key is associated with an entity, the computer data comprising: (a1) period data for a period of time, for computing a first target, wherein the period of time is one of a plurality of periods of time each of which is associated with period data, and the first target is computable, in computer-implemented computation, from the period data associated with anyone the periods of time; wherein for each set in at least the first plurality, the period data form at least part of a hash tree, each period of time corresponding to the hash tree's node comprising the period Appeal 2012-003730 Application 12/840,437 3 data for the period of time, different periods of time corresponding to different nodes, wherein for at least two of the periods of time, one of the corresponding nodes is neither a child nor a parent of the other one of the corresponding nodes; (a2) second target computation data for computing, in computer-implemented computation, a second target from the first target, wherein the second target is a function of a plurality of first targets each of which is associated with a set comprising the first digital certificate; wherein the transmitting comprises at least one of the following operations (A) and (B): (A) providing the one or more computer instructions to the electromagnetic carrier wave from a non-transitory computer-readable computer storage medium storing the one or more computer instructions; (B) transferring the one or more computer instructions from the electromagnetic carrier wave to a non-transitory computer-readable computer storage medium for storage of the one or more computer instructions and/or for execution of the one or more computer instructions by one or more computer processor devices. App. Br. 21. ISSUE Appellants argue the Examiner erred in finding Yagasaki discloses a hash tree, as recited in claim 1. App. Br. 20. Appeal 2012-003730 Application 12/840,437 4 ANALYSIS In the Final Rejection, the Examiner found that, with the exception of the language of claim 1 reciting: transmission method comprising transmitting, in an electromagnetic carrier wave, one or more computer instructions .... wherein the transmitting comprises at least one of the following operations (A) and (B): (A) providing the one or more computer instructions to the electromagnetic carrier wave from a non-transitory computer-readable computer storage medium storing the one or more computer instructions; (B) transferring the one or more computer instructions from the electromagnetic carrier wave to a non-transitory computer-readable computer storage medium for storage of the one or more computer instructions and/or for execution of the one or more computer instructions by one or more computer processor devices, the remaining language of the claim describing “computer instructions” constitutes only an intended use that the computer is meant to perform. Final Act. 4–5. Furthermore, the Examiner found the computer instructions are information to be transmitted in the claimed transmission method and do not affect the transmitting step. Id. at 5. Consequently, found the Examiner, the claimed computer instructions are nonfunctional descriptive material and therefore lack patentable weight. Id. Appellants argue at considerable length that the Examiner erred and that the language so designated by the Examiner is neither nonfunctional descriptive material nor recites an intended purpose and, indeed, has patentable weight. App. Br. 10–17. However, after making these initial arguments, Appellants’ sum total argument in their Appeal Brief that the Appeal 2012-003730 Application 12/840,437 5 Examiner erred in finding Yagasaki discloses all of the elements of claim 1 consists of: “Yagasaki does not teach a hash tree as recited in claim 1 section (a1), claim 3 section (b), claim 7 section (b), and claim 9 section (a1).” App. Br. 20. Even assuming, arguendo, that Appellants are correct that the Examiner erred in finding the designated language of claim 1 to be lacking patentable weight, Appellants’ argument with respect to the prior art, which consists of a conclusory statement unsupported by evidence from the record, is insufficient to overcome the Examiner’s prima facie conclusion of anticipation. Our reviewing court has explicitly held that “[37 C.F.R. §] 41.37 require[s] … more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.” In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). We consequently need not reach Appellants’ arguments concerning the patentable weight of the contested language, and we affirm the Examiner’s rejection of claims 1–18. DECISION The Examiner’s rejection of claims 1–18 as unpatentable under 35 U.S.C. § 102(b) 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 tj Copy with citationCopy as parenthetical citation