Ex Parte Heiden

Board of Patent Appeals and Interferences

Jan 18, 2011

10890081 (B.P.A.I. Jan. 18, 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.
10/890,081 07/13/2004 Richard W. Heiden F-767 7117
7590 01/18/2011
Pitney Bowes Inc.
Intellectual Property and Technology Law Dept.
35 Waterview Drive
P.O. Box 3000
Shelton, CT 06484
EXAMINER
NILFOROUSH, MOHAMMAD A
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
01/18/2011 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte RICHARD W. HEIDEN 8
___________ 9
10
Appeal 2009-010653 11
Application 10/890,081 12
Technology Center 3600 13
___________ 14
15
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16
BIBHU R. MOHANTY, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL1 19

1 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 2009-010653
Application 10/890,081

2
STATEMENT OF THE CASE2 1

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed November 21, 2008) and the Examiner’s Answer (“Ans.,” mailed
February 11, 2009), and Final Rejection (“Final Rej.,” mailed August 6,
2008).
Richard W. Heiden (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1-18, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b) (2002). 5
The Appellant invented a way of securely storing and changing database 6
records and managing and recovering from a system component failure 7
(Specification ¶ 0001.). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. In a secure transaction processing system including 12
a database, 13
a plurality of first cryptographic devices, and 14
a standby cryptographic device, 15
wherein said database stores a plurality of customer 16
records and each first cryptographic device stores a 17
Appeal 2009-010653
Application 10/890,081

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plurality of total freshness counters used to verify the 1
freshness of one or more of the customer records, 2
a method of managing and recovering from a failure of one of 3
said first cryptographic devices, said method comprising: 4
[1] causing each of said first cryptographic devices to 5
periodically: 6
(i) generate a total freshness counter record including the 7
total freshness counters stored therein, a digital signature 8
based on the total freshness counters included in the total 9
freshness counter record, and a freshness counter 10
indicating a number of times that the total freshness 11
counter record was updated, 12
(ii) send the generated total freshness counter record to 13
said database for storage therein, 14
(iii) generate a digital signature and time stamp record 15
including the freshness counter that was included in the 16
generated total freshness counter record, and 17
(iv) send the generated digital signature and time stamp 18
record to at least one other of said first cryptographic 19
devices for storage; 20
[2] upon failure of one of said first cryptographic devices, 21
sending the total freshness counter record most recently 22
stored in said database from the failed first cryptographic 23
device from said database to said standby cryptographic 24
device and 25
sending the digital signature and time stamp record most 26
recently sent by the failed first cryptographic device to 27
said at least one other of said first cryptographic devices 28
for storage from said at least one other of said first 29
cryptographic devices to said standby cryptographic 30
device; 31
[3] verifying, by said standby cryptographic device, 32
the authenticity of the received total freshness counter 33
record 34
using the digital signature included therein and 35
Appeal 2009-010653
Application 10/890,081

4
checking that the received total freshness counter record 1
is most current 2
by comparing the freshness counter included 3
therein to the freshness counter associated with the 4
failed cryptographic device included in the 5
received digital signature and time stamp record; 6
and 7
[4] if said authenticity is verified and 8
if the received total freshness counter record is determined to be 9
most current, 10
causing said standby cryptographic device to assume 11
operation of the failed first cryptographic device in said 12
secure transaction processing system. 13
The Examiner relies upon the following prior art: 14
Heiden US 2002/0161742 A1 Oct. 31, 2002
Hamilton US 5,008,936 Apr. 16, 1991
Ogg US 7,236,956 B1 Jun. 26, 2007
Claims 1-8 and 10-17 stand rejected under 35 U.S.C. § 103(a) as 15
unpatentable over Heiden and Ogg. 16
Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable 17
over Heiden, Ogg, and Hamilton. 18
ISSUES 19
The issue of obviousness turns on whether Heiden describes or suggests 20
sending and verifying the total freshness counter record in the manner of 21
limitations [2] and [3] upon failure of one of said first cryptographic devices. 22
23
Appeal 2009-010653
Application 10/890,081

5
FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Heiden 5
01. Heiden is directed to secure management of information and a 6
way of securely changing database records. Heiden ¶ 0002. 7
02. Heiden describes storing a freshness record database in which 8
each record is digitally signed by a cryptographic device. Heiden 9
¶ 0018. 10
03. Heiden describes the steps used in using the freshness records 11
to verify freshness. Heiden ¶’s 0019-23. None of the steps refer 12
to a failure of a cryptographic device. 13
04. Heiden describes using back-up cryptographic devices, saying 14
that if one device fails, the back-up provides all functions. Heiden 15
¶ 0037. 16
Ogg 17
05. Ogg is directed to a cryptographic module for secure printing of 18
value bearing items. Ogg 1:64-67. 19
06. Ogg describes cloning of decryption and authentication keys 20
between modules. Ogg 18:63 – 19:10. 21
Appeal 2009-010653
Application 10/890,081

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ANALYSIS 1
The dispositive issue is whether Heiden describes or suggests sending 2
and verifying the total freshness counter record in the manner of limitations 3
[2] and [3] upon failure of one of said first cryptographic devices. The 4
Examiner correctly found that Heiden described determining when a 5
cryptographic device fails and separately that Heiden describes verifying 6
freshness records. Ans. 3-5. See FF 02 - 04. The Examiner did not find that 7
Heiden and Ogg describe or suggest sending and verifying the total 8
freshness counter record in the manner of limitations [2] and [3] upon failure 9
of one of said first cryptographic devices. Thus, the Examiner failed to 10
present a prima facie case. In the response (Ans. 11-12), the Examiner 11
apparently found this was unnecessary as these limitations were alternative 12
or conditional limitations. 13
We agree with the Appellant’s rebuttal that these limitations are 14
affirmatively presented and are not conditional. Appeal Br. 7-8. Limitation 15
[2] begins with “upon failure”, not “if there is a failure.” Thus a failure must 16
occur, and be followed by the steps in limitations [2] and [3], to meet the 17
limitations of the independent claims 1 and 10. As this issue is dispositive, 18
we need not reach the remaining arguments. 19
CONCLUSIONS OF LAW 20
Rejecting claims 1-8 and 10-17 under 35 U.S.C. § 103(a) as 21
unpatentable over Heiden and Ogg is in error. 22
Rejecting claims 9 and 18 under 35 U.S.C. § 103(a) as unpatentable over 23
Heiden, Ogg, and Hamilton is in error. 24
Appeal 2009-010653
Application 10/890,081

7
DECISION 1
To summarize, our decision is as follows. 2
• The rejection of claims 1-8 and 10-17 under 35 U.S.C. § 103(a) as 3
unpatentable over Heiden and Ogg is not sustained. 4
• The rejection of claims 9 and 18 under 35 U.S.C. § 103(a) as 5
unpatentable over Heiden, Ogg, and Hamilton is not sustained. 6
7
REVERSED 8
9
10
11
mev 12
13
Address 14
PITNEY BOWES INC. 15
INTELLECTUAL PROPERTY AND TECHNOLOGY LAW DEPT. 16
35 WATERVIEW DRIVE 17
P.O. BOX 3000 18
SHELTON CT 06484 19