Ex Parte Hericourt et al

Board of Patent Appeals and Interferences

Apr 13, 2009

10007750 (B.P.A.I. Apr. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte OLIVIER HERICOURT and JEAN-FRANCOIS LePENNEC
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Appeal 2008-3093
Application 10/007,7501
Technology Center 2100
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Decided:2 April 13, 2009
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Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on November 13, 2001. The real party in interest is International
Business Machines Corp.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 9. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appellants’ Invention
Appellants invented a method for verifying certificates issued from
one or more certificate authorities. (Spec. 1, ll. 4-7.) As depicted in Figure
3, upon a first entity-A (301) sending a message signed with a certificate to a
second entity-B (302), a certificate locker (311) in entity-B receives the
message and stores the certificate in a frozen zone to prevent the use thereof
until validation. (Id. at 12, ll. 8-21.) Further, a certificate checker (312)
within entity-B identifies the certificate authority (CA) that has issued the
certificate, and accesses one or more certificate filters (309) in a filtering
device (308) via a certificate filter table (CFC 313) to verify that the CA can
be trusted. Upon confirming that the CA is trustworthy, the filtering device
(308) sends the CA public key to entity-B to authenticate the certificate for
subsequent use. (Id. at 12, l. 22 to 13, l. 5.)

Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A method for filtering certificates issued from as few as one
certificate authority (CA), the method comprising the steps of:
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receiving a certificate and storing the certificate;
preventing use of the certificate until validation;
identifying a certificate authority that has issued the certificate;
identifying a certificate authority filter by referring to a table,
that comprises identification of at least one certificate authority filter;
sending a request to the identified certificate authority filter;
receiving from the identified certificate authority filter a
response to the request, the response comprising information related
to the certificate authority that has issued the certificate and a public
key of the certificate authority that has issued the certificate;
determining according to the response whether the certificate
authority is a trusted certificate authority; and
validating the certificate if the certificate authority that has
issued the certificate is a trusted certificate authority.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Van Oorschot 6,134,550 Oct. 17, 2000

Rejection on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1 through 9 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Van Oorschot.
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Appellants’ Contentions
Appellants argue that Van Oorshot does not teach as few as one
certificate authority. Rather, Appellants contend that Van Oorshot teaches at
least two certificate authorities whereas the claimed invention is restricted to
a single certificate authority. (Appeal Br. 5-7.)

Examiner’s Findings/Conclusions
The Examiner finds that Van Oorshot’s disclosure of a certificate
chain including a beginning certification authority and a target certification
teaches the recitation of as few as one certificate authority issuing the
certificates to be filtered. (Answer 8-10.) Therefore, the Examiner finds that
Van Oorshot anticipates independent claim 1. (Id.)

II. ISSUE
Have Appellants shown that the Examiner erred in finding that Van
Oorshot teaches as few as one certificate authority issuing certificates to be
filtered?

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

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Van Oorshot
1. Van Oorshot discloses a method and system for compiling and
storing certificate chain data containing entries in shortest trusted paths
representing trust relationships among certificate authority issuing units to
thereby enable a requesting unit to rapidly identify valid certificates.
(Abstract 1-6.)
2a. As depicted in Figure 2, a certificate validating unit (204) issues
to certificate chain constructing unit (206) a request that identifies a
beginning certification and a target certification to thereby obtain a
certificate chain information pertaining to certificate issuing units in a
trusted path. (Col. 5, ll. 7-25, col. 6, ll. 1-6.)
2b. Then, the certificate chain constructing unit (206) analyzes data
stored in the chain data storage medium (208) to retrieve the requested chain
data, and to subsequently send the chain data to the certificate validating unit
(204) for rapidly validating the certificates contained in the chained data.
(Col. 6, ll. 6-11.)

IV. PRINCIPLES OF LAW
Claim Construction
"[T]he words of a claim 'are generally given their ordinary and
customary meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (internal citations omitted). "[T]he ordinary and customary
meaning of a claim term is the meaning that the term would have to a person
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of ordinary skill in the art in question at the time of the invention, i.e., as of
the effective filing date of the patent application." Id. at 1313.
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d at 1323.

Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 (Fed. Cir. 1992)). “Anticipation of a patent claim requires a
finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999). “In other words,
if granting patent protection on the disputed claim would allow the patentee
to exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.” Id. (internal citations omitted).
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V. ANALYSIS
Independent claim 1 recites in relevant part a method for filtering
certificates issued from as few as one certificate authority.
We first consider the scope and meaning of the expression as few as
one, which must be given its broadest reasonable interpretation consistent
with Appellants’ disclosure, as explained in In re Morris, 127 F.3d 1048
(Fed. Cir. 1997):
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
Id. at 1054. See also In re Zletz, 893 F.2d at 321 (stating that “claims must
be interpreted as broadly as their terms reasonably allow.”). Appellants’
Specification states the following:
The present invention discloses a system and method, in a
workstation connected to a network, for filtering certificates issued
from one or more certificate authorities (CA).

(Spec. 8, ll. 23-25.) (Emphasis added.)
The present invention also discloses a system and method, in a
certificate authority filter connected to a network, for filtering
certificates issued from one or more certificate authorities (CA).

(Id. at 9, ll. 24-27.) (Emphasis added.)

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A method for filtering certificates issued from one or more
certificate authorities (CA).

(Id. at 24, ll. 1-2.) (Emphasis added.)

Our reviewing court further states, “the ‘ordinary meaning’ of a claim
term is its meaning to the ordinary artisan after reading the entire patent.”
Phillips v. AWH Corp., 415 F.3d at 1321.
Upon reviewing Appellants’ Specification, we find that “as few as one
certificate authority” means one or more certificate authorities. This finding
arises from the fact that Appellants’ originally filed disclosure describes the
recited method as being directed to filtering certificates issued from one or
more certificate authorities. We find nothing in the cited disclosure to
restrict the issuance of the certificates to a single authority. We further find
no support on the record before us to warrant Appellants’ contention that the
expression ‘as few as one certificate authority’ means a single certificate
authority. We therefore reasonably construe the expression “as few as one
certificate,” consistent with Appellants’ Specification, to mean at least one
certificate (i.e. one or more certificates).
As set forth in the Findings of Facts section, Van Oorshot discloses a
system wherein a requested certification chain among certificate issuing
units (including a beginning certification and a target certification) is
retrieved from a certificate chain storage and forwarded by a certificate
chain constructing unit to a certificate validating unit to rapidly identify
valid certificates therein. (FF. 1-2.) We find that, consistently with our
interpretation above, the validation unit’s subsequent validation of the
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certificates retrieved and issued by the certificate chain constructing unit
fairly and reasonably teaches that one or more (at least one or as few as one)
certificate authority (the certificate chain constructing unit) issues the
certificates to be filtered (validated), as recited in independent claim 1.
Further, notwithstanding our interpretation of the expression “as few as one
certificate authority”, we also find that Van Oorshot’s certificate chain
constructing unit fairly and reasonably teaches a single certificate authority
that issues the certificates to be filtered. It follows that Appellants have not
shown that the Examiner erred in finding that Van Oorshot anticipates
independent claim 1.
Appellants did not provide separate arguments with respect to the
rejection of claims 2 through 9. Therefore, we select independent claim 1 as
being representative of the cited claims. Consequently, claims 2 through 9
fall together with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

VI. CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1 through 9 as set forth above.

VII. DECISION
We affirm the Examiner’s decision to reject claims 1 through 9.
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).

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AFFIRMED

msc

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