Ex Parte Hind et al

Board of Patent Appeals and Interferences

May 12, 2011

10923964 (B.P.A.I. May. 12, 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.
10/923,964 08/23/2004 John R. Hind RSW920040085US1 (162) 4610
46320 7590 05/13/2011
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
TOLENTINO, RODERICK
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
05/13/2011 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 JOHN R. HIND and MARCIA L. STOCKTON
____________

Appeal 2009-010096
Application 10/923,964
Technology Center 2400
____________

Before JOHN A. JEFFERY, THU A. DANG, and DENISE M. POTHIER,
Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention relates to a technique for detecting and
preventing content distribution site spoofing. See generally Spec. ¶ 0008.
Claim 1 is reproduced below with the key disputed limitations emphasized:
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1. A method for detecting and preventing content distribution
site spoofing comprising the steps of:
loading a markup language document and a corresponding digital
signature for processing;
ensuring that said digital signature originates from a pre-specified
source of said markup language document incorporated within said
markup language document;
dynamically computing a hash value for said markup language
document and comparing said dynamically computed hash value to a
hash value encrypted within said digital signature; and,
detecting content distribution site spoofing either if said digital
signature does not originate from said pre-specified source, or if said
dynamically computed hash value does not match said hash value
encrypted within said digital signature.

The Examiner relies on the following as evidence of unpatentability:
Kenmochi

Iverson
US 2003/0196117 A1

US 6,839,842 B1
Oct. 16, 2003

Jan. 4, 2005
(filed Dec. 27, 1996)
Satake US 7,024,558 B1 Apr. 4, 2006
(filed Oct. 11, 2000)

Douglas US 7,152,242 B2 Dec. 19, 2006
(filed Sept. 11, 2002)

THE REJECTIONS
1. The Examiner rejected claims 1-5,1 7, 8, 10-16, 18, and 19 under

1 While the Examiner includes claim 6 in the heading of this rejection (Ans.
3), the rejection’s body does not discuss this claim (see Ans. 3-5). Rather,
claim 6 is rejected over Iverson, Satake, and Kenmochi. See Ans. 5-6.
Appellants correctly include claim 6 with the later rejection. App. Br. 4.
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35 U.S.C. § 103(a) as unpatentable over Iverson and Satake. Ans. 3-5.2
2. The Examiner rejected claims 6 and 17 under 35 U.S.C. § 103(a)
as unpatentable over Iverson, Satake, and Kenmochi. Ans. 5-6.
3. The Examiner rejected claims 9 and 20 under 35 U.S.C. § 103(a)
as unpatentable over Iverson, Satake, and Douglas. Ans. 6-7.3

THE OBVIOUSNESS REJECTION OVER IVERSON AND SATAKE
Claims 1, 2, 10, 12, and 13
Regarding representative independent claim 1, the Examiner finds that
Iverson teaches all the recited limitations, except for a markup language
document. For example, the Examiner maps detecting content distribution
site spoofing to Iverson’s step of determining whether a computer hash value
matches a hash value within a digital signature. See Ans. 3-4, 7-8.
Appellants argue that Iverson fails to detect content distribution site
spoofing. App. Br. 7-8. In particular, Appellants argue claim 1 does not just
recite detecting spoofing but “content distribution site” spoofing and that
Iverson’s process only assures the document comes from a content source
not a content distribution site. App. Br. 8; Reply Br. 2-3.
The issue before us, then, is as follows:

2 Throughout this opinion, we refer to (1) the Appeal Brief filed December
1, 2008; (2) the Examiner’s Answer mailed January 16, 2009; and (3) the
Reply Brief filed March 16, 2009.
3 The § 112, second paragraph rejection of claims 7 and 18 has been
withdrawn. See Ans. 2.
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ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Iverson and Satake collectively would have taught or suggested
detecting content distribution site spoofing?

FINDINGS OF FACT (FF)
1. Appellants map the discussion of computing and comparing a
hash for the document and a decrypted digital signature to preventing
content distribution site spoofing. App. Br. 2-4; Spec. ¶¶ 0023-24, 0026;
Fig. 3.
2. Appellants render an invalid message at step 385, when the hash
within the decrypted signature (step 360) does not match (at step 365) the
computed hash for the markup language document (step 355). Spec.
¶ 0030; Fig. 3.
3. Iverson describes digital signature technology that includes an
information provider creating information and digitally signing the
information. For example, a university provides an electronic transcript for
a student and authenticates the information by digitally signing or encrypting
a hash of the document with the university’s private key. Iverson explains
the digital signature is then transmitted with the transcript to the recipient
(e.g., a prospective employer). Iverson, col. 1, ll. 48 -61
4. Iverson also explains the digital signature assures (1) the
document actually comes from the university and (2) the document has not
been modified or altered in any way. The recipient may obtain these
assurances by decrypting the signature using the university’s public key and
then matching the result with the original document’s hash. If the original
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document’s hash matches the decrypted hash, the recipient may assume that
the document has not been changed since being encrypted. Iverson, col. 1, l.
61 – col. 2, l. 4; col. 5, ll. 6-19.
5. Iverson’s encryption and digital signature technologies are used
to authenticate electronic information and to provide a foundation that the
information’s source, accuracy, and integrity can be trusted by verifying a
document’s authenticity. Iverson, col. 1, ll. 6-24.
6. Iverson teaches preventing inauthentic information from being
viewed or generating a warning message if the information is inauthentic.
Iverson, col. 8, ll. 10-15.

ANALYSIS
The crux of this appeal involves what the phrase, “detecting content
distribution site spoofing” means. Appellants have not defined this phrase
but do map detecting content distribution site spoofing to computing and
comparing hashes. See FF 1. Appellants also have not provided any
evidence that the phrase, “content distribution spoofing,” has a particular
meaning to those of ordinary skill in the art. See App. Br. 7-8; Reply Br. 2-
4. Thus, notwithstanding the ordinary meaning of “spoofing,”4 the broadest
reasonable construction for “detecting content distribution spoofing” in light
of the disclosure includes detecting when a document’s computed hash
distributed by a site and a decrypted hash obtained from the document’s
digital signature do not match. See In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations omitted).

4 “Spoofing” is the “practice of making a transmission appear to come from
an authorized user.” Microsoft® Computer Dictionary 494 (5th ed. 2002).
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Iverson teaches a process for assuring that a document (e.g., an
electronic transcript) comes from a university. See FF 3-4. As this
document and its content (e.g., the transcript) are sent or distributed from the
university electronically (see FF 3), the university must use some electronic
device, such as a computer or server, to deliver the document. See id. We
therefore find that ordinarily skilled artisan would have recognized that
Iverson’s discussion of a university delivering transcripts electronically to a
recipient (see id.) includes a computer or server to store and deliver content
(e.g., a content distribution site).
Iverson further uses encryption and a digital signature to ensure the
information’s source, accuracy, and integrity can be trusted by verifying a
document’s authenticity. FF 5. Thus, when Iverson uses the digital
signature to verify the authenticity of the document (e.g., an electronic
transcript) by matching the hash obtained from the decrypted digital
signature against the original document’s hash (see FF 4), Iverson also
teaches obtaining assurances or detecting that the electronic document was
actually transmitted from the information’s source, which is the university’s
content distribution site. See id. Moreover, given that Appellants map
detecting content distribution site spoofing to computing and comparing
hashes (see FF 1), Iverson’s technique of determining whether the hashes
match or not (see FF 4) further teaches detecting content distribution site
spoofing when there is no match. That is, when taking into account the
inferences and creative steps an ordinarily skilled artisan would have
employed, Iverson’s verifying technique to determine whether a document is
authentic or not (see FF 4-5) further suggests detecting not only whether the
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university’s content source (e.g., a content distribution site) is authentic but
also whether its content distribution site is authorized (see FF 4-5). See KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Additionally, Iverson further teaches preventing inauthentic
information sent from the content distribution site (e.g., a university’s
computer or server) from being viewed or generates a warning message if
the information is inauthentic. See FF 3, 6. Similarly, Appellants generate
invalid messages when the hashes do not match. See FF 2. Thus, Iverson
teaches yet another process step (see FF 3, 6) that detects an information’s
authenticity and thus suggests to an ordinarily skilled artisan detecting
content distribution site spoofing when information that is transmitted from
a university’s computer is considered inauthentic by preventing viewing or
generating a warning. See KSR, 550 U.S. at 418. We therefore find that
Iverson, despite Appellants’ assertions (App. Br. 8), teaches and suggests
detecting content distribution site spoofing if the dynamically computed
hash value does not match the hash value encrypted with in the digital
signature as claim 1 requires.
Also, the Examiner has formulated this rejection under § 103 and
relies on what Iverson teaches in concluding that the “detecting content
distribution site spoofing” step in claim 1 is obvious. See Ans. 3-5. Thus,
contrary to Appellants’ assertion (Reply Br. 3-4), the Examiner is not relying
on inherent characteristic in Iverson to teach the recited spoofing step. Also,
as KSR explains, an obviousness analysis need not seek out precise teachings
directed to the claimed subject matter and can take into account the creative
steps and inferences an ordinarily skilled artisan would have employed. See
KSR, 550 U.S. at 418.
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For the foregoing reasons, Appellants have not persuaded us of error
in the obviousness rejection of: independent claim 1 and claims 2, 10, 12,
and 13 not separately argued with particularity (App. Br. 7-8).

Claims 3, 5, 14, and 16
Claim 3 depends from claim 1 and further recites the ensuring step
comprises comparing a domain for a digital signature to a domain5
embedded in the document’s field. The Examiner relies on Iverson’s
discussion of using the digital signature to assure the document came from
the university to teach this limitation and maps Iverson’s university to the
recited domain. See Ans. 4, 9.
Appellants argue that Iverson does not compare the recited domains
and that the elected domain (i.e., the university) is not embedded in the
document’s field as required. App. Br. 8-9; Reply Br. 4-5.
The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 3 by finding
that Iverson and Satake collectively would have taught or suggested
comparing a domain for a digital signature to a domain embedded in the
document’s field?

5 Appellants describe comparing domain names at step 340 and not domains.
See Spec. ¶ 0029; Fig. 3.
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FINDINGS OF FACT (FF)
7. Satake teaches embedding a seal image or digital signature into
the document at area 63 of the document at step S17. Satake, col. 6, ll. 20-
36; Figs. 5, 6A.
8. Satake’s CPU 11 generates an MD (message digest) file (or digest
information) to ensure the contents of the document by clicking “STAMP”
on execution window 61. A CPU 11 regenerates the MD file (regenerated
digest information) of the document and compares decrypted digest
information with the regenerated digest information at step 46. Satake,
col. 6, ll. 2-7; col. 7, ll. 10-16; Figs. 2, 6A, 7.

ANALYSIS
Based on the record, we find error in the Examiner’s rejection of
claim 3 which includes comparing a domain for a digital signature to a
domain embedded in the document’s field. As elected (Ans. 4, 9), the
domain is the university disclosed in Iverson. Iverson teaches the document
(e.g., the electronic transcript) can be digitally signed by encrypting a “hash”
of the document with the university’s private key. See FF3. Thus, Iverson
teaches some part of the university’s identity (e.g., a university’s private
key) is embedded in the document (e.g., transcript). However, the ordinary
and customary meaning of “domain” in the Internet and network context6 is
information that identifies the entity’s type owning the network address. See
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)

6 Microsoft® Computer Dictionary 172 (5th ed. 2002) defines “domain” as
“the highest subdivision of a domain name in a network address, which
identifies the type of entity owning the address (for example, .com for
commercial users or .edu for educational institutions) . . . .”
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(internal citations omitted). Iverson fails to discuss that such information
(e.g., “.edu” for the university) is embedded within the document’s field as
claim 3 requires. See FF 3-4.
Additionally, Iverson teaches the decrypted digital signature’s hash
and a hash of the original document (e.g., the transcript) are compared. See
FF 4. That is, one hash – not a domain for the digital signature – is
compared with another hash – not a domain embedded in the document.
Satake does not cure this deficiency. See FF 7-8. Satake embeds a seal,
rather than domain, into the document (see FF 7) and compares digest
information, which has not been disclosed to include any domain
information (see FF 8). We therefore find neither Iverson nor Satake alone
or in combination teach comparing a domain for a digital signature to a
domain embedded in the document’s field as claim 3 recites.
For the foregoing reasons, Appellants have persuaded us of error in
the obviousness rejection of: (1) claim 3; (2) claim 14 which recites
commensurate limitations; and (3) dependent claims 5 and 16 for similar
reasons.

Claims 4 and 15
Claim 4 depends from claim 1 and further recites ensuring the markup
language document originates from a host server at the pre-defined source.
The Examiner finds that Iverson’s discussion of employing the digital
signature to assure the document actually came from the university teaches
this limitation. See Ans. 4. Appellants assert that Iverson fails to disclose or
teach the recited host server. App. Br. 9; Reply Br. 6.

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The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 4 by finding
that Iverson and Satake collectively would have taught or suggested
ensuring the markup language document originates from a host server at the
pre-defined source?

ANALYSIS
Based on the record, we find no error in the Examiner’s rejection of
claim 4 which includes ensuring the markup language document originates
from a host server at the pre-defined source. As stated above, when
addressing claim 1, Iverson teaches that the digital signature assures that the
document actually comes from the university. See FF 4. Iverson therefore
teaches ensuring the document originates from a pre-defined source (e.g., the
university). See id. Additionally, while we agree that Iverson does not
expressly state that the document originates from a server (App. Br. 9), the
document or transcript is electronic. Thus, Iverson teaches and suggests the
university’s transcript delivery service involves some electronic device to
store and deliver the students’ transcripts, such as a computer or server. See
FF 3-4.
Also, when taking into account the inferences and creative steps that
an ordinarily skilled artisan would have employed given such a teaching (see
id.), an ordinarily skilled artisan would have recognized that a computer or
server are used to store and deliver information, including storing and
delivering transcripts (see id.). See KSR, 550 U.S. at 418. That is, an
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ordinarily skilled artisan would have recognized that some type of device
must be used, including a server that stores the electronic transcripts and
delivers or serves the transcripts to another. We therefore find that Iverson’s
encryption and digital signature techniques teach and suggest ensuring
documents (e.g., electronic transcripts) originate not only from the pre-
defined source (e.g., the university) but also from a host server at the pre-
defined source (e.g., the university’s host server). See FF 3-5.
For the foregoing reasons, Appellants have not persuaded us of error
in the obviousness rejection of: independent claim 4 and claim 15 not
separately argued with particularity (App. Br. 9).

Claims 7, 8, 117, 18, and 19
Claim 7 depends from claim 1 and further recites retrieving an
embedded slogan from a digital certificate associated with the markup
language document and modifying the document to render the embedded
slogan near a portion of the document referencing a pre-defined slogan. The
Examiner finds that Iverson’s discussion of a digital signature and its
assurances teach these limitations. Ans. 5. Appellants argue that the
passages cited by the Examiner fail to mention the recited limitations. See
App. Br. 10; Reply Br. 6-8. The issue before us, then, is as follows:

7 Claim 11 depends from claim 1. See App. Br. 16. However, claim 11
recites “said client-side page security logic,” which is found in claim 10 not
claim 1. We therefore presume that this is a typographical error and that
claim 11 properly depends from claim 10.
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ISSUE
Under § 103, has the Examiner erred in rejecting claim 7 by finding
that Iverson and Satake collectively would have taught or suggested
retrieving an embedded slogan from a digital certificate associated with the
markup language document and modifying the document to render the
embedded slogan near a portion of the document referencing a pre-defined
slogan?

ANALYSIS
Based on the record, we find error in the Examiner’s rejection of
claim 7 which includes retrieving an embedded slogan from a digital
certificate associated with the markup language document and modifying the
document to render the embedded slogan near a portion of the document
referencing a pre-defined slogan. The Examiner finds “information
regarding the digital signature” can be the recited embedded slogan. See
Ans. 10. We do not find this position unreasonable to extent that Appellants
have not defined a slogan. See generally Specification. Iverson teaches that
information or a document is digitally signed and the document contains the
digital signature. See FF 3. Iverson, however, does not discuss a digital
certificate or any explanation of how a slogan (e.g., information) is retrieved
from a digital certificate. See id. Additionally, while Iverson teaches
modifying the document to include or embed information (e.g., a digital
signature) into the document (see id.), there is no discussion of embedding a
slogan near a portion of a document referencing a pre-defined slogan (see
id.) as required by claim 7.
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For the foregoing reasons, Appellants have persuaded us of error in
the obviousness rejection of: (1) claim 7; (2) claims 11 and 18 which recite
commensurate limitations; and (3) dependent claims 8 and 198 for similar
reasons.

THE REMAINING OBVIOUSNESS REJECTIONS
Claims 6 and 17 are rejected under 35 U.S.C. § 103 over Iverson,
Satake, and Kenmochi (Ans. 5-6), and claims 9 and 20 are rejected under 35
U.S.C. § 103 over Iverson, Satake, and Douglas (Ans. 6-7). Regarding these
rejections, Appellants incorporate the arguments made for claims 1 and 12.
See App. Br. 11-12. For the reasons stated above in connection with claims
1 and 12, Appellants have not persuaded us of error in these obviousness
rejections for claims 6, 9, 17, and 20.

CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 4, 6, 9, 10, 12, 13,
15, 17, and 20, but erred in rejecting claims 3, 5, 7, 8, 11, 14, 16, 18, and 19
under § 103.

ORDER
The Examiner’s decision rejecting claims 1-20 is affirmed-in-part.

8 Claim 8 depends from claim 1, and claim 19 depends from claim 12. See
App. Br. 15, 19. However, these claims recite “said embedded slogan,”
which is found in claims 7 and 18, not claims 1 and 12. We therefore
presume that these are typographical errors and that claims 8 and 19
properly depend from claims 7 and 18 respectively.
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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-IN-PART

pgc
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EVIDENCE APPENDIX

Microsoft® Computer Dictionary 172, 494 (5th ed. 2002).

Notice of References Cited

Application/Control No.

10/923,964
Applicant(s)/Patent Under
Reexamination

Examiner

Roderick Tolentino
Art Unit

2400

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