Ex Parte Jacobs et al

Board of Patent Appeals and Interferences

Sep 2, 2009

09560960 (B.P.A.I. Sep. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID M. JACOBS, IMRAN SAYEED,
GREG SABATINO, and TARKINGTON McMAINS
____________

Appeal 2009-003773
Application 09/560,960
Technology Center 3600
____________

Decided: September 3, 2009
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
1
Appeal 2009-003773
Application 09/560,960

STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-2, 5, 7-8, 10-16, and 18-28 which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.
THE INVENTION
The Appellants’ claimed invention is directed to a system for securely
performing financial transactions over a public data network, such as the
Internet, using encryption data. (Spec. 4:1-7). Claim 1, reproduced below,
is representative of the subject matter of appeal.
1. A method for securely providing a financial application over a
public data network (PDN), comprising:
receiving a request for a financial application over a PDN from
a first location;
directing the request to a secure electronic site;
determining whether the request for the financial application
has been received before;
registering the request through a secure registration process
contingent on the request for the financial application not having been
received before, comprising:
• providing a key exchange certificate in response to the
request; and
• requesting and receiving a digital certificate from a
certificate authority;
2
Appeal 2009-003773
Application 09/560,960

preparing a response to the request;
transmitting software specific to the requested financial
application over the PDN to the first location for executing a financial
application;
transmitting security software over the PDN to the first location
to provide security for a response to the request;
securely processing the request over the PDN with the software
specific to the requested financial application and security software;
wherein transmitting the security software is contingent upon a
success of the secure registration process.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Saito US 6,275,941 B1 Aug. 14, 2001
Kohls US 7,020,632 B1 Mar. 28, 2006

The following rejections are before us for review:
1. Claims 1-2, 5, 7-8, 10-16, and 18-28 are rejected under
35 U.S.C. § 103(a) as unpatentable over Saito and Kohls.

THE ISSUE
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
This issue turns on whether Saito discloses “transmitting security
software over the PDN to the first location to provide security for a response
to the request.”
3
Appeal 2009-003773
Application 09/560,960

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Saito discloses a security management method for a network system
(Title).
FF2. Saito in Figure 1 shows the server 3 connected the client 20.
FF3. Saito discloses that security information concerning users and
resources such as application programs are introduced to server 3 and
converted into an LDAP format (Col. 5:57-67).
FF4. Saito in Fig. 1 shows that server 3 which contains security information
is connected to the wide area network 10 and client 20 but it is not
specifically disclosed the security information or applications is actually
transmitted to these locations 10 and 20.
FF5. Saito in Col. 5:57-Col. 6:27 and Fig. 1 does not specifically disclose
that security information and application programs are transmitted to the
client 20.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
4
Appeal 2009-003773
Application 09/560,960

factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) In KSR, the Supreme Court emphasized “the need
for caution in granting a patent based on the combination of elements found
in the prior art,” id. at 415-16.

ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
Saito fails to disclose “transmitting security software over the PDN to the
first location to provide security for a response to the request” (Br. 4).
In contrast the Examiner has determined that the claim 1 is properly
rejected because Saito discloses the cited limitation at col. 5:57- col. 6:25
(Ans. 4, 10).
We agree with the Appellants. Claim 1 requires in part: “transmitting
security software over the PDN to the first location to provide security for a
response to the request.” Thus the claim specifically requires that security
software be transmitted over a PDN to the first location with the first
location being where the request for the financial application came from.
Saito does disclose that security information and application programs are
introduced to the server 3 (FF3). However, Saito does not specifically
disclose that this security information, including the application programs, is
actually transmitted to the client 20 (FF4, FF5) who would be making the
5
Appeal 2009-003773
Application 09/560,960

request from the “first location.” The Examiner has asserted that Kohls
discloses transmitting software specific to a requested financial application
(Ans. 4-5 and 10) but this is not to transmitting security software for a
response to the request. Saito does not disclose “transmitting security
software over the PDN to the first location to provide security for a response
to the request” (FF5) and the Examiner has not asserted that Kohls does. For
these reasons the rejection of claim 1, and dependent claims 2, 5, 7-8, and
10-14 is not sustained. Claim 15 contains limitations drawn to
“providing….security applications…to the first location for the request”
which are similar to those in claim 1 addressed above and the rejection of
this claim, as well as dependent claims 16 and 18-28 is not sustained for
these same reasons.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-2, 5, 7-8, 10-16, and 18-28 under 35 U.S.C. § 103(a) as
unpatentable over Saito and Kohls.

DECISON
The Examiner’s rejection of claims 1-2, 5, 7-8, 10-16, and 18-28 is
reversed.
REVERSED

JRG

6
Appeal 2009-003773
Application 09/560,960

KING & SPALDING LLP (CITI CUSTOMER NUMBER)
ATTN: GEORGE T. MARCOU
1700 PENNSYLVANIA AVENUE, NW
SUITE 200
WASHINGTON, DC 20006

7