Ex Parte Kenen

Board of Patent Appeals and Interferences

Mar 31, 2009

10893149 (B.P.A.I. Mar. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LEO M. KENEN
__________

Appeal 2009-1631
Application 10/893,149
Technology Center 2800
___________

Decided:1 March 31, 2009
___________

Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

1 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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A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 11 and 37. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The following Examiner’s rejections are before us on appeal:2
(1) Claim 37 is rejected under 35 U.S.C. § 112, first paragraph,
based on the written description requirement.
(2) Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Lawandy3 and Lewis.4
(3) Claim 37 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Lawandy, Lewis, and Ahern.5
The subject matter on appeal is directed to a method of verifying a
document. Claims 11 and 37 read as follows:
11. A method of verifying a document comprising:

determining jurisdictional information related to the
document, wherein the jurisdictional information is
mathematically related to a digital watermark embedded in the
document; and

using the jurisdictional information to extract the digital
watermark embedded in the document.

2 Claim 11 was provisionally rejected under 35 U.S.C. § 101 as claiming the
same invention as claim 16 of copending Application 10/816,175. Final
Office Action dated October 26, 2007, at 4; Examiner’s Answer dated May
7, 2008 (“Ans.”), at 3. Claim 16 was cancelled in an Amendment dated
November 6, 2007, filed in Application 10/816,175. Thus, the rejection is
now considered moot.
3 US 2001/0037455 A1 to Lawandy et al. published November 1, 2001.
4 US 2002/0194476 A1 to Lewis et al. published December 19, 2002.
5 US 6,769,061 B1 to Ahern issued July 27, 2004.
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37. The method of claim 11 wherein the document includes
first and second security elements, and wherein the
jurisdictional information is mathematically combined with
data in the first security element, and the combination is
encoded in the second security element.

App. Br. 12, Claims Appendix.6
B. ISSUES
(1) Has the Appellant shown reversible error in the Examiner’s
finding that claim 37 is not supported by the original disclosure of the instant
application?
(2) Has the Appellant shown reversible error in the Examiner’s
conclusion that the combined teachings of Lawandy and Lewis would have
suggested using jurisdictional information to extract a digital watermark
embedded in a document as recited in claim 11?
(3) Has the Appellant shown reversible error in the Examiner’s
finding that Ahern discloses a document including first and second security
elements as recited in claim 37?
C. PRINCIPLES OF LAW
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112, first paragraph, is whether the disclosure of
an application, as originally filed, reasonably conveys to one of ordinary
skill in the art that the inventor had possession at that time of the later
claimed subject mater. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
In other words, the description must be sufficiently clear that one of ordinary
skill in the art would have recognized from the disclosure that the applicant
invented the later claimed subject matter. In re Wertheim, 541 F.2d 257, 262

6 Appeal Brief dated April 11, 2008.
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(CCPA 1976). The test for determining compliance with the written
description requirement “is not whether a claimed invention is an obvious
variant of that which is disclosed in the specification.” Lockwood v.
American Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997).
The test for obviousness “is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” The
test is not that the claimed invention must be expressly suggested in any one
or all of the references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
A factual finding not shown by the Appellant to be erroneous may be
accepted as fact. In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964).
D. ANALYSIS
1. Issue (1)
Claim 37 depends from claim 11 and recites that “the jurisdictional
information is mathematically combined with data in the first security
element, and the combination is encoded in the second security element.”
App. Br. 12, Claims Appendix.
The Examiner found that the Appellant’s Specification does not
describe the subject matter of claim 37 in the context of extracting a digital
watermark as recited in claim 11. Ans. 4.
The Appellant argues that the language of claim 37 is supported by
paragraph [0136] of their published application7 (corresponding to page 30,
lines 20-21 of the Specification, as originally filed). App. Br. 7.
This portion of the Specification reads as follows:

7 The Appellants appear to be referring to US 2005/0063027 published
March 24, 2005.

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There are a variety of ways of using encryption or similar
randomization process to tie data in security elements together.
Some further examples include: . . .
3. Jurisdiction data that is mathematically combined
with or stored in/with data in one security element is encoded in
another security element.

Spec. 30:10-24 (emphasis added).
As explained by the Examiner, this portion of the original disclosure
describes using jurisdictional data as an encryption tool but does not
describe using jurisdictional data as recited in claim 37 to extract a digital
watermark. Ans. 4.
In sum, the Appellant has failed to explain how the portion of the
original disclosure, reproduced above, provides descriptive support for the
step of using jurisdictional information that is “mathematically combined
with data in the first security element, and the combination is encoded in the
second security element” to extract a digital watermark as recited in claim
37. For this reason, the Appellant has not shown that the Examiner
reversibly erred in rejecting claim 37 under 35 U.S.C. § 112, first paragraph,
based on the written description requirement.
2. Issue (2)
a. Findings of fact
The Examiner found:
Lawandy et al. discloses a method and system for
identifying and verifying the authenticity of a document, such
as a negotiable instrument, comprising determining information
related to the document, such as physical attributes of the
document, said information is being (mathematically) related to
a digital watermark that is embedded in the document, and
subsequently using said information to unlock/extract the
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digital watermark embedded in the document ([0007]-[0008],
[0061]).

Ans. 4; see also Lawandy, para. [0016] (“the physical attributes of an object
are utilized as a key for accessing information included in a digital
watermark for the object”); Lawandy, para. [0066] (disclosed invention may
be used to authenticate negotiable instruments and currency).
The Examiner found that Lawandy does not disclose using
jurisdictional information related to a document to unlock/extract a digital
watermark. Ans. 4.
However, the Examiner found:
Lewis et al. discloses a method for identifying a document,
such as a passport, wherein in one embodiment, jurisdictional
information about the passport is used to retrieve the
appropriate key associated with a digital signature ([0137]).

Ans. 4-5.
In particular, Lewis discloses that the passport contains a smart chip
which, in turn, contains some form of jurisdictional identifier. A passport
screening program can retrieve the appropriate key based on the
jurisdictional identifier. Lewis, para. [0137].
The Examiner found that jurisdictional information is available in
every negotiable document or instrument. Ans. 5.
The Appellant does not point to any error in the Examiner’s findings
of fact. See App. Br. 8-9.
b. Analysis
The Examiner concluded that it would have been obvious to one of
ordinary skill in the art to use jurisdictional information about the document
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of Lawandy to extract the digital watermark embedded therein in view of the
teachings of Lewis. Ans. 5.
The Appellant argues that the teachings of Lawandy and Lewis do not
yield the claimed method. In particular, the Appellant argues that Lewis
does not use jurisdictional information to extract descriptor data from a
smart chip. Instead, according to the Appellant, Lewis uses jurisdictional
information at a later point, i.e., to identify a public key with which the
stored digital signature is decrypted. App. Br. 8.
The Appellant’s argument is not persuasive of reversible error. The
test for obviousness is what the combined teachings of the references would
have suggested to one of ordinary skill in the art. Keller, 642 F.2d at 426.
The Examiner found that Lewis is evidence that it was known to use
jurisdictional information to extract or retrieve a digital watermark. See
Ans. 8; Lewis, para. [0137]. The Examiner found, and the Appellant does
not dispute, that jurisdictional information is available in every negotiable
instrument, including the negotiable instruments disclosed in Lawandy.
The Examiner also found that Lewis teaches that jurisdictional
information is useful for providing another measure of security in a
document. Ans. 5. In particular, the Examiner found that Lewis
“acknowledges that the use of jurisdictional identifiers specific to a
particular issuer would necessarily allow improved security for information
meant only for that particular issuer and no one else.” Ans. 9; Lewis, para.
[0137].
We find that one of ordinary skill in the art would have recognized
that using jurisdictional information to extract a digital watermark in the
document of Lawandy would likewise improve the security of information
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contained therein. Thus, it is reasonable to conclude that one of ordinary
skill in the art would have been motivated to use jurisdictional information,
as an alternative to physical attributes, to verify negotiable instruments in the
method of Lawandy.
For the reasons set forth above, the Appellant has not shown
reversible error in the Examiner’s conclusion that the combined teachings of
Lawandy and Lewis would have suggested using jurisdictional information
to extract a digital watermark embedded in a document as recited in claim
11.
3. Issue (3)
a. Findings of fact
Ahern Figure 2, reproduced below, illustrates an encoder in
accordance with the disclosed invention. Ahern 3:47-49.

Ahern Figure 2 depicts an encoder.
The watermark generator 110 provides a watermark 111 that is
associated with the content 250A of a document 250. The invisible encoder
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220 encodes the watermark 111 as a group of characters that are invisible
when rendered to create an invisible watermark 221. Ahern 4:11-16.
The invisible watermark 221 is appended to the content 250A of the
document 250, as illustrated by segment 250B of the document 250 in
Figure 2. Ahern 4:59-61.
b. Analysis
The Examiner found that Ahern discloses a document including a first
security element (element 111) and a second security element (element 221).
Ans. 10.
The Appellant argues that the document in Ahern includes only one
security element, i.e., element 221. In particular, the Appellant argues:
Item 111 is the input information provided to Ahern’s
invisible encoder 220 . . . . The output from encoder 220, i.e.,
invisible watermark 221, forms part of his document. There is
only one “security element” in Ahern’s document; it is
watermark 221.

App. Br. 10.
Claim 37 recites that the document includes first and second security
elements. The Appellant’s argument that the document in Ahern includes
only one security element is well-supported by the record. See, e.g., Ahern
4:11-16, 59-61; Ahern Fig. 2.
In sum, the Appellant has shown reversible error in the Examiner’s
finding that Ahern discloses a document that includes first and second
security elements as recited in claim 37.
E. DECISION
The rejection of claim 37 under 35 U.S.C. § 112, first paragraph,
based on the written description requirement is affirmed.
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The rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Lawandy and Lewis is affirmed.
The rejection of claim 37 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Lawandy, Lewis, and Ahern is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

PL Initial:
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