Ex parte Keshav

Board of Patent Appeals and Interferences

Jun 20, 2001

08333829 (B.P.A.I. Jun. 20, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte SRINIVASAN KESHAV
__________
Appeal No. 1998-1926
Application 08/333,829
___________
ON BRIEF
___________
Before JERRY SMITH, BARRY and BLANKENSHIP, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-20, which constitute
all the claims in the application.
The disclosed invention pertains to a method and
apparatus for authenticating a unique article by creating a
unique data signature for the article.
Representative claim 1 is reproduced as follows:
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1. A method for authenticating a unique article by
creating a unique data signature for the unique article, said
method comprising the steps of:
receiving a data set including at least one data
subset wherein a first data subset is representative of a
unique identification number fixed to a surface of a
substantially unforgeable document;
encrypting said input data set to generate a unique
data signature and fixing said unique data signature to at
least one of said unique article and a verification
certificate, to thereby authenticate said unique article; and
utilizing the substantially unforgeable document and
said unique data signature together for subsequent proof of
authenticity of the unique article.
The examiner relies on the following references:
Stambler 5,267,314 Nov. 30, 1993
Haber et al. (Haber) 5,373,561 Dec. 13, 1994
(filed Dec. 21,
1992)
Schneier, “Untangling Public-Key Cryptography,” Dr. Dobb’s
Journal, Vol. 17, Issue 5, May 1992, pages 16-28.
The following rejections are on appeal before us:
1. Claims 1-3, 5-7, 13, 14, 16 and 17 stand rejected
under 35 U.S.C. § 102 (a) and (e) as being anticipated by the
disclosure of Stambler.
2. Claims 4, 8-11 and 15 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over the teachings of Stambler in
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view of Schneier.
3. Claims 18-20 stand rejected under 35 U.S.C. § 103
as being unpatentable over the teachings of Stambler in view
of Haber.
4. Claim 12 stands rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Stambler in view of
Schneier and further in view of Haber.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answers for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of anticipation and obviousness relied upon by the
examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our
decision, the appellant’s arguments set forth in the briefs
along with the examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the
examiner’s answers.
It is our view, after consideration of the record
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before us, that the evidence relied upon does not support any
of the prior art rejections made by the examiner.
Accordingly, we reverse.
We consider first the rejection of claims 1-3, 5-7,
13, 14, 16 and 17 under 35 U.S.C. § 102 as being anticipated
by the disclosure of Stambler. Anticipation is established
only when a single prior art reference discloses, expressly or
under the principles of inherency, each and every element of a
claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468 U.S.
1228 (1984); W.L. Gore and Associates, Inc. v. Garlock, Inc.,
721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
With respect to independent claims 1, 8 and 13, the
examiner notes that Stambler discloses a method and apparatus
for authenticating a document or a transaction. The examiner
also notes that Stambler uses information from the document or
transaction and applies an encryption process to this
information to derive a variable authentication number which
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is affixed to the document or the transaction [final
rejection, page 2].
Appellant argues that Stambler does not teach a method
for authenticating a unique article or an original work of
authorship. Appellant also argues that Stambler has no
verification certificate, and Stambler does not encrypt input
data including data representative of a unique identification
number fixed to a surface of a substantially unforgeable
document [brief, pages 7-10].
The examiner responds that a substantially unforgeable
document includes personal checks which are within the
definition as set forth in appellant’s specification [answer,
pages 5-6]. Appellant responds that the examiner has ignored
a portion of the definition set forth in his specification
which would preclude conventional personal checks [reply
brief].
We agree partially with appellant’s position. As
pointed out by appellant, the specification describes a
substantially unforgeable document as “any unique certificate,
charter, license, chronicle, record, deed, draft, bill, or the
like, which has been produced in a manner to prevent, inhibit,
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discourage, etc. the fraudulent reproduction or alteration of
same with an intent to prejudice the rights of another, such
as, for example, a currency note or other similar instrument”
[page 5, lines 22-27]. As pointed out by appellant in the
briefs, a personal check may be designed to be “substantially
unforgeable,” but not all personal checks are so designed.
Nevertheless, we find that the typical conventional personal
check is designed to prevent, inhibit or at least discourage
the fraudulent reproduction thereof. Thus, we agree with the
examiner that a personal check is a substantially unforgeable
document within the definition set forth in appellant’s
specification.
Of more importance to us in determining whether
Stambler anticipates the claimed invention is the recitation
in each of the independent claims that the unique signature is
computed from a unique identification number which is fixed on
the document. Stambler does not generate a signature using a
unique identification number of the document. Stambler
discloses that the information entered relates to the
transaction such as check number, check amount, etc. [column
5, lines 17-20]. These are not data sets which represent a
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unique identification number of a document.
Since we agree with appellant that Stambler does not
contain every feature of independent claims 1, 8 and 13, the
rejection of these independent claims under 35 U.S.C. § 102 is
improper. Therefore, we do not sustain the rejection of any
of claims 1-3, 5-7, 13, 14, 16 and 17 as anticipated by the
disclosure of Stambler.
We now consider the rejections under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d
1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior
art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in
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the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met,
the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). Only those arguments actually made
by appellant have been considered in this decision. Arguments
which appellant could have made but chose not to make in the
brief have not been considered [see 37 CFR § 1.192(a)].
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Each of the examiner’s rejections of the claims under
35 U.S.C. § 103 fundamentally relies on the examiner’s
incorrect position that Stambler fully meets the invention of
the independent claims. There are differences between the
claimed invention and the teachings of Stambler (for example,
the use of a unique identification number) which have not been
addressed by the examiner. The additional citation of
Schneier and Haber does not overcome the deficiencies in
Stambler noted above. Since the examiner has not properly
addressed the differences between the claimed invention and
the applied prior art, the examiner has failed to establish a
prima facie case of the obviousness of the claimed invention.
Therefore, we do not sustain the examiner’s rejection of
claims 4, 8-12, 15 and 18-20.
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In summary, we have not sustained any of the
examiner’s prior art rejections. Therefore, the decision of
the examiner rejecting claims 1-20 is reversed.
REVERSED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1998-1926
Application 08/333,829

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PETER H. PRIEST, ESQ
LAW OFFICES OF PETER H. PRIEST
529 DOGWOOD DRIVE
CHAPEL HILL, NC 27516
JS:caw