Ex Parte Krawetz

Board of Patent Appeals and Interferences

Aug 31, 2011

09975815 (B.P.A.I. Aug. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NEAL A. KRAWETZ
____________________

Appeal 2009-011319
Application 09/975,815
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, KALYAN K. DESHPANDE and
BRUCE R. WINSOR, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011319
Application 09/975,815

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-34. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim(s)
Exemplary independent claim 1 under appeal reads as follows:
1. A method for secure data transmission, comprising:
generating a character string at a sender for each data packet
associated with the secure data transmission;
generating a hash key using the character string and a private key,
wherein the hash key is different for each data packet associated with the
secure data transmission;
encrypting a data packet associated with the secure data transmission
using the hash key; and
transmitting an identification key associated with the sender, the
character string, and the encrypted data packet from the sender to a recipient.

Rejections on Appeal
1. The Examiner rejected claims 1-34 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. The Examiner rejected claims 1, 2, 4, 5, 7, 8, 11, 12, 14, 15, 19,
and 22-25 under 35 U.S.C. § 102(e) as being anticipated by Roberts
(US 6,931,128 B1).
3. The Examiner rejected claims 3, 6, 9, 10, 13, 16-18, 20, 21, and
26-34 as being unpatentable under 35 U.S.C. § 103(a) over the combination
of Roberts and Bowman (US 6,751,736 B1).
Appeal 2009-011319
Application 09/975,815

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Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claims
1-34 under 112, first paragraph, because:
Appellant submits that one skilled in the art would recognize
that the variable used to generate the hash key 64, namely the
character string 54, is changed to generate a hash key 64 that
"changes with each transmitted, data packet" as expressly
disclosed on page 8, in lines 25-27, of the originally-filed
disclosure. For example, at least on page 4 of the originally-
filed disclosure, it is stated that "the string generator randomly
generates and stores the character string," and that the character
string is hashed with the private key to generate the hash key
(page 4, lines 19-33). Moreover, one skilled in the art would
recognize that the encrypted data packets are associated with
the secure transmission.
(App. Br. 7).
2. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(e) as being anticipated, because:
Claim 1 recites, inter alia, "transmitting an identification key
associated with the sender, the character string, and the
encrypted data packet from the sender to a recipient" (emphasis
added). On pages 4-5 of the Office Action, Appellee appears to
assert that Roberts discloses this limitation by "transmitting an
identification key (SPI)." However, in Col. 9, line 65 through
Col. 10, line 7, Roberts states:
A Secure Parameter Index (SPI) is a 96 bit (12 byte) bit
sequence that is unique to the second computer system,
The SPI may be included to ensure compatibility with the
Encapsulation Security Payload (ESP) protocol of the
Internet Protocol Security (IPSec) protocol ... The data
packet 204 is then transmitted to the second computer
system (act 409) for decryption by the decryption device
202.
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Application 09/975,815

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Therefore, the Secure Parameter Index (SPI) of Roberts
appears, to be associated with the second computer, i.e., the
receiving computer, and does not appear to be "associated with
the sender" as recited in Claim 1. For at least this reason,
Roberts does not appear to anticipate Claim 1.
(App. Br. 8)(emphasis omitted).
3. Further, as to the rejections of claims 11 and 17 under
35 U.S.C. § 102(e) and claim 27 under 35 U.S.C. § 103(a), Appellant
contends that the Examiner erred for similar reasoning as to claim 1. (App.
Br. 9: last full paragraph; 10: third full paragraph; and 11-12: bridging
paragraph).
4. Lastly, Appellant contends that the Examiner also erred in
the new rationale presented for the first time in the Answer at page 26,
lines 7-19, because:
[I]n support of the rejection under 35 U.S.C. §102(e) the
Appellee generally states on page 26 of Examiner's Answer for
the first time during prosecution that the "identifying label" of
Roberts meets the claim limitation of an identification key
associated with the sender, that the "label" being concatenated
with the random seed and transmitted to the second computer
system meets the claim limitation of transmitting an
identification key associated with the sender, and that
disclosing "the first and second computer negotiating a
parameter expiry identifying the valid lifetime of the master
secret" meets the claim limitation of an identification key
associated with the sender. Appellant respectfully submits that
in each instance, the alleged "key" identified by the Appellee is
simply not associated with the sender as claimed and that the
above-referenced purported disclosure of Roberts in no way
identifies the sender to the receiving computer.
(Reply Br. 8).
Appeal 2009-011319
Application 09/975,815

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Issues on Appeal
Whether the Examiner has erred in rejecting claims 1-34 under 35
U.S.C. § 112, first paragraph, because the subject matter added to the claims
by amendment would have been recognized as inherent by persons of
ordinary skill? Whether the Examiner has erred in rejecting 1-34 as being
anticipated or obvious because Roberts fails to disclose claim limitation(s)?

PRINCIPLES OF LAW
MPEP 2163.07(a)
By disclosing in a patent application a device that inherently performs
a function or has a property, operates according to a theory or has an
advantage, a patent application necessarily discloses that function, theory or
advantage, even though it says nothing explicit concerning it. The
application may later be amended to recite the function, theory or advantage
without introducing prohibited new matter. In re Reynolds, 443 F.2d 384,
170 USPQ 94 (CCPA 1971); In re Smythe, 480 F. 2d 1376, 178 USPQ 279
(CCPA 1973). “To establish inherency, the extrinsic evidence must make
clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill. Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.’” In re Robertson, 169 F.3d 743, 745, 49
USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (citations omitted).

ANALYSIS
We agree with the Appellant’s above contention 1. We conclude that
persons of ordinary skill would necessarily arrive at the claimed invention
upon implementation of “changes with each transmitted, data packet” as
expressly disclosed on page 8, lines 25-27, of Appellant’s originally filed
written description. At most, Appellant’s claims fail to comply with the
Appeal 2009-011319
Application 09/975,815

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requirements of 37 C.F.R. § 1.75(d)(1), and an objection might be
appropriate based on failure to comply therewith.
As to Appellant’s above contentions 2-4, we agree with Appellant.
Therefore, Appellant has established that the Examiner erred with
respect to the rejections of claims 1-34.

CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1-34 as failing to comply with 35 U.S.C. § 112, first paragraph.
(2) Appellant has established that the Examiner erred in rejecting
claims 1, 2, 4, 5, 7, 8, 11, 12, 14, 15, 19, and 22-25 as being anticipated
under 35 U.S.C. § 102(b).
(3) Appellant has established that the Examiner erred in rejecting
claims 3, 6, 9, 10, 13, 16-18, 20, 21, and 26-34 as being unpatentable under
35 U.S.C. § 103(a).
(4) On this record, claims 1-34 have not been shown to be
unpatentable.

DECISION
The Examiner's rejections of claims 1-34 are reversed.

REVERSED

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