Ex parte Levine

Board of Patent Appeals and Interferences

Oct 31, 2001

08508747 (B.P.A.I. Oct. 31, 2001)

An amendment filed subsequent to the final rejection (Paper No. 10,1
filed September 15, 1997 has been entered by the examiner (Paper No. 11, filed
September 22, 1997).
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publication and is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JUDAH LEVINE
____________
Appeal No. 1998-2466
Application No. 08/508,747
____________
HEARD: October 17, 2001
____________
Before URYNOWICZ, DIXON, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1, 6, and 7 . Claims1
2-5 and 8-12 are objected to as depending from rejected
claims.
BACKGROUND
Appeal No. 1998-2466 Page 2
Application No. 08/508,747
Appellant's invention relates to a system and method for
time-stamping and signing a digital message. An understanding
of the invention can be derived from a reading of exemplary
claim 1, which is reproduced as follows:
1. A machine-implemented method for time-stamping and
signing a digital message to establish the date and time when
said message was received by a first machine, comprising the
machine implemented steps of:
providing for the inputting of said message into said
first machine;
providing for the coordination of the time of said first
machine with Universal Coordinated Time (UTC);
providing for the addition of a time-stamp to said
message, said time stamp being the Universal Coordinated Time
(UTC) at which said first machine receives said message;
providing a procedure for checking the time accuracy of
said first machine to verify the time accuracy of the time-
stamp;
providing for the computation of a hash code for the
time-stamped message with a specific hashing procedure;
providing for the computation of a digital signature for
the hashed time-stamped message utilizing a private key; and
providing for outputting the signed hashed time-stamped
message.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Haber et al. (Haber) 5,136,647 Aug. 4,
1992
Appeal No. 1998-2466 Page 3
Application No. 08/508,747
Tysen et al. (Tysen) 5,497,422 Mar. 5,
1996
Claims 1, 6, and 7 stand rejected under 35 U.S.C. § 103
as being unpatentable over Haber in view of Tysen.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 15, mailed April 14, 1998) for the examiner's complete
reasoning in support of the rejections, and to appellant's
brief (Paper No. 14, filed January 23, 1998) for appellant's
arguments thereagainst. 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).
OPINION
In reaching our decision in this appeal, we have
carefully considered the subject matter on appeal, the
rejection advanced by the examiner, and the evidence of
obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, appellant's arguments
set forth in the brief along with the examiner's rationale in
Appeal No. 1998-2466 Page 4
Application No. 08/508,747
support of the rejections and arguments in rebuttal set forth
in the examiner's answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would not have suggested to one of ordinary
skill in the art the invention as set forth in claims 1, 6,
and 7. Accordingly, we reverse.
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 the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.
Appeal No. 1998-2466 Page 5
Application No. 08/508,747
1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985); 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. 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).
The examiner's position (final rejection, page 2) is
that:
Haber discloses a time stamping method whereby a
trusted outside agency is provided a document from
various “authors” for digital time stamping and
authentication purposes. The document is time
stamped by the agency, operated on by a hash
function, and digitally signed with the trusted
agency’s private key for authentication of both the
Appeal No. 1998-2466 Page 6
Application No. 08/508,747
document and the time stamp, see column 6, lines 1-
24. Haber discloses a method whereby a chain of
certificates are generated to “back-up” the time
stamp, or otherwise fix the order in which the time
stamped certificates are generated, i.e. any
document that is time stamped must have the time and
order in the chain of certificates correct for
authentication. Tysen teaches that the time stamp
is coordinated with UTC, see column 12, line 60. It
would have been obvious to one of ordinary skill in
the art at the time the invention was made to time
stamp a document with the time coordinated to UTC as
taught in Tysen in the trusted agency disclosed in
Haber in order to provide a common time reference
for all users.
From our review of the record, we agree with appellant
(brief, page 12) that the teachings of Haber and Tysen would
not have suggested steps or means for checking the time
accuracy of the machine time to verify the time accuracy of
the time-stamp. Appellant acknowledges (brief, page 10)
that Haber utilizes hashing of the time-stamped message and a
digital signature in a manner similar to that used by
appellant. However, appellant asserts (id.) that Haber
utilizes a different approach to verify the date and time when
a message is received by the time-stamp authority. Haber's
approach is to relate the time of receipt of the message to
the time of receipt of the previous and subsequent messages,
in order to show the veracity of the time-stamp. Appellants
Appeal No. 1998-2466 Page 7
Application No. 08/508,747
assert (id.) that in Haber, the "accuracy of the time stamp is
not discussed nor is it checked by any means or technique."
Appellants point out (brief, page 15) that by providing an
accurate time-stamp and continually verifying its accuracy, it
is not necessary to provide a chain of time stamps as in
Haber.
We find that Haber (col. 4, lines line 6-11) the time-
stamp receipt includes the "current time." Haber (col. 4,
lines 11-33) proves the veracity of the time-stamp of document
D by comparing the time-stamp of D with the time-stamp ofk k
previous document D and subsequent document D ; i.e., ask-1 k+1
long as the time-stamp of D is between the times of documentsk
D and D , Haber considers the time-stamp of D to bek-1 k+1 k
correct. However, Haber does not verify the time indicated by
the clock in order to determine if the clock reflects accurate
time. From the disclosure of Haber, we find that the phrase
"current time" refers to the time indicted by the system
clock, which may or may not reflect accurate time. Thus, we
do not agree with the examiner's assertion (answer, page 3)
that Haber discloses "checking the time accuracy of said first
machine to verify the accuracy of the time-stamp."
Appeal No. 1998-2466 Page 8
Application No. 08/508,747
With regard to Tysen, appellant acknowledges (brief, page
11) that Tysen utilizes a UTC time stamp. However, appellant
asserts (id.) that Tysen does not discuss the line of code
(col. 12, line 60) which makes reference to UTC, and provides
"no means or technique for checking whether the time of their
machine remains an accurate UTC time after it is once set."
Appellant acknowledges (brief, page 19) that the examiner
is correct that the time of the signature in Tysen is part of
the causal chain because it is contained in the certificate.
However, appellant asserts (id.) that in Tysen, time is not
verified or certified in any way. We observe that Tysen
additionally refers to UTC time (col. 12, lines 21 and 22)
with respect to the certificate validity "not before" and "not
after" set UTC times. However, Tysen is silent as to
verifying the accuracy of the time, and provides no
explanation of how the UTC time is obtained. From the
disclosure of Tysen of using UTC time, we agree with appellant
(brief, page 20) that the time referred to is the time stored
in the system computer when an operation is performed. We
consider the time of the system computer to be initially set
to UTC time, but find no teaching or suggestion that Tysen
Appeal No. 1998-2466 Page 9
Application No. 08/508,747
thereafter checks the accuracy of the time in the system
computer.
From the teachings of Haber and Tysen, we find that since
UTC time is the official time of the United States, that a
skilled artisan would have been motivated to use UTC time as
the
"correct time" of Haber, as it is the most accurate time
available. We agree with the examiner that the teachings of
Haber and Tysen can be combined to suggest the limitation of
coordinating the time of the first machine with UTC as recited
in independent claims 1 and 7, because upon setting the system
computer to UTC time, at least initially, the system computer
time will be coordinated with UTC. In addition, with regard
to claim 1, we therefore also find that the time-stamp will
reflect UTC time. Claims 1 and 7, however, require more.
Appellants assert (brief, page 23) that:
Since it is clear that even if Haber et al. used UTC
time as did Tysen et al., they still lack a
procedure for checking the time accuracy of the
machine to detect whether it continues to state UTC
time.
We agree, based upon our analysis, supra, of Haber and Tysen,
that both Haber and Tysen are missing the claim limitation of
Appeal No. 1998-2466 Page 10
Application No. 08/508,747
checking the time accuracy of the first machine to verify the
time accuracy of the time-stamp. Accordingly, we find that
the examiner has failed to establish a prima facie case of
obviousness of the claimed invention. The rejection of claims
1, 6, and 7 under 35 U.S.C. § 103 is therefore reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 6, and 7 under 35 U.S.C. § 103 is reversed.
REVERSED
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
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Appeal No. 1998-2466 Page 11
Application No. 08/508,747
CHARLES E. ROHRER
P.O. BOX 20067
BOULDER, CO 80308
APPEAL NO. 1998-2466 - JUDGE LEVY
APPLICATION NO. 08/508,747
APJ LEVY
APJ DIXON
APJ URYNOWICZ
DECISION: REVERSED
Prepared By: GJH
DRAFT TYPED: 28 Jun 02
FINAL TYPED: