Ex Parte Ogg et al

Board of Patent Appeals and Interferences

Jul 25, 2008

09688456 (B.P.A.I. Jul. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CRAIG L. OGG and WILLIAM W. CHOW
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Appeal 2008-1041
Application 09/688,456
Technology Center 3600
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Decided: July 25, 2008
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Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-71. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We REVERSE.

Appeal 2008-1041
Application 09/688,456

THE INVENTION
The Appellants’ claimed invention relates to the secure printing of
value bearing items (VBI) which are preferably postage. The system
includes one or more cryptographic modules and a central database. The
cryptographic modules serve the function of Postal Security Devices
(PSD’s) and can prevent unauthorized modification of the value bearing
items (Specification, 1-3). Claim 1, reproduced below, is representative of
the subject matter of appeal.

1. A cryptographic system for securing data on a computer
network comprising:
a plurality of users coupled to the computer network; and
a plurality of cryptographic devices, each of the plurality of
cryptographic devices remote from the plurality of users, and each of
the plurality of cryptographic devices comprising:
a processor programmed to authenticate the plurality of
remote users on the computer network for secure processing of a
value bearing item (VBI);
a memory for storing security device transaction data for
ensuring authenticity of a user, wherein the security device transaction
data is related to the one of the plurality of users;
a cryptographic engine for cryptographically protecting
data;
an interface for communicating with the computer
network, and
a module for processing value for the value bearing item,
wherein each of the plurality of cryptographic devices is
capable of authenticating any of the plurality of remote users,
wherein each of the plurality of cryptographic devices is
capable of processing a VBI printing request from any of the plurality
of remote users, and
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wherein each of the plurality of cryptographic devices is
capable of generating indicia data for transmitting to any of the
plurality of remote users.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Lewis et al. US 6,233,565 B1 May 15, 2001

The following rejections are before us for review:
1. Claims 1-71 are rejected under 35 U.S.C. § 102(e) as
anticipated by Lewis.

FINDINGS OF FACT
We find the following enumerated findings of fact are supported at
least by a preponderance of the evidence1:
1. Lewis does not disclose that each of the plurality of cryptographic
devices is remote from the plurality of users (Col. 21:64-67).
2. Lewis does not specifically disclose that each cryptographic device
includes a module for processing the value bearing item.
3. Lewis does not specifically disclose that each of the plurality of
cryptographic devices is capable of authenticating any of the plurality of
remote users.

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).
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Application 09/688,456
4. Lewis does not specifically disclose that each of the plurality of
cryptographic devices is capable of processing a VBI printing request from
any of the plurality of remote users.
5. Lewis does not specifically disclose that each of the plurality of
cryptographic devices is capable of generating indicia data for transmitting
to any of the plurality of remote users.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631, (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the Specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
Lewis does not disclose the limitation for “a plurality of cryptographic
devices, each of the plurality of cryptographic devices remote from the
plurality of users” (Br. 4). The Examiner takes the position that because a
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plurality of clients may exist (Ans. 5) that the claim limitation is met by
Lewis.
We agree with the Appellants in this regard. Lewis fails to disclose
that each of the cryptographic devices is remote from the plurality of users
(FF 1). Lewis fails to disclose that the each cryptographic module is remote
from the user (Col. 21:64-67).
The Appellants further argue that Lewis does not disclose that each
cryptographic device includes a “module for processing the value bearing
item” (Br. 5). The Examiner argues that because the purchase server needs
not go through the authorization server that this limitation is found in Lewis
(Ans. 5).
We agree with the Appellants in this regard. Lewis does not
specifically disclose that each cryptographic device includes a module for
processing the value bearing item (FF 2). The operation of the purchase
server and authorization server cited by the Examiner disclose nothing
specifically as to the operation of the cryptographic device.
The Appellants further argue that Lewis does not disclose that “each
of the plurality of cryptographic devices is capable of authenticating any of
the plurality of remote users” (Br. 5). The Examiner argues that the
cryptographic module 12 of Lewis performs this function (Ans. 6).
We agree with the Appellants in this regard. Lewis does not disclose
that each of the plurality of cryptographic devices is capable of
authenticating any of the plurality of remote users (FF 3). The Examiner
has failed to specifically show where the cryptographic device performs
such a function in the Lewis reference.
The Appellants also argue that Lewis fails to disclose that “each of the
plurality of cryptographic devices is capable of processing a VBI printing
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request” or “capable of generating indicia data” from or to “any of the
plurality of remote users” respectively (Br. 6). We agree with the
Appellants in both these regards as the Lewis reference does not show the
cryptographic devices to perform these functions (FF 4 and 5). We note
that the Examiner has failed to respond to these two arguments made by the
Appellants in the Answer.
For the reasons above we will not sustain the rejection of claim 1 as
anticipated under 35 U.S.C. § 102(e) as being anticipated by Lewis. As the
rejection of claims 2-40 fails to cure the deficiency of the rejection, we will
also not sustain the rejection of these claims as well.
With regards to claim 41, the Appellants argue that it contains
elements similar to those of claim 1 and that the rejection of claim 41 should
be reversed for the same reasons as claim 1 (Br. 8). Claim 1 contains a
limitation for “authenticating any one of the plurality of remote users by any
one of the plurality of cryptographic devices” which we agree is not shown
in the Lewis reference (see FF 3). Claim 1 also contains a limitation for
“processing value for the value bearing item by any one of the plurality of
cryptographic devices” which we also agree is not shown by Lewis (see FF
4).
For the reasons above we will not sustain the rejection of claim 41 as
anticipated under 35 U.S.C. § 102(e) as being anticipated by Lewis. As the
rejection of claims 42-70 fails to cure the deficiency of the rejection, we will
also not sustain the rejection of these claims as well.

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CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner
erred in rejecting claims 1-71 under 35 U.S.C. § 102(e) as being anticipated
by Lewis et al.

DECISON
The Examiner’s rejection of claims 1-71 is not sustained.

REVERSED

LV:

CHRISTIE, PARKER & HALE, LLP
PO BOX 7068
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