Ex Parte Olkin et al

Patent Trial and Appeal Board

Feb 27, 2014

10249717 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TERRY M. OLKIN, JAHANSHAH MOREH, and
JEFFREY C. OLKIN1
____________________

Appeal 2011-007843
Application 10/249,717
Technology Center 2400
____________________

Before JOSEPH F. RUGGIERO, JEAN R. HOMERE, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1-7, 9-20, 22-27, 52-56, 58-66, 68-72, and 75-78.
Appellants have previously canceled claims 8, 21, 28-51, 57, 67, and 73-74.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Proofpoint, Inc. App. Br. 4.
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STATEMENT OF THE CASE2
The Invention
Appellants’ invention generally relates to “providing security for
communications in computerized networks, and . . . efficiently maintaining
security in chat and instant messaging systems . . . [including] enterprise
instant messaging, both in local area networks and in wide are[a] networks,
including the Internet.” Spec. ¶ [0001] (“TECHNICAL FIELD”).
Exemplary Claims
Claims 1, 2, and 15, reproduced below, are representative of the
subject matter on appeal (emphases added):
1. A method for communicating a conversational
message, the method comprising the steps of:
in a first computerized system, calculating a first hash
value based on the conversational message;
in a second computerized system, in a vault encrypting
said first hash value based on a signature key, thereby creating
a digital signature;
communicating said digital signature to a third
computerized system and the conversational message to a
fourth computerized system via a network;
in said third computerized system, in a verifier
decrypting the digital signature based on a verification key to
reproduce said first hash value;

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Sep. 22, 2010); Reply Brief (“Reply Br.,” filed Dec. 10, 2010); Examiner’s
Answer (“Ans.,” mailed Dec. 8, 2010); Non-Final Office Action (“NFOA,”
mailed Aug. 19, 2010); and the original Specification (“Spec.,” filed
May 2, 2003).
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in said fourth computerized system, calculating a second
hash value based on the conversational message; and
in a fifth computerized system, comparing said first hash
value with said second hash value to determine a validation
response, wherein said validation response indicates the
conversational message to be validated when said first hash
value and said second hash value match.

2. A method for creating a digital signature for a
conversational message, the method comprising the steps of:
in a first computerized system, calculating a hash value
based on the conversational message; and
in a second computerized system, in a vault encrypting
said hash value based on a signature key, thereby creating the
digital signature.

15. A method for validating a digital signature for a
conversational message, the method comprising the steps of:
in a first computerized system, in a verifier decrypting
the digital signature based on a verification key to reproduce a
first hash value;
in a second computerized system, calculating a second
hash value based on the conversational message; and
in a third computerized system, comparing said first hash
value with said second hash value to determine a validation
response, wherein said validation response indicates the
conversational message to be validated when said first hash
value and said second hash value match.
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Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Lee US 5,590,198 Dec. 31, 1996
Tatebayashi US 6,182,215 B1 Jan. 30, 2001
Sudia US 6,209,091 B1 Mar. 27, 2001
Buch US 7,240,366 B2 Jul. 3, 2007
Rejections on Appeal
1. Claims 72 and 75-78 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Ans. 4.
2. Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Buch, Lee, and Tatebayashi. Ans. 5.
3. Claims 2-7, 9-11, 52-56, 58-60, 75, and 77 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Buch and
Lee. Ans. 6.
4. Claims 15-20, 22-27, 64-66, 68-72, 76, and 78 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Buch and Tatebayashi. Ans. 10.
5. Claims 12-14 and 61-63 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Buch, Lee, and
Sudia. Ans. 14.
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ISSUES AND ANALYSIS
We only consider those arguments actually made by Appellants in
reaching this decision, and we do not consider arguments which Appellants
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We agree with Appellant’s
conclusions with respect to the definiteness of claims 72 and 75-78, and we
disagree with Appellant’s conclusions with regard to the unpatentability of
claims 1-7, 9-20, 22-27, 52-56, 58-66, 68-72, and 75-78 over the prior art of
record. With respect to the unpatentability rejections, we adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons and rebuttals set forth by the
Examiner in the Examiner’s Answer in response to Appellant’s Arguments.
However, we highlight and address specific findings and arguments
regarding claims 1, 2, and 15 for emphasis as follows.
1. § 112, ¶2 Indefiniteness Rejection of Claims 72 and 75-78
Issue 1
Appellants argue (App. Br. 27-28) the Examiner’s rejection of claims
72 and 75-78 under 35 U.S.C. § 112, second paragraph, as being indefinite is
in error. These contentions present us with the following issue:
Did the Examiner err in finding claims 72 and 75-78 to be unclear,
and therefore indefinite under § 112, second paragraph?
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Analysis
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
In response to the Examiner’s statements (NFOA 3-4), Appellants
contend “one of ordinary skill in . . . the English language would understand
the disputed text, and accordingly that one of ordinary skill in the art here
would also understand the disputed text in claims 72 and 75-78.” App.
Br. 28. In particular, Appellants point out:
The Examiner professes confusion with the text:
“said third computerized system is not also said first
computerized system or said second computerized
system” (claim 72);
“said first and said second computerized systems are not
the same” (claim 75);
“said first, said second, and said third computerized
systems are not all the same” (claim 76);
“both of said first and said second computerized systems
are not the same” (claim 77); and
“said first, said second, and said third computerized
systems are not all the same” (claim 78).
This series of rejections are error because they are not based on
the appropriate legal standard for indefiniteness.
App. Br. 27 (citing NFOA 3-4).
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The Examiner asserts the language of claim 1 makes the language of
claim 72 redundant, because “[b]ased on independent claim 1, appellant has
already specified that there were five computerized systems within the
claim.” Ans. 16. However, we note claim 72 depends from independent
claim 64, and not from independent claim 1, which stands alone without any
dependent claims. Therefore, we are unable to discern any antecedent
relationships, redundant or otherwise, between claims 1 and 72, or between
claims 1 and 75-78.
We agree with Appellants, and find a person of ordinary skill in the
art would not see these claims as being insolubly ambiguous without a
discernible meaning so as to rise to the level of indefiniteness. For example,
claim 75 simply requires two different computerized systems, i.e., “said first
and said second computerized systems are not the same.” We find this
recitation to be clear and definite. Similar analysis holds for claims 72 and
76-78, which we also find to be definite under § 112.
Accordingly, Appellants have provided sufficient evidence or
argument to persuade us of reversible error in the Examiner’s claim
construction. Therefore, we cannot sustain the Examiner’s indefiniteness
rejection of claims 72 and 75-78.
2. § 103 Rejection of Claims 2-7, 9-11, 52-56, 58-60, 75, and 77
Issue 2
Appellants agree with the Examiner that the same reasoning used with
respect to the rejection of claims 2-7 and 9-11 should also be applied to
claims 52-56 and 58-60. App. Br. 28. Therefore, we decide the rejection of
claims 52-56, 58-60, 75, and 77 on the same basis as claims 2-7 and 9-11.
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Appellants argue (App. Br. 28-33) the Examiner’s rejection of claim 2
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Buch and Lee is in error. These contentions present us with the following
issue:
Did the Examiner err in finding that the cited prior art combination
teaches or suggests a method for creating a digital signature for a
conversational message, including the limitations of “calculating a hash
value based on the conversational message; and . . . in a vault[,] encrypting
said hash value based on a signature key, thereby creating the digital
signature,” as recited in claim 2?
Analysis
Appellants contend, inter alia, Buch does not teach or suggest a
“method for creating a digital signature for a conversational message,”
because . . . [Buch’s] Session Initiation Protocol (SIP) “message is not
equivalent to a conversational message . . . [but instead] SIP is a Session
Initiation Protocol . . . [used as] a signaling protocol to locate another
computing device and to establish a communication session with it.” App.
Br. 30. Appellants further contend Buch does not teach or suggest “that any
of its three certificate stores (140, 132, 136) are anything more than their
labels imply, mere storages . . . [and] claim 2 recites ‘in a vault encrypting,’
wherein the vault clearly has to be more than just a storage.” App. Br. 31.
In response to the Examiner’s finding that “Lee teaches this
limitation [in a vault encrypting a hash value based on a
signature key to create a digital signature] in a much clearer
way,” (NFOA 6 (citing Lee col. 5, ll. 14-16)), Appellants
respond by contending Lee’s vault encrypts . . . funds for
postage for use by a postage meter on conventional paper
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mail. . . . [which] would not reasonably suggest anything to one
of ordinary skill in the art about encrypting a hash value based
on a conversational message in the course of creating a digital
signature for that conversational message.
App. Br. 31. Further in this regard, Appellants contend Lee’s encryption
keys are unsuitable equivalents to Appellant’s signature keys because Lee is
directed to funds for postage. Id.
In construing claim 2, we find Appellants’ recitation of “a digital
signature for a conversational message” merely describes data or
information, i.e., a conversational message compared to a SIP initiation
message merely corresponds to different data. However, we need not give
patentable weight to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate.
See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d
1579, 1583-84 (Fed. Cir. 1994); See also Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative) (“[N]onfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art.”), aff’d, 191 Fed. Appx. 959 (Fed. Cir.
2006) (Rule 36); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative) (“Nonfunctional descriptive material cannot render
nonobvious an invention that would have otherwise been obvious.”), aff’d,
No. 06-1003 (Fed. Cir. 2006) (Rule 36). Thus, non-functional descriptive
material does not confer patentability to inventions that are otherwise either
anticipated or obvious over the prior art.
Appellants further argue:
[A] signature key used to create a digital signature must at least
impart or maintain uniqueness of the signing entity, and
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preferably also uniqueness for each new instance of the
signature on a new message. By virtue of calculating a hash
value based on a message in claim 2, uniqueness with respect to
the message is established and, by virtue of encrypting that hash
using a signature key in claim 2, uniqueness with respect to the
signing entity is established. Lee’s vault and its encryption
keys merely encrypt funds for postage, thus failing to establish
uniqueness with respect to any particular signing entity (any of
its computer, user, owner, etc.) or of particular funds (or
particular message).
App. Br. 32. Appellants’ contention does not persuade us of error on the
part of the Examiner because Appellants are responding to the rejection by
attacking the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants further argue “Buch teaches the use of asymmetric
cryptography . . . [and i]t is well known in the art that asymmetric is more
secure than symmetric cryptography (and that asymmetric provides other
benefits that symmetric cannot, e.g., stronger and more versatile signature
capabilities) . . . [such that] modifying Buch by adding Lee’s vault would
produce an unsatisfactory result . . . .” App. Br. 32.
We specifically note Appellants’ challenge to the references
individually is not convincing of error in the Examiner’s position because all
of the features of the secondary reference need not be bodily incorporated
into the primary reference, but consideration should be given to what the
combined teachings, knowledge of one of ordinary skill in the art, and the
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nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA
1981)). Furthermore, the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984)).
We also note Appellants’ assertions with regard to the purported
benefits of asymmetric cryptography and alleged inability to incorporate
Lee’s encryption vault with Buch’s teachings amount to unsupported
attorney argument, and therefore we give them little weight. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100
F.3d 135, 139-140 (Fed. Cir. 1996). Therefore, we do not find error in the
Examiner’s reliance on the combined teachings and suggestions of Buch and
Lee.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner’s obviousness rejection of independent claim 2. As Appellants
have not provided separate arguments with respect to independent claim 53 ,
rejected on the same basis as independent claim 2, we similarly sustain the
Examiner’s rejection of claim 53 under 35 U.S.C. § 103(a).
While Appellants raised additional arguments for patentability of
dependent claims 3-7, 9-11, 53-56, 58-60, 75, and 77 (App. Br. 33-41),
rejected on the same basis as independent claim 2, we find the Examiner has
rebutted each of those arguments in the Answer by a preponderance of the
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evidence. Ans. 7-10 and 22-32. Therefore, we adopt the Examiner’s
findings and underlying reasoning, which we incorporate herein by
reference. Consequently, we find no reversible error in the Examiner’s
rejections of claims 3-7, 9-11, 53-56, 58-60, 75, and 77.
3. § 103 Rejection of Claims 15-20, 22-27, 64-66, 68-72, 76, and 78
Issue 3
Appellants agree with the Examiner that the same reasoning used with
respect to the rejection of claims 15-20 and 22-27 should also be applied to
claims 64-66 and 68-71. App. Br. 45. Therefore, we decide the rejection of
claims 64-66 and 68-71 on the same basis as claims 15-20 and 22-27.
Appellants argue (App. Br. 28-33) the Examiner’s rejection of
claim 15 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Buch and Tatebayashi is in error. These contentions present
us with the following issue:
Did the Examiner err in finding that the cited prior art combination
teaches or suggests a method for validating a digital signature for a
conversational message, including the limitation of “in a verifier[,]
decrypting the digital signature based on a verification key to reproduce a
first hash value,” as recited in claim 15?
Analysis
Appellants contend, similar to the arguments presented above with
respect to claim 2, Buch’s SIP message is not equivalent to a conversational
message. App. Br. 45 and 47. We disagree with Appellants’ argument for
the reasons discussed, supra.
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In addition, Appellants argue Tatebayashi’s verifier cited by the
Examiner is only relevant “to Appellants[’] signing-sending side or Buch’s
caller-sender side, and not to anything . . . in claim 15 (wherein all
operations are on Appellant’s receiving-validating side).” App. Br. 46
(emphasis omitted). Appellants conclude by contending Tatebayashi’s
verifier is in a data transmitting device to prevent the copying of infringing
video data into a claimant-receiver device, and such a teaching is irrelevant
to claim 15. Id.
In our claim construction analysis, we find Appellants’ arguments are
not commensurate with the scope of claim 15, i.e., claim 15 makes no
reference to a “signing-sending side” or a “caller-sender side.” We further
find Buch teaches or suggests verifying a digital signature to produce a hash
value, and suggests a verification process which would inherently involve a
verifier before decryption occurs. See Buch col. 6, ll. 22-46. While Buch
does not explicitly teach that decryption is performed in a verifier, in
agreement with the Examiner (Ans. 39), we find Tatebayashi teaches or
suggests:
[A] verifier, which receives the response data, is provided with
a decryption algorithm corresponding to the encryption
algorithm and a verifier key, which it uses to decrypt the
response data. The verifier then compares the decryption result
with the challenge data. When these match, the verifier judges
that the claimant is in possession of the valid claimant key, and
so verifies the authenticity of the claimant.
Tatebayashi, col. 2, ll. 25-31. We find this teaching of Tatebayashi teaches a
verifier, and the combination of prior art particularly teaches or suggests the
limitation in dispute cited above.
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Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner’s obviousness rejection of independent claim 15. As Appellants
have not provided separate arguments with respect to independent claim 64,
we similarly sustain the Examiner’s rejection of claim 64 under 35 U.S.C.
§ 103(a).
While Appellants raised additional arguments for patentability of
dependent claims 16-20, 22-27, 65, 66, 69-72 and 78 (App. Br. 47-53),
rejected on the same basis as independent claim 15, we find the Examiner
has rebutted each of those arguments in the Answer by a preponderance of
the evidence. Ans. 11-14 and 40-50. Therefore, we adopt the Examiner’s
findings and underlying reasoning, which we incorporate herein by
reference. Consequently, we find no reversible error in the Examiner’s
rejections of claims 16-20, 22-27, 65, 66, 69-72 and 78.
4. § 103 Rejection of Claim 1
Issue 4
Appellants argue (App. Br. 53-57) the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Buch, Lee, and Tatebayashi is in error. These contentions present us with
the following issue:
Did the Examiner err in finding that the cited prior art combination
teaches or suggests the limitation of “communicating said digital signature
to a third computerized system and the conversational message to a fourth
computerized system via a network,” as recited in claim 1?
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Analysis
Appellants contend, similar to the arguments presented above with
respect to claim 2, Buch’s SIP message is not equivalent to a conversational
message (App. Br. 53-54); Buch does not teach or suggest “calculating a
first hash value based on the conversational message,” and “in a vault
encrypting said first hash value based on a signature key, thereby creating a
digital signature” (App. Br. 54), as recited in claim 2. We disagree with
Appellants’ arguments concerning basing patentability on the different types
of data being processed, as well as the teaching of vault encryption for the
reasons discussed with respect to claim 2, supra.
Appellants further contend the reference combination does not teach
or suggest the additional limitation in claim 1 of “communicating said digital
signature to a third computerized system and the conversational message to a
fourth computerized system via a network.” App. Br. 54. Appellants’
arguments concerning this added limitation again focus on the purported
differences in the type of data recited compared to that disclosed by Buch,
i.e., a “conversational message” versus a “SIP invite message.” Id. We
disagree with Appellants as also discussed above.
With respect to the added limitation in claim 1, the Examiner finds,
and we agree, “Buch further teaches the personal computer 20 may operate
in a networked environment using logical connections to one or more remote
computers, such as a remote computer 49.” Ans. 50. The Examiner
continues by providing a detailed mapping of the added limitation in dispute
to the teachings of Buch, as well as mapping the previously mentioned
limitations to Lee and Tatebayashi. Ans. 51. We adopt as our own and
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incorporate herein by reference the Examiner’s detailed findings concerning
the teachings and suggestions of the prior art combination of Buch, Lee, and
Tatebayashi.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner’s obviousness rejection of independent claim 1.
5. § 103 Rejection of Claims 12-14 and 61-63
While Appellants raised additional arguments for patentability of
dependent claims 12-14 and 61-63, rejected under § 103(a) as being
unpatentable over the combination of Buch, Lee, and Sudia (App. Br. 41-
44), we find the Examiner has rebutted each of those arguments in the
Answer by a preponderance of the evidence. Ans. 14-16 and 32-36.
Therefore, we adopt the Examiner’s findings and underlying reasoning,
which we incorporate herein by reference. Consequently, we have found no
reversible error in the Examiner’s rejections of claims 12-14 and 61-63.
CONCLUSIONS
(1) The Examiner erred with respect to the indefiniteness rejection
of claims 72 and 75-78 under 35 U.S.C. § 112, second paragraph, and we do
not sustain the rejection.
(2) The Examiner did not err with respect to any of the
unpatentability rejections of claims 1-7, 9-20, 22-27, 52-56, 58-66, 68-72,
and 75-78 under 35 U.S.C. § 103(a) over the various prior art combinations
of record, and we sustain the rejections.
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DECISION
We reverse the Examiner’s decision rejecting claims 72 and 75-78 as
being indefinite under 35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s decision rejecting claims 1-7, 9-20, 22-27,
52-56, 58-66, 68-72, and 75-78 as being unpatentable under 35 U.S.C.
§ 103(a) over the various prior art combinations of record.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).
AFFIRMED

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