Ex Parte Parry

Board of Patent Appeals and Interferences

Mar 1, 2011

09967511 (B.P.A.I. Mar. 1, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TRAVIS J. PARRY
____________
Appeal 2009-007288
Application 09/967,5111
Technology Center 2400
____________

Before JEAN R. HOMERE, STEPHEN C. SIU, and
DEBRA K. STEPHENS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed on September 28, 2001. The real party in interest is Hewlett-Packard
Development Co., LP. (App. Br. 2.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 4, 6 through 17, 19, and 22
through 24. (App. Br. 4.)3 Claims 5, 18, 20, and 21 have been cancelled.
(Id.) We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm-in-part.
Appellant’s Invention
Appellant invented a method, apparatus, and computer-readable
storage media for verifying electronic signatures affixed to documents
before printing such documents. (Spec. 1, ll. 2-5.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method for printing a document that contains an electronic
signature comprising:

detecting the presence of the electronic signature in the
document, the electronic signature including a user identifier and a
public key;

extracting the user identifier from the electronic signature
associated with the document, the user identifier identifying a person
who has signed the document; extracting the public key from the
electronic signature;

verifying whether or not the public key extracted from the
electronic signature is a public key that has been created by the person
who signed the document including:

3 All references to the Appeal Brief are to the Appeal Brief filed on February
4, 2008, which replaced the prior Appeal Brief filed on September 11, 2006.

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accessing a signature database that stores a plurality of
user identifiers and a plurality of public keys, each public key
being associated with a user identifier; and

determining that the electronic signature is valid by
verifying that the user identifier and the public key extracted
from the electronic signature are associated with each other in
the signature database; and

printing the document if the verification determines that the
public key associated with the electronic signature is a public key
created by the person who signed the document and not printing the
document if the verification fails.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Ginter US 6,185,683 B1 Feb. 6, 2001
Weller US 2002/0080959 A1 June 27, 2002
(filed on Dec. 27, 2000)
Kujirai US 6,618,566 B2 Sept. 9, 2003
(filed on Apr. 25, 2001)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1 through 4, 8 through 17, 19, and 22 through 24 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Kujirai and Weller.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kujirai, Weller, and Ginter.
Appellant’s Contentions
Appellant contends that Weller discloses a source document signature
that does not include both a user identifier (hereinafter “ID”) and a public
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key and, therefore, cannot teach or fairly suggest “the electronic signature
including a user [ID] and a public key,” as recited in independent claim 1.
(App. Br. 15; Reply Br. 3.) Additionally, Appellant argues that the public
key disclosed in Weller is not extracted from the source document signature,
but rather comes from the authenticity verifier. (App. Br. 16.) Therefore,
Appellant alleges that Weller fails to teach or fairly suggest the claimed step
of extracting the public key from the electronic signature. (Id.)
Examiner’s Findings and Conclusions
The Examiner finds that Kujirai’s disclosure of print data that contains
authentication information (i.e., user ID and password), in conjunction with
Weller’s disclosure of providing authentication information by incorporating
a digital signature into a document, teaches or fairly suggests an electronic
signature in a document, wherein “the electronic signature includ[es] a user
[ID] and a public key,” as recited in independent claim 1. (Ans. 10-11.)
Further, the Examiner finds that Weller’s disclosure of separating or
extracting the digital signature from the document encompasses detecting
the presence of the digital signature in the document. (Id. at 11-12.) The
Examiner also finds that Kujirai’s disclosure of collating the user ID and
password from a document and comparing it with authentication information
stored in database, amounts to both detecting and extracting the user ID and
password from the document. (Id.) Therefore, the Examiner finds that the
proffered combination teaches or fairly suggests the claimed steps of
detecting the electronic signature in a document and extracting both the user
ID and public key from the electronic signature. (Id.)

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II. ISSUE
Has Appellant shown that the Examiner erred in concluding that the
combination of Kujirai and Weller renders independent claim 1
unpatentable? In particular, the issue turns on whether the proffered
combination teaches or fairly suggests “extracting the public key from the
electronic signature,” as recited in independent claim 1.

III. FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
Kujirai
FF 1. Kujirai discloses a print control apparatus that includes both a
printer and personal computer. (Col. 1, ll. 8-11.)
FF 2. Kujirai’s figure 2 depicts transmitting print data to printer
(104), which is capable of performing an accounting function. (Col. 7, ll.
24-26.) Kujirai also discloses adding and transmitting authentication
information in the print data. (Id. at ll. 26-27.)
FF 3. Kujirai discloses that the authentication information includes
both a user ID and password. (Id. at ll. 43-47.)
FF 4. In step S1601, Kujirai’s figure 16 depicts that the printer (104)
collates the received authentication information with a database that stores
correct authentication information. (Col. 13, ll. 5-8.) Further, in order to
prevent a situation in which authentication information is found to be
incorrect, Kujirai discloses performing user authentication prior to printing.
(Id. at ll. 16-19.)

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Weller
FF 5. Weller discloses providing viewers of a printed document with
some indicia of the authenticity of the printed document. (1: ¶ [0001].)
FF 6. Weller discloses providing authentication information by
appending a digital signature to a document, or embedding a digital
watermark into the document. (2: ¶ [0020].)
FF 7. Weller’s figure 3 depicts that the authenticity verifier (36) in
printer (30) separates the received signature (52) from the contents of the
electronic print document (31). (2-3: ¶ [0022].) Next, Weller discloses that
authenticity verifier (36) applies a cipher to the received signature (52), such
as an asymmetric public key cipher calculation (54), in order to obtain a first
print message digest (56). (Id.)

V. ANALYSIS
Claim 1
Independent claim 1 recites, in relevant part, “extracting the public
key from the electronic signature.”
As detailed in the Findings of Fact section above, Weller discloses
automatically authenticating a printed document by providing viewers of the
printed document with some indicia of the printed document’s authenticity.
(FF 5.) In particular, Weller discloses providing authentication information
for a document by appending a digital signature thereto. (FF 6.) Further,
when a printer receives the document with the digital signature appended
thereto, Weller teaches that an authenticity verifier located within the printer
separates the digital signature from the other contents of the document,
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applies a public key to the digital signature, and obtains a first print message
digest. (FF 7.)
At best, we find that Weller’s disclosure teaches or fairly suggests that
the authenticity verifier located within the printer detects a public key that is
associated or included with a digital signature and, subsequently, applies the
public key to the digital signature. However, we agree with Appellant that
Weller fails to teach or fairly suggest extracting the public key from the
electronic signature, as claimed. (App. Br. 15-16.) Although Weller’s
authenticity verifier may be capable of extracting the public key from the
digital signature, such conjecture would require us to resort to speculation,
unfounded assumptions, or hindsight reconstruction. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967). We will not resort to such speculation or
assumptions to cure the deficiencies in the factual basis in order to support
the Examiner’s rejection. Therefore, we find that the Examiner improperly
relied upon Weller’s disclosure to teach or fairly suggest the disputed
limitation. We note that Kujirai does not remedy the noted deficiency.
Since Appellant has shown at least one error in the rejection of
independent claim 1, we need not reach the merits of Appellant’s other
arguments. It follows that Appellant has shown that the Examiner erred in
concluding that the combination of Kujirai and Weller renders independent
claim 1 unpatentable.

Claims 2 through 4 and 6 through 8
Since dependent claims 2 through 4 and 6 through 8, also incorporate
the limitation discussed above, we find that Appellant has also shown error
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in the Examiner’s rejection of these claims for the reasons set forth in our
discussion of independent claim 1.
Claim 9
Appellant contends that Kujirai’s disclosure fails to teach or fairly
suggest “a signature detection module configured to detect an electronic
signature in a document received by the printer and, if the electronic
signature is detected, to identify a user identifier and a public key from the
electronic signature,” as recited in independent claim 9. (App. Br. 16.)
Appellant also argues that since Kujirai fails to teach or fairly suggest the
claimed “electronic signature” and its corresponding user ID and public key,
Kujirai cannot teach or fairly suggest “a verification module” and “the
printing device,” as claimed. (Id.) Further, Appellant alleges that Weller
discloses a document signature that is created from the contents of a
document and, therefore, fails to teach or fairly suggest: 1) the document
signature including both a user ID and public key; or 2) extracting the user
ID and public key from the document signature. (Id. at 17.) We do not
agree.
As detailed in the Findings of Fact section above, Kujirai discloses a
print control apparatus that includes both a printer and personal computer.
(FF 1.) In particular, Kujirai discloses adding authentication information,
such as a user ID and password, to print data before transmitting the print
data to a printer. (FFs 2 & 3.) Further, Kujirai discloses that the printer is
capable of performing user authentication prior to printing by gathering and
arranging the authentication information included in the print data, and
comparing it against a database that stores correct authentication
information. (FF 4.)
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We find that Kujirai’s disclosure teaches incorporating authentication
information, such as a user ID and password, into print data received by a
printer. We also find that Kujirai’s disclosure of performing user
authentication prior to printing encompasses detecting the authentication
information incorporated in the print data before comparing it against a
database of correct authentication information.
In summary, we find an ordinarily skilled artisan would have
appreciated that the Weller’s authenticity verifier is capable of detecting a
digital signature that is incorporated into a document received by the printer.
If Weller’s authenticity verifier detects a digital signature, we find that an
ordinarily skilled artisan would have understood that the digital signature is
capable of providing authentication information, such as a Kujirai’s user ID.
Moreover, we find that an ordinarily skilled artisan would have appreciated
that Kujirai’s user ID is capable of being associated with Weller’s public
key, which may be incorporated in the print data received by the printer or
previously stored in the printer for authentication purposes. Thus, we find
that the combination of Kujirai and Weller teaches or fairly suggests both “a
signature detection module configured to detect an electronic signature in a
document received by [a] printer and, if the electronic signature is detected,
to identify a user identifier and a public key from the electronic signature,”
and “the printing device,” as recited in independent claim 9.
Moreover, we find that an ordinarily skilled artisan would have
appreciated performing user authentication prior to printing by verifying the
authentication information provided by Weller’s digital signature, such as
Kujirai’s user ID included as part of the digital signature and Weller’s public
key associated therewith, against a database of correct authentication
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information. Thus, we find that the combination of Kujirai and Weller
teaches or fairly suggests “a verification module,” as recited in independent
claim 9.
We are not persuaded by Appellant’s argument that Weller fails to
teach or fairly suggest extracting the user ID and public key from the
claimed “electronic signature.” (App. Br. 17.) We note that Appellant’s
argument is not commensurate with the scope of the claim language. It
follows that Appellant has not shown that the Examiner erred in concluding
that the combination of Kujirai and Weller renders independent claim 9
unpatentable.
Claims 10 through 14
Appellant does not provide separate arguments for patentability with
respect to dependent claims 10 through 14. Therefore, we select
independent claim 9 as representative of the cited claims. Consequently,
Appellant has not shown error in the Examiner’s rejection of dependent
claims 10 through 14 for the reasons set forth in our discussion of
independent claim 9. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 15
Appellant contends that since Kujirai fails to disclose an electronic
signature in a document, Kujirai cannot teach or fairly suggest “determining
if the electronic document includes an electronic signature,” as recited in
independent claim 15. (App. Br. 17.) Moreover, Appellant argues that
Weller’s document signature does not include both a user ID and a public
key and, therefore, cannot teach or fairly suggest “identifying a user
identifier and a public key that is included as part of the electronic
signature,” as recited in independent claim 15. (Id. at 18.) We do not agree.
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As set forth above, we find that an ordinarily skilled artisan would
have appreciated that Weller’s authenticity verifier is capable of detecting a
digital signature that is incorporated into a document received by the printer.
Thus, we find that Weller’s disclosure teaches or fairly suggests
“determining if the electronic document includes an electronic signature,” as
recited in independent claim 15. Moreover, since the digital signature is
capable of providing Kujirai’s user ID, we find that an ordinarily skilled
artisan would have understood identifying and associating Weller’s public
key with the user ID that is included as part of the digital signature. Thus,
we find that the combination of Kujirai and Weller teaches or fairly suggests
“identifying a user identifier and a public key that is included as part of the
electronic signature,” as recited in independent claim 15. It follows that
Appellant has not shown that the Examiner erred in concluding that the
combination of Kujirai and Weller renders independent claim 15
unpatentable.
Claims 16, 17, 19, and 22
Appellant does not provide separate arguments for patentability with
respect to dependent claims 16, 17, 19, and 22. Therefore, we select
independent claim 15 as representative of the cited claims. Consequently,
Appellant has not shown error in the Examiner’s rejection of dependent
claims 16, 17, 19, and 22 for the reasons set forth in our discussion of
independent claim 15. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 23
Appellant offers the same arguments set forth in response to the
obviousness rejection of independent claim 15 to rebut the obviousness
rejection of independent claim 23. (App. Br. 18-19.) We have already
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addressed these arguments in our discussion of independent claim 15, and
we found them unpersuasive. Consequently, Appellant has not shown that
the Examiner erred in concluding that the combination of Kujirai and Weller
renders independent claim 23 unpatentable.
Claim 24
Appellant does not provide separate arguments for patentability with
respect to dependent claim 24. Therefore, we select independent claims 15
and 23 as representative of the cited claim. Consequently, Appellant has not
shown error in the Examiner’s rejection of dependent claim 24 for the
reasons set forth in our discussion of independent claims 15 and 23. See 37
C.F.R. § 41.37(c)(1)(vii).

V. CONCLUSION OF LAW
1. Appellant has shown that the Examiner erred in rejecting claims
1 through 4 and 6 through 8 as being unpatentable under 35 U.S.C. § 103(a).
2. Appellant has not shown that the Examiner erred in rejecting
claims 9 through 17, 19, and 22 through 24 as being unpatentable under 35
U.S.C. § 103(a).

VI. DECISION
1. We reverse the Examiner’s decision to reject claims 1 through 4
and 6 through 8 as being unpatentable under 35 U.S.C. § 103(a).
2. We affirm the Examiner’s decision to reject claims 9 through
17, 19, and 22 through 24 as being unpatentable under 35 U.S.C. § 103(a).

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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HEWLETT-PACKARD COMPANY
Intellectual Property Administration
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Mail Stop 35
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