Ex Parte Quine

Board of Patent Appeals and Interferences

Jan 26, 2010

09748994 (B.P.A.I. Jan. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS B. QUINE
____________

Appeal 2009-003745
Application 09/748,994
Technology Center 2600
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Decided: January 26, 2010
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-003745
Application 09/748,994

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Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 5, 7, 12-23 and 25. (Br. 3.) We have jurisdiction
under 35 U.S.C. § 6(b) (2002). We affirm.

STATEMENT OF THE CASE
Appellant invented a method for verifying the authenticity of received
documents by computing an encrypted checksum of the transmitted
document and comparing a decrypted checksum of the received document at
the destination device with the encrypted checksum value at the originating
device.1
Claim 1, which further illustrates the invention, follows:
1. A method of authenticating a facsimile document communicated between
a first facsimile communication device and a second facsimile
communication device via a communications network, comprising the steps
of:
a. receiving input data representing the entire facsimile document and
generating facsimile information in a first format by said first
communication device from said input data;
b. processing said input data, at said first communication device, to compute
an encrypted checksum of the entire input data;
c. convolving said facsimile information with said encrypted checksum data
to produce convolved data;
d. decrypting, at said second communication device, said encrypted
checksum;
e. computing a checksum of said input data received at said second
communications device; and
f. alerting a recipient at said second communication device in the event of a
mismatch between said checksum data computed in step (e) and said
decrypted checksum data in step (d) by clearly marking a print out of the
received input data indicating a tamper condition.

1 See generally Br. 3.
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The Rejections
The Examiner relies upon the following prior art references as
evidence of unpatentability:
Reifman US 5,438,433 Aug. 1, 1995
Lee US 6,170,744 B1 Jan. 9, 2001

Claims 1, 5, 7, 12-23 and 25 stand rejected under 35 U.S.C. § 103(a),
as being unpatentable over Reifman and Lee (Ans. 3-9).
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Brief and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2008).

Obvious Rejection
Appellant argues that the Reifman and Lee references employed in the
35 U.S.C. § 103 rejection are not combinable because they are not analogous
(Br. 9-10). Also, Appellant argues that the cited references do not appear to
describe convolving the data as claimed and marking a print out of the
received input data (Br. 10).

ISSUES
The issues before us are:
1. Are the Reifman and Lee references non-analogous technology?
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2. Has the Appellant shown that the Examiner erred in finding that the
combination of Reifman and Lee discloses convolving the data as claimed
and marking a print out of the received input data?

FINDINGS OF FACTS
Reifman
1. The intelligent facsimile machine (IFAX) decrypts encrypted incoming
messages and compares the two to determine if the original document has
been tampered with and if so, issues an Error Report and enter it into an
Error Log (col. 48, ll. 48-59).

Lee
Figure 4 is reproduced below:
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Figure 4 discloses a method for document authentication wherein data
encryption is employed, decrypted, verified and marked or flagged if
document tampering is discovered (col. 12, ll. 54-68, col. 13, ll. 1-3).

PRINCIPLES OF LAW
As stated in In re Kahn, 441 F.3d 977 (Fed. Cir. 2006), “[t]he
analogous-art test requires that the Board show that a reference is either in
the field of the applicant's endeavor or is reasonably pertinent to the problem
with which the inventor was concerned in order to rely on that reference as a
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basis for rejection.” Id. at 986-87 (citing In re Oetiker, 977 F.2d 1443, 1447
(Fed. Cir. 1992)).
If the Examiner's burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d at
1445).

ANALYSIS
Appellant contends that Reifman and Lee are non-analogous because
Lee requires the use of physical documents that are physically generated at
the source and Reifman deals exclusively with electronic facsimile
document transmission (Br. 9-10). Examiner argues that both Reifman and
Lee teach computation of code associated with the comparison of encrypted
received data with the result of the data once it has been decrypted to
determine if the decrypted received data has been altered from the original
encrypted data (Ans. 10). Based on these similarities, the Examiner
concludes that the two references are analogous and therefore properly
combined. Id. We find the Examiner’s arguments to be persuasive.
Both Reifman and Lee address document fraud using encryption and
decryption to authenticate received data and provide notice when fraud is
discovered. See FF 1-2. See Kahn, 441 F.3d at 986-87. We therefore find
that Reifman and Lee are analogous art.
Appellant states that even if the references are held to be properly
combined, the claimed invention is not rendered obvious because the
references do not appear to describe convolving the data and marking a print
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out of received input data (emphasis added) (Ans. 10-11). The Examiner
addressed the convolving and marking limitations of the claims in the
rejection thus establishing a prima facie case of obviousness based upon the
combination of Reifman and Lee. See Ans. 3-4. Appellant does not set
forth any arguments or provide any evidence that would persuade us that the
Examiner erred in rejecting the claims over Reifman and Lee. See Oetiker,
977 F.2d at 1445. We therefore will sustain the Examiner’s obviousness
rejection of claims 1, 5, 7, 12-23 and 25.

CONCLUSIONS
Appellant has not shown that the Reifman and Lee references were
non-analogous technology.
Appellant has not shown that the Examiner erred in finding that the
combination of Reifman and Lee discloses convolving the data and marking
a print out of the received input data as claimed.

ORDER
We will sustain the Examiner’s decision rejecting claims 1, 5, 7, 12-
23 and 25.
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).

AFFIRMED

Appeal 2009-003745
Application 09/748,994

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