Ex Parte Racz

Board of Patent Appeals and Interferences

Mar 30, 2009

10314089 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID RACZ
____________________

Appeal 2009-0333
Application 10/314,089
Technology Center 2400
____________________

Decided:1 March 31, 2009
____________________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b).

A. INVENTION
According to Appellant, the invention relates to cryptography
techniques and, more particularly, relates to systems and methods for the
secure exchange of cryptographic keys for use in cryptography (Spec. 1, ll.
5-7).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A system for the exchange of cryptographic keys comprising:

a first peer source capable of displaying a cryptographic key adapted
to at least one of encrypt and decrypt electronic information; and

a second peer system configured for capturing the cryptographic key,
wherein the second peer system captures the cryptographic key such that a
user of the second peer system is capable of visually confirming receipt of
the cryptographic key from the first peer source without the user being in a
field of view of the first peer source.

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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Oishi US 6,385,318 B1 May 7, 2002
Gehrmann US 6,912,657 B2 Jun. 28, 2005
(filed Feb. 20, 2001)
Gundavelli US 6,941,457 B1 Sep. 6, 2005
(filed Jun. 30, 2000)

Claims 1-6, 8-15, and 23-30 stand rejected under 35 U.S.C. § 103(a)
over the teachings of Gehrmann in view of Oishi.
Claims 7 and 16-22 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Gehrmann in view of Oishi, and further in view of Gundavelli.
We affirm.

II. ISSUE
The issue is whether Appellant has shown that the Examiner erred in
concluding that claims 1-6, 8-15, and 23-30 are unpatentable under 35
U.S.C. § 103(a) over the teachings of Gehrmann in view of Oishi. In
particular, the issue turns on whether the combination of Gehrmann and
Oishi teaches or would have suggested that “a user of the second peer
system is capable of visually confirming receipt of the cryptographic key
from the first peer source without the user being in a field of view of the first
peer source” (claim 1).

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellant’s Invention
1. Appellant’s invention relates to a vending machine 30 which includes
an electronic display 34 which can display a key information image
36, wherein a user 38 of a mobile telephone 40 including a camera 42
operates the mobile telephone to capture the key information image 36
(Spec., 12, ll. 22-27; Fig. 3).
2. If the vending machine and the mobile telephone are both within the
field of view of the user as the vending machine displays the key
information image, the user can visually confirm that the mobile
telephone received the key information image and thus, the
cryptographic key, from the vending machine (Spec., 12, ll. 27-31).
Gehrmann
3. Gehrmann discloses a network N comprising a first device A with
wireless access to other devices within the network, wherein the first
device A is connected to an optical device O over a secured channel
(col. 6, ll. 11-19; Fig. 2).
4. The first device A has user UA who wishes to communicate with a
second device B within the network N having one or several secret
key-public key pairs (col. 6, ll. 20-30; Fig. 2), wherein the public key
is hashed using a cryptographic strong one-way function bit string that
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is mapped by a one-to-one code to a suitable graphical string S that is
readable for the optical device O (col. 6, ll. 31-40; Fig. 2).
5. The user UA, who trusts the graphical string S, reads the graphical
string S with the optical device O (col. 6, ll. 47-49).
6. To simplify for a user to trust a slip displaying a string, it can be
constructed so that it is easy for a user to see that nobody has
manipulated the slip or that there is some electronic protection of the
slip that disables the second device B if somebody manipulates the
slip (col. 6, ll. 54-58).
Oishi
7. Oishi discloses enabling direct confirmation of the correspondence
between the entity and the key through the physical attribute
information (col. 13, ll. 19-24).
8. The entities may be in mutual distant locations, wherein
correspondence between the unseen entity and his public key can be
confirmed as long as the communication line between the entities and
the devices thereof are reliable (col. 13, ll. 24-28).

IV. PRINCIPLES OF LAW
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
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1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

The Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” and
discussed circumstances in which a patent might be determined to be
obvious. KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383
U.S. 1, 12 (1966)). The Court reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 1740.
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We must determine whether or not the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
See KSR, 127 S. Ct. at 1734. Obviousness determination is not the result of
a rigid formula, and we will consider the facts of a case and the common
sense of those skilled in the art. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1161 (Fed. Cir. 2007). That is, the test for obviousness is
rather what the combined teachings of the references would have suggested
to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425
(CCPA 1981); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).

V. ANALYSIS
Claims 1-6, 8-15, and 23-30
Appellant argues that “Gehrman does not teach or suggest capturing
the cryptographic key such that a user of the second peer system is capable
of visually confirming receipt of the cryptographic key from the first peer
source without the user being in a field of view of the first peer source”
(App. Br. 5). Furthermore, Appellant contends that “Oishi discloses two
alternative techniques for verifying a public key, and only one of those
techniques includes visual confirmation by a user” and that, for visual
confirmation, Oishi’s information “is confirmed ‘on-site’ by human
observation” (App. Br. 6).
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However, the Examiner finds that “Gehrmann also teaches a user
being capable of visually confirming receipt of the key from the first peer
source” (Ans. 20), and that “[t]here is nothing in the claim that states that the
user must visually confirm that the key originated from the first peer source,
but only the capability of a user for confirming receipt of the key from the
first peer source” (Ans. 21), wherein “Oishi also teaches such confirmation
of origination” (Ans. 22). Thus, an issue we address on appeal is whether
the combination of Gehrmann and Oishi teaches or would have suggested
that “a user of the second peer system is capable of visually confirming
receipt of the cryptographic key from the first peer source without the user
being in a field of view of the first peer source” (claim 1).
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d at 1324. Furthermore, our analysis
will not read limitations into the claims from the Specification. See In re
Van Geuns, 988 F.2d at 1184. It is the Appellant’s burden to precisely
define the invention. See In re Morris 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Appellant’s argument that Oishi’s confirmation differs from the
claimed confirmation since it is “on-site” is not commensurate with the
language of the claimed invention, since the claims do not recite any off-site
limitation nor negate any on-site teaching. Appellant’s claims simply do not
place any limitation on what “the field of view of the first peer source” is to
be, to represent, or to mean, other than that a user of the second peer system
is capable of visually confirming receipt without the user being in a field of
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view of the first peer source. In fact, Appellant’s Specification is silent as to
what is the field of view of the first peer source. That is, according to
Appellant, “the first peer source comprises a vending machine 30” (Spec.,
12, ll. 3-4).
We are unsure as to what the field of view of a vending machine
would be, represent or mean, and cannot determine how a vending machine
can be capable of having a field of view. Therefore, we will not confine the
meaning of “field of view of the first peer source,” which is not defined
anywhere in Appellant’s Specification, to the off-site definition provided in
Appellant’s arguments, and we will not place any patentable weight to such
“field of view” language.
Similarly, as for the “visual confirmation by a user” argument,
Appellant’s claims do not also place any limitation on what the language is
to be, to represent or to mean. From the claim language, we are unsure how
a visual confirmation differs from confirmations that are not visual. Rather,
such label “visually” does not change the functionality of or provide an
additional function to the claimed confirmation step, but rather, is merely a
label set forth for the confirming step. As the Examiner finds, “[t]here is
nothing in the claim that states that the user must visually confirm that the
key originated from the first peer source, but only the capability of a user for
confirming receipt of the key from the first peer source” (Ans. 21). Such
label will not distinguish the invention from the prior art in terms of
patentability.
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Furthermore, even if the first peer source is capable of having a field
of view, such as having a viewing device, such negative limitation of
“visually confirming receipt without the user being in a field of view of the
first peer source” does not preclude a user being on-site with the first peer
source to confirm the receipt but not being directly in front of any such
hypothetical viewing device (i.e., without being in the field of view). Even
Appellant’s own invention is directed to a user being in front of (on-site
with) the vending machine/first peer source (FF 1-2). That is, there are
numerous possibilities for the user to be on-site with a peer source without
being in its hypothetical field of view since the user’s ability to confirm does
not depend on the ability of the first peer source to view. In fact, we are
unsure as to how any confirmation at Appellant’s vending machine differs
from Oishi’s confirmation “‘on-site’ by human observation” as Appellant
asserts (App. Br. 6), since the user in Appellant’s invention visually
confirms that the mobile telephone in the user’s hand received the key
information image at the vending machine when the vending machine and
the mobile telephone are in the user’s field of view (FF 2).
We generally agree with the Examiner’s finding that the combination
of Gehrmann in view of Oishi teaches the claimed elements on appeal.
Gehrmann discloses device B for displaying a public key that is hashed
using a cryptographic string S (FF 4), and an optical device O for reading the
string S (FF 3-5), wherein a user for the optical device is able to see the
public key and confirm (FF 6). An artisan would have understood such
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device B to be a first peer source configured for displaying a cryptographic
key, and such optical device O to be a second peer system configured for
capturing the cryptographic key, wherein the user of device B is capable of
seeing the cryptographic key and confirm receipt. Thus, we find Gehrmann
teaches or at the least suggests “a user of the second peer system is capable
of visually confirming receipt of the cryptographic key from the first peer
source” (claim 1).
As to Appellant’s argument that, for visual confirmation, Oishi’s
information “is confirmed ‘on-site’ by human observation” (App. Br. 6),
even if claim 1 recites that confirmation is performed “off-site,” the
Examiner has rejected the claims based on the combination of Gehrmann
and Oishi, and nonobviousness cannot be shown by attacking the references
individually. See In re Merck, 800 F.2d at 1097.
As discussed above, Gehrmann teaches an optical device for scanning
a cryptographic key, wherein the user of the optical device is capable of
visually confirming receipt of the cryptographic key by viewing the
cryptographic key (FF 3-6). Further, Oishi discloses enabling direct
confirmation of the correspondence between the entity and the key through
the physical attribute information (FF 7), and confirming when the entities
are in mutual distant locations (FF 8). We find that Oishi discloses that
confirmation may be off-site at a distant location.
We find an artisan would have understood Gehrmann in view of Oishi
would teach or at least suggest “a user of the second peer system is capable
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of visually confirming receipt of the cryptographic key from the first peer
source” (claim 1), wherein the user may be off-site at a distant location.
That is, even if the claims require that the user be off-site from the first peer
source as argued by Appellant, we find the subject matter sought to be
patented by Appellant as a whole would have been obvious to the artisan as
we consider the facts of the case and the common sense of those skilled in
the art. See Leapfrog, 485 F.3d at 1161. The test for obviousness is rather
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. See In re Keller, 642 F.2d at 425 and In re
Young, 927 F.2d at 591.
A person of ordinary skill will be able to fit the teaching of
Gerhmann of capturing a cryptographic key for confirmation and the
teaching of Oishi of confirming at a distant location together like pieces of a
puzzle, since the person of ordinary skill is also a person of ordinary
creativity, not an automaton. See KSR, 127 S. Ct. at 1739. The combined
teachings of the references represent merely a combination of familiar
elements according to known methods and do no more than yield predictable
results. See id. That is, the invention is not more than the predictable use of
prior art elements according to their established functions. See id. at 1740.
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Thus, we conclude that the Appellant has not shown that the Examiner
erred in rejecting claim 1 and claims 2-6, 8-15, and 23-30 falling with claim
1 over the teachings of Gehrmann in view of Oishi.

Claims 7 and 16-22
As to claims 7 and 16-22, Appellant does not provide separate
arguments with respect to the rejection of independent claim 1. As
discussed above, we find no deficiency regarding Gehrmann in view of
Oishi in the rejections of claim 1. Thus, we conclude that the Appellant has
not shown that the Examiner erred in rejecting claims 7 and 16-22 over the
teachings of Gehrmann in view of Oishi, and further in view of Gundavelli.

VI. CONCLUSION OF LAW
(1) Appellant has not shown that the Examiner erred in concluding
that claims 1-6, 8-15, and 23-30 are unpatentable under 35 U.S.C. § 103(a)
over the teachings of Gehrmann in view of Oishi.
(2) Appellant has not shown that the Examiner erred in concluding
that claims 7 and 16-22 are unpatentable under 35 U.S.C. § 103(a) over the
teachings of Gehrmann in view of Oishi and Gundavelli.
(3) Claims 1-30 are not patentable.

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VII. DECISION
The Examiner’s rejection of claims 1-30 under 35 U.S.C.
§ 103(a) is affirmed.
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

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