Ex Parte Sagi et al

Patent Trial and Appeal Board

Sep 27, 2016

13341959 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/341,959 12/31/2011 Surya R. Sagi
919 7590 09/29/2016
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT.
37 EXECUTIVE DRIVE
MSC 01-152
DANBURY, CT 06810
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
G-578-01 1077
EXAMINER
POWERS, WILLIAMS
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
09/29/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
iptl@pb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SURYA R. SAGI, FREDERICK W. RY AN, JR.,
and BERNARD E. GRACY
Appeal2015-007080
Application 13/341,959
Technology Center 2400
Before DENISE M. POTHIER, JAMES W. DEJMEK, and ALEX S. YAP,
Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejections of claims 11-22. 1 App. Br. 3-8. Claims 1-10 have been canceled
by amendment. September 11, 2014 Amendment 2. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
1 Throughout this opinion, we refer to (1) the Final Action (Final Act.),
mailed October 23, 2014; (2) the Appeal Brief (App. Br.), filed March 16,
2015; and (3) the Examiner's Answer (Ans.), mailed May 13, 2015.
Appeal2015-007080
Application 13/341,959
Invention
Appellants' invention relates to "[s]ystems and methods for providing
secure digital mail document storage, retrieval and use in a cloud computing
environment." Spec., Abstract. In at least one embodiment, "document
decryption is handled differently depending upon the type of client making
the request." Id.
Independent claim 11 is reproduced:
11. A computer implemented method for processing a request from a
client for a secure digital document based upon client type, the secure
digital document encrypted by a first key and the first key encrypted
by a second key to form a first encrypted key, the first encrypted key
decrypted by a third key, the method comprising:
determining a type of client making the request;
if the determined type of client is a first type, decrypting the
encrypted first key using the third key and sending the decrypted first
key and the encrypted digital document to the client, and
if the determined type of client is a second type, different
from the first type, decrypting the first encrypted key using the third
key, decrypting the digital document using the first key and sending
the decrypted digital document to the client.
The Examiner relies on the following as evidence of unpatentability:
Ross
Scheidt
Bo got
Pauker
US 2002/0143885 Al
US 2003/0039358 Al
US 2008/0052781 Al
US 7,412,059 Bl
The Rejections
Oct. 3, 2002
Feb.27,2003
Feb.28,2008
Aug. 12, 2008
Claims 11-18 and 20-22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ross, Pauker, and Bo got. Final Act. 5-9.
Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ross, Pauker, Bogot, and Scheidt. Final Act. 9-10.
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Application 13/341,959
THE OBVIOUSNESS REJECTION OVER ROSS, PAUKER,
ANDBOGOT
Appellants argue claims 11-18 and 20-22 as a group. App. Br. 3-8.
We select claim 11 as representative.
Appellants argue that Ross' s sending of an email is not "a request for
a secure digital document" as recited. App. Br. 3. Appellants also argue
Ross, Pauker, and Bo got fail to teach the step of "determining a type of
client making the request," because the references do not discuss a client
type. App. Br. 3-7. Appellants also assert that Pauker's processing is not
based on a client type making the request but rather is based on policy
information. App. Br. 6. Appellants further contend that Pauker does not
return both an encrypted message and a decrypted message key. App. Br. 6.
Lastly, Appellants argue that Bogot does not teach content encrypted by a
first key and the first key being encrypted by a second key. App. Br. 7.
ISSUES
(1) Under§ 103, has the Examiner erred in rejecting claim 11 by
finding that Ross, Pauker, and Bogot collectively would have taught or
suggested:
( 1) "determining a type of client making the request for a secure
digital document" and
(2) "if the determined type of client is a first type, ... sending the
decrypted first key and the encrypted digital document to the client" as
recited?
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Application 13/341,959
ANALYSIS
Based on the record before us, we find no error in the Examiner's
rejection of representative claim 11. Concerning Appellants' argument that
Ross' s sending of an email is not "a request for a secure digital document"
(App. Br. 3), we disagree. The disclosure does not define a "digital
document," such that an email message is excluded. In fact, the
Specification discusses "digital documents" to include "mail, transaction
statements, marketing promotions," and other items. Spec. i-f 29 (emphasis
added). Moreover, the disclosure explains this invention is used in a "digital
mailbox system" or a "Digital Mail Platform" environment. Spec. i-f 28.
Additionally, the Examiner finds Ross teaches a client makes various
requests, including asking to distribute an encrypted electronic mail and
exchange a secure email (e.g., requesting a secure digital document) as well
as asking to access or receive a secure encrypted email (e.g., another form of
requesting). Ans. 8 (citing Ross, Abstract); see also Ross i-f 34, cited in Ans.
4. Given that the electronic mail is encrypted in these scenarios, we
determine that a client has made a request for a secure digital document as
recited.
Appellants also argue Ross, Pauker, and Bogot fail to teach the step of
"determining a type of client making the request." App. Br. 3-5, 6, 7. This
argument is unavailing. The Examiner discusses Ross in the context of
determining client types both in the Final Action and the Answer. In the
Final Action, the Examiner finds there are a number of different client types
discussed in Ross, including one client that does not have the encrypted
electronic mail software application and another client that requests an
application to be downloaded to a second user. See Final Act. 2. In the
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Application 13/341,959
Answer, the Examiner further finds that Ross teaches a "type of client" as "a
licensed user" of the email client software application program discussed
(Ans. 8) and this client type makes "a request" for downloading an
application to a second user or second type (Ans. 9).
Turning to the cited portion of Ross, Ross discusses a process to
distribute an encrypted electronic mail (email) software application for
exchanging secure email. Ross i-f 34, cited in Final Act. 6. This process
involves a first user that obtains a license for an email client software
application program that has encryption. Id. Thus, Ross describes a first
type of client (e.g., a licensed user). Ross also discusses the first user can
request a second user (e.g., a non-licensed user) download a
reader/responder software application program so that the two can exchange
encrypted emails. Id. This allows the second user without the email
software application to read and respond to encrypted emails from a client
having the email software. Id. Thus, Ross describes two different client
types, including (1) one that is licensed and has the email software and (2)
one that is not licensed and has only the reader/responder software. Id.
Accordingly, we disagree that Ross fails to describe client types or
determining the type of client making a request for a secure digital document
(e.g., determining whether or not the client making the request to read or
respond to an email has a licensed for the email software). Given that Ross
teaches determining a client type, Pauker and Bogot need not cure any
purported deficiency. App. Br. 6-7.
Additionally, Appellants argue Pauker does not "return both the
decrypted message key and [the] encrypted message to the recipient, as the
recipient already has the encrypted message." App. Br. 6. We are not
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Application 13/341,959
persuaded. As noted by the Examiner, claim 11 does not require "sending
the decrypted first key and the encrypted digital document to the client" at
the same time. Final Act. 3. That is, Pauker teaches a service that provides
an encrypted message to a receiver (e.g., Pauker 6: 16-29, Fig. 3 (step 32))
and provides a decrypted message key later to the authorized receiver as part
of the key management service (e.g., step 36 in Figure 3, which is described
in more detail in Figure 4, including step 48 described in Pauker 9:30-38,
cited in Final Act. 6). Thus, Pauker teaches sending both an encrypted
digital document (e.g., an encrypted message) and a decrypted first key (e.g.,
a decrypted message key) to a client's receiver.
Moreover, one must consider the teachings in the cited prior art
collectively-not individually-in determining whether the claimed
invention would have been obvious to one skilled in the art. See In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As such, we consider the
teachings of Pauker when combined with Ross in concluding whether or not
the cited references render the recited "sending the decrypted first key" step
"if the determined type of client is a first type" obvious.
When applying Pauker' s technique to Ross, the combination yields no
more than an approach that downloads the reader/responder software to a
user, such as a user that does not have a license for the email software (e.g.,
a non-licensed client type), so that this client type can receive both an
encrypted digital document and a decrypted key for decrypting the encrypted
document. That is, Ross teaches downloading a reader/responder software
when the second user is not licensed, and Pauker similarly teaches how such
a client may handle incoming information, such as received encrypted
emails, so as to read the encrypted digital document by downloading
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software or a plug-in to enable a client to decrypt encrypted message keys
that assists in reading received encrypted documents. Ross i-f 34; Pauker
6: 19-33, 9:30-38, Figs. 3--4 (steps 34, 36 and 48).
Notably, the last two clauses of claim 11 are conditional limitations.
That is, claim 11 recites "if the determined type of client is a first type" and
"ifthe determined type of client is a second type." App. Br. 10, Claim
App'x. Due to these conditional recitations, the prior art need only perform
one of these two recited steps if a condition is met (e.g., the client type is a
first type).2 As such, as broadly as recited, the above analysis of Ross and
Pauker satisfies the limitations of claim 11, because the determined type of
client is a first type and by implication cannot satisfy the "if the determined
type of client is a second type" recitation.
Even so, we address Bogot and the disputed limitations for
completeness. Appellants contend there is no teaching "in Bo got of the
content being encrypted by a first key and the first key being encrypted by a
second key, such that the telephone handset in Bogot is required to decrypt
the first encrypted key using the third key." App. Br. 7. Yet, the Examiner
notes Bogot teaches a key used to decrypt content (e.g., a first key) can be
encrypted with one or more group keys (e.g., a second key). Bogot i-f 7, cited
in Final Act. 4. Moreover, this teaching suggests that the encrypted key is
decrypted using a third key at the receiver. See Bo got i-f 7 (discussing
decrypting or producing a key at the receiver). Additionally, Bogot teaches
transferring decrypted content to a receiver "in the clear" for a client (e.g., a
2 See, e.g., Exparte Katz, 2011WL514314, at *4--5 (BPAI Jan. 27, 2011)
(the broadest reasonable interpretation of a conditional step in a method
claim includes instances in which the conditional step would not be
invoked), reh 'g denied, 2011 WL 1211248, at *2 (BP AI Mar. 25, 2011 ).
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Application 13/341,959
licensed user). Bogot iii! 79-80, cited in Final Act. 7. Because of the above
discussion, we disagree that Bogot does not teach or suggest decrypting a
first encrypted key using a third key or decrypting the document using a first
key. App. Br. 7.
Accordingly, combining Bogot's technique with the Ross/Pauker
system teaches and suggests encrypting a first key with a second key and
decrypting the first encrypted key using a third key. See Final Act. 2--4, 6-7;
Ans. 4--5, 8-9. Given that Ross teaches and suggests determining the type
of client, we are not persuaded by Appellants' argument that Bo got fails to
teach or suggest determining the client type. App. Br. 7. Furthermore,
attacking Bogot individually (see id.) rather than considering the
combination collectively fails to demonstrate that claimed invention is not
obvious.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 11 and claims 12-18 and 20-22, which
were not separately argued.
THE REMAINING OBVIOUSNESS REJECTION
Appellants rely on their arguments presented for claim 11 in arguing
that the rejection of claim 19 should be reversed. App. Br. 8. We are not
persuaded for the above-stated reasons and need not address whether Scheidt
cures the purported deficiencies. Id. Accordingly, we sustain the rejection
of claim 19.
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Application 13/341,959
DECISION
The Examiner did not err in rejecting claims 11-22 under§ 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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