Ex Parte Shrader et al

Board of Patent Appeals and Interferences

Jul 27, 2009

09750255 (B.P.A.I. Jul. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THEODORE JACK LONDON SHRADER,
RANDY SCOTT HUMPHREY,
DAVIS KENT SOPER,
and XIAOYAN ZHANG
____________
Appeal 2007-003855
Application 09/750,2551
Technology Center 2100
____________
Decided:2 July 28, 2009
____________
Before LEE E. BARRETT, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed December 28, 2000, titled "Architecture for a Unified
Synchronous and Asynchronous Sealed Transaction."
2 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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This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-18. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
The invention
The disclosed invention is directed to a communications method that
enables secure transmission across multiple synchronous or asynchronous
protocols and enables the recipient of a message to trace all of the events
during the message's transmission.
The Background of the Invention discloses:
Previous communication protocols have focused on
transmission of a sealed transaction between two entities. In a typical
SSL [Secure Sockets Layer] transaction such as sending a facsimile
message, the destination can perform processing on the information
and determine its origin and maintain the originality of the message.
The recipient will know what entities were involved in the transaction
along the transmission, the actual sender of the message, check to
verify that each entity was able to sign that information confirming
that they were able to take care of the information. An example is
purchasing an item over the Internet. This type of transaction is an
SSL transaction. However, sending an electronic mail message is an
asynchronous transaction. With the expanded use of the Internet and
other computing networks, there is a need to be able to have the
ability to trace events in the transmission of the message regardless of
whether the transmission is synchronous or asynchronous.

Spec. 4-5.
In the disclosed invention, the original transaction is packaged within
a Public Key Cryptology Standard (PKCS) SignedData object, which is a
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digitally-signed container for arbitrary message content. A SignedData
object includes signed attributes consisting of the content or data type of the
message, a message digest, and signing time. Recipients of a SignedData
object can verify the message and signature using the sender's public key to
ensure the authenticity of the sender and the integrity of the message. If the
message has to be forwarded, the sender adds a new SignedData object,
possibly with new information, including a message digest of the old
message, known as a related message digest. Since message digest values
are unique to the message for which the digest was generated, the related
message digest attribute value allows the final or interim recipients to link
the messages together to form the original chain of messages and determine
the initial sender. Spec. 10-11.
In an asynchronous protocol, the SignedData or multiple SignedData
objects are wrapped in an EnvelopedData object, which is an object that
provides properties and methods to envelop data for privacy by encryption.
Spec. 12.
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The claims
Claim 1 is reproduced below:
1. A general communication transmission method that enables a
transmitted message to span synchronous and asynchronous protocols
over a computer network during one transmission comprising:
packaging a message for transmission in a data object, the
message packages including information on the original message in
the transmission;
sending the packaged message to a designated recipient entity;
receiving the message by a current recipient entity at a location;
recording the event of receiving the packaged message by a
current recipient in a message transmission history generated for the
transmitted message; and
determining whether current recipient entity is the designated
recipient entity.

The references

Sudia US 6,209,091 B1 Mar. 27, 2001
(filed Sep. 29, 1998)

Preston Gralla, How the Internet Works (4th ed. Que 1998), page 19,
item 4.

Doug Lowe, Internet Explorer 3 for Windows for Dummies (IDG
Books 1996), pages 139-153 ("Internet Explorer for Dummies").

Definition of "audit trail": "A record of business transactions that can
be used by an interested party to trace an organization's activities to
original documents. Audit trails are used to verify account balances."
David L. Scott, Wall Street Words: An A to Z Guide to Investment
Terms (Houghton Mifflin 2003), on http://dictionary.reference.com/.
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The rejections
Claims 1-18 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Sudia.
Claims 1 and 10 stand additionally rejected under 35 U.S.C. § 102(b)
as being anticipated by Internet Explorer for Dummies.

Representative claim 1
Appellants argue the limitation of recording a "message transmission
history" contained the "event" of a stop which is found in all independent
claims in one form or another. Appellants do not argue the separate
patentability of the claims. Thus, claim 1 is selected as representative. See
37 C.F.R. § 41.37(c)(1)(vii) (2006).

PRINCIPLES OF LAW
Claim interpretation
During patent examination, when claims can be amended, claims are
given their broadest reasonable interpretation. In re Zletz, 893 F.2d 319,
321-22 (Fed. Cir. 1989).

Anticipation
"Anticipation requires the presence in a single prior art disclosure of
all elements of a claimed invention arranged as in the claim." Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).

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Arguments not made are waived
Arguments not made are considered waived. See In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of
this court to examine the claims in greater detail than argued by an appellant,
looking for nonobvious distinctions over the prior art."); In re Wiechert,
370 F.2d 927, 936 (CCPA 1967) ("This court has uniformly followed the
sound rule that an issue raised below which is not argued in this court, even
if it has been properly brought here by a reason of appeal, is regarded as
abandoned and will not be considered. It is our function as a court to decide
disputed issues, not to create them."); In re Wiseman, 596 F.2d 1019, 1022
(CCPA 1979) (arguments must first be presented to the Board before they
can be argued on appeal).

DISCUSSION
Anticipation over Sudia
Issue
Have Appellants shown that the Examiner erred in finding that Sudia
teaches "recording the event of receiving the packaged message by a current
recipient in a message transmission history generated for the transmitted
message" as recited in representative claim 1?

Contentions
The Examiner finds that Sudia teaches "recording the event of
receiving the packaged message by a current recipient in a message
transmission history generated for the transmitted message," as recited in
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claim 1, "where the message transmission history is indicated by each of the
parties that signed the document as it passes through the network.
(Column 16, lines 45-52) & (Column 16, lines 57-65) & Figure 10."
Final Off. Action 4; Ans. 5.
Appellants argue that the present invention distinguishes from Sudia
in that: (1) the present invention is not supplying part of a predetermined
signature to the message; (2) in the present invention, a modification or
addition to the message can happen but may not happen, whereas in Sudia
the purpose of the stop is to add another piece of the signature; and (3) in the
present invention there is no predetermined set of stops. Supp. Br. 5.
Appellants argue:
Sudia does not provide the capability to generate a history of the
transmission path. The locations cited in Sudia (Column 16, lines
45-52 and 57-65 and Figure [10)] do not describe the [sic] recording
the event of receiving the package message by a current recipient in a
message transmission history generated for the transmitted message
step of [sic] claimed in Applicants' present invention.

Supp. Br. 5.
The Examiner responds:
The Examiner contends that because Sudia explicitly stated that the
signatures as the document passes through the nodes are left "as an
audit trail" (Column 16, line 63), the series of signatures may be
considered a "transmission history". An audit trail is commonly
understood as such: (taken from www.dictionary.com)
audit trail

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A record of business transactions that can be used by an
interested party to trace an organization's activities to original
documents. Audit trails are used to verify account balances.

Source: Wall Street Words: An A to Z Guide to Investment Terms for
Today’s Investor by David L. Scott. Copyright © 2003 by Houghton
Mifflin Company. Published by Houghton Mifflin Company.

Ans. 11-12 (emphasis omitted).

Facts
Sudia describes that a Certification Authority (CA) for public key
certificates affixes a signature key to sign certificates of high-value users and
subordinate CAs, but the CA's signature key is a target for terrorists,
criminals, and espionage. Col. 1, ll. 42-50.
Sudia describes a multi-step signing system and method that uses
multiple signing devices to affix a single signature, which can be verified
using a single public verification key. Each signing device possesses a share
of the signature key and affixes a partial signature in response to
authorization from a plurality of authorizing agents. Abstract. In this way
no single signing device needs to contain the signature key during the
document signing operation and the system permits loss or compromise of
one or more signing devices while maintaining available, un-compromised
signing devices. Col. 2, ll. 25-39.
Sudia describes a multi-step signing example in connection with
Figures 9 and 10. The end result is a document signed with a System Wide
Authority (SWA) signature. The example assumes that two Authorizing
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Agents 1a and 1b (human agents) authorize Signing Device 1 to affix a
partial signature, and that Authorizing Agents 2a and 2b authorize Signing
Device 2 to complete the SWA signature. Col. 16, ll. 21-32.
As shown best in Figure 9, Authorizing Agent 1a receives a request
for a signature of an electronic message 131 having a header 133 and the
document to be signed 135. Authorizing Agent 1a strips off the header,
performs procedural checks, signs with the agent's secret signature
key --AA1a, and sends the signed certificate to Authorizing Agent 1b.
Authorizing Agent 1b strips off the header, performs procedural checks,
signs with the agent's secret signature key --AA1b, and sends the
twice-signed document 139 to Signing Device 1. Col. 16, ll. 33-65.
"AA1a's signature is left on the document as an audit trail." Col. 16, l. 63.
The rejection finds that the step of attaching secret signature keys at the
authorizing agent is "recording the event of receiving the package message"
and the string of keys forms a "message transmission history."
Signing Device 1 verifies that the document has the necessary number
of signatures and, if so, strips off the signatures of the authorizing agents,
affixes a partial SWA signature, and sends the partially signed document
141 to an Authorizing Agent 2a for another signing device. The Authorizing
Agents 2a and 2b affix secret signature keys in the manner previously
described and send the signed document 149 to Signing Device 2 which
completes the SWA signature. Col. 16, l. 66 to col. 17, l. 50.

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Claim interpretation
Claim 1 is argued as representative. The preamble of claim 1 recites a
"general communication transmission method that enables a transmitted
message to span synchronous and asynchronous protocols over a computer
network during one transmission." However, the body of the claim does not
recite how synchronous and asynchronous protocols are treated differently.
The Specification describes that synchronous protocols uses SignedData or
multiple SignedData objects, while the asynchronous protocol uses
SignedData or multiple SignedData objects wrapped in an EnvelopedData
object (Spec. 10-12), which indicates that there is not a single method that
handles both synchronous and asynchronous cases. The term "that enables"
is a statement of capability that can mean that the method allows other,
unclaimed, steps to perform the transmission as disclosed. In any case, the
synchronous and asynchronous protocols limitation is not argued.
Claim 1 recites "packaging a message for transmission in a data
object," but does not state any specifics of the packaging. At this point in
the claim, "packaging" could be identifying a discrete message or packet.
Claim 1 recites "recording the event of receiving the packaged
message by a current recipient in a message transmission history generated
for the transmitted message," which is the only limitation at issue in this
appeal. First, this limitation does not describe what "recording the event of
receiving" or "a message transmission history" consist of. While the
Specification discloses information such as a message digest, signing time,
and a sender's private key (Spec.10), the claim is not so limited. The
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"message transmission history" could be any information indicating who,
where, or when the message was sent. Second, claim 1 next recites
"determining whether current recipient entity is the designated recipient
entity." It seems that the step of "recording the event of receiving . . . in a
message transmission history" would only be performed if the "current
recipient entity" is not "the designated recipient entity." However, claim 1
requires always "recording the event of receiving."

Analysis
It is clear that the Examiner is not saying that Sudia discloses
Appellants' disclosed invention, but is rejecting the claims because they are
so broadly drafted that they read on Sudia. Given our interpretation that
claim 1 does not recite how synchronous and asynchronous protocols are
treated differently, and that term "that enables" is a statement of capability
that means the method allows other, unclaimed, steps to perform the
transmission over synchronous and asynchronous protocols, it is not clear
why the claims do not read on the SSL protocol described in the
Specification at pages 4-5. As stated, "[t]he recipient will know what
entities were involved in the transaction along the transmission, the actual
sender of the message . . ." (Spec. 4, ll. 29-30), which indicates that the
protocol provides a message transmission history.
Nevertheless, the rejection finds that the step of attaching secret
signature keys at the authorizing agent is "recording the event of receiving
the package message" and the string of keys form a "message transmission
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history." As noted in the claim interpretation, the claims do not describe
what "recording the event of receiving" or "a message transmission history"
consists of. Thus, we agree with the Examiner that attaching an authorizing
agent's secret signature key is "recording the event of receiving the package
message." The signed message 139 from Authorizing Agent 1b to the
Signing Device 1 contains both Authorizing Agent 1a's and Authorizing
Agent 1b's secret signatures, --AA1a and --AA1b, which forms an "audit
trail" (col. 16, l. 63), which is a "message transmission history," as broadly
claimed. That is, the claims do not preclude a message transmission history
from being a history of the persons who signed the document. The fact that
the signatures are stripped off when the document is partially signed is
irrelevant since a portion of the process in Sudia meets the limitation.
Appellants' arguments that the present invention distinguishes from
Sudia in that the present invention is not supplying part of a predetermined
signature to the message, is not necessarily modifying or adding to the
message, and has no predetermined set of stops, are not persuasive because
the arguments only argue what Sudia does that the invention does not and do
not address why Sudia does not meet the claim language.
Appellants' argument that "Sudia does not provide the capability to
generate a history of the transmission path" (Supp. Br. 5) is not persuasive
because claim 1 recites a "message transmission history," not a history of the
transmission path. The "history" can refer to a sequence of persons (such as
the authorizing agents in Sudia), places, or times.
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Therefore, Appellants have not shown error in the Examiner's finding
of anticipation.

Conclusion
Appellants have not shown that the Examiner erred in finding that
Sudia teaches "recording the event of receiving the packaged message by a
current recipient in a message transmission history generated for the
transmitted message" as recited in representative claim 1. Accordingly, the
rejection of claims 1-18 is affirmed.

Anticipation over Internet Explorer for Dummies
Issue
Have Appellants shown that the Examiner erred in finding that
Internet Explorer for Dummies teaches "recording the event of receiving the
packaged message by a current recipient in a message transmission history
generated for the transmitted message" as recited in representative claim 1?

Contentions
The Examiner finds that Internet Explorer for Dummies teaches
"recording the event of receiving the packaged message by a current
recipient in a message transmission history generated for the transmitted
message," as recited in claim 1, at Figure 11-1, page 140. Final Off.
Action 3; Ans. 4.
Appellants argue that this figure of Internet Explorer for Dummies
shows a list of received e-mail messages and "does not describe the activity
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of the message transmission history-generating step of Applicants present
invention." Supp. Br. 6. It is argued that this figure of the reference "does
not describe a method of implementing the present invention. Therefore, the
reference does not provide an enabling description of Applicants' present
invention." Id.
The Examiner responds that Figure 11-1 discloses e-mails received
and "[w]ith each message or transmission, it can be determined who a
message was sent from, along with the date and time of transmission and
reception, along with a subject header to broadly summarize the subject
matter of the message." Ans. 13.

Facts
Internet Explorer for Dummies shows a list of received e-mail
messages, where each e-mail indicates who the e-mail is from, the subject
line, and the date and time the e-mail was received.

Analysis
As noted in the claim interpretation section, claim 1 does not describe
what "recording the event of receiving" or "a message transmission history"
consist of. Thus, we see no error in the Examiner's finding that recording
the date and time the e-mail was received is "recording the event of
receiving the packaged message" and the information constitutes a "message
transmission history."
Appellants argue that Figure 11-1 of Internet Explorer for Dummies
"does not describe the activity of the message transmission history
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generating step of Applicants present invention." Supp. Br. 6. It is argued
that this figure of the reference "does not describe a method of implementing
the present invention. Therefore, the reference does not provide an enabling
description of Applicants' present invention." Id. Since Appellants merely
deny that the limitation is not shown, without addressing why the date and
time data is not a message transmission history, as broadly claimed,
Appellants have not shown error in the Examiner's rejection. Appellants'
argument that the reference does not provide an enabling description is not
persuasive since the e-mail is a commercial product.

Conclusion
Appellants have not shown that the Examiner erred in finding that
Internet Explorer for Dummies teaches "recording the event of receiving the
packaged message by a current recipient in a message transmission history
generated for the transmitted message" as recited in representative claim 1.
Accordingly, the anticipation rejection of claims 1 and 10 is affirmed.

CONCLUSION
The rejection of claims 1-18 under 35 U.S.C. § 102(e) over Sudia is
affirmed.
The rejection of claims 1 and 10 under 35 U.S.C. § 102(b) over
Internet Explorer for Dummies is affirmed.

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Requests for extensions of time are governed by 37 C.F.R. § 1.136(b).
See 37 C.F.R. § 41.50(f).
AFFIRMED

rwk

Darcell Walker
8107 Carvel Lane
Houston, TX 77036