10293199 (P.T.A.B. Feb. 6, 2014)

Ex Parte Simeloff et al

Patent Trial and Appeal BoardFeb 6, 2014

10293199 (P.T.A.B. Feb. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EZRA SIMELOFF and PAUL KANE ____________ Appeal 2011-008874 Application 10/293,199 Technology Center 2400 ____________ Before ANTON W. FETTING, BIBHU R. MOHANTY, and GAY ANN SPAHN, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008874 Application 10/293,199 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 89-117 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM-IN-PART. THE INVENTION The Appellants’ claimed invention is directed to generating messages for use in the authentication of a user (Spec. 1:5-6). Claim 89, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 89. A method for providing a message, comprising: generating, by a computer system, the message for a user device, wherein the message comprises: [1] authentication data, wherein the authentication data comprises authentication procedure instructions executable for performing digital signing and data to be digitally signed, [2] wherein the authentication data is used by the user device to perform automatic initiation of an automated authentication signing procedure without user intervention, wherein the automated authentication signing procedure comprises the user device executing the authentication procedure instructions to digitally sign the data to be signed without a user manually digitally signing the data; and [3] information for presentation to the user via the user device; and transmitting, by the computer system, the message to the user device over a network. Appeal 2011-008874 Application 10/293,199 3 THE REJECTION The following rejection is before us for review: 1. Claims 89-117 are rejected under 35 U.S.C. § 103(a) as unpatentable over Epstein (US 6,694,025 B1, iss. Feb. 17, 2004) in view of Van Oorschot (US 6,317,829 B1, iss. Nov. 13, 2001). FINDINGS OF FACT We find the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence1. ANALYSIS The Appellants argue that the rejection of claim 89 is improper because claim limitation [1] is not shown in the prior art (App. Br. 10-13, Reply Br. 4-6). In contrast, the Examiner has determined that the rejection of claim 1 is proper and that claim limitation [1] is shown by Van Oorschot at column. 4:67-5:6 (Ans. 14-15). We agree with the Examiner. Claim limitation [1] requires: [1] authentication data, wherein the authentication data comprises authentication procedure instructions executable for performing digital signing and data to be digitally signed. Thus, the claim does require in part that the authentication data comprises “authentication procedure instructions.” Van Oorschot at column 4, line 67 to column 5, line 6 discloses that the security data can represent the type of decryption algorithm to use, password rules, or other suitable types of data. 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2011-008874 Application 10/293,199 4 The Appellants argue that the decryption algorithm of Van Oorschot is not the claimed “executable instructions” (App. Br. 10). Under a broadest reasonable interpretation the Specification provides no definition of the term “authentication procedure instructions” that specifically excludes the term from being an algorithm. For example, the Specification at page 23, lines 1- 6, in describing “instructions” refers to the algorithm shown in Figure 6. While the Specification does refer to the instructions being written in script language at, for instance, page 4, lines 27-29, this is only a specific embodiment which we decline to read into the claim. Regardless, as noted by the Examiner at pages 15-16 of the Answer, Van Oorschot at column 7, lines 65-67 discloses that the decryption key data may be performed by “executable programs.” Thus, the cited claim limitation has been shown in Van Oorschot. Regardless, the device of Van Oorschot could not operate with a mere theoretical algorithm and would need executable instructions to operate as is known in the art. For these reasons the rejection of claim 1 is sustained. The same arguments have been presented for claims 91, 92, 95, 98, 100, 101, 104, 107, 109, 110, 113, 116, and 117 and the rejection of these claims is sustained as well. The Appellants also provides arguments for claim 90 (App. Br. 12- 13). Claim 90 requires “wherein the authentication data is not usable for presentation by the user device.” Here, the claim limitation is broad enough to include the data not being using usable unless decrypted and since Van Oorschot at column 4, line 67 to column 5, line 6 discloses that the data must be decrypted, the rejection of this claim is sustained. The same arguments have been presented for claims 99 and 108 and the rejection of these claims is sustained as well. Appeal 2011-008874 Application 10/293,199 5 The Appellants also provide arguments for claim 93 (App. Br. 13). Claim 93 requires the message contain “control elements for controlling the presentation of said information to the user” and the claim limitation is broad enough to include decryption and passwords controlling access to get the presentation. Since this is shown in Van Oorschot at column 6, lines 42- 49 this rejection of record is sustained as well. The same arguments have been presented for claims 102 and 111 and the rejection of these claims is sustained as well. The Appellants also provide arguments for claims 94 and 97 (App. Br. 13-14). Claims 94 and 97 require that the message and authentication procedure instructions be written in markup language or script language, respectively. Van Oorschot at column 7, lines 65-67 has disclosed using “executable programs” and the use of conventional markup language or script language would have been an obvious modification to use common programming languages in the system. The same arguments have been presented for claims 103, 106, 112, and 115, and the rejection of these claims is sustained as well. The Appellants also provide arguments for claim 96 (App. Br. 14). Claim 96 requires the message includes “return instructions to effect automatic return of the digitally signed data from the user device” and the Examiner has asserted this is shown in Van Oorschot at column 5, lines 24- 33 (Ans. 5). We agree with the Appellants that Van Oorschot at this citation simply fails to disclose this and this rejection is not sustained. The same arguments have been presented for claims 105 and 114 and the rejection of these claims is not sustained as well. Appeal 2011-008874 Application 10/293,199 6 CONCLUSIONS OF LAW We conclude that Appellants have not shown that the Examiner erred in rejecting claims 89-95, 97-104, 106-113, and 115-117 under 35 U.S.C. § 103(a) as unpatentable over Epstein and Van Oorschot. We conclude that Appellants have shown that the Examiner erred in rejecting claims 96, 105, and 114 under 35 U.S.C. § 103(a) as unpatentable over Epstein and Van Oorschot. DECISION The Examiner’s rejection of claims 96, 105, and 114 is reversed. The Examiner’s rejection of claims 89-95, 97-104, 106-113, and 115-117 is sustained. AFFIRMED-IN-PART mls