Ex Parte Sjoblom

Board of Patent Appeals and Interferences

Jun 28, 2006

09423511 (B.P.A.I. Jun. 28, 2006)

The opinion in support of the decision being entered today
was not written for publication in and
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte HANS SJOBLOM
_____________

Appeal No. 2006-1011
Application No. 09/423,511
______________

ON BRIEF
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Before: CRAWFORD, NAPPI and FETTING Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the final rejection of
claims 1 through 3, 6 through 29. Claims 4 and 5 were canceled in an
amendment submitted after the final rejection. For the reasons stated infra we
affirm in part the examiner’s rejection of these claims.

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Application No. 09/423,511

Invention

The invention relates to a method of using a smart card to create a
transaction message, which can be transferred to a receiver, which cannot be
tampered with without such tampering being easily recognizable. See page 2 of
appellant’s specification.
Claim 1 is representative of the invention and reproduced below:
1. A method for performing electronic transactions via a
communications network, in which a sender of transaction messages is
assigned a smart card with an associated unique identity and a private key
stored in the card in a protected manner and in which an associated public
key is kept generally available, characterized in that in connection with an
electronic transaction under the sender’s own control, preferably through
his own input of message information, the sender independently of any
connection to a communications network and without computer dialog with
a receiver, creates, on the basis of entered transaction information, a
transaction message, which contains information necessary for the
transaction, the transaction message being created in the smart card with
the aid of software previously stored in the smart card, and in his smart
card, provides the created transaction message with his digital signature
while using his own private key for subsequent output and transmission of
the transaction message.

Reference

The reference relied upon by the examiner is:
Heinonen et al. (Heinonen) 5,887,266 March 23, 1999
(filed Feb.7, 1996)

Barlow et al. (Barlow) 6,038,551 March 14, 2000
(filed March 11, 1996)

Rejection at Issue

Claims 1 through 3, 6 through 9, 11 through 13, 15 through 18, 21 through 23
and 25 through 29 stand rejected under 35 U.S.C. § 102(e) as being
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unpatentable over Barlow. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Barlow. Claims 10, 19, 20 and 24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Barlow in view of Heinonen.
Throughout the opinion we make reference to the brief and the answer for the
respective details thereof.
Opinion

We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of anticipation and obviousness
relied upon by the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision, appellant’s
arguments set forth in the brief along with the examiner’s rationale in support of
the rejections and arguments in rebuttal set forth in the examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejections and the arguments of appellant and the examiner, and for
the reasons stated infra we do not sustain the examiner’s rejection of claims 1
through 3, 6 through 9, 11 through 13, 15 through 18 and 27 through 291 under
35 U.S.C. § 102(e) nor do we sustain the examiner’s rejection of claims 10, 14
and 19 under 35 U.S.C. § 103(a). However, we sustain the examiner’s rejection

1 We note that claims 6, 7 and 20 all contain a typographical error, in that they ultimately depend
upon canceled claim 5 (claim 28 is also in error as it depends from claim 6). Appellant states in
the amendment dated August 25, 2004 (received in the PTO September 4, 2004) that claims 4
and 5 are “deleted as being redundant, since their features are included in superior claims.”
Accordingly, we consider that appellant intended claims 6, 7 and 20 to be dependent upon claim
1. Appellant should make the appropriate corrections during any further prosecution of this
application.
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of claims 21, 22, 23, 25 and 26 under 35 U.S.C. § 102(e) and we sustain the
examiner’s rejection of claim 24 under 35 U.S.C. § 103(a).
Appellant argues, on pages 3 through 6 of the brief, that claims 1 through
9, 11 through 13, 15 through 18, 21 through 23 and 25 through 29 are not
anticipated by Barlow. On page 3 of the brief, appellant asserts that Barlow
teaches a user- configurable smart card which can be used in various systems,
and that of the various systems that Barlow teaches that the smart card can be
used with, only three, ATM, Vending and Online shopping, can be characterized
as financial transaction systems. On page 4 of the brief, appellant argues that
Barlow’s disclosed ATM transaction, requires a back and forth interaction
between the sender and receiver’s computer and that this back and forth is
“contrary to the concept of the invention as defined in the pending main claim.”
On pages 4 and 5 of the brief, appellant asserts that Barlow’s discussion of using
the smart card to purchase from a vending machine, which the examiner relies
upon in making the rejection, teaches a smart card loaded with money and the
vending machine interacts with the smart card to electronically deduct payment
from the smart card. Appellant states:
There are significant differences between this known technology and the
method for performing electronic transactions as disclosed in Claim 1.
The present invention creates a “transaction message” “in the smart card
with the aid of software previously stored in the smart card”. Also the
created message is provided with the senders [sic, sender’s] “digital
signature while using his own private key for subsequent output and
transmission of the transaction message.” While it is true that the above
described use according to Barlow et al. of a cash card in a vending
machine completes a transaction off-line, no digitally signed transaction
message is made and transmitted. Only an electronic deduction is made
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in the chip on the card by a mechanism in the vending machine. No
message is ever digitally signed and transmitted in the vending machine
example.

Further, on page 5 of the brief, appellant asserts that the online shopping
disclosure of Barlow also require a back and forth exchange of information.
Appellant thus concludes on page 6 of the brief:
All of the examples of Barlow et al., involve interaction, before completion
of the digitally signed message, with entities outside the sender’s control,
in particular in this case entities outside the actual smart card itself.
Nowhere in Barlow et al. is there any indication of the concept of the
present invention. All that Barlow et al reveals is the previously known
interacting technology which opens the possibility of hacking, intrusions
and errors during the compiling and digital signing of the transaction
message. It is submitted that the independent claims 1, 21 and 23 are
new and non-obvious over Barlow et al.

The examiner, in response, asserts that the limitations directed to the
sender sending a message independent of any connection to a communications
network and without dialog with a receiver are optional as the claim recites
“preferably.” Further, the examiner asserts that Barlow’s teaching of using the
smart card with a vending machine meets the limitation of sending transaction
messages that are independent of a connection with a network and without
dialog with a receiver. See answer, page 9.
In the reply brief, appellant asserts that the examiner’s claim interpretation
is in error and that the reasonable interpretation of the claim 1 term “preferably” is
that it is only directed to the limitation “through his own input of message
information.”
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We agree with the appellant regarding the use of the term “preferably” in
claim 1, and consider it to only operate on the further statement “through his own
input of message information.“ Thus, contrary to the examiner’s assertions, we
do not find that the further limitations of “the sender independently of any
connection to a communications network and without computer dialog with a
receiver, creates … a transaction message… for subsequent output and
transmission of the transaction message” are optional. We find that claim 1
recites limitations directed to the transaction message containing information
necessary for the transaction and that the transaction message is generated on
the smart card. Further, claim 1 recites limitations directed to the message being
created independently of a connection with a network and without dialog with a
receiver the transaction message is created.
While we do find that Barlow teaches creation of a transaction message
on the smart card using private keys and is the creation is independent of a
communications network, we do not find that Barlow teaches that the transaction
message is generated without dialog with a receiver. Barlow teaches that the
smart card contains public and private keys and that these keys are used to
encrypt messages and digitally sign messages. See figure 3, item 68 and
column 12, lines 15 through 22. Barlow teaches that the keys do not leave the
card and that the card can perform the encryption and signing of the messages.
See column 12, lines 26 and lines 40 through 45. Barlow teaches that the smart
card can store tokens for beverage/snack vending machines and public
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transportation and can be used for ATM banking and online shopping. See
column 14, lines 10, 11, 44 and 60. While these tokens, stored on the smart
card, are transaction messages, in that they provide authorization to perform a
transaction, there is no disclosure in Barlow that they are provided with a digital
signature using the public key. Nor do we find that a digital signature is inherent
to the tokens stored in the smart card. In the example of the ATM banking the
transaction message, the “signed request for cash” is transferred from the card to
the ATM, the receiver. The ATM then debits the user’s account. See column 14,
lines 52 through 57. Thus, though the ATM is disclosed as being connected to a
bank network which is a communications network and the generation of the
transaction message “the request for cash” is not dependent upon the
communications network, nonetheless there is dialog with the receiver, the ATM.
Further, in the example of on-line shopping Barlow identifies that there is an
exchange of information between the merchant and the user’s computer
(containing the smart card) to generate the transaction message. See column 16
lines 21 through 43. Thus, we find no teaching in Barlow of creating a
transaction message without dialog with a receiver as recited in claim 1.
Accordingly we will not sustain the examiner’s rejection of claim 1 or the claims
dependent thereupon. Claims 2 through 3, 6 through 9, 11 through 13, 15
through 18 and 27 through 29.
The examiner has not asserted, nor do we find that Heinonen teaches or
suggests modifying Barlow to correct the noted deficiencies in the rejection of
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claim 1. Accordingly, we will not sustain the examiner’s rejection of claims 10, 19
and 20.
We next consider independent claims 21, 23, 26 and the claims
dependent thereupon. Appellant has presented no arguments directed to the
limitations of independent claims 21, 23 and 26, rather appellant grouped these
claims with claim 1. However, we do not find that claims 21, 23 and 26 are
commensurate in scope with appellant’s arguments. Specifically, claims 21, 23
and 26 do not contain limitations directed to creating a transaction message
without dialog with a receiver.
Independent claims 21 and 23 recite limitations directed to a smart card,
which protects a private key, contains an asymmetrical algorithm, receives input
to create a message, and contains a processor to create a transaction message
with a digital signature. Appellant has not argued that Barlow does not teach
these features. Further, as discussed above with respect to claim 1, we find that
Barlow teaches that the smart card contains keys and using the keys can digitally
sign a message. Further, Barlow teaches that the encryption uses asymmetrical
algorithms. See column 11, lines 56 through 60. Thus, appellant has not
convinced us of error in the examiner’s rejection of claims 21 and 23. We
accordingly sustain the examiner’s rejection of claims 21, 23 and the claims
dependent thereupon, claims 24 and 25.
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Independent claim 26 is neither grouped nor addressed in appellant’s
arguments and is broader in scope than the limitations of claim 1 argued by the
appellant. Claim 26 recites:
Use of a smart card with a private key stored therein for providing
independently of the communications network, an electronic transaction
message provided with a digital signature based upon the private key.

As appellant has presented no argument directed to why the limitations of claim
26 are patentable over the art cited by the examiner in rejecting claim 26 we are
not persuaded of error in the examiner’s rejection. Further, as discussed supra
with respect to claim 1, we find that Barlow teaches generation of a transaction
message with a digital signature independent of a communication network.
Accordingly we sustain the examiner’s rejection of claim 26.
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In summary, we do not sustain the examiner’s rejection of claims 1
through 3, 6 through 9, 11 through 13, 15 through 18 and 27 through 29 under 35
U.S.C. § 102(e) nor do we sustain the examiner’s rejection of claims 10, 14 and
19 under 35 U.S.C. § 103(a). However, we sustain the examiner’s rejection of
claims 21, 22, 23, 25 and 26 under 35 U.S.C. § 102(e) and we sustain the
examiner’s rejection of claim 24 under 35 U.S.C. § 103(a). The decision of the
examiner is affirmed in part.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

REN/lg
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