Ex Parte Spies et al

Patent Trial and Appeal Board

Sep 28, 2016

13733598 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/733,598 01/03/2013
36532 7590 09/30/2016
Treyz Law Group
870 Market Street, Suite 984
San Francisco, CA 94102
FIRST NAMED INVENTOR
Terence Spies
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.
ID-13 Div 3 8695
EXAMINER
LIPMAN, JACOB
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
docket@treyzlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERENCE SPIES and GUIDO APPENZELLER
Appeal2015-002004
Application 13/733,598 1
Technology Center 2400
Before THU A. DANG, LARRY J. HUME, and JOHN D. HAMANN,
Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1---6. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
THE CLAIMED INVENTION
Appellants' claimed invention relates to managing messages systems
that have identity-based-encryption capabilities. See Spec. 1, 11. 16-19.
Claims 1 and 4 are illustrative of the subject matter of the appeal and are
reproduced below.
1 According to Appellants, the real party in interest is Voltage Security, Inc.
App. Br. 2.
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Application 13/733,598
1. A method for using a gateway at an organization to
process a message that has been sent to a recipient at the
organization from a sender over a communications network,
wherein the message has been encrypted at the sender using an
identity-based-encryption (IBE) public key of the recipient to
produce an !BE-encrypted message, the method comprising:
at the gateway, obtaining an IBE private key for the
recipient corresponding to the IBE public key of the recipient;
at the gateway, decrypting the !BE-encrypted message to
produce an unencrypted version of the message;
at the gateway, scanning the unencrypted version of the
message for viruses to produce a scanned version of the message;
and
providing the scanned message from the gateway to the
recipient.
4. The method defined in claim 1 further comprising:
processing the unencrypted version of the message at the
gateway to determine whether to archive the message; and
if it is determined that the message is to be archived, using
a database controller to save a copy of the message in a database
of the organization.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 1--4 and 6 under 35 U.S.C.
§ 103 (a) as being unpatentable over the combination of Samman (US
2003/0177397 Al; published Sept. 18, 2003) and Boneh et al. (US
2003/0081785 Al; published May 1, 2003) (hereinafter "Boneh").
(2) The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Samman, Boneh, and Cook et al.
(US 2004/0139314 Al; published July 15, 2004) (hereinafter "Cook").
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellants.
We disagree with Appellants' arguments, and we incorporate herein
and adopt as our own the findings, conclusions, and reasons set forth by the
Examiner in (1) the December 24, 2013 Final Office Action (Final Act. 2--4)
and (2) the September 24, 2014 Examiner's Answer (Ans. 2-7). We
highlight and address, however, specific findings and arguments below for
emphasis.
(1) Gateway obtaining an !BE private key (or the recipient
Appellants argue the Examiner errs in combining the teachings of
Samman and Boneh to teach or suggest "at the gateway, obtaining an IBE
private key for the recipient corresponding to the IBE public key of the
recipient," as recited in claim 1. See App. Br. 11-13. As to Samman,
Appellants argue it "makes no mention of any IBE protocol" - Samman
instead teaches using the wireless transport layer security ("WTLS") and
IPsec encryption protocols. See App. Br. 10-11 (citing Samman Fig. 1,
i-fi-122, 35). Appellants also argue that because of Samman's teaching of
"implementing two discrete encryption operations, no key for [the recipient]
is ever (or need ever be) shared with [the] gateway." App. Br. 12.
As to Boneh, Appellants argue it merely teaches "that a recipient is
required to possess its own private key in order to decrypt IBE encrypted
data that was encrypted for [it]," and does not mention providing the
recipient's IBE private key to any other entity. App. Br. 11-12 (citing
Boneh i-fi-145--46). Appellants dismiss Boneh's teachings regarding
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delegating decryption keys as "not relevant to sharing a private key of an
intended target recipient with any other entity than that recipient." Reply
Br. 4 (citing Boneh i-fi-1300-303). Specifically, Appellants contend Boneh's
teachings are not relevant, including because they are limited to (i)
delegating keys to a laptop for decrypting messages of a recipient for only
select dates, and (ii) delegating keys to assistants (which allows for the
assistants to be separate recipients) that are unique keys, are different than
the boss' key, and cannot decrypt messages for other assistants. See id.
The Examiner finds the combination of Samman and Boneh teaches
or suggests the disputed limitation. Ans. 4--5. As to Samman, the Examiner
finds it does not teach using a specific encryption protocol. Ans. 4; Final
Act. 2 (citing Samman i122 (teaching receiving data at a gateway,
decrypting the data and scanning the data for viruses, and if none are found,
re-encrypting the data and sending the data to its destination), 23 (teaching
that the data "may be encrypted" using WTLS and IP Sec) (emphasis
added)). As to Boneh, the Examiner finds it teaches advantages for using
the IBE protocol. Ans. 4 (citing Boneh i1 53). The Examiner also finds
Boneh teaches or suggests delegating decryption keys to trusted systems
(e.g., a recipient's gateway). See Ans. 4--5 (citing Boneh i-fi-124, 300-302).
We agree with the Examiner that the combination of Samman and
Boneh teaches or suggests the disputed limitation. We find Samman teaches
or suggests, inter alia, receiving encrypted data at a gateway, decrypting the
data, scanning the data for viruses, and sending the data to its destination, if
clean. See Samman i-fi-1 22-23. We also find that Samman does not teach
away from using protocols such as IBE - Appellants do not direct us to
where Samman criticizes, discredits, or otherwise discourages using the IBE
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protocol with trusted entities (e.g., a trusted gateway). See Jn re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004); Samman i-fi-122, 23 (teaching data "may be
encrypted" using certain protocols); Boneh i1 46 (teaching or suggesting a
trusted private key generator, as well as the sender and receiver, are
"normally" - not always - the only ones requiring knowledge of the
private key). Furthermore, we find Boneh teaches or suggests using the IBE
protocol for encryption purposes, as well as having a recipient delegate their
private key to a trusted system (e.g., laptop, gateway). See Boneh i-fi-1300,
301 ("Another application for embodiments of IBE systems is delegation of
decryption capabilities."), 302 (teaching a user system providing private
decryption keys to a target system which can use the keys to decrypt
incoming messages).
We are unpersuaded by Appellants' arguments limiting Boneh' s
teachings to a date limited embodiment, and asserting such is irrelevant. See
In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) ("A reference may be
read for all that it teaches, including uses beyond its primary purpose.").
Furthermore, Appellants' arguments amount to a piecemeal attack on
Samman and Boneh, despite the Examiner relying on the combined
teachings of these references. See In re Merck & Co., 800 F .2d 1091, 1097
(Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.").
Our above reasoning and findings also apply to arguments that
Appellants make with respect to claim 6.
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(2) Combining Samman and Boneh
Appellants argue that the Examiner errs in combining Samman and
Boneh. App. Br. 13-14; Reply Br. 4. For example, Appellants posit:
[E]ncryption systems such as the system ofBoneh and the system
of Samman would not share private keys such as IBE private
keys, as the IBE private keys are generated so that an addressed
recipient can securely access encrypted data that is addressed to
that recipient without allowing other entities (such as an
intermediate gateway such as Samman's gateway 2) to access the
data.
App. Br. 13. Appellants also argue allowing other entities access to the IBE
data would render it "insecure for the recipient, and ... would thereby be
rendered inoperable for its intended purpose of conveying data securely to
an addressed recipient." Id. at 14. Appellants also argue one of ordinary
skill in the art would not have been motivated to combine the teachings of
Samman and Boneh "absent an explicit teaching in the prior art to do so,"
\vhich is not present in either reference. Id.; Reply Br. 4. 1A .. dditionally,
Appellants argue that because there is no motivation in the cited references,
the Examiner improperly relies on hindsight in making the combination. Id.
The Examiner finds one of ordinary skill in the art would have been
motivated to provide for a recipient to allow access of its private key to its
gateway - the recipient relies on the gateway for security and virus
protection, and would allow access to its key if the encryption protocol
necessitated it. Ans. 5 (citing Samman i-fi-1 22-23 (finding the recipient's
gateway handles the virus protection for the recipient, thus showing the
recipient relies on its gateway for security and is a trusted system)).
Furthermore, the Examiner finds Boneh, in fact, does teach delegation of
decryption private keys. Id. (citing Boneh i-fi-124, 300-302). The Examiner,
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thus, concludes "it would be obvious for one of ordinary skill in the art using
the system of Boneh to add the gateway virus protection of Samman, for the
stated motivation of improved virus protection, and this combination too
would necessitate sharing the IBE private key with the gateway" - the
Examiner disagrees there is impermissible hindsight. Ans. 5---6.
We find the Examiner did not err in combining Samman and Boneh,
and we adopt the Examiner's findings as our own. We find the Examiner
provides "articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness" - using Boneh's IBE protocol with the
added gateway virus protection of Samman to improve virus protection. See
In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). Furthermore, we are
unpersuaded by Appellants' arguments regarding the alleged lack of an
explicit motivation in the references. "The obviousness analysis cannot be
confined by a formalistic conception of the words teaching, suggestion, and
motivation, or by overemphasis on the importance of published articles and
the explicit content of issued patents." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007). We also are not persuaded that combining Samman
and Boneh renders the encryption system unsatisfactory for its intended
purpose. See Boneh i-fi-124, 300-302 (teaching delegation of private keys).
Our above reasoning and findings also apply to arguments that
Appellants make with respect to claim 6.
(3) Determine whether to archive the message
Appellants argue that the combination of Samman and Boneh fails to
teach or suggest "processing the unencrypted version of the message at the
gateway to determine whether to archive the message," as recited in claim 4.
App. Br. 15. Specifically, Appellants argue Samman instead teaches that
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when a virus is detected, a message can be sent to the server advising the
server it is sending out infected messages. Id. (citing Samman i-f 34).
Appellants argue "[a] message that notifies a server that it is sending out
suspect data is not the same as sending the message that was suspect itself
back to [the] server." Id. Appellants also argue that caching a copy of the
unencrypted message is not the same as the disputed limitation. Reply Br. 5.
The Examiner finds "all data received is a copy of the message, and it
must be stored locally at the gateway." Ans. 6. The Examiner also finds
"Samman does not disclose deleting or destroying the data once detecting a
virus, but rather discloses sending a message to the user or server." Id. The
Examiner then finds because the message is not destroyed, it is at least
inherent that it is held in memory. Id. Alternatively, the Examiner finds it
would have been obvious to one of ordinary skill in the art to store the
infected message. Id.
We agree with the Examiner that the combination, and Samman in
particular, teaches or suggests the disputed limitation. Samman teaches or
suggests that if it is determined that a virus is present in unencrypted
received data-the data is unencrypted to scan for viruses- "one of a
number of actions can be taken." See Samman i-fi-122, 34. Examples of these
actions include (i) notifying the intended recipient, (ii) attempting to
"'disinfect' the data," (which at least suggests storing the data in memory),
and (iii) notifying the server that sent the data. Id. i-f 34. We find that one of
ordinary skill in the art, in light of Samman's teachings, would have found it
obvious to store the data upon a virus determination. See KSR, 550 U.S. at
418 ("[T]he [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
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can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.").
(4) !fit is determined that the message is to be archived
Appellants argue that the combination fails to teach or suggest "if it is
determined that the message is to be archived, using a database controller to
save a copy of the message in a database of the organization," as recited in
claim 4. App. Br. 15-16; Reply Br. 6.
However, this disputed limitation is a conditional step (i.e., occurring
"if it is determined that the message is to be archived"). App. Br. 22. As we
address below, the conditional step does not need to be performed under the
broadest reasonable interpretation of the claim.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. A cad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The broadest reasonable
interpretation of claim 4 encompasses instances in which the prerequisite
condition for claim 4' s conditional step is not met (i.e., it is determined that
the message is not to be archived). Thus, the broadest reasonable
interpretation encompasses methods where only the non-conditional steps
recited in claim 4 are performed.
Such a finding follows from the direct inverse relationship between
invalidity and infringement. "[I]t is axiomatic that that which would literally
infringe if later anticipates if earlier." Bristol-Myers Squibb Co. v. Ben
Venue Labs, Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001). As to infringement,
conditional method steps need not be performed for infringement to be
found. See, e.g., Applera Corp. v. Illumina, Inc., 375 F. App'x 12, 21 (Fed.
Cir. 2010) (unpublished) (affirming an interpretation of a method claim as
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including a step that need not be practiced if the condition for practicing the
step is not met); Cybersettle, Inc. v. Nat'! Arbitration Forum, Inc., 243
F. App'x 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of course true that
method steps may be contingent. If the condition for performing a
contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed."). Likewise,
as to invalidity, conditional method steps generally need not be shown in
establishing invalidity. Accordingly, Appellants' argument is inapposite
because it is directed to a conditional step that need not be shown for
establishing invalidity.
(5) Claim 6
Appellants argue the Final "Action has not, at any point, presented
arguments or evidence that the cited references show or suggest the features
of claim 6." App. Br. 17. Appellants further argue:
Samman makes no mention of IBE encryption, let alone any
organization having an IBE private key generator, obtaining an
IBE private key with a gateway over a network of an
organization and providing the scanned message from the
gateway to the recipient over the same network of the
organization from which the IBE private key was obtained, as
recited by claim 6.
Boneh makes no mention of using a gateway to obtain an
IBE private key from an IBE private key generator and to send a
scanned message to a recipient over that same network of an
organization, as claimed. Boneh therefore fails to make up for
the above-noted additional deficiencies of Samman.
App. Br. 18. Appellants then contend claim 6's limitations "are not shown
or suggested by the cited references." App. Br. 18.
The Examiner finds that the combination of Samman and Boneh
teaches or suggests the limitations of claim 6. See Ans. 6-7; Final Act. 2.
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The Examiner relies on the Examiner's findings for claim 1 and further finds
the devices (e.g., gateway, recipient, private key generator ("PKG")) are
connected by a network. Ans. 6-7 (citing Boneh Fig. 1 (teaching a
networked PKG), i-fi-1300-302, 24); see also Final Act. 2.
We are not apprised of error in the Examiner's findings. We agree
with the Examiner's findings, as well as for claim 1, and adopt them as our
own. We further note Appellants largely, if not entirely, just recite the claim
term and assert that a cited reference or the combination does not disclose it.
See 37 C.F.R. § 41.37(c)(l)(iv) ("A statement which merely points out what
a claim recites will not be considered an argument for separate patentability
of the claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that "the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art"). Accordingly, we sustain the Examiner's rejection of
claim 6.
CONCLUSION
Based on our findings above, we sustain the Examiner's rejection of
claims 1, 4, and 6. We also sustain the Examiner's rejection of claim 5
based on our above reasoning, including with respect to claim 1. We also
sustain the Examiner's rejection of claims 2 and 3 for which Appellants did
not provide separate arguments for patentability.
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DECISION
We affirm the Examiner's rejections of claims 1---6.
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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