Ex Parte Tischer

Board of Patent Appeals and Interferences

May 14, 2012

10735931 (B.P.A.I. May. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/735,931 12/15/2003 Steven Tischer 030515 (BLL-0144) 3718
36192 7590 05/14/2012
AT&T Legal Department - CC
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
HAILE, AWET A
ART UNIT PAPER NUMBER
2474
MAIL DATE DELIVERY MODE
05/14/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEVEN TISCHER
____________
Appeal 2010-000820
Application 10/735,931
Technology Center 2400
____________

Before DEBRA K. STEPHENS, JASON V. MORGAN, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/735,931

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-4, 6-15, and 17-21. Claims 5 and 16 have been
cancelled. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant invented a method, system, and computer-readable storage
medium for transmitting data over a computer network to a predetermined
recipient. Abstract; Spec. ¶ [0003].
Illustrative Claim
1. A method for transmitting data over a computer
network to a predetermined recipient, the method comprising:
modifying at least one data byte in a first data message
based on a first message modification key value to obtain a
modified first data message, the first message modification key
value being determined based on at least one variable
parameter;
modifying at least one data byte in a second data message
based on a second modification key value to obtain a modified
second data message, the second message modification key
value being determined based on at least one variable
parameter;
transmitting the first and second modified data messages
to a first device;
determining the first data message in the first device for
the predetermined recipient based on the modified first data
message and the first message modification key value; and
determining the second data message in the first device
for the predetermined recipient based on the modified second
data message and the second message modification key value,
wherein the modifying at least one byte of the first data
message includes adding the first message modification key
byte value to multiple data bytes of the first data message;
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wherein the first message modification key value being
determined based on the at least one variable parameter and a
unique identifier identifying the predetermined recipient, the
unique identifier being a biometric identifier obtained from the
recipient.
Prior Art Relied Upon
Labaton US 5,742,684 Apr. 21, 1998
Kamperman US 2002/0004903 A1 Jan. 10, 2002
Odagawa US 2003/0191949 A1 Oct. 9, 2003

Rejections on Appeal
Claims 1-4, 6, 7, 11-15, 17, 18, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Labaton and
Odagawa. Ans. 4-15.
Claims 8-10, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Labaton, Odagawa, and
Kamperman. Ans. 15-18.
Examiner’s Findings and Conclusions
The Examiner finds that Labaton’s disclosure of encrypting card
information using the current Greenwich Mean Time (“GMT”) teaches or
suggests “modifying at least one data byte in a first data message based on a
first message modification key value to obtain a modified first data
message,” as claimed. Ans. 4. Further, the Examiner finds that Odagawa’s
disclosure of using variable information to generate an encryption key, in
conjunction with using biometric information of a user to encrypt and
decode information, teaches or suggests “wherein the first message
modification key value being determined based on the at least one variable
parameter and a unique identifier identifying the predetermined recipient,
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the unique identifier being a biometric identifier obtained from the recipient”
as claimed. Ans. 5-6, 20-21, and 23-24.
Appellant’s Contentions
Appellant contends that Labaton’s password (“PIN”), which is used
by a sender of a message to encrypt a transmission, fails to teach or suggest
a unique identifier identifying the recipient used in modifying a message,
as required by independent claim 1. Br. 5 (emphasis in original). In
particular, Appellant argues that Labaton’s PIN is not related to a
predetermined recipient, but rather is only related to the sender of a message.
Id. Further, Appellant alleges that Odagawa’s biometric information is not
used to determine a message modification key, as claimed. Br. 5-6. Instead,
Appellant contends that Odagawa discloses modifying the biometric
information using the encryption key. Br. 6. Additionally, Appellant argues
that the Examiner improperly combines Labaton and Odagawa for two
reasons: 1) Odagawa does not teach or suggest using biometric information
to encrypt other information—instead Odagawa discloses encrypting the
biometric information and using it to authenticate a requestor; and 2)
Odagawa’s primary goal is protecting biometric information, hence
Odagawa teaches away from giving the biometric information to a sender of
a message so that the sender can use the biometric information to encode the
message. Br. 6-7.

II. ISSUE
Did the Examiner err in concluding that the combination of Labaton
and Odagawa renders independent claims 1, 11, and 21 unpatentable. In
particular, the issue turns on whether:
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(a) the proffered combination teaches or suggests “modifying at
least one data byte in a first data message based on a first message
modification key value to obtain a modified first data message,” as recited in
independent claim 1, and as similarly recited in independent claims 11 and
21;
(b) the proffered combination teaches or suggests “wherein the first
message modification key value being determined based on the at least one
variable parameter and a unique identifier identifying the predetermined
recipient, the unique identifier being a biometric identifier obtained from the
recipient[,]” as recited in independent claim 1, and as similarly recited in
independent claims 11 and 21; and
(b) Odagawa teaches away from the claimed invention.

III. ANALYSIS
35 U.S.C. § 103(a) Rejection—Combination of Labaton and Odagawa
Claims 1, 11, and 21
We do not find error in the Examiner’s obviousness rejection of
independent claims 1, 11, and 21. Independent claim 1 recites, inter alia:
[1)] modifying at least one data byte in a first data message
based on a first message modification key value to obtain a
modified first data message[;] [and][2)] wherein the first
message modification key value being determined based on the
at least one variable parameter and a unique identifier
identifying the predetermined recipient, the unique identifier
being a biometric identifier obtained from the recipient.
At the outset, we note that Labaton discloses a special tone dialer,
which includes a central processing unit that encrypts data based at least in
part on the GMT. Col. 5, ll. 10-14. Labaton discloses that GMT data is
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expressed in terms of numerical values representing the current year, month,
day, hour, or minute. Col. 3, ll. 59-62. As such, we find that an ordinarily
skilled artisan would have understood that Labaton’s disclosure of
encrypting data based at least in part on the GMT amounts to using a
modification key value to modify data in a message to obtain a modified
message. Thus, we agree with the Examiner that Labaton teaches or
suggests “modifying at least one data byte in a first data message based on a
first message modification key value to obtain a modified first data
message,” as claimed. See Ans. 4 and 22.
Next, we note that Odagawa discloses using variable information
received from a variable information provider to generate an encryption key.
¶ [0126]. Further, Odagawa discloses that the encryption key may be
biometric information associated with a user. ¶¶ [0126] and [0210]. As a
result, we find that an ordinarily skilled artisan would have recognized
generating Odagawa’s encryption key based at least in part on both variable
information and biometric information associated with a user (i.e.,
predetermined recipient). That is, contrary to Appellants’ argument (see Br.
5-6), we find that an ordinarily skilled artisan would have understood that
Odagawa uses both variable information and a unique identifier, such as
biometric information that identifies the predetermined recipient, to
determine the claimed “first message modification key value.” Thus, we
agree with the Examiner that Odagawa teaches or suggests “wherein the first
message modification key value being determined based on the at least one
variable parameter and a unique identifier identifying the predetermined
recipient, the unique identifier being a biometric identifier obtained from the
recipient,” as claimed. See Ans. 6, 20-21, and 23-24.
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Teaching Away
We are not persuaded by Appellant’s argument that Odagawa teaches
away from the claimed invention. See Br. 6-7. What the prior art teaches
and whether it teaches toward or away from the claimed invention … is a
determination of fact.” Para-Ordnance Mfg., Inc. v. SGS Importers Int'l,
Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). “A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Teaching an alternative or
equivalent method, however, does not teach away from the use of a claimed
method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965).
At the outset, we note that independent claims 1, 11, and 21 do not
explicitly require providing a sender with the claimed “unique identifier”—
biometric information—which the sender in turns uses to encrypt the
claimed “first data message” and “second data message.” Therefore,
Appellant’s teaching away argument is not commensurate in scope with the
claim limitations explicitly recited in independent claims 1, 11, and 21.
Further, Appellants have not pointed to an explicit disclosure within
Odagawa that acts to “criticize, discredit, or otherwise discourage” using
biometric information to encrypt a message, as required by independent
claims 1, 11, and 21. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Instead, we find that Odagawa’s method of using an encryption key, which
is based at least in part on biometric information associated with a user (¶
[0210]), to encrypt information is an alternative or equivalent teaching to
using biometric information to encrypt a message, as claimed. Therefore,
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we are not convinced that Odagawa teaches away from the claimed
invention. It follows that the Examiner has not erred in concluding that the
combination of Labaton and Odagawa renders independent claims 1, 11, and
21 unpatentable.
Claims 2-4, 6, 7, 12-15, 17, and 18
Appellant does not provide separate and distinct arguments for
patentability with respect to dependent claims 2-4, 6, 7, 12-15, 17, and 18,
but rather rely upon the arguments set forth for independent claim 1. See Br.
4-7. Consequently, the Examiner has not erred in rejecting dependent claims
2-4, 6, 7, 12-15, 17, and 18 for the same reasons set forth in our discussion
of independent claims 1, 11, and 21.

35 U.S.C. § 103(a) Rejection—Combination of Labaton, Odagawa, and
Kamperman
Claims 8-10, 19, and 20
Appellant contends that Kamperman do not remedy the above-noted
deficiencies of Labaton and Odagawa. Br. 7-8. As discussed supra, we find
no such deficiencies in Labaton and Odagawa for Kamperman to remedy. It
follows that the Examiner has not erred in concluding that the combination
Labaton, Odagawa, and Kamperman renders dependent claims 8-10, 19, and
20 unpatentable.

IV. CONCLUSION
The Examiner has not erred in rejecting claims 1-4, 6-15, and 17-21 as
being unpatentable under 35 U.S.C. § 103(a).

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V. DECISION
We affirm the Examiner’s decision to reject claims 1-4, 6-15, and 17-
21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD