Ex Parte Watanabe

Board of Patent Appeals and Interferences

Mar 21, 2008

09735760 (B.P.A.I. Mar. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KAZUO WATANABE
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Appeal 2007-3971
Application 09/735,760
Technology Center 2100
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Decided: March 21, 2008
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Before JEAN R. HOMERE, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-4, 7-10, 13, and 14. We have jurisdiction
under 35 U.S.C. § 6(b).

We Reverse.
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THE INVENTION
Appellant’s disclosed invention is directed to a method of managing
software that prevents illegal use of computer programs by only enabling use
of the programs by appropriate users (Spec. 1).
Independent claim 1 is illustrative:
1. A method of managing software use by a software
provider for distribution to a user, comprising the steps of:

storing inside the software predetermined first
information;

providing the software to a software user on an
information storage means prepared corresponding to the
software and to be connected to an apparatus for running the
software, which information storage means is capable of being
accessed by the apparatus in a connected state;

encoding second information by using a first key of a key
pair of an open key encoding format; and

transmitting the encoded second information to said
software user for said software user to decode said transmitted
encoded second information by using a second key of said key
pair of said open key encoding format, and to read said first
information from said information storage means, and to match
said read first information against said decoded second
information,

wherein said software is enabled when the information
match, and

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wherein the encoded second information is transmitted to
the software user for matching the read first information against
the decoded second information each time the software user
uses said software.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejection:
Uchenick US 4,458,315 Jul. 3, 1984
Olsen US 5,758,069 May 26, 1998
Coley US 5,790,664 Aug. 4, 1998

THE REJECTION
Claims 1-4, 7-10, 13, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Olsen in view of Uchenick and Coley.
Claims 5, 6, 11, and 12 have been cancelled (App. Br. 14-15).

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007). Appellant has the burden on appeal to the
Board to demonstrate error in the Examiner’s position. See In re Kahn, 441
F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant
can overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d
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1350, 1355 (Fed. Cir. 1998)). Therefore, we look to Appellant’s Briefs to
show error in the Examiner’s proffered prima facie case. “After evidence or
argument is submitted by the applicant in response, patentability is
determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).

Independent Claims 1, 7, 13, and 14
We consider the Examiner’s rejection of independent claims 1, 7, 13,
and 14 as being unpatentable over Olsen, Uchenick, and Coley.
Although Appellant has argued additional limitations in the Brief, we
conclude that we need only reach the single issue set forth below to decide
this appeal.

ISSUE
We decide the question of whether the cited combination of Olsen,
Uchenick, and Coley teaches and/or suggests the language of each
independent claim that requires “match[ing] said read first information
against said decoded second information” where the “second information” is
encoded using a first key and decoded using a second key (see independent
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claim 1 and the equivalent language recited within independent claims 7, 13,
and 14).1

ANALYSIS
For convenience, the reasoning of the Examiner with respect to the
aforementioned limitations is reproduced below:
Appellant argues Olsen fails to disclose matching a first
information to a second information, which is encrypted using a
first key and decrypted with a second key.

With respect to this argument Olsen teaches the use of a
RSA pubic key digital signature (see column 10 lines 24-26),
when using a digital signature the information is encrypted and
included with said information when it is sent. On the
receiving end the digital signature is decrypted and compared
with the sent information for, among other things, verifying
non-repudiation. Therefore, Olsen teaches matching a first
information to a second information, which is encrypted using a
first key and decrypted with a second key because the public
key digital signature algorithm uses two different keys for
encryption and decryption.

(Ans. 7).

We reproduce the pertinent portion of Olsen below, with lines
24-26 (relied on by the Examiner) emphasized in italics:

1 We note that independent claims 13 and 14 adopt an alternative
nomenclature by referring to the information that is encoded and decoded as
“third information.”
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In addition, the required entries suitably include security
information, such as encrypted authentication information. An
application may be licensed with no security attributes at all.
Alternatively, security attributes may be stored in data field
308, and different attributes may be provided to generate
different levels of security. For example, the vendor may use
the common certificate security format, which utilizes certain
"secrets" incorporated into the license acquisition API to
prevent unauthorized modification of the license certificate. The
license acquisition API's secretes comprise a set of encrypted
information, such as the license information plus an activation
key, which are provided by a client to gain access to an
application. As added protection, a standard RSA public/private
key digital signature may be offered for higher end security. In
addition, an attribute may be added which requires the
presence of a particular hardware security device, often
referred to as a "dongle", to activate the application.
Information relating to such security attributes may be included
in data field 308.

(Olsen, col. 10, ll. 12-30).

We begin our analysis by noting that the stated purpose of using
“license information plus an activation key” by Olsen’s client license
acquisition API is to “prevent unauthorized modification of the license
certificate” (col. 10, ll. 20-24). In particular, we note that Olsen expressly
teaches that the license certificates are stored on the server (see Olsen, col. 3,
ll. 54-59, i.e., “license certificate database 112”; see also “LIC CERT DB
112” as shown in Fig. 1).

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We further note that Olsen does not provide any details explaining
exactly how a “standard RSA public/private key digital signature” would be
implemented to provide “higher end security.” (col. 10, ll. 25-26). After
reviewing the Olsen reference, we find it unclear whether the public key
would be held by the server or the client.
One possibility (if the server holds the public key) is that the RSA
standard public/private key digital signature could be used by the server to
verify both the authenticity of the client and also the content integrity of the
client’s license information and/or license key. By preventing unauthorized
access to the server’s license certificates, it follows that unauthorized
modification of the server’s license certificates would be prevented.
An alternate possibility, (if the client holds the public key), is that the
RSA standard public/private key digital signature could be used to verify the
both the authenticity of Olsen’s server and also the content integrity of the
license certificates stored within the server’s license certificate database 112
(Fig. 1). While this would ensure that Olsen’s client has accessed an
authentic license certificate on the server, it is unclear how this would
accomplish Olsen’s stated purpose of preventing unauthorized modification
of the license certificate located on the server (col. 10, ll. 20-21).
In accordance with the RSA standard, both of the above possibilities
would involve using a public key to decrypt an encrypted digital signature
that was encrypted using a private key. The decrypted digital signature is
then compared (i.e., “matched”) against a calculated message authentication
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code derived from the content of the transmitted message. If there is a
match, then the receiver of the message has assurance that the message was
unaltered during transmission.
The Examiner states that “[o]n the receiving end the digital signature
is decrypted and compared [i.e., matched] with the sent information for,
among other things, verifying non-repudiation.” (see Ans. 7). Thus, the
Examiner appears to be corresponding Olsen’s “sent information” (i.e., the
client’s “license information plus an activation key,” col. 10, ll. 22-23) with
the claimed “first information” that is matched against the decoded RSA
digital signature (corresponding to the decoded second information for
claims 1 and 7 and corresponding to the decoded third information for
claims 13 and 14).
While the Examiner has relied upon the secondary Uchenick reference
to teach and/or suggest storing the claimed “first information” inside the
software, we find such application does not comport with matching a
decoded digital signature against a calculated message authentication code
derived from the content of the transmitted message, in accordance with the
RSA standard taught by Olsen at column 10, line 25.2 Clearly the decoded
RSA digital signature cannot be matched directly against the content itself
(i.e., the decoded RSA digital signature cannot be matched directly against
the client’s license information plus an activation key purportedly
corresponding to the claimed “first information”).

2 The content or “first information” we consider here is Olsen’s client
license information plus an activation key, col. 10, ll. 22-23.
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After considering the totality of the record before us, it is our view
that the weight of the evidence supports Appellant’s contention that the
Examiner has not sufficiently shown the correspondence between the claim
elements and the relevant portions of the cited references to establish a
prima facie case of obviousness. For us to affirm the Examiner on this
record would require speculation on our part. In particular, we find the gap
in the combined teachings of the cited references to be uncomfortably wide
and such gap cannot be bridged with theories or speculation. In the
alternative, if the Examiner is relying upon an inherent teaching in the cited
references, our reviewing court has established that “[i]nherency … may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
Therefore, it is our view that the Examiner has not clearly established
how the cited combination of Olsen, Uchenick, and Coley teaches
“match[ing] said read first information against said decoded second
information” where the second information is encrypted using a first key and
decrypted using a second key (see independent claim 1 and the equivalent
language recited within independent claims 7, 13, and 14). See also Note 1
above.
Because we conclude Appellant has met the burden of showing error
in the Examiner’s prima facie case of obviousness by a preponderance of
evidence, we reverse the Examiner’s rejection of independent claims 1, 7,
13, and 14 as being unpatentable over Olsen, Uchenick, and Coley.
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Likewise, we reverse the Examiner’s rejection of dependent claims 2-4 and
8-10, which depend from independent claims 1 and 7, respectively.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude
Appellant has met the burden of showing that the Examiner erred in
rejecting claims 1-4, 7-10, 13, and 14 under 35 U.S.C. § 103(a) for
obviousness.

DECISION
We reverse the Examiner’s decision rejecting claims 1-4, 7-10, 13,
and 14.

REVERSED

pgc

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