Ex Parte Wheeler et al

Patent Trial and Appeal Board

Jun 26, 2013

09860083 (P.T.A.B. Jun. 26, 2013)

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.
09/860,083 05/17/2001 Anne McAfee Wheeler 34250-0997 5100
29052 7590 06/27/2013
SUTHERLAND ASBILL & BRENNAN LLP
999 PEACHTREE STREET, N.E.
Suite 2300
ATLANTA, GA 30309
EXAMINER
ELISCA, PIERRE E
ART UNIT PAPER NUMBER
3718
MAIL DATE DELIVERY MODE
06/27/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANNE MCAFEE WHEELER
and
LYNN HENRY WHEELER
____________________

Appeal 2011-002691
Application 09/860,083
Technology Center 3700
____________________

Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002691
Application 09/860,083

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 32, 34-88, and 90-105. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We reverse.

BACKGROUND
Appellants’ invention is directed to using digital signatures to identify
a sender and the accuracy of an electronic message without using
certification authorities (Spec. 1:16-19).
Claims 32 and 64 are illustrative:
32. In a system for making purchases by customers from
merchants, a method comprising the steps of:
(a) initially, for each of a plurality of customers,
(i) associating a public key with identity
information regarding an account from which
payment may be made,
(ii) wherein said associating is performed by or on
behalf of a financial institution with which the
account is maintained; and, thereafter
(b) for a purchase by a particular one of the customers
from a merchant,
(i) receiving by the merchant both,
(A) encoding information for an electronic
message representing an account
payment instruction, and
(B) identity information;
(ii) forwarding with the electronic message, to the
financial institution for an account authorization,
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said received encoding information and said
received identity information;
(iii) upon receipt by the financial institution of the
electronic message, said forwarded encoding
information, and said forwarded identity
information,
(A) retrieving from said associated public
keys the public key that is associated
with said forwarded identity
information, and
(B) determining a validation result as a
function of the electronic message,
said forwarded encoding information,
and said retrieved public key and
without need of a digital certificate
from a certification authority; and
(iv) upon successful validation, performing an account
authorization.

64. In a system for making a purchase by a customer
from a merchant, wherein an electronic message represents
payment from an account with a financial institution, and
wherein identity information regarding the account has been
associated with a public key by or on behalf of the financial
institution, a method comprising the steps of:
(a) receiving from the customer,
(i) encoding information for the electronic
message, and
(ii) the identity information that has been
associated with the public key;
(b) forwarding, with the electronic message, to a
validation entity for authorization of payment from
the account,
(i) said received encoding information and
(ii) said received identity information,
(iii) but without forwarding to the validation entity
the public key associated with said forwarded
identity information, whether in a digital certificate
or otherwise; and
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(c) receiving from the validation entity an account
authorization following a successful validation by
the validation entity that is a function of the
electronic message, said forwarded encoding
information, and the public key associated with
said forwarded identity information and wherein
the successful validation does not require a digital
certificate to bind the public key to the identity
information.

Appellants appeal the following rejection: claims 32, 34-88, and 90-
105 under 35 U.S.C. § 103(a) as unpatentable over Kramer (US 6,324,525
B1, iss. Nov. 27, 2001), Sirbu (US 5,809,144, iss. Sep. 15, 1998), and
Douglas (US 2004/0250062 A1, pub. Dec. 9, 2004).

FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
1. The Specification does not define “certification authority.”
2. The Specification describes by example that a “certification authority
attests to the validity of the public key and sometimes, depending on the
authority, checks the validity of the private key and the identity
information of the entity that the certificate is issued to.” (Spec., 10:16-
19).
3. Douglas discloses automatic certification generation and distribution.
(Para. [0006]).
4. Douglas discloses a method in which “manager 28 validates the self-
signed certificate 26 and generates a manager-signed certificate 30 for
the agent 24. Thus, the response from the manager 28 comprises a
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sequence of the manager-signed certificate for the agent 30 and a copy
of a self-signed certificate 32 for the manager.” (Para. [0017]).
5. Douglas discloses verification of the agent “via a second
registration/discovery port of the manager system, wherein each of the
first and second registration/discovery ports identifies computer systems
in the computer network such that the agent system and the manager
system achieve authenticated channel communication without reliance
on a certificate authority.” (Claim 1).

ANALYSIS
Independent claims 32, 38, 59, and 60 recite “determining a validation
result as a function of the electronic message, said forwarded encoding
information, and said retrieved public key and without need of a digital
certificate from a certification authority.” Although “certification authority”
is not defined (FF 1), it is described as an entity that “attests to the validity
of the public key” (FF 2). These claims therefore permit the use of a digital
certificate as long as no entity “attests to the validity of the public key.”
Independent claims 64-67 and 90 recite “validation by the validation
entity that is a function of the electronic message, said forwarded encoding
information, and the public key associated with said forwarded identity
information and wherein the successful validation does not require a digital
certificate to bind the public key to the identity information.”
Each of the nine independent claims therefore requires a validation
step using three items: the electronic message, the forwarded encoding
information, and a retrieved or associated public key.
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We are persuaded of error by Appellants’ argument that Douglas does
not disclose either of these limitations. App. Br. 10, 12, 13, 14, 16, 18, and
20. See also Rep. Br. (Apr. 8, 2008) 7-9, and Rep. Br. (Jan. 15, 2008) 7-10.
The Examiner directs us to paragraphs [0006] and [0017] and claims 1 and 8
of Douglas1 as disclosing the claim limitation at issue. Ans. (Apr. 28, 2009)
4-5 and 11-12.
Douglas paragraph [0006] discloses generating certificates, but does
not disclose verification steps. FF 3. Douglas paragraph [0017] discloses
that the “manager 28 validates the self-signed certificate” (FF 4), but does
not describe the method of validation, or what information is used for the
validation. Claim 1, and similar claims, recite identifying an agent system
using “registration/discovery” ports (FF 5), without further detail.
Because the cited portions of Douglas do not disclose a validation step
involving an electronic message, encoding information, and public key, we
find the Examiner has not set forth a prima facie case of obviousness of any
of the independent claims. For this reason, we reverse the rejection under 35
U.S.C. § 103(a) of independent claims 32, 38, 59, 60, 64-67, and 90, as well
as dependent claims 34-37, 39-58, 61-63, 68-88, and 91-105.

1 The Examiner also directs us to Douglas “column 4 line 29-51” at page 8
of the April 28, 2008 Answer, but we are unable to ascertain with any
certainty what this refers to.
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DECISION
We reverse the rejection under 35 U.S.C. § 103(a) of claims 32, 34-
88, and 90-105.

REVERSED

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