Ex Parte Zaverucha et al

Patent Trial and Appeal Board

Oct 18, 2017

13463965 (P.T.A.B. Oct. 18, 2017)

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.
13/463,965 05/04/2012 Gregory Marc Zaverucha 29907-0045001 7768
94149 7590 10/20/2017
Fish & Richardson P.C. (Blackberry)
P.O.Box 1022
Minneapolis, MN 55440
EXAMINER
WANG, HARRIS C
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
10/20/2017 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):
patdoctc@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY MARC ZAVERUCHA,
DAVID WILLIAM KRAVITZ, and
DANIEL RICHARD L. BROWN
Appeal 2017-002052
Application 13/463,9651
Technology Center 2400
Before ALLEN R. MacDONALD, JEREMY J. CURCURI, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in Interest is Certicom Corp. App. Br. 1.
Appeal 2017-002052
Application 13/463,965
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3—11, 13—16, and 18—21. Claims 2, 12, and 17 have been
cancelled. Amendment filed July 15, 2015. We have jurisdiction under 35
U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A method comprising:
accessing an implicit certificate associated with an entity and
generated by a subordinate certificate authority that is subordinate to a
root certificate authority, wherein the implicit certificate includes a
public key reconstruction value of the entity;
accessing subordinate certificate authority public key
information associated with the subordinate certificate authority;
accessing root certificate authority public key information
associated with the root certificate authority;
generating a first value based on evaluating a hash function,
wherein evaluating the hash function produces a hash function
output from hash function inputs comprising the subordinate
certificate authority public key information, the root certificate
authority public key information, and the public key reconstruction
value of the entity, and
generating a public key value of the entity based on the first
value.
App. Br. 9 (Claims Appendix).
2
Appeal 2017-002052
Application 13/463,965
Rejection on Appeal2
The Examiner rejected claims 1—21 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Campagna et al. (US 2011/0087883
Al, pub. Apr. 14, 2011) and Qu et al. (US 6,792,530 Bl, iss. Sept. 14,
2004).3
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS4
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
1
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
The Final Office Action provides the following rationale
to support the alleged combination of Campagna and Qu:
[I]t would have been obvious to one of
ordinary skill in the art at the time of the invention
to take the inputs of the subordinate certificate
authority public key information, the root certificate
2 Contrary to the Examiner’s rejection (Final Act. 2), claims 2, 12, and 17
have been cancelled and are not before us in this appeal.
3 As to this rejection, our decision as to the rejection of claim 1 is
determinative. Therefore, except for our ultimate decision, the rejection of
claims 3—11, 13—16, and 18—21 is not discussed further herein.
4 The contentions discussed herein are determinative as to the rejection on
appeal. Therefore, although we find Appellants’ remaining contentions
unpersuasive, they are not discussed.
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Appeal 2017-002052
Application 13/463,965
authority public key information of Champagna
(QcaRoot, Qca 1, Figure 1) and modify those inputs
for the hash function inputs in Qu (Col. 9, line 28-
34) and the result would be predictable to one of
ordinary skill in the art. []
Final Office Action, p. [5—6]. However, the Final Office Action’s
assertion amounts to a conclusory statement, rather than the
“articulated reasoning with some rational underpinning” that is
required by law to support any rejection based on obviousness.
M.P.E.P. § 2142 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) and KSR International Co. v. Teleflex Inc., 550 U.S. 398
(2007)). As such, the Final Office Action’s combination of
Campagna and Qu is deficient.
As noted above, in the rejection of claim 1, the Final
Office Action asserts that “the result would be predictable to one
of ordinary skill in the art.” Final Office Action, p. 6. “However,
this conclusory assertion fails to actually show that any result
would be predictable.”
App. Br. 7 (emphasis added).
We agree. We conclude, consistent with Appellants’ argument, there
is insufficient articulated reasoning to support the Examiner’s ultimate
conclusion that it would have been obvious to generate the claimed
a first value based on evaluating a hash function, wherein
evaluating the hash function produces a hash function output
from hash function inputs comprising the subordinate certificate
authority public key information, the root certificate authority
public key information, and the public key reconstruction value
of the entity.
Claim 1. Therefore, we conclude that there is insufficient articulated
reasoning to support the Examiner’s final conclusion that claim 1 would
have been obvious to one of ordinary skill in the art at the time of
Appellants’ invention. Put another way, the Examiner’s conclusion of
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Appeal 2017-002052
Application 13/463,965
obviousness is not supported by sufficient fact findings (that is, a rational
underpinning) on the record.
2
Appellants further contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
[The Examiner] has incorrectly applied hindsight in suggesting
the alleged combination of Campagna and Qu, and failed to
explain how the alleged combination would provide results
“predictable to one of ordinary skill in the art.”
Reply Br. 3 (emphasis added).
We agree. When the Examiner does not provide sufficient articulated
reasoning to support a conclusion of obviousness, then improper hindsight is
inferred. Cf. In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006)(“When the
Board does not explain the motivation, or the suggestion or teaching, that
would have led the skilled artisan at the time of the invention to the claimed
combination as a whole, we infer that the Board used hindsight to conclude
that the invention was obvious.”).
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1, 3—11, 13—16, and 18—21 as being unpatentable under 35 U.S.C.
§ 103(a).
(2) On this record, these claims have not been shown to be
unpatentable.
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Appeal 2017-002052
Application 13/463,965
DECISION
The Examiner’s rejection of claims 1, 3—11, 13—16, and 18—21 is
reversed.
REVERSED
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