John Owlett et al.

Patent Trials and Appeals Board

Dec 3, 2019

15040044 - (D) (P.T.A.B. Dec. 3, 2019)

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.
15/040,044 02/10/2016 John Owlett GB920020055US3 2327
30449 7590 12/03/2019
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
WOLDEMARIAM, NEGA
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
12/03/2019 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):
30449@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN OWLETT, GEORGE M. THOMPSON, and
KEITH A. WALTON
Appeal 2018-009027
Application 15/040,044
Technology Center 2400
Before JEAN R. HOMERE, JEREMY J. CURCURI, and
JAMES B. ARPIN, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 1.
Appeal 2018-009027
Application 15/040,044
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CLAIMED SUBJECT MATTER
The claims are directed to “generating and/or using electronic
signatures and/or for reporting changes of status of messages, documents
and other resources.” Spec. 1:6–8. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method, said method comprising:
a computer iteratively processing a unique condition
digest of a plurality of condition digests in each iteration of a
loop for a sufficient number of iterations to process all condition
digests of the plurality of condition digests, said processing in
each iteration comprising concatenating a reference digest with
the unique condition digest of the iteration to generate a
concatenand and hashing the concatenand to generate a hashed
concatenand that serves as the reference digest for the next
iteration if the next iteration is performed, each unique condition
digest being a different condition digest in each iteration of the
loop, the regenerated reference digest of the last iteration of the
loop being a last digest.
REFERENCES
The references relied upon by the Examiner are:
Name2 Reference Date
Owlett US 9,306,752 B2 Apr. 5, 2016
Karjoth US 2001/0034839 A1 Oct. 25, 2001
Sudia 5,995,625 Nov. 30, 1999
REJECTIONS
Claims 1–20 are rejected under non-statutory obviousness-type double
patenting as obvious over claims 1–20 of Owlett.

2 All reference citations are to the first named inventor only.
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Claims 1–20 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over the combined teachings of Karjoth and Sudia.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
OPINION
Non-Statutory Obviousness-type Double Patenting Rejection of Claims 1–20
over Owlett
Appellant argues “[s]ince Appellant[] filed a terminal disclaimer on
March 8, 2018 with respect to U.S. Patent No. US 9,306,752, the rejection of
claims 1–20 as allegedly unpatentable on the ground of non[-]statutory
double patenting as allegedly being unpatentable over claims 1–20 of U.S.
Patent No. US 9,306,752 is moot.” Appeal Br. 6. We recognize that a proper
terminal disclaimer filed after the Examiner’s Final Rejection may overcome
the obviousness-type double patenting rejection. Because we do not review
the propriety of terminal disclaimers, we leave it to Examiner to determine
whether the terminal disclaimer is effective to overcome the double
patenting rejection. The Board has the flexibility to reach or not reach
provisional double patenting rejections. See Ex parte Jerg, Appeal 2011-
000044, 2012 WL 1375142 at *3 (BPAI 2012) (informative); Ex parte
Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). Accordingly, we
decline to rule on the double patenting rejection at this time.

Obviousness Rejection of Claim 1–20 over Karjoth and Sudia
The Examiner finds Karjoth and Sudia teach all of the limitations of
claim 1. Final Act. 6–8. In particular, the Examiner finds Karjoth teaches
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a computer iteratively processing a unique condition digest of a
plurality of condition digests in each iteration of a loop for a
sufficient number of iterations to process all condition digests of
the plurality of condition digests, said processing in each
iteration comprising concatenating a reference digest with the
unique condition digest of the iteration to generate a concatenand
and hashing the concatenand to generate a hashed concatenand
that serves as the reference digest for the next iteration if the next
iteration is performed,
as recited in claim 1. Final Act. 7 (citing Karjoth ¶¶ 25, 86, 87). In
particular, the Examiner finds Sudia teaches “each unique condition digest
being a different condition digest in each iteration of the loop, the
regenerated reference digest of the last iteration of the loop being a last
digest,” as recited in claim 1. Final Act. 7 (citing Sudia, Fig. 1, col. 7, ll. 30–
35). The Examiner reasons
it would have been obvious to one with ordinary skill in the art
at the time the invention was filed to modify the method for
secure transmission of data and applications disclosed by Karjoth
to include electronic cryptographic packing, as thought by Sudia.
In order digest being a different condition in each iteration of the
loop. One having ordinary skill in the art would have been
motivated to digest different condition in each iteration of the
loop in order to enhance usability and security.
Final Act. 7–8.
Appellant presents the following principal argument: Karjoth does not
teach “said processing in each iteration comprising concatenating a reference
digest with the unique condition digest of the iteration to generate a
concatenand and hashing the concatenand to generate a hashed concatenand
that serves as the reference digest for the next iteration if the next iteration is
performed” (claim 1) because in step 9 (Karjoth ¶ 84) in Karjoth the result of
the concatenation is not hashed, that is, Karjoth’s disclosed new value for Mi
is not a hash of a concatenand. See Appeal Br. 7–11. In response, the
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Examiner finds “on each iteration Mi is hashed before it is
appended/concatenated. (That is shown in listing A [(]step 9)).” Ans. 3. In
reply, Appellant argues, again, that Karjoth does not disclose that the
concatenand is hashed, and that the new value for Mi is not a hash of a
concatenand. See Reply Br. 3–4.
Appellant persuades us that the Examiner erred in finding Karjoth
teaches “said processing in each iteration comprising concatenating a
reference digest with the unique condition digest of the iteration to generate
a concatenand and hashing the concatenand to generate a hashed
concatenand that serves as the reference digest for the next iteration if the
next iteration is performed,” as recited in claim 1, which we determine is the
disputed limitation
Karjoth discloses the following line (step 9) of pseudocode:
Mi ← (Mi || ptr.parent.right.hash);
Karjoth ¶ 84. In attempting to map a correspondence between this line of
pseudocode in Karjoth and claim 1, we determine the old (right-hand side)
value of Mi corresponds to the recited “a reference digest,”
ptr.parent.right.hash corresponds to the recited “the unique condition
digest,” and the new (left-hand side) value of Mi corresponds to the recited
“the reference digest for the next iteration.” The claim language, however,
requires “concatenating a reference digest with the unique condition digest
of the iteration to generate a concatenand and hashing the concatenand to
generate a hashed concatenand that serves as the reference digest for the
next iteration” (emphasis added).
In contrast, step 9 of Karjoth’s pseudocode concatenates the old
(right-hand side) value of Mi with ptr.parent.right.hash to generate a
concatenand that serves as the new (left-hand side) value of Mi. Contrary to
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the Examiner’s finding in the Answer that in Karjoth “on each iteration Mi
is hashed before it is appended/concatenated. (That is shown in listing A
[(]step 9)),” as we explain above, Karjoth does not support this finding. See
Karjoth ¶ 84; see also Karjoth ¶¶ 89–96 (a message is formed by a sequence
of concatenations without hashing the concatenand). In other words, we
agree with Appellant that Karjoth does not teach the required hashing of the
concatenand to generate a hashed concatenand. Appeal Br. 7–11; see Reply
Br. 3–4.
Consequently, we do not sustain the Examiner’s rejection of
independent claim 1. We also do not sustain the Examiner’s rejection of
claims 2–11, which depend from claim 1.
Independent claim 12 recites the same disputed limitation as claim 1.
We, therefore, also do not sustain the Examiner’s rejection of claim 12. We
also do not sustain the Examiner’s rejection of claims 13–16, which depend
from claim 12.
Independent claim 17 recites the same disputed limitation. We,
therefore, also do not sustain the Examiner’s rejection of claim 17. We also
do not sustain the Examiner’s rejection of claims 18–20, which depend from
claim 17.
CONCLUSION
The Examiner’s overall decision to reject claims 1–20 is reversed. In
summary:
Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–20 Non-statutory
Obviousness-type
Double Patenting

1–20 103 Karjoth and Sudia 1–20
Overall Outcome 1–20
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REVERSED