Ex Parte DeYoung et al

Patent Trial and Appeal Board

Jul 30, 2013

11131641 (P.T.A.B. Jul. 30, 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.
11/131,641 05/18/2005 Dennis C. DeYoung 20041160-US-NP 5890
76527 7590 07/31/2013
ALIX, YALE & RISTAS, LLP
750 MAIN STREET
SUITE 1400
HARTFORD, CT 06103-2721
EXAMINER
LIPMAN, JACOB
ART UNIT PAPER NUMBER
2434
MAIL DATE DELIVERY MODE
07/31/2013 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 DENNIS C. DEYOUNG and ROBERT H. SPERRY
_____________

Appeal 2011-001177
Application 11/131,641
Technology Center 2400
______________

Before, DAVID M. KOHUT, JOHN A. EVANS, and
DAVID C. McKONE, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001177
Application 11/131,641

2
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 6, 14, 25, and 26.
1,2
We have jurisdiction under 35
U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to methods for authenticating a hard-copy
document using a physical manifestation of a digital signature or public key.
Spec. 2-5. Claim 6 is representative of the invention and is reproduced
below:
6. A method of authentication and non-repudiation of hard-copy
documents comprising:
affixing a physical manifestation of a digital signature to a
hard-copy document, including:
inputting a digital copy of the hard-copy document
into a secure hash function to produce a message digest,
inputting the message digest, a private key of an
originator of the hard-copy document and additional
information into a digital signature generation algorithm
to generate an electronic digital signature, the additional
information comprising a document title,
inputting the electronic digital signature into a printing
device to produce the physical manifestation of a digital
signature, and
mounting the physical manifestation of a digital
signature to the hard-copy document;
converting the physical manifestation of a digital signature to
an electronic digital signature; and

1
Claims 1-5, 7, 8, and 20-24 were previously cancelled.
2
Appellants indicate on page 3 of the Appeal Brief, that the obviousness
rejections of claims 6, 14, 25, and 26 are the subject of this appeal. Thus the
rejections of claims 9-13, 15-19, and 27-34 are not before us and the
Examiner should cancel the non-appealed claims. See Ex Parte Ghuman, 88
USPQ2d 1478 (BPAI 2008) (precedential).
Appeal 2011-001177
Application 11/131,641

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validating the electronic digital signature with a public key to
authenticate the hard-copy document.

REFERENCES
Merkle US 5,157,726 Oct. 20, 1992

DeMello US 2002/0002540 A1 Jan. 3, 2002

REJECTION AT ISSUE
Claims 6, 9-19, and 25-34 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Merkle and DeMello. Ans. 3-5.

ISSUES
Did the Examiner err in finding that the combination of Merkle and
DeMello teaches or suggests additional information that comprises “a
document title,” “a document version,” and “a URL reference to an original
electronic version of the hard-copy document,” as recited in independent
claims 6, 25, and 26 (respectively)?
Did the Examiner err in finding it obvious to combine Merkle and
DeMello?
Did the Examiner err in finding that the combination of Merkle and
DeMello teaches or suggests the limitations of claim 14?

Appeal 2011-001177
Application 11/131,641

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ANALYSIS
Claims 6, 25, and 26
Appellants argue that the Examiner erred in finding that the
combination of Merkle and DeMello teaches or suggests the “additional
information” as required by independent claims 6, 25, and 26 as indicated
above in the issue statement. App. Br. 5; Reply Br. 3. Appellants contend
that the reason the combination does not teach the disputed limitations is
because DeMello is “not used with hard-copy documents.” Reply Br. 3.
However, the Examiner finds that Merkle teaches the use of a hard-copy
authentication document that includes additional information and DeMello
teaches the use of the claimed additional information in an authentication
process. Ans. 3-4. The obviousness inquiry does not ask “whether the
references could be physically combined but whether the claimed inventions
are rendered obvious by the teachings of the prior art as a whole.” In re
Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (citation omitted); see
also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference”). Rather, in
a case such as this where each of the elements of the claim are known to the
art, the obviousness inquiry requires a finding that the combination of
known elements was obvious to a person with ordinary skill in the art.
Here, each of the elements of the claim is taught by Merkle with the
exception that Merkle does not teach the specifically claimed additional
information. This deficiency in Merkle is supplemented by DeMello which
teaches additional information that includes a document title, version, and
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URL reference to an original document. Ans. 4. Thus, we agree with the
Examiner that it is the combination that teaches the disputed limitation.
Next, Appellants argue that the Examiner has not provided a sufficient
reason to combine the references. App. Br. 9. Instead, Appellants contend
that the Examiner has merely deemed that “publishing a document on the
Internet would increase the ease of use [of] a method of authenticating a
hard copy document.” App. Br. 9. We disagree. The Examiner actually
finds that the combination would increase the authenticity of the document
(Ans. 4), not that which Appellants’ contend. We also agree with the
Examiner that the combination of the references would have been obvious.
In KSR International Co. v. Teleflex Inc. 550 U.S. 398, 415 (2007),
the Supreme Court emphasized “the need for caution in granting a patent
based on the combination of elements found in the prior art,” and discussed
circumstances in which a patent might be determined to be obvious.
Importantly, the Supreme Court reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
Id. at 416. Here, the Examiner finds (Ans. 3-4) and we agree that each
element of claims 6, 25, and 26 is taught by the combination of references.
The Examiner finds that Merkle teaches a hard-copy authentication
document that uses additional information to generate a digital signature.
Ans. 3-4. Additionally, the Examiner finds that DeMello teaches an
authentication system that uses a URL reference to an original document, a
document title, and a document version in order to increase authenticity.
Ans. 4. Therefore, we agree with the Examiner (Ans. 3-4) and we consider
substituting DeMello’s “additional information” with Merkle’s digital
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signature as nothing more than using known devices to perform their known
functions. As such, we agree with the Examiner (Ans. 3-4) and we find that
the combination yields the predictable result of increasing the authenticity of
a digital signature.
Thus, for the reasons mentioned supra, we sustain the Examiner’s
rejections of claims 6, 25, and 26.
Claim 14
Claim 14 recites “storing the digital copy of the hard-copy document
and the electronic digital signature in a portable memory device . . . and
inputting the digital copy of the hard-copy document and the electronic
digital signature into the printing device from the portable memory device.”
The Examiner interprets this claim as requiring a separate scanning and
printing system, but finds that it is well known to use separate machines in
order to perform different processes. Ans. 5. Appellants argue that there is
no basis for this assumption and that the Examiner’s finding assumes that a
printer will be able to read a portable memory device. App. Br. 10. We do
not agree with the Examiner (Ans. 5) that the claim requires a separate
scanning and printing system. However, we are not persuaded by
Appellants arguments (App. Br. 10) that the Examiner has erred in rejecting
claim 14. Appellants have not provided sufficient evidence to show that the
combination of Merkle and DeMello fails to teach or suggest any of the
limitations required by the claim. As such, we sustain the Examiner’s
rejection of claim 14.
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CONCLUSION
The Examiner did not err in finding that the combination of Merkle
and DeMello teaches or suggests additional information that comprises “a
document title,” “a document version,” and “a URL reference to an original
electronic version of the hard-copy document,” as recited in independent
claims 6, 25, and 26 (respectively).
The Examiner did not err in finding it obvious to combine Merkle and
DeMello.
The Examiner did not err in finding that the combination of Merkle
and DeMello teaches or suggests the limitations of claim 14.

DECISION
The Examiner’s decision to reject claims 6, 14, 25, and 26 is affirmed.
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