Ex Parte Girard

Board of Patent Appeals and Interferences

May 16, 2012

10590214 (B.P.A.I. May. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GIRARD PIERRE
____________________

Appeal 2009-013635
Application 10/590,214
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, BRYAN F. MOORE, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/590,214

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claims
Exemplary claims 1, 8, and 10 under appeal read as follows:
1. A method of producing a digital certificate in which a
certification authority performs the steps of:
grouping together, in a data set, a public key and digital data
comprising data identifying the proprietor of said public key and of an
associated private key;
signing the data set in order to produce a digital certificate; and
storing the signed data set in a computer-readable storage
medium,
wherein the digital data also comprise data identifying at least
one of: means of generating the private key, means of storing the
private key on a medium, and means of signing with the private key.

8. A digital certificate stored in a computer-readable medium,
comprising:
a public key;
data identifying a proprietor of the public key and of an
associated private key; and
data identifying at least one of means of generating the private
key, means of storing the private key on a medium, and means of
signature with said private key.

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10. A method of using a digital certificate according to claim 8,
comprising the following steps:
receiving a message signed with a private key,
reading, in the digital certificate, data identifying means of
generating the private key and/or means of storing the private key on a
medium and/or means of signing with the private key,
deducing therefrom a probability of said private key having
been used by a legitimate proprietor of said private key,
according to said probability, accepting or refusing the
electronic message.

Rejections on Appeal
The Examiner rejected claims 1-20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.1
The Examiner rejected claims 1-20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement. 2
The Examiner rejected claims 1-9 and 13-20 under 35 U.S.C. § 102(e)
as being anticipated by Wildish (US 2003/0115457 A1). 3

1 We reverse the enablement rejection as the Examiner did not perform the
required Wands analysis. (See MPEP 2164.01). Except for our ultimate
decision, this rejection is not discussed further herein.
2 Separate patentability is not argued for claims 1-20. Therefore, we treat
claim 10 as representative for purposes of this rejection. Except for our
ultimate decision, this rejection of claims 1-9 and 11-20 is not discussed
further herein.
3 Separate patentability is not argued for claims 2-7, 9 and 13-20. Therefore,
we treat claims 1 and 8 as representative for purposes of this rejection.
Except for our ultimate decision, this rejection claims 2-7, 9, and 13-20 is
not discussed further herein.
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The Examiner rejected claims 10-12 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Wildish and Miyazaki
(US 2004/0123107 A1). 4
Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 10
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement and quotes a selection of case law without
discussing the particular limitations of claim 10 or any other claim. (App.
Br. page 4, last full paragraph, and the paragraph bridging page 5). 5
2. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(e) because:
Wildish cannot support a rejection of claim 1 under
Section 102(e) because the document fails to teach, at least,
"digital data comprising data identifying at least one of: means
of generating the private key, means of storing the private key
on a medium, and means of signing with the private key."
(App. Br. 6).

4 Separate patentability is not argued for claims 10-12. Therefore, we treat
claim 10 as representative for purposes of this rejection. Except for our
ultimate decision, this rejection of claims 11 and 12 is not discussed further
herein.
5 The remainder this Appellant’s argument is directed to the separate
enablement rejection under 35 U.S.C. § 112, first paragraph. That
rejection is reversed above.
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3. Appellant contends that the Examiner erred in rejecting claim 8
under 35 U.S.C. § 102(e) because:
Claim 8 although of different scope than claim 1, recites
features similar to those in claim 1. Accordingly, claim 8 is
allowable for the same reasons set forth above with regard to
claim 1.
(App. Br. 8).
4. Appellant contends that the Examiner erred in rejecting claim 10
under 35 U.S.C. § 103(a) because “Wildish fails to disclose or suggest the
‘digital data’ identifying ‘means of generating’ and ‘means of signing’ ”
(App. Br. 8) and “Miyazaki does not disclose the ‘digital data’ missing from
Wildish” (App. Br. 9).
Issues on Appeal
Did the Examiner err in rejecting claim 10 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement?
Did the Examiner err in rejecting claim 1 as being anticipated because
Wildish fails to describe the argued “digital data” limitation?
Did the Examiner err in rejecting claim 8 as being anticipated because
Wildish fails to describe the argued “digital data” limitations?
Did the Examiner err in rejecting claim 10 as being obvious because
Wildish and Miyazaki fail to teach or suggest the argued “digital data”
limitation?

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FINDINGS OF FACT – (FF)
Appellant’s Specification
1. The term digital data comprises “data identifying the proprietor of
the said public key and of an associated private key” (Spec. 6).
2. The term digital data “also comprise data identifying means of
generating the private key and/or means of storing the private key
on a medium and/or means of signing with the private key”
(Spec. 6-7).
3. At page 7 of the Specification, Appellant states that:
The data identifying the means of generating the
private key can for example comprise data
identifying:
• a method of generating the private key and/or
• hardware on which the method of generating the
private key is implemented, and/or
• a place on which the method of generating the
private key is implemented.
4. The data identifying hardware comprise for example “a reference
identifying the said hardware” (Spec. 7).
5. At pages 8-9 of the Specification, Appellant states that:
In a preferred embodiment this certificate is of the
X509 type according to a standard Information
Technology - Open Systems Interconnection – The
Directory: Public Key and Attribute Certificate
Frameworks, dated March 2000, of the International
Telecommunication Union. In the X509 certificate, a
set of predefined free fields are used to store the
digital data identifying:
• a method of generating the private key, and/or
• hardware on which the method of generating the
private key is implemented, and/or
• a place on which the method of generating the
private key is implemented, and/or
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• a method of storing the private key on a medium,
and/or
• hardware on which the method of storing the private
key is implemented, and/or
• a place on which the method of storing the private
key is implemented, and/or
• a storage medium on which the private key is stored,
and/or
• a signature method using the private key, and/or
• a storage medium on which the said signature
method is stored.
6. In the Background section at page 3 of the Specification, Appellant
states that: “One of the certificate formats frequently used is the
X509 format, defined according to the standard Information
Technology - Open Systems Interconnection - The Directory:
Public - Key and Attribute Certificate Frameworks, dated March
2002, of the International Telecommunication Union.”

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
numerous arguments that the Examiner has erred.
We disagree with Appellant’s conclusions. We agree with (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief. We concur
with the conclusions reached by the Examiner.

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§ 112 – Contention 1
Contrary to Appellant’s contention, the Examiner’s conclusion is
reasonable. For example, Claim 10 recites the step of “deducing therefrom a
probability of said private key having been used by a legitimate proprietor of
said private key.” The written description we find in Appellant’s
Specification at page 10 states:
To estimate the probability of the private key having
been used by its legitimate proprietor, the information relating
to the secret key present in the digital message is used.
We find no further explanation of how Appellant uses the information to
perform the function of estimating the probability. Disclosure of function
alone is little more than a wish for possession; it does not satisfy the written
description requirement. Cf. Regents of the University of California v. Eli
Lilly, 119 F.3d 1559, 1568 (Fed. Cir. 1997) (written description requirement
not satisfied by merely providing “a result that one might achieve if one
made that invention”); In re Wilder, 736 F.2d 1516, 1521 (Fed. Cir. 1984)
(affirming a rejection for lack of written description because the
specification does “little more than outline goals appellants hope the claimed
invention achieves and the problems the invention will hopefully
ameliorate”).
§ 102 & 103 - Contentions 2, 3, and 4
Contrary to Appellant’s above contentions, Wildish does support the
anticipation and obviousness rejections before this panel.
Appellant does not dispute that Wildish describes using digital data as
an identifier. To the contrary, Appellant states “Wildish discloses a method
for relating a public key to a string of identifiers included in a digital
certificate” (App. Br. 6) and “[t]hese digital certificates include concatenated
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fields (ID1, ID2, ID3) having pseudonymic digital identifiers of certified
entities 14, 16.” (App. Br. 7). We conclude that the argued terms “means of
generating the private key and/or means of storing the private key on a
medium and/or means of signing with the private key” are merely
descriptive of the non-functional descriptive material comprising the digital
data and cannot serve to distinguish over the prior art. There is no structural
or functional difference between Appellant’s digital data and Wildish’s
digital data. Appellant’s Specification fails to point to any structural or
functional difference in the inventions of claims 1, 8, and 10 based on the
type of digital data. To the contrary, Appellant states that in the preferred
embodiment of the invention “a set of predefined free fields are used to store
the digital data” in an X509 certificate. (See FF 5). 6
Appellant is arguing that the subject matter presented in claims 1, 8,
and 10 on appeal relates to features that differ from the prior art solely on the
basis of “non-functional descriptive material,” which is generally not given
patentable weight when determining patentability of an invention over the
prior art. In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983). The USPTO
(“Office”) may not disregard claim limitations comprised of printed matter.
See Gulack, 703 F.2d at 1384; see also Diamond v. Diehr, 450 U.S. 175, 191
(1981). However, the Office need not give patentable weight to descriptive
material absent a new and unobvious functional relationship between the
descriptive material and the substrate. See In re Lowry, 32 F.3d 1579,
1583-84 (Fed Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004).

6 An X509 certificate is a well-known prior art digital certificate data
structure. (See FF 6).
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-9 and 13-20 as
being anticipated under 35 U.S.C. § 102(e).
(2) The Examiner has not erred in rejecting claims 10-12 as being
unpatentable under 35 U.S.C. § 103(a).
(3) The Examiner has not erred in rejecting claims 1-20 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
(4) The Examiner has erred in rejecting claims 1-20 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement.
(5) Claims 1-20 are not patentable.

DECISION
The Examiner’s rejection of claims 1-20 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

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