Ex Parte Schimmelpfeng et al

Patent Trials and Appeals Board

Jan 11, 2019

14775937 - (D) (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/775,937 09/14/2015
146568 7590
ENTIT SOFTWARE LLC
500 Westover Drive
#12603
Sanford, NC 27330
01/15/2019
FIRST NAMED INVENTOR
Joern Schimmelpfeng
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
90031040 1566
EXAMINER
ANDERSON, MICHAEL D
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
01/15/2019 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOERN SCHIMMELPFENG, TIMO SCHNELLER,
MICHAEL BERND BEITER, and CARSTEN LAENGERER
Appeal2018-004295
Application 14/775,937
Technology Center 2400
Before JUSTIN BUSCH, JENNIFER L. McKEOWN, and
JAMES W. DEJMEK, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-20, which constitute all the claims
pending in this application. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
Appellants' invention generally relates "[s]ending encrypted data to a
service provider includ[ing] exchanging an encryption key between an entity
and a service provider without retaining the encrypting key and while hiding
an identity of said entity from the service provider." Abstract. More
specifically, Appellants' invention relates to exchanging an encryption key
Appeal2018-004295
Application 14/775,937
between an entity and a service provider through a communication broker so
that the service provider is unaware of the entity from which it receives the
encryption key. Spec. ,r 18 ( disclosing "an anonymous key exchange
protocol, such as the Diffie-Hellman key exchange protocol" as one
exemplary method of exchanging keys without disclosing the entity's
identity to the service provider). The communication broker facilitates
exchanging the key and the messages encrypted using that key between the
entity and the service provider, but the broker does not retain a copy of the
encryption key. Spec. ,r 20. In addition to the use of a broker to maintain
anonymity, the entity may anonymize sensitive data. Spec. ,r 22. In one
exemplary mechanism employed to anonymize the entity's sensitive data,
the entity replaces sensitive data (e.g., "hostnames, entity names, [and]
internet protocol (IP) addresses") with randomized universally unique
identifications (UUIDs). Spec. ,r 22. Claims 1, 7, and 13 are independent
claims. Claim 1 is reproduced below:
1. A computer program product for sending encrypted
data to a service provider, comprising:
a non-transitory computer readable storage medium, said
non-transitory computer readable storage medium comprising
computer readable program code embodied therewith, said
computer readable program code compnsmg program
instructions that, when executed, causes a processor to:
exchange an encryption key between an entity and
a service provider without retaining said encryption key
and while hiding an identity of said entity from said
service provider; and
forward encrypted data based on said encryption
key to said service provider from said entity while hiding
said identity of said entity from said service provider.
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Application 14/775,937
REJECTION
Claims 1-20 stand rejected under 35 U.S.C. § 103 as obvious in view
of Wilkins (US 2012/0204032 Al; Aug. 9, 2012) and Gehrmann (US
6,779,111 Bl; Aug. 17, 2004). Final Act. 5-11.
ANALYSIS
The Examiner finds Wilkins teaches or suggests every limitation
recited in independent claim 1 except for instructions causing a processor to
"forward encrypted data based on said encryption key to said service
provider from said entity while hiding said identity of said entity from said
service provider." Final Act. 5---6. Independent claims 7 and 13 recite
similar limitations related to forwarding encrypted data to the service
provider while hiding the entity's identity from the service provider. See
Appeal Br. 14--15. Similarly, the Examiner finds Wilkins teaches or
suggests every limitation recited in claims 7 and 13 except for these
forwarding steps. Final Act. 7-10; Ans. 10. The Examiner finds Gehrmann
teaches the forwarding steps in claims 1, 7, and 13. Final Act. 6, 8, 10;
Ans. 10-11.
Of particular note, the Examiner finds Wilkins teaches or suggests
"exchange an encryption key between an entity and a service provider
without retaining said encryption key and while hiding an identity of said
entity from said service provider," recited in claim 1 and commensurately
recited in claims 7 and 13. Final Act. 5, 7, 9 (citing Wilkins Fig. 5); Ans. 10
(citing Wilkins ,r,r 167, 184).
As an initial matter, we note Appellants misconstrue the Examiner's
rejection as relying on the combined teachings of Wilkins and Gehrmann to
teach "exchange an encryption key between an entity and a service provider
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Application 14/775,937
without retaining said encryption key and while hiding an identity of said
entity from said service provider." Compare App. Br. 5-6, with Final Act. 5
(finding Wilkins alone teaches the entire limitation). Based on this
misunderstanding, Appellants argue that a proposed combination of Wilkins
and Gehrmann is improper because such a combination would render
Wilkins inoperable for its intended purpose. See App. Br. 6-8. More
specifically, Appellants argue a fundamental aspect of Wilkins' Key
Exchange System (KES) is the verification of a user's identity. See App. Br.
7-8. Although we do not agree with Appellants that the Examiner relied on
the combined teachings of Wilkins and Gehrmann in rejecting this
limitation, as discussed infra, Appellants' arguments persuade us that the
Examiner erred in relying on Wilkins for teaching the exchanging a key
limitation.
Specifically, Appellants argue Wilkins teaches a KES that registers
and verifies users, which allows users to exchange encrypted
communications and allows recipients to verify the sender's identity.
Appeal Br. 6 ( citing Wilkins ,r 36, Title, Abstract). Appellants argue the
purpose of Wilkins' KES is to verify a user's identity and store that user's
encryption key so that the KES can provide another user the key upon a
request. Appeal Br. 6-7 (citing Wilkins ,r,r 78, 80-81, 89, 130). Appellants
argue Wilkins verifies a user's identity so that another user can be sure of
the veracity of that person's identity and, therefore, "the user's identity is
not hidden from the key exchange server" in Wilkins. Appeal Br. 7; see
Reply Br. 2 ("Wilkins is directed to providing 'a means of identifying
persons and entities."'). Appellants further argue there would have been no
reason to modify Wilkins to hide the user's identity for the same reasons and
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Application 14/775,937
making such a modification would change Wilkins' principle of operational
and render Wilkins unsatisfactory for its intended purpose. Appeal Br. 7-8.
We agree with Appellants that Wilkins' does not teach or suggest
hiding the entity's identity from the service provider, as recited in claims 1,
7, and 13. As Appellants argue, see Appeal Br. 6-7, Wilkins discloses using
the KES for "registering users, verifying user identity, and classifying users
such that users may send a communications such that communication
recipients can verify the user identity and classification of the
communication sender." Wilkins, Abstract ( emphases added); see Wilkins
,r,r 3 6 ("The market needs ... a means of identifying persons and entities ...
a means of exchanging at least one set of PK.I keys between individuals,
organizations ... a means of presenting a communication recipient with
verifying indicia that gives the recipient strong assurance that the message
was sent by the purported sender."), 98-99 (describing Figure 5 and
explaining exemplary ways a first user may provide to a second user a serial
number, which is linked to the first user's encryption key, such that the
second user may "rely on the accuracy of the information entered into the
KES 10 by [the first user], which presumably has been verified and kept
current by" the first user).
The Examiner finds Wilkins' user and KES teach or suggest
Appellants' claimed entity and service provider, respectively. Final Act. 5
(finding Wilkins discloses an "encryption key exchanged between user and
key exchange server"). We agree with Appellants that Wilkins' KES must
know the identity of the user in order to verify the user. See, e.g., Wilkins
,r,r 36, 98-99, Abstract. Because the Examiner finds Wilkins alone teaches
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Application 14/775,937
or suggests the exchanging step, our finding that Wilkins does not teach or
suggest this step is sufficient to reverse the rejection on this record.
For these reasons, we are persuaded the Examiner erred in rejecting
independent claims 1, 7, and 13, which each recite a step of exchanging keys
between an entity and a service provider while hiding the entity's identity
from the service provider. For the same reasons, we are persuaded the
Examiner erred in rejecting claims 2---6, 8-12, and 14--20, which depend
from and incorporate the limitations of claims 1, 7, and 13, respectively.
DECISION
We reverse the Examiner's decision to reject claims 1-20.
REVERSED
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