Ex Parte Butler et al

Board of Patent Appeals and Interferences

Sep 22, 2010

10106461 (B.P.A.I. Sep. 22, 2010)

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.
10/106,461 03/26/2002 Nicholas David Butler GB920010012US1 (195) 9548
46320 7590 09/22/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
BADII, BEHRANG
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
09/22/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NICHOLAS DAVID BUTLER, CHRISTOPHER RAYMOND
GIBSON, and CHRISTOPHER EDWARD SHARP
____________

Appeal 2009-010015
Application 10/106,461
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-010015
Application 10/106,461

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-27. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to systems and methods for
communication of assured reputation information within an electronic
marketplace such as the Internet. In particular, it is directed to a protocol for
accessing reputation information held by a trusted reputation authority
(Spec. 1:5-10). Claim 1, reproduced below, is further illustrative of the
claimed subject matter.
1. A method of processing electronic assurances
involving a requestor, a provider and an authority
interconnected via a network, wherein the requester, the
provider, and the authority are separate entities from one
another, the method comprising:
the provider registering with the authority, a standard for
supplying a particular good or service;
the requestor acquiring, from the authority, a public key
having a corresponding private key, said private key being
retained by the authority;
the requestor sending, to the provider, a request for
assurance of a standard of a particular good or service;
comparing the registered standard and the requested
standard for the particular good or service, and upon a valid
comparison, sending an assurance document signed, with the
private key, back to the requestor; and
the requestor verifying using the public key that the
assurance document was validly signed, wherein the requestor
can be confident that the standard in the signed assurance
document has been provided by the authority.
Appeal 2009-010015
Application 10/106,461

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Claims 1-9 stand rejected under 35 U.S.C. § 101 for failing to recite
patentable subject matter; claims 1-27 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Walker (US Pat. 6,477,513 B1, iss. Nov. 5,
2002) in view of Dulin (US Pub. 2002/0029200 A1, pub. Mar. 7, 2002).
We AFFIRM-IN-PART.
We also use our authority under 37 C.F.R. § 41.50(b) (2010) to enter a
new rationale for rejection under 35 U.S.C. § 103(a).

ISSUES
Did the Examiner err in asserting that claims 1-9 do not recite
patentable subject matter under 35 U.S.C. § 101?
Did the Examiner err in asserting that a combination of Walker and
Dulin renders obvious the subject matter of claims 1-27?

FINDINGS OF FACT
Walker
Walker discloses that an Independent Arbiter of Contract Fulfillment
is the party empowered to declare that the delivery terms of the contract
have been fulfilled. This party is almost always independent of all of the
other parties and is trusted by all parties. There may also be more than one
of these parties in any given transaction. For example, for imported meat,
the product must clear customs and be approved by the United States
Department of Agriculture (USDA) as meeting its standards of quality. In
some cases, where there is no significant quality component to the contract
fulfillment, such as the purchase of 1,000 tons of gravel, a simple bill of
lading to a seller's ship can suffice as proof of delivery (col. 3, ll. 9-19).
Appeal 2009-010015
Application 10/106,461

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Figure 1 disclosing a contract negotiation and signing is illustrated
below.

As set forth above, Figure 1 is a document flow diagram illustrating
one possible scenario using a method and apparatus consistent with the
present invention. The figure depicts a typical transaction in which buyer
102 and seller 104 negotiate and sign a contract. While negotiating terms of
the contract, buyer 102 and seller 104 exchange unsigned contracts 108 and
110. Once the buyer and seller agree on the contract terms, buyer 102
digitally signs and transmits contract 114 to trusted agent 118 who forwards
the buyer-signed contract to seller 104. Seller 104 accepts and digitally
signs the contract, creating buyer and seller-signed contract 106. The seller
returns buyer and seller-signed contract 106 to buyer 102 through an agreed
upon trusted agent 118, thus closing the agreement. It will be understood
that the establishment of the contract as described need not necessarily be
Appeal 2009-010015
Application 10/106,461

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electronic. A conventionally signed paper document may be used to
establish the signed contract. Further, buyer 102 and seller 104 may
negotiate the contract directly, providing only the final signed copy to
trusted agent (col. 5, ll. 36-55).
When appropriate, the parties to the transaction designate a
verification authority who serves as an independent auditing authority to
assure the trusted agent monitoring the transaction that the parties have met
the conditions of the agreement, for example, the delivery of goods to a
verification authority (step 1702). The verification authority then signs its
verification authority permission certificate (step 1703). According to the
terms of the ATAC, the trusted agent distributes verification authority
permission certificates to designated verification authorities who store these
permission certificates in permission certificate database 1130 of verification
authority controller 1106. Using, preferably, verification authority controller
1106, a verification authority returns the verification authority permission
certificate after verifying that the seller has performed the conditions of the
contract (step 1704) (col. 12, ll. 2-17).

ANALYSIS
Obviousness
We are not persuaded that the Examiner erred in asserting that a
combination of Walker and Dulin renders obvious the subject matter of
claims 1-27 (App. Br. 3-11). Specifically, buyer 102, seller 104, and trusted
agent 118/verification authority of Walker respectively correspond to the
requestor, provider, and authority recited in independent claims 1, 10, and
19. Furthermore, contracts 106, 114 correspond to the recited standard.
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Using that as a basis, Walker discloses that buyer 102 (requestor) and
seller 104 (provider) agree to contract 106/114 (standard). Contract 106/114
is provided to trusted agent 118/verification authority (authority) (Fig. 1; col.
5, ll. 42-49). Seller 104 sends goods specified in contract 106/114 to trusted
agent 118/verification authority (col. 12, ll. 2-7). Inherent in this delivery of
goods to trusted agent 118/verification authority is that buyer 102 requests
that seller 104 and trusted agent 118/verification authority verify that the
goods meet the terms of contract 106/114. Trusted agent 118/verification
authority verifies that the terms of contract 106/114 have been met and sends
a verification back to buyer 102 (col. 12, ll. 2-17). Thus, aside from the
encryption provisions, Walker discloses the subject matter of independent
claims 1, 10, and 19.
Because our rationale for rejecting independent claims 1, 10, and 19
differs from that set forth by the Examiner, we use our authority under 37
C.F.R. § 41.50(b) to designate it as a new rejection under 35 U.S.C. §
103(a).
Appellants assert that Walker does not disclose performing certain
steps of independent claim 1 with public/private key encryption (App. Br.
9). However, the Examiner has combined the steps of Walker with the
encryption of Dulin to render obvious the aforementioned steps of
independent claims 1, 10, and 19. See In re Keller, 642 F.2d 413, 426
(CCPA 1981) (one cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references).
Appellants assert that there is no rationale to combine Dulin with
Walker, because there is no transaction coordinator explicitly disclosed in
Walker to which the benefits of Dulin would accrue (App. Br. 10).
Appeal 2009-010015
Application 10/106,461

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However, trusted agent 118 of Walker is a transaction coordinator under a
broadest reasonable construction. See In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004).
Appellants assert that Dulin does not disclose that the requestor
acquires the public key (App. Br. 10). However, Walker is cited for
disclosing the requestor, and Dulin is cited for disclosing that public/private
key encryption can be used to secure communications between any two
parties, i.e., buyer 102, seller 104, and trusted agent 118/verification
authority of Walker. See Keller, 642 F.2d at 426.
Appellants do not set forth additional substantive arguments for
dependent claims 2-8, 11-18, and 20-27.

101 Rejection
We are persuaded that the Examiner erred in asserting that claims 1-9
do not recite patentable subject matter under 35 U.S.C. § 101 (Reply Br. 2-
6). Independent claim 1 recites public/private key encryption integrated into
multiple steps. Such encryption requires a computer in more than a field-of-
use capacity.

DECISION
The rejection of claims 1-9 under 35 U.S.C. § 101 is REVERSED.
The rejection of claims 1-27 under 35 U.S.C. § 103(a) is AFFIRMED.
This decision contains a new rationale for rejecting claims 1-27 under
35 U.S.C. § 103(a) pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b)
provides "[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review."
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Application 10/106,461

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37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner .…

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record .…
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

hh

CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487