Ex Parte Cordery et al

Board of Patent Appeals and Interferences

Jan 6, 2009

09650177 (B.P.A.I. Jan. 6, 2009)

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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT A. CORDERY, DAVID K. LEE, LEON A. PINTSOV,
FREDERICK W. RYAN, JR., and MONROE A. WEIANT, JR.
___________

Appeal 2008-5511
Application 09/650,177
Technology Center 3600
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Decided: January 6, 2009
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Before ANTON W. FETTING, DAVID B. WALKER, and BIBHU R.
MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert A. Cordery, David K. Lee, Leon A. Pintsov, Frederick W. Ryan, Jr.,
and Monroe A. Weiant, Jr. (Appellants) seek review under 35 U.S.C. § 134 of a
final rejection of claims 35 and 37, the only claims pending in the application on
appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).

Appeal 2008-5511
Application 09/650,177

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We REVERSE.
The Appellants invented a secure user certification system for
electronic commerce that provides an accounting system for services
provided (Specification 1:4-7). The principle claim at issue is drawn to selling a
cryptographic certificate service that requires the deduction of funds for operation.
An understanding of the invention can be derived from a reading of exemplary
claim 35, which is reproduced below [bracketed matter and some paragraphing
added].
35. A method for obtaining a cryptographic certificate, comprising:
[1] receiving at a metering device a request for a cryptographic
certificate, the metering device including a register having funds
stored therein;
[2] determining if sufficient funds are present in the register for
obtaining the certificate;
[3] if sufficient funds are present in the register, generating, at the
metering device, a cryptographic key pair including a private key and
a public key;
[4] sending a certificate request to a certificate authority, the
certificate request including the public key of the cryptographic key
pair;
[5] receiving a cryptographic certificate from the certificate authority,
the
[6] cryptographic certificate including the public key of the
cryptographic key pair generated by the metering device;
[7] deducting funds from the register for obtaining the requested
certificate; and
[8] in response to funds being deducted from the register, activating
the private key of the cryptographic key pair.
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Application 09/650,177

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This appeal arises from the Examiner’s Final Rejection, mailed June 9, 2005.
The Appellants filed an Appeal Brief in support of the appeal on November 10,
2005. An Examiner’s Answer to the Appeal Brief was mailed on March 3, 2006.
A Reply Brief was filed on April 11, 2006. Another Examiner’s Answer to the
Appeal Brief was mailed on September 20, 2007. References in this Decision to
the Answer are to the one mailed on September 20, 2007.
This is the second time this application has come before the Board. An earlier
decision by a different panel was mailed on August 13, 2004. The claims have
been since amended.
PRIOR ART
The Examiner relies upon the following prior art:
Fischer US 5,005,200 Apr. 2, 1991
Taylor US 5,530,232 Jun. 25, 1996
REJECTION113
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Claims 35 and 37 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Fischer and Taylor.
ISSUES
The issue pertinent to this appeal is whether the Appellants have sustained their
burden of showing that the Examiner erred in rejecting claims 35 and 37 under 35
U.S.C. § 103(a) as unpatentable over Fischer and Taylor.

1 A rejection under 35 U.S.C. § 112 was withdrawn by the Examiner (Answer 6).
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The pertinent issue turns on whether it was predictable to both generate at a
metering device a cryptographic key pair including a private key and a public key
if sufficient funds are present in the register, and to activate a private key of a
cryptographic key pair in response to funds being deducted from a register.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of “activate.”
02. The only reference to activation in the disclosure is in describing Fig.
5, Reference 520, in which funds are deducted from the postage and
certificate meter for the generation and the requested certificate which
activates the user's private key (Specification 18:5-7). Thus activation
occurs by virtue of generating and providing a requested certificate.
Fischer
03. Fischer is directed to a public key or signature cryptosystem having
improved digital signature certification for indicating the identity,
authority and responsibility levels associated with at least the sender of a
digital message (Fischer 1:10-16).
04. Fischer describes a hypothetical use for its process, in which General
Motors and parties who plan to do business with General Motors or
otherwise participate in the public key cryptosystem may initially choose
to approach a universally recognized trusted authority e.g.,
hypothetically the Bureau of Standards and/or one of the country's
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largest banks. Corporate and other participants in this system present a
set of public keys (which they are authorized to use by virtue of an
action of their corporate board of directors) together with sufficient
substantiating documentation and proof, to the meta-certifier. The meta-
certifier (or each meta-certifier) in return distributes to General Motors
its certification that each of these supplied public keys was created by
proper General Motors authorities for their own use. In effect, the meta-
certifier is certifying that the party using each key is actually associated
with General Motors (Fischer 11:52 - 12:6).
Taylor
05. Taylor is directed to a multi-application data card capable of
substituting for multiple data cards with at least three memory banks or
storage areas for storing and updating data relating to at least one
authorized holder of the card and at least two authorized applications of
the card (Taylor 2:52-58).
Facts Related To Differences Between The Claimed Subject Matter And The
Prior Art
06. None of the applied references describe actions predicated on
ascertaining the presence of sufficient value for a transaction prior to
executing the transaction.
Facts Related To The Level Of Skill In The Art
07. Neither the Examiner nor the Appellants have addressed the level of
ordinary skill in the pertinent arts of systems analysis and programming,
metering systems, and commercial cryptographic systems. We will
therefore consider the cited prior art as representative of the level of
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ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill
in the art does not give rise to reversible error ‘where the prior art itself
reflects an appropriate level and a need for testimony is not shown’”)
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d
158, 163 (Fed. Cir. 1985).
Facts Related To Secondary Considerations
08. The disclosure describes the advantage of keeping a private key secret
as that of being able to enforce charges for any use of that private key
(Specification 17:11-14).
PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Limitations appearing in the Specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003) (claims must be interpreted “in view of the specification” without
importing limitations from the Specification into the claims unnecessarily).
Although a patent applicant is entitled to be his or her own lexicographer of
patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
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ordinary skill in the art with clear and precise notice of the meaning that is to be
construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although
an inventor is free to define the specific terms used to describe the invention, this
must be done with reasonable clarity, deliberateness, and precision; where an
inventor chooses to give terms uncommon meanings, the inventor must set out any
uncommon definition in some manner within the patent disclosure so as to give
one of ordinary skill in the art notice of the change).
Obviousness
A claimed invention is unpatentable if the differences between it and the
prior art are “such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art.” 35
U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1729-30
(2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR, 127 S.Ct. at 1734. “The combination of familiar
elements according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. at 1739.
“When a work is available in one field of endeavor, design incentives and other
market forces can prompt variations of it, either in the same field or a different one.
If a person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” Id. at 1740.
“For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
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similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 1742.
ANALYSIS
Claims 35 and 37 rejected under 35 U.S.C. § 103(a) as unpatentable over Fischer
and Taylor.
The Examiner found that Fischer described the cryptographic creation and use
of keys as claimed and Taylor described a metering device and stored value card
for commercial transactions. The Examiner relied on the findings in a prior Board
decision to support his finding that one of ordinary skill would have known to
enter Fischer’s use of cryptographic keys in a commercial transaction and therefore
to have used a card such as Taylor’s for such a transaction. The Examiner found
that one of ordinary skill would have known to make sure there were sufficient
funds for a transaction prior to engaging in the transaction (Answer 5-8).
The Appellants’ most pertinent contention is that neither reference describes
generating a key pair after successfully testing for sufficient funds and activating a
private key after deducting funds (App. Br. 6:Bottom ¶ and App. Br. 8:Bottom ¶).
We agree with the Appellants. We must initially construe the limitation of
activating. The disclosure describes activation as occurring by virtue of generating
and providing a requested certificate (FF 01 & 02).
While we agree with the Examiner as to what Fischer and Taylor describe (FF
03 - 05), the Examiner relies on his finding, independent of these references, that
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one of ordinary skill would want to be sure there were sufficient funds before
performing a commercial transaction. But the Examiner made no finding that one
of ordinary skill would bifurcate the transaction, performing a creating part after
determining funds were available and the remainder activating part after payment
was made. If the entire transaction were performed after ascertaining funds and
after payment was made, this would still be in keeping with the Examiner’s
findings and be far simpler. The reason disclosed for bifurcating the transaction is
to allow multiple transactions that rely on the same key, hence to establish the key
once and then activate for each transaction (FF07; App. Br. 5:Bottom ¶). Thus, the
alternatives of bifurcating or performing together are not functionally identical, and
the Appellants disclose the advantage of the claimed alternative.
Although the Examiner provides a rationale for testing for sufficiency of funds,
the Examiner does not provide a finding that one of ordinary skill would perform
part of the transaction prior to deducting funds and part after as claimed.
CONCLUSIONS OF LAW
The Examiner has not shown that it was predictable to both generate at a
metering device a cryptographic key pair including a private key and a public key
if sufficient funds are present in the register, and activate a private key of a
cryptographic key pair in response to funds being deducted from a register.
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 35 and 37 under 35 U.S.C. § 103(a) as unpatentable over the
prior art.
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DECISION
To summarize, our decision is as follows:
• The rejection of claims 35 and 37 under 35 U.S.C. § 103(a) as unpatentable
over Fischer and Taylor is not sustained.

REVERSED 7
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LV:

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