Ex Parte Duncanson

Patent Trial and Appeal Board

Feb 28, 2014

10479646 (P.T.A.B. Feb. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL T. DUNCANSON, JR.
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Appeal 2011-011510
Application 10/479,6461
Technology Center 2400
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Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is No Magic, Inc. (App. Br. 4.)
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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner
twice rejecting claims 1, 100, and 221-248, all the claims pending in the
application. Claims 2-99 and 101-220 are cancelled. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b). An Oral Hearing was held on
February 20, 2014.
We AFFIRM-IN-PART.
The present invention relates generally to the securement of electronic
information. Spec. 1:14.
Claim 1 is illustrative:
1. A method of securing electronic information, comprising
the steps of:
associating at least one cryptographic key with electronic
information;
securing said at least one cryptographic key by a first
functionality;
separately affirmatively confirming that said step of
securing at least one cryptographic key has been appropriately
accomplished by a second functionality apart and independent from
said first functionality and communicatively coupled to said first
functionality in order to allow initial cryptographic functioning of said
at least one cryptographic key;
enabling a function responsive to said step of confirming
that said step of securing at least one cryptographic key has been
appropriately accomplished; and
securing electronic information.

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Appellant appeals the following rejections:

R1. Claims 1, 100, 221, 223, 224, 226-228, 230-241, and 246-248 are
rejected under 35 U.S.C. § 102(b) as being anticipated by Smid (US
4,386,233, May 31, 1983);
R2. Claim 222 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smid and Sims, III (US Patent Pub. 2002/0016919 A1,
Feb. 7, 2002);
R3. Claims 225 and 229 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smid and Bendel (US 7,206,803 B1, Apr. 17,
2007); and
R4. Claims 242-245 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smid and Kunimatsu (US 6,587,110 B1, July 1, 2003).

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1, 231, 222, 225, and 242 as set forth
below. See 37 C.F.R. 41.37(c)(1)(vii).

ANALYSIS
§102(b) Rejection
Claims 1, 100, 221, 223, 224, 226-228, 230-241, and 246-248
Issue 1: Did the Examiner err in finding that Smid discloses securing
a cryptographic key, affirmatively confirming the step of securing the key,
and enabling a function responsive to the confirming step, as set forth in
claim 1?
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Appellant contends that “the precise element set forth in the claim [of
affirmatively confirming] is quite different from storing a key . . . for later
use” (App. Br. 10). Appellant further contends that “the claim element
involves securing the key against improper access, not identifying the
encrypting entity. . . . [A] notarized key is not the equivalent of the step of
securing the key by a first functionality” (id. at 16). Appellant also contends
that the enabling a function step “is not the same as merely storing in
memory for repeated use” (id. at 12).
The Examiner found, consistent with page 13 of Appellant’s
Specification, “[s]ince Smid teaches saving the key after it has been
generated, Smid clearly teaches affirmatively confirming for securing the
cryptographic key has been accomplished” (Ans. 16). The Examiner further
found that Smid teaches securing a key because “cryptographic keys for a
cryptographic function are notarized by encrypting the keys with the
cryptographic function using a notarizing cryptographic key derived from
identifier designations associated with the encryptor and intended decryptor”
(id.). The Examiner also found that “Smid further teaches ‘enabling a
function responsive to said step of confirming’ in column 10[,] lines 44-50
after the notarized data key is generated they are stored [in] memory for
repeated use by a KNF [(Key Notarization Facility)] user” (id.). We agree
with the Examiner.
Regarding representative claim 1, we refer to, rely on, and adopt the
Examiner’s findings and conclusions set forth in the Answer (see Ans. 15-
16). Our discussions here will be limited to the following points of
emphasis.
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In essence, the Examiner found that the claimed securing a key reads
on Smid’s notarizing of a key, the claimed affirmatively confirming reads
on Smid’s storing of the notarized key, and the claimed enabling a function
reads on Smid’s allowing repeated access to the stored notarized key.
Specifically, Smid discloses that “[c]ryptographic keys for a cryptographic
function are notarized” (see Abstract; col. 10, ll. 22-24) and “notarized keys
are stored in a portion 44 of memory 40” (col. 10, l. 51) “for repeated use by
a KNF user” (col. 10, l. 52).
It is worth noting that while Appellant argues that the claimed
“securing” and “confirming” a key have meanings inapposite to “notarizing”
and “storing” a key, Appellant’s Specification fails to provide an explicit
definition for either “securing” or “confirming” of a key. Instead, mere
examples for securing and confirming are illustrated. Although giving
claims their broadest reasonable interpretation must take into account any
definitions given in the Specification, In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997), it is improper to read into the claims limitations from
examples given in the Specification. In re Zletz, 893 F.2d 319, 321-22 (Fed.
Cir. 1989). Since, no special or particular meaning has been established for
the terms securing and confirming, the terms will be given their broadest
reasonable interpretation.
Here, Appellant’s Specification merely notes that “[t]he step of
confirming . . . is provided such that an initiation of securing, such as the
initiating of encrypting, transferring, saving, restricting access, . . . is also
construed and hereby defined to be confirming” (Spec. 13: 27-31; see also
15:20-22). In other words, Appellant specifies that both the securing and the
confirming function may include encrypting and/or saving, for example.
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Claim 1 merely requires that any function for confirming must be
independent from the function of securing (see claim 1), however, no
specific function must be performed.
As noted supra, the Examiner found, and we agree, that Smid’s
notarizing of the key, which includes encrypting the keys using a notarizing
cryptographic key (see Abstract), is equivalent to the claimed securing step.
In addition, the Examiner found, and we again agree, that storing the
notarized key is equivalent to confirming the securing of the key. Therefore,
consistent with Appellant’s Specification, the Examiner found persuasive
disclosures in Smid that illustrating the claimed securing and confirming
steps. Smid starts with a key, generates a notarized key, and stores the
notarized key. Smid also discloses producing a second notarized key (col.
10, ll. 48-49).
In addition, as noted supra, Smid discloses that the stored notarized
keys can be used repeatedly by a Key Notarization Facility (KNF). The
Examiner found, and we agree, that this repeated usability of the notarized
key is in response to storage of the same, i.e., enabling a function responsive
to the confirming step.
Based on the record before us, we find no error in the Examiner’s
finding Smid anticipates representative claim 1, essentially for the reasons
indicated by the Examiner. Accordingly, we affirm the rejection of claim 1,
as well as claims 100, 221, 223, 224, 226-228, 230, 232-241, and 246-248,
which were not separately argued.

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§102(b) Rejection of Claim 231
Regarding Appellant’s argument pertaining to claim 231 (see App. Br.
27), the Examiner fails to give us the benefit of the Examiner’s evaluation of
the arguments in the responsive Answer. An Examiner cannot entirely
ignore any limitation in a claim while determining whether the subject
matter of the claim would have been anticipated. In re Wilson, 424 F.2d
1382, 1385 (CCPA 1970).
Accordingly, because the Examiner has ignored Appellant’s
arguments, we reverse the rejection of claim 231.

§103(a) Rejection
Claims 222, 225, 229, and 242-245
Regarding Appellant’s argument pertaining to claims 222, 225, 229,
and 242-245 (see App. Br. 36-45), the Examiner fails to give us the benefit
of the Examiner’s evaluation of the arguments in the responsive Answer.
An Examiner cannot entirely ignore any limitation in a claim while
determining whether the subject matter of the claim would have been
obvious. In re Wilson, 424 F.2d at 1385.
Accordingly, because the Examiner has ignored Appellant’s
arguments, we reverse the rejection of claims 222, 225, 229, and 242-245.

DECISION
We reverse the Examiner’s § 102(b) rejection of claim 231 and
§ 103(a) rejections of claims 222, 225, 229, and 242-245.
We affirm the Examiner’s § 102(b) rejection of claims 1, 100, 221,
223, 224, 226-228, 230, 232-241, and 246-248.
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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-IN-PART

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