Ex Parte Fifield et al

Board of Patent Appeals and Interferences

Jun 26, 2009

09875446 (B.P.A.I. Jun. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVIN J. FIFIELD and KEVIN S. KOCH
____________________

Appeal 2008-001226
Application 09/875,446
Technology Center 2100
____________________

Decided:1 June 26, 2009
____________________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
ST. JOHN COURTENAY III, and DEBRA K. STEPHENS, Administrative
Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter New Grounds of Rejection.

Introduction
According to Appellants, the invention is a method, product and
signal for electronically signing an electronic transcript (Abstract and claims
1, 7, 8, 9, 17, and 19). Hash operations and concatenation are used to
generate a representation of the contents of an electronic transcript and data
(id.). The representation is recorded and time stamped creating a notary
record which is digitally signed (id.). The digitally signed notary record,
electronic transcript and identifying data are then bundled (id.).

Exemplary Claim(s)
Claims 1, 7, and 8 are exemplary claims and are reproduced below:
Claim 1. A method for electronically signing an electronic
transcript, comprising:
performing a first hash operation on the electronic transcript to
generate a representation of the contents of the electronic transcript;
concatenating data to the representation of the contents of the
electronic transcript, said data identifying a user;
performing a second hash operation on the data concatenated to
the representation, the second hash operation generating a
representation of the contents of the electronic transcript and the data;
providing for the recording and time stamping by a digital
notary service of the representation of the contents of the electronic
transcript and the data;
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obtaining a notary record from the digital notary service of the
time stamping;
digitally signing the notary record; and
forming an electronically signed electronic transcript by
bundling the digitally signed notary record with the electronic
transcript and with the data identifying the user.

Claim 7. A computer program product comprising:
a computer useable medium and computer readable code
embodied on said computer useable medium for causing electronically
signing an electronic transcript by a user, the computer readable code
comprising:
computer readable program code devices configured to cause
the computer to effect the performing a first hash operation on the
electronic transcript to generate a representation of the contents of the
electronic transcript;
computer readable program code devices configured to cause
the computer to effect the concatenating data to the representation of
the contents of the electronic transcript, said data identifying the user;
computer readable program code devices configured to cause
the computer to effect the performing a second hash operation on the
data concatenated to the representation, the second hash operation
generating a representation of the contents of the electronic transcript
and the data;
computer readable program code devices configured to cause
the computer to effect the providing for the recording and time
stamping by a digital notary service of the representation of the
contents of the electronic transcript and the data;
computer readable program code devices configured to cause
the computer to effect the obtaining a notary record from the digital
notary service of the time stamping;
computer readable program code devices configured to cause
the computer to effect the digitally signing the notary record; and
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computer readable program code devices configured to cause
the computer to effect the forming of an electronically signed
transcript by bundling the digitally signed notary record with the
electronic transcript and the data identifying the user.

Claim 8. A computer data signal embodied in a transmission
medium, comprising:
a code segment including instructions for performing a first
hash operation on an electronic transcript to generate a representation
of the contents of the electronic transcript;
a code segment including instructions for concatenating data to
the representation of the contents of the electronic transcript, said data
identifying the user;
a code segment including instructions for performing a second
hash operation on the data concatenated to the representation, the
second hash operation generating a representation of the contents of
the electronic transcript and the data;
a code segment including instructions for providing for the
recording and time stamping by a digital notary service of the
representation of the contents of the electronic transcript and the data;
a code segment including instructions for obtaining a notary
record from the digital notary service of the time stamping;
a code segment including instructions for digitally signing the
notary record; and
a code segment including instructions for forming an
electronically signed electronic transcript including the digitally
signed notary record, the electronic transcript, and the data identifying
the user.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smithies US 6,091,835 Jul. 18, 2000
Blake-Wilson US 6,336,188 B2 Jan. 1, 2002
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Kocher US 6,901,509 B1 May 31, 2005

Rejections
The Examiner rejected claims 1, 3-9, 11-15, 17, and 19 under
35 U.S.C. § 103(a) as being unpatentable over Smithies and Kocher.
The Examiner rejected claims 2, 10, 16, 18, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Smithies, Kocher, and Blake-
Wilson.

GROUPING OF CLAIMS
Appellants have grouped claims together to address the grounds of
rejection. Appellants argue claims 1-20 based on the arguments set forth
regarding claim 1 (App. Br. 13-22 and Reply Br. 1-3). We will, therefore,
treat claims 2-20 as standing or falling with claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii) (“Notwithstanding any other
provision of this paragraph, the failure of appellant to separately argue
claims which appellant has grouped together shall constitute a waiver of any
argument that the Board must consider the patentability of any grouped
claim separately.”).

ISSUE
35 U.S.C. § 103(a): Claims 1-20
Appellants argue Smithies teaches concatenating data to the
representation of the contents of the electronic transcript where the data
identifies a user, and then digitally signing the notary record (App. Br. 15).
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Appellants additionally argue Kocher does not teach or suggest performing a
second hash operation on the data concatenated to the representation, the
second hash operation generating a representation of the contents of the
electronic transcript and the data (App. Br. 16). Instead, Appellants argue,
Kocher teaches a method to hash a data file that once hashed, appends a
digital signature (id.).
The Examiner finds Kocher teaches a certificate issuer name is hashed
and then concatenated with a certificate serial number to produce the
processed digital certificate (Ans. 13). The Examiner also finds Kocher
teaches the certificate serial number may be hashed before concatenation
(id.). Thus, the Examiner finds Kocher teaches concatenating the hashed
issue name to the hashed or unhashed certificate serial number to produce a
processed digital certificate (Ans. 14).
Issue: Have Appellants met the burden of showing the Examiner erred
in finding Kocher teaches or suggests concatenating data to a representation
of the contents of the electronic transcript where the data identifies a user
and performing a second hash operation on the concatenated data?

FINDINGS OF FACT (FF)
Appellants’ Invention
(1) An electronic document or electronic transcript can be
electronically signed and certified by a signing entity (Spec. 5, ll. 17-24).
The validity and authenticity of the electronically signed document can be
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checked at a later time by a recipient of the electronic document (Spec. 5, ll.
17-21).

Smithies’ Invention
(2) Smithies describes a “transcribing” method and system for
collecting and storing data that evidences facts and circumstances of a
party’s electronic affirmation of a document, transaction or event (col. 1, ll.
16-26).
(3) The system includes a transcript generator module that creates a
transcript object using one or more authentication policy components
(APCs) and one of more functions within a function library (col. 11, ll. 47-
55).
(4) The transcript generator module executes an affirmation
process upon receiving a call from an application that creates or retrieves a
record of a document, transaction, or statement, or executes processing to
perform an event to be signed or affirmed (col. 12, ll. 3-8).
(5) To provide evidence to verify the integrity of the provisions or
undertakings of the document, the transcript generator module creates a one-
way hash corresponding to the contents of the document, transaction, or
statement and the hash encoding created at the time of affirmation (col. 14,
ll. 5-13). This process allows a comparison between a hash encoding of any
later copy of the document, transaction, or statement and the hash encoding
created at the time of affirmation to ensure the document, transaction, or
statement has not been modified (col. 14, ll. 13-19).
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Kocher’s Invention
(6) Kocher discloses a method and system for providing
cryptographic assurance based on ranges between data items on a list
(Abstract).
(7) Preprocessing of certain data items that occurs includes hashing
the certificate issuer name and concatenating the hashed data with a hashed
or unhashed certificate serial number to produce a digital certificate (col. 6,
ll. 40-46).
(8) The preprocessed data is converted into a set of sorted ranges
(col. 6, ll. 54-55). The ranges are used as leaf nodes to construct a hash tree;
the leaf nodes are combined using a hash function to form intermediate
nodes and a root node; and the tree’s root node is digitally signed by the tree
issuer (col. 6, ll. 4-5, col. 7, ll. 29-42, and col. 8, ll. 15-20).
(9) This technique thus allows an efficient and secure method and
system to securely demonstrate the presence or absence of items on a list –
such as valid data certificates, revoked data certificates, bad credit card
numbers, and computer executable code (col. 11, ll. 45-56).

PRINCIPLES OF LAW
Obviousness
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
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doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). If the Examiner’s burden is met, the burden
then shifts to the Appellants to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See
id.

ANALYSIS
35 U.S.C. § 103(a): Claims 1-20
Kocher teaches concatenation of a hashed certificate issuer name to a
hashed or unhashed certificate serial number to produce a digital certificate
(FF 7). The digital certificate is sorted to produce ranges that create a secure
list of, for example, valid data certificates, revoked data certificates, bad
credit card numbers, and computer executable code (FF 8 and FF 9). Kocher
does not teach or disclose “concatenating data identifying a user to a
representation of the contents of the electronic transcript” as recited in claim
1 (See analogous language in claims 7, 8, 9, 17, and 19). Thus, the
Examiner has not indicated the reference or combination of references that
teaches or suggests concatenating identifying data to a representation of
electronic transcript contents. Therefore, we find the Examiner’s
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obviousness conclusion lacking in sufficient detail or support from any of
the references.
We accordingly find the gap in the combined references to be
uncomfortably wide and such gap cannot be bridged with theories or
speculation. After considering the totality of the record before us, it is our
view the weight of the evidence supports Appellants’ contention that the
Examiner has not sufficiently shown the correspondence between the claim
elements and the relevant portions of the cited references to establish a
prima facie case of obviousness.
Therefore, Appellants have shown the Examiner erred in finding
Kocher teaches or suggests concatenating data to a representation of the
contents of the electronic transcript where the data identifies a user and
performing a second hash operation on the concatenated data.

CONCLUSION
Based on the findings of facts and analysis above, we conclude
Appellants have met the burden of showing the Examiner erred in
concluding that independent claims 1, 7, 8, 9, 17, and 19 are obvious over
Smithies and Kocher. Since we have reversed the Examiner’s rejection of
each independent claim on appeal, we also reverse the Examiner’s rejection
of each associated dependent claim on appeal.

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NEW GROUND OF REJECTION
35 U.S.C. § 101
Using our authority under 37 C.F.R. § 41.50(b), we reject claims 8, 19
and 20 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
We find that independent claims 8 and 19 both recite “a computer data
signal embodied in a transmission medium.”
"A transitory, propagating signal is not a 'process, machine,
manufacture, or composition of matter.' Those four categories define the
explicit scope and reach of subject matter patentable under 35 U.S.C. § 101."
In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) reh’g and reh’g en banc
denied 515 F.3d 1361 (Fed. Cir. 2008), cert. denied 129 S.Ct. 70 (2008). "If
a claim covers material not found in any of the four statutory categories, that
claim falls outside the plainly expressed scope of § 101 even if the subject
matter is otherwise new and useful." Id. at 1354.
Thus, since claims 8, 19, and 20 are each directed to a signal, we
conclude that claims 8, 19, and 20 are non-statutory under 35 U.S.C. § 101.

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DECISION
The Examiner’s rejection of claims 1, 3-9, 11-15, 17 and 19 under
35 U.S.C. § 103(a) as being unpatentable over Smithies and Kocher is
reversed.
The Examiner’s rejection of claims 2, 10, 16, 18, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Smithies, Kocher, and Blake-
Wilson is reversed.
In addition to reversing the Examiner's rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). 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.”

37 C.F.R. § 41.50(b) also provides that Appellants, 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.…

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Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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).

REVERSED.
37 C.F.R. § 41.50(b)

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Brian Kinnear
Holland & Hart LLP
555 Seventeenth Street
Suite 3200
Denver CO 80202