Ex Parte Gustave et al

Patent Trial and Appeal Board

Aug 5, 2016

12212368 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/212,368 09/17/2008
48116 7590
FAY SHARPE/LUCENT
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
08/09/2016
FIRST NAMED INVENTOR
Christophe Gustave
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.
LUTZ 200603US01 1194
EXAMINER
PEARSON, DAVID J
ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
08/09/2016 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):
docketing@faysharpe.com
ipsnarocp@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte CHRISTOPHE GUSTAVE, VINOD CHOYI, and
SHU-LIN CHEN
Appeal2014-007982
Application 12/212,3 68
Technology Center 2400
Before JOSEPH L. DIXON, LARRY J. HUME, and JOHN D. HAMANN,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-007982
Application 12/212,3 68
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-18. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
The claims are directed to a reliable authentication of message
sender's identity. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. In a telecommunications network, a method for
authenticating a sender of a message to a recipient of the
message, said method comprising:
(a) registering the sender with a trusted certificate authority
(CA), said registering including providing the CA with (i)
identification information identifying the sender and (ii) a public
key of the sender;
(b) creating an authentication certificate including the sender's
identification information and the sender's public key;
( c) signing the certificate with a private key of the CA;
( d) provisioning a message sending device of the sender with the
certificate that was signed with the private key of the CA;
( e) provisioning a message receiving device of the recipient with
a public key of the CA, said CA's public key being a
corresponding counterpart to the CA's private key;
(f) generating a signature with a private key of the sender, said
sender's private key being a corresponding counterpart for the
sender's public key;
(g) sending a message from sender's message sending device,
said message including the certificate and the signature;
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(h) retrieving the message with the recipient's message receiving
device;
(i) using the CA's public key with which the recipient's receiving
device was provisioned to obtain the sender's public key from
the certificate received in the retrieved message; and,
U) using the sender's public key obtained from the certificate
received in the retrieved message to verify the signature
generated with the sender's private key.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Van Oorschot
Robertson
Hung
Logan et al.
US 6,370,249B1
US 2005/0228864 Al
US 2008/0022110 Al
US 2008/0256072 Al
REJECTIONS
Apr. 9, 2002
Oct. 13, 2005
Jan.24,2008
Oct. 16, 2008
The Examiner made the following rejections:
Claims 1-3, 7-9, and 13-15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Robertson in view of Logan.
Claims 4, 5, 10, 11, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Robertson and
Logan as applied to claims 3, 9, and 15 above, and further in view of Hung.
Claims 6, 12, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Robertson, Logan, and Hung as
applied to claims 5, 11, and 17 above, and further in view of Van Oorschot.
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner erred. We disagree with Appellants' arguments,
and we adopt as our own ( 1) the pertinent findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 2-9
(statement of rejection) and 9-12 (responses to argument)) and (2) the
corresponding reasons set forth by the Examiner in the Examiner's Answer
in response to Appellants' Appeal Brief (Ans. 2-8), and we concur with the
applicable conclusions reached by the Examiner. We emphasize the
following.
Claims 1--4 and 13-16
With respect to independent claims 1 and 13, Appellants argue the
claims together. (App. Br. 8.) As a result, we select independent claim 1 as
the representative claim for the group and address Appellants' arguments
thereto.
With respect to independent claim 1, Appellants argue the Logan
reference does not disclose step ( d) in claim 1 and the Logan reference does
not disclose providing the message sender 401 or provisioning a message
sending device of the sender 401 with the certificate created by the
Certification Authority 403. (App. Br. 9-10.) Appellants identify
paragraphs 35, 38, 41, and 42 of the Logan reference and contend that these
portions do not necessarily mean that the certificate is provided or
provisioned at the sending device.
The Examiner clarifies the rejection and maintains:
In paragraph [0041], Logan teaches in step 2 of the certification
process, the Certificate Authority verifies the identity of the
sender and issues a certificate. Applicant argues Logan never
discloses the certificate being sent to the sender. However, in
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Fig. 4, step 2 of the process shows the Certification Authority
sending the certificate to the Sender as represented by the arrow
with a 2 on it.
(Ans. 4.)
Appellants additionally contend the arrow in Figure 4 of the Logan
reference does not teach or suggest that the sender possesses the certificate
from the certificate authority. (App. Br. 12-13.) Appellants further argue:
Logan does NOT disclose step ( d) identified above, which the
Examiner has admitted in the outstanding Office Action that
Rober[t]son also fails to disclose. In particular, nowhere does
Logan disclose providing the message sender 401 or
provisioning a message sending device of the sender 401 with
the certificate created by the Certification Authority 403.
Indeed, at paragraph [0041], Logan discloses that in step 2
the "Certification Authority 403 verifies identity of sender 401
and issues a 'No Spam' Digital Certificate." However, this does
NOT mean the certificate is provided to the sender or is
provisioned on a message sending device of the sender. In
generally, the act of "issuing" a certificate does NOT necessarily
mean that the issued certificate is given or providing to any
particular entity or element. Rather, the term "issues" as used in
paragraph [0041] of Logan merely means creation of the
certificate. Indeed, as expressly disclosed throughout Logan, the
digital certificate is provisioned and/or provided elsewhere - i.e.,
other than at the sender 401.
See paragraph [0035] of Logan for example. The last
sentence of paragraph [0035] indicates that the digital certificate
324 may either "exist in the receiver's local database" or if not
there then it "may be automatically retrieved from an online
repository. " In either case, the certificate is NOT obtained from
the sender, presumably because the sender is NOT provisioned
with it.
Additionally, see FIGURE 4 and paragraph [0042] of
Logan which expressly discloses that at step 3 "[t]he
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Certification Authority 403 publishes Certificate to the public
Repository 405." Indeed, as expressly discloses the digital
certificate is provisioned in the repository 405 and NOT a
message sending device of the sender 401.
See also paragraph [0038] of Logan which indicates that
the "digital certificates are preferably stored in an on line,
publically accessible repository seen at 405 in FIG. 4."
(App. Br. 9.)
The Examiner further maintains:
Logan states "a digital certificate issued to the sender by a
certification authority in reliance on the sender's binding
commitment not to use the supplied certificate to sign outgoing
email that does not conform to predetermined good conduct
rules" (note paragraph [001 OJ) and "certification authorities
(CAs) who would issue digital certificates containing the
sender's public key only to senders who agreed to obey the anti-
spam rules stated in a policy for certificates of a particular type"
(note paragraph [0033]) (emphasis added).
These statements shovv the certification authorities send
the certificates to the message senders since they issue
certificates "to" message senders and the message senders are
clearly in possession of those certificates if they "use" the
certificate to the sign their messages.
Furthermore, even assuming arguendo Logan does not
disclose the certificate authority "sending" the certificate to the
message sending device, the claims merely state "provisioning"
a message sending device of the sender with the certificate.
Merriam-Webster defines "provisioning" as "the act or process
of supplying or providing something" and "provide" as "to make
(something) available". Therefore, giving the claim its broadest,
reasonable interpretation, the Certification Authority of Logan
would merely need to make the certificate "available" to the
message sending device in order to meet the requirements of the
claims. Clearly the certificate is "available" to the message
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sending device since it is placed in a "publicly available
repository" (note paragraph [0038] and used by the message
sender to sign their outgoing messages (note paragraph [001 OJ).
(Ans. 4.) Appellants have not filed a Reply Brief to rebut the Examiner's
further clarifications in the application of the prior art teachings of Logan
reference. Consequently, Appellants' argument does not show error in the
Examiner's conclusion of obviousness based upon the revised factual
findings. Therefore, Appellants' arguments do not show error in the
Examiner's conclusion of obviousness of representative independent claim 1
and independent claim 13 grouped therewith. Moreover, Appellants have
not set forth separate arguments for patentability of dependent claims 2--4
and 14--16. As a result, we group these claims as falling with representative
independent claim 1.
Claims 7-12
With respect to independent claim 7 and the dependent claims 8-12,
Appellants argue the claims together. (App. Br. 12 and 13.) As a result, we
select independent claim 7 as the representative claim for the group and will
address Appellants' arguments thereto. Appellants generally contend the
combination of Robertson in view of Logan does not teach or suggest the
claimed:
(f) sending a message from a message sending device of the
sender, said message including the signature and a pointer that
indicates a location where the certificate is stored; and
(h) fetching the certificate with the recipient's message receiving
device from the location indicated by the pointer.
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(App. Br. 12.) Appellants further contend "[t]he outstanding Office Action
erroneously alleges that the foregoing pointer is taught by Logan at
paragraphs [0035] and [0043]-[0044]." (App. Br. 12.)
The Examiner further explains how the Logan reference teaches and
suggests the claimed limitation and maintains:
The receiver's local database is "indexed" by Sender ID.
The Microsoft Computer Dictionary, Fifth Edition defines
"index" as "a listing of keywords and associated data that point
to the location of more comprehensive information, such as files
and records on a disk or record keys in a database" (emphasis
added). Since the Sender ID "points to the location" in the
receiver's local database of the sender's certificate, it is "a pointer
that indicates a location where the certificate is stored" as
required by the claim.
(Ans. 6.)
As mentioned above, Appellants have not filed a Reply Brief to
address the Examiner's clarification in relying upon the "index."
Consequently, Appellants have not shown error in the Examiner's
conclusion of obviousness of independent claim 7, and we sustain the
rejection representative independent claim 7 and with dependent claims 8-
12, not separately argued.
Claims 5, 6, 11, 12, 17, and 18 1
With respect to dependent claims 5, 11, and 1 7 (along with dependent
claims 6, 12, and 18), Appellants contend "claims 5, 11 and 17 recite that the
generated signature is a hash of the message being sent, the recipient
identifier and the timestamp encrypted by the sender's private key. Neither
1 We note the Examiner includes claims 11 and 12 in two separate
groupings, but this does not change the outcome.
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Robertson nor Logan nor Hung teaches the foregoing." (App. Br. 13.) We
select dependent claim 5 as the representative claim for the group and
address Appellants' arguments thereto.
Appellants further contend each of the Robertson and Hung references
do not teach the totality of the claimed information items in the hash. (App.
Br. 13-14.)
The Examiner disagrees with Appellants and further clarifies the
rejection. The Examiner maintains:
paragraph [0032], Robertson teaches the signed message
includes the To: address (recipient identifier) and other header
information. As shown in paragraph [0030], Robertson teaches
the signed message is created by performing a hash of the
message and then encrypting the hash with the sender's private
key. Since the recipient identifier is included in the signed
message, it would also be hashed and encrypted with the private
key.
Therefore, Robertson teaches "the generated signature is a
hash of the message being sent, the recipient identifier encrypted
by the sender's private key."
In paragraph [0048], Hung teaches a time stamp can be
included in the information sent with a message. Robertson
teaches other information can be included in the signed message.
Thus, the combination of Robertson and Hung teaches a signed
message including a time stamp. As noted above, the process of
signing a message means performing a hash of the information
and encrypting that hash with a private key of the sender.
In response to applicant's arguments against the references
individually, one cannot show nonobviousness by attacking
references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413, 208
USPQ 871(CCPA1981); In re Merck & Co., 800 F.2d 1091,
231 USPQ 375 (Fed. Cir. 1986).
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The combination of Robertson and Hung teaches the
generated signature is a hash of the message being sent, the
recipient identifier and the timestamp encrypted by the sender's
private key as required by the claims.
(Ans. 7.) We agree with the Examiner that Appellants are arguing the
references individually. We agree with the Examiner that each of the
references disclose a different combination of information elements included
in the hash, but we agree with the Examiner's finding that it would have
been obvious to one of ordinary skill in the art to use any of the known
information elements in the hash as identified by the prior art references.
In KSR Int 'l Co. v. Teleflex, Inc., 550 US 398, 415 (2007), the
Supreme Court emphasized "the need for caution in granting a patent based
on the combination of elements found in the prior art," and discussed
circumstances in which a patent might be determined to be obvious without
an explicit application of the teaching, suggestion, and motivation test.
In particular, the Supreme Court emphasized "the principles laid down
in Graham reaffirmed the 'functional approach' of Hotchkiss, 11 How. 248."
KSR, 550 US at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
( 1966) (emphasis added)), and reaffirmed principles based on its precedent
that "[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results." Id.
at 416. The Court explained:
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. 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 similar devices in the
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same way, using the technique is obvious unless its actual
application is beyond his or her skill.
Id. at 417. The operative question in this "functional approach" is thus
"whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id.
Appellants have not filed a Reply Brief to further address the
Examiner's proffered combination and show that the combination is more
than a predictable use of known prior art information elements in
combination in the hash. Consequently, Appellants have not shown error in
the Examiner's conclusion of obviousness of representative dependent
claim 5.
CONCLUSION
On this record, the Examiner did not err in rejecting claims 1-18
based upon 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner's rejections of
claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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