Ex Parte Hane

Patent Trial and Appeal Board

May 16, 2013

10667329 (P.T.A.B. May. 16, 2013)

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.
10/667,329 09/23/2003 John Hane 57132.000008 1653
21967 7590 05/17/2013
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
2200 Pennsylvania Avenue, N.W.
WASHINGTON, DC 20037
EXAMINER
GOODARZI, NASSER MOAZZAMI
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
05/17/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN HANE
____________

Appeal 2011-001755
Application 10/667,329
Technology Center 2400
____________

Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
TRENTON A. WARD, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 24-32. App. Br. 1; Reply Br. 2. Claims 1-18 were
cancelled, and claims 19-23 were withdrawn from consideration in response
to a restriction requirement. Id. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellant’s Invention
Appellant invented a method, computer readable medium, and system
for securely transmitting information. Abstract; Spec. 1:9-10. According to
Appellant, the disclosed invention enhances security and efficiency by
securely transmitting information using multiple transmission methods.
Abstract; Spec. 1:10-13.
Illustrative Claim
Claims 24, 25, and 26 are independent claims. Independent claim 24
is illustrative:
24. A method for requesting and securely receiving
data from the Internet, said method comprising the steps of:

receiving a request for data;

collecting data in response to said request;

packetizing said collected data into at least two sets of
data packets, wherein a first set of data packets comprises
encrypted data and a second set of data packets comprises a key
for decoding said encrypted data;

selecting and addressing said first set of data packets for
transmission at a first transmission time via a first channel of a
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transmission mode at a first frequency, and automatically
attaching a first address to said first set of data packets;

selecting and addressing said second set of data packets
for transmission at a second transmission time via a second
channel of the transmission mode at a second frequency,
wherein the second transmission time is different from the first
transmission time and the second frequency is different from
the first frequency;

transmitting said first set of data packets via said first
channel; and

transmitting said second set of data packets via said
second channel.

Prior Art Relied Upon
Kikinis US 6,289,389 B1 Sept. 11, 2001
Kamiya US 2002/0106086 A1 Aug. 8, 2002
Rejection on Appeal
Claims 24-32 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kikinis and Kamiya. Ans. 3-5.
Examiner’s Findings and Conclusions
The Examiner finds that Kikinis teaches sending decryption key
packets and encrypted information packets to a user’s personal computer
(PC) via different channels—namely via the Internet or a satellite link. Ans.
4, 6, 9-10 (citing to Kikinis, Fig. 1; col. 6, ll. 28-47). The Examiner also
finds that Kamiya teaches transmitting content packets and key packets at
different times, e.g., hours or days apart, over different routes. Id. at 5-6, 10
(citing to Kamiya, ¶¶ [0006-12], [0023-25]). The Examiner relies upon
these cited disclosures from Kikinis and Kamiya to collectively teach a first
set of data packets for transmission at a first transmission time and a second
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set of data packets for transmission at a second transmission time, wherein
the second transmission time is different from the first transmission time, as
required by independent claim 24. Id. at 4-6.
The Examiner also finds that Kikinis does not teach away from
Kamiya because both references are capable of transmitting decryption key
packets and encrypted information packets via physically separate routes.
Ans. 7, 11-12. In addition, the Examiner provides a rationale to combine
Kikinis and Kamiya. Id. at 5, 12.
Appellant’s Contentions
Appellant contends that Kikinis discloses the transmission of data
packets and a decryption key via two disparate transmission modes—namely
via either the Internet or a satellite link. App. Br. 8; Reply Br. 4. Based on
that disclosure, Appellant argues that Kikinis fails to teach “selecting and
addressing said first set of data packets for transmission at a first
transmission time via a first channel of a transmission mode at a first
frequency,” and “selecting and addressing said second set of data packets for
transmission at a second transmission time via a second channel of the
transmission mode at a second frequency,” as recited in independent claim
24. Id. (emphasis omitted).
Appellant also contends that Kikinis teaches away from Kamiya.
App. Br. 9-10; Reply Br. 5-6. In particular, Appellant argues that Kikinis
discloses simultaneously transmitting content information and a decryption
key over disparate networks, whereas Kamiya discloses transmitting content
information and the decryption key over the same physical network at
different times. App. Br. 10; Reply Br. 5. In addition, Appellant contends
that the Examiner fails to provide a proper motivational statement for
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combining Kikinis and Kamiya, but rather appears to rely upon
impermissible hindsight reconstruction. App. Br. 11-12.
Appellant presents essentially the same arguments raised against the
obviousness rejection of independent claim 24 to rebut the obviousness
rejections of independent claims 25 and 26. App. Br. 12-23.

II. ISSUE
Has the Examiner erred in determining that the combination of
Kikinis and Kamiya renders independent claims 24-26 unpatentable? In
particular, the issue turns on whether:
(a) the combination of Kikinis and Kamiya collectively teaches
“selecting and addressing said first set of data packets for transmission at a
first transmission time via a first channel of a transmission mode at a first
frequency,” as recited in independent claim 24, and similarly recited in
independent claims 25 and 26;
(b) the combination of Kikinis and Kamiya collectively teaches
“selecting and addressing said second set of data packets for transmission at
a second transmission time via a second channel of the transmission mode at
a second frequency,” as recited in independent claim 24, and similarly
recited in independent claims 25 and 26;
(c) Kikinis teaches away from its combination with Kamiya and, as
a result, teaches away from the claimed invention; and
(d) the Examiner provides an articulated reason with a rationale
underpinning to combine Kikinis and Kamiya.

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III. ANALYSIS
Claims 24-26
Based on the record before us, we do not discern error in the
Examiner’s obviousness rejection of independent claim 24, which recites,
inter alia:
[(1)] selecting and addressing said first set of data packets for
transmission at a first transmission time via a first channel of a
transmission mode at a first frequency, . . . [and] [(2)] selecting
and addressing said second set of data packets for transmission
at a second transmission time via a second channel of the
transmission mode at a second frequency.

We also do not discern error in the Examiner’s obviousness rejection of
independent claims 25 and 26, which recite similar claim limitations.
At the outset, we note that, contrary to Appellant’s argument (App.
Br. 8), the Examiner does not rely upon Kikinis individually, but instead
relies upon the combined teachings of Kikinis and Kamiya to disclose the
disputed claim limitations. In particular, the Examiner takes the position
that Kikinis’s data communication system transmits two sets of data packets:
(1) a decryption key to a user’s PC via land, i.e., the Internet; and (2)
encrypted information to the user’s PC via a satellite link. Ans. 6, 9 (citing
to Kikinis, Fig. 1; col. 6, ll. 28-42). The Examiner then relies upon Kamiya
for the proposition that both encrypted content information and the
corresponding decryption key may be delivered over the same physical
network by staggering the times for delivery, e.g., hours or days apart. Id. at
4-6, 9-10 (citing to Kamiya, ¶¶ [0007], [0023]). Based on these cited
disclosures, one of ordinary skill in the art would have recognized that
Kamiya’s functionality may be incorporated into Kikinis’s data
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communication system, such that both encrypted information packets and
the corresponding decryption key packets may be delivered over the same
physical network by staggering their delivery times.
For instance, one with ordinary skill in the art would have appreciated
that the proffered combination would allow Kikinis’s data communication
system to deliver both encrypted information packets and the corresponding
decryption key packets to a user’s PC via the Internet by staggering their
respective delivery times by a few hours or days. Similarly, one with
ordinary skill in the art would have appreciated that that the proffered
combination would allow Kikinis’s data communication system to deliver
both encrypted information packets and the corresponding decryption key
packets to a user’s PC via a satellite link by staggering their respective
delivery times by a few hours or days. As such, the Examiner has presented
sufficient evidence to warrant a finding that the combination of Kikinis and
Kamiya teaches the disputed claim limitations.
Teaching Away
Appellant’s teaching away argument is predicated on the notion that
Kikinis discloses the simultaneous transmission of two sets of data packets
over disparate networks, whereas Kamiya discloses the transmission of two
sets of data packets at different times over the same physical network. App.
Br. 9-10; Reply Br. 5-6. We disagree.
A reference teaches away from a claimed invention if it “criticizes,
discredits, or otherwise discourages” modifying the reference to arrive at the
claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We
will not, however, “read into a reference a teaching away from a process
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where no such language exists.” DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
In this case, Kamiya expressly contemplates simultaneously
delivering both encrypted content and decryption key information. Kamiya,
¶ [0024]. The Examiner further indicates that Kamiya discloses delivery
routes that are physically separate from one another. Ans. 7, 11 (citing to
Kamiya, ¶ [0007]). Based on these disclosures, one of ordinary skill in the
art would have recognized that Kamiya’s system teaches simultaneously
transmitting data packets over two mutually exclusive networks. Therefore,
even assuming Appellant correctly asserts that Kikinis only discloses the
simultaneous transmission of two sets of data packets over disparate
networks, Kamiya nonetheless teaches the same manner of transmission. As
a consequence, we are not persuaded that Kikinis teaches away from
Kamiya and, as a result, teaches away from the claimed invention.
Rationale to Combine
We are not persuaded by Appellant’s argument that the Examiner fails
to provide a proper motivational statement for combining Kikinis and
Kamiya, but rather appears to rely upon impermissible hindsight
reconstruction. App. Br. 11-12. The U.S. Supreme Court has held that
“[t]he obviousness analysis cannot be confined by a formalistic conception
of the words teaching, suggestion, and motivation, or by overemphasis on
the importance of published articles and the explicit content of issued
patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead,
the relevant inquiry is whether the Examiner has set forth “some articulated
reasoning with some rational underpinning to support the legal conclusion of
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obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR, 550 U.S. at 418).
Upon reviewing the record before us, we conclude that the
Examiner’s rationale for combining Kikinis and Kamiya suffices as an
articulated reason with a rational underpinning to justify the legal conclusion
of obviousness. That is, one with ordinary skill in the art of cryptography, at
the time of the claimed invention, would have found it obvious to modify
Kikinis’s data communication system (Kikinis, Fig. 1; col. 6, ll. 27-42) to
include the functionality in Kamiya of delivering both encrypted content
information and the corresponding decryption key over the same physical
network by staggering their delivery times (Kamiya, ¶¶ [0007], [0023]).
According to the Examiner, this proffered combination would prevent
hackers from intercepting the transmitted data, finding all the information,
i.e., key and content, in one single interception, and retrieving such
information. See Ans. 5. It also would make it difficult for hackers to
misappropriate securely transmitted data. See id.
Moreover, the Examiner’s rationale for combining Kikinis and
Kamiya has some basis in fact. See, e.g., Kamiya, ¶ [0007]. Therefore, we
are not persuaded by Appellant’s argument that the Examiner improperly
engaged in impermissible hindsight reconstruction. It follows that the
Examiner has not erred in determining that the combination of Kikinis and
Kamiya renders independent claims 24-26 unpatentable.
Claims 27-32
Appellant generally alleges that both Kikinis and Kamiya fail to
disclose the claim limitations recited in dependent claims 27-32. App. Br.
24-25. Merely pointing out what a claim recites and nakedly asserting that
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the cited prior art does not teach the corresponding claim limitation does not
amount to a separate patentability argument. See 37 C.F.R. § 41.37(c)(vii)
(“A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
It follows that the Examiner has not erred in determining that the
combination of Kikinis and Kamiya renders dependent claims 27-32
unpatentable.
IV. CONCLUSION
For the foregoing reasons, the Examiner has not erred in rejecting
claims 24-32 as being unpatentable under 35 U.S.C. § 103(a).

V. DECISION
We affirm the Examiner’s decision to reject claims 24-32.
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

Vsh