Ex Parte Suzuki et al

Board of Patent Appeals and Interferences

Nov 5, 2010

10287119 (B.P.A.I. Nov. 5, 2010)

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.
10/287,119 11/04/2002 Yoshihiko Suzuki 450100-04242 5617
7590 11/08/2010
FROMMER LAWRENCE & HANG LLP
745 FIFTH AVENUE
NEW YORK, NY 10151
EXAMINER
AVERY, JEREMIAH L
ART UNIT PAPER NUMBER
2431
MAIL DATE DELIVERY MODE
11/08/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
______________

Ex parte YOSHIHIKO SUZUKI, TAKESHI FUNAHASHI,
and AKIMICHI KURIHARA
______________

Appeal 2009-006428
Application 10/287,119
Technology Center 2400
______________

Before ROBERT E. NAPPI, KENNETH W. HAIRSTON, and
JOHN C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3, 5, and 7-17, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

A. Appellants’ invention
Appellants’ invention is a correspondence education system and
method that can securely provide information to only a person whose
personal authentication has been performed. Specification ¶ 0001.2
Figure 1 is reproduced below.

2 As in Appellants’ Amended Appeal Brief (“Br.”) filed May 13, 2008, at 4,
para. 5, references herein to the Appellants’ Specification are to
corresponding Patent Application Publication 2004/0005059 A1.
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Figure 1 is a schematic diagram showing a configuration of a
correspondence education system according to an embodiment of the
invention (id. at [0011]). The system is formed by connecting a plurality of
personal terminals 2 (21 to 2n) used by students with a “lecture providing
server” 4 arranged by a school 3 via a network 5 (id. at [0023]). As shown
in Figure 2 (not reproduced herein), each personal terminal 2 includes a
fingerprint identification unit 2F for identifying a fingerprint and a separate
main unit 2H ([0025]).
The system employs two pairs of cryptographic keys: (1) an
authentication private key Fd and an authentication public key Fe; and (2) a
delivery private key Hd and a delivery public key He (id. at [0050]).
Authentication private and public keys Fd and Fe are created by fingerprint
identification unit 2F (id. at [0053]), whereas delivery private and public
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keys Hd and He are created by lecture providing server 4 (id. at [0054]). All
four keys are created during a registration session in which a student goes to
a service window of the school 3 in person and submits some form of
personal identification, such as a driver’s license (id. at [0064]). At this
time, the student registers his/her fingerprint with a fingerprint identification
unit 2F and registers his/her electronic mail address and user ID with the
lecture providing server 4 (id.). The system “allows the authentication
public key Fe and the delivery public key He to be shared in advance
between the personal terminal 2 of the student whose personal registration
has been made and the lecture providing server 4 of the school 3” (id. at
[0097]). Thus, by the end of the registration session, flash memory 30 of
fingerprint identification unit 2F stores authentication public key Fe and
delivery private key Hd, whereas flash memory 36 in server 4 stores
authentication private key Fd and delivery public key He (id. at [0065]-
[0067]). Following completion of the registration session, the school 3 lends
the fingerprint identification unit 2F to the student, who can then connect it
to main unit 2H of the student’s personal terminal 2 (id. at [0066]).
It further appears from paragraphs [0049] to [0053] that the process of
creating and registering the cryptographic keys during the above-discussed
registration session involves (1) comparing the student’s applied fingerprint
with fingerprints stored in fingerprint identification unit 2F in order to detect
a match and (2) then creating and registering the cryptographic keys only
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once if a match is detected. Paragraph [0049], for example, reads as
follows:3
[0049] The fingerprint identification unit 2F is configured to be
able to create and register cryptographic keys for the student only
once immediately after the student is authenticated as a registered
student by the fingerprint comparison.
(Emphasis added.) Paragraph [0051] also employs this “only once”
terminology:
[0051] In practice, when a finger is pressed into contact with the
sensor surface of the fingerprint identification sensor 21A and a
fingerprint of the finger is authenticated as that of one of
preregistered students, the CPU 25 in the fingerprint identification
unit 2F allows an attribute area AA belonging to an index IX1 to
IXn corresponding to the fingerprint in the flash memory 23 to be
accessed only once.
(Emphasis added.)
Each of the procedures depicted in Figures 6 and 7, which take place
after the student has connected fingerprint identification unit 2F to main unit
2H of the student’s personal terminal 2H, also includes a fingerprint
comparison step. Figure 6 is reproduced below.

3 In the quotations herein from the Specification, bolding of the reference
numerals is omitted.

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Figure 6 is a flowchart used to explain an initial setting processing
procedure (id. at [0016]). If fingerprint identification unit 2F finds a match
between the applied fingerprint and one of the preregistered (i.e., stored)
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fingerprints (steps SP1, SP2), fingerprint identification unit 2F sends
“successful authentication data” (SP3) to server 4 (id. at [0069], [0070]).
Server 4 and fingerprint identification unit 2F then exchange information
that is encrypted using the public encryption keys and decrypted using the
private encryption keys (id. at [0071]-[0074]) in order to “confirm[] that the
student already registered in the lecture providing server 4 operated his/her
personal terminal 2” (id. at [0075]).
Figure 7 is reproduced below.
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Figure 7 is a flowchart used to explain a correspondence course
processing procedure (id. at [0017]). This procedure, too, starts with a
comparison (SP11, SP12) of an applied fingerprint with the preregistered
fingerprints (id. at [0080]). If the result of this comparison is affirmative,
fingerprint identification unit 2F transmits (step SP13) the authentication
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public key Fe and a student-side authentication ID to the lecture providing
server 4 (id. at [0081]). Lecture providing server 4 responds (SP14) by
transmitting the delivery public key He, a school-side authentication ID, and
the teaching material data to personal terminal 2 (id. at [0082]). At step
SP15, personal terminal 2 displays the received lecture contents (id. at
[0083]).

B. The claims
The independent claims before us are claims 1, 3, 5, 10-12, and 17.
Claim 1, which Appellants (Br. 12) characterize as representative of the
claims before us, reads as follows:
1. A correspondence education system in which a
terminal apparatus and an information processing apparatus are
connected to each other via a network, said correspondence
education system comprising:
authentication communication means disposed in said
terminal apparatus for performing authentication processing on
the basis of human body characteristics of a student and
transmitting a predetermined authentication signal to said
information processing apparatus via said network only when a
positive result of the authentication processing is obtained; and
control means disposed in said information processing
apparatus for transmitting teaching material data representing
lecture contents according to a predetermined educational
program to said terminal apparatus via said network on the
basis of said authentication signal received from said
authentication communication means,
wherein said authentication communication means
creates a first public key and a first private key by public key
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cryptography and then supplies said first public key to said
control means only once immediately after the positive result of
the authentication processing is obtained, while said control
means creates a second public key and a second private key by
said public key cryptography and then supplies said second
public key to said authentication communication means;
said control means encrypts predetermined information
with said first public key on the basis of said authentication
signal outputted from said authentication communication
means, and then transmits the information to said authentication
communication means;
said authentication communication means decrypts the
information encrypted with said first public key with said first
private key, and then encrypts the information with said second
public key and transmits the information to said control means;
and
said control means transmits said teaching material data
to said terminal apparatus on the basis of the information
encrypted with said second public key.
Claims App. (Br. 17) (emphasis added).

C. The references
The rejection is based on the following references:
Ganesan US 5,535,276 July 9, 1996
Kharon US 6,487,662 B1 Nov. 26, 2002

D. The rejection
Claims 1, 3, 5, and 7-17 stand rejected under 35 U.S.C. § 103(a) for
obviousness over Kharon in view of Ganesan. Final Action 2.

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ANALYSIS
Appellants argue (Br. 12-16) that the combined teachings of the
references do not satisfy the “only once” limitation in the “wherein”
paragraph of claim 1, which reads on Appellants’ own disclosure as follows:
wherein said authentication communication means
[fingerprint identification unit 2F] creates a first public key [Fe]
and a first private key [Fd] by public key cryptography and then
supplies said first public key [Fe] to said control means [CPU
30 in lecture providing server 4] only once immediately after
the positive result of the authentication processing is obtained,
while said control means creates a second public key [He] and a
second private key [Hd] by said public key cryptography and
then supplies said second public key [He] to said authentication
communication means[.]
(Emphasis added.)
Appellants’ arguments against the rejection are unpersuasive because
they do not accurately reflect the meaning of the above claim language.
Appellants, for example, argue that
immediately after a positive result of the identification of the
student based upon human body characteristics, the first private
and first public keys are supplied only once to the
authentication communication means. The authentication
communication means is configured to be able to create and
register cryptographic keys for the student only once
immediately after the student is authenticated as a registered
student by the fingerprint comparison. Publ. App. par. [0049].
(Br. 13.) This argument is unpersuasive for a number of reasons. First, the
claim language does not apply the phrase “only once” to the first private key
and the first public key; that phrase refers to only the first public key.
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Second, the claim language does not recite supplying a key only once to the
authentication communication means; it recites supplying a key only once
from the authentication communication means to the control means. Third,
Appellants’ reliance on paragraph [0049] is misplaced because it discusses
creating and registering keys, not supplying keys. It is improper to read
limitations from the Specification into the claims. In re Zletz, 893 F.2d 319,
321-22 (Fed. Cir. 1989).
The arguments directed to Ganesan similarly reflect an incorrect claim
interpretation. A first such argument is that “neither of these descriptions
[relied on by the Examiner] in Ganesan can be said to mean ‘creat[ing] a
first public key and a first private key . . . only once immediately after the
positive result of the authentication processing is obtained,’ as recited in
claim 1.” (Br. 14)(emphasis added). As noted above, the “only once” claim
language refers to only the first public key, and more specifically refers to
supplying rather than creating that key.
A second such argument is that “[t]here is no suggestion in either
citation that Ganesan is suggesting the authentication through cryptographic
keys is done only once after authentication processing has been
accomplished, as in claim 1” (id. at 14)(emphasis added). The claim
language does not apply the “only once” term to authentication using
cryptographic keys. Instead, the claim applies the “only once” term to
supplying the first public key from the authentication communication means
to the control means. Also, to the extent Appellants are suggesting that the
phrase “supplies said first public key to said control means” in the “wherein”
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paragraph refers to supplying data encrypted using the first public key, we
do not agree. It is clear from claim 1’s recitation (in the fourth paragraph)
that “said control means encrypts predetermined information with said first
public key” that the term “first public key” refers to the key itself rather than
to data encrypted therewith.
Appellants also argue that Ganesan, in stating that “it may be
desirable to limit the utilization of the present invention to temporary key
distribution” (col 13, ll. 3-5), “is simply discussing an alternative
implementation of his method wherein there is no suggestion of limiting the
respective keys to only being generated once.” (Br. 15)(emphasis added).
However, the claim language at issue concerns supplying a key, not
generating a key.
Because for the foregoing reasons Appellants have failed to persuade
us of error in the Examiner’s conclusion that the language at issue in the
“wherein” clause of claim 1 does not read on the combined teachings of
Kharon and Ganesan, we sustain the rejection of claim 1. For the same
reasons, we sustain the rejection of the other independent claims (viz.,
claims 3, 5, 10-12, and 17), as to which Appellants (Br. 16) rely on their
claim 1 arguments, and the rejection of dependent claims 7-9 and 13-16,
which are not separately argued. In re Nielson, 816 F.2d 1567, 1572 (Fed.
Cir. 1987).

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DECISION
The rejection of claims 1, 3, 5, and 7-17 under 35 U.S.C. § 103(a) for
obviousness over Kharon in view of Ganesan is sustained.
The Examiner’s decision that claims 1, 3, 5, and 7-17 are unpatentable
is therefore affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).
AFFIRMED

KIS

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