Ex Parte Vaha-Sipila

Board of Patent Appeals and Interferences

May 15, 2012

10328858 (B.P.A.I. May. 15, 2012)

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.
10/328,858 12/24/2002 Antti Vaha-Sipila 800.0902.U1 (US) 7767
10948 7590 05/15/2012
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
EXAMINER
BROWN, CHRISTOPHER J
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
05/15/2012 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 ANTTI VAHA-SIPILA
____________________

Appeal 2010-002866
Application 10/328,858
Technology Center 2400
____________________

Before DENISE M. POTHIER, BRUCE R. WINSOR, and
JENNIFER S. BISK, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002866
Application 10/328,858

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SUMMARY
This is an appeal under 35 U.S.C. § 134 from the Examiner’s rejection
of claims 1-3 and 5-29. Claim 4 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
Claims 1-3, 5-9, 11-21, 23-26, 28, and 29 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Honjo (US 2002/0049912 A1;
Apr. 25, 2002) and Joshi (US 2002/0091798 A1; July 11, 2002). Ans. 3-6.1
Claims 10 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Honjo, Joshi,2 and Shinzaki (US 2002/0040350 A1; Apr.
4, 2002). Ans. 6.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Honjo, Joshi, and Salem (US 2003/0084104; May 1,
2003). Ans. 6-7.

1 Claims 7, 8, 17, and 18 are not listed in the heading of any section in
the Final Rejection, Answer, or Appeal Brief. However, the body of this
rejection explicitly refers to these claims. Final Rej. 4-6; Ans. 4-6. Also,
while claims 7, 8, 17, and 18 are not specifically mentioned in the body of
Appellant’s arguments, Appellant represents that all rejected claims are
being appealed. Br. 2. The Examiner agrees with this statement. Ans. 2.
Thus, we presume their absence from the headings was a clerical error and
we will include these claims in this rejection.
In addition, we presume that the Examiner did not intend to include
claim 27 in this rejection, even though it is included in the header, because it
is separately rejected under 35 U.S.C. § 103(a) as being unpatentable over
Honjo, Joshi, and Salem. Ans. 6-7.
2 Claim 10 depends from claim 1 and claim 22 depends from claim 29.
Thus, although the Examiner’s rejection does not actually list Joshi as a
reference in this rejection, we presume this is also a clerical error. Final Rej.
6; Ans. 6. Appellant does not make any arguments that the Examiner erred
by not including Joshi in this rejection. Br. 9-10 (stating only that “[b]ecause
independent claims 1 and 29 are allowable for the reasons described above,
claims 10 and 22 depending therefrom must also be allowable”).
Appeal 2010-002866
Application 10/328,858

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We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to a method and system for the
automatic acquisition of authentication certificates over the Internet. A
service provider transmits from the service provider to a user’s terminal
information about the kinds of certificates the service provider accepts. The
terminal then acquires that type of certificate and transmits it to the service
provider. The aim of the invention is to make the use of authentication
certificates as transparent to the user as possible and to minimize the
transmission of personally identifying information. Spec. 1-5.
Representative claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method comprising:
transmitting information about requirements for data content of
a certificate from the service to the terminal,
examining if a certificate complying with the requirements is
stored in the terminal,
if the examination indicates that a certificate complying with
the requirements is not stored in the terminal, examining from
the requirements which certificate authority is acceptable to the
service to issue a certificate,
selecting by the terminal one of the certificate authorities
included in the requirements,
acquiring the certificate from said selected certificate authority,
and transmitting the acquired certificate from the terminal to
said service,
if the examination indicates that a certificate complying with
the requirements is stored in the terminal,
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transmitting the stored certificate from the terminal to said
service.

CONTENTIONS
The Examiner finds that Honjo teaches all claim 1’s limitations,
except for including a list of acceptable certificate authorities in the
requirements. Ans. 3-4. The Examiner finds that Joshi teaches a web server
that submits a list of trusted certificate authorities. Ans. 4 (citing to Joshi ¶
[0204]). And the Examiner states that “[i]t would have been obvious to one
of ordinary skill in the art to use the certificate list of Joshi with the
certificate requirements of Honjo because it would allow the client to send
the server a certificate that was guaranteed to be trusted.” Ans. 4.
Appellant argues “that the combination of Honjo and Joshi does not
teach or suggest the selection of the certificate authority on the basis of
requirements for data content of a certificate” or that the listed trusted
authorities are analogous to “information about requirements for data
content of a certificate” as claimed. Br. 9 (emphases omitted).

ISSUE
Did the Examiner err in finding that a person of ordinary skill in the
art would have found claim 1 obvious based on the combination of Honjo
and Joshi?
ANALYSIS
We are not persuaded that the Examiner erred. The Examiner
correctly finds that Joshi teaches that a server may send a list of trusted
certificate authorities to a terminal. Ans. 8 (citing Joshi ¶ [0204]). In
addition, we find reasonable the Examiner’s conclusion that a person of
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ordinary skill in the art would find it obvious to incorporate such a list into
the server policy that Honjo describes being sent from a server to a user
(e.g., terminal). Id. (citing Honjo ¶¶ [0043], [0054]). This combination
would allow the terminal to “examin[e] from the requirements which
certificate authority is acceptable to the service to issue a certificate” and
also “select[] by the terminal one of the certificate authorities included in the
requirements” as claimed. See Ans. 3-4. This combination also predictably
yields no more than one would expect from such a combination—
transmitting information about the requirements for data content of a
certificate that includes acceptable certificate authorities to the terminal as
recited. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellant argues that “[t]he list of trusted authorities would not be
analogous to the presently claimed information about requirements for data
content of a certificate in the present independent claims.” Br. 9. However,
this does not accurately characterize the Examiner’s position. The Examiner
does not assert that the list of trusted authorities disclosed by Joshi is
analogous to the data requirements. See Ans. 8-9. Instead, as admitted by
Appellant, Examiner asserts that it is “Honjo [that] teach[es] sending a list of
requirements for a certificate.” Br. 6; see also Ans. 3. Also, as discussed
above, the combination of Honjo and Joshi teaches and suggests that the
transmitted information contains both the requirements for data content of a
certificate as disclosed in Honjo and acceptable certificate authorities as
taught by Joshi. The information transmitted to the terminal is not limited to
only a list that indicates a trusted authority, as Appellants assert. Br. 9.
Moreover, Appellant does not sufficiently explain, let alone provide
evidence to support, the assertion that the combination of Honjo and Joshi
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does not teach or suggest the recited limitations, including the terminal
selecting a certificate authority included in the requirements. Thus, we are
not persuaded that the Examiner’s rejection of representative claim 1 was
erroneous, and we sustain the Examiner’s rejection.
Appellant does not separately argue claims 2, 3, 5-9, 11-21, 23-26, 28,
and 29. Thus, we also sustain the Examiner’s rejection of these claims.
We also sustain the Examiner’s obviousness rejection of claims 10
and 22 over Honjo, Joshi, and Shinzaki. Appellant relies on the same
arguments presented for representative claim 1 to demonstrate that Honjo,
Joshi, and Shinzaki collectively fail to teach all the limitations of
representative claim 10. Br. 9-10. As discussed above, we do not find these
arguments persuasive.
Finally, Appellant has presented no arguments with respect to the
rejection of claim 27 as obvious over Honjo, Joshi, and Salem. Due to
Appellant’s failure to respond to this rejection, the rejection of claim 27 is
sustained pro forma.

DECISION
The Examiner’s decision rejecting claims 1-3 and 5-29 is 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)(iv).

AFFIRMED

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