Wu, Jianqing

Patent Trials and Appeals Board

Jun 29, 2020

15268541 - (D) (P.T.A.B. Jun. 29, 2020)

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.
15/268,541 09/17/2016 Jianqing Wu UP168989 8440
30795 7590 06/29/2020
AZ PATENT LAW FIRM
P.O. Box 689
Beltsville, MD 20704
EXAMINER
WILCOX, JAMES J
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
06/29/2020 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 JIANQING WU
Appeal 2019-002042
Application 15/268,541
Technology Center 2400
Before CARL W. WHITEHEAD JR., MICHAEL M. BARRY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 24–43. Claim 1–23 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Jianqing Wu, who is the sole inventor and current sole owner of the
application on appeal. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to an encryption synchronization method.
Appellant’s claimed method seeks to increase data security for server-based
data storage by storing encryption keys exclusively with the client device,
such that the server does maintain access to the encryption keys. By storing
encryption keys exclusively on the client device, hackers are unable to
obtain access to encrypted stored data even if they are able to compromise
the storage server. Spec. 6, ll.15–7, ll. 2.
The claimed process employs an “encrypted mark,” which is an item
of data that is known and identifiable to the client user in order to
authenticate a client to the server. As explained in the Specification, “[a]n
encryption mark is used for testing if the user knows the common encryption
key.” Spec. 25, ll. 7–8. The encrypted mark can be a specific image, a
sound file, or simply written expression such as, for example, “Encryption
Key is OK.” Spec. 25, ll. 16–25.
Claim 24 recites a process of a client setting up the encrypted mark by
selecting the mark and encrypting it using an encryption algorithm and
encryption key selected by the client. The encrypted mark is sent to the
server where it is stored in its encrypted form. When a client seeks to
authenticate to the server, the client device does so by retrieving the
encrypted mark from the server and supplying an encryption key to the
server, which is used to decrypt the encrypted mark. The resultant decrypted
mark is then compared to the original, unencrypted mark that was used to
create the encrypted mark. If the decrypted mark and the original,
unencrypted mark match, the match confirms that the client submitted the
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correct encryption key and correct encryption algorithm, and the client is
authenticated to the server.
Claim 24 is reproduced below:
24. A method for encryption synchronization and/or user
authentication, the method being used in a system comprising at
least one server and at least one client computer, both the at least
one server and the at least one client computer being connected
to a network or the Internet, the method comprising the steps of:
setting up an encrypted mark, wherein the setup step
further comprises the operational steps of (1) selecting a suitable
mark, (2) providing an encryption key, (3) sending the mark and
the encryption key to one of the at least one server, (4) encrypting
the mark with an encryption algorithm and the encryption key on
the server, and (5) saving the encrypted mark in a designed
storage location or a database on the server or the operational
steps of (1) selecting a suitable mark, (2) providing an encryption
key, (3) encrypting the mark with an encryption algorithm and
the encryption key on the client computer, (4) sending the
encrypted mark to the server, and (5) saving the encrypted mark
in a designed storage location or a database on the server; and
determining if an encryption algorithm as a current
encryption algorithm and an encryption key as a current
encryption key are the same as or compatible with the encryption
algorithm and the encryption key used to create the encrypted
mark, wherein the determining step comprises retrieving the
encrypted mark from the server, getting an encryption key stored
on the client computer or entered by a user, decrypting the
encrypted mark using the encryption key on the server to
generate a resulted mark, and comparing the resulted mark with
the mark used to create the encrypted mark, wherein, upon
receiving a confirmation of the user or a confirmation of the
client computer, or upon a determination by the server, the server
accepts the current encryption algorithm and the current
encryption key as same as the encryption algorithm and the
encryption key used to create the encrypted mark, and/or
authenticates the user.
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Application 15/268,541

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Appeal Br. 46–47 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wu US 9,449,183 B2 Sept. 20, 2016
Levi US 2007/0208803 A1 Sept. 6, 2007
Pritikin US 2008/0082821 A1 Apr. 3, 2008
Schneider US 2010/0223456 A1 Sept. 2, 2010

REJECTIONS
Claims 24–43 of the instant application are rejected under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1–23 of Wu. Final Act. 7.
Claim(s) 24, 26–32 and 35–42 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Pritikin. Final Act. 9.
Claims 25 and 43 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pritikin and Schneider. Final Act. 23.
Claims 33 and 342 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pritikin and Levi. Final Act. 25.

2 The statement of the rejection does not list claims 33 and 34, however the
body of the rejection addresses both claims. Accordingly, we consider the
omission of claim 33 and 34 from the statement of the rejection to be a
typographical error.
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ISSUES
First Issue: Has the Examiner erred in rejecting the claims for double
patenting?
Second Issue: Has the Examiner erred in finding Pritikin anticipates
claim 1?
ANALYSIS
First Issue
The Examiner rejects the pending claims for obviousness-type double
patenting based on Appellant’s previously issued U.S. Patent No. 9,449,183
B2 (“the ’183 patent”), the parent of the instant application. The Examiner
finds “[c]laims 24–43 of the instant application contain substantially similar
features of claims 1–23 of US Patent No: 9,449,183 B2 and as such a[re]
obvious variants of claims 1-23 of the patent.” Final Act. 7.
Appellant asserts the double patenting rejection is in error because the
pending claims are not obvious variants of the previously issued claims, and
in fact are substantially different. Appeal Br. 30 (“However, the subject
claimed in the parent and the subject which is claimed now are like a new
car and a special carburetor.”).
We agree the Examiner has not established double patenting in this
instance. Under the policy of the Office:
Any obviousness-type double patenting rejection should make
clear
(A) The differences between the inventions defined by the
conflicting claims — a claim in the patent compared to a claim
in the application; and
(B) The reasons why a person of ordinary skill in the art would
conclude that the invention defined in the claim at issue is
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anticipated by, or would have been an obvious variation of, the
invention defined in a claim in the patent.
MPEP § 804(II)(B)(1).
Here, the Examiner has not provided sufficient analysis setting forth
the reasons the pending claims would have been obvious over the claims of
the ’183 patent. Final Act. 7–8. The Examiner does not meaningfully
compare the limitations of the two patents, and instead makes a generalized
assertion that there are certain similarities between them. Id. The burden is
on the Examiner in the first instance to set forth sufficient evidence and
reasoning in support of the double patenting rejection. That burden has not
been met, and we do not sustain the double patenting rejection.
Second Issue
The Examiner rejects claim 24 as being anticipated by Pritikin. The
Examiner finds all of the limitations disclosed in Pritikin. Final Act. 9–11
(citing Pritikin, Figs. 2A–4, ¶¶ 13–17, 26, 40–44). Appellant generally
contends the process described by Pritikin differs fundamentally from the
claimed process because Pritikin discloses storing the same encryption key
on both the client and the server. Appeal Br. 12–14. More specifically,
Appellant argues several limitations are not disclosed in Pritikin, including
the limitation “getting an encryption key stored on the client computer or
entered by a user, decrypting the encrypted mark using the encryption key
on the server to generate a resulted mark, and comparing the resulted mark
with the mark used to create the encrypted mark.” Id. Appellant asserts that
any comparison made by Pritikin is a comparison of encrypted cipher text
generated by encrypting data with a shared encryption key. Appeal Br. 14
(citing Pritikin ¶ 31); Reply Br. 6 (citing Pritikin ¶ 41). We agree with
Appellant.
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Anticipation is a test of strict identity. Trintec Indus., Inc. v. Top-
U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002). That is, to meet the
strict identity test for anticipation, all elements must be disclosed in exactly
the same way as they are arranged or combined in the claim. Therasense,
Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). In
this instance, the Examiner’s findings fail to meet this exacting requirement.
Pritikin describes a bi-directionally authenticated connection protocol
for securely transmitting sensitive data. Pritikin ¶ 14. Pritikin discloses that
a server sends a challenge to a client in an effort to ascertain the identity of
the client. Pritikin ¶ 30. The client device encrypts the challenge using a
secret key and sends the encrypted challenge back to the server as a
challenge response. Pritikin ¶ 31. Pritikin further describes the “server may
perform the same encryption algorithm on the first challenge and may
compare the result to the first response. If the first response matches the
encrypted first challenge, then the client has been authenticated.” Id.
(reference numerals omitted). Thus, Pritikin describes comparing encrypted
data to authenticate a client. The disputed limitation, however, requires that
unencrypted data be the subject of comparison: “decrypting the encrypted
mark using the encryption key . . . to generate a resulted mark, and
comparing the resulted mark with the mark used to create the encrypted
mark.” Accordingly, Pritikin’s comparison is not the same as what is
claimed.
In the remaining paragraphs of Pritikin cited by the Examiner, Pritikin
discloses an alternate embodiment in which a client device submits a
username and password to a server for authentication purposes. Ans. 3–4
(citing Pritikin ¶¶ 40–44). In the embodiment, the client adds a nonce to the
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password and encrypts the password/nonce combination and sends it as a
challenge to the server. Pritikin ¶ 41. The server receives the encrypted
password/nonce combination and decrypts the combination using “a secret
key or stored password.” Id. However, there is no indication the key used
by the server to decrypt the password/nonce combination is “an encryption
key stored on the client computer or entered by a user” as claimed. Rather,
the key used to decrypt the password/nonce combination appears to be one
that is already stored on the server—with no indication of how it got there.
Accordingly, the decrypting performed by the server is not performed using
“an encryption key stored on the client computer or entered by user,” as
recited in claim 24, and the alternate embodiment cited by the Examiner is
not the same as what is claimed.
Because Pritikin does not identically disclose each element recited in
claim 24, we do not sustain the anticipation rejection of claim 24 under
35 U.S.C. § 102(b). For the same reasons, we also do not sustain the
rejection of independent claims 31 and 38, which, although not identical in
scope to claim 24, recite limitations commensurate to those discussed above.
We also do not sustain the rejections of the remaining claims, which are
dependent and stand together with their respective base claims.
CONCLUSION
We reverse the Examiner’s rejections.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
24–43 n/a Double Patenting 24–43
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24, 26–32
35–42
102(b) Pritikin 24, 26–32,
35–42
25, 43 103(a) Pritikin, Schneider 25, 43
33, 34 103(a) Pritikin, Levi 33, 34
Overall
Outcome
24–43

TIME PERIOD FOR RESPONSE
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).
REVERSED