Ex Parte 7778440 et al

Patent Trial and Appeal Board

Aug 7, 2017

90013255 (P.T.A.B. Aug. 7, 2017)

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.
90/013,255 06/09/2014 7778440 062019-8972.0002 9146
25883 7590 08/08/2017
HOWISON & ARNOTT, L.L.P
P.O. BOX 741715
DALLAS, TX 75374-1715
EXAMINER
WEAVER, SCOTT LOUIS
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/08/2017 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 MYPORT IP, INC.
Patent Owner and Appellant
____________

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United States Patent 7,778,440 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and DENISE M. POTHIER,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

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DECISION ON APPEAL
Patent Owner appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s
decision to reject claims 1–24, 27–36, 38, 39, 41–47, 49, and 50. Claims 25,
26, 37, 40, and 48 were cancelled. Br. 6–7.1,2 We have jurisdiction under 35
U.S.C. §§ 134 and 306, and we heard the appeal on July 26, 2017. We
affirm.

STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on May 23, 2014, of United States Patent No. 7,778,440 B2 (“the ’440
patent”), issued to Michael F. Malone on August 17, 2010.
The ’440 patent describes an apparatus for acquiring information that
is transmitted to a receiving facility. A capture device captures information
that is then associated with a representation of the capture’s date and time to
form augmented captured information. The augmented captured information
is placed in association with subscriber information in a transmission of the
augmented captured information to a receiving facility requiring such
subscriber information. The invention also includes a transmitter for

1 Although a proposed amendment was filed on July 21, 2017—after the
Board assumed jurisdiction in this appeal—, that proposed amendment has
not been entered. See 37 C.F.R. § 41.33(b) (indicating amendments may be
admitted). Therefore, we decide this appeal solely on the basis of the claims
as presented in the Appeal Brief.
2 Throughout this opinion, we refer to (1) the Examiner’s Final Office
Action mailed August 14, 2015 (“Final Act.”); (2) the Appeal Brief filed
February 15, 2016 (“Br.”); and (3) the Examiner’s Answer mailed April 19,
2016 (“Ans.”).
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transmitting the augmented captured information and subscriber information
to the receiving facility and an encryptor for encrypting the augmented
captured information. See generally ’440 patent, Abstract. Claims 1 and 30
are illustrative of the invention and are reproduced below:
1. A cell phone for acquiring information to be transmitted
to a receiving facility and for transmitting such thereto,
comprising:
a capture device for capturing the information;
a stamping device for associating with the captured
information a representation of the date and time of the capture
of the information, such that said representation of the date and
time information in association with the captured information
forms augmented captured information;
a data processing unit for placing the augmented captured
information in association with subscriber information in a
transmission of the augmented captured information to a
receiving facility requiring such subscriber information; and
a transmitter for transmitting said transmission including
the augmented captured information and the subscriber
information to said receiving facility.

30. A cell phone for acquiring information to be transmitted
to a receiving facility and for transmitting such thereto,
comprising:
a capture device for capturing the information from a first
medium where information varies in real time and converting it
to time invariant information in a second media;
a stamping device for associating with the captured
information a representation of the date and time of the capture
of the information, such that said representation of the date and
time information in association with the captured information
forms augmented captured information;
a data processing unit, the data processing unit:
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encrypting the augmented captured information as
encrypted augmented captured information,
adding identifying information to the encrypted
augmented captured information to provide an identifiable
encrypted file, wherein the identifying information identifies
the party claiming to have created the augmented captured
information for later identification of such,
placing the identifiable encrypted file including the
augmented captured information in association with subscriber
information in a transmission of the identifiable encrypted file
including the identifiable encrypted file that includes the
augmented captured information to a receiving facility
requiring such subscriber information; and
a transmitter for transmitting said transmission including
the identifiable encrypted file and the subscriber information to
said receiving facility.

RELATED PROCEEDINGS
This appeal is said to be related to two pending proceedings: (1) a
civil action involving the ’440 patent that has been stayed, and (2) an ex
parte reexamination proceeding (90/013,265) involving related U.S. Patent
No. 8,068,638. Br. 6. The related reexamination proceeding is currently on
appeal (Appeal No. 2017-007174).

THE REJECTIONS
The Examiner provisionally rejected claims 20–24, 27–36, 38, 39,
41–47, 49, and 503 on the ground of nonstatutory double patenting as

3 Although the Examiner includes cancelled claims 25, 26, 37, 40, and 48 in
this rejection, we nonetheless present the correct claim listing here for
clarity, and deem the Examiner’s errors in this regard harmless.
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unpatentable over claims 35–65 of copending Application 90/013,265. Final
Act. 3.4
The Examiner rejected claims 30–36, 38, 39, 41–47, 49, and 50 under
35 U.S.C. § 112(a) or 35 U.S.C. § 112, first paragraph (pre-AIA) as failing
to comply with the written description requirement. Final Act. 4–6; Ans. 2.
The Examiner rejected claims 21–24,5 30–36, 38, 39, 41–47, 49, and
50 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112, second paragraph (pre-
AIA) as indefinite. Final Act. 6–7; Ans. 2.
The Examiner rejected claims 1–4, 6–9, 12, 14–16, 18–20, and 27–29
under 35 U.S.C. § 103(a) as unpatentable over Yoshida (EP 0 905 966 A2;
Mar. 31, 1999) and Davis (WO 01/52178 A1; July 19, 2001). Final Act. 8–
12; Ans. 2.
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Yoshida, Davis, and Hayhurst (WO 99/01859 A1; Jan. 14,
1999). Final Act. 12; Ans. 2.
The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Yoshida, Davis, and MacDonald (US 5,732,354; Mar. 24,
1998). Final Act. 12–13; Ans. 3.

4 Although the Examiner does not include this rejection in the listing on
pages 2 to 4 of the Answer, the Examiner nevertheless does not indicate its
withdrawal under the appropriate subheading. See Ans. 2 (noting that every
ground of rejection in the Examiner’s Final Office Action is maintained
except for those listed under a subheading indicating their withdrawal).
Accordingly, we presume that the claims remain so rejected on appeal.
5 Although the Examiner includes cancelled claims 25 and 26 in this
rejection (Final Act. 6; Ans. 2), we nonetheless present the correct claim
listing here for clarity and deem the Examiner’s error in this regard as
harmless.
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The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Yoshida, Davis, and Kinnunen (US 2001/0018349 A1;
Aug. 30, 2001). Final Act. 13–14; Ans. 3.
The Examiner rejected claims 13 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Yoshida, Davis, and Ackley (US 6,212,401 B1; Apr. 3,
2001). Final Act. 14; Ans. 3.
The Examiner rejected claims 21–24, 30–36, 38, 39, 41–47, 49, and
50 under 35 U.S.C. § 103(a) as unpatentable over Yoshida, Davis, and
Alfred J. Menezes et al., HANDBOOK OF APPLIED CRYPTOGRAPHY (1996)
(“Menezes”). Final Act. 15–18; Ans. 3.
The Examiner rejected claims 1–12, 14–16, 18, and 19 under
35 U.S.C. § 102(e) as anticipated by Vataja (US 7,617,542 B2; Nov. 10,
2009). Final Act. 19–27; Ans. 3.
The Examiner rejected claims 13 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Vataja and Ackley. Final Act. 27–28; Ans. 3.
The Examiner rejected claims 20–24, 30–36, 38, 39, 41–47, 49, and
50 under 35 U.S.C. § 103(a) as unpatentable over Vataja and Menezes.
Final Act. 28–32; Ans. 3–4.

THE PROVISIONAL DOUBLE PATENTING REJECTION
The Examiner’s provisional double patenting rejection of claims
20–24, 27–36, 38, 39, 41–47, 49, and 50 (Final Act. 3) is uncontested.
Nevertheless, we decline to reach this provisional rejection. See Ex parte
Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential); see also Ex
parte Jerg, No. 2011-000044, 2012 WL 1375142, at *3 (BPAI 2012)
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(expanded panel) (informative) (“Panels have the flexibility to reach or not
reach provisional obviousness-type double-patenting rejections.”).

THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that independent claim 30 fails to comply with
the written description requirement because, among other things, the original
Specification does not mention the recited “medium” nor describe what the
recited “time invariant information” encompasses. Final Act. 4; Ans. 5–6.
The Examiner adds that the original disclosure also does not support placing
the identifiable encrypted file in association with subscriber information in a
file transmission to a receiving facility as claimed. Final Act. 4–5.
According to the Examiner, the user’s identity and document certificates are
embedded in the file, but are not added to an already-encrypted file. Id.;
Ans. 6. The Examiner adds that it is also unclear whether the recited party
claiming to have created the augmented captured information is the
subscriber. Final Act. 5–6; Ans. 6.

ISSUE
Has the Examiner erred in rejecting claim 30 under § 112, first
paragraph by finding that Appellant’s original disclosure does not convey
with reasonable clarity that Appellant possessed (1) a capture device for
capturing information from a first medium where information varies in real
time and converting it to time invariant information in a second medium; (2)
the added identifying information identifies the party claiming to have
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created the augmented captured information; and (3) the recited placement
function?

ANALYSIS
As noted in our issue statement, the written description requirement
requires that Appellant’s original disclosure—a disclosure that is not
necessarily reflected in an issued patent whose content is subject to change
during prosecution of its corresponding application—reasonably conveys
possession of the claimed invention to an ordinarily skilled artisan.
Therefore, Appellant’s reliance on the ’440 patent’s disclosure to show
written description support for the disputed limitations (Br. 43–49), while
relevant, is nevertheless not dispositive because these citations do not
necessarily reflect the ’440 patent’s original disclosure, namely, that of its
underlying application, Serial No. 11/679,533 filed February 27, 2007 (“the
’533 application”). We, therefore, refer to the ’533 application in
connection with the written description rejection unless otherwise indicated.6
Turning to the rejection, we find no error in the Examiner’s written
description rejection of claim 30, at least with respect to the capture device
limitation in the claim’s first clause. As noted above, that clause recites a
capture device for capturing information from a first medium where
information varies in real time, and conversion to time invariant information
in a second media.

6 Although the ’533 application is a continuation of various applications,
including parent Application 10/674,910 filed September 29, 2003, we
nonetheless refer to the ’533 application. All citations to the ’533
application are to its Specification unless otherwise indicated.
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Notably, the ’533 application does not use the terms “first medium”
and “time invariant information” explicitly as the Examiner indicates. Final
Act. 4. But the written description requirement under § 112 does not
demand any particular form of disclosure or require a verbatim recitation.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010)
(en banc) (citations omitted). Nevertheless, a description that merely
renders the invention obvious does not satisfy the requirement. Id.
The ’533 application specification explains that a capture device 102
can capture an image 104 that can be any type of scene or any type of
information that is captured, including a video segment, audio segment, or
still picture. See ’533 application ¶ 10. According to Appellant, in any type
of scene, all information is real-time and must vary from moment to
moment. Br. 43. But when this real-time information is captured, it is then
said to be “fixed” on a medium in time—even if the captured information is
video. See Br. 43 (noting that a video image is a sequence of still images
fixed in time when captured).
But even if we were to accept this unsupported contention that
information is “time variant” before it is captured, skilled artisans would still
have to infer this fact from the ’533 application to show possession of that
feature—an inference that is, at best, speculative and unsubstantiated on this
record. Notably, information on one medium can be static before it is
captured on a different medium (e.g., taking a picture of printed words on a
piece of paper). But leaving this fact aside, to the extent that Appellant
contends that (1) all information is somehow “time variant” at some
unspecified level simply because it exists in the environment outside a
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capture device, and (2) skilled artisans would infer this fact from the ’533
application to show possession of that aspect of the claimed invention (see
Br. 43), such a contention simply strains reasonable limits on this record.
And even assuming, without deciding, that skilled artisans could
somehow draw such an inference from the ’533 application as Appellant
seems to suggest (an assumption that is unsubstantiated on this record), such
an inference would, at best, render obvious the existence of “time-variant”
information that is captured and converted to “time-invariant” information as
claimed. Obviousness, however, does not satisfy the written description
requirement. See Ariad, 598 F.3d at 1352.
So even if skilled artisans could somehow infer from the ’533
application that information varies in real time before it is captured, skilled
artisans must also infer from this disclosure that capturing such “time
variant” information converts it to “time invariant information” on a
different medium. Again, such inferences are not only unsubstantiated on
this record, at best, they implicate obviousness: an implication that does not
satisfy the written description requirement. See id.
We reach a different finding, however, regarding the recited function
of “placing the identifiable encrypted file including the augmented captured
information in association with subscriber information in a transmission” to
a receiving facility as claimed. As paragraph 35 of the ’533 application
explains, identifying information is added to a doubly-encrypted file, and the
file is encrypted again under the storage facility’s public key. This triply-
encrypted file is then transmitted to the storage facility that, among other
things, (1) removes the outer wrapper; (2) extracts an encrypted file and
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plain-text subscriber identification; (3) looks up the subscriber information;
and (4) recovers the subscriber’s public key. ’533 application ¶ 38.
Our emphasis underscores the two key subscriber-based elements in
this process: (1) a subscriber identification that is extracted from the
received triply-encrypted file, and (2) subscriber information that is then
looked up to recover the subscriber’s public key. Given this functionality,
skilled artisans would understand that the identifying information that is
added to the encrypted augmented information in claim 30 is that of the
subscriber, namely, the subscriber identification that is later extracted to
recover the subscriber’s public key. Accord Br. 40, 49 (noting this point).
Notably, this extracted subscriber identification is then used to look up
subscriber information to recover the subscriber’s public key. See ’533
application ¶ 38.
Given this essential relationship between the subscriber identification
and the subscriber information, the very act of adding the subscriber
identification to the doubly-encrypted file in paragraph 35 of the ’533
application effectively places the identifiable encrypted file at least in
association with subscriber information. This disclosure then, considered in
light of the functionality described in paragraphs 27 to 44 of the ’533
application, reasonably supports placing an identifiable encrypted file at
least in association with subscriber information in a transmission to a
receiving facility requiring such subscriber information as claimed. Accord
Br. 44–49 (describing this functionality in corresponding passages of the
’440 patent).
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We reach a similar finding regarding the recited identifying
information that identifies the party claiming to have created the augmented
captured information for later identification. Despite the Examiner’s
uncertainty regarding whether this party is the subscriber (see Final Act. 5;
Ans. 6), paragraph 35 of the ’533 application explains that the storage
facility can (1) open the outer wrapper and discover an identifier of the party
who claims to have created the file, and (2) look up the public key of the
party claiming to be the author of the file. Based on this functionality when
read in light of the disclosure, skilled artisans would understand that this
party could be the subscriber, but need not be the subscriber.
Nevertheless, for the reasons noted previously, we find no error in the
Examiner’s written description rejection of claim 30 with respect to the
capture device limitation in the claim’s first clause. Therefore, we are not
persuaded that the Examiner erred in rejecting independent claim 30, and
claims 31–36, 38, 39, 41–47, 49, and 50 not argued separately with
particularity.

THE INDEFINITENESS REJECTION7
The Examiner concludes that claims 21 and 36 are indefinite because
no antecedent basis exists for “the encrypted augmented information” and
similar terminology. Final Act. 6. Claim 23 is also said to be indefinite
because it ostensibly “creates confusion with claim 21 by reciting ‘the first

7 Although the Examiner articulates a separate indefiniteness issue for claim
26 (Final Act. 6), this claim has been cancelled. Therefore, this issue is not
before us.
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and second layer augmented information’ which may be intended to refer
back directed to ‘the augmented captured information’ in claim 21.” Id.
Claims 30–36, 38, 39, 41–47, 49, and 508 are also said to create “similar
confusion” due to the claims’ inconsistent terminology—inconsistencies
involving, among other things, references to “subscriber information” as
various “identifying information.” Id. at 6–7.
The Examiner adds that claim 24 is likewise indefinite because the
proffered support for the recited sequence involving the receiving facility
does not recite a third party’s public key as claimed. Id. at 6. The Examiner
also finds that the terms (1) “it” and “such” in claim 30; (2) “the identifiable
information” in claim 36; and (3) “said email server” in claim 49 lack
antecedent basis and, therefore, render those claims indefinite. Id. at 6–7.
Appellant argues that the Examiner’s indefiniteness rejection of
claims 21–24, 30–36, 38, 39, 41–47, 49, and 50 refers to the Examiner’s
confusion regarding the way in which encrypted was defined. Br. 49.
Appellant adds that the third party’s public key refers to that described in
column 9, lines 29 and 30 of the ’440 patent. Id.

ISSUE
Has the Examiner erred in rejecting 21–24, 30–36, 38, 39, 41–47, 49,
and 50 under § 112, second paragraph as indefinite? This issue turns on

8 Although the Examiner discusses claims 30–50 in this regard (Final Act.
6), we nevertheless omit cancelled claims 37, 40, and 48 for clarity and
deem the Examiner’s error harmless. We do the same for Appellant’s
associated arguments.
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whether ordinarily skilled artisans would understand what is claimed when
the claims are read in light of the Specification of the ’533 application.

ANALYSIS
Claims 21 and 22
We will not sustain the Examiner’s indefiniteness rejection of claim
21 reciting, in pertinent part, “the encrypted augmented information”—a
limitation that is said to lack antecedent basis due to the first instance of
twice-encrypted information in the claim. Final Act. 6. Despite claim 21’s
somewhat inartful reference to “the encrypted augmented information” in
connection with twice-encrypted information and once-encrypted
information in claim 20 from which claim 21 depends, skilled artisans would
nevertheless understand that “encrypted augmented information” interpreted
in light of the Specification refers to augmented captured information that
has been encrypted—regardless of the number of encryptions.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
claim 21 as indefinite, and (2) dependent claim 22 for similar reasons.

Claim 23
We will also not sustain the Examiner’s indefiniteness rejection of
claim 23 reciting, in pertinent part, “the first and second layer encrypted
augmented information.” Our emphasis underscores the inconsistency in
this terminology compared to that used in claims 21 and 20 from which
claim 23 depends that lack this particular “first and second layer”
designation. Nevertheless, despite this inconsistency, skilled artisans would
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understand that “the first and second layer encrypted augmented
information” in claim 23 refers to twice-encrypted information in claim 21
when interpreted in light of the Specification. As paragraph 35 of the ’533
application explains, identifying information is added to a doubly-encrypted
file, and that file is encrypted again under the storage facility’s public key.
When interpreted in light of this disclosure, then, “the first and second layer
encrypted augmented information” in claim 23 does not render that claim
indefinite.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 23 as indefinite.

Claim 24
We will also not sustain the Examiner’s indefiniteness rejection of
claim 24 reciting the third layer asymmetrical encryption algorithm utilizes a
third party’s public key, which is presumably that of the storage facility. See
Br. 49 (referring to the facility’s public key in connection with claim 24).
As paragraph 35 of the ’533 application explains, identifying
information is added to a doubly-encrypted file, and the file is encrypted
again under the storage facility’s public key. Given this disclosure, skilled
artisans would understand that the storage facility can constitute a third party
and, therefore, its public key would be that of a third party.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 24 as indefinite.

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Claims 30–36, 38, 39, and 49
We will, however, sustain the Examiner’s indefiniteness rejection of
independent claims 30, 49, and dependent claim 36. See Final Act. 6–7
(noting ambiguities in connection with recited terms “such” and “it” in claim
30, and the lack of antecedent basis for certain terms in claims 36 and 49).
Notably, Appellant does not squarely address—let alone persuasively
rebut—these findings. See Br. 49.
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 30, 36, and 49 as indefinite, and claims 31–35, 38, and 39 not argued
separately with particularity.

Claims 41–47 and 50
We will not, however, sustain the Examiner’s indefiniteness rejection
of claims 41–47 and 50. These claims are a subset of claims 30–36, 38, 39,
41–47, 49, and 50 that are said to create “similar confusion” due to the
claims’ inconsistent terminology—inconsistencies involving, among other
things, references to “subscriber information” as various “identifying
information.” See Final Act. 6–7.
We address only claims 41–47 and 50 here because the Examiner’s
additional “similar confusion” finding is cumulative to the other
indefiniteness grounds noted previously in connection with claims 30–36,
38, 39, and 49—the rejection of which we sustained.
Nevertheless, we do not find that the terminology of claims 41–47 and
50, while somewhat inartful, renders those claims indefinite when
interpreted in light of the Specification for the reasons previously discussed.
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Therefore, we are persuaded that the Examiner erred in rejecting
claims 41–47 and 50 as indefinite.

THE OBVIOUSNESS REJECTION OVER YOSHIDA AND DAVIS
Regarding claim 1, the Examiner finds that Yoshida’s cell phone
comprises, among other things, (1) capture and stamping devices, and (2) a
data processing unit for placing captured information in association with
subscriber information, namely, user information in the form of an identifier
in the “FROM” field associated with an email transmission to a receiving
facility. Final Act. 8; Ans. 7–8. This identifier-based “subscriber
information” is said to be required by the receiving facility to receive the
email and communicate with the sender. Final Act. 8; Ans. 8.
Although the Examiner acknowledges that Yoshida does not explicitly
associate the date and time with the captured information to form augmented
captured information, the Examiner cites Davis as teaching this feature in
concluding that the claim would have been obvious. Final Act. 8–9.
Appellant argues that the Examiner’s reliance on Yoshida’s email-
based process in Figure 13 for teaching the recited subscriber information
association is flawed because the associated “MAIL” command’s “FROM”
field, according to the Simple Mail Transfer Protocol (SMTP) used in
Yoshida, provides no authentication, but rather merely informs the email
server how to communicate with the sender. Br. 50–53. As such, Appellant
contends, Yoshida’s “FROM” field does not describe any subscriber
function that is required by the receiving facility to further process the
received data. Br. 53, 57–58.
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ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Yoshida and Davis collectively would have taught or suggested a data
processing unit for placing augmented captured information in association
with subscriber information in a transmission of the augmented captured
information to a receiving facility requiring such subscriber information?

ANALYSIS
We begin by construing the key disputed limitation of claim 1 that
recites, in pertinent part, “subscriber information.” The ’440 patent does not
define the term “subscriber information.” The term, however, is described
in the context of key recovery, namely that plain-text subscriber information
is looked up to recover the subscriber’s public key. See ’440 patent col. 9,
ll. 27–28.
Although this description of “subscriber information” informs our
understanding of the term in the context of the disclosed invention, it is by
no means limiting. Under its plain meaning, a “subscriber” is “[a] user or
other entity which has been authorized to utilize or receive one or more
services. For example, a user who has paid for access to the Internet,
telephone service, or satellite channels.” Steven M. Kaplan, WILEY
ELECTRICAL & ELECTRONICS ENGINEERING DICTIONARY 755 (2004)
(emphasis added). Another technical dictionary defines “subscriber” as “[a]
user who is authorized to use one or more services of an office automation
system.” IBM DICTIONARY OF COMPUTING 659 (10th ed. 1994) (emphasis
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added). Notably, both definitions indicate that a subscriber is an authorized
user.
Given these definitions, we broadly, but reasonably, interpret
“subscriber information” as any information associated with a user who is
authorized to use a particular service. Therefore, we see no error in the
Examiner’s reliance on the user’s identifying information in the “FROM”
field of the “MAIL” command associated with the SMTP-based email
message9 in Yoshida’s paragraph 233 and Figure 13 as corresponding to the
recited “subscriber information.” Final Act. 8; Ans. 7–8. This identifying
information at least implicitly indicates that the user is authorized to use an
email service—a mode of communication that can be used to send images as
the Examiner indicates. Final Act. 8.
Therefore, not only would this identifier in the “FROM” field at least
assist in identifying the subscriber, but that particular subscriber information
would also at least contribute to ensuring that images associated with the
subscriber are delivered to a receiving facility via email. So even assuming,
without deciding, that the “FROM” field is not used for authentication as
Appellant contends (Br. 53), the receiving facility nonetheless requires this
particular identifier-based subscriber information in this field to ensure
images associated with the subscriber are delivered via email should that
transmission function be used. Accord Ans. 8 (noting that information in the

9 Although Yoshida does not articulate the particulars of this “FROM” field,
it is nonetheless a standard field associated with a “MAIL” command under
SMTP as Appellant indicates—the very protocol used in Yoshida. See Br.
52–53 (explaining the format and function of the SMTP’s “MAIL”
command); see also Yoshida ¶ 237.
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“FROM” field is required by the receiving facility to receive the email and
communicate with the sender). That step S591 is actually labeled a
connection requirement in Yoshida’s Figure 13 is telling in this regard, as is
Appellant’s acknowledgment that the “FROM” field is required to interface
with an SMTP server (Br. 53).
Appellant’s arguments to the contrary (Br. 50–53, 57–58) are
unavailing. To the extent that Appellant contends that the receiving facility
in claim 1 requires subscriber information for authentication (see Br. 53), no
such requirement is recited in claim 1. Accord Ans. 8 (noting this point).
Nor will we import a particular authentication-based requirement into the
claim. In short, Appellant’s arguments in this regard are not commensurate
with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2–4, 6–9, 12, 14–16, 18–20, and 27–29 not argued
separately with particularity.

THE REJECTION OVER YOSHIDA, DAVIS, AND MENEZES
We also sustain the Examiner’s rejection of claim 23 that depends
from claim 21. Claim 21 depends from claim 20 that depends from claim 1.
Claim 23 recites, in pertinent part, that the data processing system (1) adds
particular identifying information to the first and second layer encrypted
augmented information, and then (2) further encrypts the layers of encrypted
augmented information with the added identifying information with a third
layer of encryption with an asymmetrical encryption algorithm.
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Despite Appellant’s arguments to the contrary (Br. 59–60), Appellant
does not persuasively rebut the Examiner’s reliance on Menezes for at least
suggesting the recited encryption sequence given Menezes’ (1) triple
encryption in Figure 7.2(b) and pages 234 to 237; (2) encrypting data
asymmetrically and/or symmetrically (Menezes 15, 283); and (3) adding
identifying information to a message via digital signatures before
transmission (Menezes 22–23). See Final Act. 15–16 (citing these pages
from Menezes).
Appellant’s contention that Menezes does not disclose a sequence that
first uses double-layer encryption of augmented captured information
followed by signing and encryption (Br. 59–60) is unavailing. First, claim
23 does not recite signing, and Appellant’s arguments in that regard are,
therefore, not commensurate with the scope of the claim. Second, Appellant
does not squarely address—let alone persuasively rebut—the Examiner’s
above-noted reliance on Menezes for at least suggesting creating digital
signatures that identify the sender of information, and binding that
information to the message before transmission, and that such an addition to
twice-encrypted data would have been obvious to those of ordinary skill in
the art. See Final Act. 15–16.
On this record, we see no reason why the recited identifying
information could not be added at any level before encryption, including
adding that information to data that was previously encrypted twice, such as
after the second encryption in Menezes’ triple encryption scheme in Figure
7.2(b). Given the limited number of possibilities to add identifying
information to data in Menezes’ triple encryption scheme in Figure 7.2(b), it
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would have been obvious to try this finite number of identified predictable
solutions, including adding the recited identifying information after the
second encryption, but before the third. See KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 421 (2007). Moreover, encrypting the twice-encrypted data
asymmetrically as claimed likewise would have been an obvious variation
given the finite number of identified predictable solutions in this regard,
namely, encrypting data asymmetrically, symmetrically, or both. See
Menezes 15, 234, 283; see also Final Act. 15–16.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 23, and claims 21, 22, 24, 30–36, 38, 39, 41–47, 49, and 50 not argued
separately with particularity.10

THE OTHER OBVIOUSNESS REJECTIONS BASED ON YOSHIDA
AND DAVIS
We also sustain the Examiner’s obviousness rejections of claims 5,
10, 11, 13, and 17 over Yoshida and Davis combined with other references.
Final Act. 12–14. Despite nominally arguing these claims separately,
Appellant reiterates similar arguments made previously, and alleges that the
additional cited references fail to cure those purported deficiencies. See Br.
58–59. We are not persuaded by these arguments for the reasons previously
discussed.

10 Although Appellant nominally argues claims 30, 41, 49, and 50
separately, the arguments are similar to those raised in connection with
claim 1. See Br. 60. Therefore, we are unpersuaded by these arguments for
the reasons previously discussed.
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THE REJECTIONS BASED ON VATAJA
Because our decision is dispositive regarding patentability of all
appealed claims based on the foregoing prior art references, we need not
reach the merits of the Examiner’s anticipation and obviousness rejections
based on Vataja. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed.
Cir. 1984) (approving ITC’s determination based on a single dispositive
issue, and not reaching other issues not decided by the lower tribunal).

CONCLUSION
The Examiner did not err in rejecting claims 30–36, 38, 39, 41–47, 49,
and 50 under § 112, first paragraph.
Under § 112, second paragraph, the Examiner erred in rejecting
claims 21–24, 41–47, and 50, but did not err in rejecting claims 30–36, 38,
39, and 49.
The Examiner did not err in rejecting claims 1–24, 27–36, 38, 39,
41–47, 49, and 50 under § 103 as obvious over Yoshida and Davis alone and
combined with other references.
We do not reach (1) the Examiner’s rejections of claims 1–24, 30–36,
38, 39, 41–47, 49, and 50 based on Vataja alone and combined with other
references, and (2) the Examiner’s provisional double patenting rejection of
claims 20–24, 27–36, 38, 39, 41–47, 49, and 50.

DECISION
The Examiner’s decision to reject claims 1–24, 27–36, 38, 39, 41–47,
49, and 50 is affirmed. Because the rejection of each appealed claim is
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affirmed on at least one of the grounds specified in the Office Action from
which the appeal was taken, the Examiner’s decision to reject these claims is
affirmed. See 37 C.F.R. § 41.50(a)(1).
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

msc

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