Ex Parte Enenkiel

Patent Trial and Appeal BoardOct 16, 2012

11165342 (P.T.A.B. Oct. 16, 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. 11/165,342 06/24/2005 Achim Enenkiel 07781.0244-00 3529 60668 7590 10/16/2012 SAP / FINNEGAN, HENDERSON LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER LIU, HEXING ART UNIT PAPER NUMBER 2167 MAIL DATE DELIVERY MODE 10/16/2012 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ACHIM ENENKIEL ____________________ Appeal 2010-004436 Application 11/165,342 Technology Center 2100 ____________________ Before: JOSEPH L. DIXON, CARLA M. KRIVAK, and CAROLYN D. THOMAS, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004436 Application 11/165,342 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from a rejection of claims 1, 2, 5-12, 15, and 16. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. The claims are directed to computer systems and data processing methods for using a web service. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer system, comprising: at least one memory device for storing executable program instructions; and at least one processor for executing the program instructions to: generate a request from a first party, the request containing request parameter data to be processed by a web service; generate a Home Banking Computer Interface (HBCI) message containing the request parameter data in response to the request and digitally sign the HBCI message using a private key of the first party; transmit the signed HBCI message to a second party, wherein the second party digitally signs the HBCI message using a private key of the second party after the signature of the first party is verified; generate a first Simple Object Access Protocol (SOAP) envelope containing the HBCI message digitally signed by the first party and the second party; send the first SOAP envelope to the web service; and provide to the first party a second SOAP envelope containing a web service response from the web service. Appeal 2010-004436 Application 11/165,342 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ananian Boylan Fletcher US 2003/0028451 A1 US 2003/0028484 A1 US 2003/0135628 A1 Feb. 6, 2003 Feb. 6, 2003 July 17, 2003 Keenan US 7,342,918 B2 Mar. 11, 2008 REJECTIONS Claims 1, 2, 5-9, 11, 12, 15, and 16 stand rejected under 35 U.S.C Â§ 103(a) as being unpatentable over Boylan, Fletcher, and Keenan. (Ans. 3- 10.) Claim 10 stands rejected under 35 U.S.C Â§ 103(a) as being unpatentable over Boylan, Fletcher, Keenan, and Ananian. ANALYSIS Appellant argues that the combination of Boylan in view of Fletcher and Keenan does not teach or fairly suggest the limitations "digitally sign the HBCI message using a private key of the first party; transmit the signed HBCI message to a second party, wherein the second party digitally signs the HBCI message â€¦ after the signature of the first party is verified" (claim 1). (App. Br. 15-19; Reply Br. 2). We agree with Appellant that each of the three individual references does not teach or fairly suggest the above claim limitation since none of the individual three references or the combination teach or fairly suggest signing the same message (HBCI). Nor has the Examiner expressly addressed the noted deficiency which Appellant has Appeal 2010-004436 Application 11/165,342 4 repeatedly identified in each of the three references applied. Therefore, we further agree with Appellant that the rejection is based upon improper hindsight reconstruction in the combination of the three prior art references (App. Br. 19-20). Therefore, we cannot sustain the obviousness rejection of independent claim 1 and dependent claims 2 and 5-7. Since each of the independent claims 8, 9, 11, and 16 contains similar limitations as independent claim 1, we cannot sustain the rejection of these claims and their respective dependent claims 12 and 15. Additionally, the Examiner has not identified how the teachings of Ananian would remedy the noted deficiency. Therefore, we cannot sustain the rejection of dependent claim 10. CONCLUSIONS OF LAW The Examiner erred in rejecting independent claims 1, 8, 9, 11, and 16 based upon the combination of Boylan in view of Fletcher and Keenan. DECISION For the above reasons, the Examinerâ€™s rejections of claims 1, 2, 5-12, 15, and 16 are reversed. REVERSED llw