Ex Parte Haber et alDownload PDFPatent Trial and Appeal BoardMay 12, 201713361064 (P.T.A.B. May. 12, 2017) Copy Citation 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. 13/361,064 01/30/2012 Stuart HABER 82839690 4668 56436 7590 05/16/2017 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 EXAMINER RUDOLPH, VINCENT M ART UNIT PAPER NUMBER 2673 NOTIFICATION DATE DELIVERY MODE 05/16/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): hpe.ip.mail@hpe.com chris. mania @ hpe. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STUART HABER and PRASAD V. RAO Appeal 2017-000820 Application 13/3 61,0641 Technology Center 2600 Before JUSTIN BUSCH, JOYCE CRAIG, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 2, 3, 5-9, 11, 13, 18, 19, and 21-29, which are all the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is Hewlett Packard Enterprise Development LP. App. Br. 1. 2 Claims 1, 4, 10, 12, 14-17, and 20 are canceled. App. Br. i (Claims Appx.). Appeal 2017-000820 Application 13/361,064 STATEMENT OF THE CASE Introduction Appellants’ application relates to creating a certificate for a digital representation of a physical document by computing a hash value using a hash function. Abstract. Claim 23 is illustrative of the appealed subject matter and reads as follows: 23. A non-transitory storage medium storing machine- readable instructions that when executed cause a system comprising a hardware processor to: receive a digital representation of a physical version of a document; and compute a new certificate for the digital representation of the physical version based on the digital representation of the physical version, a representation of an invocation of at least one operation performed to transform a different version of the document to the digital representation, and a prior certificate computed for a prior digital representation indicative of the physical version, wherein computing the new certificate comprises: forming a value by combining at least the digital representation of the physical version, the representation of the invocation of the at least one operation, and the prior certificate; and computing a hash value using a hash function applied on the value. The Examiner’s Rejections Claims 13 and 18 stand rejected under 35 U.S.C. § 102(b) as anticipated by Ishizuka et al. (US 2008/0080017 Al; Apr. 3, 2008). Final Act. 9-11. 2 Appeal 2017-000820 Application 13/361,064 Claims 2, 3, 5-9, 11, 19, and 21-29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ishizuka and Kuroda et al. (US 6,658,403 Bl; Dec. 2, 2003). Final Act. 12-28. ANALYSIS We have reviewed the Examiner’s rejections in consideration of Appellants’ contentions and the evidence of record. Appellants persuade us the Examiner fails to establish the claims are unpatentable over the cited prior art. Claim 23 The Examiner finds the combination of Ishizuka and Kuroda teaches or suggests “forming a value by combining at least the digital representation of the physical version, the representation of the invocation of the at least one operation, and the prior certificate,” as recited in claim 23. Final Act. 21; Ans. 4-7. In particular, the Examiner finds Ishizuka teaches assigning a document index ID to a scanned version of an edited hard copy of a document (“forming a value”). Ans. 4 (citing Ishizuka 37). The original hard copy of the document has a separate, different document index ID that is extracted during scanning (“prior certificate”). Id. The Examiner finds Ishizuka teaches each document index ID is associated with information indicating whether an electronic document is a scanned version of a hard copy document (“digital representation of the physical version”). Id. (citing Ishizuka 138). The Examiner finds Ishizuka further teaches the scanned version includes an indication that it is a finalized version of the document (“representation of the invocation of the at least one operation”). Id. Appellants argue the Examiner erred in finding Ishizuka teaches the “forming a value ...” limitation because the Examiner has not explained 3 Appeal 2017-000820 Application 13/361,064 how any value is formed from the combination of the “digital representation of the physical version,” the “prior certificate,” and the “representation of the invocation of the at least one operation,” as claimed. App. Br. 6-9. Appellants have persuaded us the Examiner erred. The Examiner has identified the document index ID of the scanned document as the recited “value” that is formed by the claimed combination. Ans. 4. The Examiner finds Ishizuka teaches features that correspond to the component limitations—the extracted ID (“prior certificate”), the indication of whether the document is finalized (“representation of the invocation of the at least one operation”), and the scanned document itself (“digital representation of the physical version”). Id. However, the Examiner has not explained how Ishizuka teaches forming the document index ID by combining the extracted ID, the indication of whether the document is finalized, and the scanned document. Accordingly, we agree with Appellants that the Examiner has failed to establish that Ishizuka teaches the “forming a value ...” limitation. On this record, we, therefore, do not sustain the rejection of claim 23. We also do not sustain the rejection of claims 2, 3, 5-9, 11, 21, 22, and 24-26, which depend from claim 13. Claim 19 Claim 19 recites, in relevant part, “retrieving information items used previously to compute a time stamp certificate . . . the retrieved information items including a representation of an invocation of at least one operation performed to transform a different version of the physical document to the digitized version, and a prior certificate computed for a prior digitized version of the physical document.” The Examiner relies on Ishizuka for this limitation. Final Act. 16-17; Ans. 11-13. 4 Appeal 2017-000820 Application 13/361,064 For the reasons explained above, we agree with Appellants that the Examiner has failed to establish “retrieving information items used previously to compute a time stamp certificate” where those information items include a prior certificate and a representation of an invocation, as similarly recited in claim 23. On this record, we, therefore, do not sustain the rejection of claim 19. Claim 13 Claim 13 recites, in relevant part, “computing, by a system comprising a hardware processor, a new certificate for the digital representation of the physical version based on combining at least the digital representation of the physical version, a prior digital representation of the physical version, a representation of an invocation of at least one operation performed to transform a different version of the document to the digital representation, and a prior certificate computed for the prior digital representation of the physical version.” The Examiner rejects claim 13 as anticipated by Ishizuka. Final Act. 10-11. For the reasons explained above with respect to claim 23, we agree with Appellants that the Examiner has failed to establish that Ishizuka discloses “computing ... a new certificate” based on “combining” the recited limitations. Accordingly, on this record, we do not sustain the rejection of claim 13. We also do not sustain the rejections of claims 18 and 27-29, which depend from claim 13. DECISION We reverse the decision of the Examiner to reject claims 2, 3, 5-9, 11, 13, 18, 19, and 21-29. REVERSED 5 Copy with citationCopy as parenthetical citation