Ex Parte Haber et al

Patent Trial and Appeal Board

May 12, 2017

13361064 (P.T.A.B. May. 12, 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.
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.
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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
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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.
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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
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