Ex Parte Nahlinder et al

Patent Trial and Appeal Board

Oct 9, 2012

10843681 (P.T.A.B. Oct. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MATS NAHLINDER, THOMAS WU, and
GEOFFREY HIRD
____________________

Appeal 2010-002501
Application 10/843,681
Technology Center 2400
____________________

Before DEBRA K. STEPHENS, DAVID M. KOHUT, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002501
Application 10/843,681

2
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a system and method for securely
transporting a pass code. Spec. 2. Claim 1 is representative of the invention
and is reproduced below:
1. A pass code transport system comprising:
a user input means for entering a pass code, wherein the
user input means is software and/or hardware and the user input
means is operated by a user computing device;
a key server that provides public keys of destination
recipients to the user input means;
a communications channel for carrying a message
comprising at least the pass code encrypted by the public key of
a destination recipient for the message, wherein the message
could pass through an untrusted network and zero or more
intermediate recipients;
wherein the message is not easily decodable at an
intermediate point between the user input means and the
destination recipient.

REFERENCES
Angert

Angelo

Walker

Ha
US 5,799,090

US 5,953,422

US 2002/0023213 Al

US 2004/0010722 Al
Aug. 25, 1998

Sep.14,1999

Feb. 21, 2002

Jan. 15, 2004

Appeal 2010-002501
Application 10/843,681

3
REJECTIONS AT ISSUE
Claims 1 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Walker and Angelo. Ans. 3-5.
Claims 2 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Walker, Angelo, and Official Notice.
Ans. 5.
Claims 3 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Walker, Angelo, and Ha. Ans. 5-6.
Claims 4-6 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Walker, Angelo, Ha, and Angert. Ans.
6-7.
Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Walker, Angelo, and Angert. Ans. 7.

ISSUES
1. Did the Examiner err in finding that the combination of Walker and
Angelo teaches or suggests:
a. A user input means into which a pass code is entered?
b. A plurality of recipients sharing their public keys with an
application server that is triggered to ask a user for a pass
code?
c. An application server presenting a pass code input device to a
user on a user computer?
2. Did the Examiner err in concluding it would have been obvious to
one of ordinary skill in the art at the time of the invention to
combine Walker and Angelo?
Appeal 2010-002501
Application 10/843,681

4
3. Did the Examiner err in finding that the combination of Walker,
Angelo, Ha, and Angert teaches or suggests scrambling pass code
elements each time a pass code element is entered?
4. Did the Examiner err in concluding it obvious to combine Walker,
Angelo, Ha, and Angert?

ANALYSIS
Claim 1
Claim 1 recites “a user input means for entering a pass code.”
Appellants argue that Walker does not teach this limitation because a pass
code is not entered into Walker’s input means. App. Br. 5. However, the
Examiner finds that Walker teaches an input means for entering an input
(Ans. 3-4 (citing Walker ¶ [0070])) and Angelo teaches entering a user
password. Ans. 4 (citing Angelo, col. 7, ll. 1-2). Therefore, the Examiner
finds that it is the combination of Walker and Angelo that discloses the
disputed limitation and not solely Walker. See Ans. 3-4 and 7-8. We agree
with the Examiner. Appellants are arguing the references individually when
the Examiner has relied upon the combination of references.
Next, Appellants argue that “the rejection does not identify the skilled
artisan that would find the combination obvious.” App. Br. 6. We disagree.
Both Walker and Angelo describe encryption and/or authentication systems.
See Abstract of Walker and Angelo. Additionally, the Examiner indicates
that “the field of endeavor” is encryption systems. Ans. 4. Thus, the
Examiner explicitly and implicitly (through the use of the references)
identifies the type of skilled artisan.
Appeal 2010-002501
Application 10/843,681

5
Appellants also argue that the Examiner does not provide a “‘clear
articulation’ of the reasons,” i.e., a clear motivation, for the combination of
Walker and Angelo. App. Br. 6. We disagree. The Supreme Court stated
that an explicitly stated motivation to combine the references is seen as
“helpful insight,” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007),
but that the combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results. Id.
at 416. Walker teaches a means for entering an input. Ans. 4-5. Angelo
teaches a system for entering a password and then encrypting it before
passing the password through the network. Ans. 5. Both of the references
deal with encryption. Therefore, we agree with the Examiner (Ans. 5) and
we consider substituting Walker’s system of entering an input with Angelo’s
system for entering a password and encrypting it as nothing more than using
known devices to perform their known function of entering information and
encrypting it before passing it through a system. As such, we agree with the
Examiner (Ans. 4) and we find that the combination of Walker with Angelo
yields the predictable result of keeping passwords secure as they are passed
through an insecure network.
Appellants also argue that the motivation to combine the references is
based on hindsight reasoning. App. Br. 22. We disagree and add the
following for emphasis.
First, as explained in In re McLaughlin:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
Appeal 2010-002501
Application 10/843,681

6
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Our review of the record establishes that the Examiner’s case for
obviousness is only based on knowledge which was within the level of
ordinary skill at the time of the Appellants’ invention and does not include
knowledge gleaned only from the Appellants’ disclosure.
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Examiner’s Answer. See Ans. 3-4. To
the extent that the Examiner relies on the knowledge of one of ordinary skill
in the art to combine the teachings of the references, this practice is
consistent with current case law. For example, the Supreme Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR, 550 U.S. at 418.
In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Ans. 3-4. Thus, we agree with the Examiner’s
findings and conclusions.
Appeal 2010-002501
Application 10/843,681

7
For the reasons discussed supra, we sustain the Examiner’s rejection
of claim 1.
Claim 7
Claim 7 recites “a plurality of recipients sharing their public keys with
an application server; the application server being triggered to ask a user for
a pass code” and “the application server presenting a pass code input device
to the user on the user computer.” Appellants recite the claim limitation, list
what the Examiner cited, and contend that the references fail to teach these
limitations. App. Br. 6-7.
Such statements are not considered to be arguments. 37 C.F.R.
§ 41.37(c)(1)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Thus, we do not find Appellants’ arguments to be persuasive.
For the reasons discussed supra, we sustain the Examiner’s rejection
of claim 7.
Claims 2-4, 6, 8, 9, 11, and 12
Claims 2-4, 6, 8, 9, 11, and 12 depend upon one of independent claims
1 and 7. Appellants make the same arguments with respect to these claims
as with respect to claims 1 and 7. App. Br. 7-9. Since we sustain the
Examiner’s rejection of claims 1 and 7, we also sustain the Examiner’s
rejection of claims 2-4, 6, 8, 9, 11, and 12 for the same reasons as indicated
supra.
Appeal 2010-002501
Application 10/843,681

8
Claims 5 and 10
Appellants argue that the combination of Walker, Angelo, Ha, and
Angert does not teach claims 5 and 10 because Angert’s XORing of
characters with a random number is not the same as scrambling pass code
elements of the graphical pass code pad each time a pass code element is
entered, as required by the claims. App. Br. 8. We disagree.
The Examiner finds that Angert teaches mixing, i.e., XORing, each
individual character with a random number (Ans. 6 (citing Angert, col. 4, ll.
7-10) in order to encrypt the characters and provide enhanced security. See
also Col. 4, ll. 17-18 and 62-66. Appellants have not provided sufficient
evidence nor do we find any reason why Angert’s XORing is any different
than the claimed scrambling. Thus, we agree with the Examiner’s finding.
Appellants further argue that the Examiner’s reason for combining
Walker, Angelo, Ha, and Angert does not qualify as “‘clear articulation’
required for concluding that a combination would be obvious,” for similar
reasons as described above with respect to the combination of Walker and
Angelo. App. Br. 8. As we did not agree with Appellants’ arguments
above, we also disagree with Appellants’ arguments here.
While a specific motivation is not required (see KSR, 550 U.S. at
418), the Examiner concludes that it would have been obvious to modify the
encryption of Walker, Angelo, and Ha to include individual character
encryption, as in Angert, in order to” secure each character.” Ans. 6-7 and
11. Appellants fail to address the Examiner’s specific conclusion. We also
determine that the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Ans. 4-5 and 8. Additionally, we find that the
Appeal 2010-002501
Application 10/843,681

9
modification of the references is simply a combination of familiar elements
according to known methods which produces nothing more than predictable
results. KSR, 550 U.S. at 416. Thus, we agree with the Examiner and
sustain the Examiner’s rejection of claims 5 and 10.
CONCLUSIONS
1. The Examiner did not err in finding that the combination of Walker
and Angelo teaches or suggests:
a. A user input means into which a pass code is entered;
b. A plurality of recipients sharing their public keys with an
application server that is triggered to ask a user for a pass
code; and
c. An application server presenting a pass code input device to a
user on a user computer.
2. The Examiner did not err in concluding it obvious to combine
Walker and Angelo.
3. The Examiner did not err in finding that the combination of Walker,
Angelo, Ha, and Angert teaches or suggests scrambling pass code
elements each time a pass code element is entered.
4. The Examiner did not err in concluding it obvious to combine
Walker, Angelo, Ha, and Angert.

SUMMARY
The Examiner’s decision to reject claims 1-12 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

Appeal 2010-002501
Application 10/843,681

10
AFFIRMED

msc