Ex Parte Pauly et al

Patent Trial and Appeal Board

Nov 14, 2012

11234050 (P.T.A.B. Nov. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEVEN J. PAULY and MICHAEL J. SHUKAITIS
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Appeal 2011-005699
Application 11/234,050
Technology Center 3600
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Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005699
Application 11/234,050

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-4. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.1

BACKGROUND
Appellants’ invention relates to the securing of postage value, and in
particular to a method of securing postage data records stored in a postage
printing device that represent such postage value when the postage printing
device is transferred from one user to another (Spec., para. [0001]).
Claim 1, reproduced below with added bracketed notations, is
representative of the subject matter on appeal:
1. In a system including a postage printing device and a data
center, said postage printing device using a first key to digitally
sign one or more first requests for a plurality of first data
records from said data center, each of said first data records
including indicium information for enabling said postage
printing device to print a postal indicium, said data center using
a second key to encrypt at least the indicium information of
each of said first data records to generate a plurality of
encrypted indicium information portions, using each of said
encrypted indicium information portions to form a plurality of
encrypted first data records, and using a third key to digitally
sign each of said encrypted first data records to generate a
plurality of data record digital signatures, said data center
transmitting said encrypted first data records and said data

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed August 24, 2010) and the Examiner’s Answer (“Ans.,” mailed
November 15, 2010).
Appeal 2011-005699
Application 11/234,050

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record digital signatures to said postage printing device, said
postage printing device storing said third key for authenticating
each of said first data records using a corresponding one of said
data record digital signatures and said second key for
decrypting each of said encrypted indicium information
portions of each of said encrypted first data records, a method
of securely transferring said first data records from a first user
to a second user when said postage printing device is
transferred from said first user to said second user, comprising:
[a] zeroing said first key in said postage printing device;
[b] generating at said postage printing device and said
data center a fourth key, a fifth key and a sixth key, said
postage printing device using said fourth key to digitally sign
one or more second requests for a plurality of second data
records from said data center, wherein each of said second data
records include second indicium information for enabling said
postage printing device to print a postal indicium, wherein said
data center uses said fifth key to encrypt at least the second
indicium information of each of said second data records to
generate a plurality of encrypted second indicium information
portions, using each of said encrypted second indicium
information portions to form a plurality of encrypted second
data records, and using said sixth key to digitally sign each of
said encrypted second data records;
[c] authenticating each of said first data records using
said third key and a corresponding one of said data record
digital signatures;
[d] decrypting each of said encrypted indicium
information portions of each of said encrypted first data records
using said second key;
[e] encrypting at least the indicium information of each
of said first data records using said fifth key to generate a
plurality of re-encrypted indicium information portions, and
using each of said re-encrypted indicium information portions
to form a plurality of re-encrypted first data records;
[f] digitally signing each of said re-encrypted first data
records using said sixth key; and
[g] zeroing said second and third keys in said postage
printing device.
Appeal 2011-005699
Application 11/234,050

4

THE REJECTION
The following rejection is before us for review:
Claims 1-4 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Admitted Prior Art (“APA”) in view of Ginter (US
5,892,900, iss. Apr. 6, 1999) and further in view of Sudia (US 6,009,177,
iss. Dec. 28, 1999).

ANALYSIS
Independent claim 1 and dependent claims 2 and 3
We are persuaded of error on the part of the Examiner by Appellants’
argument that none of APA, Ginter, and Sudia, alone or in combination,
discloses or suggests a method, including all of the limitations recited in
claim 1, for securely transferring data records stored in a postage printing
device from a first user to a second user when the postage printing device is
transferred from the first user to the second user (Br. 7-12).
The Examiner relies on APA as teaching a method of transaction
between a postage printing device and a data center where a user sends a
request to purchase postage to a data center and in response, the data center
generates an appropriate number of postage data records and transmits the
generated postage data records to the postage printing device for use
(Ans. 5). But the Examiner concedes that APA does not disclose a “method
of securely transferring said first data records [stored in the postage printing
device] from a first user to a second user when said postage printing device
is transferred from said first user to said second user,” and also does not
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Application 11/234,050

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disclose any of steps [a] through [g] of the method, as recited in claim 1
(Ans. 5-6).
The Examiner relies on Ginter as teaching the missing method steps
(Ans. 6-8). Ginter discloses the generation and use of cryptographic keys in
a virtual distribution environment that secures, administers, and audits
electronic information use (Ginter, Abstr.). But Examiner acknowledges
that the combination of Ginter and APA does not disclose transferring a
postage device from a first user to a second user (Ans. 8). Therefore, the
Examiner cites Sudia as disclosing the transferring of ownership of a trusted
device, including replacement of the owner’s key in the device (Ans. 8).
The Examiner concluded that it would have been obvious
to include the cryptographic teachings of Ginter and technique
of replacing of the owner’s key in the trusted device for
transferring ownership of [the] trusted device as taught by
Sudia to the printing device, e.g., postage printing device, in
APA to ensure accountability of [the] transferred device and for
improvement on the security
(Ans. 13). However, critically here, the Examiner does not articulate any
reasoning with rational underpinning for combining the cited references to
arrive at a method for securing transferring data records stored in a postage
printing device from a first owner to a second owner, in the specific manner
recited in claim 1, without impermissible hindsight.
The portions of Ginter, on which the Examiner relies, are directed to
the use of cryptographic keys and digital signatures in general, and do not
disclose or suggest a method for securely transferring data records in a
postage printing device from a first user to a second user when the
ownership in the device is transferred. Sudia discloses that a secure device
can be transferred from one owner to another by replacing the current
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Application 11/234,050

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owner’s public instructions signature key with the new owner’s public
instructions signature key. But there is nothing in Sudia that discloses or
suggests transferring data records stored in the secure device from a first
user to a second user, as recited in claim 1. And the Examiner has conceded
that none of steps [a] through [g] of the method, as recited in claim 1 is
disclosed or suggested by APA (Ans. 5-6).
It is incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. As the Supreme Court noted in
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. Id. at 418.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 103(a). We also will not sustain the
Examiner’s rejection of dependent claims 2 and 3.

Independent claim 4
Claim 4 includes language substantially similar to claim 1. Therefore,
we will not sustain the Examiner’s rejection of claim 4 under 35 U.S.C.
§ 103(a) for the same reasons as set forth above with respect to claim 1.

DECISION
The Examiner’s rejection of claims 1-4 under 35 U.S.C. § 103(a) is
reversed.

REVERSED
mls