Ex Parte Whitehouse

Patent Trial and Appeal BoardOct 27, 2017

12976289 (P.T.A.B. Oct. 27, 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. 12/976,289 12/22/2010 Harry T. WHITEHOUSE 080839-0387430 7172 909 7590 10/31/2017 Pillsbury Winthrop Shaw Pittman, LLP PO Box 10500 McLean, VA 22102 EXAMINER TRAN, ELLEN C ART UNIT PAPER NUMBER 2433 NOTIFICATION DATE DELIVERY MODE 10/31/2017 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): docket_ip@pillsburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HARRY T. WHITEHOUSE Appeal 2017-004128 Application 12/976,289 Technology Center 2400 Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and ADAM J. PYONIN, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2017-004128 Application 12/976,289 Appellant requested a rehearing of a Decision on Rehearing dated August 11, 2017 (“Second Decision”), reversing the Examiner’s rejection of claims 1—5, 24—29, 33, and 41—51 under 35 U.S.C. § 103(a) and designating new grounds of rejection for the claims incorporating the new citation to Geer into the Examiner’s rejection in the Non-Final Action.1 We grant this Rehearing Request to the extent that we consider Appellant’s arguments infra, but DENY the request to modify our Second Decision. In our Second Decision, we were “still of the view that the invention set forth in the pending claims would have been obvious in view of the teachings and suggestions of the cited references under 35 U.S.C. § 103(a).” Second Decision 2. This Decision on Appellant’s Request for Rehearing is deemed to incorporate our earlier Decisions by reference. See 37 C.F.R. § 41.52(a)(1). Appellant makes the following three arguments in support of their request: A. Appellant “hereby incorporates its arguments from the Prior Rehearing Request that the ‘mere duplication’ rationale is not applicable to the claimed reencryption” (Req. Reh’g II 2); B. Appellant argues “[t]he Board’s Decision misapprehended or overlooked the failure of Geer’s smart card description (alone or in combination with Holloway’s smart card description) to meet all limitations of the claimed transmission to the cryptographic processor and its decryption operation thereof’ (Req. Reh’g II 3—5); and 1 The second Request for Rehearing (“Req. Reh’g II”) was filed on Sept. 28, 2017. The first Request for Rehearing (“Req. Reh’g I”) was filed on July 26, 2017. The Non-Final Rejection was mailed on Mar. 21, 2016. 2 Appeal 2017-004128 Application 12/976,289 C. Appellant argues “[t]he Board’s Decision misapprehended or overlooked the failure of Geer (alone or in combination with Mital and Holloway) to teach the claimed cryptographic processor itself comprising a secure memory that stores the claimed decrypted data (that the processor decrypted from the claimed encrypted data)” (Req. Reh’g 6-7). Argument A — Claim 1 Appellant’s argument regarding the inapplicability of the “mere duplication of parts” (Req. Reh’g II 2; see Req. Reh’g I 4—6) is non persuasive, as the claim is directed to a repetition of encryption steps that are commonly performed, such as in Mital’s electronic commerce system that “is in communication with multiple consumer computers and multiple merchant computers” (Decision 5 n. 1, quoting Mital Abstract; see also Non- Final Act. 9, citing Mital Abstract). Such repetition of steps is “the predictable use of prior art elements according to their established functions.” KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellant’s Rehearing Request does not challenge our findings regarding Mital and our reliance on KSR. See Req. Reh’g 4. Appellant’s continued reliance on In re Rippolone, No. 2009-015057 (PTAB 2011) is misplaced because it is non-precedential, and additionally the facts in that decision were that the structure was substantially altered from the prior art in addition to being duplicated. Id. at slip. op. at 7—8. Here, the claim is directed to a repetition of encryption steps that are commonly performed, and require no structural alterations. 3 Appeal 2017-004128 Application 12/976,289 Arguments B and C Appellant’s principal argument in the second Request for Rehearing now regards the deficiencies of Geer. In the Second Decision, we responded to Appellant’s arguments regarding the deficiencies of Holloway’s “smart card” (Req. Reh’g I 2—4), and we found the teachings of Holloway combine with that of Geer, in which a smart card receives a message that was encrypted with its public key and decrypts the message with its private key (Second Decision 3, citing Geer 6:42—50 and Fig. 2B). We entered new grounds of rejection for the claims that “incorporated] the new citation to Geer into the Examiner’s rejection in the Non-Final Action” (Second Decision 5). Appellant does not respond to the substance of the combination of the Examiner’s rejection including our incorporation, but instead incorrectly states that the Second Decision “appears to assert in its new grounds of rejection” that Geer alone is now relied upon to reject the disputed claim limitations (Req. Reh’g II 3); however, the Examiner relied upon other references for these limitations. For example, the Examiner relied upon Mital as teaching the claimed receiving first encrypted data at the first computer subsystem, the first encrypted data having been encrypted by the second computer system using the first public encryption key (see Non-Final Act 8), whereas the second Request for Rehearing asserts that the new grounds of rejection regarding this claim limitation rely solely on Geer (Req. Reh’g II 3). Appellant’s arguments are not persuasive because the arguments are based on a flawed interpretation of the new grounds of rejection. 4 Appeal 2017-004128 Application 12/976,289 Similarly, the Examiner relied solely upon Holloway as teaching the claimed transmitting the first encrypted data to the cryptographic processor inside the first computer subsystem with decrypting the first encrypted data at the first computer subsystem outside of the cryptographic processor (Non-Final Act. 10). “[0]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. at 425. Appellant incorrectly asserts that the new grounds of rejection rely upon Geer alone as teaching this limitation (Req. Reh’g II 3). Appellant does not persuasively argue (see Req. Reh’g II 3—5) how the combined teachings of Geer and Holloway fail to teach or suggest the claimed limitation. Finally, the second Request for Rehearing states that to the extent that the Rehearing Decision is relying on inherency for its assertion that Geer/Holloway teaches the foregoing claimed language at issue, the assertion is in direct contrast with patent law (Req. Reh’g II 5). While it is unclear what claim language Appellant is referring to, Appellant makes a similar statement to assert that Geer does not teach or suggest the limitation of dependent claim 26, which recites “wherein the cryptographic processor comprises a secure memory configured to store the first decrypted data” (Req. Reh’g II 6—7). Particularly, Appellant contends “there is no indication in Geer that its smart card (e.g., the smart card of ‘authorized computer 14’) actually stores 5 Appeal 2017-004128 Application 12/976,289 data decrypted by the smart card in its own secure memory” (Req. Reh’g II 6). We are not persuaded of error. In addition to Geer’s statements that decryption is performed “to ensure that the smart card has obtained the conversation certificate and program fragment in a legitimate manner” (Second Decision 3, quoting Geer 6:44-46; emphasis added), Geer refers to smart cards as a type of “smart token” including “credit-card sized cards having an embedded microprocessor that are insertable into a reader” (Geer 5:49—50). Accordingly, the combination of Holloway’s teaching of a “smart card” having “logic for combining the characteristic data” (Holloway 2:44— 45) and Geer’s teaching of an “embedded microprocessor” together teach or suggest a “cryptographic processor compris[ing] a secure memory configured to store the first decrypted data.” Although we have considered the arguments raised by Appellant in the Request for Rehearing, Appellant has not identified that the Board has misapplied the relevant law or misapprehended Appellant’s arguments. Accordingly, Appellant’s request for rehearing has been granted to the extent that our decision has been reconsidered, but such request is denied with respect to making any modifications to the prior decisions. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). REHEARING DENIED 6