Arkko, Jari et al.Download PDFPatent Trials and Appeals BoardDec 6, 201914400228 - (D) (P.T.A.B. Dec. 6, 2019) 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. 14/400,228 11/10/2014 Jari Arkko 1009-1168 / P35890 US1 3768 102721 7590 12/06/2019 Murphy, Bilak & Homiller/Ericsson 1255 Crescent Green Suite 200 Cary, NC 27518 EXAMINER SHAHEED, KHALID W ART UNIT PAPER NUMBER 2643 NOTIFICATION DATE DELIVERY MODE 12/06/2019 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): official@mbhiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JARI ARKKO, ANNA LARMO, KARL NORRMAN, BENGT SAHLIN and KRISTIAN SLAVOV Appeal 2019-000859 Application 14/400,228 Technology Center 2600 Before ST. JOHN COURTENAY III, LARRY J. HUME, AND PHILLIP A. BENNETT, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant,1 Jari Arkko et al., appeals from the Examiner’s decision rejecting claims 31, 32, 35, 45–47, 51, and 56–59. Claims 1–30, 33, 34, 36–44, 48–50, and 52–55 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Telefonaktiebolaget LM Ericsson. Appeal Br. 2. Appeal 2019-000859 Application 14/400,228 2 STATEMENT OF THE CASE2 The Invention The claims are directed to “secure paging mechanisms for mobile terminals in a cellular network. In particular, although not exclusively, the invention relates to apparatus and methods for authenticating paging requests to terminals.” Spec. ¶ 1. Exemplary Claim Claim 31, reproduced below, is representative of the subject matter on appeal (formatting added; emphasis added to contested prior-art limitations): 31. A device for communicating with a network, comprising: a communications circuit adapted to send and receive data; a storage circuit adapted to store data; and a control circuit adapted to control operation of the communications circuit and storage circuit; wherein the communications circuit is configured to receive a series of paging messages from a serving node in the network, each paging message including identification and authentication information sufficient to identify at least one device and authenticate the message, at least some of the information being protected according to a sequence that varies between successive paging messages, wherein the identification and authentication information in each paging message includes at least one device identifier and authentication data; and 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed May 22, 2018); Reply Brief (“Reply Br.,” filed Nov. 13, 2018); Examiner’s Answer (“Ans.,” mailed Sept. 13, 2018); Final Office Action (“Final Act.,” mailed Nov. 15, 2017); and the original Specification (“Spec.,” filed Nov. 10, 2014). Appeal 2019-000859 Application 14/400,228 3 wherein the control circuit is configured to confirm, when a new paging message is received, that the new paging message is secure by determining that the authentication data in the previous paging message is correctly derivable, using a cryptographic function, from the authentication data in the new paging message. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Le et al. (“Le”) US 2003/0061480 A1 Mar. 27, 2003 Laroia et al. (“Laroia”) US 2005/0277429 A1 Dec. 15, 2005 Goto et al. (“Goto”) US 2006/0015748 A1 Jan. 19, 2006 Shaheen et al. (“Shaheen”) US 2012/0004003 A1 Jan. 5, 2012 Jain et al. (“Jain”) US 2013/0083726 A1 Apr. 4, 2013 Rejections on Appeal R1. Claims 31, 32, 46, 47, and 56–59 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Le, Goto and Laroia. Final Act. 3. R2. Claim 45 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Le, Goto, Laroia and Shaheen. Final Act. 12. R3. Claims 35 and 51 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Le, Goto, Laroia and Jain. Final Act. 12. Appeal 2019-000859 Application 14/400,228 4 CLAIM GROUPING Based on Appellant’s arguments (Appeal Br. 11–19) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness Rejection R1 of claims 31, 32, 46, 47, and 56–59 on the basis of representative claim 31. Although Appellant nominally argues independent claims 47, 57, and 59 separately (Appeal Br. 20–21), we find the arguments are not substantively different from those made concerning claim 31. Therefore, we group these independent claims, and also independent claims 56 and 58, together with claim 31. We address remaining dependent claims 35, 45, and 51 rejected under obviousness Rejections R2 and R3, not-separately argued, infra.3 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We disagree with Appellant’s arguments with respect to claim 31 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in 3 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2019-000859 Application 14/400,228 5 the Examiner’s Answer in response to Appellant’s arguments. We highlight and address specific findings and arguments regarding claim 31 for emphasis as follows. 1. § 103(a) Rejection R1 of Claims 31, 58, 47, 56, 57, 59, 32, and 46 Issue 1 Appellant argues (Appeal Br. 11–19; Reply Br. 2–7) the Examiner’s rejection of claim 31 under 35 U.S.C. § 103(a) as being obvious over the combination of Le, Goto, and Laroia is in error. These contentions present us with the following issues: (a) Did the Examiner err in finding the cited prior art combination teaches or suggests “[a] device for communicating with a network,” wherein, inter alia, “the control circuit is configured to confirm, when a new paging message is received, that the new paging message is secure by determining that the authentication data in the previous paging message is correctly derivable, using a cryptographic function, from the authentication data in the new paging message,” as recited in claim 31? (b) Did the Examiner err in combining Le, Goto, and Laroia in the manner suggested because, allegedly, Goto is non-analogous art and is not reasonably pertinent to the problem faced by Appellant? (c) Did the Examiner err in combining Le, Goto, and Laroia in the manner suggested because, allegedly, the Examiner did not provide an articulated reason to combine the references? Appeal 2019-000859 Application 14/400,228 6 Analysis (a) The reference combination teaches or suggests all limitations The Examiner finds Goto teaches or suggests confirming that a new paging message is secure by determining that the authentication data in the previous paging message is correctly derivable from the authentication data in the new paging message using a cryptographic function. Final Act. 5 (citing Goto ¶ 240). Goto discloses: [S]ince an authentication processing requires a processing such as calculation of the hash values, in this embodiment, the hash values are calculated at each transfer unit of the page data, and the results of the calculation are retained as interim results of the hash operation. These processing are repeated, and the hash operation is completed at the end of transfer so that the results can be used in the subsequent authentication processing. Goto ¶ 240. Appellant argues Goto’s paragraph 240 says nothing about “paging messages.” Appeal Br. 17. Appellant further argues “Nothing in Goto suggests that the hash code calculated for one page has any relationship whatsoever to the hash code calculated for another.” Appeal Br. 18. We are not persuaded by Appellant’s arguments because Goto’s processor uses authentication data of previously received information by using the results of a hash operation calculation in a subsequent authentication processes. Ans. 19, Goto, ¶ 240; Fig. 62. We find this teaching of Goto at least suggests when a new paging message is received, that the new paging message is secure by determining that the authentication data in the previous paging message is correctly derivable, Appeal 2019-000859 Application 14/400,228 7 using a cryptographic function, from the authentication data in the new paging message, as recited in claim 31. Although we determine that Goto’s “page” is not a paging signal as described in Appellant’s Specification, the Examiner maps the recited claim term “paging message” to Le’s IP paging requests and page message — not to Goto’s page. Final Act. 4–5. Furthermore, the Examiner maps Goto’s authentication processing, which uses encryption processing and hash values, from a first operation in a subsequent authentication operation to teach or at least suggest the disputed claim limitation “when a new paging message is received, that the new paging message is secure by determining that the authentication data in the previous paging message is correctly derivable, using a cryptographic function, from the authentication data in the new paging message,” as recited in claim 31. Final Act. 5. Therefore, we broadly but reasonably construe the recited cryptographic function as encompassing the authentication processing of Goto that includes a hash value calculation.4 We are not persuaded of error in the Examiner’s findings and conclusion because Appellant is arguing the references separately. As the 4 During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re America Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2019-000859 Application 14/400,228 8 rejection is for obviousness, we rely upon what the reference combination would have suggested to a person of ordinary skill in the art. “One 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). Nor is the test for obviousness whether a secondary reference's features can be bodily incorporated into the structure of the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). As found by the Examiner, we find the combination of Le’s paging messages with Goto’s teaching of authentication data from a previous message being derivable, using cryptographic code, from the authentication data in a new message would not have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Ent. Inc v. Fisher-Price Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Accordingly, we find the prior art combination teaches or suggests the disputed limitation of claim 31. (b) Goto is analogous art to Le and Laroia Appellant also contends Goto is “neither from the same field of endeavor as the claimed invention nor reasonably pertinent to the problem faced by the inventor.” Appeal Br. 13. The Examiner finds: [B]oth Goto and the instant application relate to the issue of securing information processing vis computer processing. The invention of Goto only differs from the Appellant’s claimed invention in that it does not specifically address mobile terminals and is directed to computers in a more general Appeal 2019-000859 Application 14/400,228 9 manner. However, mobile terminals notoriously well known to be implementations of computers with mobile capability. Furthermore, Goto specifically addresses receiving and encryption of externally received input and output data (see [0016], last line, “the encryption processing device encrypts the input and output data between the core and the outside”). Furthermore, Goto discloses a page retrieval system regarding encrypted information (see [0019]). In [0133], disclosing receiving and storing an encrypted “page” from the "outside”. Furthermore, the specific limitation of the Appellant’s invention is addressed wherein “the new paging message is secure by determining that the authentication data in the previous paging message is correctly derivable, using a cryptographic function from the authentication data in the new paging message” (see [0240] the has values i.e. -a cryptographic function calculation- are retained as interim basis for use with repeated processing for subsequent units). The Appellant also indicates that Goto is not reasonably pertinent to the problems addressed by the present invention. The examiner respectfully refutes this assertion. The present invention technical field deals squarely with securing information (see instant paragraph [0001]) utilizing hash functions (see instant paragraph [0021]) and a series of shared, secret and public keys (see instant paragraphs [0027] & [0058]) Likewise, Goto presents the field of invention that also deals with securing information [0003] and utilizing hash functions (see "procedure for performing hash arithmetic", [0115]) and a series of shared, secret and public keys (see instant paragraphs [0014] & [0070]. Here, the Examiner concludes the invention of Goto is reasonably pertinent to problems addressed by the Appellant's application and proposes the same types of solutions. Ans. 11–12. We agree with and incorporate herein the Examiner’s analysis and determination that the references are properly analogous, pertinent, and combinable, and emphasize that the Examiner's ultimate legal conclusion of Appeal 2019-000859 Application 14/400,228 10 obviousness is based upon the combined teachings of the cited references. “[T]he law does not require that the references be combined for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining” references. KSR Int'l Co. v. Teleflex Inc, 550 U.S. 398, 420 (2007). Moreover, for a prima facie case of obviousness to be established, the references need not recognize the same problem solved by the Appellant. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). (c) The Examiner provided articulated reasoning to make the combination Appellant further argues the Examiner has not stated an articulated reasoning with a rational underpinning for combining Le with Goto. Appeal Br. 15. The Examiner finds: Goto specifically discloses it would be appropriate and obvious that “cellular phones” are exposed to the same threats as personal computers. While the invention of Goto primarily addresses securing computer processors from external threats the same motivation would exist to protect “cellular phones”. The major considerations of the Examiner when choosing to incorporate Goto are outlined below. 1. In Goto, the page-in request has an external origin to the core processor ([0016], “The encryption processing device encrypts the input and output data between the core and the outside.” And/or [0133] “encrypted page from the outside is stored”). 2. Goto specifically discloses the obvious use its teachings for cellular phones to prevent “external threats” [0006]. 3. The Goto [reference] utilizes the same encryption and security limitation as disclosed by the Appellant’s claims. (See Appeal 2019-000859 Application 14/400,228 11 [Goto ¶ ] [0240] the [ ] values i.e. -a cryptographic function calculation- are retained as interim basis for use with repeated processing for subsequent units). In conclusion it would have been obvious to combine the teachings of Goto with that of Le for securing cellular phones [from] external originating threats as disclosed by Goto. Those threats could be presented by various sorts of pages or other received or retrieved information. Ans. 17–18. Thus, based on this reasoning and explanation, we conclude the Examiner has in fact provided an articulated reasoning with a rational underpinning for combining Le with Goto as required.5 Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 31, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 31, and grouped claims 32, 46, 47, and 56–59, which fall therewith. See Claim Grouping, supra. 3. Rejections R2 and R3 of Claims 35, 45, and 51 In view of the lack of any substantive or separate arguments directed to obviousness Rejection R2 of claim 45 or Rejection R3 of claims 35 5 The relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418. Appeal 2019-000859 Application 14/400,228 12 and 51 under § 103 (see Appeal Br. 21–22), we sustain the Examiner’s rejections of these claims. Arguments not made are waived. REPLY BRIEF To the extent Appellant may advance new arguments in the Reply Brief (Reply Br. 2–8) not in response to a shift in the Examiner’s position in the Answer, arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellant has not shown. CONCLUSION The Examiner did not err with respect to obviousness Rejections R1 through R3 of claims 31, 32, 35, 45–47, 51, and 56–59 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. Appeal 2019-000859 Application 14/400,228 13 DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis / References Affirmed Reversed 31, 58, 47, 56, 57, 59, 32, 46 103 Obviousness Le, Goto, Laroia 31, 58, 47, 56, 57, 59, 32, 46 45 103 Obviousness Le, Goto, Laroia, Shaheen 45 35, 51 103 Obviousness Le, Goto, Laroia, Jain 35, 51 Overall Result 31, 32, 35, 45–47, 51, 56–59 FINALITY AND RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation