Arkko, Jari et al.

Patent Trials and Appeals Board

Dec 6, 2019

14400228 - (D) (P.T.A.B. Dec. 6, 2019)

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.
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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).
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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.
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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).
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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?
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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,
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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).
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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
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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
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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
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[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.
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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.

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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