Ex Parte Aittola et al

Patent Trial and Appeal Board

Feb 26, 2013

11155765 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/155,765 06/20/2005 Mikko Aittola 088245-1102 4393
23524 7590 02/27/2013
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
SCHMIDT, KARI L
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
02/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIKKO AITTOLA, LAURI LAHTINEN, and KALLE TAMMI
____________

Appeal 2010-010540
Application 11/155,7651
Technology Center 2400
____________

Before JOSIAH C. COCKS, THOMAS L. GIANNETTI, and JAMES B.
ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 56-58, 60, 61, 64-70, 74, 75, 77, 79-83, 85, 86, 89-95, 98,
99, 101, 103-107, and 109-112. Claims 1-55, 59, 62, 63, 71-73, 76, 78, 84,

1 Although Appellants identify Spyder Navigations L.L.C. as the real party
in interest in the Appeal Brief, we note that Spyder Navigations L.L.C. has
assigned this application to Intellectual Ventures I L.L.C.
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87, 88, 96, 97, 100, 102, and 108 are cancelled. App. Br. 2.2 We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
Pursuant to our authority under 37 C.F.R. § 41.50(b), however, we
enter a new ground of rejection. We reject claim 56 under 35 U.S.C. § 101.
INVENTION
Appellants’ invention relates to methods, communication devices,
intermediary communication devices, communication systems, and
computer storage media for providing security of operations in a
communication between two peer entities. See generally Spec., ¶ [0001].
Claim 56 is illustrative and is reproduced below with the disputed element
emphasized:
56. A method for providing security in a communication
system, the method comprising:
receiving a request for an operation from a first peer
entity at a second peer entity, wherein the request includes an
identity of the first peer entity;
validating the identity of the first peer entity at the
second peer entity by comparing the identity to a test identity
associated with a transport address from which the request was
received; and
comparing the request to a permission list at the second
peer entity, wherein the permission list comprises allowable
operations of the first peer entity.

The Examiner relies on the following as evidence of unpatentability:
Giaretta US 2007/0230453 A1 Oct. 4, 2007
(filed Feb. 6, 2004)

2 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed
March 18, 2010; (2) the Examiner’s Answer (Ans.) mailed May 17, 2010;
and (3) the Reply Brief (Reply Br.) filed July 16, 2010.
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ROY, MARK’ DIAMETER EXTENDS REMOTE AUTHENTICATION, NETWORKWORLD
1-3 (JAN. 1, 2000).
MICROSOFT COMPUTER DICTIONARY 42 (ALEX BLANTON ED., MICROSOFT
PRESS 2002).
CALHOUN, P. ET AL., RFC 3588: DIAMETER BASE PROTOCOL, 1-138 (SEPT.
2003) (hereinafter “RFC 3588”).
THE REJECTION
The Examiner rejected claims 56-58, 60, 61, 64-70, 74, 75, 77, 79-83,
85, 86, 89-95, 98, 99, 101, 103-107, and 109-112 under 35 U.S.C. § 102(e)
as anticipated by Giaretta. Ans. 3-9.

ANTICIPATION REJECTION BY GIARETTA
Regarding illustrative claim 56, the Examiner finds that Giaretta
discloses each and every element of the claimed invention. Id. at 3-4. In
particular, the Examiner finds that Giaretta discloses a procedure for
authenticating a mobile node (Giaretta, ¶¶ [0081], [0095]-[0098]) and a
procedure for authorizing access to a service using attribute value pairs
(AVPs), which includes the storage of identifiers, such as a user name and a
Network Access Identifier (NAI), or a user name and a Home Address
(HoA) (Id. at [0120]-[0132]). Ans. 4. The Examiner concludes that these
disclosures would “suggest” to a person of ordinary skill in the art to
perform authentication based on a comparison of a user identity and a test
identity associated with a transport address. Ans. 11.
Appellants argue that Giaretta fails to disclose validating the identity
of a first peer entity by comparing the identity of the first peer entity to a test
identity associated with a transport address from which the first peer entity’s
request was received. App. Br. 8-12. Further, Appellants argue that the
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Examiner misinterprets the authentication and authorization steps of
Giaretta. Id. at 12-15. Finally, Appellants argue that the Examiner applies
the incorrect standard for demonstrating anticipation. Reply Br. 6-7.
ISSUE
Under 35 U.S.C. § 102, has the Examiner erred in rejecting claim 56
by finding that Giaretta discloses “validating the identity of the first peer
entity at the second peer entity by comparing the identity to a test identity
associated with a transport address from which the request was received”?3
ANALYSIS
Based on the record before us, we find error in the Examiner’s
anticipation rejection of representative claim 56 which calls for, in pertinent
part, “validating the identity of the first peer entity at the second peer entity
by comparing the identity to a test identity associated with a transport
address from which the request was received.” App. Br. 20. “A claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
1987) (emphasis added).
1. Failure to Disclosure of Every Element.
The Examiner acknowledges that the dispositive issue in this appeal is
“whether [in addition to the user identity,] Giaretta performs the
authentication based on an associated transport address as well.” Ans. 10.

3 Appellants raise a second issue regarding whether the Examiner erred in
finding that Giaretta discloses the additional element of dependent claim 64
or the corresponding elements of claims 74, 89, and 103. Because the
reversal of the rejection of independent claims 56, 74, 81, and 98 is
dispositive, we do not reach this second issue.
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As noted above, Appellants’ claim 56 recites a step of “validating” the
identity of a first peer entity at a second peer entity by performing the sub-
step of “comparing” the identity of the first peer entity to a test identity.
Moreover, the test identity is associated with a transport address, e.g., an
Internet Protocol (IP) address (Spec., ¶ [0042]), of the first peer entity. App.
Br. 8-9, 14; Reply Br. 5. Referring to Figure 2, Appellants describe the
“validating” step of claim 56 as a step for determining whether the identity
of the first peer entity (e.g., AS1) is valid by comparing the identity and its
IP address to a test identity included on a preconfigured “security config
table.” Spec., ¶¶ [0044]-[0045], [0049]. Once the identity of the first peer
entity has been validated by this comparison, the request is compared to the
permissions list to determine whether the first peer entity has permission to
use (is granted access to) the requested operation. Id. at [0046], [0050].
The Examiner relies upon RFC 3588’s definition of the terms
“authentication” and “authorization.” Ans. 4; Final Rej. 6. Specifically,
authentication is “[t]he act of verifying the identity of an entity (subject),”
and authorization is “[t]he act of determining whether a requesting entity
(subject) will be allowed access to a resource (object).” RFC 3588, 13.4 We
agree. In view of these definitions and the Specification (¶¶ [0003]-[0005],
[0063]), we construe the “validating” step of Appellants’ claim 56, including
the sub-step of “comparing the identity to a test identity associated with a

4 The Examiner cites to another definition of “authentication” in the
Microsoft Computer Dictionary. Ans. 10. We find this definition consistent
with RFC 3588’s definitions, in that it defines authentication as the process
of validating a user’s identity, e.g., logon information, and describes a
subsequent grant of access, i.e., authorization, based on a permission list. Id.
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transport address from which the request was received,” to describe an
authentication procedure.
The Examiner finds that Giaretta describes an authentication
procedure by which the identity of a first peer entity (e.g., a mobile node
MN) is validated at a second peer entity (e.g., the AAA server). Ans. 4
(citing Giaretta, ¶¶ [0081], [0095]-[0098]). We agree. The Examiner
further finds that Giaretta describes an authorization procedure by which a
user’s authorization level is determined from stored identifiers, e.g., attribute
value pairs (AVPs). Id. (citing Giaretta, ¶¶ [0120]-[0132]). Again, we
agree. Although Giaretta describes both an authentication procedure and an
authorization procedure, and despite the different definitions for each term in
the relevant art, the Examiner contends that the terms are used
interchangeably in the art. Id. at 13. We do not agree with this contention.
Giaretta further describes that the AVPs, including a “User Name
AVP with the user’s [Network Access Identifier (NAI)],” are sent by the
AAA Server to a Home Agent and that the Home Agent stores these AVPs
in a Service Authorization Cache. Giaretta, ¶¶ [0121], [0125], [0126].
Consequently, the Examiner concludes that, because the Home Agent stores
particular information, including the NAI and Home Address (HoA) of the
mobile node for authorization purposes, the storage of this information
would suggest to a person of ordinary skill to compare this transport
address-type information to authenticate the user’s identity. Ans. 11. We do
not agree with this conclusion.
As Appellants note, Giaretta merely discloses the storage of this
information, and the Examiner fails to demonstrate that Giaretta’s AVPs are
compared for the purpose of authenticating (validating) the identity of the
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mobile node MN. App. Br. 11-12. Moreover, Appellants argue that the
Examiner has misinterpreted Giaretta’s description of the storage of AVPs,
including information corresponding to transport addresses (see Ans. 10), as
related to an authentication procedure. App. Br. 12-14. Instead, Appellants
argue that the various AVPs stored in Giaretta’s Service Authorization
Cache are used in an authorization procedure, rather than an authentication
procedure. Id. at 13. We agree with the Appellants’ analysis of this aspect
of Giaretta as directed to authorization, not authentication.
We find that the Examiner fails to demonstrate that Giaretta
discloses the comparison of two identities, together with associated transport
address-type information, to authenticate the user’s identity.
2. Improper Anticipation Standard.
We also find that the Examiner applies an incorrect standard for
demonstrating anticipation. See Reply Br. 6-7. In particular, the Examiner
finds that “the authentication in Giaretta takes place using attribute value
pairs (AVP), which could include a user identity and some-type of network
address.” Ans. 10 (emphasis added). Further the Examiner finds that “one
of ordinary skill in the art could reasonably construe the disclosure of
Giaretta as validating the identity of the first peer identity at the second peer
entity by [the comparing sub-step of the disputed limitation].” Id. at 12
(emphasis added). Similarly, regarding the storage of AVPs on Giaretta’s
Service Authorization Cache, the Examiner contends that “one of ordinary
skill in the art could reasonably conclude that the authentication data is
stored on the home agent as a comparison point for when mobile nodes
attempt to authenticate for the Mobile IP service.” Id. (emphasis added).
Reliance upon what a reference “could” disclose, however, is not the
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standard for demonstrating anticipation.5 Thus, we find that the Examiner
fails to demonstrate that Giaretta discloses, expressly or inherently, the
validation of the identity “by comparing the identity to a test identity
associated with a transport address from which the request was received.”
3. Improper Reliance on Roy.
The Examiner finds that, even if Giaretta fails to describe the recited
“validating” step of claim 56, Roy discloses this missing element of the
claim. Ans. 11. Nevertheless, the Examiner may not rely on multiple
references to supply missing elements in an anticipation rejection. See
MPEP § 2131.01. The Examiner’s reliance on Roy to supply an element of
Appellants’ claim 56 that is missing from Giaretta is not permissible in an
anticipation rejection. Thus, we agree with Appellants that the Examiner’s
reliance on Roy here is not proper. App. Br. 15-16; Reply Br. 12. In
addition, we find that the Examiner has failed to clearly state the basis for
the reliance on Roy. In re Hoch, 428 F.2d 1341, 1342 n. 3 (CCPA 1970)
(“Where a reference is relied on to support a rejection, whether or not in a
‘minor capacity,’ there would appear to be no excuse for not positively
including that reference in the statement of the rejection.”). Therefore, we
find that the Examiner’s reliance upon Roy is improper.
Nevertheless, to the extent that Roy is before us, we find the
Examiner’s findings regarding Roy’s disclosure unpersuasive. The Examiner
relies on step 2 of Roy’s figure to supply the missing elements of Giaretta.
Ans. 11. In step 1, Roy describes that “[t]he user requests services from the

5 The Examiner’s reliance on Merck & Co. v. Biocraft Laboratories, 874
F.2d 804 (Fed. Cir. 1989), is unavailing. Ans. 12-13. In Merck, the Court
considered whether a reference could be applied for what it suggested, as
well as for what it taught, in an obviousness rejection. 874 F.2d at 807-08.
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remote ISP, which in turn requests the user’s credentials.” Roy, 3. In step 2,
Roy describes that “[t]he user submits ID, password and the IP address of
his home-agent ISP. The remote server performs mutual authentication with
the home-agent ISP, and then forwards the user’s credentials.” Id.
(emphasis added.) Thus, Roy fails to disclose the “validating” step, as
recited in claim 56, which is missing from Giaretta. App. Br. 16.
For the foregoing reasons, Appellants have persuaded us of error in
the anticipation rejection of: (1) independent claim 56; (2) independent
claims 74, 81, 98, 105, 110, and 112, which recite elements commensurate
with the disputed element of claim 56; and (3) dependent claims 57, 58, 60,
61, 64-70, 75, 77, 79, 80, 82, 83, 85, 86, 89-95, 99, 101, 103, 104, 106, 107,
109, and 111.

NEW GROUNDS OF REJECTION OF CLAIM DIRECTED TO
UNPATENTABLE SUBJECT MATTER
ANALYSIS
In independent claim 56, Appellants recite three steps: “receiving” a
request, “validating” the identity of the first peer entity that sent the request,
and “comparing” the request to a permission list. Under the broadest
reasonable interpretation, the three steps of claim 56 read on a process that
could be performed in the human mind, or by a human using a pen and
paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1371, 1372 (Fed. Cir. 2011) (determining that a method for verifying the
validity of a credit card transaction over the Internet is nonstatutory as an
abstract idea capable of being performed in the human mind or by a human
using a pen and paper). “[M]ental processes–or processes of human
thinking–standing alone are not patentable even if they have practical
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application.” In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009); see also
Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature . . . ,
mental processes, and abstract intellectual concepts are not patentable, as
they are basic tools of scientific and technological work.” (emphasis
added)).
The U.S. Supreme Court acknowledges that the machine-or-
transformation test is a “useful and important clue or investigative tool” for
determining patent eligibility under § 101. Bilski v. Kappos, 130 S.Ct. 3218,
3221 (2010). In this regard, we note that none of the recited steps refers to a
specific machine by reciting structural limitations of any apparatus or to any
specific operations that would cause a machine to be the mechanism to
perform these steps. App. Br. 20. In view of the Supreme Court’s guidance
in Bilski, and that of the Federal Circuit in CyberSource, we conclude that
independent claim 56 is directed to an unpatentable mental process.
Although we decline to reject every claim, or even every independent
claim, under our discretionary authority under 37 C.F.R. § 41.50(b), we
emphasize that our decision does not mean that the remaining claims are
patentable. Rather, we merely leave the patentability determination with
respect to the remaining claims to the Examiner. See MPEP § 1213.02.

CONCLUSION
The Examiner erred in rejecting claims 56-58, 60, 61, 64-70, 74, 75,
77, 79-83, 85, 86, 89-95, 98, 99, 101, 103-107, and 109-112 under § 102(e).
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim
56 under § 101, as directed to non-statutory subject matter.

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DECISION
The Examiner’s decision rejecting claims 56-58, 60, 61, 64-70, 74, 75,
77, 79-83, 85, 86, 89-95, 98, 99, 101, 103-107, and 109-112 is reversed.
We reject claim 56 under § 101, as directed to non-statutory subject
matter. According to § 41.50(b), “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Further,
§ 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

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