Ex Parte Essigmann et al

Patent Trial and Appeal Board

Dec 27, 2018

14408178 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/408,178 12/15/2014
27045 7590
ERICSSON INC.
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
12/31/2018
FIRST NAMED INVENTOR
Kurt Essigmann
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P45066-US1 8089
EXAMINER
DOLLY,KENDALLLYNN
ART UNIT PAPER NUMBER
2436
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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):
michelle.sanderson@ericsson.com
pam.ewing@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT ESSIGMANN, GERASIMOS DIMITRIADIS, and
VOLKER KLEINFELD
Appeal 2018-005648
Application 14/408,178
Technology Center 2400
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-26. Final Act. 5. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Appeal 2018-005648
Application 14/408, 178
THE CLAIMED INVENTION
The present invention relates generally to "to the processing of
messages for subscriber sessions," and more particularly "to the processing
of a session-related message in a scenario in which a message originator and
a destination of the message are located in different network domains."
Spee. 1, 11. 9-12. Independent claims 1 and 18 are directed to methods and
independent claims 21, 23, and 24 are directed to network elements. App.
Br. 14, 18-21.
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A method of processing a message for a subscriber
session, the method comprising:
Receiving, at a network element, a message, the message
comprising a Fully Qualified Domain Name, FQDN, of an
originator of the message, wherein the originator is located in a
first network domain and wherein the message is directed
towards a destination in a second network domain;
determining, at the network element, the FQDN comprised
in the message;
determining, at the network element, an identifier
associated with the message, wherein the identifier comprises at
least one of a subscriber identifier, a session identifier and a
destination identifier;
applying, at the network element, a cryptographic
operation on the FQDN and the identifier, or on information
derived therefrom, to generate a cryptographic value;
processing, at the network element, the message by
substituting at least a portion of the FQDN with the
cryptographic value; and
forwarding, from the network element, the processed
message towards the second network domain.
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Application 14/408, 178
REJECTIONS ON APPEAL
Claims 1-26 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final Act.
4.
Claims 1-8 and 10-26 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Donovan (US 2013/0151845 A 1; published June 13,
2013) and Mann et al. (US 2015/0046826 Al; published Feb. 12, 2015)
("Mann"). Final Act. 6, 19, 23.
ANALYSIS
35 US.C. § 101 Rejection
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 573 U.S. 208 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially excepted from patent eligibility under 35 U.S.C. § 101.
In the first step, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 573 U.S. at 218. In the
second step, we "consider the elements of each claim both individually and
'as an ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Alice,
573 U.S. at 217 (quoting Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (2012)). In other words, the second
step is to "search for an 'inventive concept' - i.e., an element or combination
of elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Id.
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
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The Examiner determines the claims are "directed to the abstract idea
of an idea of itself (i.e., the idea of collecting information, analyzing it, and
displaying different results of the collection and analysis: electric power
group)." Final Act. 4; see also Ans. 4 (citing Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). According to the Examiner,
the claimed "steps of receiving, determining and forwarding all relate to an
abstract idea of data collection and/or data analysis," such as in Electric
Power Group, where the "courts held that claims that do not go beyond the
collection and analysis of information in a particular field, stating those
function in general terms, without limiting them to a technical means for
performing the functions define a desirable information based result and are
not limited to inventive means of achieving the result." Ans. 4.
Appellants argue the claims are "directed to a method of processing a
message for a subscriber session," and that the steps are "performed at a
network element." App. Br. 8. Specifically, Appellants contend the "claims
are directed to solving a problem that is rooted in inter network domain
communication," and "provide a solution for how to process a message so
that an external network domain is kept unaware of the internal architecture
of the internal network domain" by "processing the message in a way that a
cryptographic operation is applied [to] the FQDN and identifier of the
message." Id. According to Appellants, the claimed receiving of a message,
processing the message, and forwarding the processed message makes the
network element "able to 'prevent topological information from leaving a
dedicated network domain via outgoing messages."' Id. Appellants argue,
unlike in Electric Power, the "subject claims of this appeal do not simply
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Application 14/408, 178
collect data for presentation to a user, rather it improves the processing of
messages in a communications network." Reply Br. 2.
We agree with Appellants. We find the present claimed invention is
more similar to the patent-eligible claimed invention in Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) than to the patent ineligible
claims in Electric Power. Specifically, our reviewing court has examined
"whether the focus of the claims is on the specific asserted improvement in
computer capabilities (i.e., the self-referential table for a computer database)
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, 822 F.3d at 1335-36. In
Enfish, the court highlighted that whether "the improvement is not defined
by reference to 'physical' components does not doom the claims," and rather
the "self-referential table recited in the claims on appeal is a specific type of
data structure designed to improve the way a computer stores and retrieves
data in memory." Enfzsh, 822 F.3d at 1339.
Here, as identified by Appellants, the claimed steps of processing a
message in a way that the cryptographic operation is applied to the FQDN
and identifier are performed at a network element. However, like in Enfish,
the claimed steps performed at the network element are directed to
improving computer function (i.e., solving a problem technologically rooted
in inter network domain communication with a technologically rooted
solution to process a message while hiding the internal architecture). See
Spec. 10 ("the need for maintaining a mapping table that defines
associations between pairs of internal and external host names can be
avoided"). Like in Enfish, the claimed invention is not merely directed to
generic computers performing generic computer functions that are otherwise
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Application 14/408, 178
well-understood, routine, and conventional-which would not amount to
significantly more than the abstract idea-but, instead, is directed to a
specific improvement in computer capabilities (i.e., inter network domain
communication). Such an improvement is not an abstract idea. See Enfzsh,
822 F.3d 1327.
Therefore, Appellants have persuasively established that the claimed
invention is directed to a specific improvement in computer capabilities and
should not be considered abstract.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 101
rejection of claims 1-26.
35 US.C. § 103 Rejection
Claim 1 recites "applying, at the network element, a cryptographic
operation on the FQDN and the identifier, or on information derived
therefrom, to generate a cryptographic value."
Appellants contend Donovan does not teach "applying a
cryptographic operation on the FQDN and the identifier." App. Br. 10.
Specifically, Appellants argue Donovan does not teach "also encrypting an
identifier as recited in Claim 1," which "requires that the cryptographic
operation be performed on the FQDN and the identifier." App. Br. 1 O; see
App. Br. 11. According to Appellants, Donovan teaches "only a portion of
the FQDN being encrypted," but "does [not] show how the identifier is
included and the cryptographic operation is applied to both, together." App.
Br. 10. Appellants further contend the claimed "'or on information derived
therefrom' refers back to both the FQDN and the identifier - not just one of
the FQDN or the identifier." Reply Br. 3. Specifically, Appellants argue the
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"phrase 'or information derived therefrom' would include information
derived from both the FQDN and identifier." Reply Br. 3--4. According to
Appellants, "whenever the cryptographic operation is described [in] the
Application it is always in the context of using at least portions of both the
FQDN and an identifier," and therefore "both the FQDN and an identifier
were to be used in the cryptographic operation." Reply Br. 3 ( citing Spec.
,r,r 16, 21, 78).
We are not persuaded by Appellants' arguments. Specifically, we
agree with the Examiner's conclusion that, under broadest reasonable
interpretation, the claim limitation includes that "the cryptographic operation
can be performed on information derived therefrom" the FQDN and/or the
identifier. Ans. 6. We further agree with the Examiner's finding that
Donovan teaches applying a cryptographic operation on the domain and
identifier, or information derived therefrom, to generate a cryptographic
value. Final Act. 7 (citing Donovan ,r,r 22, 23); see Ans. 7. According to the
Examiner, Donovan teaches receiving a message with an origin host value as
well as an origin realm value, and Donovan's received message teaches the
claimed FQDN and identifier because "the message contains information
pertaining to information relating to the originator," and that both the "origin
host value as well as the origin realm value may both be encrypted." Ans. 7.
Appellants' Specification describes "[t]he cryptographic operation
applied on the FQDN and the identifier, or an information derived from
(such as a portion of the FQDN and/or a portion of the identifier), may
comprise one or more operational steps." Spec. 4, 11. 19-21. Contrary to
Appellants' argument (see Reply Br. 3), the Specification does not limit "or
an information derived from" to using portions of both the FQDN and
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Application 14/408, 178
identifier. The claimed "FQDN and the identifier, or ... information
derived therefrom" to which the cryptographic operation is applied, in light
of the Specification, encompasses a portion of the FQDN or a portion of the
identifier. Reply Br. 2.
As cited by the Examiner (see Final Act. 7), Donovan describes
"[ d]iameter agent 106 may be configured to encrypt the origin-host value in
the request message" and "the origin-realm value in the ULR message may
optionally be encrypted," with the example that "the Diameter ULR message
is modified to include encrypted routing information indicated as 'Origin-
Host=Encrypted(MMEl ). "' Donovan ,r 22. Donovan also describes
"[ u Jpon receiving the Diameter ULA message, Diameter agent 106 is
configured to encrypt the origin-host A VP parameter value and subsequently
replace the original origin-host A VP parameter value with the encrypted
value." Donovan ,r 23.
Appellants have not provided persuasive evidence or argument that
the claimed applying a cryptographic operation to the FQDN and the
identifier "or on information derived therefrom," encompassing a portion of
the FQDN or a portion of the identifier, is not taught or suggested by
Donovan's encrypting (i.e., applying a cryptographic operation to) the
origin-host value and/or the origin-realm value (i.e., at least a portion of the
FQDN).
Accordingly, we sustain the 35 U.S.C. § 103 rejection of independent
claim 1, as well as independent claims 18, 21, 23, and 24, and dependent
claims 2-8, 10-17, 19, 20, 22, 25, and 26, not separately argued. See App.
Br. 12.
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Application 14/408, 178
DECISION
The Examiner's rejection of claims 1-26 under 35 U.S.C. § 101 is
reversed.
The Examiner's rejection of claims 1-8 and 10-26 under 35 U.S.C.
§ 103 is affirmed.
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).
AFFIRMED-IN-PART
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