Ex Parte Frank

Patent Trial and Appeal Board

Nov 21, 2014

11234031 (P.T.A.B. Nov. 21, 2014)

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.
11/234,031 09/22/2005 Edward H. Frank 2875.0730001 2161
26111 7590 11/24/2014
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
VAUGHAN, MICHAEL R
ART UNIT PAPER NUMBER
2431
MAIL DATE DELIVERY MODE
11/24/2014 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 EDWARD H. FRANK

____________________

Appeal 2012-001981
Application 11/234,031
Technology Center 2400
____________________

Before LEE E. BARRETT, JEAN R. HOMERE, and
DANIEL J. GALLIGAN, Administrative Patent Judges.

GALLIGAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1–36, which are all the claims pending
in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2

1 The Appeal Brief identifies Broadcom Corp. as the real party in interest.
App. Br. 3.
2 Our Decision refers to Appellant’s Appeal Brief filed on February 28, 2011
(“App. Br.”); Appellant’s Reply Brief filed July 11, 2011 (“Reply Br.”);
Examiner’s Answer mailed May 11, 2011 (“Ans.”); and original
Specification filed September 22, 2005 (“Spec.”).
Appeal 2012-001981
Application 11/234,031

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STATEMENT OF THE CASE
Claims on Appeal
Appellant’s application relates to policy-based authentication for data
security and access to data and functions of a computing device. Spec. 1, 6.
Claims 1, 12, 21, 28, 32, 33, and 34 are independent claims. Claim 1 is
reproduced below.
1. A mobile device configured to perform a plurality of
functions comprising:
a memory for storing a plurality of different security
policies, wherein each of the plurality of different security
policies has a corresponding security requirement, wherein each
of the plurality of functions has an associated security policy,
wherein each security requirement requires either authentication
or encryption of data associated with the function of the
corresponding security policy;
an input device for invoking a function from the plurality
of functions by a user;
a processor for implementing a first security policy from
the stored plurality of different security policies associated with
the invoked function; and
a security module for requiring the user to satisfy a
security requirement corresponding to the first security policy,
before the invoked function is performed by the mobile device.

Examiner’s Rejections
Claims 1–9, 11–18, 20–22, 24, 25, 27–29, and 31–35 stand rejected
under 35 U.S.C. § 102(e) as being unpatentable over Wright.3 Ans. 3–7.
Claims 10, 19, 26, 30, and 36 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wright and Rosenthal.4 Ans. 7–8.

3 Wright et al., U.S. Patent App. Publication No. 2004/0123153 A1,
published June 24, 2004 (hereinafter “Wright”).
Appeal 2012-001981
Application 11/234,031

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ANALYSIS
Appellant contends that Wright does not disclose the limitation of
claim 1 reciting “a security module for requiring the user to satisfy a security
requirement corresponding to the first security policy, before the invoked
function is performed by the mobile device.” App. Br. 14–15, 18–19. In
particular, Appellant argues that the user verification scheme of paragraph
52, on which the Examiner relied in the rejection, is not specific to a
function of the mobile device but, rather, is used to retrieve the security
policy at the mobile device. App. Br. 19. Therefore, Appellant argues:
“Because the username and password verification scheme in paragraph 52
occurs before the security policy is even received by the mobile device, it
cannot be a security requirement corresponding to the security policy as
claimed.” App. Br. 19.
We are persuaded by Appellant’s arguments. Wright discloses using
authorization protocols, for “the exchange of security information or
diagnostic information or both” between the server and the client mobile
device. Wright ¶ 59. Wright discloses “the authorization module 232
authorizes a communication exchange between the client mobile device and
the policy distribution or policy management modules.” Wright ¶ 52.
Wright further discloses that the policy distribution module 234 distributes
security information, such as security policies, to mobile devices. Wright
¶ 51. Therefore, with respect to security policy verification, Wright
discloses user verification in the process of downloading a security policy to
the mobile device, as Appellant argues, not user verification for performing

4 Rosenthal et al., U.S. Patent No. 7,162,428 B1, issued Jan. 9, 2007
(hereinafter “Rosenthal”).
Appeal 2012-001981
Application 11/234,031

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the user-invoked function pursuant to an existing security policy. Therefore,
the disclosure relied upon by the Examiner is insufficient to support the
Examiner’s findings with respect to this claim limitation. See Ans. 4 (citing
Wright ¶¶ 52, 59).
Based on the foregoing, we do not sustain the rejection of claim 1.
The Examiner rejected claims 12 and 32 for the same reasons as claim 1.
Ans. 3–4. As such, we do not sustain the rejection of claims 12 and 32.
Claim 21 recites a similar limitation: “a security module for requiring
the user to satisfy the implemented security requirement, before the invoked
function is performed by the mobile device.” App. Br. 30. In the rejection
of claims 21, 28, and 33, the Examiner also cited paragraph 52 of Wright
and provided further explanation:
From the numerous examples and embodiments, it’s clear that
the mobile device of Wright dynamically changes the functions
which a user can do based on the location of the device. And
the user must at times input authorization information to further
his/her access to data. The mobile device determines its
location and adjusts the function that the user can do. And if
needed, requests identifying information from said user in order
to perform said function.
Ans. 5. Based on our discussion of the disclosure of paragraph 52 of Wright
above, we find that the evidence of record is not sufficient to support the
Examiner’s findings. Therefore, we do not sustain the rejection of claims 21,
28, and 33.
Claim 34 also recites a similar limitation: “a security module for
authorizing the user to invoke the function only after satisfying a security
requirement associated with the function by either authenticating the user or
encrypting data associated with the function.” App. Br. 33. In the rejection,
the Examiner cited paragraphs 52 and 58 of Wright without explanation.
Appeal 2012-001981
Application 11/234,031

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Ans. 7. For the reasons discussed above, the Examiner’s rejection of claim
34 also is not supported by the evidence.
Based on the foregoing, the rejection of dependent claims 2–9, 11,
13–18, 20, 22, 24, 25, 27, 29, 31, and 35 under 35 U.S.C. § 102(e) also is not
sustained.
The Examiner rejected dependent claims 10, 19, 26, 30, and 36 under
35 U.S.C. § 103(a) as obvious over Wright and Rosenthal. Ans. 7–8. The
Examiner has not relied on Rosenthal to address the deficiencies of Wright
discussed above. As such, we do not sustain the rejection of these claims
under 35 U.S.C. § 103(a).
Accordingly, the Examiner’s rejections of claims 1–36 are not
sustained.5

DECISION
We reverse the Examiner’s rejections of claims 1–36.

REVERSED

kme

5 It appears Appellant inadvertently omitted from its arguments the rejection
of claim 23, which depends from claim 22, which in turn depends from
independent claim 21. The Answer also does not include the rejection of
claim 23, although the Final Rejection addresses claim 23. See Final
Rejection (mailed July 6, 2010) at 10. Because we do not sustain the
rejection of claims 21 and 22, we also do not sustain the rejection of
claim 23.