Ex Parte Holtmanns et al

Patent Trial and Appeal Board

Feb 28, 2017

13682616 (P.T.A.B. Feb. 28, 2017)

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.
13/682,616 11/20/2012 Silke Holtmanns 39700-732C01US 5617
12358 7590 03/02/2017
Mint7 T evin/Nnkia Teohnnlnaies; Ov
EXAMINER
One Financial Center
Boston, MA 02111
WRIGHT, BRYAN F
ART UNIT PAPER NUMBER
2497
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
IPDocketingBOS @ mintz.com
IPFileroomBOS@mintz.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SILKE HOLTMANNS and DAN FORSBERG
Appeal 2016-007712
Application 13/682,6161
Technology Center 2400
Before CARL W. WHITEHEAD JR., MICHAEL J. STRAUSS, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection2 of
claims 31, 32, and 37—56, which are all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants’ Brief (“App. Br.”) identifies the real party in interest as Nokia
Corporation. App. Br. 2.
2 Claims 37, 41, 43, 45, 50, and 52 are objected to as being dependent on a
rejected base claim, but have been indicated to be allowable if rewritten in
independent form. Final Act. 18—19.
Appeal 2016-007712
Application 13/682,616
CLAIMED SUBJECT MATTER
The claims are directed to encrypted identifiers in a wireless
communication system. Claim 31, reproduced below, is illustrative of the
claimed subject matter:
31. An apparatus comprising:
at least one processor; and
at least one memory including computer program code, the
at least one processor, the at least one memory, and the computer
program code causing the apparatus to at least:
send a request, from a network to a user equipment,
for an identifier representative of the user equipment, the
request including an indicator that the network supports
encrypted identifiers, wherein the indicator is provided in
a bit of the request; and
receive an encrypted identifier by the network from
the user equipment, wherein the encrypted identifier
includes an encrypted international mobile equipment
identity.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pasanen US 2004/0147242 A1 July 29, 2004
Faisy US 2005/0282584 A1 Dec. 22, 2005
Almgren US 2006/0003763 A1 Jan. 5, 2006
Marmigere US 7,296,156 B2 Nov. 13, 2007
REJECTIONS
Claims 31, 32, 38-40, 44, 47-49 and 56 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Marmigere and Faisy.
Claims 42, 46, and 51 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Marmigere, Faisy, and Almergan.
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Appeal 2016-007712
Application 13/682,616
Claims 53—55 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marmigere, Faisy, and Pasanen.
ISSUE
Has the Examiner erred in finding the combined teachings of
Marmigere and Faisy teach or suggest the limitation:
send a request, from a network to a user equipment, for an
identifier representative of the user equipment, the request
including an indicator that the network supports encrypted
identifiers, wherein the indicator is provided in a bit of the
request,
as recited in independent claim 31, and recited similarly in independent
claims 38 and 47?
ANALYSIS
In rejecting the independent claims, the Examiner finds Marmigere
and Faisy collectively teach the above-identified limitation (referred to
hereinafter as “the disputed limitation”). More specifically, the Examiner
finds Marmigere teaches “wherein the indicator is provided in a bit of the
request” (citing Marmigere col. 4,11. 30-50 and col. 5,11. 59-63), but does
not teach “send a request, from a network to a user equipment, for an
identifier representative of the user equipment.” Final Act. 13—14, Ans. 6—7.
The Examiner relies on Faisy to supplement the teachings of Marmigere,
finding Faisy teaches “send[ing] a request from a network to a user
equipment for an identifier representative of the user equipment,” citing
paragraphs 18, 39, 43, and 44 of Faisy. Final Act. 5, 14. According to the
Examiner, Faisy’s request for an IMEI (20) made by mobile equipment (1)
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Appeal 2016-007712
Application 13/682,616
to a communicating object (2) teaches a request from a network to user
equipment for an identifier representative of the user equipment. Final Act.
5.
Appellants argue the Examiner has erred in finding Marmagere and
Faisy teach the disputed limitation. Appellants first contend Marmigere
does not teach the recited “indicator [] provided in a bit of the request”
because “Marmigere’s indicator is a user data header indicator (UDHI) used
to determine whether to reject a message.” App. Br. 15. More specifically,
Appellants contend the UDHI merely indicates the presence of a user data
header (“UDH”) and not whether the “network supports encrypted
identifiers” as recited in the claims. Reply Br. 9. According to Appellants,
the presence of a UDH as indicated by the UDHI bit does not necessarily
indicate message encryption is supported, as a UDH may be present in
Marmigere’s system, and encryption may still not be supported. Reply Br.
9-10.
We agree with Appellants the Examiner has failed to demonstrate
Marmigere and Faisy teach or suggest the disputed limitation. The UDHI
described in Marmigere merely indicates the presence of a user data header.
Marmigere makes clear the presence of a user data header may, or may not,
indicate support for message encryption. More specifically, Marmagere
teaches the UDHI (which the Examiner finds to be an indicator bit) is
checked in step 304 of Figure 3. Marmigere, col. 5,11. 50—51. If the UDHI
is found, Marmigere requires a second check to determine “if an Information
Element (IE) group in the User Data Header is dedicated to the signaling of
the IMEI-based encryption.” Marmigere col. 5,11. 61—63. In sum, we agree
with Appellants the mere presence of a UDHI does not indicate the network
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Appeal 2016-007712
Application 13/682,616
supports encrypted identifiers. Constrained by the record before us, we do
not, therefore, sustain the rejection of independent claims 31,38, and 47.3
For the same reasons, we do not sustain the rejections of dependent claims
32, 37, 39-46, and 48—56 which depend therefrom.
DECISION
The Examiner’s rejections of claims 31, 32, and 37—56 are reversed.
REVERSED
3 Appellants present other arguments for patentability. However, because
the arguments discussed above are dispositive, we need not reach
Appellants’ remaining arguments.
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