Ex Parte Jordan et al

Board of Patent Appeals and Interferences

Jul 30, 2012

10279346 (B.P.A.I. Jul. 30, 2012)

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.
10/279,346 10/24/2002 Royce D. Jordan C01-0051-000 9859
52246 7590 07/30/2012
AT&T Legal Department - PIP Law LLC
Attn: Patent Docketing
One AT&T Way
Room 2A-207
Bedminster, NJ 07921
EXAMINER
LANIER, BENJAMIN E
ART UNIT PAPER NUMBER
2432
MAIL DATE DELIVERY MODE
07/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROYCE D. JORDAN and BRETT T. WILLIAMS
____________

Appeal 2010-000468
Application 10/279,346
Technology Center 2400
____________

Before ERIC B. CHEN, BRUCE R. WINSOR,
and GLENN J. PERRY, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3, 6-12, 16, 17, 19-28, 30-39, 42, 43, 45, and 49, which constitute
all the claims pending in this application. Claims 4, 5, 13-15, 18, 29, 40, 41,
44, and 46-48 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
“[Appellants’] invention relates generally to . . . encrypting messages
transmitted over a wireless communications system. More particularly,
[Appellants’] invention relates to . . . dynamically changing a password by
embedding it in an encrypted message that is transmitted over a wireless
communication system.” (Spec. ¶ [001]). Claims 1 and 43, which are
illustrative of the invention, read as follows:
1. A method of dynamically changing password keys in a
secured wireless communication system, the method
comprising:
initiating a password key change;
generating a new password key;
embedding, in an outgoing message comprising message
text, the new password key and a password key indicator,
wherein:
the outgoing message is sent between a wireless
device and a network element of a wireless
communications system; and
the password key indicator is randomly placed at a
first location within the message text of the outgoing
message, the new password key following the password
key indicator;
accessing a database comprising records of an old
password key associated with the wireless device;
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encrypting the outgoing message using the old password
key;
storing the new password key associated with the
wireless device on the database;
formatting the encrypted outgoing message; and
sending the encrypted outgoing message over the
wireless communications system using the new password key.
43. A password protected communications apparatus, the
apparatus comprising:
an operating system for:
receiving an encrypted first message from a
wireless transmission, the first message comprising
message text, a new password key and a password key
indicator;
decrypting the encrypted first message with an old
password key;
searching the message text portion of the
decrypted first message for a the new password key
indicator; and
parsing the new password key from the message
text portion if the password key indicator is located;
replacing an old receive password key in the
memory with the new password key, if the new password
key is a new receive password key; and
replacing an old transmit password key in the
memory with the new password key, if the new password
key is a new transmit password key;
decrypting a second message using the new
password key, if the new password key is a new receive
password key; and
encrypting a second message using the new
password key, if the new password key is a new transmit
password key; and
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a memory for storing the new password key, an initial
password key, and communications information, the initial
password key and the new password key associated with the
communications information.
Claims 1-3, 6-12, 16, 17, 19-28, 30-39, and 42 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter Appellants’
view as the invention. (Ans. 3).
Claims 43 and 45 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Morimoto (US 7,024,553 B1; Apr. 4, 2006, filed Oct. 3,
2000). (Ans. 3-4).
Claims 1-3, 7, 8, 17, 19, 20, 23, 24, 26, 27, 30, 31, 34-39, and 49
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Morimoto and
Munch (US 6,292,096 B1; Sept. 18, 2001). (Ans. 5-7).
Claims 6, 9-12, 16, 21, 22, 25, 28, 32, 33, and 42 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Morimoto, Munch, and Chen (US
2003/0221098 A1; Nov. 27, 2003). (Ans. 7-10).
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.”; “Reply Br.”) and the Answer (“Ans.”) for the respective positions of
Appellants and the Examiner.

ISSUES
The issues presented by Appellants’ contentions are as follows:
Did the Examiner err in rejecting claims 1-3, 6-12, 16, 17, 19-28, 30-
39, and 42 as indefinite under 35 U.S.C. § 112, second paragraph?
Does Morimoto disclose “receiving an encrypted first message from a
wireless transmission, the first message comprising message text, a new
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password key and a password key indicator” (hereinafter the “disputed
limitation”), as recited in claim 43?1

ANALYSIS
REJECTION UNDER 35 U.S.C. § 112, ¶ 2
In rejecting claims 1-3, 6-12, 16, 17, 19-28, 30-39, and 42 the
Examiner asserts that the claims are “incomplete for omitting essential steps,
such omission amounting to a gap between the steps.” (Ans. 3 (citing MPEP
§ 2172.01)). The Examiner explains as follows:
The [S]pecification details [(Spec. ¶ [076])2] that randomly
placing the password key in the message prevents users from
determining the location of the password key. The
[S]pecification also discloses that the password key is
discovered in the message by searching for the password key
indicator, which is also randomly placed within the message.
However, the receiving device does not have this indicator in
advance, and therefore cannot possible [sic] know what to
search for within the message. Additionally, the [S]pecification
is completely silent about the password key indicator being
received by the receiver of the message prior to searching the
message text for the password key.
(Ans. 3 (emphasis added)).
Appellants contend that, as to claims 1-3, 6-11, 23-28, 30-39, and 42,
the “claims include steps directed to embedding password key indicators in
messages, and a later verification step that does not require identifying

1 Appellants’ arguments present additional issues. We are persuaded of
error regarding this issue, which is dispositive of the appeal. Therefore, we
do not reach the additional issues.
2The original refers to paragraph [0078] of Patent Application Publication
US 2004/ 0083393 A1, published April 29, 2004. For consistency, we refer
throughout this opinion to the Specification filed October 24, 2002, rather
than to the Patent Application Publication.
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and/or extracting password keys or password key indicators. As such, the
steps relating to a ‘receiving device’ can not be considered ‘essential’ to the
invention claimed . . . .” (App. Br. 13).
As to claims 12, 16, 17, and 19-22, Appellants contend that “one of
ordinary skill in the art would will readily understand how to recognize the
password key indicator after reading through the Appellants[’] disclosure.”
(Reply Br. 3).
We agree with Appellants for the reasons set forth in the Briefs (App.
Br. 13-18; Reply Br. 2-3). We note that we construe the phrase “new
password key indicator” as encompassing an indicator for a “new password
key,” and not being limited to a “password key indicator” that is “new.” As
is implicit in Appellants’ arguments,3 one of ordinary skill in the art would
have understood from Appellants’ Specification (see, e.g., Spec. ¶ [073])
that the password key indicator character string, identifier, or delimiter may
be established as a part of the software or hardware of the devices.
Accordingly, we will not sustain the rejection of claims 1-3, 6-12, 16,
17, 19-28, 30-39, and 42 under 35 U.S.C. § 112, second paragraph.
REJECTION UNDER 35 U.S.C. § 102(E)
Appellants contend that Morimoto does not disclose the disputed
limitation, i.e., “receiving an encrypted first message from a wireless
transmission, the first message comprising message text, a new password
key and a password key indicator,” as recited in claim 43 (emphasis added).

3 “Appellants do not concede that steps directed to provisioning the devices
with hardware and software for performing these functions are ‘essential’ to
the claims.” (App. Br. 17). “The firmware or software and/or the
provisioning thereof at the communications system is not recited since such
details are known by those of ordinary skill in the art.” (Reply Br. 3).
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The Examiner finds that a
new password is included within a key delivery message along
with the key id that is encrypted using the old key (Col. 10, line
63 – Col. 11, line 20), which meets the limitation of an
operating system for receiving an encrypted first message from
a wireless transmission, the first message comprising text, a
new password key, and a password key indicator.
(Ans. 3-4).
We conclude the broadest reasonable interpretation of the “message”
of the disputed limitation encompasses a message that comprises three
individual elements: (1) message text (2) a password key; and (3) a
password key indicator. (See App. Br. 18). We note that the use of “and” in
the claim requires that all three elements be present in any message
encompassed by the disputed limitation. Appellants contend that “Morimoto
can not reasonably be construed as teaching at least these three features of
the claims in an enabling manner.” (Id.).
Appellants assert, inter alia, and we agree, that the cited passages of
Morimoto describe the delivery of a message that does not have a password
key embedded in the message. (See App. Br. 18). Rather, the message
includes a message that has associated with it a key ID that informs the
receiving unit as to which password key to retrieve from the key storage unit
to decrypt the message. In a normal message, i.e., in a message that is not a
STA key delivery message, the contents of the message may be text (see
Morimoto Figs. 2, 3).
On the other hand, we do not agree with Appellants that “Morimoto
does not disclose receiving a message that includes a password key indicator
and a password key.” (App. Br. 19). We find that Morimoto’s STA key
delivery message includes an updated STA key (password key) and an
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associated key ID (password key indicator) (Morimoto col. 11, ll. 37-45).
However, we agree with Appellants (App. Br. 18) that the cited portions of
Morimoto do not disclose that the updated STA key and key ID are
embedded in a message with message text. In other words, the Examiner
has not established that the cited portions of Morimoto disclose a message
that has: (1) message text; (2) a password key; and (3) a password key
indicator.
We find that the Examiner has failed to articulate a prima facie case of
anticipation. Accordingly, we will not sustain the rejection of claim 43 and
claim 45, which depends from claim 43, under 35 U.S.C. § 102(e).
REJECTIONS UNDER 35 U.S.C. § 103(A)
Morimoto and Munch
Claims 1-3, 7, 8, 17, 19, 20, 23, 24, 26, 27, 30, 31, 34-39, and 49
recite, or depend from claims that recite, limitations substantially the same
as the disputed limitation that we found missing from the cited portions of
Morimoto. The Examiner does not cite passages of Munch that cure the
deficiencies we find in the cited portions of Morimoto, nor does the
Examiner articulate a rationale that would establish the obviousness of the
disputed limitation over Morimoto, alone or in combination with Munch.
We conclude that the Examiner has failed to articulate a prima facie
case of obviousness. Accordingly, we will not sustain the rejection of
claims 1-3, 7, 8, 17, 19, 20, 23, 24, 26, 27, 30, 31, 34-39, and 49 under
35 U.S.C. § 103(a).
Morimoto, Munch, and Chen
Claims 6, 9-12, 16, 21, 22, 25, 28, 32, 33, and 42 recite, or depend
from claims that recite, limitations substantially the same as the disputed
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limitation that we found missing from the cited portions of Morimoto. The
Examiner does not cite passages of Munch or Chen that cure the deficiencies
we find in the cited portions of Morimoto, nor does the Examiner articulate a
rationale that would establish the obviousness of the disputed limitation over
Morimoto, alone or in combination with Munch or Chen.
We conclude that the Examiner has failed to articulate a prima facie
case of obviousness. Accordingly, we will not sustain the rejection of
claims 6, 9-12, 16, 21, 22, 25, 28, 32, 33, and 42 under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner to reject claims 1-3, 6-12, 16, 17, 19-
28, 30-39, and 42 under 35 U.S.C. § 112, second paragraph, as being
indefinite, is reversed.
The decision of the Examiner to reject claims 43 and 45 under 35
U.S.C. § 102(e) as anticipated by Morimoto is reversed.
The decision of the Examiner to reject claims 1-3, 7, 8, 17, 19, 20, 23,
24, 26, 27, 30, 31, 34-39, and 49 under 35 U.S.C. § 103(a) as unpatentable
over Morimoto and Munch is reversed.
The decision of the Examiner to reject claims 6, 9-12, 16, 21, 22, 25,
28, 32, 33, and 42 under 35 U.S.C. § 103(a) as unpatentable over Morimoto,
Munch, and Chen is reversed.

REVERSED

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