Ex Parte Kastelewicz et al

Board of Patent Appeals and Interferences

Jun 8, 2009

10442184 (B.P.A.I. Jun. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORG KASTELEWICZ and PETER KIM
____________

Appeal 2008-004808
Application 10/442,184
Technology Center 2400
____________

Decided:1 June 9, 2009
____________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
JOSEPH L. DIXON, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2007-3345
Application 09/709,433

2
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-10. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
INVENTION
The invention on appeal is directed generally to a method for
registering a communication terminal. More particularly, Appellants’
invention is directed to a secure and reliable method for registering a
communication terminal (e.g., a mobile telephone) belonging to a service
user (Spec. 1).

ILLUSTRATIVE CLAIM
Claim 1 further illustrates the invention:
1. A method for registering a communication terminal with
a service network which organizes a communications service,
where the service network is accessed by the communication
terminal using an access network which connects the
communication terminal to the service network, in which

in a preliminary step, a logon IP address which was
assigned to the communication terminal when the
communication terminal logged onto the access network is
received by the service network and is stored therein for the
respective user of the communication terminal,

when a first registration message sent by the
communication terminal is received a token is transmitted to the
communication terminal using a transport message sent using
the logon IP address, the token having been produced by the
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service network from the logon IP address and a random
number using an encryption method, and token data associated
with the token having been stored in the service network,

when a second registration message which is sent by the
communication terminal and contains the token is received the
service network compares the token received with the token
data, successful registration is identified if the token matches
the token data, and unsuccessful registration is identified if the
token does not match the token data.

PRIOR ART
The Examiner relies upon the following references as evidence in
support of the rejection:
Nuutinen US 6,865,681 B2 Mar. 8, 2005

3rd Generation Partnership Project, "Technical Specification Group
Core Network; Signalling flows for the IP multimedia call control
based on SIP and SDP," Stage 3, Release 5, 3GPP TS 24.228, pp. 1-
690, published 2002. (hereinafter “3GPP”).

THE REJECTION
Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of 3GPP and Nuutinen.

APPELLANTS’ CONTENTIONS
Appellants contend that neither 3GPP nor Nuutinen teaches or
suggests that the token is produced by both the logon IP address and a
random number (App. Br. 7, ¶3). Appellants further contend that “[t]he
Examiner has used impermissible hindsight by picking and choosing various
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elements from the two cited reference in an effort to create the claimed
invention.” (Id.)

EXAMINER’S RESPONSE
In the “Response to Arguments” section of the Answer (p. 10), the
Examiner asserts that “the combination of [3GPP] 24.228 and Nuutinen
teaches the token is produced using the logon IP address. Page 37, NOTE 1
of [3GPP] 24.228 teaches the use of RAND, a random number used in
AUTN and RES.” (Ans. 10). The Examiner previously stated in the Answer
(p. 9) that “[a]s defined in RFC 2327 [see Nuutinen, col. 7, TABLE 2], in
the Session Description Protocol, the ‘c’ identifier can contain the fully-
qualified domain name or the unicast IP address of the expected data
source.” (Ans. 9). The Examiner finds that “[c]learly, this definition shows
the IP address included in the authentication signature of Nuutinen can be
the address of the receiver.” (Ans. 9).
The Examiner maintains that “in the combination of [3GPP] 24.228
and Nuutinen, the authentication signature of Nuutinen would include both
the logon IP address of the receiver and RAND of [3GPP] 24.228.
Therefore, the combination of [3GPP] 24.228 and Nuutinen would teach the
token is produced from both the logon IP address and a random number.”
(Ans. 10).
The Examiner does not respond to Appellants’ allegation of
impermissible hindsight.

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ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are pivotal in this appeal:

1. Have Appellants shown the Examiner erred in finding
that the combination of 3GPP and Nuutinen teaches
and/or suggests that the token is produced from the logon
IP address and a random number? (See claim 1).

2. Have Appellants shown the Examiner erred by relying
upon impermissible hindsight in combining the 3GPP
and Nuutinen references to formulate a token produced
from the logon IP address and a random number?

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006). Therefore, we look to Appellants’ Briefs to show error in
the proffered prima facie case.

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FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:

THE PRIMARY 3GPP REFERENCE
1. 3GPP teaches a random number (RAND) is used to generate part of
the authentication token (AUTN), as shown under “NOTE 1” at the top of
page 37:
NOTE 1: The authentication vector may be of the form as in 3GPP TS
33.203 (if IMS AKA is the selected authentication scheme):

- AV = RANDn, || AUTNn || XRESn || CKn || IKn where:
- RAND: random number used to generate the XRES, CK, IK, and
part of the AUTN. It is also used to generate the RES at the UE.
- AUTN: Authentication token (including MAC and SQN).
- XRES: Expected (correct) result from the UE.
- CK: Cipher key (optional).
- IK: Integrity key.
(3GPP, p. 33).

2. 3GPP teaches a registration request from the user equipment (UE) that
is routed through the P-CSCF (Proxy Call Session Control Function) server
where the “contact field” indicates the point-of-presence for the subscriber –
the IP address of the UE, as shown at the top and bottom portions of page
33:

2. REGISTER request (UE to P-CSCF) - see example in table
6.2-2

The purpose of this request is to register the user's SIP URI with a S-
CSCF in the home network. This request is routed to the P-CSCF
because it is the only SIP [Session Initiation Protocol] server known
to the UE. In the following SIP request, the Contact field contains the
user's host address.
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The P-CSCF will perform two actions, binding and forwarding. The
binding is between the User's SIP address (userl_publicl@homel.net)
and the host (terminal) address ([5555::aaa:bbb:ccc:ddd]) which was
acquired during PDP context activation process.

Contact: This indicates the point-of-presence for the subscriber - the
IP address of the UE. This is the temporary point of contact
for the subscriber that is being registered. Subsequent
requests destined for this subscriber will be sent to this
address. This information is stored in the P-CSCF and S-
CSCF.
(3GPP, p. 33).

THE SECONDARY NUUTINEN REFERENCE
3. Nuutinen teaches “[f]or addressing SIP [Session Initiation Protocol]
uses an email-like identifier (SIP URL) in the form sip: user@host, where
the user part is a user name or phone number and the host part is either [a]
domain or a numeric network address. In many cases the email-like name
may be the same as user's email address and can be easily mapped.” (Col. 5,
ll. 36-41).
4. Nuutinen teaches that “[t]he Session Description Protocol (SDP) is
used by SIP [Session Initiation Protocol] for description of the capabilities
and media types supported by the terminals. Text based SDP messages,
which are sent in SIP message bodies, lists the features that must be
supported by the terminals.” (Col. 5, ll. 28-32).

5. Nuutinen teaches that “[w]hen using authentication the user digitally
signs the message that is about to be sent. The signature extends over the SIP
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[Session Initiation Protocol] message, so that the status-line, the Sip version
number, the headers after the Authorization header and the message body
are included in the signature.” (Col. 19, ll. 36-40).

6. Nuutinen teaches that the “c” SDP [Session Description Protocol]
session description item in an exemplary signed part of the message includes
an IP address, as follows:
“o-bell 53655765 2353687637 IN IP4 128.3.4.5” (col. 19, l. 55,
underlining added).

ANALYSIS
ISSUE 1
We decide the question of whether Appellants have shown the
Examiner erred in finding that the combination of 3GPP and Nuutinen
teaches and/or suggests that the token is produced from the logon IP address
and a random number. (See claim 1).
At the outset, we agree with the Examiner that 3GPP teaches a
random number (RAND) is used to generate part of an authentication token
(AUTN) (See FF 1, see also Ans. 10). The Examiner found that the logon
address was also taught by 3GPP (Ans. 8, last paragraph). We also agree
with the Examiner that 3GPP teaches a registration request from the user
equipment (UE) that is routed through the P-CSCF (Proxy Call Session
Control Function) server where the “contact field” indicates the point-of-
presence for the subscriber – the IP address of the UE [i.e., logon address]
(FF 2).
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However, the Examiner looks to the secondary Nuutinen reference for
a teaching or suggestion that a token is produced using a logon address (Ans.
4, 9-10).
The Nuutinen reference teaches that “[t]he Session Description
Protocol (SDP) is used by SIP [Session Initiation Protocol] for description of
the capabilities and media types supported by the terminals. Text based SDP
messages, which are sent in SIP message bodies, lists the features that must
be supported by the terminals.” (FF 4).
The Examiner points out in the Answer (p. 9) that “[a]s defined in
RFC 2327 [see Nuutinen, col. 7, TABLE 2], in the Session Description
Protocol, the "c" identifier can contain the fully-qualified domain name or
the unicast IP address of the expected data source. (Ans. 9, emphasis
added). The Examiner finds that “this definition shows the IP address
included in the authentication signature of Nuutinen can be the address of
the receiver.” (Ans. 9).
Appellants respond as follows:
However, there is no suggestion in Nuutinen indicating that the
descriptor "c" denotes the IP address of the receiver. Rather,
both tables in col. 8 of Nuutinen clearly show that the entry
assigned to "c" neither matches with the sender (entry
'From") nor with the receiver (entry "To") of the message. In
the first of these tables the entry "c" matches only with the entry
"Via"; in the second table the entry "C" does not match at all.
Moreover, in both tables the entry "c" is not assigned to an E
address but rather to a domain name address, Obviously, the
entry "C" denotes not a specific IP address of the receiver but
rather a general "connection information" as actually denoted in
table 2.
(App. Br. 6-7).

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Our review of the Nuutinen reference reveals that Appellants’
characterization of the sample SIP messages shown in column 8 is accurate.
However, Nuutinen also teaches that as an alternative to the email-like
identifier (SIP URL), e.g., in the form sip: user@host, “the user part is a user
name or phone number and the host part is either [a] domain or a numeric
network address.” (FF 3, emphasis added).
Thus, the evidence supports the Examiner’s finding that “the ‘c’
identifier can contain the fully-qualified domain name or the unicast IP
address of the expected data source. (Ans. 9, emphasis added). The
Examiner previously found that “this definition shows the IP address
included in the authentication signature of Nuutinen can be the address of
the receiver.” (Ans. 9).
We note that Nuutinen teaches that “[w]hen using authentication the
user digitally signs the message that is about to be sent. The signature
extends over the SIP message, so that the status-line, the Sip version
number, the headers after the Authorization header and the message body
are included in the signature.” (FF 5). In particular, we find that Nuutinen
expressly teaches the use of the “c” SDP session description item (in an
exemplary signed part of a SIP message) that includes an IP address, as
follows: “o-bell 53655765 2353687637 IN IP4 128.3.4.5” (FF 6,
underlining added).
Therefore, regarding ISSUE 1, we find Appellants have not shown error
in the Examiner's finding that 3GPP and Nuutinen, when combined, realize a
token that could be produced from a logon IP address and a random number
(see claim 1).

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ISSUE 2 - HINDSIGHT
We now reach the dispositive question of whether Appellants have
shown the Examiner erred by relying upon impermissible hindsight in
combining the 3GPP and Nuutinen references to formulate the claimed
token produced from both a logon IP address and a random number (claim
1).
We note that in the rejection of claim 1, the Examiner stated that one
of ordinary skill would have been motivated to combine the registration
method of 24.228 [3GPP] and the digital signature of Nuutinen “because a
digital signature would provide authentication for the receiver of the
message to be sure the message is [from] who it claims to be from.” (Ans. 4,
emphasis added).
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
1000 (Fed. Cir. 1999)). Where the claimed subject matter involves more
than the simple substitution one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness must be based on “an apparent
reason to combine the known elements in the fashion claimed.” KSR Int’l v.
Teleflex, Inc., 550 U.S. 398, 417-18 (2007). That is, “there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” Id., 550 U. S. at 418 (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). Such reasoning can be based on
interrelated teachings of multiple patents, the effects of demands known to
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the design community or present in the marketplace, and the background
knowledge possessed by a person having ordinary skill in the art. KSR, 550
U.S. at 417-18.

Here, we see the question before us to be whether the
Examiner’s proffered combination of 3GPP and Nuutinen is
merely “the predictable use of prior art elements according to
their established functions” (KSR, 550 U.S. at 417), or, would
an artisan reasonably have combined 3GPP and Nuutinen in
the manner proffered by the Examiner to formulate a token
produced from a logon IP address and a random number but
for having the benefit of the claim to use as a guide (i.e.,
impermissible hindsight)?

The case before us presents a close question. We are cognizant that
our reviewing courts have not established a bright-line test for hindsight.
However, in KSR, the U.S. Supreme Court stated that “[a] factfinder should
be aware, of course, of the distortion caused by hindsight bias and must be
cautious of argument reliant upon ex post reasoning.” KSR, 550 U.S. at 421
(citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)). Nevertheless, in
KSR the Supreme Court also qualified the issue of hindsight by stating that
“[r]igid preventative rules that deny factfinders recourse to common sense,
however, are neither necessary under our case law nor consistent with it.”
KSR, 550 U.S. at 421.

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Here, we find that an artisan having knowledge of mobile telephone
session protocols and common sense at the time of the invention would not
have reasonably combined the 3GPP and Nuutinen references in the manner
suggested by the Examiner but for having the benefit of the claim to use as a
guide (i.e., impermissible hindsight).
In particular, we see no deficiency in the teachings of 3GPP that
would have led an artisan familiar with mobile telephone session protocols
to look to Nuutinen’s teaching of authentication. While the Examiner
proffers that the digital signature of Nuutinen would provide authentication
for the receiver of the message (Ans. 4), we find 3GPP already teaches
authentication in the form of an authentication token (AUTN) (FF 1). We
further find 3GPP also teaches encryption (FF 1; see “CK: Cipher key”).
Thus, we find an artisan possessing common sense would have had no
reason to look to Nuutinen for a teaching of authentication.2 Therefore, it is
our view that the Examiner has not set forth an articulated reasoning with the
requisite rational underpinning required to support the legal conclusion of
obviousness. Moreover, we particularly note that the Examiner has failed to
respond to Appellants’ allegation of hindsight. Accordingly, we are
unconvinced that an artisan possessing common sense would have combined
the 3GPP and Nuutinen references in the manner suggested by the Examiner
without having the benefit of the claimed subject matter.

2 "[T]he best defense against the subtle but powerful attraction of a
hindsight-based obviousness analysis is rigorous application of the
requirement for a showing of the teaching or motivation to combine prior art
references." In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999).
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CONCLUSION
Appellants have established the Examiner erred in rejecting claims 1-
10 under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s decision rejecting claims 1-10.

REVERSED

pgc

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