Ex Parte Katzer et al

Patent Trial and Appeal Board

Sep 13, 2017

14632850 (P.T.A.B. Sep. 13, 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.
14/632,850 02/26/2015 Robin Dale Katzer IDF 7911A (4300-13002) 1044
7590 09/15/201728003
SPRINT
6391 SPRINT PARKWAY
KSOPHTO101-Z2100
OVERLAND PARK, KS 66251-2100
EXAMINER
LAGOR, ALEXANDER
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
09/15/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBIN DALE KATZER and LYLE W. PACZKOWSKI
Appeal 2017-004306
Application 14/632,850
Technology Center 2400
Before JOHN A. JEFFERY, ERIC S. FRAHM, and LARRY J. HUME,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants’ invention is a mobile access terminal that provides access
to secure information in a secure element in the terminal. To this end, a
terminal-based web browser is provided exclusive access to a web server in
the terminal. See generally Abstract; Figs. 1—2.
Claim 1 is illustrative:
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Application 14/632,850
1. A mobile access terminal providing access to secure information in a
secure element of the mobile access terminal comprising:
the secure element storing the secure information;
a web browser, stored in a non-transitory memory of the mobile
access terminal,
configured to transmit a secure information request to a server
on the mobile access terminal and transmit the secure
information, that is received from the server, to a vendor
website;
a trusted security zone, wherein the trusted security zone provides at
least one chipset with a hardware root of trust, a secure execution
environment for applications, and secure access to peripherals; and
the server residing and executing within at least one of the secure
element or the trusted security zone of the mobile access terminal, wherein
the server is configured to:
in response to receiving the secure information request from the web
browser, provide access to the secure information stored in the secure
element exclusively to the web browser,
transmit the secure information using Hypertext Transfer Protocol Secure
protocol when the secure information leaves the server for the web
browser, and
block access to the secure information stored in the secure element when
receivmg secure information requests from entities other than the web
browser.
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THE REJECTIONS
The Examiner rejected claims 1—20 on the ground of nonstatutory
obviousness-type double patenting over claims 1—17 of U.S. Patent
9,027,1023 Final Act. 3-6.1 2
The Examiner rejected claims 1—3, 5—11, 13, 14, and 16—183 under 35
U.S.C. § 103(a) as unpatentable over Deprun (US 2010/0281139 Al; Nov.
4, 2010) and Benaloh (US 2012/0272306 Al; Oct. 25, 2012). Final Act.
6-13.
The Examiner rejected claims 4, 12, 15, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Deprun, Benaloh, and Melideo (Nov. 25,
2004). Final Act. 13-15.
1 Although the Examiner characterizes this rejection as provisional because
conflicting claims have ostensibly not been patented (Final Act. 3), these
conflicting claims are, in fact, patented in U.S. Patent 9,027,102. We,
therefore, treat the Examiner’s double patenting rejection not as a
provisional rejection, but rather as a double patenting rejection, and deem
the Examiner’s error in this regard as harmless.
2 Throughout this opinion, we refer to (1) the Final Rejection mailed
November 6, 2015 (“Final Act.”); (2) the Appeal Brief filed April 29, 2016
(“App. Br.”); (3) the Examiner’s Answer mailed November 16, 2016
(“Ans.”); and (4) the Reply Brief filed January 12, 2017 (“Reply Br.”).
3 Although claim 20 was included in this rejection, this claim depends from
claim 19 which is rejected over Deprun, Benaloh, and Melideo. See Final
Act. 13. Accordingly, we presume that claim 20 was intended to be so
rejected, and we present the correct claim listing here for clarity.
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Application 14/632,850
THE DOUBLE PATENTING REJECTION
Because Appellants do not contest the Examiner’s double patenting
rejection of claims 1—20 (Final Act. 3—6), we summarily sustain this
rejection. See MPEP § 1205.02.
THE OBVIOUSNESS REJECTION OVER DEPRUN AND BENALOH
Regarding claim 1, the Examiner finds that Deprun’s mobile access
terminal includes, among other things, a “secure element,” namely second
storage device 40, that is also said to correspond to the recited server. Final
Act. 7—8. Although the Examiner acknowledges that Deprun does not block
access to secure information stored in the secure element when receiving
requests from entities other than the terminal’s web browser, the Examiner
cites Benaloh as teaching this feature in concluding that the claim would
have been obvious. Final Act. 8—9.
Appellants argue, among other things, that the Examiner not only
failed to provide a factual basis for how Benaloh blocks access to stored
secure information as claimed, but Deprun also does not disclose a server on
the terminal residing within at least one of the secure element or trusted
security zone as claimed. App. Br. 16—25; Reply Br. 5—13.
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Deprun and Benaloh collectively would have taught or suggested a
mobile access terminal with a server residing within at least one of the
secure element or trusted security zone?
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ANALYSIS
We begin by noting that the mobile access terminal of claim 1 has
three distinct elements: (1) a “secure element” that stores secure
information; (2) a server; and (3) a “trusted security zone,” the latter
providing at least one chipset with a hardware root of trust,4 a secure
environment for applications, and secure access to peripherals. See Spec.
19—25 (detailing the secure element and trusted security zone). A key
aspect of the claimed invention is that the terminal’s server resides and
executes within the secure element and/or the trusted security zone. See
Spec. 137 (noting that mobile phone 102 may securely store the user’s
credit card information in secure element 218 and/or trusted security zone
206); see also Fig. 2 (showing web server 216 within secure element 218).
Our emphasis underscores the fact that the terminal’s server must be within
at least one of these elements as claimed.
The Examiner’s rejection, however, falls short in this regard. On
page 7 of the Final Rejection, the Examiner maps both the terminal’s secure
element and server to Deprun’s second storage device 40—a Secure Digital
(SD) card that is separate and distinct from mobile terminal 10 as shown in
Figure 1. See Deprun 123. Not only is this mapping of multiple recited
structural elements to a single element in Deprun dubious under fundamental
claim interpretation principles,5 this single element that is said to correspond
4 A “hardware root of trust” means the chipset should only execute programs
intended by the device manufacturer or vendor, and resists software or
physical attacks, thus remaining trusted to provide the intended security
level. Spec. 120.
5 See Lantech, Inc. v. Keip Mack Co., 32 F.3d 542, 547 (Fed. Cir. 1994); see
also In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (claims requiring
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Application 14/632,850
to the recited server in Deprun is not even part of the terminal, let alone
within the terminal’s secure element or trusted security zone as claimed.
The Examiner’s mapping in the Answer—mapping that differs from
that articulated in the rejection—fares no better in this regard. On page 15
of the Answer, the Examiner maps the recited trusted security zone to
Deprun’s first storage device 30, namely an SIM card. But like the second
storage device 40, Deprun’s SIM card 30 is separate and distinct from the
mobile terminal 10 as shown in Figure 1. So even assuming that this SIM
card somehow constitutes a “trusted security zone” with the recited chipset,
secure execution environment, and secure peripheral access (findings that
have not been substantiated on this record), this “trusted security zone” is
still not part of the terminal, but rather an external device. Therefore, the
terminal’s server (which presumably corresponds to Deprun’s web server
50B under the Examiner’s revised mapping on page 15 of the Answer)
cannot be within this external “trusted security zone.” Nor can this server be
within the terminal’s separate and distinct secure element 50C as shown in
Figure 1. Accord Reply Br. 8 (noting this point).
To the extent that the Examiner intends to map the recited “trusted
security zone” to (1) Deprun’s mobile terminal 10, or (2) the terminal’s third
storage device 50 (see Final Act. 8; Ans. 15, 40), we cannot say on this
record, particularly in light of the Examiner’s clear and unambiguous
reference to Deprun’s SIM card 30 in this regard on page 15 of the Answer.
Nevertheless, even if the Examiner also intended to map the recited “trusted
security zone” Deprun’s mobile terminal 10 or its third storage device 50,
three separate means not anticipated by structure containing only two means
using one element twice).
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the Examiner still has not shown that such a “trusted security zone”
comprises the requisite chipset with a hardware root of trust, a secure
application environment, and secure peripheral access as claimed. See
Reply Br. 8—10 (noting this deficiency). The Examiner’s reference to
Deprun’s secure elements 30C to 50C (Final Act. 7) is unavailing in this
regard.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 9 and 16 that recite
commensurate limitations; and (3) dependent claims 2, 3, 5—8, 10, 11, 13,
14, 17, and 18 for similar reasons. Because our decision is dispositive
regarding our reversing the Examiner’s rejection of these claims, we need
not address Appellants’ other associated arguments.
THE REMAINING OBVIOUSNESS REJECTION
Because the Examiner has not shown that the other cited prior art
cures the foregoing deficiencies regarding the rejection of the independent
claims, we do not sustain the obviousness rejections of dependent claims 4,
12, 15, 19, and 20 (Final Act. 13—15) for similar reasons.
CONCLUSION
The Examiner did not err in rejecting claims 1—20 on the ground of
non-statutory double patenting, but erred in rejecting those claims under
§103.
DECISION
We affirm the Examiner’s decision to reject claims 1—20.
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Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision rejecting claims
1-20 is affirmed. See 37 C.F.R. § 41.50(a)(1).
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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