Ex Parte Kelley et al

Patent Trial and Appeal Board

Sep 6, 2018

13350661 (P.T.A.B. Sep. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/350,661 01/13/2012 Brian Harold Kelley
112246 7590 09/10/2018
Loza & Loza, LLP/Qualcomm
305 N. Second Ave., #127
Upland, CA 91786
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
QCOM-2366US (111561) 1277
EXAMINER
ZOUBAIR, NOURA
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
09/10/2018 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):
ocpat_uspto@qualcomm.com
qualcomm-pto@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN HAROLD KELLEY, ROBERT G. WALKER,
IV AN HUGH MCLEAN, and LAURENCE G. LUNDBLADE
Appeal2018-002855
Application 13/350,661 1
Technology Center 2400
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--42, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest identified by Appellants is Qualcomm Inc. App.
Br. 2.
Appeal2018-002855
Application 13/350,661
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention relates generally to
"providing a secure cryptographic key to an application." Spec. ,r 1. 2
Claim 1 is representative and reads as follows (with the disputed
limitation emphasized):
1. A method for generating a privilege-based key,
compnsmg:
receiving, by a client environment, a list of privileges from
a key-requesting application, wherein a digital signature is based
on the list of privileges and program code of the key-requesting
application;
verifying, by the client environment, that the list of
privileges is associated with the key-requesting application using
the digital signature;
if the list of privileges is verified by the client
environment, then:
forwarding, by the client environment, the verified
list of privileges to a secure hardware;
cryptographically generating, by the secure
hardware, a second key using a first key and the verified
list of privileges; and
providing, by the secure hardware, the second key
to the key-requesting application.
App Br. 23 (Claims App.).
2 Our Decision refers to the Final Office Action (mailed Apr. 28, 2017,
"Final Act."), Appellants' Appeal Brief (filed Sept. 22, 2017, "App. Br.")
and Reply Brief (filed Jan. 24, 2018, "Reply Br."), the Examiner's Answer
(mailed Nov. 24, 2017, "Ans."), and the original Specification (filed Jan. 13,
2012, "Spec.").
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Application 13/350,661
Rejections on Appeal
Claims 1--42 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Roth et al. (US 2013/0086662 Al; published Apr. 4,
2013) ("Roth") in view ofKirovski et al. (US 2010/0058064 Al; published
Mar. 4, 2010) ("Kirovski").
Claims 1--42 stand rejected on the ground of non-statutory
obviousness-type double patenting over claims 1-31 of U.S. Pat. No.
8,424,068 ("the '068 patent").
Claims 1--42 stand rejected on the ground of non-statutory
obviousness-type double patenting over claims 1-23 of U.S. Pat. No.
8,037,515 ("the '515 patent").
ANALYSIS
Rejection of Claims 1--42 under§ 103(a)
Appellants contend the combination of cited references fails to teach
or suggest "wherein a digital signature is based on the list of privileges and
program code of the key-requesting application," as recited in independent
claim 1, and similarly recited in independent claims 11, 21, and 31. 3 See
App. Br. 14, 19. Appellants argue Roth fails to teach the disputed limitation
of claim 1 because Roth merely discloses a hash-based message
authentication code (HMAC) scheme that generates a signature by
computing an HMAC function based on a key K and a message M, where
the key is a signature scheme identifier (e.g., version identifier), and Roth's
signature scheme identifier fails to teach or suggest the claimed "program
3 Appellants' arguments raise additional issues, but we do not reach them
because the identified issues are dispositive of the appeal.
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Application 13/350,661
code of [a] key-requesting application." See App. Br. 15 ( citing Roth ,r,r 58,
61 ); see also Reply Br. 3---6. Appellants further argue Kirovski fails to cure
Roth's deficiencies. See App. Br. 15.
The Examiner finds the combination of Roth and Kirovski teaches or
suggests the disputed limitation of claim 1. See Final Act. 6-7. More
specifically, the Examiner finds Roth discloses the claimed "program code
of [ a] key-requesting application," because the key-requesting application
(i.e., a requestor as disclosed by Roth) performs the HMAC function, and
thus, the instructions for performing the HMAC function are program code
of the key-requesting application. See Ans. 16-17. The Examiner further
finds Roth also discloses the claimed generating a digital signature "based
on ... program code of the key requesting application" because: (a) Roth
discloses generating a signature using the HMAC function, where the input
of the HMAC function is a signature scheme identifier (e.g., version
identifier), and thus, discloses generating a signature based on the version
identifier; and (b) since a version identifier is based on the corresponding
HMAC function, the generated signature is, thus, based on the HMAC
function (i.e., the claimed "program code of [a] key-requesting application").
See Ans. 17.
We have reviewed the Examiner's findings, in light of Appellants'
arguments, and we are persuaded the Examiner erred. In particular, we
agree with Appellants that the Examiner has not shown, on this record, that
Roth's signature scheme identifier teaches or suggests the claimed "program
code of the key-requesting application" because Roth fails to teach or
suggest that the signature scheme identifier is program code associated with
a key-requesting application (i.e., a requestor). See App. Br. 15. Contrary to
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Application 13/350,661
the Examiner's finding, Roth fails to teach or suggest that the requestor
performs the HMAC function, and thus, the Examiner has not shown, on
this record, that Roth's HMAC function teaches or suggests the claimed
"program code of the key-requesting application." See Reply Br. 3--4. Also
contrary to the Examiner's finding, Roth fails to teach or suggest Roth's
signature scheme identifier (e.g., version identifier) is "tied to," or otherwise
based on, program code of a key-requesting application (i.e., a requestor).
See Reply Br. 5. Thus, the Examiner has not shown, on this record, that the
combination of Roth and Kirovski teaches or suggests "wherein a digital
signature is based on the list of privileges and program code of the key-
requesting application," as recited in claim 1, and similarly recited in claims
11, 21, and 3 1.
Accordingly, we do not sustain the Examiner's rejection of claims 1,
11, 21, and 31 for obviousness under 35 U.S.C. § 103(a). We also do not
sustain the Examiner's rejection of dependent claims 2-10, 12-20, 22-30,
and 32--42, which depend from one of claims 1, 11, 21, and 31.
Double Patenting Rejections of Claims 1--42
Appellants also argue claims 1-31 of the '068 patent and claims 1-23
of the '515 patent do not disclose "wherein a digital signature is based on the
list of privileges and program code of the key-requesting application," as
recited in claim 1, and similarly recited in claims 11, 21, and 31. See App.
Br. 20-21. The Examiner finds that the double-patenting rejections did not
require the '068 patent or the '515 patent to disclose the disputed limitation
of claim 1, as Roth discloses this limitation. See Ans. 20. However, as
previously discussed, we agree with Appellants that the Examiner has failed
to show, on this record, that Roth ( either individually or in combination with
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Application 13/350,661
Kirovski) teaches or suggests the disputed limitation of claim 1.
Accordingly, we do not sustain the Examiner's non-statutory double
patenting rejections of claims 1--42.
DECISION
We reverse the Examiner's rejection of claims 1--42 under
35 U.S.C. § 103(a).
We reverse the Examiner's rejections of claims 1--42 on the ground of
non-statutory double patenting.
REVERSED
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