Ex Parte LI et al

Patent Trial and Appeal Board

Oct 31, 2016

12943428 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/943,428 11/10/2010 Gordon Yong LI
49579 7590 10/31/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
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.
2875.3420003 3647
EXAMINER
AGUIAR, JOHNNY B
ART UNIT PAPER NUMBER
2447
MAILDATE DELIVERY MODE
10/31/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte GORDON YONG LI, VICTOR T. HOU, and XUEMIN CHEN
Appeal 2014-007 611
Application 12/943,428
Technology Center 2400
Before CAROLYN D. THOMAS, JAMES R. HUGHES, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 15-22. Claims 1-14 are allowed. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
The present invention relates generally to security integration between
a wireless and a wired network. See Spec. i-f 2.
Appeal 2014-007 611
Application 12/943,428
Claims 15, 17, and 18 are illustrative:
15. A method in a wireless device to authenticate to a
wireless service provider and a PacketCable service provider using a
wireless gateway, comprising:
transmitting a single authentication credential to the
wireless gateway;
receiving an authentication response from the wireless
gateway; and
generating a shared secret to create a secure channel with
the wireless gateway;
wherein the single authentication credential is configured
to be used by the wireless gateway to authenticate the wireless device
to both the wireless service provider and the PacketCable service
provider.
1 7. The method of claim 15, the generating step comprising
generating a session key using the shared secret to create the secure
channel.
18. A method in an authentication server to authenticate a
wireless device for both wireless service and a PacketCable service,
compnsmg:
receiving a single authentication credential from a
wireless gateway;
verifying the single authentication credential;
transmitting a response to the wireless gateway indicating
a result of the verifying step; and
generating a shared secret if the verification of the single
authentication credential is successful;
wherein the single authentication credential is used to
authenticate the wireless device for both the wireless service and the
PacketCable service.
Appellants appeal the following rejections:
RI. Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaftan (US 2007/0140195 Al, June 21, 2007) and Nessett
(US 6,766,453 Bl, July 20, 2004);
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R2. Claim 17 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaftan, Nessett, and Morais (US 2008/0177997 Al, July
24, 2008);
R3. Claims 18 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaftan and Narayanan (US 2008/0040606 Al, Feb. 14,
2008);
R4. Claim 19 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaftan, Narayanan, and Ansari (US 2010/0217837 Al,
Aug. 26, 2010);
R5. Claim 20 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaftan, Narayanan, and Nagaraja (US 2009/0319771 Al,
Dec.24,2009);and
R6. Claim 21 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaftan, Narayanan, and Morais.
ANALYSIS
Claims 15, 16, and 18-22
Issue 1: Did the Examiner err in finding that the combined teachings
of Kaftan and Nessett, particularly Kaftan, teaches or suggests a single
authentication credential is configured to be used ... to authenticate the
wireless device to both the wireless service provider and the PacketCable
service provider?
Appellants contend "[ t ]he applied Kaftan reference describes
authorization as opposed to authentication. Therefore, Kaftan fails to teach
at least ... a single authentication credential. ... authentication and
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Application 12/943,428
authorization are different" (App. Br. 13-14). Appellants further contend
that "Nesset fails to remedy the deficiencies of Kaftan" (id. at 14).
In response, the Examiner finds that "Kaftan discloses authentication
of a communication device ... 'authorization' and 'authentication' have the
same meaning in the Kaftan reference because both terms are used
interchangeably" (Ans. 10, citing Kaftan iTiT 24 and 26). We agree with the
Examiner.
Specifically, Kaftan discloses "a Wireless Access Point system for use
in a hybrid wireless/cable network, the system capable of authenticating a
communication device (mobile and non-mobile) via DOCSIS and/or
DOCSIS-compatible protocol and providing the IP service to the mobile
device in accordance with a result of the authentication" (i-f 24; see also iT 26
and Abstract) (emphasis added). Although, as identified by Appellants,
Kaftan also uses the term "authorized" (see iT 60), we agree with the
Examiner that there is ample evidence in Kaftan that "authentication" of the
mobile device also takes place.
Appellants further contend that "Li]ust because Kaftan describes
PacketCable services in paragraph [0047] does not imply that the mobile
device is authenticated (or even authorized) for use of both IP and
PacketCable services when it is authorized for use of IP services" (App. Br.
15) and "Kaftan describes authorizing for an IP service and not necessarily a
wireless service" (id. at 16).
In response, the Examiner finds "Kaftan discloses a single
authentication credential (unique MAC address, see page 5 [0056]) of a
wireless device ... the unique MAC address is used to authenticate the
mobile device to receive an IP service ... and the IP service is provided by
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Application 12/943,428
either a wireless network ... and/or a PacketCable network" (Ans. 9). We
agree with the Examiner.
For example, Kaftan discloses "a Wireless Access Point system for
use in a hybrid wireless/cable network" (see Abstract) and that a virtual
cable modem is able to receive a request for an IP service from a mobile
device thru the Wireless Access Point (e.g. WiMAX) and recognize a unique
MAC address of the mobile device, convert the received address into a
DOCS IS MAC, and forward the recognized MAC address as if it is a MAC
address of the VCM (see i-fi-154---60). Kaftan further discloses that "[t]he
term 'IP services' used in this patent specification should be expansively
construed to cover any kind of communication services (e.g., data, video,
voice, messaging, multi-media applications, etc.) delivering in association
with IP packets" (i-f 39).
In other words, Kaftan's mobile device is authenticated using the
unique MAC address for both the wireless service provider (i.e., WiMAX)
and the PacketCable service provider (e.g., DOC SIS) and the IP services can
include any kind of communication services (see Kaftan's Fig. 4).
Although Appellants direct our attention to paragraph [0022] of their
Specification and emphasize in their arguments: "It is a feature of the
embodiments presented herein that second authentication credential 212
can authenticate wireless device 102 simultaneously/or both ... " (see
App. Br. 15), we note that Appellants' claims do not require that this process
be done simultaneously, only that "a single authentication credential" be
configured to be used by both the wireless service provider and the
PacketCable service provider. We find that the claimed "single
authentication credential" reads on Kaftan's "unique MAC address."
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Appellants also contend that "[ t ]he Examiner has provided no
required rationale underpinning for the conclusory statements of
obviousness ... rely on speculation, conjecture, and improper interpretation
of both the claims and the applied references" (App. Br. 17).
Here, the Examiner finds that "[ o ]ne of ordinary skill in the art would
be motivated to utilize the teachings ofNessett in the Kaftan system in order
to efficiently avoid man-in-the-middle attacks" (Ans. 12). As noted supra,
the Examiner has found actual teachings in the prior art and has provided the
aforementioned rationale for the combination. Further, we find that the
teachings suggest that the combination involves the predictable use of prior
art elements according to their established functions. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). Accordingly, we find that the
Examiner has provided sufficient motivation for modifying Kaftan with the
teachings of N essett.
Accordingly, we sustain the Examiner's rejection of claims 15, 16,
and claims 18-22 for similar reasons.
Claim 17
Issue 2: Did the Examiner err in finding that Morais teaches or
suggests generating a session key using the shared secret, as set forth in
claim 17?
The Examiner finds that "Morais teaches generating a session key ...
using the shared secret (Diffie-Hellman value ... ) to create the secure
channel" (Ans. 12, citing Morais i-fi-176 and 79). Although Appellants
contend "the applied portion of Morais fails to teach that the keys are
generated in the same manner ... using the shared secret to generate the
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session key" (App. Br. 20), Appellants fail to distinguish Morais' "Diffie-
Hellman value" (i.e., the Examiner's proffered "shared secret") from the
claimed shared secret. Stated differently, the Examiner equates Morais'
"Diffie-Hellman value" to the claimed "shared secret," and finds that such
Diffie-Hellman value is used in Morais to generate security association keys.
However, on this record, we find Appellants have failed to present
substantive arguments and supporting evidence persuasive of Examiner error
regarding the aforementioned disputed limitation. See In re Lovin, 652 F .3d
1349, 1357 (Fed. Cir. 201 l)("we hold that the Board reasonably interpreted
Rule 41.3 7 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art."). In other words,
Appellants fail to provide any meaningful analysis as to why Morais fails to
teach that it is known to use a shared secret to generate a key.
As such, we decline to examine the claims sua sponte, looking for
distinctions over the prior art. Cf In re Baxter Travenol Labs., 952 F .2d
388, 391 (Fed. Cir. 1991) ("It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art."). See also Ex parte Belinne, No. 2009-
004693, 2009 WL 2477843 at *3--4 (BPAI Aug. 10, 2009) (informative).
Accordingly, we sustain the Examiner's rejection of claim 17.
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Application 12/943,428
DECISION
We affirm the Examiner's§ 103(a) rejections Rl-R6.
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).
AFFIRMED
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