Ex Parte Nanopoulos et al

Patent Trial and Appeal Board

Jun 27, 2014

10938422 (P.T.A.B. Jun. 27, 2014)

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.
10/938,422 09/10/2004 Andrew Nanopoulos RSA-505AUS 2253
80074 7590 06/27/2014
RSA Security Inc.
c/o Daly, Crowley, Mofford & Durkee, LLP
354A Turnpike Street, Suite 301A
Canton, MA 02021
EXAMINER
RASHID, HARUNUR
ART UNIT PAPER NUMBER
2497
MAIL DATE DELIVERY MODE
06/27/2014 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 ANDREW NANOPOULOS, KARL ACKERMAN,
PIERS BOWNESS, WILLIAM DUANE, MARKUS JAKOBSSON,
BURT KALISKI, DMITRI PAL, SHANE D. RICE and
RONALD L. RIVEST
____________

Appeal 2012-000513
Application 10/938,422
Technology Center 2400
____________

Before STEPHEN C. SIU, DAVID M. KOHUT, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4-16, and 19-84. App. Br. 2. Claims 3, 17, and 18
are cancelled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention is directed to cryptography and, more
particularly, to systems for computer security. See Spec. ¶3. Specifically,
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the system downloads verification records corresponding to given
authentication token outputs over a predetermined period of time, sequence
of events, and/or set of challenges to be used for disconnected
authentication. See Abstract.
Claims 1 and 63 are illustrative and are reproduced below, with key
disputed limitations emphasized:
1. A method for authenticating at a verifier a user who
possesses an authentication token capable of providing one or
more one-time passcodes, comprising:
obtaining a verification record from an authentication
server;
obtaining a passcode from the authentication token
submitted to authenticate the user at the verifier; and
determining whether the submitted passcode is consistent
with the verification record, where the verification record is a
function of a reference passcode, wherein the verifier is
disconnected from the authentication server which provided the
verification record.

63. A server, comprising:
a processor for processing a plurality of verification
records as a function of reference passcodes; and
an interface for downloading the plurality of records
from the server to an agent to enable the agent to determine
whether a submitted passcode is consistent with a given one of
the verification records for authenticating a user possessing an
authentication token capable of providing the submitted
passcode.

THE REJECTIONS
The Examiner rejected claim 84 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 4-5.
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The Examiner rejected claims 63-82 under 35 U.S.C. § 102(b) as
anticipated by Perlman (US 6,173,400 B1; Jan. 9, 2001). Ans. 5-8.
The Examiner rejected claims 1, 2, 4-16, 19-62, 83 and 84 under 35
U.S.C. § 103(a) as unpatentable over Perlman and Audebert (US 6,988,210
B1; filed Nov. 28, 2000). Ans. 9-22.

THE WRITTEN DESCRIPTION REJECTION
Claim 84
The Examiner here finds that the claimed disconnection of the laptop
computer from all network connections is not supported because “[t]he
specification merely describes disconnected from the authentication server
in the sense of it does not need to be connected during the operation of
authentication (see specification paragraphs (105-106).” Ans. 5.
Additionally, the Examiner notes that the “Applicant concedes that the exact
phrase ‘disconnected from all network connections’ does not appear in the
specification.” Ans. 23.
We disagree. The Specification describes using a laptop computer,
for example, on a trip. See e.g., Spec. ¶21 and 23. As the Appellants
explain, a skilled artisan “would understand that a laptop would ordinarily
be completely disconnected [at some point] during a trip, such as on an
airplane, and powered down.” App. Br. 6. Therefore, in our view, the
Specification provides sufficient detail so “that one skilled in the art can
clearly conclude that the inventor invented the claimed invention [i.e., that a
laptop computer be completely disconnected from all servers] as of the filing
date sought.” In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008). We agree
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with the Appellants then that the Examiner erred in rejecting claim 84 for
failing to comply with the written description requirement.

THE OBVIOUSNESS REJECTION OVER PERLMAN AND AUDEBERT1
The Examiner finds that Perlman discloses the claim limitations of
claim 1, except Perlman does not explicitly disclose where the verifier is
disconnected from the authentication server which provided the verification
record. Ans. 9. The Examiner, however, relies on Audebert for this feature.
The Appellants on the other hand contend that Perlman and Audebert
combined fail to disclose determining whether the submitted passcode is
consistent with the verification record where the verifier is disconnected
from the authentication server which provided the verification record. App.
Br.18-19. More specifically, the Appellants allege that neither Perlman nor
Audebert teach disconnected authentication. App. Br. 6-11. Additionally,
the Appellants challenge the Examiner’s reason to combine the cited
references.

ISSUE
Did the Examiner err in finding that Perlman and Audebert combined
teach determining whether the submitted passcode is consistent with the
verification record, where the verification record is a function of a reference
passcode, wherein the verifier is disconnected from the authentication server
which provided the verification record, as recited in claim 1?

1 We address the rejections in the order presented by the Appellants. See
App. Br. 6-22.
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ANALYSIS
Claims 1, 2, 4-16, 19-62, 83 and 84
Based on this record, we find the Examiner erred in rejecting claim 1
as obvious over Perlman and Audebert.
The Appellants contend that the Examiner failed to present a prima
facie case of obviousness because a skilled artisan would not contemplate
combining the access control system of Audebert with the shared secret
authentication token/encryption system of Perlman. App. Br. 7-9. More
specifically, the Appellants argue,
Applicant respectfully submits that the Examiner's alleged
rationale does not make any sense to one of ordinary skill in the
art. Perlman requires “establishing a shared secret between
devices CONNECTED over a communication medium using an
authentication token to provide user authentication, data
encryption, and integrity protection.” It is simply nonsensical to
suggest that Perlman should be modified to “download
reference passcodes” or have “the computer disconnected from
the server.” Perlman's shared secret system requires a
connection between devices.

App. Br. 14 (emphasis in original).

We agree. Perlman is directed to authentication of devices for the
purpose of transmitting encrypted data between the connected devices. See
e.g., Perlman, 1:6-11 and Fig. 1 (depicting the network connection between
the workstation and the server). The Examiner’s stated reasons to combine
Perlman with Audebert, “because it would enable authentication without
requiring real-time connection with a server,” fails to justify the conclusion
of obviousness. Ans. 24. This reasoning fails to explain why Perlman
would benefit from authentication without real-time connection to a server
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when a connection, at least between the communicating (and authenticating)
devices, is already required for transmission of the encrypted data. We
therefore agree with the Appellants that the Examiner failed to present a
prima facie case of obviousness.
Accordingly, we reverse the obviousness rejection of claims 1, 2, 4-
16, 19-62, 83 and 84.

THE ANTICIPATION REJECTION OVER PERLMAN
The Examiner finds that Perlman discloses the claim limitations of
claim 63. The Appellants on the other hand contend that Perlman fails to
disclose an interface for downloading the plurality of records for
authenticating a user possessing an authentication token capable of
providing the submitted passcode. App. Br. 18-19. The Appellants present
the same arguments discussed above, namely that “Perlman does not teach
anything remotely resembling authenticating a user while disconnected, as
claimed.” App. Br. 18-19.

ISSUE
Did the Examiner err in finding that Perlman discloses an interface for
downloading the plurality of records for authenticating a user possessing an
authentication token capable of providing the submitted passcode, as recited
in claim 63?

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ANALYSIS
Claims 63-69
Based on this record, we find the Examiner did not err in rejecting
claim 63 as anticipated by Perlman.
We first note that none of claims 63-69 recite any limitation requiring
disconnection from a server, let alone authentication of a user while
disconnected from a server. See App. Br., Claims App’x; see also Ans. 30-
31. Despite this absence, the Appellants present the same arguments as
presented above relying on this feature. See e.g., App. Br. 18-19. Because
these claims lack the disconnected authentication limitation, we do not find
these arguments persuasive.
Therefore, we find that the Examiner did not err in rejecting claims
63-69 as anticipated.

Claims 70-76
Based on this record, we find the Examiner did not err in rejecting
claim 70 as anticipated by Perlman.
The Appellants here assert that claim 70 requires a prior knowledge of
the passcode information for the stored verification records. “Only if the
stored verification records are consistent with a passcode received from an
authentication token is the user authenticated.” App. Br. 19-20. The
Appellants then distinguish these claimed features from Perlman because
Perlman establishes a shared secret between connected devices. App. Br.
20.
This argument again lacks merit. Nothing in claim 70 requires
disconnection or disconnected authentication. Moreover, as the Examiner
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responds, Perlman discloses use of a PIN at a workstation to authenticate the
workstation, prior knowledge of the PIN would be necessary to authenticate
the user. Ans. 7-8. We therefore agree with the Examiner that Perlman
anticipates claim 70 and claims 71-76 depending therefrom.

Claims 77-82
With respect to claim 77, the Appellants maintain that Perlman does
not teach any of authenticating at a verifier a user who possesses an
authentication token capable of providing one or more one-time passcodes
by, obtaining a verification record, obtaining a passcode submitted to
authenticate the user, and determining whether the submitted passcode is
consistent with the verification record, where the verification record is a
function of a reference passcode. App. Br. 20-21. We disagree.
Similar to the arguments discussed above, the Appellants again focus
on Perlman’s lack of disconnected authentication. See App. Br. 20-21.
Despite the Appellants’ assertions, claim 77 does not claim disconnected
authentication. Therefore, we find the Appellants’ argument unpersuasive.
Accordingly, we agree with the Examiner that Perlman anticipates claim 77
and claims 78-82 depending therefrom.

CONCLUSION
The Examiner erred in rejecting claims 1, 2, 4-16, 19-62, 83 and 84 as
obvious and did not err in rejecting claims 63-82 as anticipated.
Additionally, the Examiner erred in rejecting claim 84 under 35 U.S.C. §
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112, second paragraph as failing to satisfy the written description
requirement.

DECISION
The Examiner’s decisions rejecting claims 1, 2, 4-16, 19-62, 83 and
84 as obvious and claim 83 as failing to satisfy the written description
requirement is reversed, but the decision rejecting claims 63-82 as
anticipated is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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