Ex Parte Nyberg

Patent Trial and Appeal Board

Mar 27, 2013

10256256 (P.T.A.B. Mar. 27, 2013)

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.
10/256,256 09/27/2002 Kaisa Nyberg 800.0334.U1 (US) 3823
10948 7590 03/27/2013
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
EXAMINER
WILLIAMS, JEFFERY L
ART UNIT PAPER NUMBER
2437
MAIL DATE DELIVERY MODE
03/27/2013 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 KAISA NYBERG
____________

Appeal 2010-010846
Application 10/256,256
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 29-56. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2010-010846
Application 10/256,256

2
STATEMENT OF THE CASE
Appellant’s claimed invention is directed to methods and systems
using an authentication response for subscriber authentication in a mobile
communication system (Spec. ¶ [0002]).
Independent claim 29, reproduced below, is illustrative.
29. A method, comprising:

using a first one-way function to calculate a first secret
from only two inputs comprising a predefined key and a
predefined operator parameter, wherein the key is predefined
for a subscriber and the operator parameter is predefined as an
operator-specific parameter having a value selected by an
operator associated with the subscriber;

using a second one-way function to calculate an output
from only two different inputs, the two different inputs
comprising a challenge and the calculated first secret, wherein
the challenge comprise a generated random number;

extracting the authentication response from the output
calculated by the second one-way function; and

authenticating the subscriber with the extracted
authentication response,

wherein the first and second one-way functions are
configured to each receive exactly two inputs.

REFERENCES and REJECTIONS
The Examiner rejected claims 29-56 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.

Appeal 2010-010846
Application 10/256,256

3
ANALYSIS
Appellant contends the Examiner is incorrect in finding the
Specification does not provide adequate written description support as
Appellant’s Specification “does not explicitly state that ‘only two inputs’,
‘only two different inputs’, or ‘exactly two inputs’ are used in the calculation
of the first and second secrets” (App. Br. 23; Ans. 4-7). Further, Appellant
asserts a person of ordinary skill in the art would understand “if a function
with two inputs is provided as an input to another function, it means that the
function output (calculated from the two inputs) are[sic] subsequently
provided as one input to the other function, and not as two separate inputs”
(App. Br. 27). We agree with Appellant.
The “only” language in Appellant’s claims does not preclude a prior
determination of the two input values (calculation) using other variables.
The claim language requires two (different) inputs. The calculated inputs,
although calculated from other variables, result in a single input. The
Specification and drawings support Appellant’s contentions. (See Spec. ¶¶
[0019]-[0026], [0041]-[0045]; Figs. 1, 4) Thus, we find Appellant’s
Specification contains a written description of Appellant’s claimed
invention.
The Examiner objected to Appellant’s Specification as failing to
provide proper antecedent basis for the claimed subject matter (Ans. 3-4).
Appellant contends although this is a petitionable matter, since the objection
centers on the written description portion of 35 U.S.C. § 112, first paragraph,
the objection is within the Board’s jurisdiction (App. Br. 22). We disagree
that the objection is within our jurisdiction and leave it to the Examiner to
Appeal 2010-010846
Application 10/256,256

4
reconsider the objection to the Specification. See MPEP § 1002.02(b)(11)
(“Petitions under 37 CFR 1.182 in matters not otherwise provided for.”).

DECISION
The Examiner’s decision rejecting claims 29-56 under 35 U.S.C.
§ 112, first paragraph, is reversed.

REVERSED

Pgc/peb