Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals Board

Sep 15, 2021

2020004074 (P.T.A.B. Sep. 15, 2021)

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.
16/372,751 04/02/2019 Noamen Ben Henda 4015-10783 / P71161-US3 1016
24112 7590 09/15/2021
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
HENSON, JAMAAL R
ART UNIT PAPER NUMBER
2411
MAIL DATE DELIVERY MODE
09/15/2021 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 NOAMEN BEN HENDA, DAVID CASTELLANOS ZAMORA,
and VESA TORVINEN
_______________

Appeal 2020-004074
Application 16/372,7511
Technology Center 2400
_______________

Before ALLEN MacDONALD, JAMES B. ARPIN, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Non-Final rejection of claims 1–25, all the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.2 Pursuant to our authority under 37 C.F.R. § 41.50(b),
we enter a new ground of rejection for independent claims 1, 7, 13, and 19.

1 Appellant refers to “applicant(s)” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Telefonaktiebolaget LM
Ericsson. Appeal Br. 2.
2 Our Decision refers to Appellant’s Appeal Brief filed January 31, 2020
(“Appeal Br.”); Reply Brief filed May 11, 2020 (“Reply Br.”); Examiner’s
Answer mailed March 30, 2020 (“Ans.”); Final Office Action mailed
October 10, 2019 (“Final Act.”); and original Specification filed April 2,
2019 (“Spec.”).
Appeal 2020-004074
Application 16/372,751

2

STATEMENT OF THE CASE
Appellant’s Invention
5G core architecture aims to separate the control plane from the user
plane, such that “the control plane, and all the associated complex
interactions, can be centralized, while the user plane is distributed across IP
services fabric and scaled as required by the traffic load.” Spec. ¶ 51.
Appellant’s claimed invention seeks to leverage control plane
functions including session management function (SMF) and proposes
“secondary authentication of a user equipment [18, shown in Figure 1]
configured for use in a [5G] wireless communication network” via “an
extensible authentication protocol (EAP) between user equipment 18 and
control plane function 14 (e.g., SMF),” in addition (e.g., after) primary
authentication of the user equipment 18. Spec. ¶¶ 2, 5.
Figure 1, depicting SMF for secondary authentication, is reproduced
below with additional annotated markings for illustration.

Appeal 2020-004074
Application 16/372,751

3

Appellant’s Figure 1 shows a 5G wireless network including access network
12 and a core network of user equipment (UE) 18 and, per our annotations,
control plane function 14 (e.g., session management function “SMF”) to
provide secondary authentication of UE 18, via an extensible authentication
protocol (EAP) upon request for a session from UE 18. Spec. ¶¶ 37–42.
Figure 3, depicting a message flow for primary and secondary
authentication of UE, is reproduced below with our annotations:

Appeal 2020-004074
Application 16/372,751

4

Appellant’s Figure 3 shows the flow of message involving, per our
annotations, both (1) primary authentication between user equipment (UE)
and access mobility function (AMF/SEAF) and (2) secondary authentication
between UE and authentication, authorization, and accounting (AAA)
server, via SMF. Spec. ¶¶ 77–82.
Representative Claim
Claims 1, 7, 13, and 19 are independent. Representative claim 1 is
reproduced below with disputed limitations emphasized:
1. A method of secondary authentication of a user equipment,
implemented by the user equipment, wherein the method comprises:
receiving an extensible authentication protocol (EAP) request
from a session management function (SMF) that serves as
an EAP authenticator for secondary authentication of the
user equipment, wherein the secondary authentication is
authentication of the user equipment in addition to
primary authentication of the user equipment; and
responsive to the EAP request, transmitting an EAP response
from the user equipment to the SMF.
Appeal Br. 14 (Claims App.).
REJECTIONS AND REFERENCES
(1) Claim 1 stands rejected under 35 U.S.C. § 102(a)(2) as
anticipated by Forsberg (US 2004/0148504 A1; published July 29, 2004).
Final Act. 7–8.
(2) Claims 1–3, 6–9, 12–15, 18–21, 24, and 25 stand rejected under
35 U.S.C. § 102(a)(2) as anticipated by Segre et al. (US 2011/0252230 A1;
published Oct. 13, 2011; “Segre”). Final Act. 8–16.
Appeal 2020-004074
Application 16/372,751

5

(3) Claims 4, 10, 16, and 22 stand rejected under 35 U.S.C. § 103
as obvious over the combined teachings of Segre and Sternberg et al. (US
2017/0332421 A1; published Nov. 16, 2017; “Sternberg”). Final Act. 17.
(4) Claims 5, 11, 17, and 23 stand rejected under 35 U.S.C. § 103
as obvious over the combined teachings of Segre and Griot et al. (US
2015/0282042 A1; published Oct. 1, 2015; “Griot”). Final Act. 18.

ANALYSIS
I. Anticipation of Claim 1 by Forsberg
Claim 1 recites, inter alia:
receiving an extensible authentication protocol (EAP) request
from a session management function (SMF) that serves as
an EAP authenticator for secondary authentication of the
user equipment, wherein the secondary authentication is
authentication of the user equipment in addition to
primary authentication of the user equipment; and
responsive to the EAP request, transmitting an EAP response
from the user equipment to the SMF.

Appeal Br. 14 (Claims App.) (emphasis added).
In support of the anticipation rejection of claim 1, the Examiner finds
Forsberg discloses primary authentication (phase I) and secondary
authentication (phase II) of UE, including the use of a MN-AAA client, as
shown in Forsberg’s Figures 1 and 7, to act as an extensible authentication
protocol (EAP) authenticator for secondary authentication of the UE. Final
Act. 7–8 (citing Forsberg ¶¶ 31, 38, 40, Figs. 1, 7).
Appellant argues Forsberg does not disclose the recited “session
management function (SMF) that serves as an EAP authenticator for
secondary authentication of the user equipment” because (1) the SMF did
Appeal 2020-004074
Application 16/372,751

6

not exist at the time the Forsberg application was filed back in 2002/2003
during the earlier deployments of Third Generation (3G) wireless network;
(2) the “SMF is a special purpose function that was newly introduced as part
of the 5G core architecture,” as acknowledged in paragraphs 51–54 of
Appellant’s Specification and evidenced by the 5G architecture
specifications (i.e., TS 23.501 version 0.0.0 and TS 23.502 version 0.0.0)
published on January 23, 2017; and, as such, (2) “one of ordinary skill
would not recognize the cited art as teaching anything with regard to the use
of an SMF, much less the use of an SMF for purposes of authentication.”
Appeal Br. 10 (emphasis omitted).
The Examiner responds that Forsberg’s “EAP authenticator” can be
broadly and reasonably interpreted to encompass the claimed “SMF”
because Forsberg’s “EAP authenticator performs the same claimed function
as the SMF.” Ans. 7.
We disagree with the Examiner. While the Patent Office is entitled to
give claim terms their broadest reasonable interpretation, this interpretation
is limited by a number of factors. First, the interpretation must be consistent
with the specification. In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000);
M.P.E.P. § 2111. Second, the broadest reasonable interpretation of the
claims must also be consistent with the interpretation that those skilled in the
art would reach. In re Cortright, 165 F.3d 1353, 1359 (Fed. Cir. 1999);
MPEP § 2111. Finally, the interpretation must be reasonable. In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004); MPEP
§ 2111.01.
Appeal 2020-004074
Application 16/372,751

7

Here, the term “session management function (SMF)” is described by
Appellant’s Specification as part of the control plane function in a 5G
wireless network. Spec. ¶ 37. According to Appellant’s Specification,
SMF functionality includes session management (e.g. session
establishment, modify and release, including tunnel maintain
between UPF and access network node), UE IP address
allocation & management (including optional authorization),
selection and control of the UP function, configuration of traffic
steering at UPF to route traffic to proper destination, termination
of interfaces towards policy control functions, control of part of
policy enforcement and quality of service (QoS), lawful intercept
(for SM events and interface to lawful intercept system),
termination of SM parts of NAS messages, downlink data
notification, initiation of AN specific SM information, sent via
AMF over N2 to AN, determination of service and session
continuity (SSC) mode of a session (for IP type POU session),
roaming functionality, handling of local enforcement to apply
QoS service level agreements (SLAs) (Visited public land
mobile network, VPLMN), charging data collection and
charging interface (VPLMN), lawful intercept (in VPLMN for
SM events and interface to LI System), and support for
interaction with external DN for transport of signalling for POU
session authorization/authentication by external DN.
Id. ¶ 55.
The Examiner has not interpreted the recited “session management
function (SMF).” Instead, the Examiner has interpreted a prior art term, i.e.,
EAP authenticator disclosed in Forsberg to encompass the recited “session
management function (SMF).” As recognized by Appellant,
“All words in a claim must be considered in judging the
patentability of that claim against the prior art.” In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970) (emphasis added); see also
MPEP § 2143.03.
Reply Br. 3. The recited term “session management function (SMF)” is an
industry-recognized term and a fundamental component of the 5G core
Appeal 2020-004074
Application 16/372,751

8

architecture for managing, among others, session context with a user plane
function (UDF), as acknowledged in paragraphs 51–54 of Appellant’s
Specification and evidenced from 5G architecture Specifications. Such a
recited term has a specific meaning to those skilled in the art, and, as such,
cannot be disregarded or relabeled as Forsberg’s EAP client or EAP
authenticator.
For this reason, we do not sustain the Examiner’s anticipation
rejection of claim 1 based on Forsberg.
II. Anticipation of Claims 1–3, 6–9, 12–15, 18–21, 24, and 25 by Segre
In support of the anticipation rejection of independent claims 1, 7, 13,
and 19, the Examiner also finds Segre discloses primary (1st tunnel) and
secondary authentication (2nd tunnel) of user equipment (UE or client
device), including the use of an extensible authentication protocol (EAP)
authenticator for secondary authentication of the UE. Final Act. 8–9 (citing
Segre ¶¶ 9–10, 44, 48, Figure 5).
Appellant argues, like Forsberg, Segre does not disclose the recited
“session management function (SMF) that serves as an EAP authenticator
for secondary authentication of the user equipment” because (1) the SMF did
not exist at the time Segre was filed back in 2010, (2) the “SMF is a special
purpose function that was newly introduced as part of the 5G core
architecture,” as acknowledged in paragraphs 51–54 of Appellant’s
Specification and evidenced from 5G architecture specifications published
on January 23, 2017, and (3) Segre’s “‘invention is a WiMAX wireless
network,’ which predates the notion of an SMF” and “fails to teach
authenticating a UE by interaction with an SMF.” Appeal Br. 8–11.
Consequently, claim 1 is not anticipated by Segre.
Appeal 2020-004074
Application 16/372,751

9

The Examiner responds that Segre’s “EAP authenticator” can be
broadly and reasonably interpreted to encompass the recited “session
management function (SMF)” because Segre’s “EAP authenticator performs
the same claimed function as the [claimed] SMF.” Ans. 7.
We disagree with the Examiner for the same reasons discussed with
respect to Forsberg. Accordingly, we do not sustain the Examiner’s
anticipation rejection of independent claims 1, 7, 13, and 19 and their
respective dependent claims 2, 3, 6, 8, 9, 12, 14, 15, 24, and 25.
With respect to the obviousness rejection of (1) dependent claims 4,
10, 16, and 22 based on Segre and Sternberg, and (2) dependent claims 5,
11, 17, and 23 based on Segre and Griot, we also do not sustain these
rejections for the same reasons discussed.
NEW GROUND OF REJECTION
New § 103 Rejection of Claims 1, 7, 13, and 19 under 37 C.F.R.
§ 41.50(b)
A patent claim is obvious under 35 U.S.C. § 103 if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
“[H]owever, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418; see also In re Preda, 401 F.2d 825, 826 (CCPA
1968) (“[I]n considering the disclosure of a reference, it is proper to take
into account not only specific teachings of the reference but also the
Appeal 2020-004074
Application 16/372,751

10

inferences which one skilled in the art would reasonably be expected to draw
therefrom.”). In this regard, “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Moreover,
[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
Id. at 421 (underlining added).
Pursuant to our authority under 37 C.F.R. §41.50(b), we reject
independent claims 1, 7, 13, and 19 under 35 U.S.C. § 103 as obvious over
standard 3GPP specifications developed for 5G core architecture (i.e., TS
23.501 version 0.0.0 and TS 23.502 version 0.0.0) published on January 23,
2017 in view of Forsberg and Segre.
As acknowledged by Appellant’s Specification, 5G core architecture
aims to separate the control plane from the user plane, such that “the control
plane and all the associated complex interactions [including a session
management function “SMF”], can be centralized, while the user plane is
distributed across the IP services fabric and scaled as required by the traffic
load.” Spec. ¶ 51.
In compliance with the 3GPP specifications developed for 5G core
architecture, Appellant’s invention seeks to leverage an Extensible
Authentication Protocol (EAP) for secondary authentication of user
equipment (UE), a well-known client authentication framework as disclosed
Appeal 2020-004074
Application 16/372,751

11

by Forsberg or Segre. For example, Segre teaches a well-known EAP
authentication as follows:
A client authentication to a wireless network is based on an
implementation of the Extensible Authentication Protocol
(EAP). EAP is an authentication framework often used in
wireless networks and point-to-point connections. Although the
EAP framework is not limited to wireless networks and can be
used for wired LAN authentication, it is more common in a
wireless environment. The EAP framework provides port-based
authentication, which involves communications between a
supplicant (client), authenticator, and authentication server. The
supplicant is often software on a client device, such as a laptop;
the authenticator is a wired or wireless access point; and the
authentication server is typically a host running software that
supports the EAP implementation.
Segre ¶ 46 (underlining added). In the context of Segre’s wireless network,
an AAA server (Authentication, Authorization and Accounting), shown in
Segre’s Figures 5 and 7, may be used to support EAP authentication.
Similarly, in the context of Forsberg’s 3G network, an AAA home server, as
shown in Forsberg’s Figures 1 and 7, may act as an EAP authenticator for
secondary authentication of user equipment (UE or EAP client).
In the context of 5G core architecture, where the control plane is
separated from the user plane, such that “the control plane and all the
associated complex interactions [including a session management function
“SMF”], can be centralized, while the user plane is distributed across IP
services fabric and scaled as required by the traffic load,” as acknowledged
by Appellant (Spec. ¶ 51), there are two identified, predictable options
available for an ordinarily skilled artisan to support an EAP authentication
framework. Specifically, secondary authentication of user equipment (UE),
via EAP authentication, can be implemented between UE and AAA server,
Appeal 2020-004074
Application 16/372,751

12

via (1) the control plane (e.g., SMF), or alternatively, (2) the user plane
selected by the SMF. Spec. ¶¶ 5–8, 11. For example, Appellant describes:
Some embodiments herein may therefore use EAP (rfc3748) for
authentication between a user equipment (UE) and a potentially
external authentication, authorization, and accounting (AAA)
server where the SMF, a session management function in 5G
core, endorses the role of the EAP authenticator. . . . Another
possibility would be that the EAP server is not used, and the SMF
(i.e. the EAP authenticator) executes the EAP method.
Spec. ¶ 21 (underlining added).

In other words, all of the steps of Appellant’s method claim 1,
including: (1) “receiving an extensible authentication protocol (EAP)
request from a session management function (SMF) that serves as an EAP
authenticator for secondary authentication of the user equipment” and
(2) “responsive to the EAP request, transmitting an EAP response from the
user equipment to the SMF” are steps expected by the 3GPP specifications
developed for 5G core architecture and would have been either within the
skilled level of an artisan or would have been obvious to those ordinarily
skilled artisans to implement an EAP framework for secondary
authentication of a user equipment (UE).
Because Appellant’s method claim 1 recites generic steps taken to
comply with the 3GPP specifications developed for 5G core architecture, we
issue a new ground of rejection of claim 1 and, similarly, of claims 7, 13,
and 19 under 35 U.S.C. § 103 based on the 3GPP specifications developed
for 5G core architecture and the well-known EAP authentication taught by
Forsberg or Segre.
This Board is a reviewing body rather than a place of initial
examination. We have made the rejection regarding independent claims 1,
Appeal 2020-004074
Application 16/372,751

13

7, 13, and 19 under 37 C.F.R. § 41.50(b). However, we have not reviewed
the remaining claims 2–6, 8–12, 14–18, and 20–25 for patentability over the
3GPP specifications developed for 5G core architecture and the well-known
EAP authentication taught by Forsberg or Segre. We leave the patentability
determination with respect to these dependent claims to the Examiner once
the rejection of Appellant’s independent claims 1, 7, 13, and 19 under 35
U.S.C. § 103 is addressed. See MPEP § 1213.02.
DECISION
On this record, Appellant persuades us the Examiner errs in rejecting
claim 1 as anticipated by Forsberg or Segre. As such, we reverse the
Examiner’s final rejection of (1) claim 1 as anticipated by Forsberg;
(2) claims 1–3, 6–9, 12–15, 18–21, 24, and 25 as anticipated by Segre;
(3) claims 4, 10, 16, and 22 as obvious over the combined teachings of Segre
and Sternberg; and (4) claims 5, 11, 17, and 23 s as obvious over the
combined teachings of Segre and Griot.
However, pursuant to our authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for independent claims 1, 7, 11, and 19 as
obvious over the 3GPP specifications developed for 5G core architecture
and the well-known EAP authentication disclosed by Forsberg or Segre.

Appeal 2020-004074
Application 16/372,751

14

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)
/Basis
Affirmed Reversed New
Grounds
1 102(a)(2) Forsberg 1
1–3, 6–9,
12–15, 18–
21, 24, 25
102(a)(2) Segre 1–3, 6–9,
12–15,
18–21, 24,
25

4, 10, 16,
22
103 Segre,
Sternberg
4, 10, 16,
22

5, 11, 17,
23
103 Segre, Griot 5, 11, 17,
23

1, 7, 11, 19 103 3GPP
Specification
for 5G core
architecture,
Forsberg,
Segre
1, 7, 11,
19
Overall
Outcome
1–25 1, 7, 11,
19
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Further, § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. . . .
Appeal 2020-004074
Application 16/372,751

15

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).
REVERSED
37 C.F.R. § 41.50(b)