Ex Parte Amiel et al

Patent Trial and Appeal Board

Feb 27, 2017

13990320 (P.T.A.B. Feb. 27, 2017)

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.
13/990,320 07/15/2013 Patrice Amiel 1032326-000603 5211
21839 7590 03/01/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
DHRUV, DARSHAN I
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICE AMIEL, XAVIER BERARD, and
GREGORY VALLES
Appeal 2016-007636
Application 13/990,320
Technology Center 2400
Before: ELENI MANTIS MERCADER, SCOTT B. HOWARD, and
ALEX S. YAP, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claimed invention is directed to accessing a secure element. The
secure element sends to a first device a secure element identifier, the first
device sends to a second device a first message having the secure element
Appeal 2016-007636
Application 13/990,320
identifier, the second device sends to a third device a second message having
the secure element identifier and two communication network subscription
identifiers, as associated data. The second device added the two
communication network subscription identifiers and the third device stores
the associated data. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for accessing a secure element,
wherein a first device is coupled to the secure element,
comprising the following steps:
- storing, in a memory of the secure element, a secure
element identifier;
- sending, by the secure element and at an initiative of the
secure element, to the first device, the secure element identifier;
- sending, by an output interface of the first device and to
a second device, at least one first message comprising the secure
element identifier;
- identifying, by a processor of the second device, two
communication network subscription identifiers;
- associating, by the processor of the second device, the
two communication network subscription identifiers with the
secure element identifier;
- sending, by an output interface of the second device and
to a third device, at least one second message comprising
associated data, wherein the associated data includes at least the
secure element identifier and the two communication network
subscription identifiers; and
- storing, in a database of the third device, the associated
data.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Girard US 2003/0119482 A1
De Groot US 2007/0293192 A9
Mardikar US 2009/0307140 A1
REJECTIONS
The Examiner made the following rejections:
Claims 1—7 and 9—10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Girard in view of De Groot.
Claims 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Girard in view of De Groot and further in view of
Mardikar.
June 26, 2003
Dec. 20, 2007
Dec. 10, 2009
ISSUES
The pivotal issue is whether the Examiner appropriately combined
Girard with De Groot by providing a rational underpinning to support the
legal conclusion of obviousness.
ANALYSIS
We adopt the Examiner’s findings in the Answer and Final Office
Action and we add the following primarily for emphasis. We note that if
Appellants failed to present arguments on a particular rejection, we will not
unilaterally review those uncontested aspects of the rejection. See Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas,
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551 F.3d 1307, 1313—14 (Fed. Cir. 2008) (The Board may treat arguments
Appellants failed to make for a given ground of rejection as waived).
Appellants argue that if one were to combine the disclosures of De
Groot and Girard as suggested, at most, one would arrive at a mobile
terminal having two cards (i.e., a banking card and a SIM card) capable of
securely exchanging data and performing a method that protects the IMSI of
the SIM card from being transmitted to a telecommunications network in
clear text (App. Br. 8). According to Appellants, the combination neither
results in the claimed method and system nor accomplishes the technical
solution provided thereby (App. Br. 8).
Appellants further argue that one skilled in the art would not be
motivated to alter or replace the interpreted “second device” of Girard with
the PC/card or Terminal/card combinations of De Groot, and if, for some
reason, one were to be motivated to combine Girard and De Groot, the
manner in which one would make such a combination would be to replace or
alter the first device of Girard with the Terminal/card or PC/card of De
Groot (App. Br. 9). Appellants further argue that even if, arguendo, one
were to somehow modify the specialized server of Girard to perform the
function of associating the MCC and MNC with the IA1, the combination
would not speak to the transmission of a personal identifier of the terminal
(App. Br. 10). Further, Appellants assert that it is unclear how the Examiner
suggests that the specialized server of Girard would be capable of
determining the MCC and MNC, and associate these identifiers with the
secure element identifier received from the terminal (TE) of Girard (App.
Br. 10).
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Application 13/990,320
We are not persuaded by Appellants’ arguments. We agree with the
Examiner’s findings that Girard teaches a secure element 22 of the
additional card CA, which along with the SIM card and all the electronics of
Terminal TE constitute the first device, wherein the card CA transmits to the
SIM card the identifier AID and the serial number NS meeting the claim
limitation of “sending, by the secure element and at an initiative of the
secure element, to the first device, the secure element identifier” as required
by claim 1 (see Final Act. 5—6 and Fig. 2). The TE (i.e., first device) sends
to the specialized server SO, a short message service sender, of the radio
telephone network (RR) a message comprising the secure element identifier,
thereby meeting the claim limitation of “sending, by an output interface of
the first device and to a second device, at least one first message comprising
the secure element identifier” as required by claim 1 (see Final Act. 6 and
Figs. 1—2). The SO sends a second message with associated data (i.e., the
supplier server address ASP read in the table, the address ASO of the server
SO, the selected application identifier AID and the card serial number NS) to
the server SP (i.e., third device) that stores the associated data (Final Act. 6—
7; Figs. 1—2). Thereby meeting the claim limitation of “sending, by an
output interface of the second device and to a third device, at least one
second message comprising associated data, wherein the associated data
includes at least the secure element identifier” and storing the data as
required by claim 1.
The Examiner then relies on De Groot for identifying, by a processor
of the second device, two communication network subscription identifiers
(para. 4, i.e., it is well known in the art the IMSI identity is composed of
three fields: MCC, MNC, and MSIN, 3 digits corresponding to the MCC
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(Mobile Country Code), the code of country, 2 or 3 digits corresponding to
the MNC (Mobile Network Code), the operator’s code, 10 digits or less
corresponding to the MSIN (Mobile Subscriber Identification Number),
subscriber’s number within GSM network) (Final Act. 7). The processor of
the second device, associates the two communication network subscription
identifiers with the secure element identifier (para. 40 (“The pseudonym
(IA1) can be transmitted with the prefixes MCC (Mobile Country Code) and
MNC (Mobile Network Code) of the IMSI identifier of the user . . .”) (Final
Act. 8). Thus, the second device adds two communication network
subscription identifiers to the secure element IA1, wherein the associated
data includes at least the secure element identifier (Fig. 2 (E6 — IA1)), para.
40, IA1 is a secure element identifier) and the two communication network
subscription identifiers (para. 40, MCC (Mobile Country Code) and MNC
(Mobile Network Code)) (Final Act. 8).
The Examiner finds, and we agree, Girard and De Groot are
analogous art because both provide secure communication in
telecommunication network utilizing a SIM card (Final Act. 8). Therefore,
it would have been obvious to someone of ordinary skill in the art at the time
the invention to send a secure message (i.e., element identifier) from the
telephone to a server, as taught by Girard, and combined two communication
network subscription identifiers with the message, as taught by De Groot, to
transmit the personal identifier of the terminal or of the user in clear text to
the server during a session between the terminal and the Server (Final Act.
8).
We further agree with the Examiner that the teaching relied upon from
De Groot is the technique of associating the two communication network
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subscription identifiers with the secure element identifier that is being relied
upon, rather than the specific device in De Groot that is performing the
technique (Ans. 4). “The test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead,
the relevant issue is “what the combined teachings of the references would
have suggested to those of ordinary skill in the art.” Id. “Combining the
teachings of references does not involve an ability to combine their specific
structures.” In reNievelt, 482 F.2d 965, 968 (CCPA 1973).
We also agree with the Examiner that the cited references apply a
known technique to a known device ready for improvement to yield
predictable results (Ans. 4). Where the claimed subject matter is no more
than “the simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for
improvement,” and, the combination does no more than yield predictable
results, the claim is unpatentable under 35 U.S.C. § 103(a). KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 401 (2007) (Ans. 4). Furthermore, where the
claimed subject matter is a combination that only unites old elements with
no change in their respective established functions, and the combination
yields predictable results, the claim is unpatentable as obvious under 35
U.S.C. § 103(a). Id.
That is, the Examiner relied on the technique of associating two
communication network subscription identifiers with the secure element
identifier, and sending the data as a second message is covered by the
combination of Girard and De Groot (Ans. 4). De Groot teaches that the
processor (PR) concatenates the encrypted random number (RC) and the
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encrypted identifier (IC) into an anonymous identifier (IA1), which is
written into memory M2 (Ans. 4). The IA1 identifier acts as a pseudonym
of the user that is of the SIM card (CP) as a client of the server resource
(MS) (Ans. 4). This concatenation is followed by transmission of the IA1
pseudonym in a message through the terminal (TU) and the radiotelephone
network (RR) to the server resource (MS) at step E6 (Ans. 4). The
pseudonym (IA1) is transmitted with the prefixes MCC (Mobile Country
Code) and MNC (Mobile Network Code) of the IMSI identifier of the user
so that the home location register (HLR) recognizes the country code of the
user and the code of the network (RR) (para. 40; Ans. 4). Thus, De Groot
discloses a secure element identifier IA1 associated with two network
subscription identifiers MCC (Mobile Country code) and MNC (Mobile
Network Code) and transmitted to the server resource (MS) (Ans. 4—5).
Thus, we agree with the Examiner that there is adequate motivation
articulated by the Examiner for combining the references.
Appellants appear to repeat similar arguments for claims 2—9 (App.
Br. 10—13). Accordingly, we affirm the Examiner’s rejection of claim 1, and
for the same reasons, the rejections of claims 2—10.
CONCLUSION
The Examiner did not err combining Girard with De Groot by
providing a rational underpinning to support the legal conclusion of
obviousness.
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DECISION
For the above reasons, the Examiner’s rejections of claims 1—10 are
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)(l)(iv).
AFFIRMED
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