Ex Parte Bender et alDownload PDFPatent Trial and Appeal BoardJan 22, 201812039960 (P.T.A.B. Jan. 22, 2018) Copy Citation 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. 12/039,960 02/29/2008 Christopher Lyle Bender RIM165-01US 8510 52169 7590 Integral IP / BlackBerry 4400 Bathurst Street, Suite 10 TORONTO, ON M3H 3R8 CANADA EXAMINER TABOR, AMAREF ART UNIT PAPER NUMBER 2434 NOTIFICATION DATE DELIVERY MODE 01/24/2018 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): US PTO <§> INTEGRALIP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER LYLE BENDER, SAM CHENG-FU SHIH, and NEIL PATRICK ADAMS Appeal 2017-001579 Application 12/039,960 Technology Center 2400 Before BRADLEY W. BAUMEISTER, ADAM J. PYONIN, and AMBER L. HAGY, Administrative Patent Judges. HAGY, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 34-73, which are all of the pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify Research in Motion Limited as the real party in interest. (App. Br. 3.) 2 Claims 1-33 have been canceled. (App. Br. 28 (Claims App’x).) Appeal 2017-001579 Application 12/039,960 STATEMENT OF THE CASE Introduction According to Appellants, “[t]he present disclosure relates generally to mobile communication devices operative for communications via wireless communication networks, and more particularly to methods and apparatus for enabling a mobile communication device with a digital certificate for communications.” (Spec. 1:14-17.) Exemplary Claim Claims 34, 47, 57, and 67 are independent. Claim 34, reproduced below with the disputed limitations italicized, is exemplary of the claimed subject matter: 34. A method performed by a mobile communication device, the method comprising: the mobile communication device receiving configuration information from a host server over a secure connection; and responsive to the mobile communication device receiving the configuration information: the mobile communication device generating a public-private key pair of a type indicated in the configuration information; the mobile communication device constructing a certificate request that contains the generated public key and signing the certificate request with the generated private key; and the mobile communication device sending the certificate request to a certificate authority indicated in the configuration information. 2 Appeal 2017-001579 Application 12/039,960 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Nilsen Hind et al. (“Hind”) Brown et al. (“Brown”) Pathakis et al. (“Pathakis”) US 6,578,151 B1 US 6,980,660 B1 US 7,631,183 B2 US 7,770,204 B2 June 10, 2003 Dec. 27, 2005 Dec. 8, 2009 Aug. 3, 2010 REJECTION Claims 34-73 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hind in view of Brown, Nilsen, or Pathakis. (Final Act. 2-8.) ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ arguments the Examiner has erred. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We concur with Appellants’ contention the Examiner erred in finding Hind teaches or suggests “the mobile communication device constructing a certificate request that contains the generated public key and signing the certificate request with the generated private key,” as recited in independent claim 34 and commensurately recited in independent claims 47, 57, and 67.3 (App. Br. 28, 30, 32, and 34 (Claims App’x); see App. Br. 11-13; Reply Br. 4-6.) We first note that the Examiner responds to Appellants’ arguments, in part, by stating that “Appellants’ claim language does not restrict 3 Appellants’ contentions present additional issues. Because the identified issue is dispositive of Appellants’ arguments on appeal, we do not reach the additional issues. 3 Appeal 2017-001579 Application 12/039,960 constructing [the] certificate request to the mobile device only” (Ans. 8), and further stating that reference to a “mobile communication device” in the preamble “has not been given patentable weight” {id. at 9). The Examiner’s interpretation of the pending claims is incorrect; as Appellants note in their Reply Brief, the Examiner’s statements appear to refer to Appellants’ claims as they existed prior to the Amendment dated January 5, 2015, in which Appellants amended the claims to recite that the mobile communication device constructs the certificate request. {See also Reply Br. 2-3.) The Examiner’s reasoning in the Answer defending the rejection appears to be based, at least in part, on the pre-amended version of the pending claims. As such, the reasoning cannot provide support for the Examiner’s rejection of the currently pending claims. The Examiner also addresses the substance of Appellants’ arguments, but fails to provide analysis or reasoning sufficient to bridge the gap between the prior art and the pending claims. In particular, although the Examiner correctly finds Hind discloses the generation of a digital certificate request for enabling secure communication between a mobile device and a server {see Ans. 8-9), the Examiner has not cited to any portion of Hind (or any other reference) that teaches or suggests that the certificate request is constructed by the mobile communication device, as recited in claim 34. Instead, the Examiner finds “Hind discloses an administration server constructing a certificate request, a Certificate Authority signing the certificate request (with the CA’s private key) and the administration server sending the signed certificate to the mobile device.” (Ans. 10 (citing Hind Fig. 1A, 9:14-55) (emphasis added).) As Appellants correctly note, however, an administration server constructing a certificate request, as 4 Appeal 2017-001579 Application 12/039,960 disclosed in Hind, is not the same as the mobile communication device constructing the certificate request, as recited in Appellants’ claims. (App. Br. 11-13; Reply Br. 4-6.) The Examiner attempts to address this shortfall by explaining that “[i]t is obvious that the administration server of Hind cannot construct the certificate request without the mobile device.” (Ans. 9.) The Examiner does not, however, provide any analysis or reasoning to support this conclusion. (See Reply Br. 4-5.) Nor does the Examiner explain what exactly is meant by the statement, or how Hind’s administration server—constructing the request not without the mobile device—teaches or suggests the mobile device constructs the certificate request as claimed. (See id.) The Examiner similarly asserts that “making something integral/separable is an obvious variation.” (Ans. 9.) Although the Examiner’s statement is conclusory and lacks context, it appears that the Examiner is concluding that moving the functionality of “constructing a certificate request” from the administration server, as disclosed by Hind, to the mobile device, as recited in the pending claims, would have been an “obvious variation.” Again, however, the Examiner provides no analysis or reasoning to support this conclusion. (See also Reply Br. 5-6.) In short, for essentially the same reasons argued by Appellants (App. Br. 11-17; Reply Br. 2-6), and as further addressed herein, we agree the Examiner erred in finding Hind teaches or suggests “the mobile communication device constructing a certificate request that contains the generated public key and signing the certificate request with the generated private key,” as recited in independent claim 34 and commensurately recited in independent claims 47, 57, and 67. Accordingly, on this record, we do 5 Appeal 2017-001579 Application 12/039,960 not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claims 34, 47, 57, and 67 or of their respective dependent claims. DECISION For the above reasons, the Examiner’s rejection of claims 34-73 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation