Ex Parte Chaudhry

Patent Trial and Appeal Board

Feb 29, 2016

11959060 (P.T.A.B. Feb. 29, 2016)

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.
11/959,060 12/18/2007 Kapil Chaudhry PD-207115 2115
20991 7590 02/29/2016
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
RASHID, HARUNUR
ART UNIT PAPER NUMBER
2497
MAIL DATE DELIVERY MODE
02/29/2016 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 KAPIL CHAUDHRY
____________________

Appeal 2014-004319
Application 11/959,0601
Technology Center 2400
____________________

Before ERIC S. FRAHM, LARRY J. HUME, and NORMAN H. BEAMER,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–31. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, the real party in interest is The DIRECTV Group,
Inc. App. Br. 2.
Appeal 2014-004319
Application 11/959,060

2
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed invention "relates generally to
communication systems having a primary service provider and a
supplemental service provider, and more particularly, to a method and
system for mutually authenticating a supplemental service provider and a
user device of the primary service provider." Spec. ¶ 1.
Exemplary Claims
Claims 1 and 13, reproduced below, are representative of the subject
matter on appeal (emphases and labeling added to contested limitations):
1. A method comprising:
authenticating a user device with an authentication server
of a primary service provider;
[L1] authenticating a supplemental service provider with
the authentication server of the primary service provider;
[L2] mutually authenticating the user device and the
supplemental service provider with each other; and
[L3] after mutually authenticating, communicating
directly between the supplemental service provider and the user
device.
13. A method comprising:
[L4] communicating a root certificate request from a
user device to an authentication server;

2 Our Decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Nov. 25, 2013); Reply Brief ("Reply Br.," filed Feb. 24, 2014); Examiner's
Answer ("Ans.," mailed Dec. 23, 2013); Final Office Action ("Final Act.,"
mailed June 24, 2013); and the original Specification ("Spec.," filed
Dec. 18, 2007).
Appeal 2014-004319
Application 11/959,060

3
communicating a root certificate from the authentication
server to the user device;
storing the root certificate in the user device;
communicating a request to sign a supplemental service
provider certificate from a supplemental service provider to the
authentication server,
signing the supplemental service provider certificate at
the authentication server to form a signed supplemental service
provider certificate;
communicating a request for authentication and the
supplemental service provider certificate between the
supplemental service provider and the user device; and
[L5] communicating the root certificate from the user
device to the supplemental service provider.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Guo et al. ("Guo") US 2003/0217288 A1 Nov. 20, 2003
Lindholm et al. ("Lindholm") US 2004/0117500 A1 June 17, 2004
Thornton et al. ("Thornton") US 2005/0076205 A1 Apr. 7, 2005
Miura et al. ("Miura") US 2005/0289641 A1 Dec. 29, 2005
Chua US 2006/0015358 A1 Jan. 19, 2006
Stradling US 2008/0155254 A1 June 26, 2008
Diamond US 2009/0083163 A1 Mar. 26, 2009
Mathew et al. ("Mathew") US 7,685,206 B1 Mar. 23, 2010
Appeal 2014-004319
Application 11/959,060

4
Rejections on Appeal
R1. Claims 1–3, 21, and 22 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Chua, Lindholm, and Miura. Final
Act. 2.
R2. Claims 4, 9, 11, 23, 27, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Chua, Lindholm, Miura,
and Mathew. Final Act. 7.
R3. Claims 5, 12, 24, and 31 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Chua, Lindholm, Miura,
and Stradling. Final Act. 11.
R4. Claims 8, 10, 29, and 30 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Chua, Lindholm, Miura,
Mathew, and Diamond. Final Act. 14.
R5. Claims 6 and 25 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Chua, Lindholm, Miura, Mathew,
and Thornton. Final Act. 16.
R6. Claims 7 and 26 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Chua, Lindholm, Miura, Mathew,
Thornton, and Guo. Final Act. 18.
R7. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Chua and Thornton. Final Act. 20.
R8. Claims 15 and 17–19 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Chua, Thornton, and Stradling.
Final Act. 22.
Appeal 2014-004319
Application 11/959,060

5
R9. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Chua, Thornton, Stradling, and Mathew.
Final Act. 25.
R10. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Chua, Thornton, and Diamond. Final
Act. 26.
R11. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Chua, Thornton, and Guo. Final Act. 28.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 6–19), we decide the
appeal of obviousness Rejection R1 of claims 1–3, 21, and 22 on the basis of
representative claim 1. We decide the appeal of obviousness Rejection R7
of separately argued claim 13, infra.
Remaining claims 4–12, 14–20, and 23–31 in Rejections R2 through
R6 and R8 through R11, not argued separately, stand or fall with the
respective independent claim from which they depend.
ISSUES AND ANALYSIS
In reaching this Decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
which Appellant could have made but chose not to make in the Briefs so that
we deem any such arguments waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant's arguments with respect to claims 1–31,
and we incorporate herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
Appeal 2014-004319
Application 11/959,060

6
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellant's arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1
and 13 for emphases as follows.
1. § 103 Rejection R1 of Claims 1–3, 21, and 22
Issue 1
Appellant argues (App. Br. 6–11; Reply Br. 2–4) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Chua, Lindholm, and Miura is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, contested limitations [L1]
through [L3] as recited in claim 1?
Analysis
Appellant generally contends the combination of Chua, Lindholm, and
Miura does not teach or suggest contested limitations [L1] through [L3] of
claim 1 (App. Br. 6–7), and further argues "the Examiner has factually erred
as to the teachings of Chua, Lindholm, and Miura [such that] the Examiner
has failed to set forth a prima facie case of obviousness." App. Br. 10.
Appellant's specific arguments include:
(1) "Chua is silent as to authenticating the user device
and the supplemental service provider with each other, as in
claim 1" (App. Br. 8; see limitation [L2]);
Appeal 2014-004319
Application 11/959,060

7
(2) "Lindholm is silent as to establishing [an] agreement
between two service providers. The order server 3 of
Lindholm is not a service provider. Instead, as described
above, the order server 3 is merely involved in the ordering of
media objects" (App. Br. 9; see limitation [L1]); and
(3) "Miura is silent as to mutually authenticating a user
device and a supplemental service provider with each other, as
in claim 1." App. Br. 10; see limitation [L2].
In response to Appellant's specific contentions, numbered above, the
Examiner finds:
(1) Chua's primary service provider's authentication server
authenticates a user device, the "authentication server authenticating
between subscriber 201 and primary service provider 202 . . . an
authentication provider and one or more service providers. One service
provider may, for example, be a bank and a second service provider may be
a stock brokerage)." Ans. 3 (citing Chua Fig. 1, Fig. 2, elements 201–203;
¶¶ 9 and 21–22). In addition, the Examiner finds Miura teaches mutual
authentication between the user device and the service provider. Ans. 4
(citing Miura Fig. 12 elements s216 and s224; ¶¶ 120–121).
(2) The Examiner finds claim 1 recites a "primary service provider,
supplemental provider and an authentication server." Ans. 4. Under a broad
but reasonable interpretation, the Examiner finds "Lindholm discloses
authenticating a supplemental service provider with the authentication server
of the primary service provider (fig. 3, item 67, authentication between two-
service providers via certificate [0098]-[0101])." Ans. 4.
(3) The Examiner finds "Miura discloses mutually authenticating the
user device and the service provider with each other (fig. 12; Items s216 and
Appeal 2014-004319
Application 11/959,060

8
s224; [0120]-[0121], paragraphs 120-121 showing authentication of the CE
Device by the service server of Miura." Ans. 5.
Appellant's challenge to the references individually is not convincing
of error in the Examiner's position. See In re Keller, 642 F.2d 413, 426
(CCPA 1981) ("one cannot show nonobviousness by attacking references
individually where, as here, the rejections are based on combinations of
references" (citations omitted)). Additionally, "the combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). Furthermore, the artisan is not compelled to blindly
follow the teaching of one prior art reference over the other without the
exercise of independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984)).
We agree with the Examiner's factual findings, cited above. In
addition, we find the Examiner has set forth an "articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness."
See Ans. 3 and 4. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR, 550 U.S. at 418).
We are not persuaded by Appellant's renewed arguments in the Reply
Brief, because Appellant appears to continue to argue the references
separately, while the rejection is based on the combination of Chua,
Lindholm, and Miura. Reply Br. 2–4. We reiterate, because the Examiner
rejects the claims as obvious over the combined teachings of Chua,
Lindholm, and Miura, the test for obviousness is not what the references
show individually but what the combined teachings would have suggested to
Appeal 2014-004319
Application 11/959,060

9
one of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). We note Appellant has not challenged the combinability of
the teachings of Chua, Lindholm, and Miura.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2, 3, 21, and 22, which fall therewith. See Claim Grouping, supra.
2. § 103 Rejection R7 of Claim 13
Issue 2
Appellant argues (App. Br. 14–18; Reply Br. 4–5) the Examiner's
rejection of claim 13 under 35 U.S.C. § 103(a) as being obvious over the
combination of Chua and Thornton is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, contested limitations [L4] and
[L5] as recited in claim 13?
Analysis
Appellant generally contends Chua and Thornton, either alone or in
combination, do not teach or suggest all the "communicating" steps of
claim 13, including contested limitations [L4] and [L5]. App. Br. 15.
Appeal 2014-004319
Application 11/959,060

10
Appellant does not set forth any specific arguments against the
Examiner's rejection with respect to these "communicating" limitations,
except to allege, without explicit reference to any specific limitation:
Chua teaches individually authenticating the subscriber 201
with the first and second service providers 202 and 205 using
the authentication server 203 . . . [but] Chua is silent as to the
alleged user device (i.e., subscriber 201) transmitting any piece
of data received from the alleged authentication server (i.e.,
authentication server 203) to the alleged supplemental service
provider (i.e., second service provider 205).
App. Br. 16.
With respect to contested limitations [L4] and [L5], Appellant
specifically argues, "Chua is silent as to the limitations of claim 13 of:
communicating a root certificate from the authentication server to the user
device; and communicating the root certificate from the user device to the
supplemental service provider." App. Br. 16 (emphasis added).
In addition, Appellant also alleges "Thornton is silent as to:
communicating a request to sign a supplemental service provider certificate
from a supplemental service provider to an authentication server; and
communicating a request for authentication and the supplemental service
provider certificate between the supplemental service provider and the user
device," and the Examiner therefore erred as to the teachings of Thornton.
App. Br. 18.
In response, the Examiner finds (Ans. 5–6), and we agree, Thornton's
disclosure of a request being communicated from a user device meets the
contested limitation, i.e., "[i]f the parent certificate is not known to the
client, the client may request the parent certificate from an accessible
Appeal 2014-004319
Application 11/959,060

11
server." Thornton ¶ 171; see also Thornton ¶ 177 ("Client 1400 likewise
includes software for communicating with service provider 1408 and for
interacting with the operator of client 1400".).
In the Reply Brief, Appellant again alleges the cited prior art
references do not teach or suggest all the "communicating" limitations of
claim 13, and particularly allege "[t]he Examiner failed to address this
argument in the Examiner's Answer." Reply Br. 5. We are not persuaded
the Examiner erred.
We are not persuaded because the Examiner clearly set forth the basis
of the rejection (Final Act. 20–22), in which Chua is relied upon for all
limitations, except for "communicating a root certificate," "storing the root
certificate in the user device," and "signing the supplemental service
provider certificate at the authentication server to form a signed
supplemental service provider certificate." The Examiner addresses
Appellant's allegations regarding Thornton in the Answer, as cited above.
Appellant again appears to argue the references separately, when the
Examiner rejects the claims as obvious over the combined teachings of Chua
and Thornton. The test for obviousness is not what the references show
individually but what the combined teachings would have suggested to one
of ordinary skill in the art. See In re Merck, 800 F.2d at 1097. We note
Appellant has not challenged the combinability of the teachings of Chua and
Thornton.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
Appeal 2014-004319
Application 11/959,060

12
disputed limitation of claim 13, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 13.
3. Rejections R2–R6 and R8–R11 of Claims 4–12, 14–20, and 23–31
In view of the lack of any substantive or separate arguments directed
to obviousness rejections R2 through R6 and R8 through R11 of
claims 4–12, 14–20, and 23–31 under § 103 (see App. Br. 12–14, 18,
and 19), we sustain the Examiner's rejection of these claims. We deem
arguments not made waived.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–5) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellant has not shown.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
through R11 of claims 1–31 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.

Appeal 2014-004319
Application 11/959,060

13
DECISION
We affirm the Examiner's decision rejecting claims 1–31.
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