11736387 (P.T.A.B. Mar. 16, 2016)

Ex Parte Chen

Patent Trial and Appeal BoardMar 16, 2016

11736387 (P.T.A.B. Mar. 16, 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. 11/736,387 04/17/2007 Xuemin (Sherman) Chen 3875.1670000 3709 26111 7590 03/16/2016 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER GEE, JASON KAI YIN ART UNIT PAPER NUMBER 2495 MAIL DATE DELIVERY MODE 03/16/2016 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 XUEMIN SHERMAN CHEN Appeal 2014-0025811 Application 11/736,387 Technology Center 2400 ____________________ Before JEAN R. HOMERE, ERIC S. FRAHM, and JASON J. CHUNG, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1-7, and 9-31. App. Br. 1. Claim 8 has been canceled. Id. at 22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellant’s Invention Appellant invents a method and system for securely authenticating a system on chip (SoC) to access functions on an off-chip device. In 1 Appellant identifies the Real Party in Interest as Broadcom Corp. App. Br. 3. An oral hearing previously scheduled to be held in this appeal on Mar. 8, 2016 was waived. Appeal 2014-002581 Application 11/736,387 2 particular, the SoC (100) stores in a register (102) an authentication challenge including a random number sample, a Chip ID, and a key obtained, respectively, from memories (104, 108), and a table of keys (110). Then, the Soc (100) utilizes an encryption unit (112) to generate a unique password for each performed authentication by hashing a secret word obtained from a memory (108) with information from the authentication challenge. The SoC (100) communicates information from the challenge register (102) to an off-chip device (200), which utilizes a secure secret algorithm (212) to regenerate the password. If the two passwords match, the SoC is authorized to access the functions in the off-chip device. Spec. ¶¶ 43-45, Figs. 1A, 1B, 2. Illustrative Claim Independent claim 1 is illustrative, and reads as follows: 1. A method for authenticating a device in a communication system, the method comprising: generating a password on a chip based on information that is unique to the chip and unique to an authentication challenge; sending said authentication challenge to said off chip device wherein said authentication challenge includes information to enable said off chip device to regenerate said password at said off chip device; and authentication on said chip access to one or more secure functions controlled by said chip based on said regenerated password from said off chip device in response to said authentication challenge. Appeal 2014-002581 Application 11/736,387 3 Prior Art Relied Upon AUDEBERT et al. US 2003/0145203 A1 July 31, 2003 HAY et al. US 2003/0163787 A1 Aug. 28, 2003 HUGHES et al. US 2004/0066278 A1 Apr. 08, 2004 DUCHARME US 2005/0182948 A1 Aug. 18, 2005 FISKE US 2006/0107316 A1 May 18, 2006 Rejections on Appeal Appellant requests review of the following Examiner’s rejections: Claims 1-4, 15-19, 30, and 31stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Fiske and Hughes. Claims 5 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Fiske, Hughes, and Ducharme. Claims 6, 7, 9, and 21-24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Fiske, Hughes, Ducharme, and Hay. Claims 10-14, and 25-29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Fiske, Hughes, Ducharme, Hay and Audebert. Appeal 2014-002581 Application 11/736,387 4 ANALYSIS We consider Appellant’s arguments seriatim, as they are presented in the Appeal Brief, pages 8–19, and the Reply Brief, pages 2–10.2 Issue: Under 35 U.S.C. § 103, did the Examiner err in finding the combination of Fiske and Hughes teaches or suggests “generating a password based on information that is unique to the chip and unique to an authentication challenge” as recited in independent claim 1? Appellant argues the proposed combination of references does not teach or suggest the disputed limitations emphasized above. App. Br. 9-16, Reply Br. 2-10. First, Appellant argues Fiske’s disclosure of using a random number generator in a chip to produce a passcode would result in a random passcode that is not necessarily unique to the chip. App. Br. 10–12 (citing Fiske ¶ 30). According to Appellant, because Fiske’s passcode device utilizes a user’s ID or fingerprint that uniquely identifies a user, the generated passcode is based on information that is unique to a user, and not the chip. Id. This argument is not persuasive. At the outset, we note Appellant’s Specification does not define “information that is unique to the chip”. Instead, the Specification merely 2 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed Sept. 3, 2013), the Reply Brief (filed Nov. 26, 2013), and the Answer (mailed Sept. 26, 2013) for their respective details. We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Any other arguments Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv)(2013). Appeal 2014-002581 Application 11/736,387 5 discusses the chip ID as an example of such information. Spec. ¶ 44. Although “information that is unique to the chip” can be construed as information that uniquely identifies the chip (e.g., chip ID), it can be broadly and reasonably construed to also encompass other unique information (e.g., user ID, fingerprint, social security number) that the chip utilizes in generating the passcode. Therefore, we agree with the Examiner that Fiske’s disclosure of generating the passcode based on information that is unique to a user (for example, fingerprint information) does not preclude such information from being unique to the chip. Ans. 2. Consequently, we find Fiske’s disclosure of the passcode generator utilizing unique user information to thereby generate a pass code teaches or suggests generating the passcode based on information that is unique to both the user and the chip. Fiske ¶ 30. Second, Appellant argues because Hughes’s disclosure of a private key of a tag does not pertain to information that is unique to a chip, it does not cure the alleged deficiencies of Fiske. App. Br. 12-14 (citing Hughes ¶¶ 45, 52). Third, Appellant argues Hughes would render Fiske inoperable for its intended purpose because neither reference teaches generating a passcode based on information that is unique to the chip. Id. at 15. These arguments are not persuasive. As discussed above, we find no such deficiencies in Fiske for Hughes to remedy. Accordingly, we find no error in the Examiner’s rejection of claim1 as being unpatentable over the combination of Fiske and Hughes. Appeal 2014-002581 Application 11/736,387 6 Regarding the rejection of claims 2-7 and 9-31, because Appellant has either not presented separate patentability arguments or has reiterated substantially the same arguments as those previously discussed for patentability of claim 1 above, claims 2–7 and 9–31 fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv) (2013). DECISION We affirm the Examiner’s rejections of claims 1–7, and 9–31 as set forth above. 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