Ex Parte Heck et al

Patent Trial and Appeal Board

May 31, 2016

13212788 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/212,788 08/18/2011 John Frederick Heck
46304 7590 06/02/2016
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
809571-US-NP 6950
EXAMINER
SHIH, ALBERT K
ART UNIT PAPER NUMBER
2411
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
nyoffice@rml-law.com
jbr@rml-law.com
ipsnarocp@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN FREDERICK HECK, GANAPATHY S. SUNDARAM, and
DOUGLAS WILLIAM VARNEY
Appeal2015-001028
Application 13/212,788
Technology Center 2400
Before ELENI MANTIS MERCADER, CARLL. SILVERMAN, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-26, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Alcatel-Lucent as the real party in interest. App. Br. 1.
Appeal2015-001028
Application 13/212,788
THE INVENTION
The claimed invention is directed to a policy routing-based lawful
interception in a communication system with end-to-end encryption.
Abstract; Spec. i1i17-9.
Claim 1, reproduced below with the disputed language italicized, is
illustrative of the claimed subject matter:
1. A method for intercepting encrypted communications
exchanged between a first computing device and a second
computing device in a communication network, wherein the
interception is performed by a third computing device in the
communication network, the method comprising:
the third computing device obtaining one or more packets
which are encrypted as part of an end-to-end encryption session
associated with the first computing device and the second
computing device, the one or more packets having a given packet
address associated with one of the first computing device and the
second computing device, wherein the one or more packets are
obtained by the third computing device in response to at least
one interception routing policy being implemented in at least one
element in the communication network which is also responsible
for routing non-intercepted packet traffic therethrough, wherein
the at least one interception routing policy is configured to
forward packets having the given packet address to the third
computing device, the third computing device decrypting the one
or more obtained packets using a security association established
for a packet-source comprising the first computing device so as
to obtain data contained therein;
the third computing device preserving the given packet
address of the one or more obtained packets such that the one or
more obtained packets do not appear to have been obtained by
the third computing device; and
the third computing device re-encrypting the one or more
obtained packets using a security association established for a
packet-destination comprising the second computing device, and
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Application 13/212,788
forwarding the one or more packets toward the packet-
destination;
wherein the one or more packets forwarded toward the
packet-destination have the given packet address; and
wherein the interception routing policy re-routes bearer
flows from the packet-source and the packet-destination to the
third computing device.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Ekstrom US 2007 /0258379 Al Nov. 8, 2007
Sundaram (hereinafter US 2011/0016321 Al Jan. 20, 2011
"Sundaram II")
Sundaram US 2011/0055567 Al Mar. 3, 2011
Chenard US 2011/0113236 Al May 12, 2011
REJECTIONS
Claims 1--6, 8-11, 16--22, and 24--26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sundaram in view of Chenard. Final
Act. 4--19.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sundaram in view of Chenard and Ekstrom. Final Act.
19-20.
Claims 12-15 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sundaram in view of Chenard and Sundaram II. Final
Act. 20-25.
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Application 13/212,788
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellants. We agree
with Appellants' arguments regarding claims 1 and 19.
Appellants argue Sundaram does not teach or suggest a "third
computing device preserving the given packet address of the one or more
obtained packets such that the one or more obtained packets do not appear to
have been obtained by the third computing device" as recited in claim 1.
App. Br. 6-8; Reply Br. 2--4. According to Appellants, Sundaram simply
discloses a man-in-the middle-intercept such as that disclosed in Figure 2
and Paragraphs 39 and 40 of the instant Specification which allows the users
to easily detect that the packets were obtained by a third computer. Id.
Appellants also argue that the Examiner's findings are conclusory statements
that are insufficient to show that preserving packet addresses necessarily
happened in Sundaram. Reply Br. 3--4.
The Examiner finds Sundaram teaches the disputed limitation. Final
Act. 5-6; Ans. 33-34. Specifically, the Examiner finds Sundaram teaches a
legal intercept server that "forwards the message to the responder and
initiator which requires the preservation of packet address so as to send the
packet to its intended address." Final Act. 5 (emphasis omitted) (citing
Sundaram i-fi-f 122, 123). The Examiner further finds the man-in-the-middle
intercept taught by Sundaram results in the communications appearing to be
sent directly from a first device to a second device without having been
obtained by a third computer. Final Act. 5---6 (citing Sundaram i-fi-f 120, 121,
181, 183). The Examiner also finds that because the key management server
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pretends to be the first user (sometimes referred to as A or Alice) to the
second user (B or Bob), "packet address must be preserved or else there
would be no pretending, furthermore since LI must forward from A to B and
B to A, address must [inherently] also be preserved so that when the
response comes back LI would know where to transmit the message." Ans.
34.
The fact that a certain result or characteristic may occur or be present
in the prior art is not sufficient to establish the inherency of that result or
characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (rejection
reversed because alleged inherency was based on what would result due to
optimization of conditions, not what was necessarily present in the prior art);
see also, In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981); In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) ("To establish inherency, the
extrinsic evidence must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill. Inherency, however, may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.")
(citations and internal quotations omitted). In relying upon the theory of
inherency, the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.
In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002).
Based on the record before us, we agree with Appellants that the
Examiner erred in finding that Sundaram inherently teaches the preserving
the packet address limitation. Sundaram teaches a man-in-the-middle
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intercept in which the LI (also referred to as the legal intercept or legal
intercept server) pretends to be B towards A and A towards B. Sundaram
i-f 181. The LI server is able to do so by creating fake certificates from a
Certificate Authority allowing the legal intercept severer to impersonate both
user A and B. Id.
We agree with Appellants that, based on the current record, Sundaram
describes the type of interception shown in Specification Figure 2 and
discussed in paragraphs 39 and 40. As discussed in the Specification, that
type of legal intercept can be detected because the messages are not sent
directly from Alice (102-A) to Bob (102-B); instead, they are sent to and
from Alice and Point A (the legal intercept server) and to and from Bob and
Point B (the legal intercept server). Fig. 2, Spec. i-fi-139, 40. Moreover,
because the legal intercept server is pretending to be Alice/ A to Bob/B and
vice-a-versa, the legal intercept server may not necessarily preserve the
packet address and, instead, may change the packet address to assist in the
masquerade. Accordingly, we agree with Appellants that the Examiner did
not offer sufficient evidence that the legal intercept server of Sundaram
would necessarily result in "the third computing device preserving the given
packet address of the one or more obtained packets such that the one or more
obtained packets do not appear to have been obtained by the third computing
device" as recited in claim 1.
Because we agree with at least one of the dispositive arguments
advanced by Appellants, we need not reach the merits of Appellants' other
arguments.
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Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 1, along with the rejections of claim 19, which
is argued on the same ground, and dependent claims 2-18 and 20-26.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1-26.
REVERSED
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