Ex Parte Ishii

Board of Patent Appeals and Interferences

Jan 28, 2010

11089502 (B.P.A.I. Jan. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte TATSUYA ISHII
_____________

Appeal 2009-0044541
Application 11/089,502
Technology Center 2600
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Decided: January 28, 2010
_______________

Before JOHN C. MARTIN, THOMAS S. HAHN, and CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is NEC Corporation.
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-13, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

A. Appellant’s invention
Appellant’s invention relates to network authentication for wide area
network connection at a hotspot or the like by using a cellular phone.
Specification 1:8-13.2
Appellant’s Figure 1 is reproduced below.

2 References herein to Appellant’s Specification are to the Application as
filed rather than to corresponding Patent Application Publication
2006/0217108 A1.
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Figure 1 shows an example of the arrangement of a network
authentication system using a network authentication apparatus in
accordance with Appellant’s invention. Id. at 3:15-18.
The IT spot 101 is a space where Internet connection services are
provided for an unspecified number of users by an IT spot terminal device
102. Id. at 4:23-25. The IT spot terminal device 102 is directly connected to
the Internet 105 via an ADSL connection, optical fiber connection, or the
like. Id. at 4:25 to 5:1.
When a user who owns a cellular phone 104 inserts it in the fitting
portion 103a of the cellular phone connection unit 103, the cellular phone
connection unit 103 reads “device attribute information” from the mounted
cellular phone 104 and notifies the IT spot terminal device 102 of the read
information, which the IT spot terminal device 102 temporarily stores in a
memory 102b (Fig 1A). Id. at 6:20 to 7:2. Subsequently, when a log-in
request for an IT provider 107 and a predetermined password are input by
the user, the IT spot terminal device 102 sends out the log-in request to the
IT provider 107 together with the input password and temporarily stored
device attribute information. Id. at 7:3-8.
The device attribute information is information containing an
individual identifier such as a telephone number or serial number assigned to
the cellular phone 104. Id. at 5:15-18.

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B. The claims
The independent claims before us are claims 1, 6, and 9-13, of which
claim 1 reads:
1. A network authentication apparatus comprising:
a cellular phone connection unit which includes a fitting
portion in/from which a cellular phone can be
inserted/removed; and
an internet terminal device which is connected to said
cellular phone connection unit, includes a memory, and is
connected to a digital network,
wherein said internet terminal device reads out device
attribute information containing individual identification
information of a cellular phone from the cellular phone
connected to said cellular phone connection unit, and sends out
the read out device attribute information as authentication
information to the digital network.
Claims App. (Br. 15.)

C. The references
The Examiner relies on the following references:3

Chen US 2003/0118045 A1 June 26, 2003
Little et al. (“Little”) US 2004/0171369 A1 Sep. 2, 2004

3 Because the availability of the references as prior art against Appellant’s
(Continued on next page.)
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D. The rejection
Claims 1-13 stand rejected under 35 U.S.C. § 103(a) for obviousness
over Little in view of Chen. Final Action 3.

THE ISSUE
Appellant has the burden on appeal to show reversible error by the
Examiner in maintaining the rejection. See In re Kahn, 441 F.3d 977, 985-
86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” (citation omitted)).
The sole issue raised by Appellant’s arguments is whether Appellant
has shown error in the Examiner’s finding that the references disclose
“device attribute information containing individual identification
information of a cellular phone” (claim 1).

ANALYSIS
Little’s invention relates generally to the field of secure electronic
messaging and in particular to the management and transfer of Certificates
between secure messaging clients. Little ¶ 0003. A Certificate (“Cert”)
normally includes the public key of an entity as well as identity information
that is bound to the public key with one or more digital signatures. Id.

claims is not at issue, only the publication dates are provided.
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¶ 0005. In Secure Multipurpose Internet Mail Extension (S/MIME)
messaging, for example, a public key is used to verify a digital signature on
a received secure message and to encrypt a session key that was used to
encrypt a message to be sent. Id.
Figure 2 of Little is reproduced below.

Figure 2 is a block diagram illustrating a secure e-mail message
exchange in Little’s messaging system. Id. ¶ 0013. The system includes an
e-mail sender 30, a WAN 32, a wireless gateway 34, a wireless network 36,
a mobile device 38, and a computer system 31. Id. ¶ 0034. Computer
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system 31 has a communication link 33 to an interface or connector 35
through which information may be exchanged with the mobile device 38, as
indicated by the dashed line 39. Id.
Appellant does not challenge the Examiner’s finding (Final Action 3-
4) that Little satisfies all of the limitations of claim 1 except the “wherein”
clause, which specifies that the internet terminal device reads out, and sends
to the digital network, “device attribute information containing individual
identification information of a cellular phone.” For such a teaching the
Examiner relies on Chen, which discloses a computer with an SIM
(Subscriber Identification Module) card for identifying the user and
connecting to a communications network. Chen ¶¶ 0001, 0002. A SIM card
is “a card embedded generally and previously in a GMS [sic: GSM] phone
and owned by a mobile operator, making it possible for the operator to
identify the customer.” Id. ¶ 0002.
Chen’s Figure 1 is reproduced below.
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Figure 1 schematically illustrates the block diagram of the computer
using a SIM card in accordance with Chen’s invention. Id. ¶ 0015. The
computer 10 is composed of a SIM card interface 40 (mislabeled 80 in
Fig. 1), a main module 20, an output device 70, an input device 80, a storage
media 50, and a communication unit 30. Id. ¶ 0017.
The SIM card interface 40 is applied to connect to a SIM
card 100, which contains the personal information of a user and
his/her identification information for the network. The personal
information contains a password which is a combination of letters,
numbers, and signs, and is predetermined by the user.
Id. ¶ 0018. “The communication unit 30 . . . enables the computer 10 to
send the personal information of a user and his/her identification information
for the network to the Internet 300 or LAN 200.” Id. ¶ 0023. The main
module 20 compares the password string input by the user from the input
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device 80 to the password stored in the SIM card 100, allowing the computer
10 to be boosted whenever the password string matches the password. Id. ¶
0019.
The Examiner reads the recited “device attribute information
containing individual identification information of a cellular phone” on the
“personal information” stored in Chen’s SIM card. Final Action 2, 4.
Appellant denies that Chen’s SIM card stores any information that functions
as “device attribute information containing individual identification
information of a cellular phone.” According to Appellant,
Chen is a bare disclosure of a computer with a SIM card for
identifying users for a network. To authenticate users, Chen
makes use of a user-defined password in the SIM card. As such,
the device in which the SIM card is installed in is irrelevant, and
the authentication information has nothing to do with the device -
or even the SIM card itself. No device attribute information is
read out at all - a user defined password is.
(Br. 11.) To the extent Appellant is arguing that the only identification or
authentication information that is read out of Chen’s SIM card is the user-
defined password, which Chen gives as an example of “personal
information,” we do not agree. As noted above, Chen explains that the read-
out information includes “the personal information of a user and his/her
identification information for the network.” Chen ¶ 0023 (emphasis added).
However, we agree with Appellant that that the Examiner has not
demonstrated that any of this information in Chen’s SIM card can accurately
be characterized as “device attribute information containing individual
identification information of a cellular phone” (claim 1). To the contrary,
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Chen’s above-quoted statement that “the personal information of a user and
his/her identification information for the network” suggests that all of this
information pertains to the user rather than to the SIM card or the cell phone.
Nevertheless, we are sustaining the rejection of claim 1 because Little
discloses that network access can be based on the identity of the device
rather than on the identity of the user:
Depending upon the type of network 519, the access
requirements for the mobile device 500 may also vary. For
example, in the Mobitex and DataTAC data networks, mobile
devices are registered on the network using a unique
identification number associated with each device. In GPRS data
networks, however, network access is associated with a subscriber
or user of the mobile device 500. A GPRS device typically
requires a subscriber identity module (“SIM”), which is required
in order to operate the mobile device 500 on a GPRS network.
Little ¶ 0086 (italics added). This paragraph describes Little’s Figure 5,
which is reproduced below.
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Figure 5 is a block diagram of an example of a wireless mobile
communication device (500) that can be used to implement Little’s systems
and methods. Id. at ¶ 0081. The mobile device 500 can be manually
synchronized with a host system by placing the mobile device 500 in an
interface cradle (not shown), which couples the serial port 530 of the mobile
device 500 to the serial port of the host system. Id. ¶ 0095.
Figure 6 of Little is reproduced below.
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Figure 6 is a block diagram showing an example of a communication
system that includes a corporate LAN 606 located behind a
security firewall 608. Id. ¶ 0101. Corporate LAN 606 in turn includes, inter
alia, a desktop computer system 622 having a communication link directly
to a mobile device, such as through a physical connection 624 to an interface
or connector 626. Id. Also, desktop computer system 622 can include a
memory. See id. ¶ 0106 (“Messages may also be downloaded from the data
store 617 to a local data store (not shown) on the desktop computer system
622.”).
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Comparing claim 1 to the above disclosures in Little, the recited
“cellular phone connection unit which includes a fitting portion in/from
which a cellular phone can be inserted/removed” reads on the “interface
cradle” mentioned in paragraph 0095 and depicted in Figure 6 as
“Interface/Connector 626.” The recited “internet terminal device which is
connected to said cellular phone connection unit, includes a memory, and is
connected to a digital network” reads on desktop computer system 622
(Fig. 6), which, as noted above, can include a data store. The recited “device
attribute information containing individual identification information of a
cellular phone” recited in the “wherein” clause reads on the “unique
identification number associated with each device” for obtaining network
access when the network takes the form of either of the Mobitex and
DataTAC data networks. Id. at ¶ 0086. Because all of the limitations of
claim 1 therefore read on Little, and because anticipation is the epitome of
obviousness, In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002), we are
sustaining the rejection of claim 1 for obviousness over Little in view of
Chen.
We are also sustaining the rejection of claim 1 as well as the rejection
of independent claims 6 and 9-13 and dependent claims 2-5, 7, and 8, as to
which Appellant relies on only the above-discussed claim 1 arguments. (Br.
13.)

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DECISION
The rejection of claims 1-13 under 35 U.S.C. § 103(a) for obviousness
over Little in view of Chen is sustained.
The Examiner’s decision that claims 1-13 are unpatentable is
accordingly 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(v) (2009).
AFFIRMED

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