Ex Parte Juels

Board of Patent Appeals and Interferences

Mar 21, 2008

10782309 (B.P.A.I. Mar. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ARI JUELS
____________

Appeal 2007-2357
Application 10/782,309
Technology Center 2600
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Decided: March 21, 2008
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Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-7, 9-16, 20, 23-27, and 29-33. Claims
8, 17-19, 21, 22, and 28 are objected to by the Examiner as being dependent
upon a rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2007-2357
Application 10/782,309

We AFFIRM-IN-PART.

BACKGROUND
Appellant’s invention relates to low-complexity cryptographic
techniques for use with radio frequency identification devices (Spec. 1). An
understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below.
1. A method for use in an RFID system comprising at least
one RFID device and at least one reader which communicates with the
RFID device, the method comprising the steps of:

associating a plurality of pseudonyms with the RFID device;
and
transmitting from the RFID device different ones of the
pseudonyms in response to different reader queries of the RFID
device;
wherein an authorized verifier is able to determine that the
different transmitted pseudonyms are associated with the same RFID
device.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims:
Dannhaeuser US 4,928,098 May 22, 1990
Furuta US 6,225,889 B1 May 1, 2001
Turner US 6,724,895 B1 Apr. 20, 2004
Hughes US 6,842,106 B2 Jan. 11, 2005

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REJECTIONS
Claims 1, 2, 4-7, 20, 23-25, 30, 32, and 33 are rejected under
35 U.S.C. 103(a) as being unpatentable over Hughes in view of
Dannhaeuser.
Claims 3 and 31 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Hughes in view of Dannhaeuser, and further in view of
Turner.
Claims 9-13, 14-16, 26-27, and 29, are rejected under 35 U.S.C.
103(a) as being unpatentable over Hughes in view of Dannhaeuser, and
further in view of Furuta.
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and Appellant regarding the above-noted rejection, we make
reference to the Examiner's Answer (mailed April 5, 2006) for the reasoning
in support of the rejections, and to Appellant’s Brief (filed January 12, 2006)
and Reply Brief (filed June 8, 2006) for the arguments thereagainst.

OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellant’s Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellant and the
Examiner. As a consequence of our review, we make the determinations
that follow.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
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doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
In the Answer, the Examiner has set forth a proper initial showing at
pages 4-6 and corresponding responses to Appellant’s arguments at pages
11-17. The Examiner maintains that Hughes teaches all the limitations of
independent claim 1 but for transmitting of different ones of the pseudonyms
and relies upon the teachings of Dannhaeuser to teach and fairly suggest the
use of a plurality of pseudonyms in algorithmic or tabular form (Ans. 5).
The Examiner has identified the teachings in columns 5-7, of Hughes to
teach associating a plurality of pseudonyms with the RFID device and
identifies the use of multiple secret key values 66, 68. We agree with the
Examiner and specifically agree with the access challenge/response process
as referenced at pages 5 and 19 of the Answer which uses the secret key in a
process using plural pseudonyms in identifying RFID devices.
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Here, the Examiner has relied upon the teachings of Dannhaeuser to
teach the storing of a plurality of pseudonyms and the use thereof in
combination with the teachings of Hughes to increase the security to a
wireless communication (Ans. 6). We find the Examiner's position as
expressed in the Answer to be reasonable in light of the teachings of Hughes
and Dannhaeuser. Therefore, we look to Appellant’s Brief and Reply Brief
for persuasive arguments or showing of error in the Examiner's initial
showing.
With respect to independent claim 1 (and independent claims 30, 32,
and 33), Appellant argues that the combination results in an arrangement in
which the RFID device can be authenticated without the need for complex
cryptographic operations (App. Br. 4-5). We find no support in the language
of independent claim 1 to distinguish between the use of various
cryptographic operations. Therefore, Appellant’s argument is not
persuasive.
Appellant argues that the use of the secret key 66 cannot reasonably
be construed as comprising a plurality of pseudonyms, or even a single
pseudonym (App. Br. 4). Appellant argues that the term pseudonym as used
in the present specification and in standard usage implies some ability to
identify a particular entity with which the pseudonym is associated (App. Br.
4-5). Appellant argues that the secret key value itself does not provide any
device-identifying information whatsoever, and accordingly is not a
pseudonym for the device. Appellant argues that Hughes teaches the use of
a conventional identification code to identify a particular tag to a reader and
Appellant relies upon the teachings in Hughes at column 5, lines 7-8 and 21-
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23. While we agree with Appellant concerning this teaching in Hughes, we
note that it appears to be different than how the Examiner applied the prior
art teachings of Hughes. Therefore, Appellant’s argument does not
correspond to the instant rejection by the Examiner and is therefore not
persuasive.
In this prosecution, the Examiner has relied upon the use of the secret
key value 66 or 68 and has identified the Access Challenge and Challenge
Response as part of the process to identify the RFID device. Here, we agree
with the Examiner's application of the prior art teachings.
Appellant argues that the secret key value 66 is not transmitted by any
of the RFID devices (App. Br. 5). Here, the Examiner does not rely upon
the transmission of the specific secret key, but relies upon the teachings of
Dannhaeuser concerning a sequence of code words (from a table or from an
algorithm) from a transmitter. Therefore, Appellant's argument does not
address the rejection as applied by the Examiner. Therefore, Appellant’s
argument is not persuasive of error in the Examiner's initial showing.
Appellant argues that the remote keyless entry codes of Dannhaeuser
do not constitute pseudonyms as claimed, because the codes do not provide
any ability to uniquely identify a particular code transmitting device (App.
Br. 5-6). Here, we do not find Appellant's arguments persuasive since
Appellant's argument is not commensurate in scope with the language of
independent claim 1. Specifically, Appellant argues that the information in
the code of Dannhaeuser does not uniquely identify any particular one of
multiple devices, but we do not find express support in the language of
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independent claim 1 to support this argument. Therefore, we do not find
Appellant's argument persuasive.
Furthermore, the definition as provided in Appellant's Specification at
page 5 merely states “‘pseudonym’ as used herein is intended to include
device-identifying information transmitted by an RFID device, such as an
identifier in a given set of multiple identifiers stored or generated in the
device, or a portion of an identifier.” Appellants’ definition encompasses
both stored and generated information which may identify the RFID device.
We find no limitation express or implied in Appellant’s definition that this
value must be “unique” or that it must be stored or pre-existing. Therefore,
we find the Examiner's combination of the teachings of Hughes in view of
Dannhaeuser to be reasonable in light of the instant claim language as
interpreted in light of Appellant’s express definitions. Therefore, we find
the Examiner's reliance upon the access challenge and response using the
secret key and combination with pseudorandom numbers to identify or
authenticate the RFID device as they generate pseudonyms since it provides
some level of device identifying information. Therefore, we do not find
Appellant's argument to be persuasive of the error.
Appellant argues that the remote keyless entry devices of
Dannhaeuser would not be understood by one skilled in the art to constitute
RFID devices of the type recited in the claim at issue. (App. Br. 6).
Appellant again argues that the RFID devices of the claimed invention allow
the reader to uniquely identify the particular device with which it is
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communicating (App. Br. 6). Again, we find no support in the language of
independent claim 1 for this argument, and do not find the argument
persuasive.
Appellant argues that the RFID devices and remote keyless entry
devices are entirely different types of devices, and one looking to improve
an RFID device would generally not look to the remote keyless entry device
art. Therefore, Appellant concludes that the teachings of Dannhaeuser are
believed to represent non-analogous art relative to the teachings of Hughes.
(App. Br. 6). We find that the Examiner has set forth a convincing line of
reasoning for the combination of the multiple values as taught by
Dannhaeuser to increase security in the wireless communication of Hughes
as set forth at page 6 of the Answer. We do not find Appellant’s general
contention or belief to show error in the Examiner's line of reasoning.
Therefore, we do not find Appellant’s argument to show error in the
Examiner's initial showing.
With respect to Appellant’s argument concerning the Examiner's
conclusory statements and a lack of objective evidence of motivation for the
combination, Appellant argues that "such an arrangement would clearly be
undesirable in an RFID system having a very large number of tags" (App.
Br. 7). Again, Appellant’s argument goes beyond the express limitations
recited in independent claim 1. We find independent claim 1 merely recites
a minimum of a singular RFID device and a singular reader. Therefore,
Appellant’s arguments are not commensurate in scope with the instant claim
language and cannot be persuasive of error.
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Appellant additionally argues that it is believed that the Dannhaeuser
technique is not only undesirable in an RFID system, but it is practically
unworkable in such a system and contrary to the object is of Appellant's
claimed invention in terms of providing techniques implementable in low-
cost RFID devices with limited computational and storage resources. (App.
Br. 7-8 and Reply Br. 5). Again, Appellant's arguments are not
commensurate in scope with the instant claim language and cannot be
persuasive of error.
Appellants additionally argue that the Examiner's combination is
based upon piecemeal reconstruction and impermissible hindsight (App. Br.
8 and Reply Br. 3). We do not find Appellant’s argument persuasive of
error since the Examiner has set forth a reasoned argument on the record and
Appellant has not shown error therein. In the Reply Brief, Appellant
generally argues that the secret key value is not transmitted (Reply Br. 2-3).
We agree with Appellant that the secret key value is not transmitted, but the
Examiner relies upon the access challenge/response process. Therefore,
Appellant's argument is not persuasive of error in the Examiner's initial
showing.
Again, in the Reply Brief at pages 3-6, Appellant argues that the
secret key value is not transmitted. As discussed above, we find the
Examiner does not rely upon the transmission of the secret key value, but the
transmission of the value created using the secret key value in an access
challenge and challenge response process. Therefore, Appellant's argument
is not persuasive of error.
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From our review of the teachings of Hughes and Dannhaeuser, we
find that the combination teaches the invention as recited in independent
claim 1. From our review of Appellant’s arguments in the Brief and Reply
Brief, we do not find that Appellant has shown error in the Examiner's prima
facie case of obviousness over the combination of Hughes in view of
Dannhaeuser with respect to independent claim 1.
Since Appellant has not shown error in the Examiner's initial showing,
we will sustain the rejection of independent claim 1 and in dependent claims
2, 4, and 23-25 grouped therewith. Similarly, since Appellant has not set
forth separate arguments for patentability with respect to independent claims
30 and 32, we will sustain the rejection of these claims.
Alternatively, we find that the teachings of Hughes, by itself, fully
meet all the limitations of independent claim 1. We find that Hughes
teaches associating a plurality of pseudonyms with the RFID device in the
access challenge/response process using random number generation. Each
time there is an access challenge/response a different response is generated
for the different random number thereby associating a plurality of
pseudonyms with the RFID device. We note independent claim 1 does not
recite storage or maintaining of the pseudonyms at the RFID device.
Hughes teaches transmitting from the RFID device different ones of
the pseudonyms in response to different reader queries from the RFID
device in the access challenge/response process where each challenge and
response are different each time due to the different random numbers being
used.
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Hughes teaches the access challenge/response process where the
reader verifies the identification of the RFID device. We note that
independent claim 1 does not recite any temporal relationship between
transmitting of the RFID device pseudonyms and queries. Here, we find that
Hughes does teach transmitting pseudonyms in response to queries which
are individual challenges and the corresponding responses from the RFID
device.
As noted above, Hughes does teach all the limitations of independent
claim 1. A disclosure that anticipates under 35 U.S.C. § 102 also renders the
claim unpatentable under 35 U.S.C. § 103, for "anticipation is the epitome of
obviousness." Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984). See
also In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re Pearson, 494
F.2d 1399, 1402 (CCPA 1974). Thus, we sustain the Examiner's rejection of
appealed independent claim 1 under 35 U.S.C. § 103.
With respect to dependent claims 5 and 6, Appellant argues that the
relied upon portion of Hughes does not teach or suggest an authentication
value unique to a given pseudonym as recited in the claims (App. Br. 8-9).
We disagree with Appellant's and find that the cited portion of Hughes using
random number access challenge values with encryption would have taught
and fairly suggested the corresponding unique value. Therefore, we do not
find that Appellant has shown error in the Examiner's rejection.
With respect to dependent claim 7, Appellant argues that the key
values are not transmitted by the RFID device in Hughes and cannot be read
on the claimed pseudonyms. As discussed above, we did not find this
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argument persuasive of error in the Examiner's initial showing, and we will
sustain the rejection of dependent claim 7.
With respect to dependent claim 20, the Examiner identifies at page 7
of the Answer that figure 2 of Dannhaeuser teaches the storage of the same
sequence of code words in both the transmitter and receiver. We do not find
Appellant's generalized argument at page 9 of the Brief to show error in the
Examiner's (corrected) citation to Dannhaeuser for support. Therefore, we
will sustain the rejection of dependent claim 20.
With respect to independent claim 33, Appellant disputes the
Examiner's treatment of independent claim 33 as similar in scope to
independent claim 1 and argues that Dannhaeuser does not teach the claimed
updatable set of one or more one-time pads (App. Br. 10). Appellant argues
that Dannhaeuser makes no reference whatsoever to any aspect of
cryptography, much less to one-time pads, as claimed. Here, we note the
Examiner has further identified figure 3 of Hughes in addition to
Dannhaeuser as supporting the proposition of utilizing an updatable set of
one-time pads (Ans. 7). Appellant did not respond to the modified rejection
by filing a Reply Brief. We agree with the Examiner and find that Hughes
does teach and fairly suggest the use of cryptographic processing wherein
each iteration with a different random number would generate an updated
response or "updatable set" of one (or more) values. Therefore, we do not
find that Appellant has shown error in the Examiner's initial showing.
With respect to dependent claim 3, Appellant relies upon the
arguments advanced with respect to independent claim 1 and asserts that the
Turner reference fails to overcome the deficiencies in the combination of
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Hughes and Dannhaeuser. Since we did not find a deficiency in the base
combination, we do not find Appellant’s argument to be persuasive of error
in the initial showing.
With respect to independent claim 31, Appellant disputes the
Examiner's treatment of the scope of independent claim 31 as similar to
independent claim 1 and dependent claim 3 (App. Br. 11). We agree with
Appellant that the scope of claim 31 is different than independent claim 1
and dependent claim 3. With that said, Appellant's argument does not
address the merits of the Examiner's rejection of independent claim 31
wherein the Examiner in the discussion of claim 3 discusses the teachings of
Turner with respect to a plurality of readers and a plurality of RFID devices.
Therefore, we find that the Examiner has made a proper initial showing with
respect to the obviousness of independent claim 31. Therefore, we will
sustain the rejection of independent claim 31.
With respect to dependent claims 9-16, Appellant relies upon the
same arguments advanced with respect to independent claim 1 and asserts
that Furuta fails to overcome the fundamental deficiencies of Hughes and
Dannhaeuser (App. Br. 11). Since we did not find a deficiency in the base
combination, we do not find Appellant’s argument to be persuasive.
With respect to dependent claim 26, Appellant argues that the RFID
device generates the plurality of pseudonyms as pseudonyms of a sequence
of outputs or functions and that the collective teachings Furuta, Hughes, and
Dannhaeuser do not meet the limitation in dependent claim 26 (App. Br. 12).
We disagree with Appellant and find that Furuta teaches at column 8 a
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sequence of functions or an updatable rule. Therefore, we do not find that
Appellant has shown error in the Examiner's initial showing, and we will
sustain the rejection of dependent claim 26.
With respect to dependent claim 27, Appellant argues that the RFID
device and the verifier of the system attempt to maintain a common counter
unique to the RFID device and share the seed (App. Br. 12). Here, the
Examiner merely repeats the limitation of the claim and cites to Hughes at
column 5. From our review of column 5 of Hughes, we do not find an
express teaching of a common counter and sharing a seed, as recited in
dependent claim 27. Therefore, we agree with Appellant that the Examiner
has not set forth a proper initial showing of the teachings or a convincing
line of reasoning from the references applied. Therefore, we will reverse the
rejection of dependent claim 27 and dependent claim 29 which depends
therefrom.

CONCLUSION
In summary, we have sustained the rejection of claims 1-7, 9-16, 20,
and 23-26 under 35 U.S.C. § 103(a), and we have reversed the rejection of
claims 27 and 29 under 35 U.S.C. § 103(a).

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED-IN-PART

pgc

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