Ex Parte Juels et al

Board of Patent Appeals and Interferences

Aug 31, 2009

10216030 (B.P.A.I. Aug. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ARI JUELS and BURTON S. KALISKI, JR.
____________

Appeal 2008-003366
Application 10/216,030
Technology Center 2400
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Decided: August 31, 2009
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-47. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b). At the outset we note that the Examiner has withdrawn the rejection
to claims 2, 3, 6, 9-12, 15-26, 27-31, and 37-39 in the answer at page 3.
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Therefore, claims 1, 4, 5, 7, 8, 13, 14, 32-36, and 40-47 remain on appeal.
We affirm-in-part.

A. INVENTION
The invention at issue on appeal provides methods and apparatus
implementing secure authentication protocols that are particularly well-
suited for use in mobile communications devices having limited
computational resources. (Spec. 4.)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method for authenticating information in a system
comprising a plurality of processing devices each adaptable for
communication with one or more of the other devices, the
method comprising the steps of:
generating at least first and second shares of a first
password associated with a first device of the plurality of
devices;
storing the first and second shares in respective second
and third devices of the plurality of devices; and
upon submission of additional information associated
with the first device to at least one of the second and third
devices, each of the first and second shares having the property
that it is infeasible to determine solely therefrom
correspondence of the additional information with the first
password, the second and third devices utilizing the respective
first and second shares to collectively determine said
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correspondence of the additional information with the first
password.

C. REFERENCES
The Examiner relies on the following references as evidence:
Swander US 6,904,529 B1 Jun. 07, 2005
(filed Apr. 28, 2000)
Brickell US 6,959,394 B1 Oct. 25, 2005
(filed Sep. 29, 2000)
Cheston US 6,978,385 B1 Dec. 20, 2005
(filed Mar. 01, 2000)

D. REJECTIONS
The Examiner makes the following rejections.
Claims 1, 4, 5, 7, 8, 13, 14, 33, 41-44, 46, and 47 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Brickell
Claims 34-36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brickell as applied to claim 1 above, and further in view
of Cheston.
Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brickell as applied to claim 1 above, and further in view
of Swander.

II. ISSUE
Have Appellants shown error in the Examiner’s initial showing of
anticipation and specifically, does Brickell teach “each of the first and
second shares having the property that it is infeasible to determine solely
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therefrom correspondence of the additional information with the first
password?”
Have Appellants shown the Examiner erred in the rejection of
independent claim 43? Specifically, does Brickell teach the recited
pseudonym for a submitter of the additional information wherein the
pseudonym being provided by one of the devices to another of the devices.

III. PRINCIPLES OF LAW
35 U.S.C. § 102
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).

35 U.S.C. § 103(a)
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
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obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989), that “claims must be interpreted as broadly as their terms reasonably
allow.”

IV. ANALYSIS
With respect to independent claim 1, Appellants argue that the
Examiner’s position as set forth in the rejection is in error and the
Examiner’s statement that "the first and second shares of the password
cannot be determined from the use or name" is in error. (App. Br. 8).
Appellants contend that Brickell stores its corresponding password piece in
“direct association” with the user name and their user name is the additional
information according to the Examiner. (App. Br. 8; Reply Br. 2). We note
that Brickell does not recite a "direct association" of the user name with the
password pieces. Brickell merely states at column 4, lines 44-48, that
"[a]fter securely transmitting the password pieces to the respective servers
114-116, the servers store the received password pieces for later
authentication, along with information identifying the user, such as the
user’s login name. (Act 204)." Appellants contend that the servers which
are the second and third devices can readily determine the corresponding
password piece from the user name. We disagree with Appellants'
contention and note that the language of independent claim 1 states that
"each of the first and second shares having the property that it is infeasible to
determine solely therefrom correspondence of the additional information
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with the first password." Appellants appear to argue the converse of the
claim limitation rather than the limitation. Additionally, it is the
correspondence of the additional information with the first password, rather
than the password pieces that is set forth in independent claim 1.
Moreover, the Examiner has identified a different portion of Brickell
in the rejection. Brickell states:
an alternative implementation is to take N different hashes of the
password, each with a different Salt value, to obtain N different hash
values. From each of the N different hashes, a predetermined number
of bits is taken for each password piece, where the predetermined
number is equal to the expected entropy of the password (expressed as
an integer number of bits) divide by N.

(Col. 4, ll. 54-60).

We agree with the Examiner that Brickell teaches the use of portions
of the password at plural devices.
Appellants further contend that independent claim 1 recites that the
second and third devices utilize respective first and second shares of the
password to collectively determine the correspondence of the additional
information with the password. We find the teachings of Brickell at
columns 4 and 5 to disclose use of the authentication of a user’s password
with the respective portions stored at servers 114-116 and that for each
servers 114-116, after receiving its encrypted password piece, decrypts the
password piece and compares the encrypted piece to the value pre-stored for
that user. Since each of the password pieces and the user ID are used in the
process at the respective servers, we find that Brickell teaches collectively
determining the correspondence of the user ID to the password from which
the password pieces were originally formed. Therefore, we find Appellants'
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argument to be unpersuasive of error in the Examiner's initial showing of
anticipation of independent claim 1. Therefore, we sustain the rejection of
independent claim 1 and dependent claims 4, 5, 7, 8, 13, and 14 grouped
therewith by Appellants.
With respect to dependent claim 32, the Examiner cites to column 4,
lines 49-51, with respect to this claim limitation wherein Brickell deletes the
password when the password pieces are transmitted to the servers. We agree
with Appellants that this portion of Brickell does not support the Examiner's
position. But, we note that the Examiner identifies column 4, lines 52-60
(Ans. 4), with respect to independent claim 1, which uses a predetermined
number of bits taken from each password piece which is generated from N
different hashes. We find that this use of the bits from each password piece
teaches the claim limitations of dependent claim 32. Therefore, we find
Appellants' argument to be unpersuasive of error in the Examiner's reliance
upon Brickell to teach dependent claim 32.
With respect to independent claim 43, Appellants argue that
independent claim 43 recites a pseudonym for a submitter of the additional
information in the pseudonym being provided by one of the devices to
another of the devices. Appellants contend that the hashing function as
relied upon and disclosed at column 4, lines 52-60 (App. Br. 15), of Brickell
fails to meet the pseudonym limitation of independent claim 43. The
Examiner maintains that the user login names are a form of pseudonyms.
(Ans. 17). We disagree with the Examiner and furthermore the user login
names are not taught to be provided from one device to another device as
claimed. Therefore, we find the Examiner has not set forth a sufficient
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initial showing of anticipation of the invention as recited in independent
claim 43, and we reverse the rejection thereof.
With respect to independent claim 44, we similarly find the
Examiner's proffered initial showing of anticipation to be in error as
discussed with independent claim 43.
With respect to independent claim 46, Appellants contend that
Brickell does not teach a post-authentication action and that the data relied
upon in column 5, lines 1-25, does not support the Examiner’s position. We
disagree with Appellants' position, and we find that Brickell’s disclosure of
sending the authentication accept messages to a remote computer of 121
anticipates the aforementioned limitation. We find the transmission of this
message is a post-authentication action. Therefore, Appellants' argument is
unpersuasive of error in the Examiner’s initial showing of anticipation.
With respect to independent claim 47, Appellants argue that
independent claim 47 includes a limitation relating operation as a mix
network, which is not believed to be shown by Brickell. (App. Br. 16).
Appellants contend that skilled artisans would recognize that a mix network
is not any system that uses public key and symmetric key cryptography as
alleged by the Examiner and that Appellants have described mix networks in
their Specification at page 39. From our review of the teachings at page 39
of Appellants' Specification, we are unconvinced that Appellants'
Specification recites a specific definition of a “mix network.” Therefore,
Appellants' argument does not show error in the Examiner’s initial showing
of anticipation. Appellants further identify an article discussing "mix
networks,” dated December 2006, which is four years after Appellants'
original filing date. We find this proffered evidence to be irrelevant to the
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interpretation of "mix network" in August 2002, at the time of Appellants'
invention. Since Appellants have not shown error in the Examiner's initial
showing of anticipation, we will sustain the rejection of independent claim
47.
With respect to dependent claims 34 and 35, Appellants rely upon the
arguments advanced with respect to dependent claim 32 and contend that the
Cheston reference fails to supplement the fundamental deficiencies of
Brickell as applied to claim 32. Since we found no fundamental deficiencies
in the rejection of dependent claim 32, we find Appellants' argument to be
unpersuasive of error with respect to dependent claims 34 and 35.
Therefore, we will sustain the obviousness rejection of claims 34 and 35.
With respect to dependent claim 36, Appellants contend that although
Cheston deals with life questions, the combination of Cheston and with
Brickell fails to teach or suggest an arrangement in which first and second
servers use their respective shares to collectively verify that additional
information comprises answers to a set of life questions. (App. Br. 18). We
disagree with Appellants and find that the alternative embodiment of
Brickell when used in combination with the life questions as taught by
Cheston (col. 4 and 6-8) would have taught and fairly suggested the
limitation of collectively verifying the answers to a set of life questions.
Therefore, we find Appellants' argument unpersuasive error in the
Examiner’s initial showing of obviousness.
With respect to independent claim 45, Appellants argue that the claim
recites that "no particular one of the devices storing the respective shares can
determine correspondence between the additional information in the
password" and relies upon the arguments set forth with respect to
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independent claim 1 in that Cheston fails to supplement the noted
deficiencies of Brickell. (App. Br. 18). As discussed above with respect to
independent claim 1 in dependent claim 36, we find no deficiency in the
combination of Brickell and Cheston and that the combination would have
set forth the use of a set of answers to life questions as the password and that
portions are distributed to plural servers so that no particular one of the
devices storing the respective shares can determine correspondence between
the additional information in the password since each only has a portion of
the password. Therefore, we find Appellants' argument to be unpersuasive
of error in the Examiner's initial showing of obviousness of independent
claim 45, and we will sustain the rejection thereof.
With respect to dependent claim 40, Appellants argue that the claim is
allowable by virtue of its dependence upon independent claim 1, and the
Swander reference does not remedy the deficiency in the rejection of
independent claim 1. (App. Br. 19). As discussed above with respect to
independent claim 1, we find no deficiency in the rejection of independent
claim 1. Therefore, we find Appellants' argument to be unpersuasive of
error in the Examiner's initial showing of obviousness of dependent claim
40, and we will sustain the rejection thereof.

V. CONCLUSION
For the aforementioned reasons, we find that Appellants have shown
that the Examiner erred in the initial showing of anticipation of independent
claims 43 and 44, but the Appellants have not shown that the Examiner erred
in the initial showing of anticipation and obviousness of the remainder of the
claims on appeal.
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VI. ORDER
We affirm the anticipation rejection of claims 1, 4, 5, 7, 8, 13, 14, 32-
36, 40, 41, 42, 46, and 47; we reverse the anticipation rejection of claims 43
and 44; and we affirm the obviousness rejections of claims 34-36, 40, and
45.
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-IN-PART

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