Ex Parte Le Saint et al

Patent Trial and Appeal Board

Apr 27, 2017

13238668 (P.T.A.B. Apr. 27, 2017)

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.
AIM-245US 8483
EXAMINER
BROWN, CHRISTOPHER J
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
13/238,668 09/21/2011
101221 7590 04/28/2017
Muirhead and Satumelli, LLC
200 Friberg Parkway, Suite 1001
Wes thorough, MA 01581
Eric F. Le Saint
04/28/2017 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 ERIC F. LE SAINT and
MICHAEL LAWRENCE DAVIS
Appeal 2016-007086
Application 13/238,668
Technology Center 2400
Before ALLEN R. MACDONALD, JOSEPH P. LENTIVECH, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Assa Abloy AB.
(App. Br. 2.)
Appeal 2016-007086
Application 13/238,668
Introduction
According to Appellants, “[t]his application is related to the field of
secure communications and, more particularly, to cryptographic key
management and the establishment of protected communication channel
between entities.” (Spec. 1.)
Exemplary Claim
Claims 1 and 11 are independent. Claim 1, reproduced below with the
disputed limitation italicized, is exemplary of the claimed subject matter:
1. A method of providing secure communication with a
security token, comprising:
establishing a shared secret between the security token and
a first entity by the security token and the first entity each
generating values that are used to provide the shared secret,
wherein the values are independent of a second entity;
transferring the shared secret between the first entity and
the second entity; and
the security token and the second entity establishing a
secure communication channel using the shared secret, wherein
the second entity does not participate in establishing the shared
secret.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dent et al. (“Dent”)
Janacek et al. (“Janacek”)
Cukier
US 2002/0178385 Al
US 2005/0286421 Al
US 2007/0150742 Al
Nov. 28, 2002
Dec. 29, 2005
June 28, 2007
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Application 13/238,668
REJECTIONS
Claims 1—7 and 11—17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dent and Cukier. (Final Act. 3—4.)
Claims 8—10 and 18—20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dent, Cukier, and Janacek. (Final Act. 5.)
ISSUES
(1) Whether the Examiner erred in finding the combination of Dent
and Cukier teaches or suggests “the security token and the second entity
establishing a secure communication channel using the shared secret,
wherein the second entity does not participate in establishing the shared
secret,” as recited in independent claim 1 and commensurately recited in
independent claim 11.
(2) Whether the Examiner erred in combining the teachings of Dent
and Cukier.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. We disagree with Appellants’
conclusions and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken (Final Act. 2—
5) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief. (Ans. 2—6.) We concur with the
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Application 13/238,668
conclusions reached by the Examiner, as noted herein, and we highlight the
following for emphasis.2
A. Issue 1
The Examiner finds Dent teaches the limitations of claim 1, except the
Examiner finds “Dent is not clear on if the secret is used to establish a secure
communication channel.” (Final Act. 3 (citing Dent H 16, 19, 25).) The
Examiner then finds
Cukier teaches forwarding a shared secret from a first entity to a
second entity in order to establish a secure channel where the
second entity does not participate in establishing the shared
secret [0031] [0032],
It would have been obvious to one of ordinary skill in the art to
use the encryption of Cukier with the communications between
the token and second entity to prevent interception.
(Final Act 4.)
Appellants assert the Examiner’s findings are in error because,
although Dent teaches establishing “a shared secret that is independent of a
second entity (electronic door lock),” Dent does not also teach “using that
shared secret for establishing a secure communication channel between the
second entity [door lock] and the token [wireless communication device],”
as claimed. (Reply Br. 4 (emphasis added).) Rather, Appellants argue, Dent
teaches the shared secret is used only for communications between the token
and the first entity. (Reply Br. 5; see also App. Br. 9.)
We disagree. As the Examiner correctly notes, paragraph 25 of Dent
teaches establishing a shared secret between the security token (which the
2 Only those arguments made by Appellants have been considered in this
decision. Arguments Appellants did not make in the briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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Examiner maps to Dent’s “wireless communication device”) and a first
entity (which the Examiner maps to Dent’s “central controller”). (Final Act.
3 (citing Dent || 19, 25).) In particular, Dent teaches “[t]he authentication
procedure may incorporate a key-establishing procedure to establish a
session key for further communications.'1'’ (Dent 125 (emphasis added).)
Additional disclosure in Dent suggests this session key is not unique to
communications between the wireless communication device and the central
controller, as Appellants argue. For example, Dent teaches the door lock 20
includes the same security module 110 as is included in the wireless
communication device 100 and the central controller. (Dent 120: “The
electronic door lock 20 may further include a security module 110 of the
type shown in FIG. 3 that provides secure storage for secret information and
performs cryptographic calculations as will be hereinafter described.”)
Inclusion of the same security module in all three entities suggests the door
lock may be used for the same type of encrypted communications as
between the wireless communication device and the central controller.
Dent further teaches that, after the wireless communication device and
the central controller establish the session key to transfer the authorization
codes, the authorization codes and the session key are all stored in the
wireless communication device, such as within security module 110. (Dent
126.) Storage of this session key in the wireless communication device
suggests the key will be used for subsequent communications, such as with
the door lock.
Dent also teaches the central controller may send to the door lock the
“expected authentication response” that the wireless communication device
should send to unlock the door. (Dent 129.) Although Dent does not
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Application 13/238,668
explicitly state the central controller also sends the session key to the door
lock, the Examiner finds this is suggested by Cukier’s teachings, in which a
group leader sends a group session key to each member for subsequent
encrypted communications within the group. (Cukier H 31, 32; Ans. 5.)
Appellants argue the Examiner errs in relying on Cukier, however,
because “Cukier is silent as to how the session key is generated, and a
person skilled in the art is left without guidance on the participation of either
the group leader or the group members in establishing a session key.” (App.
Br. 10.) Appellants further assert that, in Cukier, “the shared secret (session
key) is not independent of the second entity (member) because the session
key is generated based on the member key.” (Reply Br. 5.) We disagree.
First, contrary to Appellants’ argument, Cukier does not teach that the group
session key is “generated based on the member key” (Reply Br. 5); rather,
Cukier teaches that the group leader encrypts transmission of the group
session key to each member by using that member’s session key. (Cukier
1129-32; see also Ans. 5.) Second, as the Examiner correctly notes, the
rejection relies on Dent, not Cukier, to teach establishing the shared secret.
(Ans. 4.) And, in Dent, the shared secret is established “between the
security token and the first entity” and, therefore, “the values used by Dent
[to establish the shared secret] are independent of a second entity, and . . .
the second entity does not participate in establishing the shared secret.”
(Ans. 4.)
Combining the teachings of Dent and Cukier, the Examiner finds:
the system taught in Dent using the distribution and secure
communications as taught by Cukier would anticipate the
invention as claimed. For example, the controller of Dent would
establish a session key . . . with the wireless communications
device. The controller further sends the session key to the
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electronic door lock, which enables the wireless communication
device and electronic door lock to communicate securely using
the session key.
(Ans. 5.) For the foregoing reasons, we agree the Examiner’s findings are
supported by the teachings of the cited references.
B. Issue 2
Appellants also argue the Examiner errs in combining the teachings of
Dent with Cukier because the combined teachings would “change the
principle of how Dent operates, or potentially make the system in Dent
unworkable.” (App. Br. 10.) In particular, Appellants argue “Dent appears
to rely on the secret key shared between the wireless communication device
100 and the central controller 40 as being unique to that relationship, and
not for use with other devices, including the electronic door locks.” {Id. at
10-11 (emphasis added) (citing Dent || 23, 35—36).)
We disagree. As noted above, Dent does not teach that the session
key may be used only for communications between the wireless
communication device and the central controller. To the contrary, Dent’s
teachings suggest the controller would “send[] the session key to the
electronic door lock, which [would] enable[] the wireless communication
device and electronic door lock to communicate securely using the session
key,” as the Examiner finds. (Ans. 5.) Thus, as noted above, Examiner’s
findings regarding the combined teachings of Dent and Cukier are not
contrary to Dent’s teachings, but are aligned with those teachings.
C. Conclusion
For the foregoing reasons, we are not persuaded of error in the
Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 1 or of
independent claim 11, which Appellants argue collectively with claim 1.
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We, therefore, sustain the rejection of claims 1 and 11, as well as dependent
claims 2—7 and 12—17, which Appellants do not argue separately.
Although dependent claims 8—10 and 18—20 stand rejected over Dent,
Cukier, and an additional reference (Janacek), Appellants do not argue
separately the patentability of dependent claims 8—10 or 18—20. Rather,
Appellants argue the Examiner’s “addition of Janacek does not overcome
the above-noted deficiencies of Dent and Cukier with respect to
Appellants’] presently-recited independent claims.” (App. Br. 12.)
Because, as stated above, we do not find the combination of Dent and Cukier
to be deficient with regard to independent claims 1 or 11, we also sustain the
Examiner’s § 103(a) rejection of dependent claims 8—10 and 18—20.
DECISION
For the above reasons, the Examiner’s rejections of claims 1—20 are
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)(l)(iv).
AFFIRMED
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