Ex Parte Li et al

Patent Trial and Appeal Board

Mar 3, 2016

11976045 (P.T.A.B. Mar. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111976,045 10/19/2007
12358 7590 03/07/2016
Mintz Levin/Nokia Technologies Oy
One Financial Center
Boston, MA 02111
FIRST NAMED INVENTOR
Changhong Li
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.
39700-733001 US/NC54485US 7747
EXAMINER
ALMEIDA, DEVINE
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
03/07/2016 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):
IPDocketingBOS@mintz.com
IPFileroomBOS@mintz.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANGHONG LI, DAJIANG ZHANG,
MIKA P. HIETALA, and VAL TTERI NIEMI
Appeal2014-003680
Application 11/976,045
Technology Center 2400
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 6-10, 13, 14, and 16-28. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 2-5, 11, 12, and 15 are canceled. See App. Br. 23, 25, 26.
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b) (2012).
1 According to Appellants, the real party in interest is Nokia Corporation.
App. Br. 2.
Appeal2014-003680
Application 11/97 6,045
STATEMENT OF THE CASE
The Invention
Appellants' invention relates to a handover from a first radio access
network to a second radio access network, wherein a set of associated keys
for an authentication process to be performed in the second network is
calculated based on a random value used in an authentication process of the
first network. See Spec. i-fi-15, 7; Abstract.
Claims 1, 9, 14, 16, 17, 20, and 21 are independent. Claim 1 is
illustrative of the subject matter on appeal:
1. A method comprising:
obtaining keys of an authentication process of a first
radio access network during a handover process of a user
equipment from the first radio access network to a second radio
access network, wherein the keys of the authentication process
of the first radio access network are produced based on a
random value used in the authentication process of the first
radio access network; and
producing associated keys for another authentication
process to be performed in the second radio access network
based on the keys of the authentication process of the first radio
access network and identities of network entities of the second
radio access network, wherein the network entities are
associated through the other authentication process to be
performed in the second radio access network, the first radio
access network and the second radio access network comprising
different radio access technologies.
App. Br. 23.
Rejections on Appeal
Claims 1, 9, 10, 13, 14, and 16-28 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hom et al. (US 2006/0171541 Al; published
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Application 11/97 6,045
Aug. 3, 2006) ("Hom"), Sood et al. (US 2007/0121947 Al; published May
31, 2007) ("Sood"), and Chakraborty et al. (US 2007/0110015 Al; published
May 17, 2007) ("Chakraborty"). See Final Act. 2-14, 15-16.
Claims 6-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hom, Sood, Chakraborty, and 3rd Generation Partnership Project;
Technical Specification Group Services and System Aspects; 3GPP System
Architecture Evolution: Report on Technical Options and Conclusions, 1-
96 (Release No. 7) (2006) ("3GPP").
ISSUE
The issue presented by Appellants' contentions is as follows:
Under§ 103(a), did the Examiner err in finding that Chakraborty's
handover between a first and second base station, each of which uses a
different modulation and/or coding scheme, teaches or suggests "a handover
... from [a] first radio access network to a second radio access network ... ,
the first radio access network and the second radio access network
comprising different radio access technologies" as recited in claim 1?
ANALYSIS
The Examiner finds Chakraborty's handover between a first and
second base station, each of which uses a different modulation and/or coding
scheme, teaches or suggests "a handover ... from [a] first radio access
network to a second radio access network ... , the first radio access network
and the second radio access network comprising different radio access
technologies" as recited in claim 1. See Ans. 2 (citing Chakraborty i-fi-f 13-
14 ). The Examiner explains Chakraborty's different modulation and/or
coding schemes correspond to "different radio access technologies." See
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Application 11/97 6,045
Ans. 3. The Examiner additionally finds Chakraborty teaches a need to
define efficient handover schemes when new radio access technologies such
as L TE are developed. Ans. 2 (citing Chakraborty i-f 3).
Appellants contend Chakraborty does not teach or suggest the
limitation at issue but rather a handover between base stations of a single
radio access technology, UMTS. See App. Br. 18-19; Reply Br. 9, 11.
According to Appellants, ( 1) a skilled artisan would recognize that two
UMTS base stations may operate using different modulation and coding; and
(2) a typical access technology such as UMTS supports many combinations
of modulation and coding while still being a single access technology. See
Reply Br. 12. With respect to Chakraborty's need to define efficient
handover schemes, Appellants contend that this passage discloses merely a
need and makes no mention of a handover between different access
technologies. App. Br. 19.
We conclude the Examiner errs by employing an impermissibly broad
interpretation of "different radio access technologies," one that is that is
inconsistent with the broadest reasonable interpretation in view of
Appellants' Specification. Appellants' Specification consistently describes
the limitation at issue to refer to a handover between a 2G/3G2 network and
a SAE/L TE3 network. See Spec. i-fi-1 5 ("in case a UE4 ... hands over from a
2G/3G ... system to LTE"), 8 ("the first network may be a 2G/3G
communication system, and the second network may be the L TE"), 18, 35;
2 "2G/3G" stands for Second Generation/Third Generation.
3 "SAE/LTE" stands for System Architecture Evolution/Long Term
Evolution.
4 "UE" stands for User Equipment.
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Application 11/97 6,045
54 ("In a handover process between a 2G/3G system and an SAE/L TE
system ... Inter-RAT ["(Radio Access Technology")] Handover ... 2G/3G
[to] LTE"); Fig. 3. We find one of ordinary skill in the art would have
understood "radio access technology" to refer to a fundamental
communication technique, such as UMTS, 2G/3G, SAE/LTE, etc., not to
implementation details, such as coding and modulation. Therefore, we
conclude the broadest reasonable interpretation of "different radio access
technologies" requires the use of at least two fundamental radio access
technologies, such as LTE/SAE and 2G/3G.
Accordingly, although Chakraborty's base stations have different
modulation and/or coding schemes, because they use only a single radio
access technology, UMTS, they do not teach or suggest "different radio
access technologies" given the broadest reasonable interpretation of this
element discussed above. See Reply Br. 10 (citing Chakraborty Fig. 1; i-fi-1
28-29). As Appellants contend, radio access technologies such as UMTS
can support various combinations of modulation and coding while still
serving as a single access technology. See id. at 12. Moreover, the mere
fact that Chakraborty identifies a need to define efficient handover schemes
when new radio access technologies are developed does not address the
particular solution claimed by Appellants, whereby a handover is made
between networks of different radio access technologies, such as between
2G/3G and LTE. See App. Br. 19.
For these reasons, we conclude the Examiner erred in finding that
Chakraborty's handover between base stations of different modulations
and/or coding schemes teaches or suggests "a handover ... from [a] first
radio access network to a second radio access network ... , the ...
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Application 11/97 6,045
network[ s] comprising different radio access technologies. "5 Accordingly,
constrained by this record, we do not sustain the Examiner's rejection with
respect to independent claim 1. For the same reasons, we do not sustain the
rejections of independent claims 9, 14, 16, 17, 20, and 21, as well as
dependent claims 6-8, 10, 13, 18, 19, and 22-28, each of which include a
similar limitation to the one at issue with respect to claim 1. See App. Br.
20-21, 24--30; Reply Br. 7-8; Final Act. 2-7.
NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claim 1
Claim 1 is rejected on a new ground under 35 U.S.C. § 103(a) as
unpatentable over 3GPP and Sood.
The 3GPP reference teaches an inter access system handover method
comprising "a handover process of a user equipment from the first radio
access network to a second radio access network ... , the first radio access
network and the second radio access network comprising different radio
access technologies" (see 3GPP at 34 ("Handover between 3GPP access
systems maintains the UE's established IP packet bearer service(s) during
mobility between 2G/3G access and SAE/LTE 3GPP access system"); Fig.
7.8-2: Information flow for handover from 2G/3G to SAE/LTE).
5 We note the Examiner has not ( 1) directed us to any additional passages
that persuade us that Hom, Sood, Chakraborty, or 3GPP teaches or suggests,
either individually or in combination, the limitation at issue; or (2) provided
any rationale to address the aforementioned deficiency in the cited art. See
Final Act. 2-16.
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Application 11/97 6,045
3GPP does not explicitly teach the remaining limitations of claim 1.
However, in the same field of wireless communication network
management, Sood teaches obtaining keys of an authentication process of a
first radio access network (see Sood Fig. 8, item 820; i-fi-1 42, 54--56). Sood
teaches that the keys of the authentication process of the first radio access
network are produced based on a random value used in the authentication
process of the first radio access network (compare Sood Fig. 8, item 820,
and Sood i154 ("the access point 230 ... may generate a first-level derived
authentication key (e.g., PMKR0500 of FIG. 5) (block 820))", with Sood
Fig. 5, item 570, and Sood i138 ("The nonce field 570 (e.g., ANonce) may
be random value provided by an access point generating the PMK-RO-Name
550 to provide unique key name.")). Sood further teaches producing
associated keys for another authentication process to be performed in a
second radio access network based on the keys of the authentication process
of the first radio access network and identities of network entities of the
second radio access network, wherein the network entities are associated
through the other authentication process to be performed in the second radio
access network (Sood Fig. 8, item 840; i-fi-1 42, 54--56; i155 ("The access
point 230 ... may generate one or more second-level derived authentication
keys based on the first-level derived authentication keys")).
Accordingly, based on the evidence of record, we conclude it would
have been obvious to one having ordinary skill in the art at the time of the
invention to apply Sood's authentication technique to 3GPP's inter access
system handover device, yielding a predictable result and the benefit of
enhanced network security. See Sood i-fi-12 ("[P]rotection of traffic via
wireless links during such applications is critical to ensure the security of
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Appeal2014-003680
Application 11/97 6,045
wireless environments. Without such protection, wireless communication
networks may be susceptible to security threats .... "), 51 ("By deriving
authentication and session keys and generating corresponding key names as
described above, the key management system 200 may prevent unauthorized
parties from receiving and/or using the authentication and/or sessions
keys."); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
Claims 6--10, 13, 14, and 16--28
We have entered a new ground of rejection for claim 1. We leave to
the Examiner to consider the patentability of independent claims 9, 14, 16,
17, 20, and 21, as well as dependent claims 6-8, 10, 13, 18, 19, and 22-28,
in light of our findings and conclusions supra. The fact that we did not enter
new grounds of rejection for claims 6-10, 13, 14, and 16-28 should not be
construed to mean that we consider those claims to be directed to patentable
subject matter or to be patentable over the prior art of record.
DECISION
The decision of the Examiner to reject claims 1, 6-10, 13, 14, and 16-
28 is reversed.
We enter a new ground of rejection for claim 1 under 35 U.S.C.
§ 103(a).
Section 41.50(b) provides that "[a] new ground of rejection ... shall
not be considered final for judicial review."
Section 41. 50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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Application 11/97 6,045
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record.
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 ).
See 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED
37 C.F.R. § 41.50(b)
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