Ex Parte M

Patent Trial and Appeal Board

Apr 24, 2014

11407996 (P.T.A.B. Apr. 24, 2014)

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.
11/407,996 04/21/2006 David M'Raihi 06224.192 (L0116) 8876
14698 7590 04/25/2014
Patent Docket Administrator
Lowenstein Sandler LLP
65 Livingston Avenue
Roseland, NJ 07068
EXAMINER
ZECHER, CORDELIA P K
ART UNIT PAPER NUMBER
2431
MAIL DATE DELIVERY MODE
04/25/2014 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 DAVID M’RAIHI
____________________

Appeal 2012-000292
Application 11/407,996
Technology Center 2400
____________________

Before CARLA M. KRIVAK, HUNG H. BUI, and CATHERINE SHIANG,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-33. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

1 The Real Party in Interest is Symantec Corporation.
Appeal 2012-000292
Application 11/407,996

2

STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to authentication using one-time
passwords. Specifically, Appellant’s invention relates to an apparatus and
method of generating a one-time password (OTP), including: at a first time,
incrementing a time and event-based counter (TEC) in response to the
occurrence of an event; at a second time, incrementing the TEC in response
to the passage of time; and determining an OTP based upon the TEC. Spec.
¶¶ [0013]-[0014], [0030], FIG. 2, and Abstract.

Claims on Appeal
Claims 1, 12, 18, and 20 are the independent claims on appeal. Claim
1 is representative of Appellant’s invention and is reproduced with disputed
limitations emphasized below:
1. A computer-implemented method of generating a
one time password, including:
at a first time, incrementing a time and event-based
counter (TEC) in response to the occurrence of an event other
than the passage of time;
at a second time, incrementing the TEC in response to the
passage of time, the value of the TEC being stored in a
computer-readable storage medium; and
determining, by a processor in communication with the
computer-readable medium, the one time password based upon
the TEC.

2 Our decision refers to Appellant’s Appeal Brief filed May 31, 2011 (“App.
Br.”); Examiner’s Answer mailed July 5, 2011 (“Ans.”); Final Office Action
mailed September 3, 2010 (“Final Rej.”); and the original Specification filed
April 21, 2006 (“Spec.”).
Appeal 2012-000292
Application 11/407,996

3

Evidence Considered
Audebert US 5,802,176 Sept. 1, 1998
Audebert US 5,887,065 Mar. 23, 1999
Thomlinson US 6,044,155 Mar. 28, 2000

D. M'Raihi, M. Bellare, F. Hoomaert, D. Naccache, O. Ranen,
"Network Working Group's Request for Comments: 4226,"
December 2005, pp. 1-37 (“RFC 4226”).

Examiner’s Rejections
(1) Claims 1-5, 7, 10, 12-14, 16, 18, 20-23, 26, 27, 29, 30, 32, and
33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Audebert ʼ176. Ans. 4-8.
(2) Claim 6 stands rejected under § 103(a) as being unpatentable
over Audebert ʼ176 and Thomlinson. Ans. 8.
(3) Claims 8, 9, 15, 25, 28, and 31 stand rejected under § 103(a) as
being unpatentable over Audebert ʼ176 and Audebert ʼ065. Ans. 8-9.
(4) Claims 11, 17, and 24 stand rejected under § 103(a) as being
unpatentable over Audebert ʼ176 and RFC 4226. Ans. 9-10.

Issues on Appeal
Based on Appellant’s arguments, the dispositive issue on appeal is
whether the Examiner erred in rejecting claims 1-5, 7, 10, 12-14, 16, 18, 20-
23, 26, 27, 29, 30, 32, and 33 under 35 U.S.C. § 103(a) as being
unpatentable over Audebert ʼ176. In particular, the appeal turns on: (1)
whether the Examiner’s proposed modification would render Audebert’s
system unsuitable for its intended purpose; and (2) whether the combined
value disclosed by Audebert would indicate a counter that is incremented in
Appeal 2012-000292
Application 11/407,996

4

response to the passage of time, as recited in Appellant’s independent claims
1, 12, and 20. App. Br. 3-8.

ANALYSIS
§103 Rejection of Claims 1-5, 7, 10, 12-14, 16, 18, 20-23, 26, 27, 29, 30, 32,
and 33 over Audebert ʼ176

With respect to independent claims 1, 12, 18, and 20, Appellant
acknowledges Audebert ʼ176 discloses a method for generating a password
that includes what the Examiner has characterized as two separate counters:
(1) a timer T that counts time, and (2) a counter Nn that counts access
requests (i.e., an occurrence of events). App. Br. 5 citing (Audebert ʼ176,
col. 8, ll. 35-41; col. 10, ll. 8-15). These variables Nn and T are dynamic and
may vary according to predetermined functions involving, as parameters,
among other things, the number of access requests and current time,
respectively. See Audebert ʼ176, col. 8, ll. 44-48. Appellant also
acknowledges the variables Nn and T can be combined during an
authentication procedure, such as by concatenation, any predetermined
processing or operation such as an exclusive OR/AND operation, or an
infinite number of possible other ways. Id. citing (Audebert ʼ176, col. 8, ll.
49-59).
Nevertheless, Appellant disputes the Examiner’s conclusion that it
would have been obvious “to modify the two counters of Audebert into one
counter.” Id. at 5. In particular, Appellant contends the Examiner’s
proposed modification would render Audebert’s system unsuitable for its
intended purpose because replacing Audebert’s two separate counters with a
Appeal 2012-000292
Application 11/407,996

5

single counter would result in a loss of information that is critical to
Audebert’s system. Id. at 4-7. According to Appellants:
“[T]he proposed modification could, for example, result in
passwords being incorrectly validated by Audebert’s system
because the system would be unable to distinguish between a
number of access requests and the passage of a period of time.
As a specific example, if the combined counter was
incremented every second, the proposed modification would
render Audebert’s system incapable of distinguishing between
three access requests and the passage of three seconds. Even if
Audebert’s system could be made to function using the single
replacement counter as suggested by the Final Office Action,
the modified system would necessarily be flawed, and would be
entirely unsuitable for its intended purpose of verifying
passwords.”

Id. at 6 (emphasis added).
In addition, Appellant also contends the combined value disclosed by
Audebert ʼ176 is not a counter that is incremented in response to the passage
of time, as recited in Appellant’s independent claims 1, 12, 18, and 20. Id. at
7-8.
We are not persuaded by Appellant’s arguments. First, we note
Appellant’s claim 18 is broader than independent claims 1, 12, and 20. For
example, Appellant’s claim 18 simply requires “a processor to compute a
one-time password based upon a value that is incremented at a first time
responsive to the occurrence of an event other than the passage of time, and
is also incremented at a second time responsive to the passage of time.”
(emphases added). In other words, Appellant’s claim 18 does not require a
time and event based counter (TEC) to increment at first and second times in
response to (1) an occurrence of an event, and (2) the passage of time, as
advocated by Appellant. Consequently, Appellant’s arguments regarding
Appeal 2012-000292
Application 11/407,996

6

the distinctions between Audebert’s two counters and Appellant’s claimed
single counter are not commensurate in scope with independent claim 18.
In our view, Audebert ʼ176 discloses all the limitations of Appellant’s
claim 18, including a processor to compute a one-time password based on a
value that is (1) incremented at a first time responsive to the occurrence of
an event, and that is (2) incremented at a second time responsive to the
passage of time. See Audebert ʼ176, col. 8, ll. 35-59, and col. 10, ll. 8-15.
Because Audebert ʼ176 discloses all Appellant’s claimed elements,
including the computation of a one time password based on a value that is
(1) incremented at a first time responsive to the occurrence of an event, and
(2) incremented at a second time responsive to the passage of time,
Appellant’s independent claim 18 is unpatentable over Audebert ʼ176. As
such, we sustain the Examiner’s obviousness rejection of independent claim
18.
With respect to independent claims 1, 12, and 20, Appellant’s
arguments are also misplaced. The Examiner has provided a comprehensive
response, supported by a preponderance of evidence, to each of the
contentions raised by Appellant. We concur with the conclusions reached
by the Examiner, and adopt as our own the Examiner’s findings and reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief. Ans. 10-12. For example, the password
computed by an algorithm 24, shown in FIG. 2 of Audebert, is computed as
a function of time (T) and access requests (N). Id. at 11 (citing Audebert
ʼ176, col. 8, l. 66–col. 9, l. 2). Similarly, contrary to Appellant’s arguments,
the combined value is also incremented in response the passage of time. Id.
at 12 (citing Audebert ‘176, col. 8, ll. 40-41).
Appeal 2012-000292
Application 11/407,996

7

Moreover, “when a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result” to be nonobvious. KSR Int'l v. Teleflex Inc., 550 U.S. 398, 416
(2007) (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)).
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her
skill. . . . [A] court must ask whether the improvement is more
than the predictable use of prior-art elements according to their
established functions.

Id. at 417.
As noted by the Examiner, Audebert ʼ176 discloses all limitations of
Appellant’s claims 1, 12, and 20, using what the Examiner has characterized
as two separate counters: (1) a timer T that counts time, and (2) a counter Nn
that counts access requests (i.e., an occurrence of events) instead of a single
counter. App. Br. 5. However, the “counter” as disclosed by Appellant’s
Specification and shown in FIG. 2 of Appellant’s drawings refers to a
software component, part of a one-time password algorithm that is based on
an increasing counter value. See Appellant’s Spec. ¶¶ [0007], [0013], and
FIG. 2. There are no physical, discrete hardware components disclosed. As
a result, the distinctions between Audebert’s two counters and Appellant’s
claimed single counter are not meaningful. We find a skilled artisan could
have programmed or modified a counter value as a function of time (T) and
access requests (i.e., an occurrence of events) as described by Audebert
ʼ176, and the result of such a modification would have yielded the invention
Appeal 2012-000292
Application 11/407,996

8

of Appellant’s claims 1, 12, and 20, as the Examiner found. Ans. 10-12
(citing Audebert ʼ176, col. 8, ll. 35-59, and col. 10, ll. 8-15).
For the reasons set forth above, Appellant has not persuaded us of any
error in the Examiner’s rejection of independent claims 1, 12, and 20.
Accordingly, we sustain the Examiner’s rejection of claims 1, 12, and 20.
With respect to dependent claims 2-11, 13-17, 19, and 21-33,
Appellant presents no separate patentability arguments. App. Br. 9. For the
same reasons discussed, we also sustain the Examiner’s obviousness
rejection of claims 2-11, 13-17, 19, and 21-33.

CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1-33 under 35 U.S.C. § 103(a).

DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1-33.
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

lp