Ex Parte Ma

Patent Trial and Appeal Board

Oct 31, 2012

10460969 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/460,969 06/13/2003 Kenneth Ma 14528.00303 6060
16378 7590 11/01/2012
Broadcom/BHGL
P.O. Box 10395
Chicago, IL 60610
EXAMINER
LIPMAN, JACOB
ART UNIT PAPER NUMBER
2434
MAIL DATE DELIVERY MODE
11/01/2012 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 KENNETH MA
____________

Appeal 2010-005183
Application 10/460,969
Technology Center 2400
____________

Before SCOTT R. BOALICK, DENISE M. POTHIER, and
JEFFREY S. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-5, 8, 9, 11-20, 26-28, 30-32, 34, and 37-49, which are
all the claims pending in the application. Claims 6, 7, 10, 21-25, 29, 33, 35,
and 36 have been canceled. App. Br. 2. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

Representative Claim
1. A method to perform authentication of a wireless communication
device comprising:
first receiving a first value by a first wireless communication device
from a wireless carrier;
first transmitting said first value to a second wireless communication
device using a secured air interface; said second wireless communication
device applying an algorithm to said first value and a key to generate a
single output;
second receiving said single output by said first wireless
communication device by way of said secured air interface;
storing said single output at said first wireless communication device
for possible re-authentication at a future time;
second transmitting said single output to said wireless carrier, said
wireless carrier comparing said single output to a second value calculated at
said carrier to perform authentication of said first wireless communication
device; and
reusing said stored single output to perform said authentication when
said second wireless communication device is powered off.

Prior Art
Michener US 5,351,293 Sept. 27, 1994
Nyman US 2002/0169966 A1 Nov. 14, 2002

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Examiner’s Rejection
Claims 1-5, 8, 9, 11-20, 26-28, 30-32, 34, and 37-49 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Nyman and Michener.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1-4, 9, 13, 16, 19, 20, 34, 37, 45, and 47.

ANALYSIS
Section 103 rejection of claims 1, 5, 8, 11, 12, 14, and 17
Appellant contends that Nyman does not teach “first receiving a first
value by a first wireless communication device from a wireless carrier” as
recited in claim 1. App. Br. 15-16; Reply Br. 5. The Examiner finds that
Nyman teaches sending challenges from the gateway 150 to client 110. The
Examiner further finds that the gateway and Home Location Register (HLR)
of Nyman are part of a wireless carrier. Ans. 6. Figure 1 of Nyman shows
wireless links and a gateway 150 that may operate as a mobile services
switching center. ¶ [0091]. We find that Nyman teaches “a wireless carrier”
within the meaning of claim 1. Nyman teaches that the client, or “first
wireless communication device,” receives n challenges, or “a first value,”
from the wireless carrier. ¶ [0096]. We find that Nyman teaches “first
receiving a first value by a first wireless communication device from a
wireless carrier” as recited in claim 1.
Appellant contends that Nyman does not teach “generat[ing] a single
output” as recited in claim 1. App. Br. 16-17; Reply Br. 5-7. According to
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Appellant, Nyman uses the term “n signed responses,” which teaches
multiple responses rather than a single response. Reply Br. 6. The
Examiner finds that when n is 1, Nyman teaches a single output within the
meaning of claim 1. Ans. 7. Appellant has not provided persuasive
evidence or argument to rebut the Examiner’s finding.
Appellant also contends that Nyman does not obtain signed challenges
by “applying an algorithm to said first value and a key” as recited in claim 1.
App. Br. 16-17; Reply Br. 6. The Examiner finds that Nyman teaches
receiving challenges as input values and outputs a signed response, which
teaches applying an algorithm within the meaning of claim 1 giving this
phrase its broadest reasonable construction consistent with the specification.
Ans. 6. Appellant has not provided persuasive evidence or argument to
rebut the Examiner’s finding.
Appellant contends that Nyman does not teach “storing said single
output at said first wireless communication device for possible
re-authentication at a future time” as recited in claim 1. App. Br. 17.
Nyman teaches that the authenticator can be used as a session key
(Abstract), which teaches “storing . .. for possible re-authentication at a
future time” within the meaning of claim 1.
Appellant contends that the combination of Nyman and Michener
does not teach “reusing said stored single output to perform said
authentication when said second wireless communication device is powered
off” as recited in claim 1. App. Br. 18-19; Reply Br. 7-8. According to
Appellant, generating a new session key as taught by Michener does not
teach “reusing said stored single output” limitation of claim 1. Michener
teaches using the secret key to generate a new session key (Abstract).
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Michener suggests reusing the secret key to perform authentication by
generating a new session key from the secret key. Further, Nyman teaches
that the authenticator can be used as a session key (Abstract), which teaches
“reusing” within the meaning of claim 1.
Appellant contends that the Examiner has not provided motivation for
combining the teachings of Nyman and Michener. App. Br. 20-21. The
Examiner finds that it would have been obvious for one of ordinary skill in
the art to use the secret key of Nyman as a session key for further
communication, even when the mobile station is powered off, to protect
againstattacks. Ans. 3-4. Appellant contends that the new session key of
Michener would not be used for further communication, because it is newly
generated for each session. App. Br. 20. However, the new session key
taught by Michener is generated from the secret key, which therefore teaches
“reusing.” Appellant has not provided persuasive evidence or argument to
rebut the Examiner’s reason to combine teachings.
We sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellant
has not provided arguments for separate patentability of claims 1, 5, 8, 11,
12, 14, and 17 which fall with claim 1.

Section 103 rejection of claims 19 and 30-32
Appellant contends that Nyman does not teach “transmitting said
second value directly to said wireless carrier” as recited in claim 19. App.
Br. 22-23; Reply Br. 8-10. According to Appellant, the value transmitted by
client 110 is altered before it reaches the carrier. Reply Br. 10. The
Examiner finds that the value transmitted by the client is not altered before it
reaches the carrier. Ans. 7; see ¶ [0099].. Appellant has not provided
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persuasive evidence or argument to rebut the Examiner’s findings. Further,
Appellant has not provided a definition of “said first wireless
communication device second transmitting said second value directly to said
wireless carrier” that excludes the wireless device 110, when connected to
local domain 140, transmitting the value to mobile communication network
160 as shown in Figure 1 of Nyman.
We sustain the rejection of claim 19 under 35 U.S.C. § 103.

Section 103 rejection of claim 34
Appellant contends that Nyman does not teach an output generated
using “one or more algorithms” as recited in claim 34. App. Br. 26, 28. The
Examiner finds that Nyman teaches receiving challenges as input values and
outputs a signed response, which teaches generating an output using an
algorithm. Ans. 6. We agree with the Examiner.
Appellant contends that Nyman does not teach “wherein said one
output is transmitted directly to said wireless carrier and compared to a
second value calculated at said wireless carrier, said authenticating
performed using a single communication path” as recited in claim 34. App.
Br. 26-28. We find this argument unpersuasive for the reasons discussed in
our analysis of claim 19. For any arguments referring back to claim 1 or
related to an output generated using an algorithm, we are not persuaded for
the previous reasons discussed in connection with claim 1.
We sustain the rejection of claim 34 under 35 U.S.C. § 103.

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Section 103 rejection of claims 37, 41, 43, and 44
Appellant contends that Nyman does not teach “said first receiving,
first transmitting, second receiving, second transmitting, comparing, and
enabling performed using a single mobile telecommunications network
common to said wireless carrier, and said first and said second wireless
communication devices” as recited in claim 37. Appellant has not provided
a definition of “single mobile telecommunications network common to said
wireless carrier, and said first and said second wireless communication
devices” that excludes the communication network 100 shown in Figure 1 of
Nyman.
For any arguments referring back to claim 1, we are not persuaded for
the previous reasons discussed in connection with claim 1.
We sustain the rejection of claim 37 under 35 U.S.C. § 103.
Appellant has not provided arguments for separate patentability of claims
41, 43, and 44 which fall with claim 37.

Section 103 rejection of claim 45
Appellant presents arguments for the patentability of claim 45 similar
to those presented for claim 37, which we find unpersuasive. We sustain the
rejection of claim 45 under 35 U.S.C. § 103.

Section 103 rejection of claims 47 and 49
Appellant contends that Nyman does not teach “first receiving a
personal identification number by a first communications device to initiate
pairing between said first communications device to a second
communications device” as recited in claim 47. App. Br. 41; Reply Br. 11.
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Nyman teaches sending a personal identification number from a client
device to a mobile station. ¶¶ [0032], [0093], [0094], and [0102]. We
therefore find that Nyman teaches “first receiving a personal identification
number by a first communications device to initiate pairing between said
first communications device to a second communications device” as recited
in claim 47.
Appellant contends that Nyman does not teach “transmitting a
periodic signal to said second communications device from said first
communications device to perform automatic pairing” within the meaning of
claim 47. App. Br. 41; Reply Br. 11. Nyman teaches storing the identity of
the identity module at the client, and periodically refreshing the link (¶
[0102]), which teaches “transmitting a periodic signal to said second
communications device from said first communications device to perform
automatic pairing” within the meaning of claim 47.
We sustain the rejection of claim 47 under 35 U.S.C. § 103.
Appellant has not provided arguments for separate patentability of claim 49
which falls with claim 47.

Section 103 rejection of claims 2, 38, 46, and 48
Appellant contends that Nyman does not teach a first value sent from
a wireless carrier to a wireless communication device, where the first value
comprises a random numeric value as recited in claim 2. According to
Appellant, the random value of Nyman is sent from a home location register
to a gateway. App. Br. 41-43. We disagree. We find that the random value
of Nyman is a challenge that is sent to the client. ¶ [0097].
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We sustain the rejection of claims 2, 38, 46, and 48 under 35 U.S.C.
§ 103.

Section 103 rejection of claims 3, 15, 18, and 39
Appellant contends that Nyman does not teach a “key is stored in a
subscriber identification mechanism of said second wireless communication
device” as recited in claim 3. App. Br. 44. The Examiner finds that
paragraph [0097] of Nyman teaches signing challenges by using the
subscriber identification mechanism. Ans. 7-8. Appellant responds that
paragraph [0097] of Nyman teaches the mobile station generates the first
secret, which includes n signed responses, but does not teach that the
challenges are signed using the SIM. Reply Br. 12. Paragraph [0097]
teaches that the first secret comprises GSM keys by using its SIM.
Appellant has not persuaded us of error in the Examiner’s findings.
Appellant also contends that Nyman does not teach a “subscriber
identification mechanism [that] uniquely identifies a subscriber’s billing
account” as recited in claim 18. App. Br. 44. The Examiner finds that
paragraph [0006] of Nyman teaches that the SIM identifies a subscriber, and
the subscriber’s identity is used to identify the subscriber’s account as
suggested in paragraph [0101]. Ans. 8. We agree with the Examiner’s
findings.
We sustain the rejection of claims 3, 15, 18, and 39 under 35 U.S.C.
§ 103.

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Section 103 rejection of claims 4 and 40
Appellant contends that Nyman does not teach a “wide area air
interface” as recited in claim 4. App. Br. 45-46; Reply Br. 13-14. Appellant
has not provided persuasive evidence or argument to distinguish the wide
area air interface from the wireless network interfaces that connect the
mobile carrier 160, the mobile station 120, and the local domain 140.
We sustain the rejection of claims 4 and 40 under 35 U.S.C. § 103.

Section 103 rejection of claims 9 and 28
Appellant contends that Nyman does not teach “said local area air
interface comprises a 27 Mhz or 900 Mhz air interface” as recited in claim 9.
In particular, Appellant contends that the Examiner has not provided
documentary evidence to support the Official Notice that connecting a
device to the Internet using an air interface such as Bluetooth was well
known. App. Br. 47. The Examiner finds that U.S. Patent No. 6,377,825 B1
issued to Kennedy teaches that an air interface such as Bluetooth was well
known at the time of invention. Final Rej. 7. Appellant has not addressed
the Examiner’s finding.
We sustain the rejection of claims 9 and 28 under 35 U.S.C. § 103.

Section 103 rejection of claim 13
Appellant contends that Nyman does not teach “said third receiving an
input sequence is performed to initialize automatic pairing of said first
wireless communication device to said second wireless communication
device” as recited in claim 13. App. Br. 48. Paragraph [0102] of Nyman
teaches that the PIN code need not be re-sent over the local wireless link and
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the authenticator can be refreshed automatically without user interaction,
which suggests “automatic pairing” within the meaning of claim 13.
We sustain the rejection of claim 13 under 35 U.S.C. § 103.

Section 103 rejection of claim 16
Appellant contends that Nyman does not teach an “unblocking
sequence” as recited in claim 16. In particular, Appellant contends that the
PIN is blocked permanently when a user inputs the wrong PIN a certain
number of times. According to Appellant, a new PIN or password is
provided by the prior art, which does not teach “inputting an unblocking
sequence to facilitate input of said input sequence after said input sequence
has been input incorrectly a specified number of times” as recited in claim
16. App. Br. 48; Reply Br. 15. In response to Appellant’s challenge of the
Examiner’s taking of Official Notice, the Examiner finds that U.S. Patent
No. 5,583,933 issued to Mark teaches the “unblocking sequence.” Final Rej.
7. Mark teaches prompting a user for a PIN. If a user enters an incorrect
PIN, the user is prompted to enter the requested PIN correctly, and to enter a
second PIN. Mark, col. 56, l. 30-col. 57, l. 32.
We sustain the rejection of claim 16 under 35 U.S.C. § 103.

Section 103 rejection of claims 20, 26, 27, and 42
Appellant contend that Nyman does not teach “said first value
received by said second wireless communication device occurs by way of a
first transmission from said wireless carrier to said first wireless
communication device and a second transmission from said first wireless
communication device to said second wireless communication device” as
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recited in claim 20. In particular, Appellant contends that Nyman teaches a
client sending values to gateway 150, which forwards the values to HLR.
Appellant also contends that Nyman shows mobile station sending outputs to
client 110, then to FA block 141, AAAF block 142, and then to gateway
150. Appellant concludes that Nyman does not teach the limitations of
claim 20. App. Br. 50-51. We find that the client 110, or “first
communication device” receives a value from gateway 150 (which is part of
mobile telecommunications network 160), or “wireless carrier” (¶[0096]),
then sends the value to the mobile station 120, or “second communication
device” (¶ [0097]).
We sustain the rejection of claims 20, 26, 27, and 42 under 35 U.S.C.
§ 103.

DECISION
The rejection of claims 1-5, 8, 9, 11-20, 26-28, 30-32, 34, and 37-49
under 35 U.S.C. § 103(a) as being unpatentable over Nyman and Michener
is 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). See 37 C.F.R. §
41.50(f).

AFFIRMED

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