Ex Parte Ma

Board of Patent Appeals and Interferences

Oct 12, 2010

10461012 - (D) (B.P.A.I. Oct. 12, 2010)

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.
10/461,012 06/13/2003 Kenneth Ma 15010US01 6477
7590 10/12/2010
CHRISTOPHER C. WINSLADE
MCANDREWS HELD AND MALLOY, LTD.
500 WESTMADISON ST.
34TH FLOOR
CHICAGO, IL 60661
EXAMINER
WILLIAMS, JEFFERY L
ART UNIT PAPER NUMBER
2437
MAIL DATE DELIVERY MODE
10/12/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH MA
____________

Appeal 2009-006823
Application 10/461,012
Technology Center 2400
____________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
JEAN R. HOMERE, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006823
Application 10/461,012

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-6, 8-27, and 33-53, which are all the claims remaining
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection as permitted by
37 C.F.R. § 41.50(b).

Invention
Appellant’s invention relates to providing secure transmission of
signals by a primary wireless communication device that utilizes a secure
multi-tier signal encryption mechanism. A secondary signal encryption
mechanism of a secondary wireless communication device generates an
intermediary algorithmic output required in the encryption processing at a
primary signal encryption mechanism of a primary wireless communication
device. The secondary signal encryption mechanism comprises a subscriber
identity module (SIM) card. Abstract.

Representative Claim
1. A method of securely transmitting signals by a
primary wireless communication device comprising:

receiving a value from a wireless carrier;

transmitting said value to a secondary wireless
communication device;

receiving a first output from said secondary wireless
communication device, said first output generated using a first
algorithm, said value and a key;

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applying a second algorithm using said first output to
generate encrypted signals; and

transmitting said encrypted signals to said wireless
carrier.

Examiner’s Rejections
Claims 37-53 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
Claims 1-3, 6, 8-15, 17, 19-27, 34, 36-44,2 and 47-51 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Nyman (US 2002/0169966
A1).
Claims 4, 5, 45, 46, 52, and 53 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nyman in view of Mouly, “GSM
System for Mobile Communications.”
Claims 33 and 35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nyman in view of Anderson, “Security Engineering: A
Guide to Building Dependable Distributed Systems.”
Claims 16 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nyman.

Claim Groupings
In view of Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1, 37, 43-45, and 47. See 37 C.F.R.
§ 41.37(c)(1)(vii).

2 Claims 43 and 44 are not listed in the rejection under 35 U.S.C. § 102(e),
which appears to be an oversight by the Examiner.
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Application 10/461,012

4
FINDINGS OF FACT
1. Nyman discloses authenticating a client by transmitting a
telecommunication network subscriber’s authentication to the client from a
device over a wireless link. For example, a GSM (Global System for
Mobiles) telephone may authenticate an electronic book to a content
providing service within the Internet. The service verifies the authentication
using the subscriber’s GSM network operator’s Authentication Center to
generate an authenticator and the client correspondingly generates a local
copy of the authenticator using a GSM SIM (Subscriber Identity Module)
over the wireless local link. The authentication is then determined by
checking that these authenticators match and thereafter the authenticator can
be used as a session key to encrypt data in the service. Abstract.
2. Nyman discloses an HLR (home location register) 161 that
sends “n” challenges (n RAND) to a client 110. Fig. 2; ¶ [0096].
3. The client sends the challenges to a mobile station 120.
¶ [0097].
4. The mobile station then generates a secret which includes
signed responses (n SRES′) and GSM keys (Kc′), and sends the secret to the
client. Id.
5. The client sends the secret to a gateway 150 in an IP SIM
Request 2. The gateway forwards the request to the HLR. The HLR
compares the secret in the IP SIM Request 2 from the client (“a first secret”)
to a secret generated at the HLR (“a second secret”). If the secrets match,
the HLR sends a second secret, such as GSM keys, to the home agent 131.
Figs. 1 and 2; ¶ [0099].
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6. The second secret may be encrypted by a one-way hash
function of the GSM keys and of a time stamp or a replay attack protector.
The replay attack protector is typically a random number generated by the
client. The client sends the replay attack protector to the foreign agent (FA)
141. Alternatively, an authenticator may be based on an encrypted Kc.
¶ [0100].
7. The second secret is used by the client to obtain access to a
desired service. ¶¶ [0100] – [0101].

PRINCIPLES OF LAW
Claim Interpretation
Our reviewing court has held that non-functional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). The content of non-functional descriptive material is
not entitled to weight in the patentability analysis. See In re Lowry, 32 F.3d
1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information
content of a memory.”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-
90 (BPAI 2008) (precedential) (discussing non-functional descriptive
material).

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Anticipation
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GmbH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).

Obviousness
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
Section 102(e) rejection of claims 1-3, 6, 8-15, 17, 19-27, 34, and 36
Appellant contends that Nyman does not disclose “applying a second
algorithm using said first output to generate encrypted signals” as recited in
claim 1. App. Br. 21. The Examiner finds that the first secret and the
second secret are the same, and concludes that Nyman’s discussion of
encrypting the second secret describes encrypting the secret at the client.
Ans. 17-19.
Nyman describes an HLR that receives a secret from a client (what
Nyman calls “a first secret”) (FF 4), and compares the secret to a secret that
is generated at the HLR (what Nyman calls “a second secret”) (FF 5). If
these two secrets match, Nyman describes sending another “second secret”
of GSM keys to allow the client to obtain access to a desired service. FF 7.
In other words, the “second secret” that is compared to the “first secret”
appears to be different from the “second secret” of GSM keys that allow a
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client to access a desired service. The “second secret” that is encrypted by
Nyman appears to be the GSM keys that allow a client to access a desired
service, not the GSM keys that are compared by the HLR. FF 5-7.
Therefore, we find that the rejection incorrectly alleges that Nyman
encrypts the secret that is sent from the client to the HLR for comparison.
Because the Examiner’s finding that Nyman discloses “applying a second
algorithm” is based on this incorrect allegation, we find that the rejection
fails to show how Nyman discloses “applying a second algorithm using said
first output to generate encrypted signals” as recited in claim 1.
We do not sustain the rejection of claim 1 under 35 U.S.C. § 102.
Independent claim 20 contains a limitation similar to that of claim 1 for
which the rejection fails. We thus do not sustain the § 102(e) rejection of
claims 1-3, 6, 8-15, 17, 19-27, 34, and 36.

Section 102(e) rejection of claims 37-44
Appellant contends that Nyman does not teach “generating said signal
by second applying one or more second algorithms to said output” or doing
so by “a first wireless communication device” as recited in claim 37. App.
Br. 28-29; Reply Br. 27-30.
Nyman discloses a client (“a first device”) that receives a secret (“an
output”) from a phone (“a second device”). The client generates an IP SIM
Request that includes the secret. FF 5. Appellant has not provided evidence
or persuasive argument to distinguish “generating said signal by second
applying one or more second algorithms to said output” from generating an
IP SIM Request that includes the secret as described by Nyman.
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Claim 43 recites that the signal comprises voice, and claim 44 recites
that the signal comprises data. However, what the signal “comprises” is
non-functional descriptive material that is not entitled to patentable weight.
The descriptive material does not distinguish claim 43 or claim 44 from the
prior art in terms of patentability.
We sustain the § 102(e) rejection of claim 37. Appellant has not
presented arguments for separate patentability of claims 38-44, which thus
fall with claim 37.
However, because the Examiner did not address claims 43 and 44 in
the rejection, we designate our affirmance of the rejection as to those claims
as a new ground of rejection, as provided by 37 C.F.R. § 41.50(b).

Section 102(e) rejection of claims 47-51
Appellant contends that Nyman does not disclose “said intermediary
output used by one or more second algorithms for said encrypting said
signal,” or doing so utilizing a “second wireless communication device,” as
recited in claim 47. App. Br. 29-30.
However, claim 47 is a method claim that recites “said intermediary
output used for encrypting a signal that is transmitted by a second wireless
communication device” in the preamble, and “said intermediary output used
by one or more second algorithms for said encrypting said signal” in the
body of the claim. What the output is “used for” is not a step that is
positively recited in the method of claim 47. In particular, the method does
not set forth a step of, or otherwise require, encrypting or transmitting “a
signal.” Claim 47 does not require actually using the “intermediary output”
for anything. The “used for” clauses thus represent an intended use of the
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“intermediary output.” Appellant has not identified any feature in claim 47
that would serve to distinguish the “intermediary output” from mere data.
The clauses relating to the future intended use of the “intermediary output”
data are therefore not entitled to patentable weight and cannot distinguish the
claim from the prior art.
Nyman discloses a phone that receives a challenge from an HLR by
way of a client. FF 2-3. Therefore, Nyman discloses “receiving a value
from a wireless carrier by way of said second communication device” within
the meaning of claim 47. Nyman discloses generating a signed response and
a key in response to receiving the challenge. FF 4. Therefore, Nyman
describes “applying one or more first algorithms to said value and to a key to
generate said intermediary output” within the meaning of claim 47.
We sustain the § 102(e) rejection of claim 47. Appellant has not
presented arguments for separate patentability of claims 48-51, which thus
fall with claim 47.

Section 103(a) rejection of claims 4, 5, 16, 18, 33, and 35
As neither of Nyman, Mouly, or Anderson as applied remedies the
deficiencies in the rejection against base claims 1 and 20, we do not sustain
the § 103(a) rejections of claims 4, 5, 16, 18, 33, and 35.

Section 103(a) rejection of claims 45, 46, 52, and 53
Appellant contends that Nyman does not use or apply an A5 GSM
algorithm. Appellant also contends that Nyman “teaches away” from using
a GSM system. Appellant concludes that Nyman and Mouly teach away
from their combination. App. Br. 32-34; Reply Br. 31.
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Nyman uses a GSM system. FF 1, 4-6. The Examiner finds that
Mouly teaches an A5 algorithm and an A8 algorithm in Figures 7.8 and 7.9.
Ans. 11. Appellant has failed to identify a limitation of claim 45 that is not
taught or suggested by the combination of Nyman and Mouly. Given that
Nyman uses a GSM system, we find that Appellant has failed to provide
evidence or persuasive argument to show that Nyman “teaches away” from
using a GSM system.
We sustain the § 103(a) rejection of claim 45. Appellant’s arguments
for the patentability of claims 46, 52, and 53 are similar to those presented
for claim 45, which we find unpersuasive.

Section 101 rejections of claims 37-53
Because claims 37-53 are not patentable over the prior art and we
sustain the Examiner’s decision to reject the claims on that basis, we need
not reach the § 101 rejection of claims 37-53.

DECISION
The rejection of claims 1-3, 6, 8-15, 17, 19-27, 34, and 36 under 35
U.S.C. § 102(e) as being anticipated by Nyman is reversed.
The rejection of claims 37-44 and 47-51 under 35 U.S.C. § 102(e) as
being anticipated by Nyman is affirmed.
The rejection of claims 4 and 5 under 35 U.S.C. § 103(a) as being
unpatentable over Nyman in view of Mouly is reversed.
The rejection of claims 45, 46, 52, and 53 under 35 U.S.C. § 103(a) as
being unpatentable over Nyman in view of Mouly is affirmed.
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11
The rejection of claims 33 and 35 under 35 U.S.C. § 103(a) as being
unpatentable over Nyman in view of Anderson is reversed.
The rejection of claims 16 and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Nyman is reversed.
The rejection of claims 43 and 44 under 35 U.S.C. § 102(e) as being
anticipated by Nyman is affirmed. We designate our affirmance of the
§ 102(e) rejection of claims 43 and 44 as a new ground of rejection.
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, 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:

(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 proceeding
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. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
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the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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-IN-PART-- 37 C.F.R. § 41.50(b)

msc

CHRISTOPHER C. WINSLADE
MCANDREWS HELD AND MALLOY, LTD.
500 WESTMADISON ST.
34TH FLOOR
CHICAGO, IL 60661