Ex Parte Mizikovsky et al

Patent Trial and Appeal Board

Jun 17, 2016

12655531 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/655,531 12/31/2009
30594 7590 06/21/2016
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
FIRST NAMED INVENTOR
Semyon B. Mizikovsky
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.
29250-002608/US 8532
EXAMINER
EBRAHIM, ANEZ C
ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
dcmailroom@hdp.com
pshaddin@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEMYON B. MIZIKOVSKY and ZHIBI WANG
Appeal2015-002149
Application 12/655,531
Technology Center 2400
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOV AN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-11 and 13-17.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Alcatel Lucent (App.
Br. 1).
2 Claim 12 was canceled.
Appeal2015-002149
Application 12/655,531
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to security associations between mobile
terminals and wireless communication networks (Spec. if 1 ). Exemplary
claims 1 and 5 under appeal read as follows:
1. A method for wireless communication comprising:
detecting, at an authentication server, an access
technology under which a mobile unit seeking access to a
wireless network is operating;
computing security keys for access by the mobile unit to
the network according to rules of the access technology under
which the mobile unit is operating.
5. A method in a wireless communication system for
providing handover of a mobile node moving from a first
coverage area applying a first radio access technology to a
second coverage area applying a second radio access
technology, and wherein the mobile node has initially
established an authenticated registration with a network
associated with the first coverage area pursuant to standards of
the first radio access technology, the method comprising:
receiving, at an authentication server, a message from the
mobile node requesting registration for access to the second
coverage area, the message identifying the second radio access
technology applied in the second coverage area and including a
first authentication extension;
generating, at the authentication server, authentication
keys and a second authentication extension for the requested
access registration according to standards established for the
second radio access technology, the generating of the second
authentication extension occurring independently of the mobile
node generating the first authentication extension; and
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validating, at the authentication server, the received
registration request message by comparing the first and second
authentication extensions.
The Examiner's Rejections
Claim 5 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement (Final Act. 2-3).
Claims 1and14 are rejected under 35 U.S.C. § 102(b) as anticipated
by Okabe (US 2005/0113070 Al; May 26, 2005) (Final Act. 3--4).
Claims 2 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Okabe and Falk (US 2008/0270794 Al; Oct. 30, 2008)
(Final Act. 4---6).
Claims 3, 4, 16, and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Okabe and Nakamura (US 2009/0109925 Al; Apr. 30,
2009) (Final Act. 6-7).
Claims 5-7, 11, and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Semple (US 2006/0205388 Al; Sept. 14, 2006) and
Bonner (US 2006/0286984 Al; Dec. 21, 2006) (Final Act. 7-10).
Claims 8-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Semple, Bonner, and Nakamura (Final Act. 10-11).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (App. Br. 7-19; Reply Br. 2-7) that the Examiner erred. We
disagree with Appellants' contentions. We adopt as our own ( 1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
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taken (Final Act. 2-11) and (2) the reasons set forth by the Examiner in the
Examiner's Answer (Ans. 2-10) in response to Appellants' Appeal Brief.
We concur with the conclusions reached by the Examiner. We highlight and
address specific findings and arguments for emphasis as follows.
Independent Claim 1
Appellants contend Okabe does not disclose "detecting, at an
authentication server, an access technology" and "computing security
keys ... according to rules of the access technology," as recited in claim 1
(App. Br. 10-11; Reply Br. 4---6). Appellants argue Okabe presupposes a
common access technology that is used by both the authentication server and
mobile unit, therefore, Okabe has no reason for the authentication server to
detect and adopt a different access technology of the mobile unit when
computing security keys (id.).
Appellants; contentions do not persuade us of Examiner error in the
rejection. As the Examiner properly states, claim 1 does not require the
authentication server and mobile unit to use "different access technologies"
(Ans. 6), therefore, Appellants' argument is not commensurate with the
scope of the claim. We agree with the Examiner's finding that, under the
broadest reasonable interpretation consistent with Appellants' disclosure,
claim 1 does not preclude the authentication server from detecting a mobile
unit operating under the same access technology (Ans. 6 (citing Okabe
i-fi-172-73, authentication server detects authentication request from mobile
terminal)), and subsequently computing security keys under the rules of that
same technology (id. (citing Okabe i175)). See In re Morris, 127 F.3d 1048,
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1054 (Fed. Cir. 1997) (holding the Examiner is to construe claim language
in the broadest reasonable manner).
Accordingly, we sustain the Examiner's rejection of claim 1 under
35 U.S.C. § 102(b) as anticipated by Okabe.
Independent Claim 5
Rejection under 35 U.S. C. § 112, ]st Paragraph
The Examiner finds the limitations "the generating of the second
authentication extension occurring independently of the mobile node
generating the first authentication extension; and validating, at the
authentication server, the received registration request message by
comparing the first and second authentication extensions," as recited in
claim 5, are not described in the Specification in such a way to reasonably
convey to one skilled in the art that the Appellants, at the time the
application was filed, had possession of the claimed invention (Final Act. 2-
3; Ans. 2-5). Appellants contend, based on the Specification, a person of
ordinary skill in the art would understand that the mobile node and
authentication server generate authentication extensions independently of
each other, and the authentication extensions are then used to validate the
mobile node's registration request (App. Br. 7-9; Reply Br. 2-3 (citing
Spec. 5-7)).
We are not persuaded of Examiner error in the written description
rejection. Given the broad descriptions in Appellants' cited sections of the
Specification, we note,
[I]t is "not a question of whether one skilled in the art might be
able to construct the patentee's device from the teachings of the
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disclosure .... Rather, it is a question whether the application
necessarily discloses that particular device" .... A description
which renders obvious the invention for which an earlier filing
date is sought is not sufficient.
Lockwoodv. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)). See also
Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed.
Cir. 2010) ("[W]e have repeatedly stated that actual 'possession' or
reduction to practice outside of the specification is not enough. Rather, ...
it is the specification itself that must demonstrate possession."). We find
Appellants' Specification discloses the mobile node generates a registration
message with an authentication extension (see Spec. i-fi-121-24), but the
Specification does not explicitly describe the authentication server
generating a second authentication. Further, we find the Specification
discloses a home agent (HA) validates the registration message (id.), but
does not describe the authentication server validating the message by
comparing a first and second authentication extensions.
Accordingly, we sustain the Examiner's rejection of claim 5 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Rejection under 35 U.S.C. § 103(a)
First Issue
Appellants contend the combination of Semple and Bonner does not
teach "receiving, at an authentication server, a message from the mobile
node requesting registration for access to the second coverage area, the
message identifying the second radio access technology applied in the
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second coverage area and including a first authentication extension," as
recited in claim 5 (App. Br. 13-14). Specifically, Appellants argue:
HLR 602 of Semple mandates the "access technology" and
associated security mechanisms to be used for handover
validation (i.e., security mechanisms for 3G technology that is
implemented at HLR 602, rather than 2G technology
implemented at SIM 608 of mobile 606). Therefore, there is no
need for mobile terminal 606 to identify the "access
technology" that the mobile terminal 606 is using (as recited in
claim 5).
App. Br. 14.
Appellants' citation to Semple amounts to challenging the references
individually, which is not persuasive of error in the Examiner's position.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). We agree with the Examiner's finding that the
combination of Semple and Bonner results in an authentication server
receiving a message from a mobile node requesting registration access (Final
Act. 7-9; Ans. 6-7 (citing Semple i-fi-158-59)), wherein the message
identifies the second radio access technology applied in the second coverage
area (id. (citing Bonner i-fi-152-53, handoffbetween cell network outside and
home network inside)), as recited in claim 5. We note that, in the Reply
Brief, Appellants have not rebutted the findings in the Examiner's Answer
regarding claim 5 (see Reply Br. 7).
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Second Issue
Appellants contend the combination of Semple and Bonner does not
teach "generating, at the authentication server, authentication keys and a
second authentication extension for the requested access registration
according to standards established for the second radio access technology,
the generating of the second authentication extension occurring
independently of the mobile node generating the first authentication
extension," as recited in claim 5 (App. Br. 14--16). Appellants contend
Semple does not teach a mobile terminal and home location register each
independently generate authentication extensions, and argue the cited SRES
key from the home location register is not generated based on the access
technology of the mobile terminal because the HLR has not yet made
contact with the mobile terminal (id.).
Appellants' contentions have not persuaded us of Examiner error.
The Examiner finds, and we agree, that Semple; s mobile terminal and home
location register each independently generate an authentication extension
(Ans. 7-8 (citing Semple i-fi-158---60, mobile terminal is provisioned with a
digital certificate, and if the mobile terminal's SIM is authentic, the mobile
terminal independently generates the same keys as the home location
register generated)). We further agree with the Examiner's finding that the
combination of Semple and Bonner teaches generating the second
authentication extension according to the standards established for the
second radio access technology (Final Act. 7-9 (citing Bonner i-fi-152-53,
first access technology is a cellular network, second access technology is a
home nework, e.g., WiFi)).
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Third Issue
Appellants contend the combination of Semple and Bonner does not
teach "validating, at the authentication server, the received registration
request message by comparing the first and second authentication
extensions," as recited by claim 5 (App. Br. 16-17). Specifically,
Appellants argue:
Id.
Semple teaches modifying SIM 608 to include a pre-shared
secret integrity key (Ki) [which is also pre-shared with HLR
602] that facilitates a mutual exchange of security keys (steps
600, 610, 616 and 618) with BSF 604, using the adopted access
technology of HLR 602, that culminates in BSF 604 merely
confirming (step 618 of PIG. 6) that message authentication
code 616 from mobile terminal 606 is using a valid SIM 608
that was pre-registered with HLR 602.
We are not persuaded of Examiner error by Appellants' contention,
and agree with the Examiner's finding that Semple teaches the
authentication server compares first authentication extension keys from the
mobile terminal and second authentication extension keys from the home
location register server in order to confirm the authentication of the mobile
terminal (Ans. 8-9 (citing Semple i-fi-158---60)).
Accordingly, we sustain the Examiner's rejection of claim 5 under
35 U.S.C. § 103(a) as being unpatentable over Semple and Bonner.
Dependent Claim 13
Appellants contend the combination of Semple and Bonner does not
teach "wherein the mobile node generates the first authentication keys and
first authentication extension without receiving any information from the
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authentication server identifying the second radio access technology," as
recited in claim 13 (App. Br. 17-18) (emphasis added). Appellants argue
Semple's digital signature acts to identify the radio access technology that a
mobile terminal is using to validate the mobile terminal with the home
location register (id.).
We are not persuaded of Examiner error, and agree with the
Examiner's finding that Semple's mobile node, operating on a first radio
access technology (e.g., 2G network (see Semple i-f 10)), generates
authentication keys and an extension without the home location
authentication server providing any information identifying a second radio
access technology (e.g., 3G network) (Ans. 6-7, 9-10 (citing Semple i-fi-158-
60)).
Accordingly, we sustain the Examiner's rejection of claim 13 under
35 U.S.C. § 103(a) as being unpatentable over Semple and Bonner.
Remaining Claims
Appellants have not argued any of claims 2--4, 6-11, and 14--17 with
particularity. See 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, claims 2--4, 6-
11, and 14--1 7 are summarily sustained.
DECISION
The decision of the Examiner to reject claims 1-11 and 13-17 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)(l )(iv).
AFFIRMED
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