Ex Parte Naslund et al

Patent Trial and Appeal Board

Apr 21, 2014

10530293 (P.T.A.B. Apr. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MATS NASLUND, KARL NORMAN, and
TOMAS GLODBECK-LOWE
____________________

Appeal 2011-0134171
Application 10/530,293
Technology Center 2400
____________________

Before JEAN R. HOMERE, JASON V. MORGAN, and
JOHNNY A. KUMAR, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Telefonaktiebolaget L M Ericsson. (App Br.
1.)
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Rejection of claims 44, 46, 49-62, and 79-82. Claims 1-43, 45, 47, and 48
have been canceled. Claims 63-78 have been withdrawn from consideration.
App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a tamper-resistant security device (10) (e.g., a
Subscriber Identity Module (SIM) card) for use in a terminal (20) (e.g.
mobile phone). In particular, upon receiving via a hardware
communications interface (11) an Authentication and Key Agreement
(AKA) process command from an external device, an AKA module (12)
within the security device accesses a memory (13) storing user credentials as
well as a security key to perform AKA processes therewith. Further, the
AKA module (12) forwards the received command to a cooperating
application (14) via an internal interface to perform enhanced security
processing thereupon. Subsequently, the security device returns the
processing results to the external device. Spec. 12, ll. 21-29, fig. 3.
Illustrative Claim
Independent claim 44 further illustrates the invention. It reads as
follows:
44. A tamper-resistant security device for use in a user
device comprising:
memory for storing user credentials, including at least a
security key associated with a user of the user device;
an Authentication and Key Agreement (AKA) module
for performing an AKA process with said security key;
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a hardware communications interface for receiving one
or more external AKA process commands from a device
external to the tamper-resistant security device and returning
processing results performed in the tamper-resistant security
device in response to the one or more AKA process commands;
a cooperating application, contained within the tamper-
resistant security device and having been given access rights to
access the AKA module, configured to selectively receive the
one or more AKA process commands and selectively provide
enhanced security processing of the one or more AKA process
commands; and
an application interface internal to the tamper-resistant
security device for interfacing said AKA module and said
cooperating application so that the cooperating application
performs the enhanced security processing in conjunction with
the AKA module within the tamper-resistant security device,
wherein said enhanced security processing by said
cooperating application includes post-processing of at least one
AKA output parameter produced by the AKA module in
response to the one or more AKA process commands, said post-
processing including encapsulation of said at least one AKA
output parameter to generate a further AKA parameter that has
higher security than said at least one AKA output parameter
produced in response to the one or more AKA process
commands.

Prior Art Relied Upon
Takahashi US 6,507,907 B1 Jan. 14, 2003
Miyoshi US 2003/0074570 A1 Apr. 17, 2003
Aura US 6,711,400 B1 Mar. 23, 2004
Vatanen WO 00/48416 Aug. 17, 2000
WIRELESS APPLICATION PROTOCOL FORUM, LTD., WIRELESS IDENTITY
MODULE Part: Security Version 12-July-2001, Wireless Application
Protocol WAP-260-WIM-20010712-a 1-105 (2001) (hereinafter “WIM”).

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Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 44, 46, 49-59, 61, and 79-82 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of WIM, Takahashi,
and Aura.
2. Claim 60 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of WIM, Takahashi, Aura, and Vatanen.
3. Claim 62 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of WIM, Takahashi, Aura, and Miyoshi.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 6-18, and the Reply Brief, pages 1-7.2

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding the combination of WIM, Takahashi, and Aura teaches or suggests a
tamper-resistant security device containing an AKA module interfacing a
cooperating application to perform enhanced security processing including
post-processing of an AKA output parameter to generate a further
parameter having higher security, as recited in claim 44?

2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed April 11, 2011), the Answer (mailed June 30,
2011), and the Reply Brief (filed August 30, 2011) for the respective details.
We have considered in this decision only those arguments Appellants
actually raised in the Briefs. Any other arguments which Appellants could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii)(2011).
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Appellants argue the proffered combination does not teach or suggest
the disputed limitations emphasized above. App. Br. 8-16 and Reply Brief
1-7. In particular, Appellants argue WIM discloses a tamper-resistant
security device containing at least an application interfacing with an external
device via an external interface, as opposed to the application
communicating with an AKA module via an internal interface. App. Br. 8-
9, Reply Br. 2. Further, Appellants argue that while Takahashi discloses a
receiver containing a Point of Deployment (POD) module electrically
coupled to or inserted into a host device, the receiver is not a tamper-
resistant security device. Therefore, Appellants submit Takahashi does not
cure the noted deficiencies of WIM. App. Br. 10-12, Reply Br. 3-5.
Additionally, Appellants argue while Aura’s mobile station (407) and HLR/
AUC (home location register/authentication center) node (405) are AKA
modules capable of performing post processing of an output parameter, they
are physically separate, and thereby perform such post processing outside of
a tamper-resistant security device. Therefore, Appellants submit Aura does
not cure the noted deficiencies of the WIM-Takahashi combination. App. Br.
12-15, Reply Br. 6-7.
In response, the Examiner finds WIM’s disclosure of a smart card
being inserted into a phone teaches the smart card having an internal
interface with the phone. Ans. 15. Similarly, the Examiner finds
Takahashi’s disclosure of a receiver containing a host having inserted
therein a POD (tamper-resistant device) teaches that the host and the
receiver are tamper-resistant security devices, which communicate via an
internal interface. Ans. 16-23. Additionally, the Examiner finds because
Aura’s disclosure of performing post processing including an enhanced
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security processing would complement the WIM-Takahashi tamper-resistant
security device in providing enhanced security functions, the proffered
combination of references teaches the disputed limitations. Ans. 27-35.
On the record before us, we agree with the Examiner’s findings and
ultimate conclusion of obviousness. In view of Appellants’ arguments and
the Examiner’s findings set forth above, we find that the main issue before
us turns on whether the claim recitation of a “tamper-resistant security
device” is reasonably taught or suggested by the proposed combination of
references. We answer this inquiry in the affirmative. We thus consider
herein the scope and meaning of the claim limitation “tamper-resistant
security device,” which must be given its broadest reasonable interpretation
consistent with Appellants’ disclosure, as explained in In re Morris:
[T]he PTO applies to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise
that may be afforded by the written description contained in the
applicant’s specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See also In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims must be interpreted
as broadly as their terms reasonably allow.”). Our reviewing court further
states, “the ‘ordinary meaning’ of a claim term is its meaning to the ordinary
artisan after reading the entire patent.” Phillips v. AWH Corp., 415 F.3d
1303, 1321 (Fed. Cir. 2005) (en banc).
In particular, Appellants’ Specification states the following:
In the context of enhanced security, the tamper-resistant
security device and/or the corresponding user terminal is preferably
configured for performing some form of security policy processing.
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The security policy processing normally involves security decision
and/or enforcement, and is preferably based on information
representative of the security conditions in relation to the tamper-
resistant security device. For example, it is important that the overall
security enhancement is not compromised by unauthorized access,
e.g., by viruses and Trojans, to resident application files and
commands of the tamper-resistant security device that could expose
the AKA process and the corresponding AKA parameters. Therefore,
the tamper-resistant device is advantageously adapted for allowing
access to such resident files and commands only under given
circumstances. More particularly, certain resident files and
commands of the tamper-resident device are preferably disabled when
the security device is pulled out of its normal environment, e.g., a
mobile phone, and plugged into a more hostile environment such as a
PC or the like. Instead, any requests for AKA processing are
conveniently routed to the security enhancing application.

(Spec. 7, ll. 14-28.) (Emphasis added.)
Consistent with Appellants’ Specification, we construe “tamper-
resistant security device” as a device configured to allow authorized users to
access requested files or perform requested functions safely and securely.
Therefore, the disputed limitations require the security device as containing
an AKA module interfacing a cooperating application to generate an output
parameter with higher security than the one received. We agree with the
Examiner that, upon inserting the smart device into the phone, as taught by
the WIM reference, the phone with the SIM card inserted therein becomes a
tamper-resistant security device in such a way the smart device interfaces
(internally) with phone. Similarly, we agree with the Examiner that
Takahashi’s disclosure of inserting the POD into host creates an internal
interface therebetween thereby causing the host or the receiver to operate as
a tamper-resistant security device. Our finding is buttressed by Takahashi’s
disclosure of the receiver performing the function of preventing
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unauthorized access by protecting transmission of information between the
POD and the host. Takahashi, col. 3, ll. 47-57. As noted by the Examiner,
such a disclosure comports with Appellants’ Specification as set forth above,
and is thereby consistent with our construction of the tamper-resistant
security device. Ans. 24. We therefore find unpersuasive Appellants’
argument that the encryption/decryption between the host and the POD is
evidence of the receiver not being a tamper-resistant security device (App.
Br. 11). Furthermore, we agree with the Examiner that Aura’s disclosure of
enhanced security processing would predictably reinforce the security
processing performed by the WIM-Takahashi combination to thereby
enhance the security of output parameter obtained therefrom.
Additionally, we agree with the Examiner (Ans. 34), in considering
the general form of Appellants’ arguments in the principal Brief, Appellants
have attacked the individual teachings of WIM, Takahashi, and Aura
separately, as opposed to the combined disclosures proffered by the
Examiner. We note that one cannot show nonobviousness “by attacking the
references individually where the rejection is based on combinations of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citation omitted). Here, the respective references relied on by the Examiner
must be read, not in isolation, but for what the combination teaches or
suggests when considered as a whole. We find nonetheless that the
cumulative weight and the totality of the evidence on this record favor the
Examiner’s position that the combined disclosures of WIM, Takahashi, and
Aura would have taught or suggested the disputed limitations. It therefore
follows that Appellants have not shown error in the Examiner’s obviousness
rejection of claim 44.
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Regarding the rejection of claims 46, 49-62, and 79-82, because
Appellants have either not presented separate patentability arguments or
have reiterated substantially the same arguments as those previously
discussed for patentability of claim 44 above, claims 46, 49-62, and 79-82
fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s rejections of claims 44, 46, 49-62, and
79-82 as set forth above.
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
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