Ex Parte Naslund et alDownload PDFPatent Trial and Appeal BoardMay 29, 201814370862 (P.T.A.B. May. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/370,862 07/07/2014 Mats Naslund 113648 7590 05/31/2018 Patent Portfolio Builders, PLLC P.O. Box 7999 Fredericksburg, VA 22404-7999 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. Ol ll-188/P36557US1 9276 EXAMINER AN, WAYNE ART UNIT PAPER NUMBER 2498 NOTIFICATION DATE DELIVERY MODE 05/31/2018 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): Mailroom@ppblaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATS NASLUND, MAURIZIO IOVIENO, and KARL NORRMAN Appeal 2017-011631 Application 14/370,862 Technology Center 2400 Before JOHN A. JEFFERY, BRUCE R. WINSOR, and JUSTIN BUSCH, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the Examiner's decision to reject claims 1-5, 10-12, and 16-18, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 6-9 and 13-15 are cancelled. App. Br. 22, 24 (Claims App'x). We reverse. 1 Appellants identify the real party in interest as Telefonaktiebolaget L M Ericsson (publ). App. Br. 2. Telefonaktiebolaget L M Ericsson (publ) is the Applicant for the instant patent application. See Bib. Data Sheet. Appeal 2017-011631 Application 14/370,862 STATEMENT OF THE CASE The Invention Appellants' disclosed invention relates to providing a law enforcement agency access to an encrypted communication between a sending node and a receiving node. See generally Abstract. According to the Specification, a key management server stores cryptographic information used to encrypt a communication between the sending node and the receiving node. Spec. 8:3-5. "The cryptographic information is associated with an identifier used to identify the encrypted communication between the sending node and the receiving node." Spec. 8:5-7. "The identifier is optionally derived using at least any of a timestamp, implicit knowledge of the current time, a sequence number associated with the session, a ticket identifier, a key identifier, and a session identifier." Spec. 9: 1-3. Claim 1, which is illustrative, reads as follows: 1. A method of providing access to an encrypted communication between a sending node and a receiving node to a Law Enforcement Agency, the method comprising, at a Key Management Server function: storing at a database cryptographic information used to encrypt the communication, the cryptographic information associated with an identifier used to identify the encrypted communication between the sending node and receiving node; receiving a request originating from a Law Enforcement Agency for Lawful Intercept, the request including an identity of a target for Lawful Interception; using the target identity to determine the identifier, and retrieving from the database the cryptographic information associated with the identifier, the cryptographic information usable to decrypt the encrypted communication; and 2 Appeal 2017-011631 Application 14/370,862 sending one of information derived from the cryptographic information and a decrypted communication towards the Law Enforcement Agency. The Rejections2'3 Claims 17 and 18 stand rejected under 35 U.S.C. § 112, fourth paragraph as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. See Final Act. 6. Claims 1, 4, 10, 11, and 16-18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoon et al. (US 2010/0002880 Al, published Jan. 7, 2010). See Final Act. 9--15. 2 All rejections are under the provisions of 35 U.S.C. in effect before the effective date of the Leahy-Smith America Invents Act of 2011 ("pre-AIA"). See, e.g., Final Act. 2. 3 On this record, we conclude the rejection of claims 1-5, 10-12, and 16-18 under 35 U.S.C. § 101 (see Final Act. 7-8) is not before us. At the outset, we note that in the header for the rejection under§ 101, the Examiner mistakenly includes cancelled claims 6-9 and 13-15. See Final Act. 7. We treat the Examiner's error as typographical or ministerial. In the Grounds of Rejection section on page 2 of the Examiner's Answer, the Examiner indicates the rejection of claims 1-5, 10-12, and 16-18 under§ 101 is applicable to the appealed claims, yet in the Withdrawn Rejections section on page 2 of the Examiner's Answer, the Examiner indicates the rejection of claims 1-5, 10-12, and 16-18 under§ 101 is withdrawn. The Response to Argument section of the Examiner's Answer does not refer to a rejection under § 101. See Ans. 3-10. Accordingly, we treat the rejection of claims 1-5, 10-12, and 16-18 under§ 101 as being withdrawn and, therefore, not before us. 3 Appeal 2017-011631 Application 14/370,862 Claims 2, 3, 5, and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoon and Applicants' Admitted Prior Art (AAP A). See Final Act. 15-17. The Record Rather than repeat the arguments here, we refer to the Briefs ("App. Br." filed Feb. 13, 2017; "Reply Br." filed Sept. 19. 2017) for the positions of Appellants; the Final Office Action ("Final Act." mailed Nov. 18, 2016) and the Examiner's Answer ("Ans." mailed July 28, 2017) for the reasoning, findings, and conclusions of the Examiner; and the Specification ("Spec." filed July 7, 2014, amended Sept. 1, 2016). Only those arguments actually made by Appellants have been considered in this decision. ISSUES The dispositive issues4 presented by Appellants' arguments are as follows: Does the Examiner err in finding claims 1 7 and 18 are of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends? Does the Examiner err in finding Yoon teaches or suggests "storing at a database cryptographic information used to encrypt the communication, the cryptographic information associated with an identifier used to identify 4 Appellants' arguments present additional issues. Because the identified issues are dispositive of the appeal, we do not reach the additional issues. 4 Appeal 2017-011631 Application 14/370,862 the encrypted communication between the sending node and receiving node," as recited in claim 1? ANALYSIS Rejection under 35 USC§ 112, Fourth Paragraph The Examiner rejects claims 17 and 18 under 35 U.S.C. § 112, fourth paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Final Act. 6. According to the Examiner, although claim 17 recites a processor to perform the method of claim 1, and claim 18 recites a memory to store the method of claim 1, claims 17 and 18 do not further limit the scope of the claimed invention. Ans. 3. We disagree with the Examiner's determination that claims 1 7 and 18 are improperly dependent under 35 U.S.C. § 112, fourth paragraph. In this instance, each of claims 17 and 18 specifically recites that it depends from claim 1 ("The method according to claim 1, .... "), is directed to the same statutory class ("method") as claim 1, and recites an additional limitation on the manner in which the steps of the method are performed ("wherein the method is performed by a processor ... " (claim 17); ("wherein the method is performed by a computer program stored on a non-transitory computer readable medium" (claim 18)). Each of claims 17 and 18, therefore, further limits the invention recited in claim 1. Thus, we agree with Appellants "that dependent claims 17 and 18 meet both the requirements of a dependent claim," Reply Br. 2, and are in compliance with the requirements of§ 112, fourth paragraph. Accordingly, 5 Appeal 2017-011631 Application 14/370,862 we do not sustain the rejection of claims 17 and 18 under 35 U.S.C. § 112, fourth paragraph. Rejection under 35 USC§ 103(a) The Examiner finds Yoon teaches storing at a database (trusted third party lO's storage unit 13) "cryptographic information" (master key and session key) used to encrypt a communication between a sending node (transmit terminal 20) and a receiving node (receive terminal 40). Final Act. 9 (citing Yoon i-f 25; Fig. 3). The Examiner further finds Yoon's master key and session key are used to identify the encrypted communication, id., but Yoon does not disclose that the master key and session key are associated with an identifier used to identify the encrypted communication, id. at 10. The Examiner explains as follows: Id. Yoon discloses the storage unit (Fig. 3, storage unit 13), stores IDs of the transmit and receive terminals ([0032] stores the information such as IDs of the transmit and receive terminals), and using the master key or the session key received to decrypt the secure packets received ([0031 ]). It would have been obvious to one of ordinary skill in the art to realize that for Yoon's system to function properly and be able to decrypt the secure packets with the correct master keys, the cryptographic information should be associated with the identifier in the database. Appellants contend, among other things, that a ''prima facie case for obviousness ... has not been met." App. Br. 19. We agree with Appellants. "In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness." In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citation omitted). To support a conclusion of obviousness, "[ w ]hether the Board relies on an express or an 6 Appeal 2017-011631 Application 14/370,862 implicit showing, it must provide particular findings related thereto. Broad conclusory statements standing alone are not 'evidence."' In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000) (citation omitted). A key aspect of the Examiner's obviousness rejection is a conclusion that it would have been obvious for one of ordinary skill in the art to realize Yoon's secure packets should be associated with an identifier in a database for Yoon's system to function properly and decrypt the secure packets with correct master keys. See Final Act. 1 O; see also Ans. 7-8. Despite the lack of the term "Official Notice" in the grounds of rejection, we find that what one of ordinary skill in the art realizes is a noticed fact considered to be common knowledge or well known in the art. The Examiner further supports the noticed fact as being common knowledge or well known in the art by finding that "[i]t is ... well understood for a person with ordinary skill in the art that packets transmitted between the sending and receiving nodes comprise identifiers in order to correctly send/route the packets to the appropriate recipient." Id. 7. Thus, the Examiner gave Appellants notice that Official Notice is taken. Appellants contend there is nothing to support a determination that Yoon's system would not function properly without associating the master key and session key with an identifier. App. Br. 18. In light of this contention, Appellants effectively explained why the Examiner's officially- noticed fact was not common knowledge or well-known in the art, and, therefore, adequately traversed the Examiner's taking of Official Notice under MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2144.03(C) (9th ed. Rev. 08.2017, Jan. 2018) (noting ifthe Examiner's assertion of Official Notice is adequately traversed, the Examiner must provide 7 Appeal 2017-011631 Application 14/370,862 documentary evidence in the next Office Action to maintain the rejection). Given this traversal, it was then incumbent upon the Examiner to produce documentary evidence to support the Examiner's taking of Official Notice- a requirement that was not satisfied here. Thus, we find a lack of evidence to support the Examiner's finding of that the fact of which Official Notice is taken is common knowledge or well-known in the art. Further, the Examiner's finding that Yoon's system is unable to function properly without the claimed identifiers is a finding that the claimed identifiers are necessarily present, or inherent, in Yoon. See, e.g., In re Montgomery, 677 F.3d 1375, 1379--80 (Fed. Cir. 2012). At the outset, we note that such a retrospective view of inherency is not a substitute for some teaching or suggestion in the prior art which supports the selection and use of the various elements of the prior art in the particular claimed combination. See Rijckaert, 9 F.3d at 1534; In re Newell, 891 F.2d 899, 901 (Fed. Cir. 1989). Furthermore, similar to the lack of evidence to support a taking of Official Notice, we find a lack of evidence to support the Examiner's finding of a teaching or suggestion that is inherent in Yoon. See Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (citations omitted) (finding that "[i]n relying upon the theory of inherency, the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art."). "[P]atentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). For the reasons discussed above, the Examiner has not pointed to evidence in the 8 Appeal 2017-011631 Application 14/370,862 record or provided sufficient technical reasoning to persuasively show that Yoon would have rendered obvious a method that includes cryptographic information associated with an identifier used to identify an encrypted communication between a sending node and a receiving node. Thus, we are constrained by this record to agree with Appellants' contention that a prima facie case for obviousness has not been established. App. Br. 19. Because the Examiner has not shown by a preponderance of the evidence that the claimed invention would have been prima facie obvious based on the cited prior art we do not sustain the rejections on appeal. Accordingly, we do not sustain the rejections of (1) independent claim 1; (2) independent claims 10, 11, and 16, which recite limitations substantially similar to the disputed limitation (compare App. Br. 22-23 (claims 10 and 11) and id. at 24 (claim 16) with id. at 21 (claim 1)); and (3) claims 2-5, 12, 17, and 18, which variously depend, directly or indirectly, from claims 1 and 11 (see In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) ("Dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious.")). DECISION The Examiner's decision to reject claims 17 and 18 under 35 U.S.C. § 112, fourth paragraph is reversed. The Examiner's decision to reject claims 1-5, 10-12, and 16-18 under 35 U.S.C. § 103(a) is reversed. REVERSED 9 Copy with citationCopy as parenthetical citation