Ex Parte Norrman et al

Patent Trial and Appeal Board

Feb 27, 2018

13677451 (P.T.A.B. Feb. 27, 2018)

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.
13/677,451 11/15/2012 Karl Norrman 0110-812 7057
120491 7590 03/01/2018
Leffler Intellectual Property Law, PLLC
2010 Corporate Ridge
Suite 700
McLean, VA 22102
EXAMINER
NGUYEN, THU HA T
ART UNIT PAPER NUMBER
2444
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
info @ leffleriplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL NORRMAN and MONICA WIFVESSON
Appeal 2017-009239
Application 13/677,4511
Technology Center 2400
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3-11, 13, and 15-23, which constitute all of the claims pending
in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant is the Applicant, Telefonaktiebolaget LM Ericsson, which,
according to the Appeal Brief is the real party in interest. App. Br. 2.
Appeal 2017-009239
Application 13/677,451
THE INVENTION
The disclosed and claimed invention is directed to “the handover of
calls between cellular communication systems that support different security
contexts” devices. Spec. 1.2
Claim 1, reproduced below with the relevant language emphasized, is
illustrative of the claimed subject matter:
1. A method of operating a first node to generate a security
context for a client in a cellular communication system, wherein
the first node comprises processing circuitry, the method
comprising:
the first node performing, as part of a handover in the
cellular communication system:
receiving at least one cryptographic key from a second
node;
receiving identities of security algorithms supported by the
client from a third node; and
using the at least one cryptographic key and the identities
to generate the security context for the client,
wherein the first node is a target packet switched node, the
third node is a source packet switched node, and the second node
is a source circuit switched node.
App. Br., Claims App., 21.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
2 We refer to the Specification filed Nov. 15, 2012 (“Spec.”); Final Office
Action mailed June 23, 2016 (“Final Act.”); Appeal Brief filed Dec. 13,
2016 (“App. Br.”); Examiner’s Answer mailed Apr. 17, 2017 (“Ans.”); and
the Reply Brief filed June 18, 2017 (“Reply Br.”).
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Appeal 2017-009239
Application 13/677,451
Blom et al. US 8,094,817 B2 Jan. 10, 2012
(hereafter “Blom”)
Shaw US 2013/0122871 Al May 16, 2013
Fransen US 8,954,739 B2 Feb. 10,2015
REJECTIONS
Claims 1, 3-5, 7-11, 13, 15-17, and 19-23 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Fransen and Shaw. Final Act. 5.
Claims 6 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fransen, Shaw, and Blom. Final Act. 8-9.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are persuaded by Appellant’s arguments regarding the pending claims.
The Examiner finds Fransen’s SGSN (Serving GPRS Support Node)
teaches the claimed first node, and Fransen’s HLR/AuC (Home Location
Register/Authentication Center) teaches the claimed second node. Ans. 2-3
(citing Fransen Figs. 1, 2B, 4A, col. 7,1. 58.-col. 8,1. 3). The Examiner
further finds Fransen teaches the first node receiving at least one
cryptographic key from the second node, and the first node receiving
identities of security algorithms from the third node. Final Act. 5-6 (citing
Fransen Fig. 4, col. 9,11. 8-17, 36-55, col. 9,1. 63-col. 10,1. 7). The
Examiner relies on Shaw’s SGSN 676 to teach the claimed first node,
Shaw’s another SGSN to teach the claimed third node, and Shaw’s MSC 708
(Mobile Switching Center Server) to teach the claimed second node. Final
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Application 13/677,451
Act. 6 (citing Shaw 53-55, 58-59). The Examiner finds Shaw teaches the
performance of the steps “as part of a handover in the cellular
communication system,” as claimed. Final Act. 6 (citing Shaw 77, 81-
85).
Appellant argues Shaw teaches merely that MSC can perform
handover, but does not teach handover methodology such as that recited in
claim 1. App. Br. 12; Reply Br. 4. Appellant further argues that Fransen
does not teach interactions between circuit switched and packet switched
technology and does not teach a target packet switched node (i.e., the
claimed first node) receiving anything from a source circuit switched node
(i.e., the claimed second node). App. Br. 13-14.
We are persuaded by Appellant’s arguments as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
the combination of Shaw’s SGSN 676, another SGSN, and MSC 708, with
mention of handover capabilities, with Fransen’s attach request to the SGSN
and retrieved authentication response, teaches
the first node (target packet switched node) performing, as part
of a handover in the cellular communication system: receiving
at least one cryptographic key from a second node (source
circuit switched node); receiving identities of security
algorithms supported by the client from a third node (source
packet switched node)', and using the at least one cryptographic
key and the identities to generate the security context for the
client,
as recited in in claim 1 (emphasis added).
The cited section of Shaw describes “an attach request is sent by
mobile subscriber 612 to SGSN 676,” and the SGSN 676 “queries another
SGSN, to which mobile subscriber 612 was attached before,” and using the
information to “authenticate mobile subscriber 612 to SGSN 676 by HER
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Appeal 2017-009239
Application 13/677,451
674.” Shaw ^ 53. Shaw further describes the MSC 708 “performs a
switching function for the network” and also performs “other functions, such
as . . . handovers.” Shaw ^ 58. The cited section of Fransen describes the
MSC/SGSN receiving an attach request and issuing an authentication to the
HLR to return authentication information including keys to the MSC/SGSN
to compare and switch to security mode. Fransen col. 9,11. 8-36. In other
words, Shaw teaches SGSN 676 communicating with another SGSN to
authenticate the mobile subscriber as well as the use of an MSC that can
perform handover, and Fransen teaches MSC/SGSN communicating keys
for authentication and security mode. However, Fransen and Shaw do not
teach the limitations required by claim 1: that the target packet switched
node (first node) performs, as part of a handover in the cellular
communication system, receiving at least one cryptographic key from a
source circuit switched node (second node); that the target packet switched
node (first node) performs, as part of a handover in the cellular
communication system, receiving identities of security algorithms supported
by the client from a source packet switched node (third node); and that the
target packet switched node (first node) performs, as part of a handover in
the cellular communication system, using the at least one cryptographic key
and the identities to generate the security context for the client.
Appellant further contends that Fransen and Shaw, even in
combination, would merely result in “an authentication method in a
communication system in which some other nodes perform handover,” but
this does not teach generating a security context as part of a handover from a
circuit switched node to a packet switched node as required by claim 1.
Reply Br. 4. The Examiner does not provide a reason to combine the
teachings of Fransen and Shaw, or show that modifications would result in
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Application 13/677,451
performing handover by generating a security context from interactions
between packet switched nodes and circuit switched nodes.
Therefore, we agree with Appellant that the Examiner’s finding that
the combination of Fransen and Shaw teaches the disputed limitation is in
error because it is not supported by a preponderance of the evidence. See In
re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (holding that the Examiner’s
burden of proving non-patentability is by a preponderance of the evidence);
see also In re Warner, 379 F.2d 1011,1017 (CCPA 1967) (“The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.”).
Accordingly, we are constrained on the record before us, to reverse
the Examiner’s § 103 rejection of claim 1, along with the § 103 rejection of
claims 11, 13, and 23, which recite limitations commensurate in scope to the
disputed limitation discussed above, and dependent claims 3-5, 7-10, 15-
17, and 19-22. See App. Br. 17.
Moreover, because the Examiner has not shown that the additional
references cure the foregoing deficiency regarding the rejection of the
independent claims 1, 11, 13, and 23, we will not sustain the obviousness
rejections of dependent claims 6 and 18. See App. Br. 17-19.
DECISION
For the above reasons, we reverse the Examiner’s decisions rejecting
claims 1, 3-11, 13, and 15-23.
REVERSED
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