Ex Parte Suh et al

Patent Trial and Appeal Board

Aug 21, 2015

12120006 (P.T.A.B. Aug. 21, 2015)

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.
12/120,006 05/13/2008 Kyung-Joo Suh 678-3501 4107
66547 7590 08/24/2015
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
GENACK, MATTHEW W
ART UNIT PAPER NUMBER
2645
MAIL DATE DELIVERY MODE
08/24/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KYUNG-JOO SUH and DAE-GYUN KIM
____________

Appeal 2013-007065
Application 12/120,006
Technology Center 2600
____________

Before CAROLYN D. THOMAS, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–20, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest identified by Appellants is Samsung Electronics
Co., Ltd. Appeal Br. 1.
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STATEMENT OF THE CASE

Introduction

Appellants’ invention generally relates to managing the mobility of a
Mobile Station (MS) in a mobile communication system using Mobile
Internet Protocol (IP). Spec. 1.
Claim 1 is exemplary and reads as follows:
1. A method for managing mobility of a Mobile Station
(MS) in a mobile communication system using Mobile Internet
Protocol (IP), comprising the steps of:
determining, by the MS, whether to generate an
authentication key for mutual authentication between the MS
and a Home Agent (HA) after access authentication with an
Access Gateway (AG);
generating, by the MS, the authentication key, if it is
determined to generate the authentication key after the access
authentication;
transmitting, by the MS, an information request message
to the AG;
receiving, by the MS, in response to the information
request message, a reply message including information
allocated by an Authentication, Authorization, and Accounting
(AAA) server from the AG; and
transmitting, by the MS, a binding update message for
registering mobility binding of the MS to the HA,
wherein the binding update message includes a Mobile
Node- Home Agent Authentication Extension (MN-HA AE)
generated using the authentication key.

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References

Leung US 6,466,964 B1 Oct. 15, 2002
Semple US 2006/0120531 A1 June 8, 2006
Patel US 2007/0037553 A1 Feb. 15, 2007

Rejection on Appeal
Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Patel, Semple, and Leung.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief2 and Reply Brief that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2–11) and in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 11–18) and concur with the conclusions
reached by the Examiner. For emphasis, we consider and highlight specific
arguments as presented in the Appeal Brief (Appeal Br. 6–14) and Reply
Brief (Reply Br. 1–6).
Claims 1, 13, and 15
Appellants contend the combination of Patel, Semple, and Leung fails
to teach or suggest all of the limitations of independent claims 1, 13, and 15.
Appeal Br. 6–9; Reply Br. 1–4. In particular, Appellants contend the

2 Our Decision refers to the Final Action, mailed Feb. 1, 2012 (“Final Act.”);
Appellants’ Appeal Brief, filed Aug. 22, 2012 (“Appeal Br.”); the
Examiner’s Answer, mailed Mar. 5, 2013 (“Ans.”); Appellants’ Reply Brief,
filed May 3, 2013 (“Reply Br.”); and the original Specification, filed May
13, 2008 (“Spec.”).
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references do not teach or suggest the limitations “transmitting, by the MS, a
binding update message for registering mobility binding of the MS to the
HA” and “wherein the binding update message includes a Mobile Node-
Home Agent Authentication Extension (MN-HA AE) generated using the
authentication key,” as recited in claim 1. See id. Appellants argue Leung
teaches “the Mobile-Home Authentication Extension is appended to a
registration request by a Foreign Agent (FA) and is not included in a binding
update message for registering mobility binding of the MS to the HA.”
Appeal Br. 6; Reply Br. 2. Appellants also argue Leung fails to teach or
suggest the binding update message includes a Mobile Node-Home Agent
Authentication Extension (MN-HA AE) generated using the authentication
key for mutual authentication between the MS and an HA. Appellants
further argue it would not be obvious or even possible to combine the
registration request in Leung with a binding update message in Patel because
the transmitting entities are different—a first FA in Leung and an MS in
Patel. Appeal Br. 8; Reply Br. 2. Appellants further argue the authentication
key of Leung is for the Node, whereas claim 1 recites an authentication key
for mutual authentication between the MS and the HA. Appeal Br. 8; Reply
Br. 2–3. Appellants further argue, even if Patel teaches an authentication
key between the MS and an HA, the Examiner acknowledges the
authentication key of Leung is not related to claim 1 and Patel fails to teach
the binding update message includes the authentication key; therefore, it is
not possible to derive a binding update message that includes an MN-HA AE
generated using the authentication key of claim 1. Appeal Br. 8–9; Reply Br.
3. Appellants further state that Semple fails to cure the noted deficiencies of
Leung and Patel. Appeal Br. 9; Reply Br. 3.
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Appellants’ arguments are not persuasive of Examiner error. The
Examiner’s rejection is based on the combined teachings of Patel, Semple,
and Leung (see Final Act. 2–4), but Appellants attack the references
individually, particularly Leung. Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). The relevant inquiry is whether the claimed
subject matter would have been obvious to those of ordinary skill in the art
in light of the combined teachings of the references. See In re Keller, 642
F.2d 413, 425 (CCPA 1981).
Regarding the limitations at issue, the Examiner finds Patel teaches a
Mobile Station (“MS”) transmitting a binding update message for registering
mobility binding of the MS to a home agent (“HA”). Final Act. 3 (citing
Patel ¶ 63). The Examiner finds Semple teaches an authentication key is
generated by a MS. Final Act. 3 (citing Semple ¶¶ 25, 38). The Examiner
further finds Leung teaches a Mobile Node-Home Agent Authentication
Extension (“MN-HA AE”) is generated by an authentication key. Final Act.
4 (citing Leung 7:62–8:17). The Examiner sets forth findings and reasons
with rational underpinnings concerning why it would have been obvious for
a person of ordinary skill in the art to modify Patel such that the
authentication key is generated by the MS, as taught by Semple, and to
modify Patel, as modified by Semple, such that the binding update message
of Patel includes a MN-HA AE generated by an authentication key, as taught
by Leung. Final Act. 3–5; see KSR Int’l Co. v. Teleflex Co., 550 U.S. 398,
418 (2007). We agree with the Examiner’s findings and reasons and
conclude the combined teachings of Patel, Semple, and Leung teach or
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suggest the limitations “transmitting, by the MS, a binding update message
for registering mobility binding of the MS to the HA” and “wherein the
binding update message includes a Mobile Node-Home Agent
Authentication Extension (MN-HA AE) generated using the authentication
key,” as recited in claim 1.
We further find Appellants’ arguments are not persuasive of error in
view of the detailed findings and reasons set forth by the Examiner in
response to each of Appellants’ above arguments. Ans. 11–16. We adopt
those findings as our own.
Thus, we sustain the Examiner’s rejection of claim 1 and the rejection
of claims 13 and 15, which are argued together with claim 1. We also sustain
the rejection of: claims 2–5 and 7–12, which depend from claim 1; claim14,
which depends from claim 13; and, claims 16–19, which depend from claim
15.
Claims 6 and 20
Appellants contend the portions of Patel relied on by the Examiner
(paragraphs 13, 39, and 51) do not teach or suggest the “verifying” and
“storing” limitations of claim 6 and the similar limitations of claim 20.
Appeal Br. 10–12; Reply Br. 4–5. Appellants argue it would not be obvious
or possible to combine the authentication key of Semple and the session key
of Patel because a generation object of the authentication key in Semple
differs from the generation object of the session key of Patel. Appeal Br.
11–12. Appellants also argue it would not be obvious or possible to combine
the session key of Patel, which is generated in AAA server, and the
authentication key of Semple, which is generated by the MS. Appeal Br. 12.
The Examiner finds the “verifying” limitation of claim 6 is taught by the
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combined teachings of Patel (citing paragraph 39) and Semple (citing
paragraphs 25 and 38, which teach an authentication key is generated by a
MS). Final Act. 3, 8; Ans. 16–17. The Examiner also finds the “storing”
limitation is taught by Patel (citing paragraph 51). Final Act. 8.
We agree with the Examiner’s findings and are not persuaded by
Appellants’ arguments. Regarding the “verifying” limitation, the Examiner
finds, and we agree, the combined teachings of paragraph 39 of Patel and the
teaching of Semple of an authentication key generated by a MS teach the
“verifying” limitation of claim 6. Final Act. 8; Ans. 16–17. Even though the
word “verify” or “verifying” is not used in Patel, it teaches verification of
the authentication information upon receipt of the binding acknowledgment
message because it teaches “[o]nce the binding update is created at the
Home Agent, a subsequent binding update and binding acknowledgment
exchange takes place between the Mobile Node and Home Agent, enabling
the Mobile Node to be authenticated at the Home Agent.” Patel ¶ 39. It is
well established that a reference need not disclose a claim limitation in haec
verba in order to satisfy that limitation for purposes of anticipation or
obviousness. See In re Bode, 550 F.2d 656, 660 (CCPA 1977).
We are not persuaded by Appellants’ argument that “a generation
object of the authentication key in Sample (sic) differs from the generation
object of the session key of Patel” (Appeal Br. 11), because, as the Examiner
finds (Ans. 17), this is merely a conclusory statement, and Appellants fail to
provide any specific reasons or explanation of why the respective teachings
of Patel and Semple are not combinable. Regarding Appellants’ argument
that Patel and Semple cannot be combined because the session key of Patel
is generated in AAA server and the authentication key of Semple is
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generated by the MS, we are not persuaded because this argument is
premised on a “physical” or “bodily” incorporation of the teaching of
Semple into the teachings of Patel, which is not the standard. See In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”) (citations omitted); Keller, 642 F.2d at 425 (The
“test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference. . . .
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”). Moreover, “[a] reference
must be considered for everything it teaches by way of technology and is not
limited to the particular invention it is describing and attempting to protect.”
EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985)
(emphasis omitted).
Regarding the “storing” limitation, we agree with the Examiner’s
finding that Patel teaches this limitation because it teaches the session key is
retained for future use, as for example in composing the revocation request
message described in paragraph 51 of Patel, which at least suggests storing
the authentication key. See Final Act. 8.
Thus, we sustain the Examiner’s rejection of claim 6 and claim 20,
which is argued together with claim 6.

DECISION
The Examiner’s decision rejecting claims 1–20 under 35 U.S.C.
§ 103(a) is affirmed.
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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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