Ex Parte Sundaram et al

Patent Trial and Appeal Board

Aug 12, 2016

12503051 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/503,051 07/14/2009 Ganapathy S. Sundaram
46304 7590 08/16/2016
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
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.
805411 7345
EXAMINER
LANIER, BENJAMINE
ART UNIT PAPER NUMBER
2437
NOTIFICATION DATE DELIVERY MODE
08/16/2016 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):
nyoffice@rml-law.com
jbr@rml-law.com
ipsnarocp@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte GANAPATHY S. SUNDARAM and
HARISH VISWANATHAN1
Appeal2014-007004
Application 12/503,051
Technology Center 2400
Before JOHN F. HORVATH, AMBER L. HAGY, and
MICHAEL M. BARRY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-17, 19-24, 26-34, 36, and 37.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as Alcatel-Lucent. (App. Br.
1.)
2 The Examiner has withdrawn the rejections of claims 18 and 35. (Ans. 3.)
Claims 18, 25, and 35 are objected to as being dependent on rejected base
claims, but the Examiner has indicated these claims would be allowable if
rewritten in independent form. (Final Act. 15; Ans. 3.) These claims are not
before us.
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Application 12/503,051
Introduction
According to Appellants, "[t]he present invention relates generally to
communication security and, more particularly, to an automated security
provisioning protocol for wide area network communication devices in an
open device environment, such as cellular communication devices in a
machine-to-machine (M2M) environment." (Spec. 1 :5-8.)
Exemplary Claim
Claim 1, reproduced below, is exemplary of the claimed subject
matter:
1. A method for performing a security provisioning
protocol between a first communication device and a second
communication device over at least one wide area
communication network, the method at the first communication
device comprising steps of:
the first communication device automatically using access
information not previously provisioned in the wide area
communication network to gain access to the wide area
communication network for an initial purpose of communicating
with the second communication device; and
the first communication device, upon gaining access to the
wide area communication network, automatically performing an
authenticated key exchange operation with the second
communication device over the wide area communication
network and establishing a secure communication key as a result
of the authenticated key exchange operation for subsequent use
by the first communication device for secure communications;
wherein the wide area communication network is operated
by a first entity and the second communication device is operated
by a different second entity.
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Application 12/503,051
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Victor Boyko, Philip MacKenzie, and Sarvar Patel, "Provably Secure
Password-Authenticated Key Exchange Using Diffie-Hellman," B.
Preneel (ed.), Eurocrypt '00, Springer-Verlag (2000) LNCS no. 1807, pp.
156-71 (hereafter "Boyko").
Xuefei Cao, W eidong Kou, Yong Yu, and Rong Sun, "Identity-Based
Authentication Key Agreement Protocols Without Bilinear Pairings,"
IEICE Trans. Fundam., E91-A (12) (Dec. 2008) (hereafter "Cao").
3rd Generation Partnership Project; Technical Specification Group
Services and System Aspects; Feasibility Study on the Security Aspects
of Remote Provisioning and Change of Subscription for Machine to
Machine (M2M) Equipment (Release 9), 3GPP TR 33.812 Vl.4.0 (June
2009) (hereafter "3GPP").
Miller US 8,041,035 B2 Oct. 18, 2011
REJECTIONS
Claims 1-15, 21, 23, 24, and 26-37 stand rejected under 35 U.S.C.
§ 102(a) as being anticipated by 3GPP. (Final Act. 3-12.)
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over 3GPP and Miller. (Final Act. 12.)
Claims 16-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over 3GPP and Cao. (Final Act. 13-14.)
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over 3GPP and Boyko. (Final Act. 15.)
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Application 12/503,051
ISSUE
Whether the Examiner erred in finding 3GPP teaches "wherein the
wide area communication network is operated by a first entity and the
second communication device is operated by a different second entity," as
recited in independent claim 1 and commensurately recited in independent
claims 32, 36, and 37.
ANALYSIS
Appellants argue the Examiner's finding of anticipation of claim 1 is
in error because, inter alia, 3 the Examiner has incorrectly mapped elements
of the 3GPP disclosure to the disputed limitation "wherein the wide area
communication network is operated by a first entity and the second
communication device is operated by a different second entity." In
particular, the Examiner maps the claimed "first entity" to the Registration
Operator ("RO") taught by 3GPP, and maps the claimed "second entity" to
the Visited Network Operator ("VNO"). (Final Act. 3--4 (citing 3GPP
pp. 22, 23).)
Appellants argue the Examiner's findings are in error because the RO
is not taught by 3GPP as being the operator of a wide area communication
network, as claim 1 requires of the first entity. (App. Br. 8-9.) We agree.
Although, as Appellants acknowledge, 3GPP teaches the RO may also be a
network operator, Appellants correctly note this is in the "specific and
limited situation in which the RO and the VNO are the same entity." (App.
Br. 9 (citing 3GPP at section 5.1.3.6.2).) As Appellants further correctly
3 Because the issue addressed herein is dispositive of the Examiner's
rejections, we do not reach the additional arguments raised by Appellants.
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Application 12/503,051
note, "[i]n this limited context, ... the operator of the second
communication device (the VNO as alleged by the Examiner) and the
operator of the wide area communication network (the RO which is identical
to the VNO) are clearly the same entity, rather than different first and second
entities as recited in claim 1." (App. Br. 9.)
The Examiner responds by asserting "the rejection is not relying on
the RO and the VNO being the same" to find the RO is a network operator,
but finds the RO disclosed in 3GPP is a network operator in its own right.
(Ans. 4.) The Examiner premises this finding on construing "network
operator" broadly as "providing network connectivity," based on the
Examiner's reading of the Specification as "disclos[ing] that the cellular
network operator provides network connectivity .... " (Id. (citing Spec.
33:24--26).) The Examiner then finds because the RO disclosed in 3GPP
"provides initial connectivity to the network ... [,] the RO described in
3GPP can be considered a network operator using a broad but reasonable
interpretation of the claims in light of the specification." (Ans. 4.)
We disagree with the Examiner that the RO taught by 3GPP is a
"network operator" within the meaning of claim 1 (except in the context
where the RO and the VNO are the same). Contrary to the Examiner's
reading, Appellants' Specification does not describe a "network operator"
broadly as any entity that "provides network connectivity" (see Ans. 3), by
which the Examiner appears to mean enables connectivity to a network. The
portion of the Specification cited by the Examiner as support for that
construction does not, in fact, support the Examiner's reading. The
Specification states: "The bootstrapping protocol presented herein can be
extended to the model where the cellular network operator provides
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Application 12/503,051
connectivity directly to the application providers, rather than through the
M2M operator." (Spec. 33:24--26.) This statement does not support
including within the scope of a "network operator" any entity that helps
provide connectivity to the network. Rather, this statement simply describes
a particular type of connectivity in which "there is no M2M operator
involved" but only the cellular network operator. (Spec. 33:29-30.) The
Specification otherwise consistently describes a "network operator" as an
operator of an entire network-giving as an example of a network a
"publicly accessible wide area communication network such as a cellular
communication network operated by a network operator (e.g., Verizon,
AT&T, Sprint)." (Spec. 35:10-12 (emphasis added).) The Examiner does
not find the RO disclosed in 3GPP qualifies as such. Nor would such a
finding be supported by 3GPP, which teaches the RO provides "initial
connectivity to the M2ME." (3GPP p. 22.) 3GPP further discloses the
connection between the M2ME and the RO is "via the air interface provided
by the VNO's network." (Id. p. 26 (emphasis added).)
Further illustrating error in the Examiner's findings is the Examiner's
failure to state, if the claimed "second entity" is mapped to the VNO taught
by 3GPP, what device operated by the VNO is mapped to the claimed
"second communication device." In that regard, we note our review is
impeded because the Examiner's findings in the Final Action consist only of
general cites to the 3GPP disclosure and do not explain the correlation of the
claimed "second communication device" to any device operated by the
VNO. (See Final Act. 3--4.) Appellants also apparently do not discern any
such correlation, as their briefing argues the Examiner maps the "second
communication device" to the VNO itself, and not to any particular device
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operated by the VNO. (See App. Br. 7; Reply Br. 3.) This mapping is
important to consideration of claim 1, as claim 1 not only requires the
"second communication device" be operated by a "different second entity,"
but also requires the "first communication device" must "automatically
perform[] an authenticated key exchange with the second communication
device .... " The Examiner provides no further guidance in the findings
regarding dependent claim 3, which specifies that the "second
communication device comprises a bootstrap server." (App. Br. 22 (Claims
App'x).) In rejecting claim 3, the Examiner broadly cites page 18 of 3GPP,
which refers to "bootstrapping functions" (Final Act. 4), but does not state
that such functions are performed by a device that is operated by the VNO.
Moreover, further disclosure in 3GPP suggests the bootstrapping function is
performed between the M2ME and the RO. (3GPP at pp. 23-26.) And, as
we have noted supra, the Examiner maps the RO to the first entity, not to the
second entity, which is the entity that is recited to operate the "second
communication device" I "bootstrap server." (Ans. 3--4.)
In short, although it is difficult to discern from the Examiner's
findings a clear mapping of claim elements to the prior art, we are persuaded
the Examiner erred at least in mapping the claimed "first entity" to the RO
described in 3GPP. The Examiner's mapping of the claimed "second entity"
to the VNO described in 3GPP is also in error, as noted above. The
Examiner's remaining findings, which are premised on these incorrect
findings, cannot support a finding of anticipation of claim 1 by 3GPP. We,
therefore, do not sustain the Examiner's 35 U.S.C. § 102(a) rejection of
claim 1 as anticipated by 3GPP. We also do not sustain the Examiner's
rejection of independent claims 32, 36, and 37, which contain the same
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disputed limitation discussed for claim 1. The Examiner's rejection of
dependent claims 2-17, 19-24, 26-31, 33, and 34 falls with the rejection of
the independent claims.
DECISION
For the above reasons, the Examiner's rejections of claims 1-17, 19-
24, 26-34, 36, and 37 are reversed.
REVERSED
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