Ex Parte Vogel

Board of Patent Appeals and Interferences

Oct 19, 2007

09659864 (B.P.A.I. Oct. 19, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte J. LESLIE VOGEL III
____________

Appeal 2007-1121
Application 09/659,864
Technology Center 2100
____________

Decided: October 19, 2007

Before KENNETH W. HAIRSTON, JEAN R. HOMERE, and
JOHN A. JEFFERY, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1 through 51. We have jurisdiction under 35 U.S.C.
§ 6(b) to decide this appeal. We affirm.

The Invention
Appellant invented a method and system for establishing a secure
wireless communications channel encrypted with a channel key between an
access point and a user station (Specification 4).
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An understanding of the invention can be derived from exemplary
independent claim 1, which reads as follows:
1. A computerized method of establishing a secure wireless
communications channel between an access point and a station, the channel
being encrypted with a channel key, the method comprising:
sending, by the station to the access point through a setup connection,
a request for a security preference for the access point;
sending, by the access point to the station through the setup
connection, the security preference in response to the request when the
access point can support the channel, wherein the security preference
specifies one authentication protocol from a set of authentication protocols
supported by the access point;
generating, by the station, authentication information using a first key
when the security preference is shared key;
sending, by the station to the access point through the setup
connection, the authentication information;
validating, by the access point, the station using the authentication
information; encrypting, by the access point, the channel key using a second
key;
sending, by the access point to the station through the setup
connection, the encrypted channel key;
decrypting, by the station, the channel key in response to receiving the
encrypted channel key; and
sending, by the station to the access point, data encrypted with the
channel key to establish the channel.

In rejecting the claims on appeal, the Examiner relies upon the
following prior art:
Quick, Jr. US 6,178,506 B1 Jan. 23, 2001
Filed Oct 23, 1998
Lewis US 6,526,506 B1 Feb. 25, 2003
Filed Feb. 25, 1999
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Schneier, B., “Applied Cryptography, Second Edition: Protocols,
Algorithms, and Source Code in C”, 1996 pages 513-515.
ANSI/IEEE Std. 802.11, “Information technology-Telecommunication and
information exchange between systems-Local and metropolitan
area networks-specific requirements-Part 11: Wireless LAN
Medium Access Control (MAC) and Physical Layer (PHY)
Specifications.” 1999.

The Examiner rejects the claims on appeal as follows:
A. Claims 1 through 3, 9 through 17, 19 through 22, 24 through 27, 29
through 32, 34 through 38, 40 through 48, 50, and 51 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Lewis and
Quick.

B. Claims 4 through 8, 18, 23, 28, 33, 39, and 49 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Lewis,
Quick, and Schnieier.

First, Appellant contends1 that the combined teachings of the
references do render claims 1 through 51 unpatentable. Particularly,

1 This decision considers only those arguments that Appellant submitted in
the Appeal Brief of July 21, 2007 and the Reply Brief of January 12, 2007.
Any other arguments that Appellant could have made but did not make in
the Briefs are deemed to have been waived. See 37 C.F.R. §
41.37(c)(1)(vii)(eff. Sept. 13, 2004). See also In re Watts, 354 F.3d 1362,
1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).
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Appellant contends that neither Lewis nor Quick teaches or suggests an
access point that supports a plurality of protocols, as recited in independent
claim 1. (Br.6, Reply Br. 2). In response, the Examiner contends that
Lewis’ disclosure of a wireless network in accordance with the IEEE 802.11
standard teaches the cited limitation. (Answer 14).
Second, Appellant contends that the combination of Lewis and Quick
does not teach or suggest generating authentication information using a key.
(Br. 6, Reply 2). In response, the Examiner contends that Quick’s disclosure
of encrypting conventional registration information (ID and password) with
a concatenated key teaches the cited limitation. (Answer 16).
ISSUE
The pivotal issue in the appeal before us is as follows:
Has Appellant shown2 that the Examiner failed to establish that the

2 In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). When
that burden is met, the burden then shifts to the applicant to rebut. Id.; see
also In re Harris, 409 F.3d 1339, 1343-44, 74 USPQ2d 1951, 1954-55 (Fed.
Cir. 2005) (finding rebuttal evidence unpersuasive). If the applicant
produces rebuttal evidence of adequate weight, the prima facie case of
unpatentability is dissipated. Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
Thereafter, patentability is determined in view of the entire record. Id.
However, Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86,
78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (“On appeal to the Board, an
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combined disclosures of Lewis and Quick render the claimed invention
unpatentable under 35 U.S.C. § 103(a)? Particularly, does the combination
of Lewis and Quick render the claimed invention unpatentable, given that
the cited combination teaches (1) a wireless network conforming to the IEEE
802.11 standard and (2) encrypting conventional registration information
(ID and password) with a concatenated key?

FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence.
The Invention
1. As depicted in Figure 2, Appellant invented a method, system, and
computer-readable medium for establishing a secure wireless
communications channel (223) encrypted with a channel key between an
access point (203) and a user station (201) (Specification 10).
2. Upon receiving a request for a connection (207) from the user station
(201) through a setup connection (205), the access point (203) sends a
security preference (209) to the user station (201) through the setup
connection when the access point can support the channel. (Id. 11).

applicant can overcome a rejection [under § 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.”) (quoting In re
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3. The security preference is a shared key that specifies an authentication
protocol from a set of protocols supported by the access point.3 (Id.).
4. Upon receiving the shared key, the user station uses a first key to
generate authentication information, which is sent to the access point to
validate the user station. After validating the user station, the access point
uses a second key to encrypt the channel key, which is forwarded to the user
station. The user station decrypts the channel key and returns the channel
key to the access point with encrypted data to establish the communication
channel between them. (Id. 11-12).
5. Appellant’s background of the invention states the following:

One approach to the problem of wireless connection security is
addressed by the IEEE in the 802.11 standard for Wireless LAN
Medium Access Control (MAC) and Physical Layer (PHY)
Specifications, Draft International Standard ISO/IEC 8802-11 IEEE
P802.11/D10, 14 January 1999 (hereinafter “the 802.11 standard”).
The 802.11 standard specifies an Infrastructure Network that provides
wireless stations access to resources on a wired local area network
(LAN) by way of an access point, such as a server on the wired LAN.

Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1455 (Fed. Cir. 1998)).
3 Particularly, at page 11, lines 4 through 7, Appellant’s Specification states
the following:
The user station 201 sends a request 207 for a connection to the AP
203. If the AP 203 can handle a new connection, it sends its security
preference 209, in this case “shared key” to the user station 201. The
request 207 and the security preferences 209 form an inquiry sequence
205 between the station 201 and the AP 203.
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The Infrastructure Network can be secured using a shared key to
establish a Wired Equivalency Privacy (WEP) connection between the
access point and each station, such as a desktop, laptop, or handheld
computer. The shared keys are distributed to the stations through
secure channels outside the wireless network.
(Specification 3, emphasis added).

6. Appellant’s Specification further states the following:

The invention is particularly suited for use with Infrastructure
Networks defined by the 802.11 standard. An Infrastructure Network
provides wireless stations access to resources on a wired LAN by way
of an AP. The AP specifies whether access to the LAN is open to all
stations (“Open Systems”) or secured through a Wired Equivalent
Privacy (WEP) protocol using a shared key and a WEP encryption
algorithm (“Shared Key”). The 802.11 standard assumes that the
shared WEP key is distributed through some secure channel as
described above by exchanging messages between the station and the
AP using the 802.11 standard message format.
(Specification 19:1-9, emphasis added).

7. In the Appeal Brief, Appellant states the following:

Appellant respectfully submits that “open system” and “shared
key” are well-known authentication protocols in the wireless
networking art. In support of Appellant’s assertion, Appellant is
submitting , in the attached Evidence Appendix, the section 8.1f IEEE
802.11 standard, which states that both “open system” and “shared
key” are authentication services and further specifies the particular
message frames that form the protocols for the two authentication
services.
(Brief 4, emphasis added).

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The Prior Art Relied Upon
8. As depicted in Figure 1, Lewis teaches a multi-level encryption
system for establishing a wireless communication channel between a
mobile terminal (66) and an access point (54). (Col. 2, ll. 47-49; col.
4, ll. 28-34).
9. Lewis teaches a key distribution server (76) for providing access of an
encryption key (authentication protocol) to an authorized mobile
terminal in response to a request from the mobile terminal to access
the wireless network. The key distribution server subsequently
informs the access point that the mobile station is authorized to access
the system. (Col. 5, ll. 36-50).
10. The access point validates messages received from the mobile
terminal by ensuring that the messages have been properly encrypted
with the encryption key. (Col. 5, ll. 54-56).
11. Lewis teaches two types of encryption keys used in the disclosed
system. First, the ENCRYPT key is used to encrypt and decrypt
messages transmitted between the access point and the mobile
terminal, and is similar to the encryption key used in the WEP
protocol in the IEEE 802.11 standard. (Col. 6, ll. 43-51). Second, the
MASTER key is programmed within the mobile terminal to encrypt
messages transmitted from the mobile terminal to the key distribution
server. (Col. 6, ll. 60-67).

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12. The access point can provide the mobile terminal with a new
ENCRYPT key using the previous encrypt key and instruct the
processor in the mobile terminal to begin to use the new ENCRYPT
key. (Col. 6, ll. 55-58).
13. Quick teaches a system for transferring the subscription of a wireless
service to a new wireless terminal. Particularly, to register a new
terminal to an existing wireless service, the subscriber enters personal
identification number and password. The terminal generates a
public/private key pair, concatenates the public key with a random
number and encrypts the concatenated number with a password. (Col.
4, ll. 45-58).

PRINCIPLES OF LAW
OBVIOUSNESS (Prima Facie)
The Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17-18,
148 USPQ 459, 467 (1966), stated that the following factual inquiries
underpin any determination of obviousness:
Under § 103, [1] the scope and content of the prior art are to be
determined; [2] differences between the prior art and the claims
at issue are to be ascertained; and [3] the level of ordinary skill
in the pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such (4) secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented. As
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indicia of obviousness or nonobviousness, these inquiries may
have relevancy.
Where the claimed subject matter involves more than the simple
substitution one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement, a holding
of obviousness must be based on “an apparent reason to combine the known
elements in the fashion claimed.” KSR Int’l v. Teleflex, Inc., 127 S. Ct.
1727, 1740-41, 82 USPQ2d 1385, 1396 (2007). That is, “there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id., 127 S. Ct. at 1741, 82 USPQ2d at
1396 (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006)). Such reasoning can be based on interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. KSR, 127 S. Ct. at 1740-41, 82
USPQ2d at 1396.
ANALYSIS
35 U.S.C. § 103(a) REJECTION
We begin our analysis by first noting that, as set forth above,
independent claim 1 requires that the access point send to the user station a
security preference that specifies an authentication protocol from a set of
authentication protocols supported by the access point. We find that the
combination of Lewis and Quick reasonably teaches that limitation. As
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detailed in the Findings of Fact section above, we have found that Lewis
teaches the access point for sending a new ENCRYPT key to the mobile
terminal, where the new ENCRYPT key is intended to replace an existing
ENCRYPT key that the key distribution server had used to transfer messages
between the mobile terminal and the access point in response to a request
made by the mobile terminal to access the wireless network. (Findings 8-10
and 12). Further, we have found that the ENCRYPT key is similar to the
encryption key used in the WEP protocol in the IEEE 802.11 standard.
(Finding 12). Additionally, we have found that under the IEEE 802.11
standard, “open system” and “shared key” are authentication protocols that
are routinely used in the communication between an access point and a user
station. (Finding 7). We agree with the Examiner that one of ordinary skill
would have readily recognized that the disclosed ENCRYPT key
conforming to the IEEE 802.11 standard teaches a security preference or
authentication protocol (WEP) from the plurality of protocols routinely
offered by the IEEE 802.11 standard. Similarly, the ordinarily skilled
artisan would have recognized that the access point used in the IEEE 802.11
standard necessarily supports the plurality of protocols offered by that
standard.4 Therefore, we find no merit in Appellant’s argument that Lewis’

4 We note that the limitation whereby the access point can support a plurality
of protocols (as recited in claim 1) is inferred from the statement on page 11
of Appellant’s Specification that the request (207) and security preferences
(209) form an inquiry sequence (205) between the user station (201) and the
access point (203). Similarly, the WEP protocol in Lewis that conforms to
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disclosure of exchanging network encryption keys does not teach the
claimed exchange of security preferences. Similarly, we disagree with
Appellant’s argument that Lewis’ disclosure of the new ENCRYPT key is
not in response to a request submitted by the mobile terminal.
Second, as set forth above, we note that independent claim 1 further
requires that the user station generate authentication information using a first
key. We find that the combination of Lewis and Quick reasonably teaches
that limitation. We have found in the Findings of Fact section above, that
Quick teaches a terminal that concatenates a generated public key with a
random number to encrypt conventional registration information (e.g.
password) entered by a user. (Finding 13). We agree with the Examiner that
one of ordinary skill in the art would have readily recognized that by
encrypting the user-entered registration information with a generated key,
the Quick’s terminal generates authentication data permitting the new
terminal to be registered for an existing wireless service. We affirm this
rejection.
It follows that the Examiner did not err in rejecting independent claim
1 as being unpatentable over the combination of Lewis and Quick. We find

the IEEE 802.11 standard, which entails a plurality of protocols in the
communication of an access point and a user terminal, must necessarily
involve a plurality of protocols supported by the access point.
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for these same reasons that claims 2, 3, 9 through 17, 19 through 22, 24
through 27, 29 through 32, 34 through 38, 40 through 48, 50, and 51 are
unpatentable over the combination of Lewis and Quick. We affirm this
rejection.
Now, we turn to the rejection of claims 4 through 8, 18, 23, 28, 33, 39
and 49 as being unpatentable over the combination of Lewis, Quick, and
Schnieier. Appellant reiterates that the combination of Lewis and Quick
fails to teach or suggest an access point that sends a security preference to a
user terminal. We have already addressed this argument in the discussion of
independent claim 1 above, and we disagreed with Appellant. Appellant
further contends that Schnieier does not cure the alleged deficiencies of the
Lewis and Quick combination. We find no such deficiencies in the cited
combination for Schnieier to cure. It follows that the Examiner did not err in
rejecting claims 4 through 8, 18, 23, 28, 33, 39, and 49 as being unpatentable
over the combination of Lewis, Quick, and Schnieier. We affirm this
rejection.

CONCLUSION OF LAW
On the record before us, Appellant has not shown that the Examiner
failed to establish that claims 1 through 3, 9 through 17, 19 through 22, 24
through 27, 29 through 32, 34 through 38, 40 through 48, 50, and 51 are
unpatentable over the combination of Lewis and Quick under 35 U.S.C.
§ 103. Similarly, Appellant has not shown that the Examiner failed to
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establish that claims 4 through 8, 18, 23, 28, 33, 39, and 49 are unpatentable
over the combination of over Lewis, Quick, and Schnieier under 35 U.S.C.
§ 103.
DECISION
We have affirmed the Examiner’s decision rejecting claims 1 through
51.

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).

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AFFIRMED

eld

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