Neeraj Bhatia et al.

Patent Trials and Appeals Board

Mar 2, 2020

13931708 - (D) (P.T.A.B. Mar. 2, 2020)

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.
13/931,708 06/28/2013 Neeraj Bhatia 030284.06428/123455 3069
15142 7590 03/02/2020
Arent Fox, LLP and Qualcomm, Incorporated
1717 K Street, NW
Washington, DC 20006-5344
EXAMINER
DESROSIERS, EVANS
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
03/02/2020 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):
ocpat_uspto@qualcomm.com
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte NEERAJ BHATIA and JEREMY O’DONOGHUE1
_____________

Appeal 2018-003508
Application 13/931,708
Technology Center 2400
______________

Before ROBERT E. NAPPI, JENNIFER S. BISK, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1 through 4, 6 through 17, 19 through 30, and 32 through
40. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

INVENTION
The invention is directed to a communications apparatus, which has a
secure element in which a portion of the secure element is integrated into a
system on chip (SoC). Abstract and Paragraph 1 of Appellant’s

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as the assignee
Qualcomm Incorporated. Appeal Br. 4.
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Specification. Claim 1 is illustrative of the invention and is reproduced
below:
1. An apparatus for communications, comprising:
a secure element (SE) that comprises a processor, random
access memory (RAM), and non-volatile memory (NVM),
wherein the SE further comprises a secured component and an
unsecured component, wherein the secured component is
integrated into a system on chip (SoC) forming a near field
communication controller (NFCC) or a mobile station modem
(MSM) of the apparatus, wherein the unsecured component
and the secured component are coupled through an interface,
and wherein the SE is configured to:
receive a request to access an application stored on the
SE that is accessible through information stored in the SE;
retrieve from the secured component of the SE a first
portion of the information associated with the application
wherein the secured component comprises the processor and
the RAM;
obtain from the unsecured component of the SE a second
portion of the information associated with the application,
wherein the second portion of the information comprises
computer executable code for the application stored in the
NVM within the unsecured component; and
facilitate access to the application using the first retrieved
portion of the information to enable access to the second
obtained portion of the information.

REJECTION AT ISSUE2
The Examiner has rejected claims 1 through 4, 6 through 17, 19
through 30, and 32 through 40 under 35 U.S.C. § 103(a) as being

2 Throughout this Opinion, we refer to the Appeal Brief, filed October 19,
2017 (“Appeal Br.”), the Examiner’s Answer, mailed December 8, 2017
(“Answer”), and the Final Office Action, mailed May 22, 2017 (“Final
Act.”).
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unpatentable over Guthery (US 2010/0230490 A1; published Sept. 16, 2010)
and Rhoads (US 2002/0114492 A1; published Aug. 22, 2002). Answer 3–
10.
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejections of claims 1 through 4, 6 through 8, 11 through 17, 19
through 21, 24 through 30, 32 through 34, and 37 through 40 under
35 U.S.C. § 103(a), however reverse the rejection under 35 U.S.C. § 103(a)
of claims 9, 10, 22, 23, 35, and 36.
Rejections under 35 U.S.C. § 103(a)
With respect to independent claim 1, Appellant argues that the
combination of Guthery and Rhoads does not teach the claimed features of:
a) the secure element comprises a secured component and an unsecured
component; b) the secured element is integrated into an system on a chip
forming a near field controller or a mobile station modem; and c) obtaining
from the unsecured component of the secured element a portion of the
information associated with an application. Appeal Br. 9–13. In these
arguments the Appellant equates Guthery’s Secure Access Module (SAM)
item 116 to the claimed secured element and asserts that Guthery does not
teach features a)–c) above as found by the Examiner. Id. Further,
Appellant, similarly equating Guthery’s SAM to the claimed secured
element, argues that the Examiner has not provided an adequate rationale for
combining the teaching of Guthery and Rhoads. Appeal Br. 14–15.
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With respect to feature a) the Examiner finds that Guthery teaches a
secured element with a secured component and an unsecured component.
Specifically, the Examiner equates Guthery’s card-accessing device item
104 with Appellant’s claimed secure element and finds that the card access
device includes a secure element, item 124 (equated to the claimed secure
component) and an unsecured processor and memory items 108, 112
(equated to the claimed unsecured component). Answer 10–11 (citing
Guthery, Fig. 1, ¶¶ 24, 26). We concur with the Examiner’s claim
interpretation and findings with regard to Guthery. As discussed above,
Appellant’s arguments are premised upon the claimed secure element being
equated to Guthery’s secured access module. We do not consider claim 1 to
require such a mapping nor has Appellant persuaded us that the Examiner’s
mapping of the claimed secure element with the card access device is
unreasonable. Thus, Appellant’s arguments have not persuaded us the
Examiner erred in finding the combination of the references teach that the
secure element comprises a secured component and an unsecured
component.
With respect to feature b) the Examiner finds that Guthery teaches a
secured element is integrated into a system on a chip forming a near field
controller or a mobile station modem. Answer 11 (citing Guthery, Fig. 1,
¶¶ 22, 27). We concur with the Examiner’s finding. We are not persuaded
by Appellant’s arguments that the Examiner’s reliance on paragraph 22 of
Guthery, which teaches that the portable card, item 148, can include a Near
Filed Communications enabled device, is erroneous as the card is not part of
the system on the chip. Appeal Br. 11–12. While we concur with Appellant
that paragraph 22 of Guthery discusses the card as being a near field
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communications enabled device, this does not persuade us of error. The
card access device (which the Examiner equates to the secure element
system on a chip) communicates wirelessly with the card (near field
communication enabled) via card interface item132 and/or 120, thus;
suggesting that the communions interface is a near field controller or a
mobile station modem. See Guthery ¶¶ 31–33. Accordingly, Appellant’s
arguments have not persuaded us the Examiner erred in finding the
combination of the references teaches or suggests a secured element is
integrated into a system on a chip forming a near field controller or a mobile
station modem.
With respect to feature c) the Examiner finds that Guthery teaches
obtaining from the unsecured component of the secured element a portion of
the information associated with an application. Answer 11 (citing a quote
from Guthery, ¶ 53). Appellant argues that none of the cited portions of
Guthery describes obtaining portions of the information from an unsecured
component. Appeal Br. 12. We concur with the Examiner and note the
language quoted by the Examiner is not in paragraph 53 of Guthery but
rather in paragraph 47. Guthery paragraph 47 states “then the SAM 116
may relinquish control of the transaction from to the unsecure environment
of the card-accessing device such that the next step of the transaction can be
completed by the processor 108 residing within the unsecure environment.”
Appellant’s arguments have not identified why this teaching does not meet
the disputed claim limitation, accordingly, we are not persuaded the
Examiner erred in finding the combination of the references teaches or
suggests an obtaining from the unsecured component of the secured element
a portion of the information associated with an application.
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With regard to the rationale to combine the references, Appellant
states:
In particular, since Rhoads does not disclose or suggest any
alternative integrated circuit or operation thereof, the combined
system would still relinquish control of the transaction from the
Secure Access Module to an unsecure environment of the card-
accessing device as described in Guthery. Therefore, even if
the unsecure environment of the card-accessing device were
modified to employ the steganographic techniques of Rhoads,
the combined system would not “obtain from the unsecured
component of the SE a second portion of the information
associated with the application, wherein the second portion of
the information comprises computer executable code for the
application stored in the NVM within the unsecured
component,” as recited in claim 1 because control has been
relinquished to the unsecure environment outside of any secure
element. That is, because the system of Guthery relinquishes
control of the transaction from the SAM to an unsecured
environment, even if the data were steganographically encoded,
the processor 108 is unsecure, so the SAM of Guthery would
not obtain data from the processor 108 because any such data
would be unsecure.

Appeal Br. 14–15.
We are not persuaded of error by this argument as it is not
commensurate with the Examiner’s claim interpretation and does not address
the Examiner’s rationale to combine. As with the other arguments discussed
above, Appellant’s rationale to combine argument is premised upon the
claimed secure element being equated to Guthery’s secured access module.
As discussed above, we concur with the Examiner’s claim interpretation
equating Guthery’s card-accessing device (item 104) with the claimed secure
element. Thus, the Examiner’s combination is adding Rhodes stenographic
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operation to Guthery’s card accessing device (not the secure access module
as argued by Appellant) to make it more difficult for hackers to gain access
to the content. Answer 10–14; Final Act. 5–6. As such, we are not
persuaded the Examiner erred in combining the teachings of Guthery and
Rhodes. Accordingly, we sustain the Examiner’s rejection of claim 1 and
claims 2 through 4, 6, 7, 11 through 17, 19, 20, 24 through 30, 32, 33, and
37 through 40, which are not separately argued and thus grouped with claim
1.
Dependent claims 8 through 10, 21 through 23, and 34 through 36
Appellant argues that the Examiner’s rejection of these claims
erroneously asserts that Guthery teaches a) the footprint of the secure
element is minimized by integrating only the secured component into the
system on chip (claim 8); b) the secure component of the secure element is
less than or equal to 65nm (claim 9); and c) the security shielding for the
secured component includes one or more existing metal layer associated
with the system on the chip. Appeal Br. 15–16.
The Examiner cites to paragraph 9 of Guthery as teaching the
limitations of claims 8 through 10, 21 through 23, and 34 through 36, and
asserts that the limitations are a design choice. Final Act. 8, 10; Answer 20.
Appellant’s arguments have not persuaded us of error with respect to
the Examiner’s rejection of claims 8, 21, and 34. Each of these claims
recites the footprint of the secure element is minimized by integrating only
the secured component into the system on chip. As discussed above, the
Examiner has equated Guthery’s secure element (item 124) with Appellant’s
claimed secure element. Guthery Figure 1, paragraphs 27 and 31 suggest
that the secure element (item 134) may be the only device on the chip as the
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interfaces may be in the card accessing device. Accordingly, we find that
Guthery teaches or suggest the limitations of claims 8, 21, and 34.
Regarding claims 9, 10, 22, 23, 35, and 36, which recite the secure
component of the secure element is less than or equal to 65nm or wherein
the security shielding for the secured component includes one or more
existing metal layer associated with the system on the chip. We have
reviewed the teachings of Guthery and do not find sufficient evidence to
support the Examiner’s finding that these features are taught or suggested by
Guthery, nor do we find that the Examiner has provided sufficient rationale
or evidence to show that they represent obvious design choices.
CONCLUSION
The Examiner’s decision rejecting claims 1 through 4, 6 through 17,
19 through 30, and 32 through 40 is affirmed–in–part.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–17,
19–30, 32–
40
103 (a) Guthery and Rhoads 1–4, 6–8,
11–17, 19–
21, 24–30,
32–34, 37–
40
9, 10, 22,
23, 35,
36.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART