Philip Hawkes et al.

Patent Trials and Appeals Board

Sep 23, 2019

13787510 - (D) (P.T.A.B. Sep. 23, 2019)

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.
13/787,510 03/06/2013 Philip HAWKES 122551 (1059592) 2367
15093 7590 09/23/2019
Kilpatrick Townsend & Stockton/Qualcomm
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
TENG, LOUIS C
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
09/23/2019 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):
ipefiling@kilpatricktownsend.com
ocpat_uspto@qualcomm.com
qcominst@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIP HAWKES, OLIVIER JEAN BENOIT,
and ANAND PALANIGOUNDER
____________

Appeal 2018-008873
Application 13/787,510
Technology Center 2400
____________

Before JOHN A. EVANS, MATTHEW J. McNEILL, and JASON M.
REPKO, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of all pending claims, i.e., Claims 1–11, 13, 15–
27, 29, 31–43, 45, 47–59, 61, and 63–72. App. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b).

1 We refer collectively to the inventors as “Appellant.” The Appeal Brief
identifies Qualcomm Incorporated, as the real party in interest. App. Br. 2.
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We REVERSE.2
STATEMENT OF THE CASE
The claims relate to a method for configuring an internal entity of a
WiFi-enabled remote station with a certificate. See Abstract.

INVENTION
Claims 1, 17, 33, and 49 are independent. An understanding of the
invention can be derived from a reading of illustrative Claim 1, which is
reproduced below with some formatting added:
1. A method for configuring an application-layer internal
entity of a WiFi-enabled remote station with an internal-entity
certificate, comprising:
receiving, by the remote station, the internal-entity
certificate and a registrar certificate in at least one WiFi
message from a registrar smartphone acting as a root-of-trust
certificate authority for the application-layer internal entity,
wherein the registrar certificate is self-signed by the registrar
smartphone;
providing, by the remote station, the internal-entity
certificate and the registrar certificate to the application-layer
internal entity; and

2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed April 16, 2018, “App. Br.”), the Reply Brief
(filed September 14, 2018, “Reply Br.”), the Examiner’s Answer (mailed
July 25, 2018, “Ans.”), the Final Action (mailed October 18, 2017, “Final
Act.”), and the Specification (filed October 15, 2014, “Spec.”) for their
respective details.
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securely communicating, by the application-layer internal
entity, with an external entity based on the internal-entity
certificate and the registrar certificate.

References and Rejections
Yeager US 2005/0086300 A1 Apr. 21, 2005
Aull US 7,475,250 B2 Jan. 6, 2009
Averbuch US 8,724,515 B2 Filed Sep. 16, 2011
Wi-Fi Alliance, Wi-Fi Protected Setup Specification [“WPS”], Version 1.0h,
Dec. 2006, https://www.wi-fi.org/.
Ken Holbrook, ed., Smart Energy Profile version 2.0 Technical
Requirements Document, ZigBee Alliance and HomePlug Powerline
Alliance, Feb. 3, 2012.

The Claims stand rejected as follows:
1. Claims 1, 5–11, 13, 16, 17, 21–27, 29, 32, 33, 37–43, 45, 48, 49, 53–
59, 61, and 64–72 stand rejected under pre-AIA 35 U.S.C. 103(a) as
being unpatentable over WPS, Holbrook, and Averbuch. Final Act.
5–12.
2. Claims 2–4, 18–20, 34–36, and 50–52 stand rejected under pre-AIA
35 U.S.C. 103(a) as being unpatentable over WPS, Holbrook,
Averbuch, and Aull. Final Act. 12–14.
3. Claims 15, 31, 47, and 63 stand rejected under pre-AIA 35 U.S.C.
103(a) as being unpatentable over WPS, Holbrook, Averbuch, and
Yeager. Final Act. 14–15.
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ANALYSIS
We have reviewed the rejections of Claims 1–11, 13, 15–27, 29, 31–
43, 45, 47–59, 61, and 63–72 in light of Appellant’s arguments that the
Examiner erred. We consider Appellant’s arguments as they are presented
in the Appeal Brief, pages 7–23.

INDEPENDENT CLAIMS 1, 17, 33, AND 49: OBVIOUSNESS OVER
WPS, HOLBROOK, AND AVERBUCH
Appellant argues the independent claims as a group and designates
Claim 1 as representative. See App. Br. 5–6. Moreover, the Examiner’s
Answer applies the findings regarding Claim 1 to all pending claims. Ans.
4, 6. Therefore, we decide the appeal on the basis of representative Claim 1,
and refer to the rejected claims collectively herein as “the claims.” See 37
C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Independent Claim 1 recites, inter alia, “receiving, by the remote
station, the internal-entity certificate and a registrar certificate in at least one
WiFi message from a registrar smartphone acting as a root-of-trust
certificate authority for the application-layer internal entity.” Appellant
argues, and we agree, that independent Claims 17, 33, and 49 contain
commensurate recitations.
The Examiner finds the WPS reference teaches the basic system
architecture, as claimed, including a method for configuring an internal
entity of a WiFi-enabled remote station with an internal-entity certificate.
Final Act. 5. But the Examiner finds WPS does not teach:
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• the registrar smartphone acting as a root-of-trust certificate authority
for the application-layer internal entity;
• the remote station receiving the internal-entity certificate and a
registrar certificate in at least one message, wherein the registrar
certificate is self-signed by the registrar smartphone;
• the remote station providing the internal-entity certificate and the
registrar certificate to the internal entity; and
• the internal entity securely communicating with an external entity
based on the internal-entity certificate and the registrar certificate. Id.
6.
The Examiner finds Holbrook teaches an application-layer X.509
certificate being used for SEP2 servers and client entities which are
examples of application-layer internal entities. Id. The Examiner then finds
it would have been obvious to one of ordinary skill in the art at the time of
the invention to modify the teachings of WPS to incorporate the teachings of
Holbrook by using the WPS specifications for implementing certificate
provisioning of SEP2 entities. Final Act. 7.
Appellant contends Holbrook fails to teach providing certificates to
the application-layer internal entity. App. Br. 7. Appellant quotes Holbrook
as disclosing: “[t]he single credential mechanism for SE[P] 2.0 Device
Authentication SHALL be comprised of signed X.509 Certificates as stated
in the requirement below. We are limiting our credentials to Devices
defined by this standard, and are not defining credentials for other actors to
the system, like users at user-interfaces.” Id. (quoting Holbrook, 87, ll.
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3042–3044). According to Appellant, Holbrook defines “Device” as “[a]
single physical unit with one or more network interfaces capable of
performing one or multiple functions as part of an SEP 2.0 Network
application (e.g., Meter, In-Premises Display).” Id. (quoting Holbrook, 26,
ll. 780–783). Appellant argues Holbrook defines three types of entities:
Physical Unit, Network Node, and Application Device. Id. (quoting
Holbrook, 91, ll. 3155–3159) (“An Application Device resides on a Physical
Unit and performs an application level function.”) Id. (quoting Holbrook,
91, ll. 3166–3167). Based on this disclosure, Appellant argues Holbrook
expressly limits the use of X.509 certificates to “Devices” i.e., physical
units, rather than “Application Devices.” Id.
The Examiner finds because an Application Device is defined as part
of a Device, limiting the credentials to Devices, as opposed to other actors to
the system, in the context of Holbrook does not necessarily preclude
Application Devices. Ans. 4. The Examiner finds Holbrook teaches
Application Devices use credentials of section 12.9 for a Transport Layer
Security (TLS) protocol to establish secure connections with other
Application Devices. Id. (citing App. Br. 8). The Examiner finds Holbrook
teaches each Application Device must have a unique identity, interoperate in
a wide inter-network, and be governed by authentication and authorization
rules. Id. (citing App. Br. 7). The Examiner finds one of ordinary skill in
the art would recognize, the credentials that Holbrook refers to are in fact
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TLS X.509 certificates. Id. (citing TLS Protocol Version 1.2, RFC 5246,
56).3
Appellant contends the Examiner finds the use of X.509 certificates
are inherent to the TLS protocol. Reply Br. 2. But contrary to the
Examiner, Appellant contends the TLS RFC does not require using
certificates, but makes their use entirely optional because the server does not
have to request a certificate from the client. Id. (citing RFC, 36) (“*
Indicates optional or situation-dependent messages that are not always
sent.”). Moreover, Appellant argues whether certificates are requested
depends on the selected cipher suite. Id. (citing RFC, 53) (“A non-
anonymous server can optionally request a certificate from the client, if
appropriate for the selected cipher suite”). Additionally Appellant argues,
even when a certificate is requested, it is possible to negotiate for a
certificate other than a type X.509. Id. (citing RFC, 56) (“[t]he certificate
MUST be appropriate for the negotiated cipher suite’s key exchange
algorithm, and any negotiated extensions. In particular . . . The certificate
type MUST be X.509v3, unless explicitly negotiated otherwise (e.g.,
[TLSPGP])”).
In addition to arguing the use of X.509 certificates is not inherent,
Appellant argues Holbrook teaches away from using X.509 certificates in
connection with TLS because they “tend to be verbose and large in size.”
Reply Br. 3 (citing Holbrook, 107, ll. 3648–3650). Appellant argues

3 We follow Appellant’s convention in referring to the document as “RFC.”
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Holbrook contemplates alternative certificates that are not supported by
X.509. Id. (citing Holbrook, 107, ll. 3650–3652).
We find, in agreement with Appellant, that Holbrook’s discussion of
certificates was limited to a Physical Unit (not an Application Device), and
even in the context of Application Devices, Holbrook teaches away from the
use of X.509 certificates.
Because we find the cited art fails to teach at least one claimed
limitation, we decline to sustain the rejections of Claims 1–11, 13, 15–27,
29, 31–43, 45, 47–59, 61, and 63–72 under 35 U.S.C. § 103.

DECISION
The rejections of Claims 1–11, 13, 15–27, 29, 31–43, 45, 47–59, 61,
and 63–72 under 35 U.S.C. § 103 are REVERSED.

Claims
Rejected
Basis Affirmed Reversed
1, 5–11, 13, 16,
17, 21–27, 29, 32,
33, 37–43, 45, 48,
49, 53–59, 61, and
64–72
§ 103(a) as being
unpatentable over
WPS, Holbrook, and
Averbuch
1, 5–11, 13,
16, 17, 21–27,
29, 32, 33,
37–43, 45, 48,
49, 53–59, 61,
and 64–72
2–4, 18–20, 34–
36, and 50–52
§ 103(a) as being
unpatentable over
WPS, Holbrook,
Averbuch, and Aull
2–4, 18–20,
34–36, and
50–52
15, 31, 47, and 63 § 103(a) as being
unpatentable over
WPS, Holbrook,
15, 31, 47, and
63
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Claims
Rejected
Basis Affirmed Reversed
Averbuch, and
Yeager
Overall Outcome 1–11, 13, 15–
27, 29, 31–43,
45, 47–59, 61,
and 63–72

REVERSED