Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals Board

Mar 7, 2022

2021001463 (P.T.A.B. Mar. 7, 2022)

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. 15/761,835 03/21/2018 Noamen Ben Henda 4015-10346 / P71161-US2 4981 24112 7590 03/07/2022 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER CHAMPAKESAN, BADRI NARAYANAN ART UNIT PAPER NUMBER 2496 MAIL DATE DELIVERY MODE 03/07/2022 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 NOAMEN BEN HENDA, DAVID CASTELLANOS ZAMORA, and VESA TORVINEN _______________ Appeal 2021-001463 Application 15/761,8351 Technology Center 2400 _______________ Before ALLEN R. MacDONALD, JAMES B. ARPIN, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 39-72, all the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellant refers to “applicant(s)” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Telefonaktiebolaget LM Ericsson. Appeal Br. 2. Appeal 2021-001463 Application 15/761,835 2 We reverse.2 Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for independent claims 39, 45, 51, 56, 62, and 68. STATEMENT OF THE CASE Appellant’s Claimed Invention 5G core architecture aims to separate the control plane from the user plane, such that “the control plane, and all the associated complex interactions, can be centralized, while the user plane is distributed across the IP services fabric and scaled as required by the traffic load.” Spec. 5:7-14, 8:4-6. Appellant’s claimed invention seeks to leverage control plane functions including session management function (SMF) and proposes “secondary authentication of a user equipment [18, shown in Figure 1] configured for use in a [5G] wireless communication network,” via “an extensible authentication protocol (EAP) between user equipment 18 and control plane function 14 (e.g., SMF),” in addition to (e.g., after) primary authentication of the user equipment 18. Spec. 5:15-29. 2 Our Decision refers to Appellant’s Appeal Brief filed September 1, 2020 (“Appeal Br.”), and Reply Brief filed December 18, 2020 (“Reply Br.”); Examiner’s Answer mailed October 22, 2020 (“Ans.”), and Final Office Action mailed April 24, 2020 (“Final Act.”); and the Specification filed March 21, 2018 (“Spec.”). Appeal 2021-001463 Application 15/761,835 3 Figure 1, depicting SMF for secondary authentication, is reproduced below with our annotated markings for illustration. Appellant’s Figure 1 shows a 5G wireless network including access network 12 and a core network of user equipment (UE) 18 and, per our annotations, control plane function 14 (e.g., session management function “SMF”) to provide secondary authentication of UE 18, via an extensible authentication protocol (EAP) upon request for a session from UE 18. Spec. 5:15-29. Appeal 2021-001463 Application 15/761,835 4 Figure 3, depicting a message flow for primary and secondary authentication of UE, is reproduced below with our annotations: Appellant’s Figure 3 shows the flow of message involving, per our annotations, both (1) primary authentication between user equipment (UE) and access mobility function (AMF/SEAF) and (2) secondary authentication between UE and authentication, authorization, and accounting (AAA) server, via SMF. Spec. 12:8-35. Appeal 2021-001463 Application 15/761,835 5 Representative Claim Claims 39, 45, 51, 56, 62, and 68 are independent. Representative claim 39 is reproduced below with disputed limitations emphasized: 39. A method for secondary authentication of a user equipment, wherein the method comprises: receiving, by the user equipment, an extensible authentication protocol, EAP, request from a session management function, SMF, that serves as an EAP authenticator for secondary authentication of the user equipment, wherein the secondary authentication is authentication of the user equipment in addition to primary authentication of the user equipment; and responsive to the EAP request, transmitting an EAP response from the user equipment to the SMF. Appeal Br. 20 (Claims App.). REJECTIONS AND REFERENCES (1) Claims 39-42, 44-48, 50-53, 55-59, 61-65, 67-70, and 72 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Horn (US 2011/0004762 A1; published Jan. 6, 2011). Final Act. 6-20. (2) Claims 43, 49, 54, 60, 66, and 71 are rejected under 35 U.S.C. § 103 as obvious over the combined teachings of Horn and Griot et al. (US 2015/0282042 A1; published Oct. 1, 2015; “Griot”). Final Act. 20-23. ANALYSIS In support of the anticipation rejection of claim 39, the Examiner finds Horn discloses a method for secondary authentication of a user equipment (UE), shown in Figure 1, including UE 10 receiving an EAP request from authenticator 20 for secondary authentication. Final Act. 7-8 (citing Horn’s Fig. 1). Appeal 2021-001463 Application 15/761,835 6 Horn’s Figure 1 is reproduced below: Horn’s Figure 1 depicts a signaling diagram of authentication of UE 10, via authenticator 20, AAA (authentication, authorization, accounting) server 30, and HSS (home subscriber server) 40. Horn ¶¶ 41-54. According to the Examiner, Horn’s authenticator 20 serves as Appellant’s claimed “session management function, SMF” for secondary authentication of UE 10 in addition to primary authentication. Final Act. 7 (citing Horn ¶ 53). Appellant contends Horn does not disclose the recited “session management function, SMF, that serves as an EAP authenticator for secondary authentication of the user equipment” for three reasons. First, the SMF did not exist when the Horn application was filed in 2008 during the earlier deployments of Third Generation (3G) wireless network. Second, the “SMF is a special purpose function that was newly introduced as part of the 5G core architecture” and, as such, has a specific standard meaning in a Appeal 2021-001463 Application 15/761,835 7 modern 3GPP network having a user plane/control plan split, as acknowledged in Appellant’s Specification (7:32-8:16) and evidenced by the 5G architecture specifications (i.e., TS 23.501 version 0.0.0 and TS 23.502 version 0.0.0) published on January 23, 2017. Third, one of ordinary skill would not recognize Horn as teaching anything with regard to the use of an SMF, much less the use of an SMF for secondary authentication in addition to a primary authentication. Appeal Br. 11-19 (emphasis omitted). In response, the Examiner finds that Horn’s “authenticator 10” shown in Figure 1, can be broadly and reasonably interpreted to encompass the claimed “SMF” because Horn’s “authenticator” performs “the claimed function of the SMF.” Ans. 6. We disagree with the Examiner’s finding. While, during prosecution, the Office gives claim terms their broadest reasonable interpretation, this interpretation is limited by a number of factors. First, the interpretation must be consistent with the specification. In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); MPEP § 2111. Second, the broadest reasonable interpretation of the claims also must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359 (Fed. Cir. 1999); MPEP § 2111. Finally, the interpretation must be reasonable. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004); MPEP § 2111.01. Here, the Specification describes the term “session management function (SMF)” as part of the control plane function in a 5G wireless network. Spec. 5:7-14, 7:32-8:6. According to the Specification, SMF functionality includes session management (e.g. session establishment, modify and release, including tunnel maintain between UPF and access network node), UE IP address Appeal 2021-001463 Application 15/761,835 8 allocation & management (including optional authorization), selection and control of the UP function, configuration of traffic steering at UPF to route traffic to proper destination, termination of interfaces towards policy control functions, control of part of policy enforcement and quality of service (QoS), lawful intercept (for SM events and interface to lawful intercept system), termination of SM parts of NAS messages, downlink data notification, initiation of AN specific SM information, sent via AMF over N2 to AN, determination of service and session continuity (SSC) mode of a session (for IP type PDU session), roaming functionality, handling of local enforcement to apply QoS service level agreements (SLAs) (Visited public land mobile network, VPLMN), charging data collection and charging interface (VPLMN), lawful intercept (in VPLMN for SM events and interface to LI System), and support for interaction with external DN for transport of signalling for PDU session authorization/authentication by external DN. Spec. 8:17-31. The Examiner does not interpret the recited “session management function (SMF).” Instead, the Examiner interprets a prior art term, i.e., Horn’s authenticator, to encompass the recited “session management function (SMF).” The recited “session management function (SMF)” is an industry- recognized term and a fundamental component of the 5G core architecture for managing, among others, session context with a user plane function (UDF), as acknowledged in the Specification and evidenced from 5G architecture specifications. Such a recited term has a specific meaning to those skilled in the art, and, as such, the accepted meaning of “session management function (SMF)” cannot be disregarded or relabeled as Horn’s EAP authenticator. For these reasons, we do not sustain the Examiner’s anticipation rejection of independent claim 39, 45, 51, 56, 62, and 68 and of claims 40- Appeal 2021-001463 Application 15/761,835 9 42, 44, 46-48, 50, 52-53, 55, 57-59, 61, 63-65, 67, 69-70, and 72, which are not argued separately. For the same reasons, we do not sustain the Examiner’s obviousness rejection of dependent claims 43, 49, 54, 60, 66, and 71 based on the combined teachings of Horn and Griot. NEW GROUND OF REJECTION Obviousness Rejection of Claims 39, 45, 51, 56, 62, and 68 under 37 C.F.R. § 41.50(b) A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). “[H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418; see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). In this regard, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Moreover, [w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of Appeal 2021-001463 Application 15/761,835 10 innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. Id. at 421 (underlining added). Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject independent claims 39, 45, 51, 56, 62, and 68 under 35 U.S.C. § 103 as obvious over the combined teachings of standard 3GPP specifications developed for 5G core architecture (i.e., TS 23.501 version 0.0.0 and TS 23.502 version 0.0.0) published on January 23, 2017, and Forsberg (US 2004/0148504 A1; published July 29, 2004) or Segre et al. (US 2011/0252230 A1; published Oct. 13, 2011; “Segre”), each of which are part of the Information Disclosure Statement (IDS) filed in this application on January 29, 2020. As acknowledged by the Specification, 5G core architecture aims to separate the control plane from the user plane, such that “the control plane and all the associated complex interactions [including a session management function ‘SMF’], can be centralized, while the user plane is distributed across the IP services fabric and scaled as required by the traffic load.” Spec. 7:32-8:6. In compliance with the 3GPP specifications developed for 5G core architecture, Appellant’s claimed invention seeks to leverage an Extensible Authentication Protocol (EAP) for secondary authentication of user equipment (UE), a well-known client authentication framework as disclosed by Forsberg or Segre. For example, Segre teaches a well-known EAP authentication as follows: [A] client authentication to a wireless network is based on an implementation of the Extensible Authentication Protocol (EAP). EAP is an authentication framework often used in Appeal 2021-001463 Application 15/761,835 11 wireless networks and point-to-point connections. Although the EAP framework is not limited to wireless networks and can be used for wired LAN authentication, it is more common in a wireless environment. The EAP framework provides port-based authentication, which involves communications between a supplicant (client), authenticator, and authentication server. The supplicant is often software on a client device, such as a laptop; the authenticator is a wired or wireless access point; and the authentication server is typically a host running software that supports the EAP implementation. Segre ¶ 46 (underlining added). In the context of Segre’s wireless network, an Authentication, Authorization and Accounting (AAA) server, shown in Segre’s Figures 5 and 7, may be used to support EAP authentication. Similarly, in the context of Forsberg’s 3G network, an AAA server, as shown in Forsberg’s Figures 1 and 7, may act as an EAP authenticator for secondary authentication of user equipment (UE or EAP client). In the context of 5G core architecture, where the control plane is separated from the user plane, such that “the control plane and all the associated complex interactions [including a session management function ‘SMF’], can be centralized, while the user plane is distributed across the IP services fabric and scaled as required by the traffic load,” as acknowledged by Appellant (Spec. 7:32-8:6), there are two identified, predictable options available for an ordinarily skilled artisan to support an EAP authentication framework. Specifically, secondary authentication of user equipment (UE), via EAP authentication, can be implemented between UE and AAA server, via (1) the control plane (e.g., SMF), or, alternatively, (2) the user plane selected by the SMF. Spec. 5:30-35. For example, Appellant describes: Some embodiments herein may therefore use EAP (rfc3748) for authentication between a user equipment (UE) and a potentially external authentication, authorization, and accounting (AAA) Appeal 2021-001463 Application 15/761,835 12 server where the SMF, a session management function in 5G core, endorses the role of the EAP authenticator. . . . Another possibility would be that the EAP server is not used, and the SMF (i.e. the EAP authenticator) executes the EAP method. Spec. 3:32-4:5 (underlining added). In other words, all of the steps of Appellant’s method recited in claim 39, including: (1) “receiving . . . an extensible authentication protocol, EAP, request from a session management function, SMF, that serves as an EAP authenticator for secondary authentication of the user equipment” and (2) “responsive to the EAP request, transmitting an EAP response from the user equipment to the SMF” are steps taught or suggested by the 3GPP specifications developed for 5G core architecture. Thus, we find it would have been within the skilled level of an artisan and would have been obvious to those ordinarily skilled artisans to implement an EAP framework for secondary authentication of a user equipment (UE). Because Appellant’s method of claim 39 recites generic steps taken to comply with the 3GPP specifications developed for 5G core architecture, we issue a new ground of rejection of claim 39 and, similarly, of claims 45, 51, 56, 62, and 68 under 35 U.S.C. § 103 based on the 3GPP specifications developed for 5G core architecture and the well-known EAP authentication taught by Forsberg and Segre. This Board is a reviewing body rather than a place of initial examination. We have made the rejection regarding independent claims 39, 45, 51, 56, 62, and 68 under 37 C.F.R. § 41.50(b). However, we have not reviewed the remaining dependent claims for patentability over the combined teachings of the 3GPP specifications developed for 5G core architecture and the well-known EAP authentication taught by Forsberg or Appeal 2021-001463 Application 15/761,835 13 Segre. We leave the patentability determination with respect to these dependent claims to the Examiner once the rejection of Appellant’s independent claims 39, 45, 51, 56, 62, and 68 under 35 U.S.C. § 103 is addressed. See MPEP § 1213.02. CONCLUSION On this record, Appellant persuades us the Examiner errs in rejecting (1) claims 39-42, 44-48, 50-53, 55-59, 61-65, 67-70, and 72 as anticipated by Horn; and (2) claims 43, 49, 54, 60, 66, and 71 as obvious over Horn and Griot. As such, we reverse the Examiner’s rejections of these claims. However, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for independent claims 39, 45, 51, 56, 62, and 68 as obvious over the combined teachings of the 3GPP specifications developed for 5G core architecture and the well-known EAP authentication taught by Forsberg or Segre. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Grounds 39-42, 44- 48, 50-53, 55-59, 61- 65, 67-70, 72 102(a)(1) Horn 39-42, 44-48, 50-53, 55-59, 61-65, 67-70, 72 43, 49, 54, 60, 66, 71 103 Horn, Griot 43, 49, 54, 60, 66, 71 Appeal 2021-001463 Application 15/761,835 14 39, 45, 51, 56, 62, 68 103 3GPP Specifications for 5G core architecture, Forsberg, Segre 39, 45, 51, 56, 62, 68 Overall Outcome 39-72 39, 45, 51, 56, 62, 68 Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Further, § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). REVERSED; 37 C.F.R. § 41.50(b)