Ex Parte Asokan et al

Patent Trial and Appeal Board

Apr 2, 2015

11128676 (P.T.A.B. Apr. 2, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NADARAJAH ASOKAN, JAN-ERIK EKBERG and
LAURI PAATERO
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Appeal 2012-009716
Application 11/128,676
Technology Center 2400
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Before CARLA M. KRIVAK, CARL W. WHITEHEAD JR., and
JOHNNY A. KUMAR, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1-27 under 35
U.S.C. § 134(a). Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b)
(2012).
We reverse.
Introduction
The invention is directed to providing integrity-protected secure
storage relating to state maintenance on a portable device. Specification 1.

Representative Claim (disputed limitations emphasized)
1. A device which comprises:
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a first integrated circuitry configured to form a first trust zone, the
first integrated circuitry comprising a secure processor; and

a second integrated circuitry separate from the circuitry configured to
form a second trust zone, the second integrated circuitry comprising a secure
volatile storage within the second trust zone, wherein

the secure processor is configured to communicate information from
the first trust zone to the second trust zone in a secure manner for the secure
information to be securely stored in the secure non-volatile storage;

the second integrated circuitry is configured to communicate
information stored in its secure non-volatile storage from the second trust
zone to the secure processor within the first trust zone in a secure manner;
and wherein

said first integrated circuitry and said second integrated circuitry are
internal parts of the device, and information transmitted from the first
integrated circuitry to the second integrated circuitry is stored in the second
integrated circuitry and the same information stored in the second
integrated circuitry is transmitted from the second integrated circuitry to the
first integrated circuitry.
Rejections on Appeal
Claims 1, 2, 4-7, 10-12, 14-19, 21 and 23-27 stand rejected under 35
U.S.C. §102(e) as being anticipated by Paksoy (US Patent Application
Publication Number 2006/0129848 A1; published June 15, 2006). Answer
4-7.
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Claims 3 and 22 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Paksoy and Asokan (US Patent Application Publication
Number 2004/0146163 A1; published July 29, 2004). Answer 7-8.
Claims 8 and 9 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Paksoy and Raith (US Patent Number 6,510,515 B1;
issued January 21, 2003). Answer 8.
Claim 13 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Paksoy and Kilpatrick (US Patent Number 5,875,465;
issued February 23, 1999). Answer 9.

ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed February 24, 2012) and the Answer
(mailed March 21, 2012), and the Reply Brief (filed May 21, 2012) for their
respective details. We have considered in this decision only those
arguments Appellants actually raised in the Briefs.

Anticipation Rejection
Appellants contend “Paksoy does not disclose or suggest ‘information
transmitted from the first integrated circuitry to the second integrated
circuitry is stored in the second integrated circuitry, and the same
information stored in the second integrated circuitry is transmitted from the
second integrated circuitry to the first integrated circuitry.’” Appeal Brief
33. Appellants further contend Paksoy discloses, “The information
transmitted from the apps processor to the modem processor (the SIM
personalization) is different from the information transmitted from the
modem processor to the apps processor (the session key).” Appeal Brief 33.
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The Examiner finds Paksoy anticipates the invention recited in claim
1. Answer 4-5. However, the Examiner fails to establish that Paksoy
actually anticipates the invention because there is no mapping of the claim
limitations to Paksoy’s disclosure. The Examiner cites to Paksoy’s Figure 3
as well as paragraphs [0077] and [0032] however, there is no direct mapping
of the claim limitations to Paksoy’s components.
1
See Answer 4-6. We are
constrained by the record or lack thereof and therefore we do not sustain the
Examiner’s anticipation rejection. The anticipation rejection of claims 1, 2,
4-7, 10-12, 14-19, 21 and 23-27 is reversed.

Obviousness Rejections
Appellants contend Paksoy fails to disclose wherein the same
information stored in the second integrated circuitry is transmitted from the
second integrated circuitry to the first integrated circuitry as required by
claim 22. Appeal Brief 56. The Examiner finds:
[W]herein the modem processor generates a session key,
encrypts the session key with the public key of the apps
processor and transmits the encrypted session key to the apps
processor where it is decrypted and used to encrypted SIM
personalization data that is transmitted to the modem processor
([0077]), which meets the limitation of distributing the secure
key to be shared between the first integrated circuit and the
second integrated circuitry, wherein the information transmitted
from the first integrated circuitry to the second integrated
circuitry is stored in the second integrated circuitry, and the
same information stored in the second integrated circuitry is

1
“‘For a prior art reference to anticipate in terms of 35 U.S.C. § 102, every
element of the claimed invention must be identically shown in a single
reference.’” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (quoting
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677 (Fed.Cir.1988)).
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transmitted from the second integrated circuitry to the first
integrated circuitry.
Answer 7-8.
Appellants further assert Paksoy discloses the transmitted information
is different because Paksoy discloses:
[A] session key is encrypted with the public key of the apps
processor and is transmitted from the modern processor to the
apps processor, and the SIM personalization data is encrypted
with the session key and transmitted from the apps processor to
the modern processor. The information transmitted from the
apps processor to the modem processor (the SIM
personalization) is different from the information transmitted
from the modem processor to the apps processor (the session
key).
Appeal Brief 56-57.
Appellants also argue Asokan fails to address Paksoy’s deficiency.
Appeal Brief 58. We find Appellants’ arguments to be persuasive and
therefore we reverse the Examiner’s obviousness rejection of independent
claim 22 for the reasons articulated above.
The obviousness rejections of claims 3, 8, 9 and 13 are reversed
because they are ultimately dependent upon claim 1.

DECISION
The Examiner’s 35 U.S.C. § 102(a) rejection of claim 1, 2, 4-7, 10-12,
14-19, 21 and 23-27 is reversed.
The Examiner’s 35 U.S.C. § 103(a) rejections of claims 3, 8, 9, 13 and
22 are reversed.

REVERSED
Ssc