Ex Parte Brickell

Patent Trial and Appeal Board

Jun 3, 2014

10999576 (P.T.A.B. Jun. 3, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/999,576 11/30/2004 Ernest F. Brickell 42P18669 3331
45209 7590 06/04/2014
Mission/BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
PALIWAL, YOGESH
ART UNIT PAPER NUMBER
2435
MAIL DATE DELIVERY MODE
06/04/2014 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 ERNEST F. BRICKELL
_____________

Appeal 2011-005723
Application 10/999,576
Technology Center 2400
______________

Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and ROBERT J.
WEINSCHENK, 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 rejection
of claims 1 through 28 and 30 through 40. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse and enter a NEW GROUNDS OF REJECTION UNDER
37 C.F.R. § 41.50(b).
Appeal 2011-005723
Application 10/999,576

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INVENTION
The invention is directed to a method for establishing a secure session
with a device without exposing privacy-sensitive information. Abstract of
Appellant’s Specification. Claim 1 is illustrative of the invention and
reproduced below:
1. A method comprising:
authenticating a digital signature of a hardware device
according to a public key of an issuer of a platform family that
includes the hardware device, wherein a private signature key used by
the hardware device to sign a received message is jointly computed by
the hardware device and the issuer during a setup procedure with the
issuer, but is unknown to the issuer;
establishing a secure session with the authenticated hardware
device according to a session key formed from a key exchange using
the received message; and
using the same public key of the issuer to authenticate multiple
hardware devices, the hardware devices to compute different private
signature keys, without disclosing any unique identification
information of any authenticated hardware devices,
wherein the different private signature keys are jointly
computed by the hardware device and the issuer during respective
setup procedures with the issuer, but are unknown to the issuer.

REFERENCES
Faucher US 5,515,441 May 7, 1996
Van Oorschot US 5,669,431 Dec. 16, 1997
Oishi US 6,154,841 Nov. 28, 2000
England US 2002/0012432 A1 Jan. 31, 2002
Proudler US 2003/0041250 A1 Feb. 27, 2003
Arditti Modiano US 2005/0081038 A1 Apr. 14, 2005

Tin-Wei Chang, Efficient Authentication Schemes Based on Group
Certificate and Their Application on Mobile Communication Systems (June
2003) (Thesis for Master of Science, Dept. of Electrical Engineering,
National Cheng Kung University).
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Application 10/999,576

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REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 7, 11 through 19, and 31
through 37 under 35 U.S.C. § 103(a) as unpatentable over Chang and Oishi.
Answer 4-11.1
The Examiner has rejected claims 8, 9, 10, 38, 39, and 40 under
35 U.S.C. § 103(a) as unpatentable over Chang, Oishi, Van Oorschot.
Answer 12-13.
The Examiner has rejected claims 20, 21, 22, 23, and 25 under
35 U.S.C. § 103(a) as unpatentable over Arditti, Chang, Proudler, and
Faucher. Answer 13-17.
The Examiner has rejected claim 24 under 35 U.S.C. § 103(a) as
unpatentable over Arditti, Chang, Proudler, Faucher and England. Answer
17.
The Examiner has rejected claims 26 and 30 under 35 U.S.C. § 103(a)
as unpatentable over Proudler, Chang, and Oishi. Answer 17-20.
The Examiner has rejected claims 27 and 28 under 35 U.S.C. § 103(a)
as unpatentable over Proudler, Chang, Oishi, and England. Answer 21-22.
ISSUE
Appellant argues on pages 10 through 16 of the Appeal Brief that the
Examiner’s rejection of independent claims 1 and 31 is in error. The
dispositive issue presented by these arguments is: Did the Examiner err in
finding the combination of Chang and Oishi teaches using the same public

1 Throughout this opinion we refer to the Appeal Brief dated July 1, 2010,
and the Examiner’s Answer mailed on October 6, 2010.
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Application 10/999,576

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keys without disclosing any unique identification of any authenticated
hardware devices?
Appellant’s arguments directed to independent claim 11 on pages 17
through 19 of the Appeal Brief present us with the issue: Did the Examiner
err in finding the combination of Chang and Oishi teaches authenticating
without disclosing any unique identification of any authenticated hardware
devices?
Appellant argues on pages 20 through 24 of the Appeal Brief that the
Examiner’s rejection of independent claim 20 is in error. The dispositive
issue presented by these arguments is: Did the Examiner err in finding the
combination of Arditti, Chang, and Proudler teaches using a trusted module
to transmit a message without disclosing any unique identification of any
authenticated hardware devices?
Appellant argues on pages 25 through 27 of the Appeal Brief that the
Examiner’s rejection of independent claim 26 is in error. The dispositive
issue presented by these arguments is: Did the Examiner err in finding the
combination of Proudler, Chang, and Oishi teaches using a trusted module to
transmit a message without disclosing any unique identification of any
authenticated hardware devices?

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to Appellant’s arguments.
We agree with Appellant’s conclusion that the Examiner erred in rejecting
independent claims 1, 11, 20, 26, and 31.
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Application 10/999,576

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With respect to the rejection of independent claims 1, 11, and 31, the
Examiner finds that Oishi discloses a signature which includes identification
of signer but such an identity is only determined by a trusted authority to
overcome the need for a special authority to open a group signature. Answer
25. The Examiner reasons that, as the claim is directed to authentication, the
claim is met because Oishi teaches that another entity is required to open the
signature (with identity). Answer 25. We disagree, the independent claims
recite “without disclosing any unique identification information of any
authenticated hardware devices.” By transmitting information which
represents the identity of the user (even if it is only opened by another
entity), Oishi teaches disclosing information identifying the user.
Accordingly, we do not sustain the Examiner’s rejection of independent
claims 1, 11, and 31.
With respect to the rejection of independent claim 20, the Examiner
finds that Arditti teaches a digital signature (which contains individual
identity data) which is opened by a trusted authority only when it becomes
necessary. Answer 36-37. Applying rationale similar to that discussed
above with respect to claims 1, 11, and 31, the Examiner considers Arditti to
teach the disputed limitation. We similarly disagree with the Examiner’s
rationale, claim 20 also recites “without disclosing any unique identification
information of the apparatus.” By transmitting information which represents
the identity of the user (even if it is only opened by another entity), Arditti
teaches disclosing information identifying the user. Accordingly, we do not
sustain the Examiner’s rejection of independent claim 20.

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With respect to independent claim 26, the Examiner similarly finds
that Oishi teaches the limitation “without disclosing any unique
identification information of the hardware device.” Answer 19. As
discussed above with respect to claims 1, 11, and 31, we disagree with the
Examiner. Accordingly, we do not sustain the Examiner’s rejection of
independent claim 26.
The Examiner has not found that the art cited in the other rejections of
record make up for the deficiencies noted in the rejections of the
independent claims. Accordingly, we similarly will not sustain the
Examiner’s rejections of dependent claims 2 through 10, 12 through 19, 21
through 25, 27 through 28, 30, and 32 through 40.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection
against claim 31 through 40 under 35 U.S.C. § 101. Each of these claims
recites a computer program embodied on a computer-readable medium.
Appellant’s Specification states “It is contemplated that a signal itself and/or
a communication link can be regarded as machine-readable medium since
software may be temporarily stored as part of a downloaded signal or during
propagation over the communication link.” Specification ¶ 0017. Thus,
Appellant’s Specification identifies that the medium can include a
propagating signal. A signal is not within one of the four categories of
patentable subject matter as defined under 35 U.S.C. § 101. In re Nuijten,
500 F.3d 1346, 1357 (Fed. Cir. 2007). See also Ex parte Mewherter, 107
USPQ2d 1857 (PTAB 2013) (Appeal 2012-007692) (precedential); Manual
of Patent Examining Procedure (“MPEP”) § 2106(I), ed. 8, Rev. 9 (Aug.
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2012). Accordingly, we now reject claim 31 through 40 as being drawn to
subject matter that is not eligible for patent protection under 35 U.S.C.
§ 101.

DECISION
The decision of the Examiner to reject claims 1 through 28 and 30
through 40 is reversed.

This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). This section provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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 proceeding 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. . . .

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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Application 10/999,576

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REVERSED
37 C.F.R. 41.50(b)

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