Ex Parte BrickellDownload PDFPatent Trial and Appeal BoardJun 3, 201410999576 (P.T.A.B. Jun. 3, 2014) Copy Citation 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 2 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). Appeal 2011-005723 Application 10/999,576 3 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. Appeal 2011-005723 Application 10/999,576 4 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. Appeal 2011-005723 Application 10/999,576 5 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. Appeal 2011-005723 Application 10/999,576 6 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. Appeal 2011-005723 Application 10/999,576 7 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). Appeal 2011-005723 Application 10/999,576 8 REVERSED 37 C.F.R. 41.50(b) gvw Copy with citationCopy as parenthetical citation