Ex Parte Creamer et al

Patent Trial and Appeal BoardApr 30, 2013

10736389 (P.T.A.B. Apr. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte THOMAS E. CREAMER, BILL H. HILF, NEIL A. KATZ, and VICTOR S. MOORE ____________________ Appeal 2010-012390 Application 10/736,389 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-3 and 25-30. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-012390 Application 10/736,389 2 STATEMENT OF THE CASE Appellants’ claimed invention is directed to a method and system of authenticating a mobile communication device including forming a Session Initiation Protocol (SIP) referred by token using authentication data provided by a mobile service provider over a mobile communications link. The token can be sent to an SIP server via a wireless network. The SIP server can send a request for validation, built using the token, to the mobile service provider using Parlay. (Spec. ¶ [0004]). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method of authenticating a mobile communication device within a mobile network, which is a voice network, and a wireless network, which is a data network, the method comprising: providing a mobile communication device configured to communicate over the mobile network and the wireless network, the mobile communication device including a Session Initiation Protocol (SIP) user agent executing therein; the mobile communication device receiving authentication data from a mobile service provider over the mobile network when the mobile communication device is within communication range of the mobile network; the mobile communication device building a SIP referred by token using the authentication data received from the mobile service provider; the mobile communication device sending the token to a SIP server via a wireless communications link over the wireless network; Appeal 2010-012390 Application 10/736,389 3 the SIP server interpreting the token and forming a Parlay request for authentication using data specified by the token; the SIP server sending the request for authentication of the mobile communication device to the mobile service provider; the mobile service provider confirming or denying the request for authentication by sending a response to the SIP server; the SIP server receiving the response from the mobile service provider and sending a reply to the mobile communication device over the wireless communications link indicating whether the request for authentication was confirmed; and the mobile communication device receiving the reply from the SIP server. REFERENCES and REJECTIONS The Examiner rejected claims 1, 3, 25, 27, 28, and 30 under 35 U.S.C §103(a) based upon the teachings of Benenati (US Pat. Pub. 2004/0193712 A1), Faccin (US Pat. Pub. 2003/0014668 A1), and Pailer (Rudolf Pailer, "A Service Framework for Carrier Grade Multimedia Services using PARLAY APIs over a SIP System," Telecommunication Research Center Vienna). The Examiner rejected claims 2, 26, and 29 under 35 U.S.C §103(a) based upon the teachings of Faccin, Benenati, Pailer, and Appellants’ Admitted Prior Art (AAPA). Appeal 2010-012390 Application 10/736,389 4 ANALYSIS Appellants contend Benenati does not disclose the authentication scheme disclosed by Appellants’ invention, Benenati teaches away from running SIP on a user device, Benenati discloses a “new key material to be used in a future authentication process is sent to the user,” and Faccin and Pailer do not make up for these deficiencies (Br. 10-11). We, for the most part, adopt the Examiner’s findings as our own. Particularly, we agree with the Examiner that Benenati discloses “authentication data from a mobile wireless service provider . . . is used to gain access to a wireless network” (Ans. 7). That is, paragraphs [0027] and [0030] require a pre-provisioned authentication database applied to an authorizing and authenticating agent (¶ [0027]) and independent visited networks having Service Level Agreements (SLAs) with a home network can authenticate and obtain authorization from a particular service provider (¶ [0030]). With respect to Appellants’ contention Benenati does not teach running SIP on a user device and also teaches away from running SIP, we note the Examiner relied on Faccin for this limitation (Ans. 6, 8). As to the teaching away argument, although the Examiner has cited the wrong standard (the Examiner relies on case law directed to an anticipation rejection, not to an obviousness rejection (Ans. 9)), Appellants have not shown how adding SIP would defeat/disparage Benenati.1 That is, Benenati 1 “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appeal 2010-012390 Application 10/736,389 5 discloses SIP can be used, albeit adding SIP may cause delays or make the system more complex; however Appellants have not provided how the authentication portion of the system would not function due to running SIP. Lastly, we find Appellants’ arguments appear to summarize the claim and references and then repeat the language of the claim (see for example Br. 9-11). Appellants, by arguing the references separately and not as a combination, have failed to present substantive analysis explaining why the references features relied on by the Examiner do not disclose or fairly suggest the disputed claim elements. For the above reasons, we are not persuaded of Examiner error. We find the weight of the evidence supports the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. Further, we are not persuaded the Examiner’s reading of the claims on the cited combination of references is overly broad, unreasonable, or inconsistent with the Specification. Therefore, we sustain the Examiner’s rejection of claims 1, 3, 25, 27, 28, and 30, and claims 2, 26, and 29, for which no arguments were provided (Br. 12). DECISION The Examiner’s decision rejection of claims 1-3 and 25-30 under 35 U.S.C §103 is affirmed. 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). AFFIRMED Appeal 2010-012390 Application 10/736,389 6 tkl