Ex Parte de Andrade et al

Patent Trial and Appeal Board

Aug 29, 2017

14079174 (P.T.A.B. Aug. 29, 2017)

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.
14/079,174 11/13/2013 David de Andrade 26141.0096U2 6610
16000 7590
Comcast
c/o Ballard Spahr LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309
EXAMINER
LE, THANH T
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
08/31/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID de ANDRADE, PATRICK LADD,
JOHN BRZOZOWSKI, and JOHN LEDDY
Appeal 2017-002976
Application 14/079,1741
Technology Center 2400
Before MATTHEW J. McNEILL, SCOTT E. BAIN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4—14, and 21—27, which constitute all claims
pending in the application. Claims 3 and 15—20 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Comcast Cable Communications, LLC as the real party
in interest. App. Br. 1.
Appeal 2017-002976
Application 14/079,174
STATEMENT OF THE CASE
The Claimed Invention
Appellants’ invention relates to authentication processes in
communications networks, such as local area networks (LANs). Abstract;
Spec. 1—3. Claims 1, 8, and 21 are independent. Claim 1 is
representative of the invention and the subject matter of the appeal, and
reads as follows (with the disputed limitation in italics):
1. A method comprising:
authenticating a first device;
providing an authorization element based upon the
authentication of the first device;
authorizing the first device using the authorization
element;
providing a security token to the first device based upon
the authorization of the first device, wherein the first device is
within a first network and the security token is received by the
first device from a second network external to the first network,
and
providing the security token to a second device, wherein
the second device is within the first network, and wherein the
second device receives a request for information from the first
device via the first network, the request for information
comprising an unencrypted data field and an encrypted data
field, and wherein the encrypted data field is encrypted using the
security token such that the second device will authenticate the
request for information using the security token.
App. Br. 20 (Claims App.).
The Rejections on Appeal
Claims 1, 2, 4, 6—8, 10, and 12—14 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Ahuja et al. (US 2013/0283033 Al;
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Appeal 2017-002976
Application 14/079,174
Oct. 24, 2013) (“Ahuja”), Sarcanin (US 2003/0145205 Al; July 31, 2003),
Illion et al. (US 2014/0281553 Al; Sept. 18, 2014) (“Illion”), and Soliman
(US 2004/0179682 Al; Sept. 16, 2004). Final Act. 3-11.
Claims 5 and 9 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ahuja, Sarcanin, Illion, Soliman, and Cahill (US
8,010,783 Bl; Aug. 30,2011). Final Act. 11-12.
Claim 11 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ahuja, Sarcanin, Illion, Soliman, and Forte et al. (US
2014/0164772 Al; June 12, 2014). Final Act. 12-13.
Claims 21, 22, 25 and 26 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Ahuja, Shamsaasef et al. (US 2010/0318791
Al; Dec. 16, 2010) (“Shamsaasef’), Illion, Soliman, and Murphy (US
2014/0157298 Al; June 5, 2014). Final Act. 13-18.
Claim 23 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ahuja, Shamsaasef, Illion, Soliman, Murphy, and Cahill.
Final Act. 18—19.
Claim 24 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ahuja, Shamsaasef, Illion, Soliman, Murphy, and
Terekhova et al. (US 7,583,801 B2; publ. Sept. 1, 2009) (“Terekhova”).
Final Act. 19—20.
Claim 27 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ahuja, Sarcanin, Illion, Soliman, and Shamsaasef. Final
Act. 21.
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Appeal 2017-002976
Application 14/079,174
ANALYSIS
We have reviewed the Examiner’s rejections in light of the arguments
raised in the Briefs. On the record before us, we cannot sustain the
Examiner’s rejections.
Claims 1, 2, 4^14, and27
Appellants argue the Examiner erred in combining the four cited
references and, specifically, failed to provide a rationale for combining each
of Illion, Soliman, and Sarcanin with Ahuja.2 App. Br. 7—13; Reply Br. 1—3.
Appellants contend, among other arguments, the Examiner’s combination of
Illion with Ahuja and Sarcanin would change the principle of operation of
the authentication systems in Ahuja and Sarcanin, and that the Examiner’s
rationale for combining the references is conclusory and based on hindsight.
App. Br. 7—9. On the record before us, we are persuaded by Appellants’
argument. We need not reach the remaining issues raised by Appellants.
The Examiner finds Ahuja and Sarcanin “do not explicitly disclose the
token can be used to encrypt data or information,” as recited in claim 1, but
finds Illion teaches “security token stores cryptographic keys.” Final Act. 5.
The Examiner’s stated rationale for combining Illion with the combination
of Ahuja and Sarcanin is to “provide secure network communication.” Final
Act. 5. As Appellants argue, however, the Examiner must provide more
than this “conclusory statement.” KSR Int’l v. Teleflex Inc., 550 U.S. 398,
418 (2007). Rather, the Examiner must “articulate[] reasoning with some
rational underpinning to support the legal conclusion of obviousness.” Id.
2 Appellants argue independent claims 1 and 8, and their dependent claims 2,
4—7, 9-14, and 27 as a group, and the Examiner responds to these claims as
a group. We choose claim 1 as representative of the group. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Appeal 2017-002976
Application 14/079,174
Simply stating that combining the references, all of which relate to security
(authentication), would “improve security” is not a sufficient articulation of
a rationale for combining the references. See KSR Int’l, 550 U.S. at 418.
The Final Action includes no further explanation of the rationale for
combining Illion with Ahuja and Sarcanin. The Examiner does not explain
how the combination would improve security. Nor does the record include a
response to Appellants’ arguments that the combination would be rendered
inoperable for its intended purpose due to the references’ “incompatible
approaches to security.” App. Br. 8.
In the Answer, the Examiner elaborates, “Sarcanin, Illion, and
Soliman are brought in to show different ways of fulfilling the claimed
steps,” and the references “are all classified in H04L9/00 [and] are in the
same field of cryptographic mechanisms . . . specifying the actions required
of two or more entities to achieve specific security objectives.” Ans. 3.
Although this explanation may be relevant to whether the references
constitute analogous art, it does not constitute “articulated reasoning” why a
person of ordinary skill would combine the references.3 The Examiner
further finds “these details are well-known in the art,” Ans. 3, but cites no
evidence in support of this statement. See Reply 1—2.
For the foregoing reasons, we are persuaded on this record that the
Examiner has not articulated a sufficient rationale for combining the
references. See KSR Int’l, 550 U.S. at 418. We, therefore, do not sustain the
obviousness rejections of claims 1, 2, 4—14, and 27.
3 The Examiner’s citation to Wikipedia, Ans. 4, responds to Appellants’
argument that the Examiner erred in combining Ahuja with Sarcanin, not the
argument of error in combining Illion with the foregoing references.
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Appeal 2017-002976
Application 14/079,174
Claims 21—26
Appellants argue the Examiner erred in combining Ahuja,
Shamsaasef, Illion, Soliman, and Murphy, contending the Examiner’s stated
rationale is conclusory and based on hindsight.4 App. Br. 14—16. In
response, the Examiner asserts “Appellants’ arguments are similar to [the]
arguments of claim 1 above; therefore, similar responses from claim 1 above
are also applied.” Ans. 4. The Examiner provides no other explanation in
the Answer, and the stated rationale to combine in the Final Action is “to
provide secure network communication.” Final Act. 16; see also Final Act.
15 (“more reliable and credible”), 16 (“maintain data integrity and privacy”).
For the same reasons discussed above, we are persuaded by
Appellants’ arguments that the Examiner has not provided articulated
reasoning with a “rationale underpinning” to support the combination of
references. Accordingly, we do not sustain the obviousness rejections of
claims 21—26.
DECISION
We REVERSE the Examiner’s rejections of claims 1, 2, 4—14, and
21-27
REVERSED
4 Appellants argue independent claim 21 with its dependent claims 22—26,
and the Examiner responds to these claims as a group. We choose claim 21
as representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv).
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