Ex Parte Huang et al

Patent Trial and Appeal Board

Jan 24, 2017

13480497 (P.T.A.B. Jan. 24, 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.
13/480,497 05/25/2012 Yingxin HUANG HW 81383434US07 9425
74365 7590 01/26/2017
Slater Matsil, LLP
17950 Preston Road, Suite 1000
Dallas, TX 75252
EXAMINER
D AGOSTA, STEPHEN M
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
01/26/2017 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):
uspatent@huawei.com
docketing @ slatermatsil. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YINGXIN HUANG and WENLIN ZHANG
Appeal 2016-002027
Application 13/480,497
Technology Center 2600
Before MICHAEL J. STRAUSS, KEVIN C. TROCK, and
AARON W. MOORE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002027
Application 13/480,497
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 4, 5, and 8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a method for managing local terminal
equipment accessing a network. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for managing a local terminal equipment (TE)
accessing a network through a mobile terminal (MT), wherein a
user identity card having an identity is coupled with the MT, the
method comprising:
receiving, by the MT, an authentication request identity
message from the local TE;
acquiring, by the MT, the identity of the user identity card
and returning the identity of the user identity card to the local TE,
so that the local TE performs authentication with the network by
using the identity of the user identity card;
receiving, by the MT, an authentication request message
forwarded by the local TE from the network;
returning, by the MT, an authentication response message
containing an authentication response value to the local TE,
wherein the authentication response message is forwarded from
the local TE to the network;
receiving, by the MT, the information of the authentication
result forwarded by the local TE from the network; and
when the received information of the authentication result
indicates that the authentication process is successful, sending,
by the MT, key information to the local TE, wherein the key
information is used by the local TE in accessing the network;
otherwise, not sending key information to the local TE.
2
Appeal 2016-002027
Application 13/480,497
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Huang et al. US 8,208,898 B2 June 26, 2012
REJECTIONS
The Examiner made the following rejections:
Claims 1,4, 5, and 8 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1—19
of U.S. Patent No. 8,208,898.
Claims 1, 4, 5, and 8 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Applicant’s Admitted Prior Art (AAPA).
APPELLANTS’ CONTENTION1’2
“Claims 1, 4, 5, and 8 are novel under 35 U.S.C. § 102(b) because
AAPA fails to disclose sending by a MT key information to a local TE only
when the MT’s received authentication result indicates that an authentication
process is successful as required by independent claims 1 and 5.” App. Br.
12.
1 Appellants do not contest the double patenting rejection.
2 We note Appellants raise additional contentions of error but we do not
reach them as our resolution of this contention is dispositive of the appealed
rejections under 35 U.S.C. § 102(b).
3
Appeal 2016-002027
Application 13/480,497
ANALYSIS
Double Patenting Rejection
We summarily sustain the obviousness-type double patenting
rejections of claims 1, 4, 5, and 8 because Appellants present no arguments
contesting the rejections. See Manual of Patent Examining Procedure
§ 1205.02 (“If a ground of rejection stated by the examiner is not addressed
in the appellant’s brief, that ground of rejection will be summarily sustained
by the Board.”).
Rejection under 35 U.S.C. § 102(b)
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred in rejecting independent claims 1 and 5
under 35 U.S.C. § 102(b) as being anticipated by AAPA. We agree with
Appellants’ conclusions as to this rejection of the claims.
Appellants contend that, in the AAPA depicted in Figure 3 of
drawings, “[terminal equipment (TE)] receives (311) information regarding
the authentication result from the network side and, at the same time, the TE
receives from the [mobile terminal (MT)], the information regarding the
key(s) (312).” App. Br. 8. Appellants argue, contrary to the requirements of
claims 1 and 5 which recite “not sending key information to the local TE
[when the received information of the authentication result does not indicate
that the authentication process is successful],” AAPA omits a triggering
action or coordinating mechanism between the two steps. Id. Appellants
emphasize that, not only is any coordination omitted, but Appellants’
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Appeal 2016-002027
Application 13/480,497
Specification describes how this omission of AAPA causes a problem that is
remedied by the invention. App. Br. 13, citing Spec. 126.3
The Examiner responds by finding
Clearly, the AAPA only sends the security key when the user
passes the authentication, see SPEC: . . the AAPA shows that
a successful authentication will result in the sending of KEY
information yet the applicant argues that the AAPA does not
teach an unsuccessful authentication and NOT sending - the
examiner’s position is that a) the AAPA teaches a FAILED
authentication (spec - pages 5-6) and b) a security function will
inherently either pass/fail the user's credentials'”.
Ans. 9.
We disagree with the Examiner. Appellants’ Specification
unambiguously discloses how AAPA does not require a trigger for the MT
to send the information key to the TE. Instead, the Specification discloses
that a problem of AAPA is, without such a “binding mechanism,” network
resources are wasted. Spec. p. 6,11. 13—16. Although it may be true “that it
would be inherent for a security function to either allow or fail a user’s
access to a network, hence terminating the procedure is the only other
possibility if the user is not authenticated properly” as found by the
Examiner (Final Act. 10), this does not also evidence it is inherent to refrain
from sending the claimed information key from the MT to the TE.
Although, as found by the Examiner, it may be “WELL KNOWN IN THE
ART and also COMMON SENSE, eg. [w]hy have an authentication process
3 Page 6, lines 13—16 of the Specification, corresponding to paragraph 26 of
the cited Printed Publication US 2012/0276874 Al, reads as follows: “In
addition, in Step 311 above, the process of the network side sending the
authentication result to the TE occurs at the same time of the MT sending
the information of key(s) to the TE without a binding mechanism between
the two processes, which causes a waste of the network resources.”
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Appeal 2016-002027
Application 13/480,497
if you will send the security key when the user authentication fails??” (id. at
8), common sense is not a substitute for a clear disclosure that “[t]he keys
are ONLY SENT when the user passes authentication” (id.) as the Examiner
concludes. The Examiner fails to provide sufficient evidence, contrary to
Appellants’ specific disclosure, it is inherent that, when the received
information of the authentication result indicates the authentication process
is unsuccessful, no key information is sent to the local TE, as required
independent claims 1 and 5. Accordingly, on the record before us, we do not
sustain the rejection of independent claims 1 and 5 under 35 U.S.C. § 102(b)
as being anticipated by AAPA, nor the rejection of dependent claims 4 and
8, which stand with their respective parent claims.4
DECISION
We affirm the Examiner’s decision to reject claims 1, 4, 5, and 8 on
the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—19 ofU.S. Patent No. 8,208,898.
We reverse the Examiner’s decision to reject claims 1, 4, 5, and 8
under 35 U.S.C. § 102(b).
AFFIRMED
4 We note in passing, because the rejection is based on anticipation under 35
U.S.C. § 102(b), we need not decide whether, in view of Appellants’ specific
disclosure to the contrary, it nonetheless would have been obvious (i.e.,
under 35 U.S.C. § 103(a)) to retrain from sending particular key
information.
6