Ex Parte Ohkoshi et al

Patent Trial and Appeal BoardOct 30, 2012

10584194 (P.T.A.B. Oct. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TAKEHIRO OHKOSHI, SUEKO OHKOSHI, KEIKI YAMADA, and SATORU MAKITA ____________ Appeal 2010-006615 Application 10/584,194 Technology Center 2400 ____________ Before DEBRA K. STEPHENS, BRYAN F. MOORE, and LYNNE E. PETTIGREW, Administrative Patent Judges. PETTIGREW, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2010-006615 Application 10/584,194 2 STATEMENT OF THE CASE Introduction Appellants’ invention relates to performing an authentication process between two devices. Claim 4 is illustrative of the invention: 4. An authenticating device comprising: a memory unit to store at least one algorithm identifier and at least one encryption key identifier; a receiving unit to receive at least one algorithm identifier and at least one encryption key identifier from an authenticated device; a selecting unit to select a prescribed algorithm identifier and a prescribed encryption key identifier to be stored by the memory unit from among the at least one algorithm identifier and the at least one encryption key identifier received by the receiving unit, when the at least one algorithm identifier and the at least one encryption key identifier stored by the memory unit exist among the at least one algorithm identifier and the at least one encryption key identifier received by the receiving unit; a transmitting unit to transmit the prescribed algorithm identifier and the prescribed encryption key identifier selected by the selecting unit to the authenticated device; and an authentication processing unit to perform an authentication process with the authenticated device, based on the prescribed algorithm identifier and the prescribed encryption key identifier transmitted by the transmitting unit. Appeal 2010-006615 Application 10/584,194 3 Rejection on Appeal The Examiner rejected claims 1-10 under 35 U.S.C. § 102(e) as anticipated by Edgett (US 2004/0034771 A1; Feb. 19, 2004, filed Aug. 13, 2002). Issue on Appeal Did the Examiner err in rejecting the claims as anticipated by Edgett because the reference fails to teach an authenticating device that “select[s] a prescribed algorithm identifier and a prescribed encryption key identifier . . . from among the at least one algorithm identifier and the at least one encryption key identifier” received from an authenticated device and then “transmit[s] the prescribed algorithm identifier and the prescribed encryption key identifier . . . to the authenticated device,” as recited in claim 4? ANALYSIS The Examiner finds that Edgett discloses an authenticating device (network decryption server 16 (shown in Fig. 1) combined with the Update Server (not shown)) that selects a prescribed algorithm identifier and prescribed encryption key identifier as claimed when the decryption server retrieves from private key database 38 the algorithm and private key that correspond to the algorithm identifier and key index received from an authenticated device (dialer 34 in Fig. 1). (Ans. 15-16 (citing Edgett ¶¶ [0052], [0058])). The Examiner further finds that Edgett discloses transmitting the prescribed algorithm identifier and prescribed encryption key identifier to the authenticated device as claimed when an updated algorithm and key, with associated algorithm identifier and key index, are Appeal 2010-006615 Application 10/584,194 4 downloaded from the Update Server to dialer 34 to be used for further communications. (Id. (citing Edgett ¶¶ [0055], [0059])). Appellants contend that the updated algorithm and algorithm identifier transmitted to the dialer from the Update Server in Edgett “represent a newly developed algorithm and are completely unrelated to the old algorithm and algorithm identifier” received from the dialer. (Br. 10-11; see also Br. 8, 13). Therefore, Appellants argue, the algorithm identifier transmitted from the Update Server to the dialer in Edgett cannot correspond to the claimed prescribed algorithm identifier selected from among the at least one algorithm identifier received from the authenticated device. We agree with Appellants. The dialer in Edgett transmits to the network decryption server an encrypted password along with an associated algorithm identifier and key index. (¶¶ [0054], [0058]). The decryption server then uses the algorithm identifier and key index to identify the corresponding algorithm and private key to be used for decrypting the password during the authentication process. (Id.). Even if this step can be considered the claimed selection of a prescribed algorithm identifier and encryption key identifier from among those received from the authenticated device (i.e., the dialer) (an issue we need not decide), Edgett does not disclose transmitting the “old” algorithm identifier and key index back to the dialer. Instead, Edgett discloses transmitting a “new” algorithm identifier and key index to the dialer when an update is required. (¶¶ [0055], [0059]). Because this updated algorithm identifier and key index are not selected from among those received in the initial transmission from the dialer, Edgett fails to disclose transmitting to the authenticated device the prescribed Appeal 2010-006615 Application 10/584,194 5 algorithm identifier and prescribed encryption key identifier selected from among those received from the authenticated device, as recited in claim 4. CONCLUSION On the record before us, we conclude that the Examiner erred in rejecting claim 4 as anticipated under 35 U.S.C. § 102(b) because Edgett does not disclose the disputed claim limitations. Therefore, we do not sustain the rejection of claim 4, the rejection of independent claims 1, 7, 8, 9, and 10, which include similar limitations, or the rejection of dependent claims 2, 3, 5, and 6. DECISION The decision of the Examiner rejecting claims 1-10 is reversed. REVERSED ELD