Ex Parte Trujillo Gonzalez et alDownload PDFPatent Trial and Appeal BoardMar 27, 201714009591 (P.T.A.B. Mar. 27, 2017) Copy Citation 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. 14/009,591 10/18/2013 Gloria Trujillo Gonzalez P/4043-968 (V28336) 5029 2352 7590 03/28/2017 OSTROLENK FABER LLP 1180 AVENUE OF THE AMERICAS NEW YORK, NY 10036-8403 EXAMINER ANDERSON, MICHAEL D ART UNIT PAPER NUMBER 2433 MAIL DATE DELIVERY MODE 03/28/2017 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 GLORIA TRUJILLO GONZALEZ, ESTHER MARTINEZ SANZ, and LUIS LOPEZ RIZALDOS1 Appeal 2016-007750 Application 14/009,591 Technology Center 2400 Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and JAMES W. DEJMEK, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—16. We have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify Valid Soluciones Tecnologicas, S.A.U. as the real party in interest. App. Br. 1. Appeal 2016-007750 Application 14/009,591 THE INVENTION Appellants’ invention is directed to remotely provisioning a user’s subscription to a wireless communication network. Spec. 1. In a disclosed embodiment, a user’s Universal Integrated Circuit Card (UICC) contains initial keys defining an initial subscription. Spec. 7. A network operator creates a new subscription for the UICC by sending a new seed to the UICC. Spec. 7. In response, the UICC calculates definitive keys using the new seed and a key-generating algorithm both contained in the initial keys and known by the network operator. Spec. 8. “The definitive keys of the definitive subscription to the [network operator] have thus been generated in both entities: the [network operator] and the UICC, without the need of these definitive keys having been transmitted, and therefore preventing fraudulent access.” Spec. 8. Claim 1 is illustrative of the subject matter on appeal and is reproduced below with the disputed limitation emphasized in italics: 1. Method for the remote provisioning of an access subscription of a user to a wireless communication network, wherein at least one network operator provides communication services to mobile communication devices provided with a user UICC card, wherein said UICC card is pre-loaded with data defining an initial active subscription, said data comprising initial keys, wherein the method comprises, receiving a subscription provisioning request by a first network operator sent from the UICC card; receiving the initial keys forming part of said initial active subscription at said first network operator; generating data of a new temporary subscription in the first network operator and sending at least part of the data of the new 2 Appeal 2016-007750 Application 14/009,591 temporary subscription that is generated by the first network operator to the UICC card; generating the definitive keys of a definitive subscription from the data of the new temporary subscription sent to the UICC card and the initial keys in the first network operator and in the UICC card, wherein said definitive subscription is valid for the access of the UICC card to the services provided by the first network operator. REFERENCES AND REJECTION The following rejection made by the Examiner to the claims on appeal and the prior art relied upon in the rejection made are: Claims 1—16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Himawan et al. (US 2011/0161659 Al; published June 30, 2011 (filed Dec. 28, 2009)) (“Himawan”), Duggal et al. (US 8,538,480 B2; published Sept. 17, 2013 (filed Mar. 30, 2010)) (“Duggal”), and Smeets (US 2009/0239503 Al; published Sept. 24, 2009 (filed Mar. 20, 2008)). Final Act. 2—8. ANALYSIS2 The Examiner relies on Himawan to teach or suggest, inter alia, the disputed limitation recited in claim 1. Final Act. 3. In particular, the Examiner finds paragraph 36 of Himawan teaches a “field provisioning interface generates private/public key pairings entropy sources of the subscriber unit.” Final Act. 3. 2 In this Opinion, we refer to Appellants’ Appeal Brief (“App. Br.,” filed December 14, 2015); Appellants’ Reply Brief (“Reply Br.,” filed August 12, 2016); the Final Office Action (“Final Act.,” mailed April 16, 2015); and the Examiner’s Answer (“Ans.,” mailed on June 13, 2016). 3 Appeal 2016-007750 Application 14/009,591 Appellants contend the Examiner erred in finding Himawan teaches or suggests the disputed limitation recited in claim 1. App. Br. 5—6. In particular, Appellants assert Himawan’s subscriber unit, including a UICC, generates private/public key pairings in response to obtaining provisioning access data from a provisioning server. App. Br. 5 (citing Himawan H 23, 36). Appellants argue the generated private/public key pairings are not preloaded onto the subscriber unit. App. Br. 5. Appellants further argue “[t]he Examiner does not even allege that Himawan teaches generation of definitive keys by the provisioning server based on keys received from the subscriber unit.” App. Br. 6 (emphasis omitted). Himawan is directed to “remote, secure, self-provisioning of a subscriber unit.” Himawan, Abstract. Himawan teaches four preliminary phases to program a subscriber unit remotely with provisioning data and keying material. Himawan 122. Once the subscriber unit is bootstrapped with provisioning access materials from the first preliminary phase (see Himawan H 23—35), the subscriber unit enters an enrollment phase. Himawan 136. In the enrollment phase, “the radio user (104) instructs the subscriber unit (102), through the field provisioning interface (110), to generate private/public key pairings using the entropy sources of the subscriber unit (102) or the radio user (104), 302.” Himawan 136. In contrast to the Examiner’s findings, according to claim 1, the definitive keys of a definitive subscription are generated from the data of the new temporary subscription sent to the UICC and from initial keys in a first network operator and in a UICC card. We agree with Appellants that the Examiner has not demonstrated or identified within Himawan a generation of definitive keys of a definitive subscription from initial keys in a first 4 Appeal 2016-007750 Application 14/009,591 network operator and in a UICC card. In particular, the Examiner has not adequately explained how the private/public key pairings as described in paragraph 36 of Himawan, generated using entropy sources of a subscriber unit or radio user, are from keys both in a first network operator and in Himawan’s subscriber unit (102), as required by the claims. Therefore, based on the record before us, and for the reasons discussed supra, we do not sustain the Examiner’s rejection of independent claim 1. For similar reasons, we do not sustain the Examiner’s rejections of dependent claims 2—16. Because we are persuaded of error with regard to the issue discussed supra, which is dispositive as to the rejection of all claims, we do not reach the additional issues raised by Appellants. DECISION We reverse the Examiner’s decision to reject claims 1—16. REVERSED 5 Copy with citationCopy as parenthetical citation