Ex Parte Trujillo Gonzalez et al

Patent Trial and Appeal Board

Mar 27, 2017

14009591 (P.T.A.B. Mar. 27, 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.
14/009,591 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
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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).
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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
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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
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