Kyung Joo Suh et al.

Patent Trials and Appeals Board

Sep 13, 2019

13059134 - (D) (P.T.A.B. Sep. 13, 2019)

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.
13/059,134 05/26/2011 Kyung Joo Suh 0203-0374 7194
68103 7590 09/13/2019
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
PREVAL, LIONEL
ART UNIT PAPER NUMBER
2416
NOTIFICATION DATE DELIVERY MODE
09/13/2019 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KYUNG JOO SUH, TAE SUN YEOUM, JOON HO PARK,
JIN WON SEO, SANG HO LEE, JAE HO JUNG
____________________

Appeal 2017-010164
Application 13/059,134
Technology Center 2400
____________________

Before THU A. DANG, JASON J. CHUNG, and MATTHEW J. McNEILL,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 15–18, 21–24, 27–30, and 33–36, which are all of
the pending claims. Claims 1–14, 19, 20, 25, 26, 31, 32, 37, and 38 were
canceled previously. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The real party in interest in this appeal is the assignee, Samsung
Electronics Co. Ltd. App. Br. 2.
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A. INVENTION
According to Appellants, the invention relates to “a mobile
communication system,” and in particular, to “a method for managing
mobility of a mobile terminal with Non-Access Stratum (NAS) protocols.”
Spec. ¶ 1.

B. REPRESENTATIVE CLAIM
Claim 15 is exemplary:
15. A method for processing a message in a wireless communication, the
method comprising:

generating, at a first entity, a message comprising protocol
discriminator information and security header type information; and

transmitting the message to a second entity,

wherein the protocol discriminator information uses bits coded as
0010 to indicate an evolved session management (ESM) message and uses
bits coded as 0111 to indicate an evolved packet system (EPS) mobility
management (EMM) message,

wherein the security header type information uses bits coded as 0000
to indicate that the message is not security protected, uses bits coded as 0001
to indicate an integrity protected message, uses bits coded as 0010 to
indicate an integrity protected and ciphered message, and uses bits coded as
1100 to indicate a service request message, and

wherein bits 1 to 4 of a first octet of the message contain the protocol
discriminator information and bits 5 to 8 of the first octet of the message
contain the security header type information.

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C. REJECTION2
Claims 15–18, 21–24, 27–30, and 33–36 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Somasundaram et al. (US
2015/0189512 A1; pub. July 2, 2015, hereinafter “Somasundaram”) and
3GPP TS 24.301 (3rd Gereration Partnership Project Organization, Technical
Specification Group Core Network and Terminals; Non-Access-Stratum
(NAS) protocol for Evolved Packet System (EPS); Stage 3 (Release 8),
(V0.4.0 2008); hereafter “TS 24.301”).

II. ISSUES
The principal issue before us is whether the Examiner erred in finding
that the combination of Somasundaram and TS 24.301 teaches or suggests a
method comprising the steps of “generating . . . a message comprising
protocol discriminator information” and “security header type information;”
and “transmitting the message to a second entity,” wherein the protocol
discriminator information and security header type information use
particular bits to indicate particular messages, or whether the particular
message is security protected or ciphered. Claim 15.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.

2 In the Answer, the Examiner indicates that the 35 U.S.C. § 112 rejection of
claims 15–18, 21–24, 27–30, and 33–36 has been withdrawn. Ans. 2.
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Somasundaram
1. Somasundaram teaches the processing of the non-access stratus
(NAS) layer (layer 3) in long term evolution (LTE) wireless transmit/receive
units (WTRUs), which allows the NAS protocol layer to route L3 layer
messages to the correct NAS entity, and to encode new NAS message types
and information elements. Somasundaram, Abstract. Figure 1, showing a
LTE L3 layer, is reproduced below:

Figure 1 shows an LTE L3 header 100 comprising a protocol
discriminator (PD) field 110 and transaction identifier field 105 in the first
octet, wherein the combination of the bits in the L3 PD field 110 indicates
that the L3 message that follows the LTE LE header 100 is an upper layer
LTE L3 message such as EMM or ESM. Id. at ¶ 28.
TS 24.301
2. TS 24.301 teaches a Technical Specification produced by the 3rd
Generation Partnership Project (3GPP), which specifies the procedures used
by the protocols for mobility management and session management between
User Equipment (UE) and Mobility Management Entity (MME) in the
Evolved Packet System (EPS), wherein the protocols belong to the non-
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access stratum (NAS). 24.301, 12–13 (“Foreword,” “Scope”). The EPS
Mobility Management (EMM) protocol provides control of security for the
NAS protocol, and the EPS Session management (ESM) protocol provides
procedures for the handling of EPS bearer contexts. Id. Figures 9.1.1 and
9.1.2, showing general message organization, are reproduced below:

Figure 9.1.1 shows a general organization for a not security protected
NAS message. Id. at 111.

Figure 9.1.2 shows a general message organization for a security
protected NAS message. Id. at 111. As shown in Figures 9.1.1 and 9.1.2,
bits 1 to 4 of the first octet of an NAS message contain the Protocol
Discriminator, while bits 5 to 8 of the first octet of the message contain the
security header type, or, for a not security protected message, an EPS bearer
identity. The Protocol Discriminator (PD) and its use are defined in 3GPP
TS 24.007. Id. at 111.
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Table 9.3.1, showing a security header type, is reproduced below:

Table 9.3.1 shows a security header type, wherein a message received
with the security header type encoded as 0000 shall be treated as not security
protected message. Id. at 112. On the other hand, as shown in Table 9.3.1,
the security header type encoded as 0001 shall be treated as security
protected message, and as 1100 shall be treated as service request message.
NAS security algorithms are used for ciphering and integrity
protection. Id. at 123.

IV. ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made, but did not make in the Brief are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(iv) (2016). On the record before us, we are
unpersuaded the Examiner has erred. We adopt as our own the findings and
reasons set forth in the rejections from which the appeal is taken and in the
Examiner’s Answer, and provide the following for highlighting and
emphasis.
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Appellants contend that Somasundarum fails to teach or suggest “bits
1 to 4 of a first octet of the message contain the protocol discriminator
information and bits 5 to 8 of the first octet of the message contain the
security header type information,” wherein the protocol discriminator
information is “coded as 0010 to indicate an evolved session management
(ESM) message and uses bits coded as 0111 to indicate an evolved packet
system (EPS) mobility management (EMM) message,” while the security
header type information “uses bits coded as 0000 to indicate that the
message is not security protected, uses bits coded as 0001 to indicate an
integrity protected message, uses bits coded as 0010 to indicate an integrity
protected and ciphered message, and uses bits coded as 1100 to indicate a
service requires message.” App. Br. 9. Appellants then merely contend that
the Examiner “provides no clear reasoning as to how TS 24.301 cures this
deficiency.” Id.
We have considered all of Appellants’ arguments and evidence
presented. Based on the record before us, we are unpersuaded that the
Examiner erred in finding that claims would have been obvious over
Somasundarum and TS 24.301.
As a preliminary matter of claim construction, we give the claims
their broadest reasonable interpretation consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Here, claim 15 is
directed to a “method for processing a message” which comprises the step of
“generating” a message comprising “protocol discriminator information”
and “security header type information” and a step of “transmitting” the
message, wherein certain bits for the message contain the protocol
discriminator and security header type information, and wherein the protocol
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discriminator information and security header type information use certain
bits for certain indications. That is, claim 15 merely recites a method
comprising steps of “generating” and “transmitting” a message “wherein”
the generated message comprises particular information, i.e., “protocol
discriminator information” that uses certain bits for certain indications and
“security header type information” that uses certain other bits for other
indications. We note that, in claim 15, the type of data comprised in the
generated message is provided in a “wherein” clause.3 Given the broadest
reasonable interpretation of the claim, claim 15 merely requires generating
and transmitting a message which may include a type of data, such as
“protocol discriminator information” and “security header type
information.”
Here, by contending that the information provided in the message in
the prior art differs from the claimed information, Appellants attempt to
distinguish the claims strictly based on the content of the generated message
— the type of data comprised in the generated message. The content of the
message, however, does not change the functionality of the recited
“generating” step. The recited functionality remains the same regardless of

3 See MANUAL OF PATENT EXAMINING PROCEDURE § 2111.04 (9th
Ed., Rev. 08.2017, Jan. 2018)) regarding “wherein” clauses:
Claim scope is not limited by claim language that suggests or makes
optional but does not require steps to be performed, or by claim language
that does not limit a claim to a particular structure. However, examples of
claim language, although not exhaustive, that may raise a question as to the
limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
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what the data constitutes, or how the data may be named, wherein such data
does not further limit the claimed invention either functionally or
structurally. The informational content of the data, thus, represents non-
functional descriptive material, which “does not lend patentability to an
otherwise unpatentable computer-implemented product or process.”
Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he
nature of the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process.”). See
Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (Fed.
Cir. Appeal No. 2006-1003), aff’d, (Rule 36) (June 12, 2006) (“wellness-
related” data in databases and communicated on distributed network did not
functionally change either the data storage system or the communication
system used in the claimed method). See also In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004); Nehls, 88 USPQ2d at 1887–90 (discussing non-
functional descriptive material); see also Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative) (“[N]onfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art.”), aff’d, 191 Fed. Appx. 959 (Fed. Cir.
2006) (Rule 36).
Nevertheless, even assuming arguendo, that the “wherein” clause and
the content of the generated data were given patentable weight, we are
unpersuaded that the Examiner errs in finding that the combination of
Somasundaram and TS 24.301 at least suggests the contested limitation.
Somasundaram discloses the processing of an NAS message wherein
bits 1 to 4 of a first octet of the message contain the protocol discriminator
(PD) information, the PD information being coded to indicate an ESM
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message or EMM message. FF 1. We find no error with the Examiner’s
reliance on Somasundaram to teach and suggest a message comprising
protocol discriminator information using bits coded to indicate an ESM
message and an EMM message, as recited in claim 15.
Further, in the same field of endeavor, TS 24.301 discloses that, in an
NAS message, bits 1 to 4 of the first octet of the message contain the
protocol discriminator information and bits 5 to 8 contain security header
type information. FF 2. In particular, TS 24.301’s security header type
information (bits 5 to 8) uses “0000” to indicate not “security protected,”
uses “0001” to indicate “integrity protected,” and uses “1100” to indicate
“service request.” Id. Although TS 24.301 does not specifically disclose
using any bit coding to indicate integrity protect “and ciphered” message, TS
24.301 does disclose the need for ciphering as well as integrity protection.
Id. We find no error with the Examiner’s finding that one of ordinary skill
in the art would have found it obvious to also indicate that the message is
“ciphered” as well as integrity protected. Ans. 7–8. Accordingly, contrary
to Appellants’ contentions (App. Br. 9), we agree with the Examiner’s
finding that TS 24.301 at least suggests also indicating a “ciphered”
message.
Although, in the Reply Brief, Appellants contend that “TS 24.301
fails to disclose that the second four bits (bits 5-8) of the first octet use bits
coded as 0010 to indicate an integrity protected and ciphered message”
(Reply Br. 5), this contention does not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, as the
Examiner concludes, a person of ordinary skill, upon reading TS 24.301,
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would find it obvious to also indicate that the message is “ciphered” as well
as integrity protected. Ans. 7–8.
The Supreme Court has stated clearly, application of familiar elements
according to known methods is “likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007). Here, Appellants have presented no evidence that using bits
coded to indicate ciphered as well as integrity protected message would have
been “uniquely challenging or difficult for one of ordinary skill in the art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418). Instead, we find such a modification
would have been well within the ordinary level of skill of the art. See KSR,
550 U.S. at 417. In particular, we find that Appellants’ invention is simply a
modification of familiar prior art teachings that would have realized a
predictable result to the skilled artisan. The skilled artisan is “a person of
ordinary creativity, not an automaton.” Id. at 421. See also In re Rice, 341
F.2d 309, 314 (CCPA 1965)).
Accordingly, we find no error with the Examiner’s obviousness
rejection of claim 15, and claims 16–18, 21–24, 27–30, and 33–36, not
separately argued thus falling therewith, over Somasundaram and TS
24.301.

V. CONCLUSION AND DECISION
We affirm the Examiner’s rejections of claims 15–18, 21–24, 27–30,
and 33–36 under 35 U.S.C. § 103(a).

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED