Dan Lars Anders Forsberg et al.

Patent Trials and Appeals Board

Dec 16, 2021

2020003422 (P.T.A.B. Dec. 16, 2021)

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.
12/936,332 12/17/2010 Dan Lars Anders Forsberg 39700-953N01US/
NC64062US
1807
12358 7590 12/16/2021
Mintz Levin/Nokia Technologies Oy
One Financial Center
Boston, MA 02111
EXAMINER
POPHAM, JEFFREY D
ART UNIT PAPER NUMBER
2432
NOTIFICATION DATE DELIVERY MODE
12/16/2021 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):
IPDocketingBOS@mintz.com
IPFileroomBOS@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAN LARS ANDERS FORSBERG, PENTTI VALTTERI NIEMI,
and MARC BLOMMAERT
____________________

Appeal 2020-003422
Application 12/936,3321
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
JOHN A. EVANS, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection (“Non-Final Act.”) of claims 50, 54, 56, 63, 66, 67, 69,
and 76–79, which are all of the pending claims.

1 In a prior Decision (Appeal Number 2015-005552, decided August 31,
2016, hereinafter “Prior Decision” or “Prior Dec.”), we affirmed the
Examiner’s rejections of claims 50–62 and 70–75 under 35 U.S.C. § 102(a)
over 3GPP; and of claims 50–56 and 63–69 under 35 U.S.C. § 103(a) over
3GPP and Brusilovsky. Prior Dec. 3–8.
2 We use the word Appellant to refer to “Applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Nokia Corporation of
Espoo, Finland. Appeal Br. 2.
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Claims 1–49, 51–53, 55, 57–62, 64, 65, 68, and 70–75 have been
previously canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
According to Appellant, the invention relates “generally to wireless
communication technology,” and more particularly, to “providing
cryptographical key separation following a handover.” Spec. 1, ll. 6–8.
B. REPRESENTATIVE CLAIM
Claim 50 is exemplary:
50. An apparatus comprising:
at least one processor; and
at least one memory including computer program code,
wherein the at least one processor, the at least one memory, and
the computer program code configured to cause the apparatus to
at least:
calculate, in response to a handover of a user equipment
from a source access point to a target access point, a first key
calculated based at least in part on an input using a previously
stored first intermediary value;
calculate, based at least in part of the calculated first key,
a second intermediary value for use as an input for a key
calculation for a subsequent handover of the user equipment;
and
send, to the target access point, a path switch request
acknowledgment message including the second intermediary
value for use in the subsequent handover of the user equipment.
C. PRIOR ART
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:

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Name Reference Date
Ericsson 3GPP TSG SA WG3
Security - SA3#43,
“Key Management for
L TE RRC”
April 4–7,
2006
3GPP 3GPP TR 33.821, “3rd
Generation Partnership
Project; Technical
Specification Group
Services and System
Aspects”
Dec. 1, 2007
Brusilovsky US 2009/0209259 A1 Aug. 20, 2009
Ahluwalia US 2010/0002650 A1 Jan. 7, 2010

D. REJECTIONS ON APPEAL
Claims 50, 54, 56, 63, 66, 67, 69, and 76 stand rejected under
35 U.S.C. § 112(b) or 35 U.S.C. § 112(pre-AIA), second paragraph, as
failing to particular point out and distinctly claim the subject matter which
the inventor(s) regards as the invention. Non-Final Act. 12.
Claims 50, 54, 56, 63, 66, 67, 69, and 76–79 stand rejected under
35 U.S.C. § 103(a) over Ericsson, Ahluwalia and 3GPP. Id. at 15.
Claims 50, 54, 56, 63, 66, 67, 69, and 76–79 stand rejected under
35 U.S.C. § 103(a) over 3GPP and Brusilovsky. Id. at 22.
II. ANALYSIS
35 U.S.C. § 112
The Examiner concludes that, in claim 50, “the portion of the
limitation reading ‘for use as an input for a key calculation for a subsequent
handover of the user equipment’ specifies intend[ed] use that need not ever
occur.” Non-Final Act. 13 (emphasis added). That is, “this language has no
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bearing on the apparatus at hand and is given no patentable weight.” Id.
According to the Examiner, all independent claims recite that same intended
use language, and thus are rejected for this reason. Id.
Appellant argues that claim 50 defines “the ‘second intermediate
value’ as input for a key calculation for a subsequent handover of the user
equipment to another target base station.” Appeal Br. 11. Thus, according
to Appellant, “a person of ordinary skill would understand the metes and
bounds of ‘what is claimed when the claim is read in light of the
specification.’” Id. (citing Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986).
We are persuaded by Appellant’s showing of Examiner error. Here,
although the Examiner concludes that the “subsequent handover” need not
ever occur (Final Act. 13), the test for definiteness under 35 U.S.C. § 112, is
whether “those skilled in the art would understand what is claimed.”
Orthokinetics, 806 F.2d at 1576. That is, breadth is not indefiniteness
provided the skilled artisan is reasonably apprised of the meaning of the
claim. See Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d
1354, 1366 (Fed. Cir. 2004).
We are persuaded by Appellant’s contention that “a person of
ordinary skill would understand the metes and bounds of ‘what is claimed
when the claim is read in light of the specification.’” Appeal Br. 11. The
Examiner does not explain how “subsequent handover” could confuse the
meaning of the claim. Rather, we agree with Appellant that one of ordinary
skilled in the art would understand the metes and bounds of what is claimed
when the claim is read in light of the specification. Orthokinetics, 806 F.2d
at 1576.
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Because the Examiner failed to show the claims are indefinite under
§ 112(b) or 35 U.S.C. § 112(pre-AIA), second paragraph, we reverse the
rejection of claims 50, 54, 56, 63, 66, 67, 69, and 76 under 35 U.S.C. § 112.
35 U.S.C. § 103(a)
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments that
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant contends that “claim 50 requires ‘calculate, . . . a second
intermediary value for use as an input for a key calculation for a subsequent
handover of the user equipment’ and ‘send, . . . a path switch request
acknowledgment message including the second intermediary value for use
in the subsequent handover of the user equipment.’” App. Br. 10.
Appellant contends that, “none of the cited references discloses or suggests
the ‘subsequent handover’ limitation as claimed.” Id.
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). While we interpret
claims broadly and reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
The “apparatus” recited in claim 50 comprises at least one “processor”
and at least one “memory including computer program code” that are
“configured to cause the apparatus” to perform the steps of to “calculate” a
first key, “calculate,” based at least on the calculated first key, a second
intermediary value, and then “send” a patch switch request acknowledgment
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message including the second intermediate value. See claim 50. In
particular, the claimed “apparatus” merely requires a processor, a memory,
and computer program code included in the memory that are configured to
“cause the apparatus” to “calculate” a first value (first key), “calculate” a
second value (second intermediate value) based on the first value (first key)
for a particular use (for use as an input for a key calculation), and “send” the
second value (second intermediate value) included in a message (patch
switch request acknowledgement message) to a particular point for the
particular use. Id. That is, the apparatus of claim 50 is merely caused to
calculate a first value, calculate a second value, i.e., “second intermediate
value,” based on the first value for a particular use, and then send that
second value in a message to a point for the particular use.
Although Appellant argues that claim 50 defines the “second
intermediate value” (Appeal Br. 10), claim 50 merely defines “second
intermediary value” as a value that is calculated based on a calculated first
key “for use as an input for a key calculation for a subsequent handover” and
wherein it is included in a “path switch request acknowledgment message”
that is sent “for use in the subsequent handover.” See claim 50.
Here, Appellant contends that claim 50 “itself . . . defines the ‘second
intermediate value’ as an input for a key calculation for a subsequent
handover of the user equipment.” Appeal Br. 11. However, as the Examiner
concludes (and Appellant fails to address in its Appeal Brief), such “for use”
language in the claim is the “intended use” of the calculated value, wherein
“this intended use never needs to be performed by the claim.” Non-Final
Act. 3. That is, claim 50 merely recite that the claimed apparatus calculates
the “second intermediate value” for an intended use, but Appellant does not
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point to any recitation in claim 50 that distinguishes the claimed apparatus
structurally beyond the intended use of the calculated value that the
apparatus is caused to calculate.
Although Appellant contends that the definition of “second
intermediate value” provides a definition for “subsequent handover” (Appeal
Br. 11), nothing in the apparatus of claim 50 is configured to perform the
“subsequent handover.” See claim 50. Rather the claimed apparatus is
merely configured to calculate the “second intermediary value” which, in
turn, is then sent to the target access point. Id.
Although the “second intermediary value” is calculated and sent to the
target access point, the claim does not positively recite that the “second
intermediary value” is ever actually used to do anything, even though it is
intended to be “for use in the subsequent handover of the user equipment.”
Claim 50. But “[a]n intended use or purpose usually will not limit the scope
of the claim because such statements usually do no more than define a
context in which the invention operates.”' Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003).
Although “[s]uch statements often . . . appear in the claim's preamble,” In re
Stencel, 828 F.2d 751, 754 (Fed.Cir. 1987), a statement of intended use or
purpose can appear elsewhere in a claim. Id.
We find this legal guidance is dispositive here. Thus, a question
arises as to how much patentable weight, if any, should be accorded to
Appellant’s disputed claimed statement of intended use, as recited in
apparatus claim 50. Further, our reviewing court has held that an apparatus
claim “depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Marketing Int'l., Inc. v. Coolsavings.com, Inc., 289 F.3d
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801, 809 (Fed. Cir. 2002); see also Accord Hewlett-Packard Co. v. Bausch
& Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims
cover what a device is, not what a device does.”). Moreover, “[i]t is well
settled that the recitation of a new intended use for an old product does not
make a claim to that old product patentable.” In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) (citations omitted). This controlling authority is
also applicable here, because the recited functional language of “for use in
the subsequent handover” of the calculated value in claim 50 does not
further limit or alter the structure of the claimed apparatus.
Obviousness over 3GPP and Brusilovsky
The Examiner points out that the claims “are extremely similar to
claims in the claim set dated 3/5/2014 for which the rejections were
appealed and affirmed [in the Prior Decision].” Non-Final Act. 2. In
particular, the Examiner concludes that “current claim 50 is very similar to
appealed claim 50 [from the Prior Decision],” and thus, “the claims are also
properly rejected as being unpatentable over 3GPP . . . in view of
Brusilovsky . . . for the reasons provided in the Final Office Action dated
3/26/2014, Examiner’s Answer dated 3/4/205 and [the Prior Decision] dated
8/31/2016.” Id.
Here, the Examiner relies on 3GGP for teaching and suggesting the
“calculate” steps caused to be performed by the claimed apparatus. Non-
Final Act. 22–23. In particular, the Examiner finds that 3GPP’s apparatus is
caused to “calculate, based at least in part on the calculated first key, a
second intermediate value for use as an input for a key calculation for a
subsequent handover of the user equipment.” Id. at 23 (citing 3GPP, 70–76,
section 7.4.13 (“in a subsequent handover, generation of another KeNB* from
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the previous KeNB (new KeNB in the above limitation), for example”)).
Although the Examiner acknowledges that 3GPP “does not appear to
explicitly disclose send, to the target access point, a path switch request
acknowledgement message including the second intermediary value,” the
Examiner relies on Brusilovsky for teaching and suggesting such sending
step. Id. at 23–24.
In the Appeal Brief, Appellant makes the contention that “[t]he
Examiner acknowledges that 3GPP fails to disclose the claim 50 ‘calculate .
. . a second intermediary value for use as an input for a key calculation
for a subsequent handover of the user equipment.’” Appeal Br. 17
(emphasis added by Appellant). According to Appellant, the Examiner
“relies on Brusilosky,” but Brusilovsky “fails to disclose or suggest the
claim 50 ‘calculate . . . a second intermediary value for use as an input of a
key calculation for a subsequent handover of the user equipment.’” Id.
We are not persuaded by Appellant’s contentions. As the Examiner
points out in the Answer, contrary to Appellant’s contentions, “the rejection
explicitly cites 3GPP as disclosing [the ‘calculate a second intermediary
value’ limitation] on page 23 of the non-final office action dated 2/26/2019,”
wherein “Appellant provides no argument against how [this] primary
reference in this additional 103 rejection was cited against this claim
limitation.” Answer 26–27.
Here, as the Examiner finds, 3GPP discloses “receiving a handover
command at the [user equipment] UE, from the source eNB,” and
“calculation of a key based on an intermediary value, such as a calculation
of a new KeNB from a previous KeNB, KeNB*, or the like as examples.” Non-
Final Act. 18. In view of our broad but reasonable interpretation above, we
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find no error with the Examiner’s finding that 3GPP at the least suggests a
“second intermediate value” (new KeNB) calculated using a previous key
(previous KeNB), the second intermediate value being designed to be input to
a key calculation of a further key.
Based on the record before us, we find no structural differences
between the claimed apparatus and that of 3GPP, and agree with the
Examiner that 3GPP’s “second intermediate value,” i.e., new KeNB, is
capable of being input to a key calculation for a subsequent handover.
We also note that by arguing that, “none of the cited references
discloses or suggests the ‘subsequent handover’ limitation as claimed.”
(App. Br. 10), Appellant is arguing that the claimed apparatus, which
Appellant does not establish as structurally different from 3GPP, is intended
to be used for a particular purpose, i.e., for a “subsequent handover” that the
prior art does not address. However, as discussed above, such intended use
of a claimed apparatus does not make the apparatus of claim 50 patentable
over the cited prior art structure(s).
Nevertheless, Appellant does not address the Examiner’s point that
the current claims are similar to appealed claims from the Prior Decision,
wherein the claims here are rejected as over 3GPP in view of Brusilovsky
“for the reasons provided in the Final Office Action dated 3/26/2014,
Examiner’s Answer dated 3/4/205 and [the Prior Decision] dated
8/31/2016.” Non-Final Act. 2. In particular, as set forth in the Prior
Decision, representative claim 57 similarly recites “calculate a second
intermediary value based at least in part upon the first intermediary value,”
wherein “the second intermediary value enables calculation of one or more
keys in a subsequent handover.” Prior Dec. 2. As we discussed in the Prior
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Decision, we find no error with the Examiner’s in reliance on the cited 3GPP
for teaching generating KeNB “based at least in part on a previous KeNB,” and
that, “[i]n a subsequent handover, yet another new KeNB will be generated . .
. using the KeNB that was generated.” Prior Dec. 5 (citing Previous Answer
4). That is, we agreed with the Examiner that 3GPP teaches or at least
suggests a value (such as KeNB) that is calculated, based on the calculated
first value (previous KeNB), the new value for use as input for calculation of
subsequent key (yet another new KeNB) for a subsequent handover. Id.
On this record, even if our reviewing court were to determine that the
intended use language should be given patentable weight, we find no error
with the Examiner’s finding in this Appeal that 3GPP teaches or at least
suggest “calculate, . . . a second intermediary value for use as an input for a
key calculation for a subsequent handover of the user equipment” and “send,
. . . a path switch request acknowledgment message including the second
intermediary value for use in the subsequent handover of the user
equipment,” as recited in claim 50.
Appellant does not provide substantive arguments for claims 54, 56,
63, 66, 67, 69, and 76–79 separate from those of claim 50. Appeal Br.
17–18. Accordingly, we affirm the obviousness rejection of claim 50 and
claims 54, 56, 63, 66, 67, 69, and 76–79 falling therewith over 3GPP and
Brusilovsky.
Obviousness over Ericsson, Ahluwalia and 3GPP
In the alternative, the Examiner also rejects the same claims, claims
50, 54, 56, 63, 66, 67, 69, and 76–79, over Ericsson, Ahlwalia and 3GPP.
Non-Final Act. 15–22. Appellant similar contends that the cited references
to Ericsson, Ahluwalia, and 3GPP fail to disclose or suggest claim 50’s
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“calculate, based at least in part on the calculated first key, a second
intermediary value for use as an input for a key calculation for a subsequent
handover of the user equipment.” Appeal Br. 13–16.
Again, Appellant is arguing that the value to be calculated by the
claimed apparatus, which Appellant also does not contest as structurally
different from that of the prior art, is intended to be used for a “subsequent
handover,” which the prior art does not address. However, as discussed
above, an intended use of a value calculated by the apparatus of claim 50
does not make the claimed apparatus patentable over the cited prior art
structure(s). Appellant does not point to any recitation in claim 50 that
distinguishes the claimed apparatus structurally beyond the intended use of
its calculated value.
Nevertheless, we find no error with the Examiner’s reliance on
Ericsson for disclosing “eNB1 send lk2 (or another key later in the line) to
eNB2, lk for use for further generation of another lk in a future handover,”
and reliance on 3GPP for “explicitly disclosing ‘a subsequent handover’ and,
in such a subsequent handover, ‘generation of another KeNB* from the
previous KeNB (new KeNB in the above limitation).’” Answer 7.
On this record, we find no error with the Examiner’s finding that the
combination of Ericsson, Ahluwalia, and 3GPP also teaches or at least
suggests “calculate, . . . a second intermediary value for use as an input for a
key calculation for a subsequent handover of the user equipment” and “send,
. . . a path switch request acknowledgment message including the second
intermediary value for use in the subsequent handover of the user
equipment,” as recited in claim 50.
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Appellant does not provide substantive arguments for claims 54, 56,
63, 66, 67, 69, and 76–79 separate from those of claim 50. Appeal Br.
15–16. Accordingly, we affirm the obviousness rejection of claim 50 and
claims 54, 56, 63, 66, 67, 69, and 76–79 falling therewith over Ericsson,
Ahluwalia, and 3GPP.
III. CONCLUSION
We affirm the Examiner’s rejections of claims 50, 54, 56, 63, 66, 67,
69, and 76–79 under 35 U.S.C. § 103(a), but reverse the Examiner’s
rejection of claims 50, 54, 56, 63, 66, 67, 69, and 76–79 under 35 U.S.C.
§ 112.
IV. DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
50, 54, 56,
63, 66, 67,
69, 76
112 Indefiniteness 50, 54, 56,
63, 66, 67,
69, 76
50, 54, 56,
63, 66, 67,
69, 76–79
103 Ericsson,
Ahluwalia, 3GPP
50, 54, 56,
63, 66, 67,
69, 76–79

50, 54, 56,
63, 66, 67,
69, 76–79
103 3GPP, Brusilovsky 50, 54, 56,
63, 66, 67,
69, 76–79

Overall
Outcome
50, 54, 56,
63, 66, 67,
69, 76–79

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V. RESPONSE
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