DETAILED ACTION
This is a final Office action in response to communications received on 8/06/2026. Claims 1-15 are pending and are examined. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s Remarks, filed 8/06/2026, with respect to the rejection of claims 3-4, 8-9 and 13-14 under 35 USC 112, second paragraph, arguing that the claim language in claims 3/8/13 disclosing “wherein the first authentication request further comprises a second sequence number and a second MAC” is not indefinite because the language “second” does not indicate the order in which the sequence number and MAC are received or generated but rather just conveys that the first authentication request comprises an additional sequence number and MAC, have been considered and found persuasive. Accordingly, the rejection of claims 3-4, 8-9 and 13-14 under 35 USC 112, second paragraph, is withdrawn.
Applicant’s Remarks with respect to the rejection of the claims under 35 USC 103 have been considered, but are found unpersuasive.
Applicant argues on pages 7-8 of the Remarks that Niemi does not teach the claim limitation ” because Niemi’s actual sequence number recovery operation does use the random challenge because Niemi expressly states that “the authentication centre of the home network HE 4 retrieves SQNUSIM by computing f5K(MACS), if concealed, otherwise it simply takes the unconcealed SQNUSIM value of the AUTS parameter” which discloses using the shared key K and MACS but does not mention the random challenge RAND, however the Examiner respectfully disagrees. Applicant admits that Niemi explicitly discloses using MACS, and (as cited by the Examiner) Niemi explicitly discloses “MACS = f1*K ( SQNMS ‖ RAND ‖ AMF)” in page 14, lines 7-15. There is nothing in the claims to prevent the random challenge from being part of the MAC, therefore Niemi teaches the claim limitations as disclosed.
Applicant further argues that the disclosure by Niemi “MACS f1*K ( SQNMS ‖ RAND ‖ AMF)” does not mean that the random challenge is included in MACS because “RAND is not thereby a constitute field recoverable from MACS nor is RAND ‘comprised’ in MACS in any meaningful sense”, however the Examiner respectfully disagrees. Niemi explicitly discloses “MACS = f1*K ( SQNMS ‖ RAND ‖ AMF)” in page 14, lines 7-15. Therefore RAND is explicitly part of the equation used to determine MACS (hence why it says MACS equals this function including RAND). Applicant’s claims do not require that RAND be a constitute field separate from or recoverable from MACS. Applicant is free to amend the claims to clarify this relationship or to specify how RAND is separately used or generated apart from the MAC, but all the claims currently require is that the first sequence number is derived from the synchronization parameter using at least a key shared with the UE and the apparatus, the random challenge, and the first MAC. Since the sequence number in Niemi is generated using AUTS parameter, which uses the MACS and the shared secret key K, and RAND is used to generate MACS, a broad reading of the claims necessarily encompasses Niemi teaching that the sequence number in Niemi is derived using the MACS, key K and RAND.
Applicant further argues on page 9 of the Remarks the stated rationale for obviousness is insufficient because the “rationale therefore identifies a benefit Niemi already obtains with its existing mechanism and does not explain why one of ordinary skill in the art would change the inputs or operation used to recover the sequence number”, however the Examiner respectfully disagrees. Niemi does disclose the sequence number may be sent in unconcealed form and that the anonymity key (AK) may be generated using just f5k(RAND) (page 12, first line), however by using the combination of RAND and MACS together to generate the AK for the AUTS parameter using the formula AK=f5K(MACS) (and using RAND to generate MACS as already discussed above), these more complicated mathematical calculations provide greater security and conceal the sequence number from attackers. Therefore, as previously stated, it would have been obvious to one of ordinary skill in the art to make use of this combination of variables (RAND, MACS and K in the AK) in order to retrieve/derive the sequence number of the USIM from the AUTS parameter in this secure manner in order to ensure that the sequence number is transmitted in a concealed form from which only an authorized user can derive it.
Applicant further argues on page 9 of the Remarks that the rejection of the claims is invalid because Examiner conflates authentication vectors with synchronization failure messages, however the Examiner respectfully disagrees. The Examiner did not map authentication vectors to synchronization failure messages because neither authentication vectors or synchronization failures are in the limitations of the independent claims. All the claim limitation requires is “receive, after transmission of the first authentication request, a synchronization parameter”. The Examiner explained that after receiving a synchronization failure message (i.e. after the user authentication request was sent and failed), a new authentication vector is received (i.e. receiving a synchronization parameter) (Niemi, page 11, line 30 – page 12, line 20, para bridging. 13-14, Figs. 5-6). There is nothing in the claims that prevents the authentication vector from being a synchronization parameter. Accordingly, Neimi teaches the limitations as cited.
Applicant argues on page 10 of the Remarks that Claims 5, 10 and 15 were improperly rejected because they make reference to a reference Zhang that is not cited, however the Examiner respectfully disagrees because claims 5, 10 and 15 are also rejected under Niemi. Therefore, claims 5, 10 and 15 are entirely properly rejected under Niemi and any remaining disclosures of an additional reference is miscellaneous error. Since Applicant is not missing any information they would need to understand how Niemi rejects this claim, there is nothing wrong with this rejection. Applicant in fact supports this fact as they argue against the rejection of claims 5, 10 and 15 under Niemi.
Applicant further argues on pages 10-11 of the Remarks that Niemi teaches away from the limitations in claims 5, 10 and 15 because the claims require a second (or additional as Applicant has already stated) sequence number which is associated with the apparatus or network entity maintained in the network, however “Niemi’s entire purpose is to eliminate the need to maintain such a sequence number” and the value mapped by the Examiner in claim 5 SQNGLC “is a global value, not a sequence number associated with the apparatus”, however the Examiner respectfully disagrees. All claims 5/10/15 require is that sequence number be associated with the apparatus – which is an INCREDIBLY broad statement. The claims do not specify HOW the sequence number is associated with the apparatus. Niemi explicitly discloses “The described method and system use a global sequence number SQNGLC which is calculated or derived from the global clock GLC (Counter 6) and a subscriber-specific difference D (stored in memory 5 of the authentication center)” (para. Bridging 7-8). Therefore, Niemi obviously is not directed to eliminating sequence numbers as it is explicitly disclosed as generating SQNGLC . Moreover, the global sequence number is subscriber-specific, therefore each global sequence number is associated with a specific subscriber and their apparatus. Niemi discloses “[i]n the authentication database contained in memory 5, every subscriber has an individual value D. This value D is the difference between a previously used sequence number SQN which is stored in memory 2 of mobile station 1, i.e. in the USIM 20 thereof (SQNUSIM), and the SQNGLC.” (page 8, lines 15-20). Consequently, the global sequence number is “associated with” the mobile devices and subscribers because it is specific to them. As such, Niemi discloses the limitations for which it is cited.
The remaining arguments fail to comply with 37 C.F.R. 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Consequently, the rejection of the claims under 35 U.S.C. 103 is sustained.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in claims 11-12 and 14 of this application that use the word “means for” are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Niemi (WO 01/78306).
Regarding claim 1, Niemi discloses the limitations substantially as follows:
An apparatus for wireless communications, comprising:
a memory comprising computer-executable instructions; and
one or more processors configured to execute the computer-executable instructions and cause the apparatus to:
transmit, to a user equipment (UE), a first authentication request comprising at least a random challenge (Niemi, page 2, lines 8-15, page 13, lines 10-15: sending a user authentication request to a mobile station (MS) containing the parameters AUTN and RAND (i.e. a random number) generated using a sequence number of the authentication center);
receive, after transmission of the first authentication request, a synchronization parameter and a first message authentication code (MAC) (Niemi, page 11, line 30 – page 12, line 20, para bridging. 13-14, Figs. 5-6: after receiving a “synchronization failure message”, receiving a new authentication vector comprising AUTS comprising a MACS); and
derive a first sequence number from the synchronization parameter using at least a key shared with the UE and the apparatus, the random challenge, and the first MAC (Niemi, page 1, ll. 19-24, page 14, lines 7-15 & page 14, line 35 – page 15, line 24: deriving a Sequence number of the USIM/MS (SQN USIM) from the AUTS parameter which uses MACS, the shared secret key “k” shared between user of USIM/MS and an authentication center (AuC) of a home environment (HE), and RAND).
Although Niemi does not explicitly disclose that a key shared with the UE and apparatus, random challenge and first MAC are used to derive a first sequence number, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that Niemi teaches the claimed functionality because Niemi discloses the deriving/obtaining a sequence number of the USIM by computing f5k(MACS) or using the AUTS which comprises AK and MACS. In both of the cases, the MACS (i.e. first MAC) is used, which comprises RAND, along with the shared secret key “k”. Therefore, it would have been obvious to one of ordinary skill in the art to make use of these variable in order to retrieve/derive the sequence number of the USIM from the AUTS parameter in this secure manner in order to ensure that the sequence number is transmitted in a concealed form from which only an authorized user can derive it.
Regarding claims 2, 7 and 12, Niemi teaches the limitations of the apparatus of claim 1, the method of claim 6, and the apparatus of claim 11.
Niemi discloses the limitations of claims 2, 7 and 12 as follows:
transmit, in response to the synchronization parameter, a second authentication request comprising a second sequence number whose value is set based on the first sequence number (Niemi, page 10, lines 24-30, page 11, first para., page 13, second and third paras., page 14, line 35 – page 15, line 24: after transmitting the AUTS token (i.e. synchronization parameter), receiving another authentication vector with authentication data (i.e. second authentication request) comprising newly generated RAND and AUTN from which the user can retrieve a new sequence number SQN (i.e. request comprising second sequence number) from the network, where the new sequence number is generated from new authentication vectors and a new value D based on the old sequence numbers (i.e. based on the first sequence number)).
Regarding claims 3, 8 and 13, Niemi teaches the limitations of the apparatus of claim 1, the method of claim 6, and the apparatus of claim 11.
Niemi discloses the limitations of claims 3, 8 and 13 as follows:
wherein the first authentication request further comprises a second sequence number and a second MAC (Niemi, page 11, line 30 – page 12, line 10 & page 14, line 35 – page 15, line 24, Figs. 5-6: the AUTN in the authentication data to verified comprises a MAC generated from a sequence number of the authentication center (i.e. second sequence number and second MAC) which are different from sequence number of the USIM in the AUTS (i.e. first sequence number)) and in response to a synchronization failure, generating a new batch of authentication vectors (AV) comprising a new Seq generated from D and a new MAC).
Regarding claims 4, 9 and 14, Niemi teaches the limitations of the apparatus of claims 1 and 3, the method of claims 6 and 8, and the apparatus of claims 11 and 13.
Niemi discloses the limitations of claims 4, 9 and 14 as follows:
wherein the one or more processors are further configured to cause the apparatus to generate the second MAC based on the key shared with the UE and the apparatus, the random challenge, and the second sequence number (see also Niemi, page 11, line 26 – page 12, line 10 & page 14, line 35 – page 15, line 24, Figs. 5-6: the MAC of the AUTN is generated based on k shared between the USIM and the authentication center/network, RAND and the sequence number of the authentication center).
Regarding claims 5, 10 and 15, Niemi teaches the limitations of the apparatus of claims 1 and 3, the method of claims 6 and 8, and the apparatus of claims 11 and 13.
Niemi discloses the limitations of claims 5, 10 and 15 as follows:
wherein: the first sequence number is a sequence number associated with the apparatus that is maintained in the UE (Niemi, page 7 lines 12-17: SQN USIM is maintained in the MS); and
the second sequence number is a sequence number associated with the apparatus that is maintained in a network (Niemi, page 7, line 29 – page 8, line 24, page 9, lines 15-25: SEQ GLC is a global sequence number generated from a global clock on the authentication center of the home network).
Regarding claim 6, Niemi discloses the limitations substantially as follows:
A method for authenticating a user equipment (UE) for wireless communications by a network entity, comprising:
transmitting, to the UE, a first authentication request comprising at least a random challenge(Niemi, page 2, lines 8-15, page 13, lines 10-15: sending a user authentication request to a mobile station (MS) containing the parameters AUTN and RAND (i.e. a random number) generated using a sequence number of the authentication center);
after transmitting the first authentication request, receiving a synchronization parameter and a first message authentication code (MAC) (Niemi, page 11, line 30 – page 12, line 20, para bridging. 13-14, Figs. 5-6: after receiving a “synchronization failure message”, receiving a new authentication vector comprising AUTS comprising a MACS); and
deriving a first sequence number from the synchronization parameter using at least a key shared with the UE and the network entity, the random challenge, and the first MAC(Niemi, page 1, ll. 19-24, page 14, lines 7-15 & page 14, line 35 – page 15, line 24: deriving a Sequence number of the USIM/MS (SQN USIM) from the AUTS parameter which uses MACS, the shared secret key “k” shared between user of USIM/MS and an authentication center (AuC) of a home environment (HE), and RAND).
Although Niemi does not explicitly disclose that a key shared with the UE and apparatus, random challenge and first MAC are used to derive a first sequence number, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that Niemi teaches the claimed functionality because Niemi discloses the deriving/obtaining a sequence number of the USIM by computing f5k(MACS) or using the AUTS which comprises AK and MACS. In both of the cases, the MACS (i.e. first MAC) is used, which comprises RAND, along with the shared secret key “k”. Therefore, it would have been obvious to one of ordinary skill in the art to make use of these variable in order to retrieve/derive the sequence number of the USIM from the AUTS parameter in this secure manner in order to ensure that the sequence number is transmitted in a concealed form from which only an authorized user can derive it.
Regarding claim 11, Niemi discloses the limitations substantially as follows:
An apparatus for wireless communications comprising:
means for transmitting, to a user equipment (UE), a first authentication request comprising at least a random challenge(Niemi, page 2, lines 8-15, page 13, lines 10-15: sending a user authentication request to a mobile station (MS) containing the parameters AUTN and RAND (i.e. a random number) generated using a sequence number of the authentication center);
means for receiving a synchronization parameter and a first message authentication code (MAC) after transmission of the first authentication request(Niemi, page 11, line 30 – page 12, line 20, para bridging. 13-14, Figs. 5-6: after receiving a “synchronization failure message”, receiving a new authentication vector comprising AUTS comprising a MACS); and
means for deriving a first sequence number from the synchronization parameter using at least a key shared with the UE and the apparatus, the random challenge, and the first MAC(Niemi, page 1, ll. 19-24, page 14, lines 7-15 & page 14, line 35 – page 15, line 24: deriving a Sequence number of the USIM/MS (SQN USIM) from the AUTS parameter which uses MACS, the shared secret key “k” shared between user of USIM/MS and an authentication center (AuC) of a home environment (HE), and RAND).
Although Niemi does not explicitly disclose that a key shared with the UE and apparatus, random challenge and first MAC are used to derive a first sequence number, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that Niemi teaches the claimed functionality because Niemi discloses the deriving/obtaining a sequence number of the USIM by computing f5k(MACS) or using the AUTS which comprises AK and MACS. In both of the cases, the MACS (i.e. first MAC) is used, which comprises RAND, along with the shared secret key “k”. Therefore, it would have been obvious to one of ordinary skill in the art to make use of these variable in order to retrieve/derive the sequence number of the USIM from the AUTS parameter in this secure manner in order to ensure that the sequence number is transmitted in a concealed form from which only an authorized user can derive it.
Prior art considered but not relied upon includes:
1) Wang (US 2007/017886) teaches a method for performing resynchronization of sequence numbers in which the VLR sends the authentication parameters RAND and AUTN to the MS and if the MS determines that resynchronization fails, the MS transmits an AUTS as part of a resynchronization request to the network in which the AUTS is calculated from a MAC-S generated from a SQN.sub.MS, KI, RAND and AMF. A first and second sequence number, first and second authentication keys and first and second synchronization keys are also generated.
Conclusion
For the above-stated reasons, claims 1-15 are rejected.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON S LYNCH whose telephone number is (571)272-4583. The examiner can normally be reached on 10AM-6PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Taghi T Arani can be reached on 571-272-3787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHARON S LYNCH/Primary Examiner, Art Unit 2438
