Apple, Inc. v. Motorola, Inc. et al

Filing 92

Declaration of Christine Saunders Haskett filed by Plaintiffs Apple, Inc., NEXT SOFTWARE, INC. re: 90 Motion Requesting Claims Construction (Attachments: # 1 Ex. 1 Moto Infring. Cont. Ex. A, # 2 Ex. 2 '157 patent, # 3 Ex. 3 '179 patent, # 4 Ex. 4 '329 patent, # 5 Ex. 5 '230 file history, # 6 Ex. 6 Oxford dictionary definition, # 7 Ex. 7 '559 file history, # 8 Ex. 8 The OSI Model, # 9 Ex. 9 ISO Standard, # 10 Ex. 10 Japanese file history, # 11 Ex. 11 Japanese prosecution appeal, # 12 Ex. 13 Moto Infring. Cont. Ex. E, # 13 Ex. 14 IEEE Standard, # 14 Ex. 15 '333 patent, # 15 Ex. 16 '721 file history, # 16 Ex. 17 '193 file history, # 17 Ex. 18 Moto Infring. Cont. Ex. F, # 18 Ex. 19 Merriam Webster Dictionary, # 19 Ex. 20 Webster's Dictionary) (Haslam, Robert)

EXHIBIT 17

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PARTS OF APPLICATION
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NOTICE OF ALLOWANCE MAILED

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BATCH
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P EPARED FOR ISSUE

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'WARNING:

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The information disclosed herein may be reslri
. Unauthorized disclosure may be prohibited
by the United States Gode Trtle 35. Seer
.122, 181 and 368. Possession outside the U.S.
Patent & Trademark Office is restrict a authorized employees and contractors only.

(FACE)

193FH001

APPLICANTS

FLANDERS ET AL.

EXAMINER'

SERIAL NO.

08/295,173

GROUP

FILED

8/22/94

CASE NO.

ENTITLED

METHOD AND APPARATUS FOR AUTHENTICATION IN
COMMUNICATION SYSTEM

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260

Motorola, Inc.
Corporate Offices
1303 E. Algonquin Road
Schaumburg, IL 60196
April 10, 1995
AMENDMENT
Honorable Commissioner of
Patents and Trademarks
Washington, D.C. 20231

I hereby certify 11131 ttl is correspondence is being
deposited with the United States Posta I Service
as first class mail in an envelope addressed to:
Commissioner of Patents and Trademarks,
Washington, D.C. 20231 on
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(D. to Of Oeposill

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Sir:

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In response to the Official Action dated December 14, 1994 (Pa~Iff·1if5. 15)

Date

please amend the above-identified patent application as follows. A petition for
extension of time for one month is also enclosed.
In the Claims
Please amend the claims as follows:

16.

(Twice Amended) A method of authentication between a subscriber unit and a
communication unit of a communication system, comprising:
(a)

maintaining a non-arbitrary value [corresponding to] which is a count of

(b)

occurrences of a communication event in the subscriber unit;
generating an authentication message in the subscriber unit as a

(c)

transmitting the authentication message to the communication unit.

function of [the] at least part of the non-arbitrary value; and

193FH154

18.

(Twice Amended) A method of authentication between a subscriber unit and a
communication unit of a communication system, comprising:
(a)
(b)

receiving an authentication message at the communication unit;
maintaining a non-arbitrary value [corresponding to] which is a count of
occurrences of a communication event in the communication unit; and

(c)

determining in the communication unit, through the use of the received
authentication message and the maintained non-arbitrary value, whether
a received service request is authentic.

38.

(Twice Amended) A subscriber unit which authenticates communications with a
communication unit of a communication system, comprising:
(a)

memory means for maintaining a non-arbitrary value [corresponding to]
which is a count of occurrences of a communication event;

(b)

processor means for generating an authentication message as a function
of [the] at least part of the non-arbitrary value; and

(c)

transmitter means for transmitting the authentication message to the
communication unit.

(Twice Amended) A communication unit which authenticates communications
with a subscriber unit of a communication system, comprising:
(a)
(b)

receiver means for receiving an authentication message;
memory means for maintaining a non-arbitrary value [corresponding to]
which is a count of occurrences of a communication event; and

(c)

processor means for determining, through the use of the received
authentication message and the maintained non-arbitrary value, whether
a received service request is authentic.

Remarks
Upon entry of this Amendment claims 16-59 are pending in the application, with
claims 16, 18, 38 and 40 being amended.
All claims 16 -59 were rejected as being obvious over Bongard in view of either
Howard or Noble. As the examiner has previously noted, Howard discloses use of a
value corresponding to the elapsed time since a clock was last reset for modifying an

10. Noble discloses a pseudo-random coupling code generated at the end of each

,3\

-2-

193FH155

communication session and communicated to the user for use in the next
communication session. Neither of these relate to a count of occurrences of a
communication event. The newly cited reference, Bongard, discloses a system in
which identical tables are maintained at a transmitter and receiver, successive values
of the tables following "a random or complex succession" (col. 2:49). Upon each
transmission/reception the current value is incremented to the next value. However,
nowhere does Bongard teach that an actual count of communication events is
maintained, or that the authentication value is generated as a function of this count.
Rather, Bongard only teaches shifting to a next entry of a lookup table based upon
each (single) communication transmission/reception. Unlike Bongard, the count value
is critical to the presently claimed invention (of claims 16-19 and 38-41). Further,
unlike Bongard, the claimed invention will maintain the same authentication value for
all communications between communication events, while Bongard is constantly
forCing a change "after each individual emission."
In addition, it is a key feature of the remaining claims (20-37 and 42-59) that a
dialed digit (or other target unit id number) is used in generating or verifying an
authentication message. These dialed digits are transmitted along with the
authentication message (see, e.g., claim 20). None of the cited references disclose
such features, and thus cannot render the claimed invention obvious.
Finally, the claims were rejected under the judicially created doctrine of
obviousness-type double patenting over U.S. Patent No. 5,239,294. Enclosed is a
terminal disclaimer, thus obviating this rejection.
In view of the foregoing amendments and remarks, withdrawal of the examiner's
rejections and favorable reconsideration of the present application is respectfully
requested~

If there are any question or comments regarding the present application,

please do not hesitate to contact the undersigned by telephone or facsimile.

Respectfully submitted,

By

~.

K It n A.
ford
Registration No. 34,786
Phone: [phone]
Fax: [phone]

-3-

193FH156

IN THE UNITED STATES PATENT AND TRADEMARK
APPLICANTS:

Flanders, et al.

EXAMINER:

SERIAL NO.:

08/295,173

GROUP:

FILED:

08/22/94

CASE NO.:

ENTITLED:

Method for Authentication and Protection of Subscribers in
Telecommunications Systems

Motorola, Inc.
Corporate Offices
1303 E. Algonquin Road
Schaumburg, IL 60196
July 19, 1995

, here,by ce1ify that th~ corresrondence is being
deposited with the Umted States Postal Service
as flrs~ class mail in an envelope addressed to:
Com~lssloner of Palenls and T,
'~
Washington, D.C, 20231 on '""l.
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UNDER 37 CFR 1.115
Honorable Commissioner of
Patents and Trademarks
Washington, D.C. 20231
Sir:
In response to the Office Action dated June 5, 1995, please enter the following
amendment. Reconsideration is respectively requested.
IN THE CLAIMS:
Please amend the}Ollowfg claims:
In claim 20, lines

7' 6:~Please delete "dialed".

In claim 24, lines 4(6/8, please delete "dialed".
In claim 29, lines 8-9, please delete "intermediate communication unit", and
insert --communication system--.
Rev, 9/30/92

-1-

193FH165

-//
In claim 46, line 3, please delete "receiver means for" and insert --a receiver

I

unit--.

In claim 46, line 7, please delete "processor means for", and insert -- a
processor --.

/

In claim 47, line 4, ~ase delete "means for".
In claim 49, line 2, please delete "means" and insert --unit--.

;;

In claim 50, line 2, please delete "means".

REMARKS

Obvious - Type Double Patenting
Referring to paragraph 2 of the Office Action, Applicant has enclosed a terminal
disclaimer as requested by the Examiner. Thus, claims 16-19 and 38-41 which were
only rejected based on obvious type double patenting are allowable.

Prior Art
Referring to paragraph 4 of the Office Action, Applicant respectively traverses
the rejection under 35 U.S.C. §103 based on White in view of either Howard or Noble.
First, Applicant wishes to thank the Examiner for granting an interview to discuss
claims 20-37, and 42-59. Applicant also thanks the Examiner for agreeing during the
interview that each of these claims is in condition for allowance. As requested by the
Examiner, Applicant presents the arguments discussed during the interview
supporting allowance of each of these claims.
None of the cited references discloses or suggests, inter alia, providing
information which uniquely identifies a target communication unit and generating an
authentication message based on the information. For example, claim 20 includes the
steps of providing digits which uniquely identify a target communication unit and
Rev. 9/30/92

-2-

193FH166

generating an authentication message based on the digits. Since none of the cited
references discloses or suggests either of these limitations, independent claim 20 is in
condition for allowance. Likewise, independent claim 24 which includes the steps of
receiving an authentication message and at least part of a plurality of digits which
uniquely identifies a target communication unit is also allowable.
Similarly, none of the cited references discloses or suggests the combination
recited in independent claim 29. Specifically, none of the cited references discloses or
suggests providing information bits which uniquely identify a target communication
unit. Further, none of these cited references discloses or suggests generating an
authentication message as a function of the information bits. Therefore independent
claim 29 is similarly allowable. Likewise, independent claim 33 which recites
receiving an authentication message and a plurality of information bits which uniquely
identifies a target communication unit where the authentication message is derived
from the information bits is allowable.
Independent claims 42 and 46 are apparatus claims containing digit and
authentication message limitations similar to those found in claims 20 and 24.
Therefore, claims 42 and 46 are allowable for the same reasons as discussed above
for claims 20 and 24. In a similar manner, apparatus claims 51 and 55 correspond to
method claims 29 and 33 discussed above and are also allowable. Since each of the
independent claims are allowable each of the dependent claims are also allowable.

Rev. 9/30/92

-3-

193FH167

In conclusion, Applicant has overcome each of the Examiners rejections. Each
of the pending claims in this application is therefore in condition for allowance and
8arly notice to this effect is earnestly solicited. If, for any reason, the Examiner is
unable allow the application on the next office action and feels that a telephone
conference would be helpful to resolve any remaining issues, the Examiner is
respectively requested to contact the undersigned attorney at [phone].
Respectfully submitted,
Flanders, et al.

By

~d U~

JeffryG. Toler
Attorney for Applicants
Registration No. 38,342
Phone: [phone]
Fax: [phone]

Rev. 9/30/92

-4-

193FH168