Apple Inc. - [2020] APO 22

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc. [2020] APO 22

Patent Application: 2016235515

Title:Methods and Apparatus for User Authentication and Human Intent Verification in Mobile Devices

Patent Applicant:                   Apple Inc.
Delegate:  M. G. Kraefft
Decision Date:  1 May 2020
Hearing Date:  Written submissions filed on 3 February 2020

Catchwords: PATENTS – section 45 – examiner’s objection – whether invention is a manner of manufacture – authentication and verification that administrative operations for embedded SIMs in mobile devices can proceed – user authorisation – use of inherent security of embedded SIMs – invention creates further enhanced security through internal authentication or verification processes performed wholly within secure environment of mobile device – invention is technical in nature – application to proceed to acceptance.

Representation: Patent attorney for the applicant: FPA Patent Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016235515

Title:Methods and Apparatus for User Authentication and Human Intent Verification in Mobile Devices

Patent Applicant: Apple Inc.
Date of Decision: 1 May 2020
DECISION
The claimed invention, as proposed to be amended, is for a manner of manufacture.
Pursuant to sub-regulation 13.4(1)(g), the applicant is allowed 3 months from the date of this decision to gain acceptance of the application.
I direct that the application be accepted.
REASONS FOR DECISION
BACKGROUND

Apple Inc. (“the applicant”) filed patent application 2016235515 on 18 March 2016 as an international application under the Patent Cooperation Treaty (“PCT”). The application is based on two US applications, the earlier of which was filed on 22 March 2015 (“the priority date”).
The present application has been subjected to four examination reports. In those reports, the examiner has maintained an objection that the claims of the application, including claims as proposed to be amended, do not define a manner of manufacture.
The applicant subsequently requested to be heard.
While the final date for acceptance of the application was 5 September 2019, patent sub-regulation 13.4(1)(g) is available to extend the time for gaining acceptance to 3 months from the date of the present decision.
SPECIFICATION
The alleged invention relates to user authentication and human intent verification of administrative operations for integrated components within mobile devices.
As background, the specification describes the configuration of mobile devices to receive removable Universal Integrated Circuit Cards (“UICCs”) that enable the mobile devices to access services provided by mobile network operators (“MNOs”). Typically, a UICC takes the form of a small removable card, commonly a Subscriber Identity Module (“SIM”) card, that is configured to be inserted into a UICC-receiving bay included in the mobile device. In more recent implementations, UICCs are being embedded directly into system boards of mobile devices. These embedded UICCs (“eUICCs”) can provide several advantages over removable UICCs. For example, some eUICCs include a rewritable memory that can facilitate installation, modification and/or deletion of one or more electronic SIMS (“eSIMs”), which can provide for new and/or different services and/or updates for accessing extended features provided by MNOs. Additionally, eUICCs can eliminate the need for UICC-receiving bays within mobile devices.
The specification states that it can be desirable to perform various administrative functions for eSIMs of an eUICC and/or for an eUICC’s firmware so that the eUICC can provide new or enhanced services to a user of the mobile device that includes the eUICC. Such administrative functions that change the eSIM and/or eUICC functionality can be risky, as hardware components can become permanently inoperable and/or the MNO can be subject to malware attacks when the administrative functions are not authorized and/or properly performed. This drawback is especially significant for eUICCs as they are embedded within mobile devices and cannot be easily replaced when a firmware corruption occurs.
The specification, as presently proposed to be amended, ends with 39 claims. Claims 1, 15 and 31 are independent claims. These claims read as follows:-
1.A method for user authentication of administrative operations for an embedded Universal Integrated Circuit Card (eUICC) included in a mobile device, the method comprising:
detecting, by a processor of the mobile device, initiation of an administrative operation for an electronic Subscriber Identity Module (eSIM) of the mobile device;
obtaining user credentials via a secure input of the mobile device and transferred via an end-to-end secure connection to a secure processing environment of the mobile device;
verifying, by the secure processing environment of the mobile device, user authorization to perform the administrative operation for the eSIM based on the user credentials; and
in response to successful verification of user authorization, performing by the eUICC the administrative operation for the eSIM,
wherein:
the secure input is securely connected with the secure processing environment via a pre-shared key installed during manufacture of the mobile device, and
the secure processing environment includes a hardware-based secure enclave processor that is separate from the eUICC.
15.A method for human intent verification of administrative operations for an embedded Universal Integrated Circuit Card (eUICC) included in a mobile device, the method comprising:
detecting, by a processor of the mobile device, initiation of an administrative operation for an electronic Subscriber Identity Module (eSIM) of the mobile device;
obtaining user credentials via a secure input of the mobile device and transferred via an end-to-end secure connection to a secure processing environment of the mobile device;
verifying, via the secure processing environment of the mobile device, human intent to perform the administrative operation for the eSIM based on the user credentials; and
in response to successful determination of human intent to perform the administrative operation, performing by the eUICC the administrative operation for the eSIM,
wherein:
the secure input is securely connected with the secure processing environment via a pre-shared key installed during manufacture of the mobile device, and
the secure processing environment includes a secure enclave processor that is separate from the eUICC.
31. A mobile device comprising:
an embedded Universal Integrated Circuit Card (eUICC);
a secure processing environment communicatively coupled to the eUICC;
a secure input securely coupled to the secure processing environment;
a processor; and
a memory communicatively coupled to the processor storing instructions that when executed by the processor cause the mobile device to perform actions that include:
detecting, by a processor of the mobile device, initiation of an administrative operation for an electronic Subscriber Identity Module (eSIM) of the mobile device;
obtaining user credentials via a secure input of the mobile device and transferred via an end-to-end secure connection to a secure processing environment of the mobile device
verifying, via the secure processing environment of the mobile device, human intent to perform the administrative operation for the eSIM based on the user credentials; and
in response to successful determination of user authorization to perform the administrative operation, performing by the eUICC the administrative operation for the eSIM,
wherein:
the secure input is securely connected with the secure processing environment via a pre-shared key installed during manufacture of the mobile device, and
the secure processing environment includes a secure enclave processor that is separate from the eUICC.
APPLICABLE LAW
The present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act. The application was filed after 15 April 2013.
Thus, the standard of proof that applies in the present case is the balance of probabilities (subsection 49(1). I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
Section 18 of the Patents Act 1990 relevantly provides that:-
(1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and …
CASE LAW
The principles of law in respect to manner of manufacture, arising from the High Court decisions in National Research Development Corporation v Commissioner of Patents, [1959] HCA 67, (1959) 102 CLR 252, and D’Arcy v Myriad Genetics Inc (“Myriad”), [2015] HCA 35, are well-documented in previous office decisions. The authorisation of a case-by-case methodology would also be apparent from the High Court decisions.
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim. The point was made succinctly in the Myriad case by Gageler and Nettle JJ. At [144]:-
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
In Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177, the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme. At [96]:-
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed.”
Moreover at [98]:-
“It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent”.
In Research Affiliates LLC v Commissioner of Patents (“Research Affiliates”), [2014] FCAFC 150, the Full Court of the Federal Court noted a distinction between mere implementation of an abstract idea in a computer and implementation of the idea in a computer that created an improvement in the computer. At [103]:-
“… there is a distinction, between mere implementation of an abstract idea in a computer and implementation of an abstract idea in a computer that creates an improvement in the computer”.
Moreover, at [114] of Research Affiliates:-
“The invention set out in the specification is directed to the index itself. The method of the invention is not one that has any artificial or patentable effect other than the implementation of a scheme, which happens to use a computer to effect that implementation. There is no technical contribution to the invention or artificial effect of the invention by reason of the intervention of the inventors.”
In discussing the requirement for the contribution to be technical, the Full Court in RPL stated as follows, amongst other things, at [99]:-
·“It is necessary to ascertain whether the contribution to the claimed invention is technical in nature …
·One consideration is whether the invention solves a ‘technical’ problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
·Does the claimed method merely require generic computer implementation?
·Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea? …”
EXAMINER’S REPORT
Reference to the fourth examination report provides the context regarding the nature of the present dispute. In that report, the examiner states as follows:-
“… the claimed invention is directed to a method for user authentication and human intent verification of administrative operations for integrated components within mobile devices. In order to provide the security to perform the user authentication and human intent verification, claimed invention (sic) uses (see for example paragraphs [0032] and [0045] of specification as filed) a secure enclave processor (SEP), a secure connection between the SEP and the eUICC and a symmetric key and/or a certificate to pair the SEP and the eUICC. However, the use of a secure enclave processor (SEP), a secure connection and a symmetric key between trusted environments to provide security to the authentication process were generic use of standard operations of a computer. Therefore, the claimed invention uses generic techniques for merely implementing a method to obtain and verify user credentials and to perform the administrative operation for an eSIM of a mobile device.
Hence, the substance the claimed invention (sic) neither provides a technical solution to a technical problem nor it provides (sic) an improvement in the functioning of a mobile device.
Therefore, the contribution to the art, or the substance of the claimed invention, amounts to the provision of information in a way that performs an administrative operation for an electronic Subscriber Identity Module (eSIM) of a mobile device. This is an information processing and exchange scheme.”
SUBMISSIONS
The applicant described the claims as specifying the use of and therefore the requirement of the mobile device to include:-
(a)an eUICC;
(b)a processor configured to detect initiation of an administrative operation for an eSIM of the mobile device;
(c)a secure input for obtaining user credentials;
(d)a secure processing environment that includes a hardware-based secure enclave processor that is separate from the eUICC and which is configured to verify user authorization to perform the administrative operation for the eSIM based on the user credentials;
(e)an end-to-end secure connection between the secure input and the secure processing environment, wherein the secure input is securely connected with the secure processing environment via a pre-shared key installed during manufacture of the mobile device; and
(f)a configuration to perform by the eUICC the administrative operation for the eSIM in response to successful verification of user authorization.
In referring to the examination history of the application, the applicant further appeared to indicate that the examiner was satisfied that the above features in substance provided the contribution to the art. Thus, the applicant submitted that the present claims are therefore not in the same or a remotely similar category to the claims considered in Research Affiliates, RPL or Encompass Corporation Pty Ltd v InfoTrack Pty Ltd, [2019] FCAFC 161. The applicant contended that, in each of those cases, the method involved a generic computer without any specific structure or configuration.
In highlighting the specifics of the claimed invention, the applicant stated that the claims are directed not to integrated components generally, but to specific integrated components, including an eUICC that performs administrative operations for an eSIM. Whilst noting the inherent problems with these components, as described earlier and which the applicant described as technical problems, the applicant further noted the solutions provided by the alleged invention. The applicant stated the claimed invention is directed to a specific authorisation process in combination with an arrangement that may provide more security. In particular, there are secure connections between a secure input for the relevant credentials and a secure processing environment, which is separate from the eUICC.
In also addressing the examiner’s assertion that the claimed invention was a mere scheme, the applicant concluded with its summary of the claimed invention. The applicant stated that the claimed invention has at least three elements that extend beyond a mere scheme or plan. These include a particular configuration of elements within a device, a particular way of manufacturing the device, and the use of the device in a particular way to effect control over the device.
DISCUSSION
Subject Matter of Claimed Invention
It would appear the fourth examination report simplifies the nature of the claimed invention. Firstly, the report suggests the claimed invention is merely about obtaining and verifying user credentials and performing administrative operations for an eSIM. On the other hand, there is also an intermediate concept in the claims of authenticating users, based on the credentials, to establish that the performance of the administrative operations for the eSIM is authorised and can proceed. Secondly, the assertion that the claimed security features were generic does not address their claimed use of providing a secure environment for authenticating the operations for the eSIM.
With reference to claims 1 and 15 for example, I would describe the subject matter of the claimed invention as follows. An authentication or verification method of operations for an eUICC in a mobile device involves, firstly, detecting, within the mobile device, the initiation of an administrative operation for an eSIM of the mobile device. Secondly, user credentials are obtained and transferred within the mobile device, with the process occurring wholly within a secure environment. Thirdly, within the secure environment, user authorisation or intent to perform the administrative operation for the eSIM is verified based on the user credentials. Fourthly, in response to successful verification, the administrative operation is performed.
The claims further define characterising features of the secure environment. The secure input, through which user credentials are obtained and transferred within the mobile device, is securely connected with a secure processing environment via a pre-shared key installed during manufacture of the mobile device. Additionally, the secure processing environment includes a hardware-based secure enclave processor that is separate from the eUICC.
The question then is whether the subject matter of the claimed invention, as outlined above, contains the requisite substance to pass the tests for a manner of manufacture.
Computer Functionality
In a broad sense, the above processes may be said to relate to delaying or withholding the completion of a computing operation until a verification is made that the performance of the operation is authorised. That has been standard computer functionality for a considerable period of time before the priority date. The use of user credentials, such as passwords or biometric sensing, to verify that an operation is authorised has also been standard for a long time.
The claims also define the obtaining of the user credentials and the verification process to take place within secure environments. There would similarly appear to be little of substance here beyond standard functionality at the relevant time. For example, the use of security key algorithms for cryptographic, secure communications between any two or more devices or pieces of hardware in computing environments has long been standard practice. Similarly, there does not appear to be much of substance at the relevant time in the separation of a secure enclave processor from the eUICC in a secure processing environment.

The question is whether such broad, standard concepts of computer functionality generally, at the priority date, required or resulted in nothing more of substance when applied to authenticating or verifying that administrative operations for an eUICC or eSIM were authorised.
The Technology Around eSIMs and Removable SIM Cards
At this point, a discussion of the relationship between an eUICC and an eSIM appears to be warranted. As indicated earlier, an eUICC may by example be an eSIM, although it may also be more than that. For example, the independent claims define that, on successful verification of user authorisation, the eUICC performs the administrative operation for the eSIM. At [0002] of the specification, some eUICCs include rewritable memory to facilitate installation, modification and/or deletion of one or more eSIMs. That is, an eUICC may have eSIMs added thereto, modified and/or deleted therefrom, and there may be more than one. Paragraph [0032] of the specification supports this by stating that an eUICC can be configured to store multiple eSIMs for accessing different MNOs. In this particular art, it may also be said that an eSIM can store multiple SIM profiles, one for each MNO. While the terminology may be different here, the concept is clearly the same. That is, a mobile device, with eSIM support, can enable a user to switch between different MNOs with the eSIM technology within the mobile device, rather than needing to physically swap between removable SIM cards. In a slightly different vein, for example at [0004] and [0021], the specification describes further embodiments where an eUICC’s firmware may control the administrative operations for an eUICC directly. For simplicity, I will continue with reference to eSIMs.
In this case, it is important to recall the operational differences between a SIM card and an eSIM. SIM cards are removable from their host device and must be physically swapped when their host user or the host device changes mobile networks. An eSIM is embedded in the host device. Authorised users can access and update profiles and other data and operations on the eSIM, including changing networks, via an over-the-air solution. This solution may be referred to as remote SIM provisioning (“RSP”) technology and is typically available through MNOs. Thus, any one eSIM can accommodate multiple SIM profiles, with each profile comprising of the MNO and subscriber data that would have otherwise been stored on multiple, traditional SIM cards. Accordingly, the user may have one mobile device with an eSIM but retains the selectivity of which MNOs to subscribe with. That may of itself be said to be technical in nature over that of selecting MNOs by swapping between removable SIM cards. That architecture and functionality though was known at the relevant time.
Substance of Claimed Invention
It is clearly the case though that the subject matter of the presently claimed invention is more than the above-described functionality and technology. That is, the claims are about authenticating or verifying administrative operations, such as selection of an MNO, for an eSIM in a wholly secure environment. I would regard this to be where the substance of the claimed invention lies.
Whether There is a Technical Effect in the Substance of the Claimed Invention
From the above, it would be clear that there is a security enhancement regarding the performance of administrative operations for an eSIM compared with doing something similar with removable SIM cards. The presently claimed invention takes advantage of that enhancement by authenticating or verifying operations for the eSIM wholly within the secure environment of the mobile device. While it may be said that the claimed invention relies on the inherent security of eSIMs over removable SIMs, it may also be said that the claimed invention creates further enhanced security through the internal authentication or verification processes. In particular, such processes would appear to address the drawbacks mentioned earlier, such as malware attacks that can affect the proper operation of the mobile device or affect MNO operations. Those processes may also be contrasted with traditional authentication processes when swapping removable SIMs where, for example, users would physically exchange and set up SIMs and/or MNOs would require user credentials to do so. On the face of it, the internal, secure authentication or verification processes for eSIMs, as claimed in the present case, may thus also be said to be technical in nature and, more particularly, that they are a technical solution to a technical problem.
There may be an issue with the breadth of the references in the claims to administrative operations. The references, in at least the independent claims, to administrative operations for an eSIM are non-specific. The administrative operations, for example, may simply include a change of data, such as user details. In that context, it may be difficult to envisage a technical effect arising simply from a change of user details. By contrast, the claimed invention embodies certain administrative operations for eSIMs that include installation, importing, modification, deletion or exporting for eSIMs (claims 10 and 20, and [0021]). These embodiments clearly relate with the above examples of updating SIM profiles and operations, including selecting different MNOs to subscribe with. Nonetheless, in the present case, the nature of the administrative operations appears to be by the way. The claimed invention is about authentication or verification that administrative operations for an eSIM are user authorised. The claimed performance of that authentication or verification wholly within the secure environment of the mobile device appears to create the commensurate security enhancements irrespective of the nature of the administrative operations to be performed for the eSIM.
I conclude the claimed invention is technical in nature and, in this case, is therefore a manner of manufacture.
CONCLUSION
I find the claimed invention, as proposed to be amended, is for a manner of manufacture.
It is appropriate that the application be accepted.
M. G. Kraefft
Delegate of the Commissioner of Patents