Ex Parte BertinDownload PDFPatent Trial and Appeal BoardSep 14, 201712550117 (P.T.A.B. Sep. 14, 2017) Copy Citation 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. 12/550,117 08/28/2009 Marc BERTIN 0579-1239 1290 466 7590 09/18/2017 YOUNG fr THOMPSON EXAMINER 209 Madison Street TSVEY, GENNADIY Suite 500 Alexandria, VA 22314 ART UNIT PAPER NUMBER 2648 NOTIFICATION DATE DELIVERY MODE 09/18/2017 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): DocketingDept@young-thompson.com y andtpair @ firsttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARC BERTIN Appeal 2017-000711 Application 12/550,1171 Technology Center 2600 Before JON M. JURGOVAN, JOSEPH P. LENTIVECH, and MICHAEL M. BARRY, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 17, 18, 22, 23, 26—31, 38, and 40-42. Claims 1—16, 19-21, 24, 25, 32—37, and 39 have been canceled. See App. Br. 23—26 (Claims App’x). We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is Oberthur Technologies. Br. 1. Appeal 2017-000711 Application 12/550,117 STATEMENT OF THE CASE Appellant’s Invention Appellant’s invention generally relates to a method of exchanging data between two electronic entities, such as a mobile phone and an electronic reader capable of exchanging data via short range communication. Spec. 1,5; Abstract. Claim 17, which is illustrative, reads as follows: 17. A method of exchanging data between a mobile telephone and an electronic reader, comprising: initiating wireless communication between the mobile telephone and the electronic reader after bringing them closer together, the mobile telephone including a microprocessor, a read only memory, a random access memory and a microcircuit card, an encryption key being stored in the microcircuit card; in consequence of said initiation, obtaining, at the mobile telephone, a command from the electronic reader; in consequence of said obtaining step, verifying the presence of an application in at least one of the memories of the mobile telephone, said application relating to the electronic reader and being necessary for executing, in the mobile telephone, said command from the electronic reader, said application being formulated in a language selected from a list of languages consisting of Javacard, Javascript, Java, assembler, and C++; in the case of negative verification, launching a process for loading said application into the mobile telephone, the launching the process for loading comprising the following steps: preparing a loading request and sending the loading request to the microcircuit card for signing and encryption using the encryption key; transmitting the resulting signed and encrypted loading request to a further electronic entity; in response to said signed and encrypted loading request, receiving a signed and encrypted installation 2 Appeal 2017-000711 Application 12/550,117 message including said application from the further electronic entity; sending said signed and encrypted installation message to the microcircuit card to obtain the decrypted application; installing said decrypted application in the mobile telephone; and executing, by the application thus installed, in the mobile telephone, said command obtained from the electronic reader. References The Examiner relies on the following prior art in rejecting the claims: Carper et al. Goldstein et al. Chow-Toun Choi Saarisalo et al. Almgren et al. US 6,390,374 B1 US 2004/0152457 Al US 2004/0171375 Al US 2008/0209056 Al US 2009/0023476 Al US 2009/0228719 Al May 21,2002 Aug. 5, 2004 Sept. 2, 2004 Aug. 28, 2008 Jan. 22, 2009 Sept. 10, 2009 Rejections Claims 17, 18, 22, 23, 26, 28—31, 38, 40, and 42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Saarisalo, Goldstein, and Chow-Toun or Almgren. Final Act. 2—17. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Saarisalo, Goldstein, Chow-Toun, and Choi. Final Act. 17-18. Claim 41 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Saarisalo, Goldstein, Chow-Toun, and Carper. Final Act. 18-19. 3 Appeal 2017-000711 Application 12/550,117 Claims 17, 18, 22, 23, 26, 28—31, 38, 40, and 42 stand additionally rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Goldstein, Saarisalo, and Chow-Toun or Almgren. Final Act. 20—29.2 Claim 27 stands additionally rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Goldstein, Saarisalo, Chow-Toun, and Choi. Final Act. 29. Claim 41 stands additionally rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Goldstein, Saarisalo, Chow-Toun, and Carper. Final Act. 29. ANALYSIS Claim 17 Appellant contends the combination of Saarisalo, Goldstein, and Chow- Toun or Almgren fails to teach or suggest in the case of negative verification, launching a process for loading said application into the mobile telephone, the launching the process for loading comprising the following steps: preparing a loading request and sending the loading request to the microcircuit card for signing and encryption using the encryption key; transmitting the resulting signed and encrypted loading request to a further electronic entity; in response to said signed and encrypted loading request, receiving a signed and encrypted installation message including said application from the further electronic entity; 2 In the first-identified rejections of claims 17, 18, 22, 23, 26—31, 38, 40-42, the Examiner relies on “Saarisalo in view of Goldstein;” in the additional rejections of these claims, the Examiner relies on “Goldstein in view of Saarisalo.” 4 Appeal 2017-000711 Application 12/550,117 sending said signed and encrypted installation message to the microcircuit card to obtain the decrypted application; installing said decrypted application in the mobile telephone; and executing, by the application thus installed, in the mobile telephone, said command obtained from the electronic reader, as recited in claim 17. Br. 4—11. In particular, Appellant contends the Examiner errs in finding the cited references teach or suggest the disputed limitations because: 1. Saarisalo does not teach or suggest “the encryption key and its mode of utilization such as is set forth in claim 17 of the present invention, including the protocol in case of negative verification.” Br. 6—7. 2. Goldstein “merely pertains to the detection and installation of Java enabled devices” and “[t]here is no teaching or inference here of an encryption/decryption protocol in case of negative verification.” Br. 9 (citing Goldstein Fig. 5). 3. Chow-Toun’s requests, which Appellant acknowledges are encrypted and signed with the help of a signature key stored in the SIM card (Br. 10), do not correspond to requests for loading an application. Br. 9-10. Appellant argues Chow-Toun, instead, “makes a clear distinction between the execution of the applications . . . and the installation of such applications” and, therefore, “one skilled in the art, knowing Chow-Toun, would not be prompted to sign and encrypt any message or request involved in the installation (i.e., loading) of applications” but, instead, “would only be prompted to sign and encrypt the requests sent by such application after it has been loaded and installed.” Br. 10 (citing Chow-Toun 1118, 33; claim 21) (internal citations omitted). We do not find Appellant’s contentions persuasive. Appellant’s first and second contentions do not address the actual reasoning of the Examiner’s rejections. Instead, Appellant attacks the references singly for lacking teachings that the Examiner relied on one or more of the other cited references 5 Appeal 2017-000711 Application 12/550,117 to show. It is well established that one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 425—26 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant argues findings the Examiner never made. For example, contrary to Appellant’s first contention, the Examiner does not rely on the teachings of Saarisalo for teaching “the encryption key and its mode of utilization such as is set forth in claim 17 of the present invention, including the protocol in case of negative verification” but, instead, relies on the teachings of Goldstein and Chow-Toun in combination with the knowledge of one skilled in the art at the time the invention was made. See Final Act. 4—12 (citing Goldstein ]f]f 19—22, 27—29, 31; Chow-Toun 133). This form of argument is unpersuasive to show Examiner error. Our reviewing court requires that references must be read, not in isolation, but for what they fairly teach in combination with the prior art as a whole. Merck, 800 F.2d at 1097. We are also not persuaded by Appellant’s third contention, which is premised on a “physical” or “bodily” incorporation of limitations of one reference into the other. However, this is not the standard. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See Keller, 642 F.2d at 425. The conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background 6 Appeal 2017-000711 Application 12/550,117 knowledge possessed by a person having ordinary skill in the art. See KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Here, the Examiner finds, “transmission of data and information through the networks in ‘signed and encrypted’ format is well known and widely used in the art” at the time the invention was made and “it would have been obvious to a person of ordinary skill in the art at the time [of] the invention ... to utilize ‘signed and encrypted’ format for transmission of any requests and responses in the system of combined Saarisalo and Goldstein’s disclosures.” Final Act. 9; see also Ans. 31. The Examiner further finds (Final Act. 10) Chow-Toun teaches applications can send requests to a remote server and these requests are “electronically secured, for example encrypted and signed with the help of an individual signature key stored in the SIM card” (Chow-Toun 133). We find these teachings to be properly combinable. “Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle” since the skilled artisan is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420—21. We further find that the Examiner has articulated how the claimed features are met by the proposed combination of the reference teachings with some rational underpinning, consistent with the guidelines stated in KSR. See Final Act. 10—12. Appellant alludes to an argument that the cited art somehow teaches away from the claimed invention. See Br. 6—7. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant points to no such criticism, discrediting or the like in the teachings of the cited art. Appellant has not provided evidence that combining such 7 Appeal 2017-000711 Application 12/550,117 teachings was “uniquely challenging or difficult for one of ordinary skill in the art,” or that such a combination “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Accordingly, we are not persuaded the Examiner erred. For the foregoing reasons, we are not persuaded the Examiner erred in rejecting claim 17 and claims 18, 22, 23, 26, 28—31, 38, 40, and 42, which are not separately argued with particularity. Because we sustain the Examiner’s rejection of claims 17, 18, 22, 23, 26, 28—31, 38, 40, and 42 under 35 U.S.C. § 103(a) based on Saarisalo, Goldstein, and Chow-Toun or Almgren, we do not address the Examiner’s additional rejection of claims 17, 18, 22, 23, 26, 28—31, 38, 40, and 42 under 35 U.S.C. § 103(a) based on Goldstein, Saarisalo, and Chow-Toun or Almgren. Claim 27 Appellant contends the combination of Saarisalo, Goldstein, Chow-Toun, and Choi fails to teach or suggest “the mobile telephone receiving from the electronic reader authentication information intended for the remote server,” as recited in claim 27. Br. 11—14. Appellant argues the cited references fail to teach or suggest the limitations of claim 27 because Choi does not teach a mobile telephone, as required by claim 27, and because the digital camera of Choi does not teach or suggest the claimed “electronic reader.” Br. 12. Appellant’s contention is unpersuasive because the Examiner relies on Saarisalo and Goldstein, not Choi, for teaching the claimed “mobile telephone” and “electronic reader.” See Final Act. 17—18; Ans. 37. Appellant further contends “the authentication protocol of Choi is between three parties: master, slave and server, which is fundamentally 8 Appeal 2017-000711 Application 12/550,117 different from the two party authentication of the present invention, i.e., between a mobile telephone and a NFC electronic reader. Br. 12—13. We do not find Appellant’s contention persuasive. The Examiner finds Choi teaches a local device downloading information from a remote server using authentication parameters received from another local device. Ans. 37 (citing Choi Fig. 5; 41 44). Appellant offers no explanation or reasoning as to how or why the cited teachings fail to teach or suggest the limitations of claim 27. Therefore, Appellant’s contention is unpersuasive. See 37 C.F.R. § 41.37(c)(l)(iv) (“The arguments shall explain why the examiner erred as to each ground of rejection contested by [Ajppellant. . . . [A]ny arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal”) (emphasis added). Moreover, arguments not made are deemed waived. See id', cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an [Ajppellant, looking for nonobvious distinctions over the prior art”). Appellant further contends the combination of Saarisalo, Goldstein, Chow-Toun, and Choi is improper because Choi is non-analogous art. Br. 13— 14. Appellant argues “[i]n the present case, the present invention is narrowly drawn to a ‘method of exchanging data between a mobile telephone and an electronic reader’” and “[i]n comparison, Choi pertains to sharing multimedia content from a digital camera, and is thus non-analogous art.” Br. 14. We do not find Appellant’s contention persuasive. A reference qualifies as prior art for an obviousness determination under § 103(a) only when it is analogous to the claimed invention. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Two separate tests define the scope of analogous prior art: (1) whether 9 Appeal 2017-000711 Application 12/550,117 the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Id. Appellant’s Specification broadly defines the field of invention as “a method for exchange of data between two electronic entities.” Spec. 1:4—5. Choi is directed to “a system and method of sharing content with a multimedia content server when a host uses the authentication information of a slave device” (e.g., exchanging data between two electronic entities). Choi 13. As such, Choi is from the same field of endeavor as Appellant’s invention and, therefore, is analogous art. For the foregoing reasons, we are not persuaded the Examiner erred in rejecting claim 27. Because we sustain the Examiner’s rejection of claim 27 under 35 U.S.C. § 103(a) based on Saarisalo, Goldstein, Chow-Toun, and Choi, we do not address the Examiner’s additional rejection of claim 27 under 35 U.S.C. § 103(a) based on Goldstein, Saarisalo, Chow-Toun, and Choi. Claim 41 Appellant contends the combination of Saarisalo, Goldstein, Chow-Toun, and Carper fails to teach or suggest “wherein the application is at least three instructions in executable or interpretable form, the verifying being performed by consulting a table,” as recited in claim 41. Br. 14—16. Appellant argues the cited references fail to teach or suggest the limitations of claim 41 because “Carper is merely for the downloading of new software” and “[tjhis has nothing to do with ‘exchanging data between a mobile telephone and an electronic reader.’” Br. 16. 10 Appeal 2017-000711 Application 12/550,117 Appellant’s contention is unpersuasive because the Examiner relies on Saarisalo and Goldstein, not Carper, for teaching the claimed “mobile telephone” and “electronic reader.” See Final Act. 19. Appellant further contends the combination of Saarisalo, Goldstein, Chow-Toun, and Carper is improper because Carper is non-analogous art. Br. 16. We do not find Appellant’s contention persuasive. As discussed supra, Appellant’s Specification provides the field of endeavor as “a method for exchange of data between two electronic entities.” Spec. 1:4—5. Carper is directed to “a smart card capable of dynamically installing or de-installing one or more applications.” Carper 1:14—15. Carper teaches “[i]nstallation/de- installation may be done in the field through a terminal, or through an un-secure source such as the Internet” (e.g., exchanging data between two electronic entities). Carper 1:16—18. As such, Carper is from the same field of endeavor as Appellant’s invention and, therefore, analogous art. For the foregoing reasons, we are not persuaded the Examiner erred in rejecting claim 41. Because we sustain the Examiner’s rejection of claim 41 under 35 U.S.C. § 103(a) based on Saarisalo, Goldstein, Chow-Toun, and Carper, we do not address the Examiner’s additional rejection of claim 41 under 35 U.S.C. § 103(a) based on Goldstein, Saarisalo, Chow-Toun, and Carper. DECISION We affirm the Examiner’s rejections of claims 17, 18, 22, 23, 26—31, 38, and 40-42. 11 Appeal 2017-000711 Application 12/550,117 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation