Ex Parte Bertin

Patent Trial and Appeal Board

Sep 14, 2017

12550117 (P.T.A.B. Sep. 14, 2017)

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
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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.
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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.”
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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
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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
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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
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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
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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
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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.
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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.
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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
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