Ex Parte HuxhamDownload PDFPatent Trial and Appeal BoardDec 18, 201814234130 (P.T.A.B. Dec. 18, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/234,130 03/12/2014 Horatio Nelson Huxham 66945 7590 12/20/2018 KILPATRICK TOWNSEND & STOCKTONLLP/VISA Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 79900-897926(012010) 7247 EXAMINER CASTILHO, EDUARDO D ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 12/20/2018 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): ipefiling@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HORATIO NELSON HUXHAM Appeal2017-001733 Application 14/234,130 1 Technology Center 3600 Before, JOSEPH A. FISCHETTI, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's final rejection of claims 1-8, 23-26, and 28-37. We have jurisdiction under 35 U.S.C. § 6(b ). SUMMARY OF DECISION We AFFIRM. 1 Appellant identifies Visa International Service Association as the real party in interest. Appeal Br. 3. Appeal2017-001733 Application 14/234,130 THE INVENTION Appellant claims "a cryptographic expansion device that can be attached to a communication component of a communication device to enable the communication device to perform cryptographic operations on communications sent to and from the communication device." Spec. 0007. Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A label comprising: a flexible substrate; a first set of electrical contacts disposed on a top side of the flexible substrate for interfacing to a communication device; a second set of electrical contacts disposed on a bottom side of the flexible substrate for interfacing to a communication component; a coupling element attaching the label to the communication component; and a hardware security module completely embedded within the flexible substrate and coupled to the first and second sets of electrical contacts, wherein the hardware security module includes a secure processing unit and a public processing unit. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Ginter et al. Nicolas Ho Sibert Andolina et al. Luo et al. us 5,892,900 US 2006/0055506 Al US 2006/0175417 Al US 2007 /0124409 Al US 2007 /0245413 Al US 2011/0149533 Al 2 Apr. 6, 1999 Mar. 16, 2006 Aug. 10, 2006 May 31, 2007 Oct. 18, 2007 June 23, 2011 Appeal2017-001733 Application 14/234,130 Bidin et al. US 2011/0315779 Al Dec. 29, 2011 The following rejections are before us for review. Claims 2-8, 26, 30, 31 and 34--37 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claims 1-8, 23-26, and 28-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of copending Application No. 13/875,985. Claims 1-8, 24--26, and 29-37 are rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Lou et al. in view of Ho, in view of Bidin et al., and in view of Andolina et al. Claim 23 is rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Lou et al., Ho, Bidin et al., Andolina et al., and in view of Nicolas. Claim 28 is rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Lou et al., Ho, Bidin et al., and in view of Sibert. 3 Appeal2017-001733 Application 14/234,130 ANALYSIS 35 U.S.C. § 103 REJECTION Claim 1, the only independent claim before us, recites in pertinent part, "a coupling element attaching the label to the communication component; and a hardware security module completely embedded within the flexible substrate and coupled to the first and second sets of electrical contacts." The Examiner found concerning this limitation: Although Luo et al. disclose a hardware module disposed in the label and coupled to the first and second sets of electrical contacts, Luo et al. do not explicitly disclose the module being a hardware security module completely embedded within the flexible substrate, wherein the hardware security module includes a secure processing unit. However, Ho discloses the module completely embedded within the flexible substrate ( see Fig. 3A, second IC chip 34 and paragraphs [0045] and [0046]). Therefore, it would have been obvious to incorporate the embedded module as disclosed by Ho in the label of Luo et al., the motivation being to increase the add-on applications of the wireless communication (See Ho, paragraph [0002]) ( emphasis omitted). (Final Act. 14). Appellant however argues, Ho describes an IC chip card 30 (the bottom device shown in Fig. 4A) which is attachable to a 4 Appeal2017-001733 Application 14/234,130 SIM card 20. IC chip card 30 has an IC chip 34 which is used to provide add-on applications. (Ho at para. [0002]). Ho further describes that IC chip 34 of IC chip card 30 can be 'attached to or embedded in the surface' of IC chip card 30. (Id. at para. [0046]). However, Appellant submits that the IC chip 34 in Ho is NOT 'completely' embedded within the substrate of IC chip card 30. At best, IC chip 34 is only partially embedded in the surface of IC chip card 30. Referring to Fig. 4A of Ho above, SIM card 20 that IC chip card 30 attaches to has an opening 22. The reason for requiring an opening 22 to be formed on SIM card 20 is to accommodate the IC chip 34 that extends out of the substrate of IC chip card 30. As described in para. [0045] of Ho, 'the second IC chip 34 has a protruding bump or package 32.' Ho further explains that 'the size of the protruding bump or package 32 substantially is consistent with the size of the opening 22.' Thus, in Ho, opening 22 is formed on SIM card 20 to accommodate the protrusion of IC chip 34 out of the substrate of IC chip card 30. As such, IC chip 34 is NOT 'completely' embedded in the substrate of IC chip card 30, but instead protrudes out of the substrate of IC chip card 30. Otherwise, there would be no reason to have opening 22 formed on SIM card 20. Accordingly, Appellant submits that Ho does not cure the deficiencies of Luo with respect to this feature. (Appeal Br. 17). Appellant further argues, the Examiner's stated rationale does not explain why increasing add-on applications of wireless 5 Appeal2017-001733 Application 14/234,130 communication into Luo would require the chip to be embedded into the substrate of the label as allegedly taught by Ho. Luo already provides a chip on a label that can provide add-on applications, and thus one looking to increase add- on applications to the label of Luo would not need to embed the chip into the substrate. As such, the Examiner's stated rationale for embedding the module as allegedly disclosed by Ho in the label of Luo lacks rationale underpinning. (Id. at 18). We find Appellant's argument persuasive. Appellant correctly points out the opening 22 in Ho is formed on the first IC card 20 to accommodate a protrusion of the IC chip 34 of the second IC card 30 into the opening 22 of the first IC card 20. "[T]he first IC chip card 20 has an opening 22 for accommodating the second IC chip 34 disposed on a second substrate 37." Ho, ,r 42, see also Figure 4B. In our view, the Examiner's interpretation of Ho's "embedded in the surface" (Ho para. 46, Ans. 27-28) (see Ans. 26-28) does not meet "completely embedded." That is, in Ho, IC chip 34 can be embedded in the surface of card 30 (Ho para 46) (Ans. 28), but, because IC chip 34 has a protrusion or bump (Ho para 45), it is not clear that it meets the Examiner's definition of "embed" and the claim requirement of "completely." (Ans. 27). Since Ho discloses that the bump of the IC chip 34 protrudes from the second IC card 30, it cannot be seen how the chip 34 can be completely "fixed in a surrounding mass" of the second IC card 30, as the Examiner interprets/discusses in the Answer, page 27. 6 Appeal2017-001733 Application 14/234,130 Notwithstanding, we find that even if Ho disclosed the required "completely embedding" requirement, this teaching would not comport with the disclosure in Luo which states that "the IC chip 104 is not covered with any package molding material." (Luo ,r 27). That is, Luo's chip 104, which would be modified by the Examiner's proposed combination to be a completely embedded chip in its substrate, would thus be covered by its substrate material and hence operate explicitly against the disclosure in Lou prohibiting such covering. Since claims 2-8, 23-26, and 28-37 depend from claim 1, and since we cannot sustain the rejection of claim 1, the rejection of claims 2-8, 23- 26, and 28-37 likewise cannot be sustained. 35 U.S.C. § 112(b) REJECTION We will not sustain the rejection of claims 2-8, 26, 30, 31 and 34--37 under 35 U.S.C. § 112(b) for the reasons which follow. Concerning claim 2, the Examiner maintains that the "communication component is extraneous to the label", and thus cannot be further differentiated by a dependent claim. Appellant however argues that further defining the communication component even as an extraneous element does not invalidate the claim under 35 U.S.C. § 112(b) because "the claim sets out and circumscribes a particular area with a reasonable degree of precision and particularity." (Appeal Br. 10-11). We agree with Appellant that using claim differentiation to further specify a term properly introduced in a preceding claim reasonably prescribes the metes and bounds of the claims. 7 Appeal2017-001733 Application 14/234,130 Concerning claim 3, for the same reasons set forth above with respect to claim 2, we find no error in the recitation of claim 3 concerning the further narrowing of the communication card as a SIM card. Concerning claim 7, the Examiner finds that the claimed "secure operations" element of claim 5 is in conflict with the recited "sending secure communications using a computer communications protocol" of claim 7 which depends on claim 5. We disagree with the Examiner and agree with Appellant that claim 7' s delineation of a particular type of secure operation properly further defines the boundaries of the claimed subject matter, in this case, the secure operations element of the claims. Concerning claim 26, the Examiner's problem is with what device(s) being referred to are packaged. We agree with Appellant that "proper grammar and sentence structure dictate that the subject matter of the sentence is 'the hardware security module' and thus the hardware security module is what is packaged as a "semiconductor chip." (Appeal Br. 13). Concerning claims 23, 30, 34, 37, and claims 35, 36 which further depend thereon, the Examiner asserts that the limitations of these claims "imply that the label comprises itself ( circular reasoning)." We disagree with the Examiner and agree with the Appellant, finding that Appellant's use of the definite article "the" directly before the word "label" is consistent with a single label being referenced back to in the independent claims. Further concerning claim 3 7, we find the claim phrase "the hardware security module is not visible from the topside of the label and is not visible 8 Appeal2017-001733 Application 14/234,130 from a bottom side of the label" to be clear and unambiguous. While the term "visible" is subject to a reference point, we find nevertheless that the Examiner's problem here goes to claim breadth rather than indefiniteness. "Breadth is not indefiniteness." In re Gardner, 427 F.2d 786, 788 (1970). 35 U.S.C. § 101 DOUBLE PATENTING REJECTION We sustain the double pending rejection of claims 1-8 and 23-37 as provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of co-pending Application No. 13/875,9852 because Appellant has failed to address the double pending rejection in its Appeal Brief. In its Reply Brief, Appellant states, "[t]he double patenting rejection is not being appealed at this time and will be addressed when one or more claims become allowable." (Reply Br. 2). Therefore, we summarily sustain the double pending rejection of the rejected claims. CONCLUSIONS OF LAW We conclude the Examiner did err in rejecting claims 2-8, 26, 30, 31 and 34--37 under 35 U.S.C. § 112(b). 2 We note that the application serial number 13/875,985 has now issued as U.S. Patent 9,426,127. 9 Appeal2017-001733 Application 14/234,130 We conclude the Examiner did err in rejecting claims 1-8, 23-26 and 28-37 under 35 U.S.C. § 103(a). We conclude the Examiner did not err in rejecting claims 1-8 and 23- 26, and 28-37 as provisionally rejected on the ground of nonstatutory double patenting. DECISION The decision of the Examiner to reject claims 1-8, 23-26 and 28-37 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED. 10 Copy with citationCopy as parenthetical citation