Ex Parte Ali et al

Patent Trial and Appeal Board

Mar 24, 2014

11646825 (P.T.A.B. Mar. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte VALIUDDIN Y. ALI, MANUEL NOVOA, and
JEFFREY C. PARKER
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Appeal 2011-012166
Application 11/646,825
Technology Center 2400
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Examiner finally rejected claims 1-6, 8-13, 20, 22, and 24-26, 30,
31, and 33. (See Ans. 2). Claims 7, 14-19, 21, and 23 have been canceled.
Claims 27-29 and 32 have been withdrawn from consideration.1 (See App.
Br. 2). Therefore, claims 1-6, 8-13, 20, 22, 24-26, 30, 31, and 33 are before
us on appeal. (See App. Br. 2; Ans. 2). Appellants appeal from the final
rejection under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
This invention relates to biometric security. (Spec. 1). Claim 9,
reproduced below, is representative of the claimed subject matter:
9. A biometric security system, comprising:
[a] a security data generator stored on a first memory and
executable by a processor to generate a security payload; and
[b] a token generator stored on a second memory and
executable by the processor and configured to combine
biometric information with the security payload to form a
security token, [b2] the security payload usable to verify
integrity of the biometric information,
[c] wherein the biometric information comprises measured
biometric data acquired via a biometric measurement device, or
comprises a biometric template based on the measured
biometric data, or a combination thereof, and

1 Appellants have withdrawn claims 27-29, and 32 from consideration. (App.
Br. 3). See MPEP §1215.03 “Partial Withdrawal” (“A withdrawal of the
appeal as to some of the claims on appeal operates as an authorization [to the
Examiner] to cancel those claims from the application or reexamination
proceeding and the appeal continues as to the remaining claims.”).
Accordingly, withdrawn claims 27-29 and 32 are not before us on appeal.
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[d] wherein the security token comprises a digital verification
shell distinct from the security payload.
(Disputed limitations emphasized, elements lettered).
REJECTIONS
R1. Claim 9 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Okada (U.S. Patent Application Publication No.
2006/0005025 A1; Jan 5, 2006) ("Okada").
R2. Claims 1-6, 8, 10-13, 20, 22, and 24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Okada and Futamura (U.S.
Patent Application Publication No. 2002/0026582 A1; Feb. 28, 2002)
("Futamura").
R3. Claims 25, 26, 30, 31, and 33 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Okada, Futamura, and Russo (U.S.
Patent Application Publication No. 2003/0115475 A1; June 19, 2003)
("Russo").

GROUPING OF CLAIMS
Based on Appellants' arguments, we address the anticipation rejection
R1 of independent claim 9 separately, infra.
Based on Appellants' arguments, we decide the appeal of the
obviousness rejection R2 of claims 1-6, 10-13, 20, 22, and 24 on the basis of
claim 1, and of claim 8 separately. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 2

2 Appellants filed a Notice of Appeal on Nov. 24, 2010. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004
version of the Board Rules last published in the 2011 edition of Title 37 of
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We address § 103 rejection R3 separately, infra.

ANALYSIS
We disagree with Appellants' contentions set forth in the Briefs
regarding the Examiner's rejections of the claims. We adopt as our own: (1)
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken, and (2) the reasons set forth by the Examiner in the
Answer in response to arguments made in Appellants' Appeal Brief. (Ans.
18-23). We highlight and address specific findings and arguments
below:
R1.
Regarding the claim 9 limitation [d] "wherein the security token
comprises a digital verification shell distinct from the security payload,"
Appellants contend "Okada does not state that the biometric information is
stored along with a security payload within an integrity verification shell."
See Application, para. [0016]. (Emphasis added; Reply Br. 2).
Appellants' contentions are not persuasive because Appellants
contentions are not commensurate with the broader scope of the claims.
Specifically, claim 9 does not require or recite Appellants' contended
requirement that "biometric information is stored along with a security
payload within an integrity verification shell." (Id.).
Appellants' contention that "the Specification defines the [claimed]
digital verification shell as containing a biometric template and a security
payload" is not persuasive because Appellants' cited support (Spec. ¶ [0016])

the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also MPEP Rev. 8, July 2010.
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is silent regarding the claim term "digital verification shell."3 (Emphasis
added; Reply Br. 2).
Regarding the “integrity verification shell 118” that is described in
paragraph 16 of the Specification, we decline to read limitations from the
Specification into the claims. Our reviewing court guides: “although the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those embodiments
. . . claims may embrace ‘different subject matter than is illustrated in the
specific embodiments in the specification.’” Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (citations omitted). Moreover,
because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
For these reasons, on this record, we are not persuaded the Examiner
erred. Accordingly, we sustain the anticipation rejection of independent
claim 9 over Okada.

3 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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R2. CLAIM 1
Regarding the claim 1 limitation "wherein the security token
comprises a digital verification shell distinct from the security payload;"
Appellants essentially restate the same contentions asserted for claim 9
limitation [d] i.e., that "Okada fails to disclose a security token that
comprises a digital verification shell distinct from the security payload."
(App. Br. 14; Reply Br. 3). However, we are not persuaded the Examiner
erred regarding the § 102 rejection of claim 9 for the reasons discussed
above. Accordingly, we sustain §103 rejection R2 of claim 1, and of claims
2-6, 10-13, 20, 22, and 24, which fall therewith.

R2. CLAIM 8
Regarding the claim 8 limitations [a] "verifying integrity comprises
verifying integrity via the digital verification shell, . . . [b] wherein the
digital verification shell is disposed outside of and forming a virtual shell
around the biometric information and the security payload," (emphasis
added) Appellants contend:
The Examiner further argues that Okada discloses generic
context g which has an authenticator block that functions as a
digital verification shell. See id. However, Okada merely
discloses a biometric device specific context that includes
biometric information and an authenticator for assuring data
integrity of the biometric device specific context. See Okada,
paras. [0129], [0144], and [0145]. The authenticator block ga
simply assures data integrity of the generic context. See id. at
[0143]. Additionally, Futamura merely discloses encrypting a
biometric template. See Futamura, para. [0229].
Thus, neither Okada nor Futamura discloses "wherein verifying
integrity comprises verifying integrity via the digital
verification shell . . . wherein the digital verification shell is
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disposed outside of and forming a virtual shell around the
biometric information and the security payload," as recited in
dependent claim 8.
(Paragraph return added; Reply Br. 4).
Appellants' contentions are not persuasive because Appellants fail to
traverse the specific factual findings and legal conclusions made by the
Examiner. (Id.). Specifically, Appellants summarize teachings of the
references and then make the conclusory statement "[t]hus, neither Okada
nor Futamura discloses" claim 8 limitations. (Id.).4 Appellants' summary of
teachings is not a substantive argument because the summary fails to
identify specific error in the Examiner's findings and explain why the
Examiner erred. (Id.; Ans. 21-22). Appellants' conclusory statement is also
unpersuasive because Appellants' statement does not identify any specific
errors in the Examiner's findings and legal conclusions.5 (Id.). For these

4 A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37 C.F.R.
§ 41.37(c)(1)(vii). We decline to examine the claims sua sponte, looking for
distinctions over the prior art. 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 appellant, looking for [patentable]
distinctions over the prior art.”). See also Ex parte Belinne, No. 2009-
004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative).

5 Attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984). "Argument in the brief does not take the place of evidence
in the record. " In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re
Cole, 326 F.2d 769, 773 (CCPA 1964)).
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reasons, on this record, we are not persuaded the Examiner erred. Therefore,
we sustain §103 rejection R2 of claim 8.

R3 CLAIM 30
Regarding the claim 30 limitation "wherein the security token
comprises a digital verification shell distinct from the security payload,"
Appellants essentially restate the same contentions asserted for claim 9.
(App. Br. 16). However, we are not persuaded the Examiner erred regarding
the rejection of claim 30 for the same reasons given above regarding the
§ 102 rejection of claim 9. Therefore, we sustain §103 rejection R3 of claim
30.

R3. REMAINING CLAIMS
Appellants argue dependent claims 25, 26, 31 and 33 are patentable
by virtue of their dependency from parent claims 1, 9, and 30. (App.
Br. 17). However, we find no deficiencies regarding the Examiner’s
rejections of claims 1, 9, and 30 for the reasons discussed above.
Accordingly, we sustain the Examiner's §103 rejection R3 of claims 25, 26,
31 and 33.

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DECISION
We affirm the Examiner's rejection R1 of claim 9 under § 102.
We affirm the Examiner's rejection R2 of claims 1-6, 8, 10-13, 20, 22,
and 24 under § 103.

We affirm the Examiner's rejection R3 of claims 25, 26, 30, 31, and
33 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED

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