Ex Parte Bechtel

Patent Trial and Appeal Board

Nov 19, 2014

11267365 (P.T.A.B. Nov. 19, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/267,365 11/03/2005 J. Scott Bechtel 8855-010 9953
4678 7590 11/20/2014
MACCORD MASON PLLC
300 N. GREENE STREET, SUITE 1600
P. O. BOX 2974
GREENSBORO, NC 27402
EXAMINER
STREGE, JOHN B
ART UNIT PAPER NUMBER
2665
MAIL DATE DELIVERY MODE
11/20/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte J. SCOTT BECHTEL
____________________

Appeal 2012-005171
Application 11/267,365
Technology Center 2600
____________________

Before JEFFREY S. SMITH, MICHAEL J. STRAUSS, and
LINZY T. MCCARTNEY, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-005171
Application 11/267,365
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–4, 6–17, 19–24, and 27–30. Claims 5 and 18 are objected to as
being dependent upon a rejected base claim but would be allowable if
rewritten in independent form. Claims 25 and 26 are cancelled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
The claims are directed to a finger guide device. Abst. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1 A finger guide device for mounting in alignment with a
fingerprint sensor, the fingerprint sensor being disposed in a
position of a global minimum relative to said finger guide
device, the finger guide device having side surfaces that form a
recess for receiving a finger, the side surfaces having a
coefficient of friction that is sufficiently low for enabling the
finger to slide downwardly until reaching a stable position of
global minimum over the fingerprint sensor, the side surfaces of
the finger guide device having a forward and backward portion,
the side surfaces of the finger guide device having side edges,
whereby the finger guide device aligns the finger with the
fingerprint sensor in essentially the same position in an
axial direction to capture a relevant portion of the finger,
said axial alignment occurring along a forward and
backward portion of the finger guide device, the forward
and backward portion of the side surfaces of the finger
guide device guiding the finger toward the same position
in the axial direction onto the fingerprint sensor in a
repeatable manner for purposes of identification and
authentication,
whereby the finger guide device aligns the finger with the
fingerprint sensor in essentially the same position in a
lateral direction to capture the relevant portion of the
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finger, said lateral alignment occurring between side
edges of the finger guide device, the side edges of the
side surfaces of the finger guide device guiding the finger
toward the same position in the lateral direction onto the
fingerprint sensor in a repeatable manner for purposes of
identification and authentication, and
whereby the recess is defined by sloped end walls in the
axial direction, the end wall in the axial direction which,
in use, is adjacent the tip of the user's finger being more
steeply sloped than the end wall in the axial direction
which, in use, is remote from the tip of the user's finger,
and
whereby the finger guide device enables the relevant portion
of the finger to rest in a stable position onto the
fingerprint sensor each time identification and
authentication is needed, the finger guide device reducing
incidents of "false rejects" for purposes of identification
and authentication of a person touching the finger guide
device, the fingerprint sensor being in alignment with the
finger guide device and in a proper position to provide
the relevant portion of the fingerprint.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Planke
Matchett
Setlak
Kinsella
US 3,955,179
US 5,229,764
US 5,963,679
US 6,148,094
May 4, 1976
July 20, 1993
Oct. 5, 1999
Nov. 14, 2000
Allen
Amano
US 2004/0124246 A1
US 2005/0053264 A1
July 1, 2004
Mar. 10, 2005 (filed July 9, 2003)
Tsuda et al. JP 3226888, Oct. 7, 1991

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REJECTIONS
The Examiner made the following rejections:
Claims 1, 3, 4, 22–24, and 27–30 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Tsuda. Ans. 4–8.
Claims 2, 6, 11, 12 and 14–17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Tsuda. Ans. 9–10.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsuda and Matchett. Ans. 10–11.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsuda and Planke . Ans. 11–12.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsuda and Kinsella . Ans. 12–13.
Claims 13 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsuda and Setlak. Ans. 13.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsuda and Amano. Ans. 13–14.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsuda and Allen. Ans. 14–15.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 4–15) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 15–18) and concur with the
conclusions reached by the Examiner. We highlight the following arguments
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seriatim as they are presented in the Appeal Brief, pages 5–14, incorporating
Appellant’s issue numbering for ease of reference only.

Issue 1: Claims 1 and 27
Appellant contends Tsuda fails to disclose the disputed limitation of
“the side surfaces having a coefficient of friction that is sufficiently low for
enabling the finger to slide downwardly until reaching a stable position of
global minimum over the fingerprint sensor” as required by claims 1 and 27.
App. Br. 8. Appellant argues “[w]hile it is true that all materials have
frictional properties, the analysis in the final rejection misunderstands the
purpose of the structures subject to having a ‘coefficient of friction’ and
therefore, in a corrected analysis, Tsuda cannot anticipate Appellant’s
invention.” App. Br. 9. According to Appellant, because of Tsuda’s low
profile sloping structure, there is “a ‘natural tendency’ to avoid touching his
side structures” so there is no need for (and no disclosure of) a low
coefficient of friction. Id. The Examiner responds by noting the disputed
limitation does not specify a numeric coefficient of friction and by finding
[T]he device of Tsuda must at least inherently have a low enough
friction, since a finger can be guided (page 6, penultimate paragraph),
and the guide parts are “smoothly linked” in the first paragraph on
page 6, and clearly meets the limitation of “having a coefficient of
friction that is sufficiently low for enabling the finger to slide
downwardly.”
Ans. 16–17.
We agree with the Examiner. Although arguing there is a tendency to
avoid touching the side surfaces so that Tsuda’s device need not exhibit a
low coefficient of friction, Appellant fails to address Tsuda’s disclosure of
smoothly linked guide parts or the Examiner’s reasoning in finding the side
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surfaces must have a low coefficient of friction to function as guides.
Therefore, in the absence of sufficient evidence or technical reasoning in
rebuttal to the Examiner’s findings, Appellant’s argument in connection with
issue 1 is unpersuasive of error.

Issue 2: Claims 1, 22, 28, and 30
Appellant contends Tsuda fails to disclose the disputed limitation of
“the recess being defined by sloped end walls in the axial direction, the end
wall in the axial direction adjacent the tip of the user's finger being more
steeply sloped than the end wall in the axial direction that is remote from the
tip of the user's finger” as required by claims 1, 22, 28, and 30. Appellant
argues “[t]he Tsuda finger guide is a community finger guide and must
accommodate all sizes of fingers. Only the largest fingers will reach the
sloped end wall. For all other fingers, the Tsuda finger guide is effectively
flat.” App. Br. 11. The Examiner responds by finding Tsuda’s side walls
formed by fingertip holding part 111 and fingerprint impression face 101
define a recess disclosing the disputed limitation.
We agree with the Examiner. Although arguing the disputed
limitation is not inherent in Tsuda (App. Br. 5), Appellant fails to explain
what aspects of the disputed limitation are not disclosed by Tsuda or why the
Examiner’s reasoning is flawed in finding the limitations are disclosed by
Tsuda. While Appellant disputes the Examiner’s “inherency” finding at
page 5, line 17 – page 6, line 2 of the Final Office Action of January 13,
2011, corresponding to Ans. 7, (App. Br. 5), it is not clear what specific
features are contended not to be inherent and/or would not necessarily exist
by virtue of the structure of Tsuda’s finger guide. We agree with the
Examiner’s finding that the structural elements of the disputed limitation are
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disclosed by Tsuda. Because of the structure we further agree Tsuda’s finger
guide positions a finger as required by the disputed claims. Therefore, in the
absence of sufficient evidence or technical reasoning rebutting the
Examiner’s findings, we are unpersuaded of error.

Issues 3–5: Claims 11, 29, and 30
Appellant contends the functionality of the finger stop “serving as
‘the’ reference for positioning the finger relative to the fingerprint sensor”
(claim 11), “physically but non-forcibly encouraging the finger into the
correct position relative to the fingerprint sensor” (claim 29), and the finger
guide being adaptable for use with many different sized fingers (claims 29
and 30) are not inherent in Tsuda’s finger guide. App. Br. 5. Although
arguing “the user’s finger is apt to slip and slide in the Tsuda finger guide”
(App. Br. 12) and “if the[user’s] finger is not long enough to reach the end of
the finger guide, the effective slope of the Tsuda guide is flat” (App. Br. 13),
Appellant does not provide evidence or an explanation of why, in those cases
where the user’s finger does not slide or is not too short, i.e., when, by
employing proper design choice so that Tsuda’s finger guide is appropriately
sized to a particular finger as per its intended function, the disputed
limitations do not result. Instead, we find the Examiner’s findings are
supported by sufficient and persuasive technical reasoning which Appellant
fails to effectively rebut. See Ans. 17–18.

Issue 6: Claim 11
Appellant contends the positioning tolerances of between 0.20 and
0.90 inches required by claim 11 are neither disclosed by nor inherent in
Tsuda. App. Br. 6. However, rather than finding the quantitative
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measurements inherent, the Examiner finds the values to be obvious
“because the sensor must be on the scale of the normal human finger.” Ans.
18. We agree with the Examiner. Therefore, in the absence of sufficient
evidence or argument in rebuttal to the Examiner’s findings, we are
unpersuaded of error.
On the record before us we are unpersuaded of Examiner error in
connection with the argued independent claims. Accordingly, we sustain the
rejection of independent claims 1, 22, and 27–30 under 35 U.S.C. § 102(b)
as being anticipated by Tsuda together with the rejection of dependent
claims 3 and 4, which were not separately argued. For the same reasons we
sustain the rejection of independent claim 11 under 35 U.S.C. § 103(a) over
Tsuda together with the rejection of dependent claims 2, 6, 12, and 14–17,
which were not separately argued. Furthermore, and for the same reasons,
we sustain the rejections of claims 7 and 8 under 35 U.S.C. § 103(a) over
Tsuda and Matchett, claim 9 over Tsuda and Planke, claim 10 over Tsuda
and Kinsella, claims 13 and 19 over Tsuda and Setlak, claim 20 over Tsuda
and Amano, and claim 21 over Tsuda and Allen, these dependent claims also
not separately argued.

DECISION
The Examiner’s decision to reject claims 1–4, 6–17, 19–24, and 27–
30 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)(1)(iv) (2009).

AFFIRMED
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