Ex Parte Brands et al

Patent Trial and Appeal Board

Sep 26, 2017

14684315 (P.T.A.B. Sep. 26, 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.
14/684,315 04/10/2015 Jan Brands 81624407US03 6492
65913 7590 09/28/2017
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
POWERS, WILLIAM S
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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):
ip. department .u s @ nxp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN BRANDS, TIMOTHEUS VAN ROERMUND,
PIOTR POLAK, FRISO JEDEMA, and JAN HOOGERBRUGGE
Appeal 2017-006717
Application 14/684,3151
Technology Center 2400
Before LINZY T. McCARTNEY, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—14. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 Appellants do not identify a real party in interest in the Appeal Brief. “If
an appeal brief does not contain a statement of the real party in interest, the
Office may assume that the named inventor or inventors are the real party in
interest.” 37 CFR § 41.37(c)(l)(i). Accordingly, we assume the named
inventors are the real party in interest. We also note, however, assignment
records at the U.S. Patent and Trademark Office indicate an assignment of
the application on appeal to Morgan Stanley Senior Funding, Inc.
Reel/Frame: 038017/0058, recorded March 7, 2016.
Appeal 2017-006717
Application 14/684,315
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention is generally directed to
managing the use of—and access to—a secret value stored within the
memory device of a radio frequency identification (“RFID”) tag. Spec. 1:6—
10. Specifically, a read-only-once functionality is described. See, e.g.,
Spec. 2:9—10, 2:17—29. In a disclosed embodiment, after a secret value
stored within a memory device has been retrieved, the secret value is deleted
(or otherwise made inaccessible). Spec. 2:24—3:10. The Specification
describes that the secret value may be retrieved if a predefined read enabling
command is received comprising a key code that is associated with a
corresponding read lock code stored within the tag. Spec. 2:30-33, 5:32—
6:14.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics'.
1. An electronic circuit chip for an RFID tag, the electronic circuit
chip comprising:
an access circuit configured to couple the electronic circuit chip
to an antenna element of the RFID tag; and
a memory device being connected to the access circuit, wherein
the memory device is configured to store a secret value, make
retrievable the stored secret value after receipt of a predefined enabling
command by a protection circuit, wherein the predefined enabling
command comprises a predefined read key code that is compared with
a predefined read lock code stored within the electronic circuit chip,
and delete the stored secret value, wherein deleting the stored secret
value is accomplished if the stored secret value has been retrieved by
means of a first attempt procedure for retrieving the stored secret value.
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Application 14/684,315
The Examiner’s Rejections
1. Claims 1, 3—6, 8—11, and 14 stand rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by Vuillaume et al. (US 2009/0187766 Al;
July 23, 2009) (“Vuillaume”) in view of Maletsky et al. (US 5,974,500;
Oct. 26, 1999) (“Maletsky”).2 Final Act. ^U8.
2. Claim 2 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Vuillaume, Maletsky, and Zimmer et al. (US 7,107,388
B2; Sept. 12, 2006) (“Zimmer”). Final Act. 8.
3. Claim 7 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Vuillaume, Maletsky, and Schrenk (US 4,572,946;
Feb. 25, 1986). Final Act. 8-9.
4. Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Vuillaume, Maletsky, and Iwayama (US 2012/0048934
Al; Mar. 1, 2012). Final Act. 9—10.
ANALYSIS3
Appellants assert the Examiner erred in finding Vuillaume discloses a
memory device makes retrievable a stored secret value after receipt of a
2 In rejecting claims 1, 3—6, 8—11, and 14 under 35 U.S.C. § 102(a)(1) as
being anticipated by Vuillaume, the Examiner cites Maletsky merely as
extrinsic evidence to show the knowledge of one of ordinary skill in art
given the cited disclosures of Vuillaume. See Final Act. 5 (citing Maletsky
1:35—50, 2:44—52, 3:9-17, 4:4—11). Similarly, Appellants identify these
claims as rejected under § 102(a)(1) as being anticipated by Vuillaume, with
Maletsky cited by the Examiner as an evidentiary reference. App. Br. 4.
3 Throughout this Decision, we have considered the Appeal Brief, filed
January 13, 2017 (“App. Br.”); the Reply Brief, filed March 21, 2017
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Application 14/684,315
predefined enabling command, wherein the predefined enabling command
comprises a predefined read key code that is compared with a predefined
read lock code. App. Br. 5; Reply Br. 2—3. In particular, Appellants argue
the Examiner applies an overly broad and unreasonable construction to the
claim term “predefined” as it relates to a predefined read lock code of the
predefined enabling command. App. Br. 5; Reply Br. 2—3. Further,
Appellants argue Vuillaume discloses a challenge-response system wherein
a signature is generated for a random challenge. App. Br. 5 (citing
Vuillaume Tflf 60, 66). Specifically, Appellants argue that one of ordinary
skill in the art would not find that Vuillaume’s random challenge is
predefined. App. Br. 5. Additionally, Appellants assert because
Vuillaume’s authentication protocol uses a random challenge, Vuillaume
teaches away from the claimed use of “a predefined enabling command.”
Reply Br. 2.
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Additionally, absent an express intent to impart a novel meaning to a claim
term, the words take on the ordinary and customary meanings attributed to
them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).
(“Reply Br.”); the Examiner’s Answer, mailed March 9, 2017 (“Ans.”); and
the Final Office Action, mailed October 13, 2016 (“Final Act.”), from which
this Appeal is taken.
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Application 14/684,315
Further, we are mindful that limitations are not to be read into the claims
from the Specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
Here, Appellants’ Specification does not provide a limiting definition
for the term “predefined.” Instead, the Specification merely provides non­
limiting examples of phrases that include the term “predefined.”
Accordingly, “predefined” is given its ordinary and customary meaning of
being determined or defined in advance. Regarding the predefined read key
code and predefined key lock code, the Specification discloses broadly that a
predefined read enabling command may be any command suitable for
excluding authorized entities from retrieving the secret value. Spec. 6:3—4.
Further, the Specification discloses non-limiting examples in which a
predefined read lock code may be a certain lock code, a pin code, or a
password code. See, e.g., Spec. 6:4—10, 18—22, 12:6—8, 14:9-12.
Additionally, we note the Specification states the described key code
procedure could be combined with the functionality described in U.S. Patent
Publication No. 2008/0109899 A1 (published May 8, 2008) (“Van”).
Spec. 6:18—19. Van is generally directed to a one-time authentication
system for verifying the authenticity of an electronic tag (i.e., an RFID tag).
Van 11. Van describes a “pre-computed challenge” and “pre-computed
response” implementation wherein “both [(i.e., the pre-computed challenge
and pre-computed response)] may be random numbers.” Van || 8—9. Thus,
Appellants’ Specification contemplates using a key code procedure
incorporating random numbers.
Vuillaume discloses an RFID chip including a memory controller that
governs access to a memory unit. Vuillaume 1123, Figs. 1, 2. The memory
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Application 14/684,315
unit includes, inter alia, a read-once memory that stores encrypted arrays
(i.e., secret values). Vuillaume 1124, Fig. 2. Additionally, Vuillaume
describes the process for retrieving the encrypted arrays as a challenge-
response authentication protocol. Vuillaume 49—52, 60-66, Figs. 4, 6. A
prover (i.e., the RFID chip) and a verifier (i.e., the RFID reader) can perform
an authentication protocol where the verifier sends a random challenge to the
prover, which replies with a signature of the challenge. Vuillaume 60,
125, Figs. 2, 12. Upon verifying the signature of the challenge, one of the
secret arrays is revealed to the prover. Vuillaume 60, 66.
We disagree with Appellants that the Examiner unreasonably
broadened the scope of the claim language in finding Vuillaume discloses a
“predefined read lock code,” as recited in claim 1. As the Examiner finds,
Vuillaume discloses an authentication protocol in which a verifier (an RFID
reader) sends a random challenge to a prover (an RFID chip), which replies
with a signature of the challenge in order to read a secret array stored in the
prover’s read-once memory. See Final Act. 4—5 (citing Vuillaume 123—
125); see also Vuillaume, 1 60, Figs. 1, 2. Contrary to Appellants’
arguments, the Examiner explains Vuillaume’s random challenge is
“predefined” because for any given instance of Vuillaume’s authentication
protocol, the value of the random challenge must be set before being sent to
the prover (i.e., determined in advance). Ans. 11. This maintains the
integrity of Vuillaume’s authentication protocol such that the prover is able
to read the correct random challenge value and reply with the correct
signature of the challenge in order to read the secret array successfully. See,
e.g., Vuillaume ]Hf 60, 125. For similar reasons, we are unpersuaded by
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Appellants’ argument that Vuillaume does not disclose “apredefined
enabling command.”
Further, we are unpersuaded by Appellants’ argument that Vuillaume
teaches away from the claimed use of “a predefined enabling command”
because “whether a reference ‘teaches away’ from [an] invention is
inapplicable to an anticipation analysis.” ClearValue, Inc. v. Pearl River
Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012) (quoting Celeritas
Techs., Ltd. v. Rockwell Inti Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)).
Additionally, Appellants belatedly argue for the first time in the Reply
Brief that “Maletsky’s protection bits cannot reasonably be construed [as]
equivalent to a read key code. . . . [and] Maletsky does not compare
predefined read key and lock codes.” Reply Br. 2.
These arguments were not made in the Appeal Brief, but could have
been, and are not responsive to any new evidence set forth by the Examiner
in the Answer. In the absence of a showing of good cause by Appellants,
these arguments are untimely and deemed waived.
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
[E]xaminer’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
37 C.F.R. § 41.41(b)(2) (2012); see also Ex parte Nakashima, 93 USPQ2d
1834, 1837 (BPAI2010) (informative) (explaining that arguments and
evidence not presented timely in the principal brief, will not be considered
when filed in a Reply Brief, absent a showing of good cause explaining why
the argument could not have been presented in the principal brief); Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply
brief [is not] an opportunity to make arguments that could have been made
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Application 14/684,315
in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.”).
Nonetheless, Appellants’ arguments are unpersuasive because the
Examiner does not rely on Maletsky to disclose the predefined read key code
and predefined read lock code. Instead, as discussed above, the Examiner
finds Vuillaume discloses these limitations. Final Act. 4—5 (citing
Vuillaume Tflf 123—125). Appellants do not persuasively rebut these findings
of the Examiner.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claim 1 and, for
similar reasons, the rejection of independent claims 11 and 14, which were
not argued separately. See App. Br. 5; Reply Br. 1—3. Further, we sustain
the Examiner’s rejections of claims 2—10, 12, and 13, which depend
therefrom and were not argued separately beyond the arguments advanced
for claim 1. See App. Br. 6—9; Reply Br. 1—3.
DECISION
We affirm the Examiner’s decision rejecting claims 1—14.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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