Ex Parte Colnot

Patent Trial and Appeal Board

Jun 19, 2018

13632907 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/632,907 10/01/2012
65913 7590 06/21/2018
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
FIRST NAMED INVENTOR
Cedric Colnot
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.
81524742US01 9168
EXAMINER
LEFFALL-ALLEN, NAKIA
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CEDRIC COLNOT
Appeal2017-003961
Application 13/632,907 1
Technology Center 3600
Before DAVID M. KOHUT, JOHN P. PINKERTON, and
BETH Z. SHAW, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which constitute all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 NXP B.V. ofEindhoven, NETHERLANDS, is designated as assignee of
this application. Spec. ,r 1.
Appeal2017-003961
Application 13/632,907
STATEMENT OF THE CASE
Introduction
Appellant describes the disclosed and claimed invention as follows:
In accordance with the invention, in order to validate a
transaction on a mobile handset, PC, tablet or similar device, a
user closes the loop between a non-secure display controlled by
a host processor and a secure keypad controlled by a secure
processor such as a master secure element or trusted execution
environment. The user validates the transaction by entering on
the secure keypad the data shown on the non-secure display. The
transaction is validated because the user only enters the data that
the user agrees to and only the user is able to enter the data.
Abstract. 2
Claim 1 is illustrative and reproduced below (with the disputed
limitations emphasized in italics):
1. A method of validating a transaction using both a secure
input and a non-secure output comprising:
storing secret data in the secure processor;
sending first data from a host processor to a secure
processor;
sending a validation request from the secure processor to
the host processor in response to receipt of the first data by the
secure processor;
sending second data from the host processor to the non-
secure output;
2 Our Decision refers to the Final Office Action mailed Mar. 9, 2016 ("Final
Act."); Appellant's Appeal Brief filed July 20, 2016 ("App. Br."); the
Examiner's Answer mailed Dec. 15, 2016 ("Ans."); and the original
Specification filed Oct. 1, 2012 ("Spec.").
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Application 13/632,907
accepting a user input of both the second data and
authenticating secret data into the secure input;
sending both the accepted second data and the accepted
authenticating secret data from the secure input to the secure
processor; and
validating the transaction, in the secure processor, when
the first data and the accepted second data are equivalent and
the accepted authenticating secret data match the stored secret
data.
App. Br. 16 (Claims App'x).
Rejections on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written-description requirement. Final Act. 4.
Claims 1-6 stand rejected under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly claim the
subject matter which the inventor regards as the invention. 3 Final Act. 5.
Claims 1--4, 7-9, 12, and 15 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over Klein et al. (US 2012/0158567 Al; published
Mar. 29, 2007) ("Klein") and Gifford (US 5,724,424; issued Mar. 3, 1998).
Final Act. 5-8.
Claims 5, 6, 10, 11, 13, 14, and 16-20 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Klein, Gifford, and Varadarajan et al.
(US 2014/0040147 Al; published Feb. 6, 2014) ("Varadarajan").
3 The Examiner withdrew the rejection of claims 7-20 under 35 U.S.C.
§ 112, second paragraph. Ans. 3.
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Application 13/632,907
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments in the Appeal Brief. For the reasons discussed infra, we are
persuaded by Appellant's arguments that the Examiner erred in rejecting
(1) claims 1-20 under 35 U.S.C. §§ 103(a) and 112, first paragraph, and (2)
claims 1-6 under 35 U.S.C. § 112, second paragraph.
Rejection of Claims 1-20 Under§ 112, First Paragraph
The Examiner notes that claims 1 and 7 recite "storing secret data in
the secure processor" and finds Appellant fails to comply with the written
description requirement because Appellant's Specification "does not detail
to one of ordinary skill in the art the step of data (PIN) being saved within
the secure processor. Ans. 3; Final Act. 4.
Appellant argues the Specification explains that, because keypad 110
is fully controlled by secure processor (SP) 120, "the user can safely enter
confidential data such as a PIN code that is directly transferred to application
155 which runs on SP 120." App. Br. 6 (citing Spec. ,r 15). Appellant also
argues, and we agree, that one of ordinary skill in the art would understand
how the PIN is 'being stored and/or saved to/within the SP."' Id. Thus, we
find the Specification reasonably conveys to those of ordinary skill in the art
that the inventor had possession of the "storing secret data" limitations as of
the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en bane). Accordingly, we do not sustain the
rejection of claims 1-20 under§ 112, first paragraph.
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Application 13/632,907
Rejection of Claims 1-6 Under§ 112, Second Paragraph
The Examiner notes that claim 1 recites "accepting a user input of
both the second data and authenticating secret data into the secure
input" and finds "it is unclear what is meant by 'both the second data."'
Ans. 4. Appellant argues "there is no lack of clarity in this step." App. Br.
7. Appellant also argues that, consistent with the claim limitation, the
Specification discloses the "user enters, in addition to the transaction
amount, secret data such as a PIN code." Id. (citing Spec. ,r 19). We note
the Examiner withdrew the§ 112, second paragraph, rejection of claim 7
that recites "accepting a user input of the second data and authenticating
secret data into the secure input." Ans. 3. The only difference in the
"accepting" limitation of claim 7 and the "accepting" limitation of claim 1 is
the use of the term "both." Contrary to the Examiners' finding, we conclude
the use of "both" in the "assigning" limitation of claim 1 does not render the
limitation ambiguous, but instead emphasizes that the user inputs two items
of data-"the second data and authenticating secret data."
Thus, we conclude that the "assigning" limitation of claim 1 "clearly
set[s] forth the meets and bounds of the claimed subject matter." See In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) ("[C]laims are required to be
cast in clear-as opposed to ambiguous, vague, indefinite-terms.").
Accordingly, we do not sustain the Examiner's rejection of claims
1---6 under§ 112, second paragraph.
Rejection of Claims 1-4, 7-9, 12, and 15 Under§ 103(a)
The issue raised by Appellant's arguments is whether the combination
of Klein and Gifford teaches or suggests "validating the transaction, in the
secure processor, when the first data and the accepted second data are
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Application 13/632,907
equivalent and the accepted authenticating secret data match the stored
secret data," as set forth in claim 1 and similarly recited in claim 7. App. Br.
9.
The Examiner finds the portion of the "validating" limitation stating
"when the first data and the accepted second data are equivalent and the
accepted authenticating secret data match the stored secret data" "merely
states the result of the limitation ... and adds nothing to the patentable or
substance of the claim." Ans. 3 (citing Texas Instruments Inc. v.
International Trade Commission, 26 USPQ2d 1010 (Fed. Cir. 1993); Griffin
v. Bertina, 62 USPQ2d 1431 (Fed. Cir. 2002); Amazon.com Inc. v.
Barnesandnoble.com Inc., 57 USPQ2d 1747 (Fed. Cir. 2001)). The
Examiner also finds that Klein teaches the "validating" limitation. Ans. 4
(citing Klein Abstract, ,r,r 27,-29, 37). The Examiner further finds that the
"when" portion of the limitation is "optional language" that is not required
to be performed and does not limit the claim. Ans. 4 ( citing MPEP § 2103 I.
C).
We are persuaded by Appellant's arguments that the Examiner erred.
First, regarding construction of the "validating" limitation, we agree with
Appellant that the "when" clause does not merely state the "result of the
limitation." App. Br. 9. Instead, as Appellant argues, and we agree, the step
of "validating" only occurs when both of the recited conditions are true-----the
first data and the accepted second data are equivalent and the accepted
authenticating data match the stored secret data. Id. Appellant also argues
that the Specification emphasizes that both the transaction amount and PIN
code are used in the validation process of claim 1. Id. ( citing ,r 24). Thus,
we conclude that the "when" clause of the validating limitation is not similar
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or analogous to a "whereby" or "wherein" clause that merely states the result
of performing the limitations in the claim. See Texas Instruments Inc. v.
International Trade Commission, 988 F.2d 1165, 1172 (Fed. Cir. 1993);
Griffin v. Bertina, 285 F.3d 1029, 1033 (Fed. Cir. 2002). We also do not
agree with the Examiner's finding that the "when" clause is "optional"
because claim 1 recites a method of "validating a transaction" and, as
Appellant argues, the "validating" step only occurs when the two recited
conditions in the "when" clause are met. Thus, we agree with Appellant that
under the broadest reasonable interpretation, the "when" clause limits the
scope of the "validating" limitation of claim 1 and must be given patentable
or substantive effect.
Appellant argues that "Klein lacks any disclosure of matching
accepted authenticating secret data to stored secret data in combination with
comparing first data to second data." App. Br. 9. Although we agree with
the Examiner that Klein teaches a method for securely verifying the
authenticity of users communicating over non-secure channels, the Examiner
has not sufficiently articulated how the cited portions of Klein teach or
suggest "validating the transaction ... when the first data and the accepted
second data are equivalent and the accepted authenticating secret data match
the stored secret data," as recited in claims 1 and 7. Appellant also argues
Gifford fails to remedy the deficiencies of Klein. Id. Although the
Examiner cites to Gifford in the Final Office Action (Final Act. 6, citing
Fig. 14, 6:28--49, 8:25-31), the Examiner has also not sufficiently articulated
on this record how the combination of Klein and Gifford teaches or suggests
the "validating" limitations.
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Based on this record, we are persuaded the Examiner erred in finding
Klein, or the combination of Klein and Gifford, teaches or suggests the
"validating" limitation of claims 1 and 7. Accordingly, we do not sustain the
Examiner's rejection of claims 1 and 7, and dependent claims 2---6 and 8-20,
under§ 103.
DECISION
We reverse the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 112, first paragraph.
We reverse the Examiner's rejection of claims 1-6 under 35 U.S.C.
§ 112, second paragraph.
We reverse the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 103(a).
REVERSED
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