Ex Parte Corda et al

Patent Trial and Appeal Board

Mar 31, 2016

12670691 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/670,691 01/26/2010
36532 7590 04/04/2016
Treyz Law Group
870 Market Street, Suite 984
San Francisco, CA 94102
FIRST NAMED INVENTOR
Alexandre Corda
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.
Q014US1 4350
EXAMINER
MAI, THIENT
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
docket@treyzlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDRE CORDE, ISMAILA WANE, and
VINCENT LEMONNIER
Appeal2014-002216
Application 12/670,691
Technology Center 2800
Before KAL YANK. DESHPANDE, DAVID M. KOHUT, and
JUSTIN T. ARBES, Administrative Patent Judges.
DESHPANDE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-002216
Application 12/670,691
STATEMENT OF CASE1
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner's
Final Rejection of claims 1-9 and 12-20, which constitute all the claims
pending in this application. 2 We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to applications stored on a
contactless smart card. Spec. 1: 19-26.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below:
1. A mobile communication device being connectable to a
contactless smart card and comprising an applications manager
adapted to retrieve applications from a connected contactless
smart card, to check whether the applications meet at least one
validity criterion and to delete those applications from the
contactless smart card that do not meet the validity criterion.
REFERENCES
The Examiner relies on the following prior art:
Fibranz et al.
("Fibranz")
V anska et al.
("V anska")
Nystrom et al.
("Nystrom")
US 2002/0089890 Al
US 2005/0222918 Al
US 2009/0313689 Al
July 11, 2002
(filed Dec. 24, 2001)
Oct. 6, 2005
(filed June 1, 2005)
Dec. 17, 2009
(filed Dec. 15, 2005)
1 Our decision makes reference to Appellants' Reply Brief ("Reply Br.,"
December 4, 2013), and Appellants' Appeal Brief ("App. Br.," filed October
22, 2013), the Examiner's Answer ("Ans.," mailed November 20, 2013), and
Final Office Action ("Final Act.," mailed August 9, 2013).
2 Claims 10 and 11 were canceled previously.
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Application 12/670,691
REJECTIONS
Claims 1-9, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
obvious over Vanska and Nystrom. Final Act. 2--4.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as obvious over
Nystrom and Fibranz. Final Act. 4--5.
Claims 15-20 stand rejected under 35 U.S.C. § 103(a) as obvious over
Vanska, Nystrom, and Fibranz. Final Act. 5---6.
ISSUES3
The issue of whether the Examiner erred in rejecting claims 1-9, 12,
and 13 under 35 U.S.C. § 103(a) as obvious over Vanska and Nystrom turns
on whether (a) Nystrom teaches a mobile communication device comprising
an "applications manager adapted to retrieve applications from a connected
contactless smart card," as recited in independent claim 1, and similarly
recited in independent claims 6 and 12; and (b) the Examiner improperly
combined Vanska and Nystrom.
The issue of whether the Examiner erred in rejecting claim 14 under
35 U.S.C. § 103(a) as obvious over the combination of Nystrom and Fibranz
turns on whether Nystrom teaches a "processor connectable to a contactless
smart card memory" and performing the step of "checking whether the
applications meet at least one validity criterion," as recited in independent
claim 14.
3 Appellants do not argue separately the rejection of claims 15-20 under 35
U.S.C. § 103(a) as obvious over the combination ofVanska, Nystrom, and
Fibranz. See App. Br. 11-12.
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Application 12/670,691
ANALYSIS
Claims 1-9, 12, and 13 rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Vanska and Nystrom
Appellants contend that Nystrom fails to teach a mobile
communication device comprising an "applications manager adapted to
retrieve applications from a connected contactless smart card," as recited in
independent claim 1, and similarly recited in independent claims 6 and 12.
App. Br. 5-8; Reply Br. 2-3. Appellants argue that Nystrom teaches that the
application manager with control over the contactless smart card is located
remotely and not in the mobile device. App. Br. 6; Reply Br. 2.
We are not persuaded by Appellants' contentions because Appellants
fail to address the specific findings of the Examiner based upon the
combination of Vanska and Nystrom. That is, Appellants attack Nystrom
for failing to disclose a limitation, whereas the Examiner relies on the
combination of Nystrom and Vanska to teach or suggest the claimed
limitations.
The Examiner finds Nystrom discloses a contactless smart card and
Vanska discloses a mobile communication device that comprises an
applications manager adapted to retrieve applications from connected
memory storage. Final Act. 2-3 (citing Vanska i-fi-126-28, 37, 41--46;
Nystrom i-fi-162, 71, 76-78, 86, 88, 93, 98); Ans. 5---6 (citing Vanska i-fi-132-
33 41--46, Fig. 2; Nystrom i-fi-169 128-129). Thus, the rejection set forth by
the Examiner incorporates the contactless smart card of Nystrom into the
applications manager-comprising mobile device of Vanska.
Accordingly, Appellants' contention does not persuade us of error on
the part of the Examiner because Appellants are responding to the rejection
by attacking the references separately, even though the rejection is based on
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Application 12/670,691
the combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants further contend that the Examiner's combination of
Vanska and Nystrom is improper. App. Br. 8-10. Appellants argue that
Nystrom teaches away from giving control of a contactless smart card to a
mobile communication device because Nystrom teaches that control of a
smart card is limited to a remote applications manager. Id. at 9-10.
We disagree with Appellants. A reference does not teach away if it
merely expresses a general preference for an alternative invention from
amongst options available to the ordinarily skilled artisan, and the reference
does not discredit or discourage investigation into the invention claimed. In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant does not point
to any disclosure in Nystrom discrediting or discouraging the inclusion of
Nystrom's contactless smart card into a mobile communication device.
Nystrom teaches that the exercise of control over the smart card should be
limited to "only distinct trusted network entities which are in knowledge of
highly sensitive information required for the exercise of control ...
[including an] application service provider," which is remote to the smart
card. Nystrom ,-r 90. However, Nystrom does not teach away from
incorporating a contactless smart card into a mobile communication device
and giving the device control over the card because Nystrom merely requires
the controlling entity be trusted and capable of handling highly sensitive
information.
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Appellants also contend that the proposed combination of Vanska's
mobile communication device and Nystrom's contactless smart card would
render Nystrom unsatisfactory for its intended purpose and change its
principle of operation. App. Br. 10. Specifically, Appellants argue that the
intended purpose of Nystrom is the remote control capability of the smart
card, and Nystrom's principle of operation is that the smart card is only
controlled remotely. Id. Therefore, Appellants contend that incorporating
Nystrom's smart card into the mobile device of Vanska would render the
smart card "unsatisfactory for its intended purpose and change its principle
of operation by giving control of the [smart card] to the mobile
communication device." Id.
We disagree with Appellants. The incorporation ofNystrom's smart
card into Vanska's mobile device does not render the smart card
unsatisfactory for its intended purpose or change its principle of operation
because control over the smart card is limited to the trusted network device
in which it is intended to be used - in this case, the mobile communication
device. See Nystrom i-f 90. That is, the functionality of the smart card would
not be changed, regardless of whether the smart card is controlled remotely
or controlled via the mobile device. Accordingly, we are not persuaded by
Appellants' argument that the Examiner erred because we are not persuaded
that Nystrom teaches away from the proposed combination of the contactless
smart card and Vanska's mobile communication device, or that the
combination would render Nystrom unsatisfactory for its intended purpose
or change its principle of operation.
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Accordingly, we sustain the Examiner's rejection of independent
claims 1, 6, and 12, and dependent claims 2-5, 7-9, and 13, which are not
argued separately.
Claims 15-20 rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Vanska, Nystrom, and Fibranz
Claims 15-20 depend from either independent claim 1 or 6 and have
not been argued separately by Appellants. Accordingly, we sustain the
Examiner's rejection of claims 15-20 for the same reasons discussed above
in our analysis of claims 1 and 6.
Claim 14 rejected under 35 U.S.C. § 103(a) as obvious over the combination
of Nystrom and Fibranz
The Examiner finds Nystrom's CPU/MPU (processor) connected to a
secure storage subsystem ( contactless smart card memory) teaches "a
processor connectable to a contactless smart card memory" that "check[ s]
whether the applications meet at least one validity criterion," as recited in
claim 14. Final Act. 4--5 (citing Nystrom i-fi-f 119, 121, 128, Fig. 2); Ans. 7.
Appellants argue that instead of teaching a processor connectable to a
contactless smart card memory, Nystrom teaches an application server
provider (processor) that is remote from a secure storage subsystem. App.
Br. 7, 10-11 (citing Nystrom, Fig. 4a); Reply Br. 3. As such, the application
service provider is not connectable to the secure storage subsystem because
the application service provider is remote from the secure storage subsystem.
We disagree with Appellants for reasons similar to those explained above
regarding claim 1. Appellants do not address the Examiner's specific
findings. The Examiner relies upon Figure 2 and the corresponding
descriptions of Figure 2 of Nystrom to teach the disputed limitations. See
Final Act. 4--5. The Examiner finds that Nystrom discloses a CPU/MPU or
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processor that is connected to a contactless smart card memory, which
encompasses a secure storage subsystem like that disclosed in Nystrom.
Final Act. 4--5 (citing Nystrom i-fi-f 119, 121, 128, Fig. 2); Ans. 7. Thus,
Appellants' argument fails to provide sufficient evidence or reasoning that
illustrate that the Examiner erred in rejecting claim 14.
Accordingly, we sustain the Examiner's rejection of independent
claim 14.
CONCLUSION
The Examiner did not err in rejecting claims 1-9, 12, and 13 under 35
U.S.C. § 103(a) as obvious over Vanska and Nystrom.
The Examiner did not err in rejecting claim 14 under 35 U.S.C.
§ 103(a) as obvious over Nystrom and Fibranz.
The Examiner did not err in rejecting claims 15-20 under 35 U.S.C.
§ 103(a) as obvious over Vanska, Nystrom, and Fibranz.
DECISION
To summarize, our decision is as follows:
• the rejection of claims 1-9, 12, and 13 under 35 U.S.C. § 103(a) as
obvious over the combination of Vanska and Nystrom is affirmed;
• the rejection of claim 14 under 35 U.S.C. § 103(a) as obvious over
the combination of Nystrom and Fibranz is affirmed; and
• the rejection of claims 15-20 under 35 U.S.C. § 103(a) as obvious
over the combination of Vanska, Nystrom, and Fibranz is affirmed.
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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).
AFFIRMED
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