Ex Parte Glass et al

Board of Patent Appeals and Interferences

Oct 19, 2009

10453066 (B.P.A.I. Oct. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW C. GLASS, CHRISTOPHER M. DREHER, ELLICK
H. SUNG, RANDALL E. AULL, DORON J. HOLAN, and CRAIG S.
RANTA
____________

Appeal 2009-003866
Application 10/453,066
Technology Center 2600
____________

Decided: October 19, 2009
____________

Before KENNETH W. HAIRSTON, THOMAS S. HAHN, and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-10 and 12-26 (App. Br. 2).1 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants invented a system using human bodies (i.e., “chained
biological media” as recited in claim 1) to connect different electronic
components. One of the disclosed systems includes the ability to
independently measure certain electrical characteristics of users, and
generate keys associated with such characteristics. The keys can be used to
identify different users. (See Abstract; Spec. 9:29 to 11:6). Exemplary
claim 1 which follows, implies that users also form the chained biological
media:
Exemplary claim 1 follows:
1. A system that facilitates communications, comprising:
a detection component that identifies a plurality of devices that are
coupled together via a plurality of chained biological media;
a pulse generator that sends a device identification pulse derived from
current sensed by the detection component;
a biological identification component that generates one or more keys
relating to a user profile, the keys relate to at least one electrical property of
a user, the keys used identify the chained biological media; and
a configuration component that initiates a configuration between a
subset of the devices.

While the Examiner relies on several prior art references (see Ans. 2-
3), the sole reference at issue on appeal is:

1 Appellants’ Brief (“App. Br.”) and Reply Brief (“Reply Br.”), and the
Examiner’s Answer (“Ans.”), are referenced in this opinion.
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Coppersmith 5,796,827 Apr. 18, 1998
The Examiner rejected all claims on appeal as obvious under 35
U.S.C. § 103(a) as follows:
Claims 1-5, 7-8, 10, 12-14, 20-24, and 26 based on Rekimoto,
Koyama and Coppersmith;
Claims 6 and 25 based on Rekimoto, Koyama, Coppersmith, and Doi;
Claim 9 based on Rekimoto, Koyama, Coppersmith, and Castelberry;
Claims 15-18 based on Rekimoto, Koyama, Coppersmith, and
Johnson; and
Claim 19 based on Rekimoto, Koyama, Coppersmith, and Eshelman.

ISSUE
Appellants’ contentions (App. Br. 4-6) focus on the alleged
shortcomings of the teachings of Coppersmith as found by the Examiner.
Appellants contend (App. Br. 4-6) that Coppersmith does not teach “a
biological identification component that generates one or more keys relating
to a user profile, the keys relate to at least one electrical property of a user,
the keys used identify the chained biological media” as recited in claim 1.
Appellants group claims 1-5, 7-8, 10, 12-14, 20-24, and 26 together with
arguments focusing on claim 1 (id.) and a statement noting the “similarly
independent claims 21 and 26” (App. Br. 5). Therefore, claim 1 is selected
as representative of this group.2 See 37 C.F.R. § 41.37(c)(1)(vii).

2 Appellants’ nominal arguments (Reply Br. 3) directed to claims 21 and 26
parallel the arguments for claim 1 and do not constitute separate arguments
for patentability. In any case, any such issues raised for the first time in the
Reply Brief are deemed to be waived. See Optivus Tech, Inc., v. Ion Beam
Footnote continued on the next page.
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Appellants’ contention raises the following issue: Have Appellants
shown that the Examiner erred in finding that Coppersmith teaches “a
biological identification component that generates one or more keys relating
to a user profile, the keys relate to at least one electrical property of a user,
the keys used identify the chained biological media,” as recited in claim 1?

FINDINGS OF FACT (FF)
1. Coppersmith discloses a transmitter PAN (personal area network)
card 5 attached to a user’s body 2 that transmits, to a receiver module 7, a
low frequency modulated signal “through the conductive medium of the
user’s 2 body” (col. 8, l. 20) via “the user’s 2 body tissues due to the
proximity of the card 5 to the user’s 2 body” (col. 8, ll. 53-55).
(Coppersmith, fig. 1, col. 8, ll. 3-56).
2. The signal strength detected at the receiver can vary dramatically
since it is dependent on the location and orientation of the transmitter
and receiver, the former of which is usually on a person’s body and
therefore cannot be constrained. A reliable robust authentication
system must assume large changes in received signal, typically in
excess of 60 dB.
(Coppersmith, col. 7, ll. 24-31).

3. “The PAN card 5 and the processor 8 communicate, through the
conductive medium of the user’s 2 body and the link 10, to verify the user’s
2 identity” (Coppersmith, col. 8, ll. 19-21).

Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by
an appellant in its opening brief ... is waived.”) (citations and quotation
marks omitted); see also, Ex parte Scholl, No. 3653, slip op. at n.13 (BPAI
Mar. 13, 2008) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd073653.pdf (same).
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4. Appellants’ system measures different impedance characteristics
of a user’s body and generates keys “associated” (Spec. 10:1) with such
measurements. The keys, used to identify such users, as described supra, do
not necessarily provide “absolute identity” (Spec. 10:16). For example,
users having impedances inside or outside of a defined impedance threshold
are respectively allowed or denied access to a computer system (Spec. 10:9-
29).

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellants have the
burden on appeal to show reversible error by the Examiner in maintaining
the rejection. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On
appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima
facie case with evidence of secondary indicia of nonobviousness.”) (citation
omitted).
Under § 103, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
During examination of a patent application, the PTO “is obligated to
give claims their broadest reasonable interpretation during examination.” In
re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).

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ANALYSIS
Appellants (App. Br. 5) acknowledge that Coppersmith teaches
transmitting a “key used to identify a user.” However, Appellants maintain
(id.) that “there is no mention whatsoever that the key relates to an electrical
property of a user.”
The Examiner interpreted “relates” as “connected” (Ans. 14-15)
(citing an on-line dictionary source). In other words, the Examiner
maintains (id.) that since Coppersmith’s keys are transmitted through a
user’s body, they are related to the electrical properties of the body because
they are “connected” thereto.
In reply, Appellants do not contest the Examiner’s definition. Rather,
Appellants shift their argument in the Reply Brief and reason that even if
“relate” in claim 21 [sic]3 is replaced by “connected” as proposed by the
Examiner, the user ID transmitted from Coppersmith’s PAN card “does not
identify the specific user touching the control panel” (Reply Br. 3). This
argument lacks merit based on Appellants’ acknowledgement quoted supra
that Coppersmith’s “key [is] used to identify a user.” The record supports
Appellants’ acknowledgement - Coppersmith’s PAN card transmissions
(i.e., “keys”) validate the user’s identity (FF 3).
Accordingly, Coppersmith’s keys reasonably identify a user (i.e., the
“biological media”) and connect (i.e., “relate”) to at least one electrical
property of the user (FF 1-3). As noted above, Appellants fail to challenge
the Examiner’s definition of “related” as “connected.” Appellants also do

3 The term “relating” appears in claim 21, while “relate” occurs in claim 1.
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not provide any definition of “relate” and employ a different term
(“associated”) (FF 4) in the Specification.
Moreover, Coppersmith’s keys vary in intensity depending on the
varying electrical properties of the user through which they are transmitted,
at least as received at the receiver (see FF 1-2). Claim 1 does not specify
that the generated keys relate to the electrical property of the user. Nor do
Appellants argue as such. Nonetheless, it is well known that the generated
output of a transmitter source typically varies as its load impedance
dramatically changes. In this case, the user’s total body impedance varies
dramatically depending on the transmitter location (see FF 2). Different
users also have different impedances as Appellants note (App. Br. 5, see FF
4). As such, Coppersmith’s keys, traveling through user’s bodies of varying
impedances, reasonably relate to the electrical properties of a user’s body
(FF 1, 2) as required by claim 1, because the keys exit a body with an
amplitude and/or phase that varies based on the body’s electrical impedance.
Appellants’ argument that the “claimed system allows different users
who have different electrical properties (such as impedance, capacitance,
inductance, resistance, etc.) to be identified by the system . . . according to
their personal electrical properties” (App. Br. 5-6) is “not recited in the
rejected claim(s)” as the Examiner reasoned (Ans. 15). As such, the
argument is not commensurate in scope with claim 1. For example, claim 1
does not require a key-based identification “according to personal electrical
properties.” Further, Appellants’ disclosed system does not necessarily
provide “absolute identity” (FF 4), while, as noted supra, Appellants
acknowledge that Coppersmith’s “key [is] used to identify a user.”
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Appellants’ arguments fail to demonstrate Examiner error. “The
problem in this case is that Appellants failed to make their intended meaning
explicitly clear.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). “It is
the applicants’ burden to precisely define the invention, not the PTO’s.” Id.
Therefore, we will sustain the obviousness rejection based on
Rekimoto, Koyama, and Coppersmith of claim 1, and of claims 2-5, 7, 8, 10,
12-14, 20-24, and 26 which were not separately argued and fall with claim 1.
Appellants’ arguments (App. Br. 6-7) against the obviousness rejections of
claims a) 6 and 25; b) 9; c) 15-18; and d) 19; respectively based on the
additional references to a) Doi; b) Castleberry; c) Johnson; and d) Eshelman;
rely on their arguments presented for claim 1. Accordingly, for the reasons
explained above, we will sustain the rejections of all claims on appeal. See
37 C.F.R. § 41.37(c)(1)(vii); In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987).
CONCLUSION
Appellants did not show that the Examiner erred in finding that
Coppersmith teaches “a biological identification component that generates
one or more keys relating to a user profile, the keys relate to at least one
electrical property of a user, the keys used identify the chained biological
media” as recited in claim 1.
DECISION
We affirm the Examiner's decision rejecting claims 1-10 and 12-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(iv).

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AFFIRMED

gvw

WOLF GREENFIELD (Microsoft Corporation)
C/O WOLF, GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON MA 02210-2206