Ex Parte Lowe

Board of Patent Appeals and Interferences

Jan 19, 2012

10847542 (B.P.A.I. Jan. 19, 2012)

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.
10/847,542 05/17/2004 Peter R. Lowe 2943-132 3492
91935 7590 01/19/2012
Sheridan Ross P.C
1560 Broadway Suite 1200
Denver, CO 80202
EXAMINER
BROWN, VERNAL U
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
01/19/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte PETER R. LOWE
_____________

Appeal 2009-013728
Application 10/847,542
Technology Center 2600
______________

Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and DAVID M.
KOHUT, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 19.
We reverse.

Appeal 2009-013728
Application 10/847,542

2

INVENTION
The invention is directed to a biometrically authenticated portable
Radio Frequency Identification Device (RFID). See paragraphs 3, 4 and
Figure 3 of Appellant’s Specification. Claim 1 is representative of the
invention and is reproduced below:
1. A biometrically authenticated portable RFID access
device that selectively permits energization by a tag reader,
comprising:

a biometric sensor for measuring a live biometric
parameter of an unverified user;

a stored biometric template corresponding to a previously
measured biometric parameter of an authorized user;

an authenticator for comparing the live biometric
parameter of the unverified user to the stored biometric
template and producing an authorization signal when the live
biometric parameter matches the stored biometric template; and

an electronic switch responsive to the authorization
signal from the authenticator, the electronic switch acting to
enable the RFID access device to respond to energization by the
tag reader only when the authorization signal from the
authenticator indicates that the live biometric parameter
matches the stored biometric template,

wherein the RFID access device is programmable in an
RFID tag programmer selected from an installed base of RFID
programmers used for programming RFID access devices that
do not include associated biometric sensors.

REFERENCES
Aston 3,581,062 May 25, 1971
Trontelj 6,208,235 B1 Mar. 27, 2001
Hollingshead 6,353,889 B1 Mar. 5, 2002
Foster 6,441,482 B1 Aug. 27, 2002
Appeal 2009-013728
Application 10/847,542

3

Bolle 6,819,219 B1 Nov. 16, 2004
Shapiro 2005/0039027 A1 Feb. 17, 2005

REJECTION AT ISSUE
The Examiner has rejected claims 1 through 4, 7, 8, 10, 11, 12, and 14
under 35 U.S.C. § 103(a) as being obvious over Hollingshead, Bolle, and
Trontelj. The Examiner’s rejection is on pages 3 through 7 of the Answer.1
The Examiner has rejected claims 5 and 6 under 35 U.S.C. § 103(a) as
being obvious over Hollingshead, Bolle, Trontelj, and Aston. The
Examiner’s rejection is on page 7 of the Answer.
The Examiner has rejected claim 9 under 35 U.S.C. § 103(a) as being
obvious over Hollingshead, Bolle, Trontelj, and Shapiro. The Examiner’s
rejection is on pages 7 and 8 of the Answer.
The Examiner has rejected claim 13 under 35 U.S.C. § 103(a) as
being obvious over Hollingshead, Bolle, Trontelj and Foster. The
Examiner’s rejection is on pages 8 and 9 of the Answer.
The Examiner has rejected claims 15 through 17, and 19 under 35
U.S.C. § 103(a) as being obvious over Hollingshead, Bolle, Trontelj, and
Aston. The Examiner’s rejection is on pages 9 through 11 of the Answer.
The Examiner has rejected claim 18 under 35 U.S.C. § 103(a) as
being obvious over Hollingshead, Bolle, Trontelj, Ashton, and Foster. The
Examiner’s rejection is on pages 11 and 12 of the Answer.

1 Throughout this decision we refer to the Answer dated June 18, 2008.
Appeal 2009-013728
Application 10/847,542

4

ISSUES
Appellant argues on pages 6 through 11 of the Brief that the
Examiner’s rejection of independent claim 1 is in error.2 These arguments
present us with the issue: did the Examiner err in finding the combination of
Hollingshead, Bolle, and Trontelj teaches an electronic switch enabling the
RFID access device to respond to energization by the tag reader when
authorized by the biometric authenticator?3

ANALYSIS
We have reviewed Appellant’s arguments in the Brief, and we concur
with Appellant’s conclusion that the Examiner erred in finding the
combination of Hollingshead, Bolle, and Trontelj teaches an electronic
switch enabling the RFID access device to respond to energization by the tag
reader when authorized by the biometric authenticator. The Examiner finds
Hollingshead teaches an RFID that is enabled by a biometric authorization;
Bolle teaches a RFID chip that derives power from an electromagnetic field
produced by a reader (i.e. the tag is energized by a reader); and Trontelj
teaches a RFID chip which is enabled or disabled by a switch. Answer 4,
12, and 13. We concur with these findings. However, these findings alone
do not meet independent claim 1, which recites the authorization enabling
response to energization. As argued by the Appellant one of the coils in
Trontelj’s device is always active and the switch only works to decouple the

2 Throughout this decision we refer to the Substitute Brief dated May 13,
2009, and Reply Brief dated July 29, 2008.
3 We note that Appellant’s arguments present additional issues however we
do not reach the additional issues as this issue is dispositive of the appeal.
Appeal 2009-013728
Application 10/847,542

5

device from its environment after data transmission. Reply Br. 5-6. Thus,
the device always responds to energization. Reply Brief 6. We concur with
Appellant’s characterization of Trontelj’s device and accordingly disagree
with the Examiner’s finding that the control for the switch of Trontelj
operates as the functional equivalent to the authorization in Hollingshead.
Answer 13-14. Thus, we do not find that the Examiner has shown the
combination of the references teaches or suggests all of the limitations of
independent claim 1. Accordingly, we will not sustain the Examiner’s
rejection of claims 1 through 4, 7, 8 10, 11, 12, and 14 under 35 U.S.C. §
103(a).
The Examiner’s rejections of claims 5, 6, 9, 13, and 15 through 19
rely upon similar findings regarding the combination of Hollingshead, Bolle,
and Trontelj. Independent claim 15 includes a limitation similar to
independent claim 1’s recitation of enabling the RFID access device to
respond to energization by the tag reader when authorized by the biometric
authenticator. Thus, we will not sustain the Examiner’s rejections of claims
5, 6, 9, 13, and 15 through 19 for the reasons discussed with respect to claim
1.
DECISION
The decision of the Examiner to reject claims 1 through 19 is
reversed.

REVERSED

msc