Ex Parte Suwald

Patent Trial and Appeal Board

Mar 30, 2017

13627581 (P.T.A.B. Mar. 30, 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.
13/627,581 09/26/2012 Thomas Suwald 81492864 US05 1010
65913 7590
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
MCCOY, RICHARD ANTHONY
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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 THOMAS SUWALD
Appeal 2017-001167
Application 13/627,581
Technology Center 2400
Before ERIC B. CHEN, JEREMY J. CURCURI, and BETH Z. SHAW,
Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 3—26, and 29. Claims 2, 27, and 28 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
Appeal 2017-001167
Application 13/627,581
STATEMENT OF THE CASE
Appellant’s invention relates to a security token, including a tactile
sensing user interface arranged to receive a user-encoded secret, a decoding
unit to generate a decoded secret by decoding the user-encoded secret, and a
comparison unit arranged to compare the decoded secret with a copy of the
secret stored in the token to verify the authenticity of a user. (Abstract.)
Claim 1 is exemplary, with disputed limitation in italics:
1. A security token comprising:
a tactile sensing user interface being configured to receive a
user-encoded secret, wherein the user-encoded secret is a tactile
symbol, and the tactile sensing user interface is configured to
capture tactile patterns and provide a tactile pattern data stream
which represents the tactile symbol and comprises a sequence
of said tactile patterns to the decoding unit;
a decoding unit configured to generate a decoded secret by
decoding the user-encoded secret and by applying a private
inverse transfer function to the tactile pattern data stream,
wherein the private inverse transfer function is an inverse of a
private transfer function applied by the user to encode the
tactile symbol;
a comparison unit being configured to compare the decoded
secret with a copy of the user encoded secret stored in the
security token in order to verify authenticity of the user.
Claims 1, 3—26, and 29 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1, 3—26, and 29 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 applicant regards as the invention.
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Claims 1, 3—5, 12—16, 18, 21, 22, 24, 25, and 29 stand rejected under
35 U.S.C. § 102(b) as anticipated by Pheng et al. (WO 2009/095263 Al;
Aug. 6, 2009).
Claims 7—9, 11, 23, and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pheng and Pedersen (WO 2005/043451 A2; May 12,
2005).
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pheng, Pedersen, and Manaresi et al. (US 6,826,968 B2; Dec. 7, 2004).
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pheng and Salesky et al. (US 7,148,804; Dec. 12, 2006).
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pheng and Harris (US 2011/0252182 Al; Oct. 13, 2011).
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pheng, Harris, and Yao (Yao et al., Nonlinear Dielectric Thin Films for
High-Power Electric Storage With Energy Density Comparable With
Electrochemical Supercapacitors, 58 IEEE Transactions on Ultrasonics,
Ferroelectrics, & Frequency Control 1968—74 (2011)).
ANALYSIS
§ 112, First Paragraph, Rejection
We are persuaded by Appellant’s arguments (App. Br. 5—6; see also
Reply Br. 2—3) that the limitation “tactile symbol,” as recited in
independent 1, complies with the written description requirement under 35
U.S.C. § 112, first paragraph.
The Examiner found that the limitation “tactile symbol” is
unsupported by Appellant’s Specification. (Final Act. 4.) In particular, the
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Examiner stated that “[t]he specification does not include the term, tactile
symbol.” (Id. (emphasis omitted).) We do not agree with the Examiner’s
findings.
In the “Background of the Invention” section, Appellant’s
Specification discloses that “[tjactile pattern recognition methods have
mainly been disclosed for personal digital assistants (PDA)” (Spec. 5:23—24)
and “[t]he tactile pattern recognition recognizes a tactile pattern and assigns
a predefined meaning to it, for example a digit” (id. at 5:29—30).
Appellant’s Specification further discloses that “digits of the personal
identification number” include “graphical symbol tactile patterns
corresponding to said digits.” (Spec. 10:3—6.) Moreover, Figures 17—19
illustrate “tactile patterns” as digits and characters. (Spec. 23:12—13.)
Because Appellant’s Specification refers to a digit as either a “tactile
pattern” or a “graphical symbol tactile pattern,” Appellant’s Specification
adequately supports the claim limitation “tactile symbol.”
Accordingly, we are persuaded by Appellant’s argument that “[t]he
specification repeatedly refers to ‘tactile patterns’” and “a tactile symbol
would be part of one of these disclosed tactile patterns.” (App. Br. 5; see
also Reply Br. 2—3.)
Thus, we do not agree with the Examiner that the Specification fails to
provide written description support for the limitation “tactile patterns.”
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 112, first paragraph. Claims 3—5, 7—26, and 29 depend
from claim 1. Therefore, we do not sustain the rejection of claims 3—5, 7—
26, and 29 under 35 U.S.C. § 112, first paragraph, for the same reasons
discussed with respect to independent claim 1.
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§ 112, Second Paragraph, Rejections
Claims 1, 3—26, and 29
We do not sustain the rejection of claims 1, 3—26, and 29 under 35
U.S.C. § 112, second paragraph, for similar reasons as discussed previously
with respect to the rejection of claim 1 under 35 U.S.C. § 112, first
paragraph.
Claims 12 and 13
We are persuaded by Appellant’s arguments (App. Br. 7) that
dependent claims 12 and 13 comply with 35 U.S.C. § 112, second
paragraph, by particularly pointing out and distinctly claiming the subject
matter which applicant regards as the invention.
The Examiner found that “the functionality of the private inverse
transfer function in claim 1 is not consistent with its functionality in claims
12 and 13.” (Final Act. 5.) In particular, the Examiner found that “[i]n
claim 1, the inverse transfer function operates on a tactile pattern data
stream” but “in claim 12, the private inverse transfer function operates on a
user defined character repertoire” and “in claim 13, the private inverse
transfer function operates on a tactile pattern.” {Id.) We do not agree.
Because claims 12 and 13 depend from claim 1, such dependent
claims further limit the subject matter of the “private inverse function” by
reciting additional functional features for such “private inverse function.”
The Examiner has not provided any additional explanation as to why such
additional functionality, as recited in claims 12 and 13, is “not consistent”
with claim 1. Therefore, the Examiner has not met the initial burden of
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demonstrating that dependent claims 12 and 13 do not comply with 35
U.S.C. § 112, second paragraph.
Thus, we agree with Appellant’s arguments that “no contradiction
exists” because “[dependent claims 12 and 13 recite additional uses of the
private inverse transfer function” and “further limit the subject matter of
claim 1.” (App. Br. 7.)
Accordingly, we do not sustain the rejection of dependent claims 12
and 13 under 35 U.S.C. § 112, second paragraph, as failing to particularly
point out and distinctly claim the subject matter which applicant regards as
the invention.
§102 Rejection—Pheng
First, we are unpersuaded by Appellant’s arguments (App. Br. 9—10;
see also Reply Br. 4—5) that Pheng does not describe the limitation “tactile
symbol,” as recited in independent claim 1.
The Examiner found that the user personal identification number
(PIN), which can be entered by tapping a sensor, corresponds to the
limitation “tactile symbol.” (Ans. 2, 4.) We agree with the Examiner.
Independent claim 1 recites “tactile symbol” (emphasis added). One
relevant plain meaning of “tactile” is “relating to, or being the sense of
touch.” Merriman-Webster’s Collegiate Dictionary 962 (10th ed.
1999). This definition of “tactile” is consistent with Appellant’s Figure 47,
which illustrates token 10 having two-dimensional tactile sensing
interface 14, in which a user’s finger traces the number “8” by touching such
tactile sensing interface 14. (Spec. 37:28—31.) Accordingly, under the
broadest reasonable interpretation consistent with the Specification, we
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interpret “tactile symbol” as a symbol “relating to, or being the sense of
touch.”
Pheng relates to “a method of secure PIN entry and operation mode
setting in a personal portable device” (p. 1,11. 5—6), in particular, “a portable
electronic device and a method of PIN entry” (p. 4,1. 17). Pheng provides
an example of entering the PIN “5034”, which includes the following steps:
(1) “[b]riefly touch the sensor 5 times (each time less than 1 second) (p. 18,
1. 19); (2) “[t]o enter the next digit, the zero, just touch the sensor for 1
second until the green LED” (p. 18,1. 25—26); (3) “[bjriefly touch the sensor
3 times” (p. 18,1. 28); and (4) “[bjriefly touch the sensor 4 times” (p. 18,1.
32). Because the PIN (e.g., “5034”) of Pheng is entered by touching the
sensor an appropriate number of times, Pheng teaches the limitation “tactile
symbol.”
Appellant argues that “Pheng teaches away from the use of tactile
symbols by instead having numbers entered by repeatedly tapping on the
sensor,” however, “Pheng lacks any disclosure of the user’s finger tracing a
tactile symbol.” (App. Br. 9; see also Reply Br. 4—5.) Similarly, Appellant
argues “[ijnstead of using a tactile symbol, wherein the symbol is touched,
Pheng relies upon repeated movement of a finger” and “[tjapping is a
physical gesture or movement, not a tactile symbol.” (Id.) However,
Appellant’s arguments are not commensurate in scope with claim 1, because
the claim does not require tracing a tactile symbol. Under the broadest
reasonable interpretation, the claimed “tactile symbol” is broad enough to
encompass the method of Pheng for entry of the PIN by touching a sensor
the appropriate number of times. In other words, a series of touches in
Pheng constitutes a “tactile symbol” as claimed. Moreover, the question of
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whether a reference “teaches away” from the invention is inapplicable to an
anticipation analysis. Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150
F.3d 1354, 1361 (Fed.Cir. 1998).
Therefore, we agree with the Examiner that Pheng describes the
limitation “tactile symbol.”
Second, we are unpersuaded by Appellant’s arguments (App. Br. 10-
11; see also Reply Br. 5) that Pheng does not describe the limitation “private
transfer function,” as recited in independent claim 1.
The Examiner found that the conversion of the PIN, via a tactile
circuity switch as shown in Figure 1, resulting in an input line to a central
processing unit, corresponds to the limitation “private inverse transfer
function.” (Ans. 3.) We agree with the Examiner.
Independent claim 1 recites “private inverse transfer function”
(emphasis added). One relevant plain meaning of “function” is “a
mathematical correspondence that assigns exactly one element of one set to
each element of the same or another set.” Merriman-Webster’s
Collegiate Dictionary 472 (10th ed. 1999). This definition of “function”
is consistent with Appellant’s Figure 18, which illustrates that each number
(e.g., a PIN) in character repertoire N 240 is assigned to each character in
repertoire T 241. Accordingly, under the broadest reasonable interpretation
consistent with the Specification, we interpret “function” as “a mathematical
correspondence that assigns exactly one element of one set to each element
of the same or another set.”
As discussed previously, Pheng explains that the PIN “5034” is
entered by touching the sensor the appropriate number times. (P. 18,11. 19—
32.) Pheng also explains that a PIN or password can be used to authenticate
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a personal portable device. (P. 1,1. 26 —p. 2,1. 3.) Moreover, Figure 1 of
Pheng illustrates pulses generated by tactile switches (e.g., a PIN-pad).
(P. 2,11. 16—19.) Because Pheng explains that entry of a digit of a PIN
generates a specific pulse, Pheng teaches a “secret inverse transfer function.”
Appellant argues that “the Examiner has unreasonably broadened the
claim language [‘transfer function’]” and “the Examiner fails to address the
lack of any transfer function in Pheng, as Pheng discloses a count of finger
taps instead.” (App. Br. 10; see also Reply Br. 5.) Contrary to Appellant’s
arguments, the Examiner found that the entry of the PIN by tapping the
sensor, which generates pulses, corresponds to the limitation “transfer
function.”
Appellant further argues “[tjouching a sensor . . . and then counting
each tap as an increment, cannot be regarded as equivalent to entry of a
tactile symbol” because “Pheng fails to disclose any use of symbol.” (App.
Br. 10; see also Reply Br. 5.) However, as discussed previously, the
claimed “tactile symbol” is broad enough to encompass the method of Pheng
for entry of the PIN by touching a sensor the appropriate number of times.
In particular, the claimed “symbol” is broad enough to encompass the digits
for the PIN of Pheng.
Therefore, we agree with the Examiner that Pheng describes the
limitation “private inverse transfer function.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 3—5, 12—16, 18, 21, 22, 24, 25, and 29 depend from
claim 1, and Appellant has not presented any additional substantive
arguments with respect to these claims. Instead, Appellant merely reiterates
arguments previously presented or provide a conclusory statement that
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Pheng does not disclose the features of these dependent claims without a
sufficient explanation as to why these dependent claims are patentable over
Pheng. We sustain the rejection of claims 3—5, 12—16, 18, 21, 22, 24, 25,
and 29 for the same reasons discussed with respect to claim 1.
§103 Rejections
Although Appellant nominally argues the rejection of dependent
claims 7—11, 17, 19, 20, 23, and 26 separately (App. Br. 20-24), the
arguments presented do not point out with particularity or explain why the
limitations of these dependent claims are separately patentable. Instead,
Appellant argues that various combinations of Pedersen, Manaresi, Salesky,
Harris, and Yao “fail[] to remedy the deficiencies of Pheng for claim 1.”
{Id.) We are not persuaded by these arguments for the reasons discussed
with respect to claim 1, from which claims 7—11, 17, 19, 20, 23, and 26
depend. Accordingly, we sustain these rejections.
DECISION
The Examiner’s decision rejecting claims 1, 3—5, 7—26, and 29 is
affirmed.
The Examiner’s decision rejecting claim 6 is reversed.
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-IN-PART
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