Ex Parte Takahashi

Patent Trial and Appeal Board

Sep 24, 2018

13198848 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/198,848 08/05/2011 Richard J. Takahashi
42624 7590 09/25/2018
DAVIDSON BERQUIST JACKSON & GOWDEY LLP
8300 Greensboro Dr, Suite 500
McLean, VA 22102
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.
4033-0117 8601
EXAMINER
LAGOR, ALEXANDER
ART UNIT PAPER NUMBER
2491
MAIL DATE DELIVERY MODE
09/25/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD J. TAKAHASHI
Appeal2018-003678
Application 13/198,848
Technology Center 2400
Before JOHN A. EVANS, CATHERINE SHIANG, and BETH Z. SHAW,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of Claims 1-9 and 11-21, all pending claims.
App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE. 2
1 Appellant states the real party in interest is Harris Corporation. App. Br. 1.
2 Rather than reiterate the arguments of the Appellant and the Examiner, we
refer to the Appeal Brief (filed October 30, 2017, "App. Br."), the Reply
Brief (filed February 22, 2018, "Reply Br."), the Examiner's Answer
(mailed December 8, 2017, "Ans."), the Final Action (mailed April 19,
2017, "Final Act."), and the Specification (filed August 5, 2011, "Spec.") for
their respective details.
Appeal2018-003678
Application 13/198,848
STATEMENT OF THE CASE
The claims relate to a cryptographic hardware-software device. See
Abstract.
INVENTION
Claims 1, 8, and 15 are independent. An understanding of the
invention can be derived from a reading of illustrative Claim 1, which is
reproduced below:
1. A mobile communication device, comprising:
a battery for the mobile communication device
configured to attach to a cryptographic chip; and
the cryptographic chip attachable to the battery, and
configured to connect to the mobile communication device to
provide encrypted communication between the mobile
communication device and another communication device, and
configured to receive biometric information from a user and
determine whether to authorize cryptographic functionality of
the cryptographic chip based on the biometric information.
References and Re} ections
Davis us 5,949,881 Sep. 7, 1999
Sun US 2005/0082623 Al Apr. 21, 2005
Chiu, et al., US 2005/0244037 Al Nov. 3, 2005
Seaward, et al., US 2007/0016957 Al Jan. 18,2007
Yu, et al., US 2012/0011372 Al Filed Aug. 12, 2010
Klur DE 101 40 544 Al 3 Mar. 6, 2003
3 Translated from the German by John Koytcheff, M. Sc., U.S.
DOC/USPTO/OPIM/STIC. Klur, 18.
2
Appeal2018-003678
Application 13/198,848
1. Claims 1, 2, 5-7, 15, and 17-21 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Klur and Davis. Final Act. 13-17.
2. Claims 3, 8, 9, 12-14, and 16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Klur, Davis, and Yu. Final Act. 18-19.
3. Claims 4 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Klur, Davis, Yu, and Sun. Final Act. 19-20.
ANALYSIS
We have reviewed the rejections of Claims 1-9 and 11-21 in light of
Appellant's arguments that the Examiner erred. We consider Appellant's
arguments seriatim, as they are presented in the Appeal Brief, pages 7-11.
CLAIMS 1, 2, 5-7, 15, AND 17-21: OBVIOUSNESS OVERKLURAND DAVIS.
Appellant argues all claims over the combination of Klur and Davis in
view of the limitations of Claim 1. App. Br. 5.
Claim 1 recites, inter alia, "a cryptographic chip ... configured to
receive biometric information from a user and determine whether to
authorize cryptographic functionality of the cryptographic chip based on the
biometric information." Independent Claims 7 and 15 contain
commensurate recitations.
The Examiner finds Klur essentially teaches the claimed device
except Klur does not teach the cryptographic chip is configured to receive
biometric information from a user and determine whether to authorize
cryptographic functionality of the cryptographic chip based on the biometric
information. Final Act. 14. The Examiner finds the goal of Klur is to
encrypt communications between two telecommunication devices using a
3
Appeal2018-003678
Application 13/198,848
battery-mounted cryptographic chip. Final Act. 10. The Examiner
specifically finds it is not a goal of Klur to authenticate a user. Id.
Therefore, to supply the claimed authentication, found to be missing from
Klur, the Examiner finds Davis teaches: "the cryptographic processing
unit attempts to verify that an authorized user is present." Id. at 14.
The Examiner finds a person of skill in the art would be motivated to ensure
that only an authorized user is permitted to utilize Klur's cryptographic chip
by adding Davis' teaching of verifying the presence of an authorized user.
Id. at 15.
Appellant contends the Examiner's statement of motivation is
defective because Klur discloses prevention of unauthorized use of the
device. App. Br. 9 ( citing Klur, ,r 12) ("Yet another preferred exemplified
embodiment of the telecommunications device is characterized in that the
security token can be used only when a valid access authorization, e.g., in
the form of a personal identification number and a password, would be
input. As a result, an undesirable use of the telecommunications device, or
of the storage (rechargeable) battery, respectively, is prevented")4•
The Final Rejection specifically finds that it is not a goal of Klur to
authenticate a user. Final Act. 10. But the Answer acknowledges Klur in
fact does teach authentication of a user. See Ans. 4 ("[a]lthough the
applicant is correct that Davis, in addition to an embodiment without
password, also teaches an embodiment with password protection (para.
0012)5).
4 Klur, Koytcheff, USPTO, translation.
5 The Examiner inadvertently refers to "Davis," but intends "Klur." The
Davis reference does not comprise numbered paragraphs whereas paragraph
12 of Klur teaches the cited embodiment incorporating password protection.
4
Appeal2018-003678
Application 13/198,848
The Examiner's Answer finds it would have been obvious to ignore
Klur's password authentication method and instead, substitute Davis'
biometric authentication. Ans. 4 ("The question is as to whether using
biometric authentication over password protection is obvious"). However,
the Examiner fails to provide articulate reasoning with rational underpinning
for this conclusion. See Ans. 4--5 ("The Examiner "believes that biometric
authentication has numerous advantages as it truly authenticates a user").
The Examiner's "belief' alone that biometric authentication is
advantageous is not an adequate basis for the conclusion that biometric
authentication would be substituted for password authentication. The
Examiner needs to provide articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. See KSR Int 'l
Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007). "When the Board makes
'core factual findings in a determination ofpatentability,' it 'cannot simply
reach conclusions based on its own understanding or experience----or on its
assessment of what would be basic knowledge or common sense."' In re
Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). Instead, "the Board must
point to some concrete evidence in the record in support of these findings."
Id. The Examiner's burden of proving non-patentability is by a
preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed.
Cir. 1985). Because the Examiner merely speculates, we decline to sustain
the rejection. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("The
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is patentable,
5
Appeal2018-003678
Application 13/198,848
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.").
DECISION
The rejection of Claims 1-9 and 11-21 under 35 U.S.C. § 103 is
REVERSED.
REVERSED
6