Richard Takahashi

Patent Trials and Appeals Board

Feb 25, 2022

2021000341 (P.T.A.B. Feb. 25, 2022)

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. 13/198,848 08/05/2011 Richard J. Takahashi 4033-0117 8601 42624 7590 02/25/2022 DAVIDSON BERQUIST JACKSON & GOWDEY LLP 8300 Greensboro Dr, Suite 500 McLean, VA 22102 EXAMINER LAGOR, ALEXANDER ART UNIT PAPER NUMBER 2491 NOTIFICATION DATE DELIVERY MODE 02/25/2022 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): apelonero@davidsonberquist.com docket@davidsonberquist.com kclark@davidsonberquist.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD J. TAKAHASHI ____________ Appeal 2021-000341 Application 13/198,848 Technology Center 2400 ____________ Before JOHN A. EVANS, CATHERINE SHIANG, and BETH Z. SHAW, Administrative Patent Judges. EVANS, 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. Appeal 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 of Melbourne, FL. Appeal Br. 1. 2 Rather than reiterate the arguments of the Appellant and the Examiner, we refer to the Appeal Brief (filed April 16, 2020, “Appeal Br.”), the Reply Brief (filed October 17, 2020, “Reply Br.”), the Examiner’s Answer (mailed August 19, 2020, “Ans.”), the Final Action (mailed June 28, 2019, “Final Act.”), and the Specification (filed August 5, 2011, “Spec.”) for their respective details. Appeal 2021-000341 Application 13/198,848 2 STATEMENT OF THE CASE The claims relate to a cryptographic hardware-software device. See Abstr. PRIOR DECISION. In a Decision mailed September 25, 2018 (Appeal 2018-003678) (“Decision”), the instant Panel of the Board reversed a rejection of the present claims. 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. Appeal Br. 21 (Claims App.). Appeal 2021-000341 Application 13/198,848 3 Prior Art Name3 Reference Date Sun US 2005/0082623 A1 Apr. 21, 2005 Evans US 2009/0145972 A1 June 11, 2009 Yu et al. US 2012/0011372 A1 Filed Aug. 12, 2010 Klur DE 101 40 544 A14 Mar. 6, 2003 REJECTIONS5 AT ISSUE 1. Claims 1, 2, 5-7, 15, and 17-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Klur and Evans. Final Act. 12-17. 2. Claims 3, 8, 9, 12-14, and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Klur, Evans, and Yu. Final Act. 17-19. 3. Claims 4 and 11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Klur, Evans, Yu, and Sun. Final Act. 19-20. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in 3 All citations herein to the references are by reference to the first named inventor/author only. 4 Translated from the German by John Koytcheff, M. Sc., U.S. DOC/USPTO/OPIM/STIC. Klur 18. 5 The present application is being examined under the pre-AIA first to invent provisions. Final Act. 2. Appeal 2021-000341 Application 13/198,848 4 the Briefs are deemed to be forfeited. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are persuaded that Appellant identifies reversible error. Thus, we reverse the Examiner’s rejections. We add the following primarily for emphasis. CLAIMS 1, 2, 5-7, 15, AND 17-21: OBVIOUSNESS OVER KLUR AND EVANS. Appellant argues all claims over the combination of Klur and Evans in view of the limitations of Claim 1. Appeal Br. 5. Therefore, we decide the appeal of the § 103(a) rejections on the basis of Claim 1, which we designate as representative, and refer to the rejected claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). 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 discloses all the structural elements of the claimed consumer electronics device and their functions except for enabling a chip using biometric authentication, which was disclosed in Evans. The difference lies in the substitution of Evans’ using biometric information for Klur’s manual authentication means e.g. a personal identification number and a password. Final Act. 14. The Examiner finds Evans discloses a problem that is common to the problem addressed by Klur, and Evans proposes a solution. Id. Thus, the Examiner finds: Appeal 2021-000341 Application 13/198,848 5 Thus, one of ordinary skill in the art of consumer electronic devices would have been motivated, at the time the invention was made, to update the Klur device with the Evans enabling a chip using biometric authentication and thereby gaining, predictably, the commonly understood benefits of such adaptation, that is, a secure and reliable authentication procedure. Final Act. 15. Motivation to Combine Appellant contends the Examiner finds the motivation to combine Klur with Evans is for “a secure and reliable authentication procedure.” Appeal Br. 5 (quoting Final Act. 15). Appellant argues, however, one of ordinary skill in the art would not have been motivated to look to Evans because such “a secure and reliable authentication procedure,” is already disclosed in Klur. Id. (quoting Klur ¶ 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. Klur ¶ 12. The Examiner finds Evans teaches compromised passwords remain problematic and biometric authentication is preferable. Ans. 13-14. Thus, the Examiner finds “one of ordinary skill in the art would be motivated to use a stronger authentication scheme over a weaker one.” Appeal Br. 7 (quoting Final Act. 9). A proposed combination may be improper if the element, or its function, added from the second reference is already present in the first reference. See TRW Automotive U.S. LLC v. Magna Elecs., Inc., IPR2015- Appeal 2021-000341 Application 13/198,848 6 00972, Paper 9 at 12, (PTAB Sept. 16, 2015) (finding no reason to combine where “the camera in [the ’094 patent] already is mounted to the windshield using a bracket and does not require the direct optical coupling provided by the fastening device in [the ’633 patent]”). See also Stryker Corp. v. Karl Storz Endoscopy-America, Inc., IPR2015-00764, Paper 13 at 13 (PTAB Sept. 2, 2015) (“[W]e fail to see, and Petitioner does not adequately explain, why it would be obvious to add a translator to redundantly perform the function that Petitioner maintains is performed by the interconnect devices and network computer located within the surgical network.”). Here, Klur discloses the problem of unauthorized use has been solved: “[a]s a result, an undesirable use of the telecommunications device, or of the storage (rechargeable) battery, respectively, is prevented.” Klur ¶ 12 (emphasis added). Where, as here, Klur has solved the problem of authentication, there is no motivation to add to Klur an authentication feature from Evans. In view of the foregoing, decline to sustain the rejection of Claims 1, 2, 5-7, 15, and 17-21 under 35 U.S.C. § 103(a). CLAIMS 3, 8, 9, 12-14, AND 16: OBVIOUSNESS OVER KLUR, EVANS, AND YU Appellant argues all claims over Klur and Evans. See Appeal Br. 5. The Examiner does not separately address the dependent claims. See Ans. In view of the forgoing, we decline to sustain the rejection of Claims 3, 8, 9, 12-14, and 16 under 35 U.S.C. § 103(a). CLAIMS 4 AND 11: OBVIOUSNESS OVER KLUR, EVANS, YU, AND SUN Appellant argues all claims over Klur and Evans. See Appeal Br. 5. The Examiner does not separately address the dependent claims. See Ans. Appeal 2021-000341 Application 13/198,848 7 In view of the forgoing, we decline to sustain the rejection of Claims 4 and 11 under 35 U.S.C. § 103(a). CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5-7, 15, 17-21 103(a) Klur, Evans 1, 2, 5-7, 15, 17-21 3, 8, 9, 12- 14, 16 103(a) Klur, Evans, Yu 3, 8, 9, 12-14, 16 4, 11 103(a) Klur, Evans, Yu, Sun 4, 11 Overall Outcome 1-9, 11- 21 REVERSED