Thomas Suwald

Patent Trials and Appeals Board

Jan 21, 2020

14290176 - (D) (P.T.A.B. Jan. 21, 2020)

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.
14/290,176 05/29/2014 Thomas Suwald 81541361US03 6508
65913 7590 01/21/2020
Intellectual Property and Licensing
NXP B.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
CATTUNGAL, DEREENA T
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
01/21/2020 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.us@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 2018-008976
Application 14/290,1761
Technology Center 2400
____________________

Before DAVID M. KOHUT, HUNG H. BUI, and PHILLP A. BENNETT,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–20, which are all the claims pending
in the application. App. Br. 14–18 (Claims App.). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. According to Appellant, the real party in interest is NXP
B.V. App. Br. 1.
2 Our Decision refers to Appellant’s Appeal Brief filed May 25, 2018
(“App. Br.”); Reply Brief filed September 18, 2018 (“Reply Br.”);
Examiner’s Answer mailed August 27, 2018 (“Ans.”); Final Office Action
mailed February 13, 2018 (“Final Act.”); and original Specification filed
May 29, 2014 (“Spec.”).
Appeal 2018-008976
Application 14/290,176

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STATEMENT OF THE CASE3
Appellant’s Invention
Appellant’s invention relates to a security token and transaction
authorization system for multi-factor user authentication. Spec. 1:3–4, 1:22–
23, 4:1–6; Title. According to Appellant, the multi-factor user
authentication authenticates based on multiple factors including [1]
“something a user knows (e.g.[,] a personal identification number), [2]
something a user has (the smart card) and [3] something that characterizes a
user (a handwriting characteristic).” Spec. 4:3–6. A user-specific credential
used to authenticate may be a challenge key or a one-time password, in
addition to a personal identification number. Spec. 7:9–11.
Representative Claim
Claims 1 and 14 are independent. Representative claim 1 is
reproduced below with disputed limitations in italics:
1. A security token configured to support multi-factor user
authentication, said security token comprising:
a tactile sensing user interface configured to capture a
stream of input data corresponding to a sequence of positions of
a finger engaging with said tactile sensing user interface and
representing a user-specific credential for authorizing a
transaction;
a conversion unit configured to convert said stream of
input data into a machine-readable credential;
a computation unit configured to compute a machine-
readable authentication code based on the machine-readable
credential;
a comparison unit configured to compare the computed
machine-readable authentication code with a machine-readable

3 See our Decision dated March 23, 2017 for additional context, where we
affirmed an earlier obviousness rejection of claims 1–20 based on the same
set of cited prior art.
Appeal 2018-008976
Application 14/290,176

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reference code stored in the security token and to generate a
corresponding authentication result [1] without user
interaction, wherein the comparison is performed on the security
token [2] after capturing the stream of input data;
a contact-bound interface configured to transmit said
machine-readable authentication code to a first transaction
device; and
a contactless interface configured to transmit said
machine-readable authentication code to a second transaction
device, wherein the multi-factor user authentication requires
both the user-specific credential and a handwriting characteristic.

App. Br. 14 (Claims App’x) (bracketing added).

Evidence Considered

Name Reference Date
Wendt US 2008/0148393 A1 Jun. 19, 2008
Adams et al.
“Adams”
US 2010/0275259 A1 Oct. 28, 2010
Black US 6,539,101 B1 Mar. 25, 2003
Rhoads et al.
“Rhoads”
US 2008/0112596 A1 May 15, 2008
Hammad et al.
“Hammad”
US 2013/0218765 A1 Aug. 22, 2013
Armington et al.
“Armington”
US 2003/0163739 A1 Aug. 28, 2003
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Examiner’s Rejections4 & References
(1) Claims 1–6, 8, 14–18, and 20 [sic, claims 1–6, 8, and 14–18]
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wendt,
Adams, and Black. Final Act. 5–12.
(2) Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wendt, Adams, Black, and Rhoads. Final Act. 12–13.
(3) Claims 9–13 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wendt, Adams, Black, and Hammad. Final Act.
13–16.
(4) Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wendt, Adams, Black, and Armington. Final Act. 16–17.

Issue on Appeal
Based on Appellant’s arguments, the dispositive issue on appeal is
whether the cited prior art (Wendt) teaches or suggests “a comparison unit
configured to compare the computed machine-readable authentication code
with a machine-readable reference code stored in the security token and to
generate a corresponding authentication result [1] without user interaction,
wherein the comparison is performed on the security token [2] after
capturing the stream of input data,” as recited in Appellant’s independent
claims 1 and 14. App. Br. 6–7 (emphasis added); Reply Br. 2–3.

4 Claims 1 and 14 were rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 4. However,
the Examiner has withdrawn this rejection in Advisory Action dated May
15, 2018. As such, this rejection is no longer on appeal.
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ANALYSIS
With respect to independent claims 1 and 14, the Examiner finds
Wendt teaches Appellant’s claimed “security token configured to support
multi-factor user authentication” including “a tactile sensing user interface,”
“a conversion unit,” “a computation unit,” and “a comparison unit.” Final
Act. 5–6 (citing Wendt ¶¶ 15–17, 49–50, 53–55, 62–63, Figs. 1–4). The
Examiner acknowledges Wendt does not expressly disclose “a contact-
bound interface,” “a contactless interface,” and “multi-factor user
authentication requiring both a user-specific credential and a handwriting
characteristic, but relies on (1) Adams for teaching the claimed “contact-
bound interface,” and “contactless interface,” and (2) Black for teaching
such “multi-factor user authentication” to support the conclusion of
obviousness. Final Act. 6–7 (citing Adams ¶¶ 179, 281; Black 10:45–51,
18:6–14, and 27–33).
Appellant does not dispute the Examiner’s factual findings regarding
Adams and Black. Nor does Appellant challenge the Examiner’s rationale
to combine those references. Appellant even acknowledges Wendt teaches
the claimed “comparison unit configured to compare the computed machine-
readable authentication code with a machine-readable reference code stored
in the security token and to generate a corresponding authentication result,”
but argues Wendt’s “comparison unit” does not make such comparison and
authentication “[1] without user interaction, wherein the comparison is
performed on the security token [2] after capturing the stream of input data
[representing a user-specific credential for authorizing a transaction]” as
recited in Appellant’s independent claims 1 and 14. App. Br. 6–7 (citing
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Wendt ¶¶ 47–48) (emphasis added); Reply Br. 2–3. In particular, Appellant
argues “Wendt teaches away from the claimed subject matter by requiring
user interactions” because “Wendt clearly requires a plurality of user
interactions for authentication.” Reply Br. 2–3. According to Appellant,
“Wendt discloses two different time windows with user interaction,”
including “an initial password comparison in paragraph [0047] and
additional user interaction during the second time window of paragraph
[0048].” Reply Br. 3 (citing Wendt ¶¶ 47–48).
As depicted in Fig. 4, Wendt requires input1 in step 205, defined
by the user “applying pressure several times to the input1 sensor
170” in paragraph [0060], and entry of the neural biometric
password in step 220. The user may be “once again prompted to
enter” in paragraph [0061].

Reply Br. 3
We do not find Appellant’s arguments persuasive. Rather, we find the
Examiner has provided a comprehensive response to Appellant’s arguments
supported by a preponderance of evidence. Ans. 4. Therefore, we adopt the
Examiner’s findings and explanations provided therein. Id. For additional
emphasis, we note Wendt teaches user biometric enabled universal smart
card 100, shown in Figures 1 and 3, that utilizes (1) biometrics
authentication, i.e., “measuring and analyzing human body characteristics
such as fingerprints, eye retina and irises, voice and facial patterns and hand
geometry for the purpose of validating an individual identity” (Wendt ¶¶ 5,
9); (2) embedded piezo transducers sensors 160–170, shown in Figures 1–2,
to deliver tactile inputs based on user neural biometric password (Wendt ¶¶
47–50); and (3) embedded firmware, i.e., CPU EEPROM 120, shown in
Figure 3, to match the tactile inputs based on user neural biometric password
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(user-specific credential) with a stored reference for “comparison,
verification and authentication” (Wendt ¶¶ 63). As correctly recognized by
the Examiner:
Wendt in para: 0047–0048 teaches “a comparison unit . . . to
generate a corresponding authentication result without user
interaction, wherein the comparison is performed on the security
token after capturing the stream of input data.

Figs. 1 and 3 shows the user biometric enabled universal smart
card (smart token). In Fig. 3, element 120 is CPU EEPROM,
which is the smart card processor performing the authentication
verification. Therefore, the authentication result is done by a
processor without user interaction, and the comparison is
performed on the security token (smart card) after capturing the
stream of input data.

Ans. 4 (citing Wendt ¶¶ 47–48). In other words, once the tactile inputs
based on user neural biometric password (user-specific credential) are
received, Wendt’s CPU EEPROM 120, shown in Figure 3, is configured to
make such a comparison and generate an authentication result in the manner
recited in Appellant’s claims 1 and 14, i.e., “without user interaction” and
such a comparison is performed “after capturing the stream of input data
[representing a user-specific credential for authorizing a transaction].” See
Advisory Action, p. 2.
For the reasons set forth above, Appellant has not persuaded us of
Examiner error. Accordingly, we sustain the Examiner’s obviousness
rejection of independent claims 1 and 14, and dependent claims 2–13, and
15–20, which Appellant does not argue separately. App. Br. 7–11.

Appeal 2018-008976
Application 14/290,176

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CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1–20 under 35 U.S.C. § 103(a). As
such, we AFFIRM the Examiner’s Final Rejection of claims 1–20.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8, 14–18 103 Wendt, Adams,
Black
1–6, 8, 14–
18

7 103 Wendt, Adams,
Black, Rhoades
7
9–13, 20 103 Wendt, Adams,
Black, Hammad
9–13, 20
19 103 Wendt, Adams,
Black, Armington
19
Overall
Outcome
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED