Ex Parte Stewart

Patent Trial and Appeal Board

May 25, 2017

12816795 (P.T.A.B. May. 25, 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.
12/816,795 06/16/2010 Arthur L. Stewart 51690 4180
16848 7590 05/30/2017
ADDA^Cr - AnthenTeo
EXAMINER
255 South Orange Avenue MA, KAM WAN
Suite 1401
Orlando, EL 32801 ART UNIT PAPER NUMBER
2686
NOTIFICATION DATE DELIVERY MODE
05/30/2017 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):
creganoa @ allendyer. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARTHUR L. STEWART
Appeal 2016-005949
Application 12/816,795
Technology Center 2600
Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—6, 8—18, 20, 21, and 23—30. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
Claims 1—3, 5, 6, 9-11, 13—18, 24—27, and 29 are rejected under
35 U.S.C. § 103(a) as obvious over Kano (US 2009/0149212 Al; June 11,
2009), Falck (US 2009/0121833 Al; May 14, 2009), Setlak (US 5,963,679;
Oct. 5, 1999), Hebiguchi (US 2010/0184373 Al; July 22, 2010), and
Ishikura (US 6,940,391 Bl; Sept. 6, 2005). Final Act. 2—9.
Appeal 2016-005949
Application 12/816,795
Claims 4, 12, 20, 21, 23, and 28 are rejected under 35 U.S.C. § 103(a)
as obvious over Kano, Falck, Setlak, Hebiguchi, Ishikura, and Kitao
(US 2005/0273219 Al; Dec. 8, 2005). Final Act. 9.
Claims 8 and 30 are rejected under 35 U.S.C. § 103(a) as obvious over
Kano, Falck, Setlak, Hebiguchi, Ishikura, and Ochiai (US 7,412,229 B2;
Aug. 12, 2008). Final Act. 10.
We affirm.
STATEMENT OF THE CASE
Appellant’s invention relates to “finger sensors including finger
sensing integrated circuits, and associated manufacturing methods.”
Spec. 12. Claim 1 is illustrative and reproduced below:
1. A communications system comprising:
a terminal device comprising
a housing, and
a conductive radio frequency (RF) terminal receiver carried
by said housing for receiving an RF data signal conducted via
contact with a user; and
a user device comprising
a portable housing, and
a finger sensor carried by said portable housing and
comprising
radio frequency (RF) excitation circuitry comprising
a processor,
a data encoder coupled to the processor and configured
to encode a data payload,
an excitation generator configured to generate a drive
signal, and
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Application 12/816,795
a data modulator coupled to the data encoder and the
excitation generator and configured to generate the RF
data signal based upon the drive signal and the encoded
data payload,
the processor for
sensing a finger biometric characteristic of the user
based upon the drive signal, and
cooperating with the data encoder, the excitation
generator, and the modulator to serve as a
conductive RF user device transmitter to transmit
the RF data signal onto the user to be received by
said conductive RF terminal receiver, and
at least one electrode coupled to said RF excitation
circuitry for coupling the drive signal to a finger of the user and
for transmitting the RF data signal onto the finger of the user.
PRINCIPLES OF LAW
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).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability. For the same reason, if a technique has been used
to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual
application is beyond his or her skill. Sakraida [v. Ag Pro, Inc.,
425 U.S. 273 (1976)] and Anders on’s-Black Rock[, Inc. v.
Pavement Salvage Co., 396 U.S. 57 (1969)] are illustrative—a
court must ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
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ANALYSIS
The Obviousness Rejection of Claims 1-3,5, 6,9-11,13-18,24—27, and
29 over Kano, Falck, Setlak, Hebiguchi, and Ishikura
The Examiner finds Kano, Falck, Setlak, Hebiguchi, and Ishikura
teach all of the limitations of claim 1. Final Act. 3—8.
Appellant presents the following principal arguments:
i. “[T]he Examiner contended that the claimed processor and data
encoder are both disclosed by the encode unit 13 of Ishikura. This represents
the improper use of the same prior art element to disclose separate claim
elements.” App. Br. 11; see also Reply Br. 3 (“The claimed processor and
claimed data encoder are different claim elements. The same structure
cannot be used to meet two claim elements.”).
ii.
[T]he Examiner contended that a person having ordinary skill in
the art would have turned to Ishikura for the purposes of having
a data encoder and modulator for data transmission. The
Examiner’s rationale is merely a conclusion. In other words, the
Examiner merely recites the result of combining the references
as the technical rationale for combining the reference[s].
App. Br. 12; see also Reply Br. 4.
iii. “The Examiner’s reasoning as not being based upon the prior
art, must improperly come from Appellant’s specification.” App. Br. 13.
iv. With regard to Hebiguchi, “[i]t is improper to combine
references where the references teach away from the combination.” Reply
Br. 2.
We do not see any error in the Examiner’s findings. Nor do we see
any error in the Examiner’s reasoning and conclusion of obviousness.
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Regarding argument (i), the Examiner finds Kano, Falck, Setlak, and
Hebiguchi teach all limitations of claim 1, except for the recited limitations
in claim 1 of “a data encoder coupled to the processor and configured to
encode a data payload,” “a data modulator coupled to the data encoder and
the excitation generator and configured to generate the RF data signal based
upon the drive signal and the encoded data payload,” and “[the processor
for] cooperating with the data encoder, the excitation generator, and the
modulator to serve as a conductive RF user device transmitter,” which the
Examiner finds are taught by Ishikura. Final Act. 7—8 (citing Ishikura Fig. 1
and col. 3,11. 5—25). In the Response to Argument section of the Examiner’s
Answer, the Examiner further explains “Kano discloses a processor. Kano
and Ishikura in combination [] disclose[] an encoder (Ishikura: Fig. 1: 13)
coupled to the processor (Kano: Fig. 2: 105; Ishikura: Fig. 1: 13).” Ans. 4;
see also Final Act. 3 (finding Kano discloses a processor). We agree with
and adopt as our own the Examiner’s finding that Kano discloses a
processor, as well as the Examiner’s findings based on Ishikura.
Contrary to argument (i), we see no error in the Examiner’s findings
because Kano discloses the claimed processor, while Ishikura discloses the
claimed encoder and modulator. See Kano 1 58 (“data communication
unit 105”) and Ishikura col. 3,11. 5—25 (encode unit 13 and transmit unit 14).
Regarding argument (ii), the Examiner reasons “it would have been
obvious to one of ordinary skill in the art at the time of the invention [] to
have provided the system of Kano, Falck, Setlak and Hebiguchi with the
teachings of Ishikura to have a data encoder and data modulator for data
transmission.” Final Act. 8. In the Response to Argument section of the
Examiner’s Answer, the Examiner further explains:
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Kano discloses encoding and modulating data for intra­
body communications ([0058]) but does not explicitly disclose
the hardware to perform said functions.
It is known in the art of data communication as taught by
Ishikura to have a data encoder and a data modulator.
Therefore, it would have been obvious to one of ordinary
skill in the art at the time of the invention [] to have provided the
system of Kano with the teachings of Ishikura to have the
hardware (a data encoder and a data modulator) to perform the
functions (encoding and modulating data) disclosed by Kano.
Ans. 4—5. We agree with and adopt as our own the Examiner’s reasons for
modifying Kano with the teachings of Ishikura. We concur with the
Examiner’s conclusion of obviousness.
Contrary to argument (ii), we see no error in the Examiner’s reasons
and conclusion. Kano (158 (emphasis added)) discloses:
The data communication unit 105 may include an
oscillation unit for generating AC signals, a modem unit for
modulating and demodulating the amplitude of transmission and
reception data on the basis of the AC signals, a voltage
application unit for applying modulated signals between the
transceiver electrode 103 and the reference electrode 104 and
transmitting data.
Further, a skilled artisan would have recognized that Ishikura’s
encoder (encode unit 13) and modulator (transmit unit 14) are readily
applicable to Kano’s data communication unit 105 because they perform the
functions of the data communication unit 105’s modem unit. As such,
modifying Kano to include Ishikura’s encoder and modulator would have
been a predictable use of prior art elements according to their established
functions—an obvious improvement. See KSR, 550 U.S. at 417.
Regarding argument (iii), the Examiner reasons “it would have been
obvious to one of ordinary skill in the art at the time of the invention [] to
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have provided the system of Kano with the teachings of Falck to
authenticate the user for security purpose.” Final Act. 5; see also Ans. 6
(citing Falck 110). Falck (| 10) discloses intra-body communication may be
subjected to man-in-the-middle attacks. Thus, Falck suggests the need for
authentication for security purposes. Thus, we find the Examiner’s reasoning
is rational and supported by the prior art.
The Examiner reasons “it would have been obvious to one of ordinary
skill in the art at the time of the invention [] to have provided the system of
Kano and Falck with the teachings of Setlak as Falck does not suggest a
specific type of fingerprint sensor.” Final Act. 6; see also Ans. 7—8 (citing
Setlak col. 6,11. 54—64). Setlak (col. 6,11. 54—64) discloses drive/excitation
electronics for a fingerprint sensor. A skilled artisan would have recognized
that Setlak’s drive/excitation electronics for a fingerprint sensor are readily
applicable to Kano and Falck because, like Falck’s fingerprint sensor, they
also function to detect a fingerprint. As such, modifying Kano and Falck to
include Setlak’s drive/excitation electronics for a fingerprint sensor would
have been a predictable use of prior art elements according to their
established functions—an obvious improvement. See KSR, 550 U.S. at 417.
Thus, we find the Examiner’s reasoning is rational and supported by the
prior art.
The Examiner reasons “it would have been obvious to one of ordinary
skill in the art at the time of the invention [] to have provided the system of
Kano, Falck and Setlak with the teachings of Hebiguchi to share the
electrodes for cost saving.” Final Act. 7; see also Ans. 3, 6—7 (citing
Hebiguchi 137). Hebiguchi (| 37) discloses: “Especially when the electrode
as a part of the input element serves as the human side electrode, there is no
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cost increase.” Thus, we find the Examiner’s reasoning is rational and
supported by the prior art.
The Examiner reasons “it would have been obvious to one of ordinary
skill in the art at the time of the invention [] to have provided the system of
Kano, Falck, Setlak and Hebiguchi with the teachings of Ishikura to have a
data encoder and data modulator for data transmission.” Final Act. 8; see
also Ans. 4—5, 8 (citing Kano 158). For the reasons discussed above,
modifying Kano to include Ishikura’s encoder and modulator would have
been a predictable use of prior art elements according to their established
functions—an obvious improvement. See KSR, 550 U.S. at 417. Thus, we
find the Examiner’s reasoning is rational and supported by the prior art.
Regarding argument (iv), we note that although one alternative may
be inferior to or less desirable than another, that alone is insufficient to teach
away from the inferior alternative unless the disclosure criticizes, discredits,
or otherwise discourage that alternative. In re Fulton, 391 F.3d 1195, 1200-
01 (Fed. Cir. 2004). Here, Falck (| 31) discloses: “The reader 2 further
comprises not only an electrode for the intra-body communication[,] but also
a fingerprint sensor[.]” This does not constitute a teaching away from
sharing the electrodes for cost saving as taught by Hebiguchi. See
Hebiguchi 137.
We, therefore, sustain the Examiner’s rejection of claim 1, as well as
claims 2, 3, 5, 6, 9-11, 13—18, 24—27, and 29, which are not separately
argued with particularity.
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The Obviousness Rejection of Claims 4,12,20,21,23, and 28 over
Kano, Falck, Setlak, Hebiguchi, Ishikura, and Kitao
The Examiner finds Kano, Falck, Setlak, Hebiguchi, Ishikura, and
Kitao teach all of the limitations of claims 4, 12, 20, 21, 23, and 28. Final
Act. 9. Claims 4 and 12 each recite “wherein said RF excitation circuitry is
for performing a device navigation function.” Claim 20 recites “radio
frequency (RF) excitation circuitry comprising a processor . . . the processor
for . . . performing a device navigation function.” Claim 28 recites
“performing a device navigation function using the RF excitation circuitry.”
In particular, the Examiner finds “Kitao teaches said RF excitation circuitry
(this limitation is broadly interpreted as a processor; Fig. 2: 41) is for
performing a device navigation fimction[.]” Final Act. 9 (citing Kitao 70,
117); see also Ans. 9 (“the device navigation function is a well-known
function in a cellphone as taught by Kitao ([0071])”).
The Examiner reasons:
it would have been obvious to one of ordinary skill in the art at
the time of the invention [] to have provided the system of Kano,
Falck, Setlak, Hebiguchi and Ishikura with the teachings of Kitao
to perform a device navigation function as it is a known function
in the art of cellular phone[s].
Final Act. 9; see also Ans. 9 (“it would have been obvious to one of ordinary
skill in the art at the time of the invention [] to have provided the system of
Kano with the teachings of Kitao to let users navigate the menu to make
selection.”).
Appellant presents the following principal arguments:
i. Processor 41 of Kitao does not teach RF excitation circuitry.
See App. Br. 14 (“an interpretation of RF excitation circuitry does not
correspond to a processor.”).
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ii. “[F]or at least the reasons set forth above with respect to
independent Claim[s] 1,9, 15, and 24, independent Claim 20 is also
patentable.” App. Br. 14.
iii. “Kitao discloses an input being received by the operation key
44. Thus, navigation is performed by the navigation key 44, for example,
movement of the pointing device. Nowhere does Kitao disclose or suggest a
finger sensor that includes RF excitation circuitry for performing a device
navigation function.” App. Br. 14—15.
iv.
The Examiner contended that a person having ordinary skill in
the art would turn to Kitao to perform a device navigation
function. The Examiner has once again provided a conclusion
that is not based upon some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness, but rather Applicant’s specification.
App. Br. 15.
We do not see any error in the Examiner’s findings. Nor do we see
any error in the Examiner’s reasoning and conclusion of obviousness.
Regarding argument (i), claim 20 recites “radio frequency (RF)
excitation circuitry comprising a processor, . . . the processor for . . .
performing a device navigation function.” Thus, we conclude that the recited
“RF excitation circuitry” may include a processor. Turning to Kitao, Kitao’s
RF excitation circuitry as depicted in Kitao’s Fig. 2 includes processor 41,
radio 42, and antenna 48. Thus, Kitao teaches the recited RF excitation
circuitry.
Regarding argument (ii), for reasons discussed above when addressing
claim 1, this argument does not show any error in the Examiner’s findings or
in the Examiner’s reasoning and conclusion of obviousness.
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Regarding argument (iii) and (iv),
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
The Examiner finds Kitao teaches RF excitation circuitry for
performing a device navigation function. See Final Act. 9; see also Ans. 9.
The Examiner finds Kano discloses a finger sensor comprising RF excitation
circuitry. See Final Act. 3 (citing Kano Fig. 2, | 58). Thus, the combination
of the references teaches a finger sensor that includes RF excitation circuitry
for performing a device navigation function. The Examiner provided an
articulated reasoning with a rational underpinning as to why the teachings
would have been combined. See Final Act. 9; see also Ans. 9.
Kitao is readily applied to Kano. See Kano 1 58 (data communication
device); Kitao H 70, 71, 117 (cellular phone including device navigation
function). Therefore, modifying Kano to include Kitao’s RF excitation
circuitry for performing a device navigation function would have been a
predictable use of prior art elements according to their established
functions—an obvious improvement. See KSR, 550 U.S. at 417. Thus, we
find the Examiner’s reasoning is rational and supported by the prior art. We
accordingly do not see any error in the Examiner’s findings or in the
Examiner’s reasoning and conclusion of obviousness.
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We, therefore, sustain the Examiner’s rejection of claims 4, 12, 20,
and 28, as well as claims 21 and 23, which are not separately argued with
particularity.
The Obviousness Rejection of Claims 8 and 30 over Kano, Falck,
Setlak, Hebiguchi, Ishikura, and Ochiai
Appellant does not present separate arguments for claims 8 and 30.
See App. Br. 8—15; Reply Br. 2-A.
Claim 8 depends from claim 1. Claim 30 depends from claim 24.
We, therefore, sustain the Examiner’s rejection of claims 8 and 30 for
the reasons discussed above when addressing claim 1.
ORDER
The Examiner’s decision rejecting claims 1—6, 8—18, 20, 21, and 23—
30 is affirmed.
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).
AFFIRMED
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