Ex Parte Boshra

Patent Trial and Appeal Board

Nov 21, 2016

13451241 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/451,241 04/19/2012
16848 7590
ADDMG - AuthenTec
255 South Orange A venue
Suite 1401
Orlando, FL 32801
11/23/2016
FIRST NAMED INVENTOR
Michael Boshra
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.
51889 8221
EXAMINER
LI,RUIPING
ART UNIT PAPER NUMBER
2666
NOTIFICATION DATE DELIVERY MODE
11/23/2016 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@addmg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL BOSHRA
Appeal2016-002189
Application 13/451,241 1
Technology Center 2600
Before HUNG H. BUI, JON M. JURGOV AN, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-33. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE, and enter a new ground of rejection in accordance
with 37 C.F.R. § 41.50(b). 2
1 The Appeal Brief identifies Authentec, Inc. as the real party in interest.
App. Br. 1.
2 Our Decision refers to Appellant's Appeal Brief, filed July 14, 2015 ("App.
Br."); Appellant's Reply Brief, filed December 8, 2015 ("Reply Br.");
Examiner's Answer, mailed October 30, 2015 ("Ans."); and Final Office
Action, mailed February 4, 2015 ("Final Act.").
Appeal 2016-002189
Application 13/451,241
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 11, 18, 26, and 30 are independent claims. Claims 1 and 26
are reproduced below:
1. An electronic device comprising:
a finger-operated input device;
a finger sensor carried by said finger-operated input device
to sense a user's finger; and
a processor to
perform at least one menu function responsive to
operation of said finger-operated input device,
acquire finger-enrollment biometric data of the
user's finger from said finger sensor responsive to each of
a plurality of operations of said finger-operated input
device,
acquire finger-matching biometric data of the user's
finger from said finger sensor responsive to a subsequent
operation of said finger-operated input device; and
authenticate the user based upon a match between
the acquired finger-matching biometric data and the
finger-enrollment biometric data.
26. An electronic device comprising:
wireless communications circuitry;
a finger-operated input device;
a finger sensor carried by said finger-operated input device
to sense a user's finger; and
a processor to
initiate wireless communication via said wireless
communications circuitry and responsive to operation of
said finger-operated input device,
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Application 13/451,241
Minemura
Howell et al.
Nagar et al.
acquire finger-enrollment biometric data of the
user's finger from said finger sensor responsive to each of
a plurality of operations of said finger-operated input
device,
acquire finger-matching biometric data of the user's
finger from said finger sensor responsive to a subsequent
operation of said finger-operated input device, and
authenticate the user based upon a match between
the acquired finger-matching biometric data and the
finger-enrollment biometric data.
References
US 2004/0085188 Al
US 2005/0169503 Al
US 2012/0051605 Al
Examiner's Rejections
May 6, 2004
Aug. 4, 2005
Mar. 1, 2012
(1) Claims 26 and 30 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Minemura. Final Act. 2--4.
(2) Claims 1, 8-11, 18, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Minemura and Nagar. Final Act. 4--7.
(3) Claims 2-7, 12-17, and 19-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Minemura, Nagar, and Howell.
Final Act. 7-11.
(4) Claims 27-29 and 31-33 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Minemura and Howell. Final Act. 11-
13.
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Application 13/451,241
ANALYSIS
Rejection of Claims 26 and 30 under 35 USC§ 102
Appellant contends the Examiner erred in finding Minemura describes
a "processor to initiate wireless communication via said wireless
communications circuitry and responsive to operation of said finger-
operated input device, [and] acquire finger-enrollment biometric data of the
user's finger from said finger sensor responsive to each of a plurality of
operations of said finger-operated input device," as recited in claim 26 and
similarly recited in claim 30. App. Br. 8-13; Reply Br. 2-3.
Appellant does not appear to dispute that Minemura describes
"initiat[ing] wireless communication via said wireless communications
circuitry and responsive to operation of said finger-operated input device."
In fact, Appellant states that "Minemura discloses a user approving payment
by pushing the fingerprint authentication sensor, which causes the portable
phone to transmit data to a corresponding point-of-sale (POS) terminal."
App. Br. 9 (citing Minemura i-fi-151-52). Rather, Appellant's arguments
suggest a dependency between certain recited functions of the "processor."
For example, Appellant argues: "Minemura fails to disclose the acquisition
of the finger-enrollment biometric data being performed responsive to an
operation of a finger-operated input device that causes an initiation of the
wireless communication." App. Br. 10. Claims 26 and 30 do not require
acquiring finger-enrollment data responsive to the operation that initiates
wireless communication. Rather, the claims require "acquir[ing] finger-
enrollment biometric data of the user's finger from said finger sensor
responsive to each of a plurality of operations of said finger-operated input
device." The operation that initiates wireless communication may be, but
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Application 13/451,241
need not be, one of the recited "plurality of operations." Thus, Appellant's
interpretation is not commensurate with the scope of the claimed recitations.
Appellant further contends that the Examiner erred in finding
Minemura inherently discloses "acquir[ing] finger-enrollment biometric data
of the user's finger from said finger sensor responsive to each of a plurality
of operations of said finger-operated input device." App. Br. 9-11; Reply
Br. 2-3. Although Appellant does not dispute that Minemura's "fingerprint
collation data" describe the claimed "finger-enrollment biometric data,"
Appellant argues Minemura does not describe how the collation data is
acquired. App. Br. 9-10.
In response, the Examiner explains that the fingerprint collation data
"are acquired by said finger authentication sensor prior to performing
fingerprint authentication, in order to perform fingerprint authentication
processing," and, therefore, "the corresponding fingerprint enrollment data is
necessarily acquired by said finger sensor 11 prior to performing fingerprint
authentication process in Minemura, in response to the operation of each
user who is pushing his/her finger on the surface of the fingerprint sensor in
advance." Ans. 15. We agree with the Examiner that, according to
Minemura, the fingerprint collation/enrollment data necessarily must have
been acquired prior to performing fingerprint authentication, but we do not
agree that such data necessarily must have been acquired from finger
sensor 11. As Appellant correctly notes, Minemura does not describe how
the fingerprint collation data are collected. See App. Br. 9-11. Although the
Examiner's reasoning (see Ans. 15-16) and the evidence of record,
discussed below, demonstrate that acquiring such data from the finger sensor
would have been known and well within the grasp of a person of ordinary
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skill in the art, the collation data could have been put on the device in other
ways, such as through downloading such data to the device. The Federal
Circuit has stated that inherency "may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations and internal quotation marks omitted). Thus, we
conclude the Examiner erred in finding Minemura inherently discloses
"acquir[ing] finger-enrollment biometric data of the user's finger from said
finger sensor responsive to each of a plurality of operations of said finger-
operated input device."
Because we are persuaded of error in the Examiner's reliance on
inherency, we are constrained by the record not to sustain the rejection of
claims 26 and 30 under 35 U.S.C. § 102 as anticipated by Minemura.
Rejection of Claims 27-29 and 31-33 under 35 USC§ 103
Claims 27-29 depend from claim 26, and claims 31-33 depend from
claim 30. Because the Examiner's rejection of these dependent claims
incorporated the Examiner's erroneous finding on inherency as to the
independent claims, we are constrained by the record not to sustain the
rejection of claims 27-29 and 31-33 under 35 U.S.C. § 103(a) as obvious
over Minemura and Howell.
Rejections of Claims 1-25 under 35 USC§ 103
As Appellant notes, the Examiner's rejections of independent claims
1, 11, and 18 rely on the Examiner's finding of inherency, discussed above.
See App. Br. 14. Because we conclude the Examiner's finding of inherency
is erroneous, we are constrained by the record not to sustain the rejections
under 35 U.S.C. § 103(a) of claims 1, 8-11, 18, and 25 over Minemura and
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Application 13/451,241
Nagar and claims 2-7, 12-17, and 19-24 over Minemura, Nagar, and
Howell.
NEW GROUND OF REJECTION
Independent Claims 1, 11, 18, 26, and 30
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b). Independent claims 1, 11, 18, 26, and
30 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Minemura and Nagar.
As discussed above, we are persuaded that the Examiner erred in
finding Minemura inherently discloses "acquir[ing] finger-enrollment
biometric data of the user's finger from said finger sensor responsive to each
of a plurality of operations of said finger-operated input device." Although
fingerprint collation/enrollment data are not necessarily acquired from finger
sensor 11 in Minemura, the evidence of record demonstrates that acquiring
such data from the finger sensor as claimed would have been known and
well within the grasp of a person of ordinary skill in the art. For example,
Nagar describes "finger enrollment mode 220," in which "a user is requested
to present his/her finger in front of the imaging sensor" such that "a database
of reference finger images is created using the biometric system." Nagar
ii 45.
Appellant's arguments on appeal further support this finding. In
characterizing the prior art, Appellant states:
[P]rior art enrollment of finger biometric data generally requires
a series of finger placements responsive to a prompt for
enrollment. In such a case, the user is prompted to enroll his or
her fingers through multiple placements of the fingers adjacent
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the finger biometric sensor. This process can be time consuming
and often annoying to users, especially since, for a proper
enrollment, a threshold quality and quantity of finger biometric
enrollment data must be acquired, which can translate into
repetitive finger placements. This may be especially the case
when the finger is not properly placed on the finger biometric
sensor, for example, too much/little pressure, rolled finger, etc.
To address this problem, the claimed embodiments, for
example, enroll the user's finger while performing other
applications or navigating a menu, so the enrollment may be
considered transparent to the user, i.e., no explicit or separate
enrollment process. (See Appellant's Specification, paragraph
0027, for example). In other words, the user may not be
inconvenienced by the enrollment process, which, as noted
above, is generally performed by a separate dedicated enrollment
process.
App. Br. 12-13.
Appellant's argument suggests that the claimed recitation of
"acquir[ing] finger-enrollment biometric data" excludes known prior art
processes of acquiring enrollment data by prompting the user. We disagree.
The disputed recitation requires acquiring such data "from said finger sensor
responsive to each of a plurality of operations of said finger-operated input
device." Encompassed within this subject matter are operations of the
finger-operated input device that are performed in conjunction with prompts
to the user. This is evident by looking at various dependent claims that
recite "wherein said processor is to prompt, via said display, the user to
acquire the finger-enrollment biometric data." See claims 2, 14, 21, 27, and
32.
Claim 11 recites "a finger sensor carried by said pushbutton switch to
sense a user's finger," and with respect to the disputed limitation, differs
only slightly from the other independent claims, reciting that the processor
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Application 13/451,241
"acquire finger-enrollment biometric data of the user's finger from said
finger sensor responsive to each of a plurality of operations of said
pushbutton switch." We agree with the Examiner's finding that Minemura
describes a device having a finger sensor carried by a pushbutton switch.
Final Act. 7 (citing i1i131-32, Figs. 1, 4). Minemura discloses:
Fingerprint authentication sensor 11 is elastically supported
using spring as a push button type switch 15, and as shown in
FIG. 4, since physical pressure is added when finger 16 presses
on front side of fingerprint authentication sensor 11, push button
type switch 15 turns on and the fingerprint of finger 16 is
detected.
Minemura i132.
In addition, we agree with the Examiner's findings that the
combination of Minemura and Nagar teaches or suggests the remaining
limitations of independent claims 1, 11, 18, 26, and 30. See Final Act. 2-7.
Unlike claims 26 and 30, claims 1, 11, and 18 do not include
limitations reciting "wireless communications circuitry." Rather, claims 1
and 18 require a "processor to perform at least one menu function responsive
to operation of said finger-operated input device," and claim 11 requires "a
processor to perform at least one menu function responsive to operation of
said pushbutton switch." Appellant argues:
Minemura fails to disclose the acquisition of the finger-
enrollment biometric data being performed responsive to an
operation of finger-operated input device that causes at least one
menu function to be performed. Similarly to that described
above with respect to independent Claims 26 and 30, there is no
logical relationship disclosed between any hypothetical
enrollment process in Minemura and the operating modes
implemented as menu driven functions.
App. Br. 15.
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Application 13/451,241
Claims 1, 11, and 18 do not require acquiring finger-enrollment data
responsive to the operation that causes a menu function to be performed.
The operation that causes a menu function to be performed may be, but need
not be, one of the "plurality of operations" in the limitation reciting
"acquir[ing] fingerprint-enrollment biometric data." Thus, Appellant's
interpretation is not commensurate with the scope of the claimed recitations.
Based on the foregoing discussion, although the Examiner erred in
finding Minemura inherently discloses "acquir[ing] finger-enrollment
biometric data," as recited in the independent claims, we find that this was
known in the prior art, as evidenced by Nagar and as acknowledged by
Appellant's own arguments. We conclude that the subject matter of
independent claims 1, 11, 18, 26, and 30 would have been obvious to a
person of ordinary skill in the art based on the teachings of Minemura and
Nagar, as discussed above. In particular, these claims are directed to
combinations of familiar elements yielding predictable results-Minemura's
teachings of fingerprint authentication processes and wireless
communication in combination with Nagar's teachings of a fingerprint
enrollment process and performing menu functions. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.").
As such, pursuant to our authority under 37 C.F.R. § 41.50(b ), we
enter a new ground of rejection that claims 1, 11, 18, 26, and 30 are
unpatentable as obvious under 35 U.S.C. § 103(a) over Minemura and
Nagar. We leave it to the Examiner to determine whether this new ground
of rejection should be applied to the respective dependent claims.
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DECISION
We reverse the Examiner's decision to reject claims 1-25, 27-29, and
31-33 under 35 U.S.C. § 103(a).
We reverse the Examiner's decision to reject claims 26 and 30 under
35 U.S.C. § 102.
Pursuant to 37 C.F.R. § 41.50(b), independent claims 1, 11, 18, 26,
and 30 are rejected under 35 U.S.C. § 103(a).
Rule 37 C.F.R. § 41.50(b) states that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Further, § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED
37 C.F.R. 41.50(b)
11