Ex Parte Chin

Patent Trial and Appeal Board

Jun 12, 2017

13166829 (P.T.A.B. Jun. 12, 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.
13/166,829 06/23/2011 David H. Chin 00092.00005CIP1 6733
98262 7590
David E. Crites
15900 Rochin Terrace
Los Gatos, CA 95032
06/14/2017 EXAMINER
LI, LIN
ART UNIT PAPER NUMBER
2693
NOTIFICATION DATE DELIVERY MODE
06/14/2017 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):
critesd@umich.edu
davidcrites @ frontier.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID H. CHIN
Appeal 2016-007409
Application 13/166,829
Technology Center 2600
Before CARLA M. KRIVAK, HUNG H. BUI, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1—16 and 21—
30, which are all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).
1 This appeal is related to Appeal Nos. 2016-003488 and 2017-001192.
2 The real party in interest is identified as the inventor, David H. Chin. App.
Br. 2. All Appeal Brief citations are to the Brief filed on February 8, 2016.
Appeal 2016-007409
Application 13/166,829
Claimed Subject Matter
The claimed invention relates to a method for accessing an account
through an applied gesture on a touchscreen of a mobile device, by
permitting account access when the applied gesture matches a designated
security gesture. Spec. Title; Abstract.
Claims 1 and 14 are independent. Claim 14, reproduced below, is
exemplary of the subject matter on appeal.
14. A method of a mobile device comprising:
accepting a user-defined security gesture on a touchscreen
of the mobile device;
accepting an applied security gesture on the touchscreen;
comparing the applied security gesture with the user-
defined security gesture; and
permitting an access of data through the mobile device
when the applied security gesture matches the user-defined
security gesture.
Rejections & References
(1) Claims 1, 3—14, 16, and 23—30 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 2—3.
(2) Claims 1 and 14 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Jobs et al. (US 2008/0174570 Al; July 24, 2008) (“Jobs”).
Final Act. 4—7.
(3) Claims 2—4, 6, 8, 9, 12, 15, 16, 21, 22, and 25—30 stand rejected
under 35 U.S.C. § 103(a) as obvious over Jobs and Chaudhri et al. (US
2009/0064055 Al; Mar. 5, 2009) (“Chaudhri”). Final Act. 7-12, 16-19.
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(4) Claims 5, 10, and 23 stand rejected under 35 U.S.C. § 103(a) as
obvious over Jobs, Chaudhri, and Marvit et al. (US 2005/0212756 Al; Sept.
29, 2005) (“Marvit”). Final Act. 12-14.
(5) Claim 7 stands rejected under 35 U.S.C. § 103(a) as obvious
over Jobs, Chaudhri, and Singfield (US 2005/0097046 Al; May 5, 2005).
Final Act. 14—15.
(6) Claim 13 stands rejected under 35 U.S.C. § 103(a) as obvious
over Jobs, Chaudhri, and Labrador et al. (US 2012/0072975 Al; Mar. 22,
2012) (“Labrador”). Final Act. 15-16.
(7) Claims 11 and 24 stand rejected under 35 U.S.C. § 103(a) as
obvious over Jobs, Chaudhri, and Rytivaara et al. (US 2005/0253817 Al;
Nov. 17, 2005) (“Rytivaara”). Final Act. 19—21.3
ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
Independent claims 1 and 14 each recite, inter alia, “a user-defined
security gesture” and “an applied security gesture.”
The Examiner acknowledges Appellant’s Specification discloses “a
user-defined gesture,” “an applied gesture,” and “a designated security
gesture,” but finds Appellant’s Specification does not describe “a user-
defined security gesture” and “an applied security gesture.” Final Act. 2;
Ans. 2-4. In particular, the Examiner finds “[t]he terminology of the
[claimed] user-defined security gesture is totally different than the user-
3 The rejection listing (Final Act. 19) mistakenly identifies Rytivaara as “US
2005/02353817 Al.” The Rytivaara reference is US 2005/0253817 Al, as
listed in the Examiner’s Notice of References Cited attached to the Final
Action mailed Aug. 4, 2015.
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defined gesture” described in the Specification, and “the terminology of the
[claimed] applied security gesture is totally different than the applied
gesture” described in the Specification. Ans. 3. The Examiner conjectures
that “the Appellant is aware of the differences between the amended
terminologies and originally claimed terminologies, and try to claim
what is not disclosed in the original disclosure.” Ans. 4.
We disagree with the Examiner’s findings. As Appellant explains, the
originally filed Specification explains that “a ‘security gesture’ is simply a
gesture that provides a security function,” and describes “user-defined
gestures” and “applied gestures” providing security functions, thereby
describing a “user-defined security gesture” and an “applied security
gesture,” as claimed. Reply Br. 1—2 (emphasis added), 4 (citing Spec. ^fl[ 6,
9, 11, 43, 46, 49); App Br. 4 (citing Spec. ^fl[ 5, 7).
We have reviewed Appellant’s Specification and concur with
Appellant’s argument that the Specification demonstrates Appellant
possessed the claimed “user-defined security gesture” and “applied security
gesture,” as recited in claims 1 and 14. For example, paragraphs 43, 47, and
49 in the Specification describe “a user-defined gesture 114 .. . maybe
stored in a remote computer 132 and recognized as the designated security
gesture,” “the designated security gesture (e.g., the user-defined gesture
114),” and “providing] security to the mobile device 102 based on the user-
defined gesture 114 (e.g., the designated security gesture).''1 See Spec. ^fl[ 43,
47, 49 (emphasis added). Given these explanations, we agree with
Appellant that one of ordinary skill in the art would understand from the
Specification’s description that the “user-defined gesture” or “designated
security gesture” is a “user-defined security gesture” as claimed. App. Br. 4.
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Additionally, paragraphs 11 and 46 in the Specification describe
“access of the online financial account through the mobile device may be
permitted when the applied gesture above the touchscreen of the mobile
device matches the designated security gesture,” using a “security module
... to associate the applied gesture 108 with a designated security gesture,
and to determine access to a set of features on the mobile device 102 based
on the association.” See Spec. 11, 46 (emphasis added). Given these
explanations, we agree with Appellant that one of ordinary skill in the art
would understand from the Specification’s description that the “applied
gesture” providing access security is an “applied security gesture” as
claimed. App. Br. 4.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 14 and their dependent claims 1, 3—13, 16, 23—25,
27, 28, and 30 under the written description requirement of § 112, first
paragraph.4
The Examiner also separately rejects claims 26 and 29 as lacking
written description support for reciting “the applied security gesture and the
user-defined security gesture comprise forces that are simultaneously
applied within the touch receptive area” (claim 26) and “the applied security
gesture and the user-defined security gesture comprise forces that are
simultaneously applied on the touchscreen” (claim 29). Final Act. 3.5 The
4 To the extent the Examiner also intended to reject dependent claims 2, 15,
21, and 22 under 35 U.S.C. § 112, first paragraph (Ans. 5 (mentioning all
claims 1—16 and 21—30)) on the same basis as claims 1 and 14, we do not
sustain the Examiner’s rejection of claims 2, 15, 21, and 22 under
35 U.S.C. § 112, first paragraph.
5 We interpret the Examiner’s reference to claim 27 (Final Act. 3) to be
intended to apply to claim 29, based on the quoted portions of the claim.
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Examiner finds “the original specification describes ‘the applied gesture’
and ‘the designated security gesture’,” not “the applied security gesture” and
“the user-defined security gesture” recited in claims 26 and 29. Ans. 5—6
(citing Spec. Tflf 75, 78, Abstract); Final Act. 3. The Examiner also finds
that, although the Specification describes a designated security gesture
including forces forming a forward double-L on a touchscreen, “the user-
defined gesture is different definition/function than the designated security
gesture because the user-defined gesture does not include a feature of
‘forward double-L’.” Ans. 5—6 (citing Spec. 75, 78).
We disagree with the Examiner’s findings. As discussed supra with
respect to claims 1 and 14, we agree with Appellant that the Specification
demonstrates Appellant possessed the claimed “applied security gesture”
and “user-defined security gesture.”
Additionally, Appellant cites paragraphs 75 and 78 of the originally
filed Specification in support of claims 26 and 29. App. Br. 5; Reply Br. 5—
6. Paragraph 75 of the Specification provides that “[t]he tactile pattern of
the applied gesture 108 may consist of one or more simultaneous or
sequential point or vector tactile forces,” where a “vector tactile force may
consist of directional linear or complex curvilinear components'1'’ and
"'appliedgesture 108 may include linear applications of force by the object
across the touch screen 106, taps against the touch screen 106, static
applications of the object in contact with the touch screen 106 for a specified
period of time, or any combination thereof ” See Spec. 175 (emphasis
added). Paragraph 78 of the Specification provides that “the designated
security gesture may consist of a forward double-L, ’ applied by
simultaneously moving two adjacent fingers vertically down on a touch
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screen 108 a distance x and then contiguously moving both fingers ninety
degrees to right a distance of 0.5x.” See Spec. 178 (emphasis added).
Further, as discussed supra with respect to claim 1, a “designated security
gesture” is a “user-defined security gesture” as claimed. Thus, we concur
with Appellant’s argument that the Specification demonstrates Appellant
possessed claim 26’s limitations reciting “the applied security gesture and
the user-defined security gesture comprise forces that are simultaneously
applied within the touch receptive area,” and the similar limitations recited
in claim 29.
Accordingly, we do not sustain the Examiner’s rejection of dependent
claims 26 and 29 under the written description requirement of § 112, first
paragraph.
Anticipation rejection of claims 1 and 14
Appellant argues claim 14 as representative of claims 1 and 14. App.
Br. 6—8. Appellant argues Jobs fails to teach “accepting a user-defined
security gesture on a touchscreen of the mobile device,” as recited in claim
14. App. Br. 6—7; Reply Br. 7—9. Appellant argues Jobs at most describes
“a predefined [not user-defined] gesture, such as moving the unlock image
across channel 306,” and a passcode, which, “though entered on a touch­
screen, is not a ‘gesture’, [and] is not ‘user-defined’,” as required by claim
14. App. Br. 6 (citing Jobs H 176-178, 1103-1106; Figs. 3C, 56A-560);
Reply Br. 9. Appellant argues Jobs also “does not teach accepting a
reference passcode, or a reference security gesture” on a touchscreen
because “Jobs nowhere discloses whether or how a reference passcode
appears on the device”; rather, “a reference passcode could be inherent in
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[Jobs’] device (e.g. a serial number), could be generated randomly, could be
selected from a list, could be entered by a user, or could appear in any
fashion.” Reply Br. 8; App. Br. 7 (citing Jobs 1177).
We are not persuaded by Appellant’s arguments, and we agree with
the Examiner’s findings that Jobs’ passcode or password teaches a user-
defined security gesture, as claimed. Final Act. 4 (citing Jobs ^fl[ 176—178,
Figs. 1—3C); Ans. 8, 10—11. In particular, the Examiner finds Jobs’
passcode—containing a “selected series of keys” that is “created when
user’s finger interacts with a key pad of a mobile device to set up [the]
passcode” to prevent other users from unlocking the device touchscreen—is
a “gesture” as claimed. Ans. 8, 10, 13 (citing Jobs ^fl[ 9, 177, Figs. 2, 3C).
We agree. Jobs’ passcode/password is commensurate with the term
“gesture” as claimed and with the broad description of “gesture” in
Appellant’s Specification. Ans. 8, 10. Particularly, Appellant’s
Specification broadly describes a gesture as follows:
The applied gesture 108 may be a tactile gesture performed on a
touchscreen 106.... In another embodiment, the applied gesture
108 may be a tactile gesture performed on a touch-receptive area
120. The touch-receptive area 120 may be surface that can
determine an applied gesture 108 based on the motion and/or
position of a touch of user 104. . . .
The applied gesture 108 may or may not depend on sequential
activation of fixed areas on the touchscreen 106. ... In another
embodiment, the applied gesture 108 may be applied on a
touchscreen 106 comprising a visual template. The visual
template may comprise multiple distinct dotted locations and/or
dotted-patterning. The visual template may be a matrix visual
template. . . .
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The applied gesture 108 may be a force applied physically by the
user (e.g., by touching, by using a stylus, etc.). The touchscreen
106 may be an input/output interface which may detect a location
of touch within the display area. . . .
A user-defined gesture 114 may be accepted as an input (e.g.,
such as an applied gesture 108) on a mobile device 102. . . .
The applied gesture 108 may be applied with or without the aid
of a visual template. A designated input region may represent a
fixed or variable subset of the touch screen 106. . . .
According to another example, the applied gesture 108 may be
applied with a force applicator (e.g., a stylus) on the touch screen
106 followed by holding the object in contact with the touch
screen 106. According to one embodiment, an online account
gesture may be applied at any location within a designated touch-
sensitive input region of a mobile device 102. The designated
input region may be a touch screen 106 or some other touch-
sensitive non-display input region 120 of the mobile device 102,
such as its back, an edge, or a touch pad. The scale of the applied
gesture 108 may be of any size relative to the designated input
region of the touch screen 106 or touch-sensitive non-display
input region 120.
Spec. H39, 48, 49, 51, 76, 80 (emphasis added). Jobs’ passcode—which is
a series of keys defined by the position of the user’s finger on a touchscreen
number template, via sequential activation of number areas on the
touchscreen— is commensurate with the broad description of “gesture” in
Appellant’s Specification. See Jobs Fig. 3C, H 9, 102 (“The touch screen
112 is used to implement virtual or soft buttons and one or more soft
keyboards”), 177; Spec. H 39, 48; Ans. 8, 10, 13.
We also are not persuaded by Appellant’s arguments that Jobs’
passcode is not user-defined and is not accepted on a touchscreen of the
mobile device, as claim 14 requires. App. Br. 6—7; Reply Br. 8—9. We agree
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with the Examiner that Jobs teaches “use of a passcode is a user-selectable
option (e.g., part of settings 412)” (Jobs 1177). Ans. 8 (citing Jobs 1177—
178); Final Act. 4; see also Jobs Tflf 206, 209, Fig. 4B (describing settings
412). Appellant does not persuasively explain why the claimed “accepting a
user-defined security gesture on a touchscreen of the mobile device” is
different from setting a touchscreen passcode via user-selectable device
settings in Jobs. Thus, Jobs teaches “accepting a user-defined security
gesture on a touchscreen of the mobile device,” as recited in claim 14.
Appellant further argues “Jobs protects against unauthorized use, but
not by comparing gestures,” as “Jobs nowhere suggests an ‘applied security
gesture’” to be compared with a user-defined security gesture, as required by
claim 14. Reply Br. 7, 9. Appellant asserts that Jobs’ passcode is “nowhere
compared with an ‘applied security gesture’”; rather, “in Jobs [0177],
alphanumeric passcode strings are being compared, not gestures (e.g.
touchscreen coordinates).” App. Br. 6 (citing Jobs ^fl[ 176—178, 1103—1106;
Figs. 3C, 56A-560).
We do not agree. As discussed supra, we agree with the Examiner
that Jobs’ passcode teaches a “gesture,” as claimed. As the Examiner further
finds, Jobs’ passcode is entered on the touchscreen by a user to complete the
unlock process, thereby teaching “accepting an applied security gesture on
the touchscreen,” as claimed. Ans. 9 (citing Jobs 1177, Fig. 3C).
Regarding the “comparing” step in claim 14, Appellant’s argument
that in Jobs “alphanumeric passcode strings are being compared, not
gestures (e.g. touchscreen coordinates)” is not commensurate with the scope
of claim 14, which does not specify the form of the gestures being
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compared. Thus, claim 14 does not preclude comparing alphanumeric
passcode strings defined by user’s passcode gestures, as taught by Jobs.6
Appellant also argues Jobs’ “two-step screen-unlock plus passcode-
authentication method” does not teach Appellant’s “one-step gesture-
authentication method” because “it is evident that a two-step method can not
read on a one-step method.” Reply Br. 9 (citing Jobs 176—177).
Appellant’s argument is again not commensurate with the scope of claim 14,
which does not require only one-step authentication. Claim 14 recites
“permitting an access of data through the mobile device when the applied
security gesture matches the user-defined security gesture,” however, claim
14 does not preclude additional unlocking/authentication steps before the
“permitting” step.
In light of the broad terms recited in claim 14, Appellant has failed to
clearly distinguish the claimed invention over Jobs. Accordingly, we sustain
the rejection of representative claim 14 under 35 U.S.C. § 102(e) as
anticipated by Jobs. For the same reasons, we also sustain the anticipation
rejection of independent claim 1.
6 We additionally note, even under a narrower interpretation of the claimed
term “gesture” that would exclude numeric passcode gestures, authentication
via gestures that are not numeric passcodes was known at the time of
Appellant’s invention. See, e.g., US 8,024,775 B2 to Xu et al., issued Sept.
20, 2011 from Appl. No. 12/034,254 filed Feb. 20, 2008 (describing “[a]
graphical password authentication method is based on sketches drawn by
user” on “an interactive screen such as a touch sensitive screen,” where the
authentication method “extracts a template edge orientation pattern from an
initial sketch of the user and an input edge orientation pattern from an input
sketch of the user, compares the similarity between the two edge orientation
patterns, and makes an authentication decision based on the similarity”
(Abstract, 13:11—13)).
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Obviousness rejections of claims 2—10, 12, 13, 15, 16, 21—23, and 25—30
For the same reasons as claims 1 and 14, Appellant argues the
Examiner errs in rejecting dependent claims 2-4, 6, 8, 9, 12, 15, 16, 21, 22,
and 25—30 as obvious over Jobs and Chaudhri; claims 5, 10, and 23 as
obvious over Jobs, Chaudhri, and Marvit; claim 7 as obvious over Jobs,
Chaudhri, and Singfield; and claim 13 as obvious over Jobs, Chaudhri, and
Labrador. App. Br. 8—11. Appellant additionally argues that Chaudhri,
Marvit, Singfield, and Labrador do not cure the alleged deficiencies of Jobs.
Id. As discussed above, we sustain the rejection of independent claims 1 and
14 as anticipated by Jobs. Thus, for the same reasons, we sustain the
rejections under 35 U.S.C. § 103(a) of: (1) dependent claims 2—4, 6, 8, 9,
12, 15, 16, 21, 22, and 25—30 as obvious over Jobs and Chaudhri; (2)
dependent claims 5, 10, and 23 as obvious over Jobs, Chaudhri, and Marvit;
(3) dependent claim 7 as obvious over Jobs, Chaudhri, and Singfield; and (4)
dependent claim 13 as obvious over Jobs, Chaudhri, and Labrador.
Obviousness rejection of claims 11 and 24
Claim 24 depends from claim 14 and recites “the applied security
gesture and the user-defined security gesture are independent of a scale
value and a position value on the touchscreen of the mobile device.”
The Examiner finds Jobs’ Figure 3C discloses applied and user-
defined security gestures that are independent of a scale and a position value
within the input keys’ touch receptive area. Ans. 26 (citing Jobs Fig. 3C).
The Examiner also finds Rytivaara discloses a user’s security gesture
unlocks a screen by touching any locations within three consecutive screen
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contact areas, thereby teaching user gestures that are independent of a scale
value and a position value on the touchscreen of the mobile device, as
claimed. Final Act. 20—21 (citing Rytivaara ]fl[ 19-20, 46-49, Figs. 5A—5C);
Ans. 27—28.
Appellant contends Jobs and Rytivaara do not teach or suggest
matching scale- and position-independent gestures. Reply Br. 11; App. Br.
11. Appellant argues Rytivaara “does not scale or reposition the acceptable
pattern of touches,” and therefore “the touch patterns of Rytivaara are not
‘independent of a scale value [or] position value.’” Reply Br. 12 (citing
Rytivaara ^fl[ 22, 42; Figs 2—3B, 5A—5B); see also App. Br. 11.
We agree with the Examiner that Rytivaara teaches user security
gestures that are independent of a position value on the touchscreen of a
mobile device, as recited in claim 24. Final Act. 20. Appellant’s
Specification describes gestures independent of a position value on the
device touchscreen may be gestures independent of a position value within
designated input regions of the touchscreen. See Spec. ^fl[ 76, 78, 80.7 Thus,
under the broadest reasonable interpretation, a gesture that is “independent
7 Appellant’s Specification describes “[a] designated input region may
represent a fixed or variable subset of the touch screen 106 or may coincide
with the entire touch screen 106,” and an applied gesture that is “position
independent with respect to the designated input region or the touch screen
106. . . . The applied gesture 108 may be applied anywhere (for example, in
the top left quadrant or anywhere on the right side) on the mobile device
102”; in a further example, “an online account gesture may be applied at any
location within a designated touch-sensitive input region of a mobile device
102” where “[t]he designated input region may be a touch screen 106 or
some other touch-sensitive non-display input region 120 of the mobile
device 102, such as its back, an edge, or a touch pad.” See Spec. ^fl[ 76, 78,
80 (emphasis added).
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of... a position value” is one that is determined to match another gesture
even if in a different position within designated input regions. Rytivaara
teaches a user can deactivate a touch screen lock by touching predetermined
contact areas 500, 502, and 504 in this order, where “[a] touch on a
predetermined contact area is correct when the touch hits any area of the
predetermined contact area.” See Rytivaara 146 (emphasis added), Fig.
5A. Thus, Rytivaara teaches a user’s unlocking security gesture includes
touches at arbitrary positions within designated screen areas—i.e., touches
hitting “any area of the predetermined contact area.” See Rytivaara 146.
Rytivaara’s security gesture is commensurate with the broad description of a
gesture independent of a position value on a touchscreen in Appellant’s
Specification.
We concur with Appellant’s contention (Appeal Br. 11, Reply Br. 11—
12), however, that the cited portions of Jobs and Rytivaara do not support
the Examiner’s finding that the references teach or suggest “the applied
security gesture and the user-defined security gesture are independent of a
scale value ... on the touchscreen of the mobile device,” as recited in claim
24. The cited portions of Jobs disclose security gestures accepted on a
touchscreen of the mobile device, but are silent regarding gestures being
independent of scale. The cited portions of Rytivaara disclose position-
independent security gestures on a touchscreen, as discussed supra, but are
silent regarding a gesture’s scale and do not teach scale-independent unlock
gestures. The Examiner also has not shown that the additional teachings of
Chaudhri, Marvit, Singfield, and Labrador make up for the above-noted
deficiencies of Jobs and Rytivaara.
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Accordingly, we do not sustain the rejection of claim 24 under
35 U.S.C. § 103(a) as unpatentable over Jobs, Chaudhri, and Rytivaara. For
the same reasons, we do not sustain the rejection of claim 11 (reciting
“wherein the applied security gesture and the user-defined security gesture
are independent of a scale value and a position value within the touch
receptive area of the mobile device”) under 35 U.S.C. § 103(a) as
unpatentable over Jobs, Chaudhri, and Rytivaara.
NEW GROUND OF REJECTION OF CLAIMS 11 AND 24
UNDER 35 U.S.C. § 103(a)
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection and separately reject dependent claims 11 and 24 under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Jobs, Chaudhri, Rytivaara,
and Omura et al. (US 6,429,856 Bl; issued Aug. 6, 2002) (“Omura”)8 for the
following reasons.
First, we incorporate the Examiner’s findings and reasoning with
respect to the rejection of base independent claims 1 and 14 (from which
claims 11 and 24 depend) as anticipated by Jobs (Ans. 7—13), and the
rejection of claims 11 and 24 (Ans. 26—28) as unpatentable over Jobs,
Chaudhri, and Rytivaara. As discussed above, the combination of Jobs,
Chaudhri, and Rytivaara teaches and suggests “the applied security gesture
and the user-defined security gesture are independent of... a position value
on the touchscreen of the mobile device,” as recited in claim 24, and
similarly recited in claim 11.
8 The Omura reference was used to reject claims in related Application No.
13/212,211, the application at issue in Appeal No. 2016-003488.
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As discussed above, however, the cited portions of Jobs, Chaudhri,
and Rytivaara do not explicitly teach that “the applied security gesture and
the user-defined security gesture are independent of a scale value ... on the
touchscreen of the mobile device,” as recited in claim 24 (and similarly
recited in claim 11). Omura, however, teaches security gestures that are
independent of a scale value on a touchscreen. In particular, Omura
describes “authentication processing as to whether permission to access the
system is given or not may be performed according to handwriting of user’s
signature” provided “on [a] touch surface touched with the fingertip or the
like.” See Omura col. 57,11. 3—5,11. 33—35; see also Omura col. 57,11. 21—
24, col. 59,1. 66-col. 60,1. 4 (describing authentication upon signature
comparison). Thus, Omura describes a security gesture is a user’s
handwritten signature.
Omura further describes “normalizing a coordinate signal of a
handwriting of a user’s signature detected in the touched position detecting
section 7505, [so] the user can make a signature of an arbitrary size, which
allows convenience to be enhanced.” See Omura col. 58,11. 46-49
(emphasis added). Omura explains that both a reference signature and an
applied signature are normalized, for subsequent comparison:
a coordinate signal series for handwriting of user’s signature
detected in the touched position detecting section 7505 may be
normalized in the normalizing section 8216 and stored in the
normalized signal storing section 8217.
In this case, the input signal consisting of the normalized signal
series of the coordinate signal stored in the normalized signal
storing section 8217 and the touched area signal series stored in
the touched area signal storing section 7812 is compared with the
reference signal consisting of a normalized series of coordinate
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signals showing handwritings of signatures of the users
authorized to access the computer system. . . .
[B]y normalizing a coordinate signal series when a user touches
a touch surface with a fingertip or the like, an arbitrary-sized
signature can be used, which allows convenience to be
enhanced.
Omura col. 58,11. 32-45, col. 60,11. 5—8 (emphasis added). Omura’s
handwritten signatures of arbitrary size are commensurate with the broad
description of “independent of a scale value” in Appellant’s Specification.9
Thus, Omura’s reference and applied normalized signatures teach user-
defined and applied security gestures independent of a scale value on a
touchscreen, as recited in claim 24. Omura, therefore, also teaches the
similar limitations of claim 11, which recites “wherein the applied security
gesture and the user-defined security gesture are independent of a scale
value and a position value within the touch receptive area.”
We find one of ordinary skill in the art would have recognized the
benefit of allowing authentication of Jobs’ mobile device via gestures that
are both position-independent (as taught by Rytivaara) and scale-
independent (as taught by Omura), to enhance user convenience by allowing
the user to unlock the mobile device without requiring the user to exactly
9 Appellant’s Specification provides “[t]he applied gesture 108 may ... be
scale and position independent with respect to the designated input region or
the touch screen 106. The size of the applied gesture 108 may be small,
medium, or large relative to the size of the designated input region.'1'’ Spec.
178 (emphasis added).
17
Appeal 2016-007409
Application 13/166,829
reproduce the size of the reference signature. See Omura col. 58,11. 46-49,
col. 59,11. 25-29, col. 60,11. 5-8.
As our rationale relies upon additional evidence (Omura) not asserted
by the Examiner, we designate this rejection as a new ground of rejection of
claims 11 and 24 under 37 C.F.R. § 41.50(b).
DECISION
We reverse the Examiner’s decision rejecting claims 1, 3—14, 16, and
23—30 under 35 U.S.C. § 112, first paragraph.
We affirm the Examiner’s rejection under 35 U.S.C. § 102(e) of
claims 1 and 14, and the Examiner’s rejections under 35 U.S.C. § 103(a) of
claims 2—10, 12, 13, 15, 16, 21—23, and 25—30.
We reverse the Examiner’s rejection under 35 U.S.C. § 103(a) of
claims 11 and 24.
We also enter a new ground of rejection of claims 11 and 24 under
35 U.S.C. § 103(a) pursuant to our authority under 37 C.F.R. § 41.50(b). “A
new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review.” 37 C.F.R. § 41.50(b). Section 41.50(b) also
provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground 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. The new ground of rejection is binding upon the
18
Appeal 2016-007409
Application 13/166,829
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-fN-P ART;
37 C.F.R, $ 41.50(b)
19