Ex Parte Determan

Patent Trial and Appeal BoardMar 27, 2017

12643514 (P.T.A.B. Mar. 27, 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. 12/643,514 12/21/2009 Gary Edward Determan H0025242-0788 4623 92236 7590 03/29/2017 HONEYWELL/ORTIZ & LOPEZ PATENT SERVICES 115 Tabor Road P.O. Box 377 MORRIS PLAINS, NJ 07950 EXAMINER HAMILTON, SARA CHANDLER ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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): patentservices-us @ honey well, com docketing @ olpatentlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARY EDWARD DETERMAN Appeal 2015-003142 Application 12/643,514 Technology Center 3600 Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and JAMES A. WORTH, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1—7, 9, and 10, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. Appeal 2015-003142 Application 12/643,514 THE INVENTION The Appellant’s claimed invention is directed to a system based on biometric identification (Spec., para. 9). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A secure transaction system, comprising: a data processing system comprising a processor, a data bus coupled to said processor; an input device configured to communicate with said data processing system, said input device comprising at least one operable key; at least one biometric sensor hidden within said at least one operable key, said at 1 east one biometric sensor being configured to capture and measure a biometric feature of a user each time said operable key is pressed; and a biometric identification module comprising a non-transitory computer-usable medium embodying computer code, said non- transitory computer-usable medium being coupled to said data bus, said computer code comprising instructions that Vllhen executed by said processor causes the processor to: receive a biometric signal, indicative of said biometric feature, from said at least one biometric sensor, compare said biometric signal with stored biometric data, and when said biometric signal matches said stored biometric data, provide an authentication signal to said data processing system when said biometric signal matches said stored biometric data to allow access to at least one secure application communicatively coupled to said data processing system. THE REJECTIONS The following rejections are before us for review: 1. Claims 1—5, 7, 9, and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Griffin (US 2011/0078771 Al, published Mar. 31, 2011) and Fadell (US 2009/0083847 Al, published Mar. 26, 2009). 2 Appeal 2015-003142 Application 12/643,514 2. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Griffin, Fadell, Tsikos (US 4,353,056, issued Oct. 5, 1982), and Setlak (US 7,616,786 B2, issued Nov. 10, 2009). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence1. ANALYSIS The Appellant argues that the rejection of claim 1 is improper because the references of Faddell and Griffin have been improperly combined (Appeal Br. 5—12, Reply Br. 2—6). The arguments presented in the Appeal Brief at pages 5—7 do not assert that the prior art fails to disclose any claimed elements, but rather that the cited combination of references has been improperly made and would not have been obvious. In contrast, the Examiner has determined that the rejection is proper (Final Rej. 2—5, Ans. 2—15). The Examiner has determined that Fadell’s hidden sensor may provide a quicker and more seamless process for the user (Ans. 8). We agree with the Examiner. The Appellant has argued that the “combination of Fadell’s hidden sensor with . . . Griffin would result in an undesirable situation where a plurality of weblinks would be displayed, or web feeds accessed, every time a user touched the hidden key” (App. Br. 5, 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal 2015-003142 Application 12/643,514 see also Reply Br. 3). The Appellant also argued that Griffin lacks any intervening step between the authentication of the user’s fingerprint and displaying of the web links, and that incorporating that with a hidden sensor (as taught by Fadell) would remove the user’s control to display content (App. Br. 6). Appellant also argued that such a combination could result in unwanted payment authorizations being made (App. Br. 6). We have considered these arguments put forth by the Appellant, but do not deem them persuasive. While the Appellant has argued that the cited combination would result in an undesirable situation where the web links would be displayed every time the user touched the hidden key, claim 1 does not exclude such a feature. That is, despite the arguments by the Appellant, claim 1 does not require that the web links cannot be displayed automatically after biometric authentication. Regardless, here, there are a number of finite solutions to the system, the web links would be automatically displayed, or would not be automatically displayed each with readily apparent benefits. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Court stated that when considering obviousness that “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 418. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. See KSR at 421. Here such a feature of 4 Appeal 2015-003142 Application 12/643,514 automatically displaying the web links could in fact be desirable in some situations if quick access to frequently used web links was desired. Similarly, the Appellant has argued that the cited combination could result in unwanted payment authorizations, but the claim makes no reference to payment authorizations either and requiring automatic payments could have advantages in speed as well. Appellant’s arguments attack references individually, when the rejections are over a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non obviousness by attacking references individually where, as here, the rejections are based on combinations of references”). Here the cited rejection’s modification of Griffin’s device for displaying web links based on a biometric sensor to include a hidden sensor as disclosed by Fadell for the benefit of a quicker and seamless process would have been an obvious, predictable combination of familiar elements for their known functions despite the Appellant’s arguments. For these reasons, the rejection of claim 1, and its dependent claims which have not been specifically argued, is sustained. CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting the claims as listed in the Rejections section above. DECISION The Examiner’s rejection of claims 1—7, 9, and 10 is sustained. 5 Appeal 2015-003142 Application 12/643,514 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 6