Ex Parte Garnier et al

Patent Trial and Appeal Board

May 23, 2016

13424861 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/424,861 03/20/2012
65913 7590 05/25/2016
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
FIRST NAMED INVENTOR
Nicolas Garnier
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.
81416940US03 5922
EXAMINER
STOYNOV, STEFAN
ART UNIT PAPER NUMBER
2116
NOTIFICATION DATE DELIVERY MODE
05/25/2016 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):
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 NICOLAS GARNIER, XAVIER KERDREUX,
and FABIEN BO IT ARD
Appeal2015-000726
Application 13/424,861
Technology Center 2100
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
MATTHEW J. McNEILL, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1, 2, 4---6, 8-16, and 19. Claim 20 is allowed. (Final Act.
10). The Examiner indicates that claims 3, 7, 17, and 18 are objected to as
being dependent upon a rejected base claim, but would be allowable if
rewritten in independent form including all limitations of the base claims
and any intervening claims. (Id.). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appeal2015-000726
Application 13/424,861
Invention
The invention on appeal relates to power management of hardware
components (Spec. 1 ).
Representative Claim
1. A method comprising:
monitoring, by a monitoring circuit in a contactless front-
end (CLP), a power supply to a secure element (SE) connected
to the CLP when the SE is receiving a low power from the
CLP·
'
detecting, by the monitoring circuit, a potential under-
voltage condition for the SE, wherein the SE receives power
lower than required for operation; and
initiating, by a management module in the CLP
connected to the monitoring circuit and the SE, a SE
management technique, [L 1] wherein the CLF implements the
SE management technique through a communication inteiface
connected to the SE and the SE management technique
determines whether the potential under-voltage condition is a
true under-voltage condition.
(Emphasis added regarding the contested limitation, labeled as L 1.)
Rejections
A. Claims 1, 2, 4, 6, 9-12, 15, 16, and 19 are rejected under 35 U.S.C.
§ 103(a) over the combined teachings and suggestions of Miyamoto
(US 6,070,804; published June 6, 2000), and Goto (US 5,670, 772;
published Sept. 23, 1997).
B. Claim 5 is rejected under 35 U.S.C. § 103(a) over the combined
teachings and suggestions of Miyamoto, Goto, and Fujioka et al. (US
5,212,373; published May 18, 1993).
2
Appeal2015-000726
Application 13/424,861
C. Claim 8 is rejected under 35 U.S.C. § 103(a) over the combined
teachings and suggestions of Miyamoto, Goto, and Morrow et al. (US
2006/0214003 Al; published Sept. 28, 2006).
D. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) over the
combined teachings and suggestions of Miyamoto, Goto, and Rizzo et
al. (US 8,583,179 B2; published Nov. 12, 2013).
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of claims 1, 4,
9, 10, 12, 15, and 19, rejected under Rejection A, on the basis of
representative claim 1. We address separately argued claims 2, 6, 11, and
16, also rejected under Rejection A, infra. We address the remaining claims
rejected under Rejections B-D, infra. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We disagree with Appellants' contentions regarding the Examiner's
rejections of the claims. We adopt as our own: (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons set forth by the Examiner in the Answer in response to
arguments made in Appellants' Appeal Brief. (Ans. 10-14). We highlight
and address specific findings and arguments below.
3
Appeal2015-000726
Application 13/424,861
Rejection A of claims 1, 4, 9, 10, 12, 15, and 19
under 35 USC§ 103(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
combination of Miyamoto and Goto would have taught or suggested
contested limitation L 1: "wherein the CLP implements the SE management
technique through a communication interface connected to the SE and the
SE management technique determines whether the potential under-voltage
condition is a true under-voltage condition," within the meaning of claim 1?
The Examiner finds Miyamoto would have taught or suggested the
step of detecting a potential under-voltage condition. (Final Act. 3, pointing
to Miyamoto, at col. 1, 1. 63 - col. 2, 1. 11; col. 6, 11. 8-20).
The Examiner finds Goto, "teaches a reset circuit, triggering reset of
the IC card's CPU utilizing hysteresis when monitoring the supply voltage
VDD (FIG. 6, column 8, lines 66 - column 9, line 10)" and that "upon
determination that the under-voltage condition persists for [a] predetermined
duration (i.e. determining a true under-voltage condition), does the reset
circuit reset the CPU within the IC card (column 2, lines 1-12, column 4,
lines 15-39, FIG. 1)." (See Final Act. 4--5).
Appellants contend Goto never "perform[ s] a determination of
whether a potential under-voltage condition is a true under-voltage
condition" and the "specification distinguishes between potential and true
under-voltage conditions" (App. Br. 6).
We do not find this argument persuasive because Appellants are
attacking the references in isolation. One cannot show nonobviousness by
attacking references individually where the rejections are based on
4
Appeal2015-000726
Application 13/424,861
combinations of references. See In re Ji;ferck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
This reasoning is applicable here. The Examiner found, and
Appellants do not contest, 1 that Miyamoto teaches the determination of the
claimed "potential under-voltage condition" (see Final. Act. 3). The
Examiner does not rely on Goto for teaching any determination regarding a
potential under-voltage condition. Instead, the Examiner concluded that it
would have been obvious to apply Goto's method of monitoring voltage
fluctuations to Miyamoto's potential under-voltage conditions. (Final Act.
4--5).
Appellants further contend that Goto does not perform any
determination because "Goto is silent regarding any sort of test for whether a
potential under-voltage condition is a true under-voltage condition" and
"[n]o testing occurs regarding an under-voltage condition." (App. Br. 6).
The Examiner responds: "there is no corresponding claim language in
claims 1 and 10 citing any testing functionality." (Ans. 11).
In the Reply Brief (3), Appellants urge that determining the claimed
under-voltage condition "necessarily tests" for that condition. However,
Appellants provide no evidence in support of this contention. 2
We find Appellants' contentions are not commensurate with the scope
of the claim. To "determine" is generally understood to mean: "to find out
1 Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)
(1 )(iv).
2 The arguments of counsel cannot take the place of evidence in the record.
In re Schulze, 346 F.2d 600, 602 (CCPA 1965); In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997)
5
Appeal2015-000726
Application 13/424,861
' ' 1 • • 1 ' 1 • ' • ' • • 1 1 ' • .,., 1. or to come to a aec1s10n aoom oy mvesugauon, reasomng, or ca1cmauon. · · J
Thus, something can be determined by testing (e.g., investigation or
calculation), but can also be determined, for example, by reasoning.
Therefore, we find the act of "determining" does not necessarily require
"testing," as urged by Appellants. (Reply Br. 3).
Because Appellants have not argued a definition recited in the claim,
or supported in the Specification, or provided rebuttal evidence in the record,
we are not persuaded the Examiner's reading of the claim term "determines"
is overly broad or unreasonable. 4 Therefore, we find the Examiner's
findings regarding limitation L 1 are supported by a preponderance of the
evidence. For at least these reasons, we are not persuaded the Examiner
erred in concluding the combination of Miyamoto and Goto would have
rendered contested limitation LI obvious. (Claim 1).
Accordingly, on this record and based on a preponderance of the
evidence, we sustain the Examiner's Rejection A of representative claim 1,
and grouped claims 4, 9, 10, 12, 15, and 19, also rejected under rejection A,
which fall therewith (see Grouping of Claims, supra).
3 See Determine, WEBSTER'S NINTH NEW COLLEGIATE DICTIONARY (19th
ed. 1991) (page 346).
4 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
6
Appeal2015-000726
Application 13/424,861
Rejection A of claims 2 and 11under35 US.C. § 103(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
combination of Miyamoto and Goto would have taught or suggested
"determining, by the management module, that the under-voltage flag is
valid," within the meaning of claim 2?
Claim 11 is commensurate is scope with claim 2.
Appellants contend, "[ w ]hile steps may either set flags or reset flags,
Miyamoto is silent regarding any testing of validity for flags." (App. Br. 8).
Appellants further contend "claims 2 and 11 are also allowable due to their
respective dependencies from allowable base claims" (Id.).
Regarding the latter contention, we find no deficiencies regarding
Rejection A of base claim 1, for the reasons discussed above. The former
contention is not commensurate with the scope of the claim. (Id.).
Claim 2 does not require testing the validity of the flags, but rather
determining whether "the under-voltage flag is valid." Because Appellants
have not argued a definition in the Specification, or provided rebuttal
evidence in the record, we are not persuaded the Examiner's reading of the
claim term "determining" is overly broad or unreasonable. Therefore, the
Examiner's findings regarding the contested limitation of claim 2 (and the
commensurate language of claim 11) are supported by a preponderance of
the evidence. On this record, we are not persuaded the Examiner erred in
concluding the combination of Miyamoto and Goto would have rendered
obvious the contested limitation of claims 2 and 11. Accordingly, we
sustain rejection A of dependent claims 2 and 11.
7
Appeal2015-000726
Application 13/424,861
Rejection A of claim 6 under 35 US.C. § 103(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
combination of Miyamoto and Goto would have taught or suggested
"resetting the SE after the true under-voltage condition occurs," within the
meaning of claim 6?
Appellants contend that because "Goto is silent regarding [any]
determination of whether a potential under-voltage condition is a true under-
voltage condition [as recited in parent claim 1] ... Goto cannot perform a
resetting operation based upon a determination that a true under-voltage
condition exists." (App. Br. 9). Appellants further contend that "claim 6 is
also allowable due to its dependency from an allowable base claim" (id.).
Appellants' contention is grounded on an erroneous premise - that
the combination of Miyamoto and Goto does not teach or suggest the
determining step with respect to limitation LI above. (Claim 1). We found
this argument unpersuasive for the reasons discussed above regarding
contested limitation L 1 of claim 1. Therefore, we sustain rejection A of
dependent claim 6.
Rejection A of claim 16 under 35 US.C. § 103(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
combination of Miyamoto and Goto would have taught or suggested
"comparing, by the monitoring circuit, a supply voltage to a threshold
voltage," within the meaning of claim 16? (Emphasis added).
Appellants contend Goto "fails to compare supply and threshold
voltages" (App. Br. 10). Appellants further urge that "claim 16 is also
allowable due to its dependency from an allowable base claim" (id.).
8
Appeal2015-000726
Application I3/424,86 I
r-T"i1 T"""1 • ,... 1 LL, 1 1 1, r ,.. r"'I , -i , • "1 i:;;
l ne bxammer nnas: -Tne supp1y vonage Lor uoto J musr necessarzty J
be compared with voltage threshold values VI and V2 in order for the
voltage adjusting circuit 8 [Fig. 5] to determine that the supply voltage has
fallen below V2 prior of generating [reset] signal timer I I (column 8, line 66
- column 9, line IO)." (Ans. I3, emphasis added).
After reviewing the cited portions of Goto, we find a preponderance
of the evidence supports the Examiner's findings. (Id.). Goto teaches: "[t]he
voltage-generating circuit rectifies carrier waves received from a card
reader/writer, thereby generating a power-supply voltage." (Goto, col. 2, 11.
4--6). Goto describes a system of hysteresis where fluctuations of the power-
supply voltage VDD (Figs. 5--6), affect the reset signal (RS), as follows:
"The power-supply voltage VDD remains at value V2 [Fig. 6] as long as the
output voltages of the rectifier circuits 6 and 7 are sufficiently high." (Col. 8,
11. 59--6 I). Goto, referring to Figures 5 and 6, further describes (Col. 8, 11.
62--67):
When the voltages output from the rectifier circuits 6 and
7 decrease, the voltage at the node 0 I I [having same voltage
potential as VDD, Fig. 5] can no longer remain at value V2. The
gate voltage of the PET 46 falls below its threshold value. The
PET 46 is turned on, whereby the reset signal RS decreases to
value VI as shown in FIG. 6. Namely, the reset signal RS is
output to the reset timer I I.
5 To the extent the Examiner is relying on a finding of inherency under
§ I03, we find the evidence cited by the Examiner (Ans. I3) sufficient to
show "the natural result flowing from the operation as taught would result in
the performance of the questioned function," PAR Pharm., Inc. v TWI
Pharms., Inc., 773 F.3d I I86, I I94-95 (Fed. Cir. 20I4) (internal citation
omitted), as required to show inherency under § I 03.
9
Appeal2015-000726
Application 13/424,861
Goto additionally describes: "when the voltages output from the
rectifier circuits 6 and 7 rise again above the value V2, the output voltage of
the error amplifier 41 [Fig. 5] rises to [a] high level. As a result of this, the
reset state is released." (Goto, col. 9, 11.1-5 (emphasis added)). The system
of hysteresis is summarized by Goto (Col. 9, 11. 6-10):
In this way, the reset operation of the present invention
has hysteresis. Thus, even if the magnetic fields applied to
the coupling coils 4 and 5 change, fluctuating the power supply
voltage VDD to some degree, the CPU 20 is not reset.
This ensures a stable operation of the IC card P.
The function of voltage-adjusting circuit 8 (as pointed to by the
Examiner, Ans. 13) is further described at Goto, column 4, lines 14--29:
The voltage-adjusting circuit 8 generates not only the power-
supply voltage V DD, but also a reset signal RS for resetting a
polarity-discriminating circuit 14 and a CPU 20. The reset
signal RS is an active-low signal. It is set at low level when the
power-supply voltage falls below the lowest operating voltage
of the internai circuits of the IC card P, and is set at high ievei
when the power-supply voltage rises above a predetermined
operating voltage of the internal circuits. Thus, the CPU 20 is
reset when the power-supply voltage falls below the lowest
operating voltage of the internal circuits of the IC card P and is
set when the power-supply voltage rises above the
predetermined operating voltage of the internal circuits. The
lowest operating voltage [e.g., "threshold voltage"] is lower
than the predetermined operating voltage, about 70% of the
predetermined operating voltage. Namely, the CPU 20 is reset
with hysteresis. (Emphasis added).
On this record, the Examiner's findings regarding the contested
limitation of claim 16 ("comparing, by the monitoring circuit, a supply
voltage to a threshold voltage") are supported by a preponderance of the
evidence. Accordingly, we are not persuaded the Examiner erred in
10
Appeal2015-000726
Application 13/424,861
concluding the combination of iviiyamoto and Goto would have rendered the
contested limitation of claim 16 obvious. Therefore, we sustain rejection A
of dependent claim 16.
Rejections B-D of claims 5, 8, 13, and 14 under §103(a)
Appellants advance no separate arguments for claims 5, 8, 13, and 14,
which are rejected under§ 103 rejections B-D. Arguments not made are
considered waived. See 37 C.F.R. § 41.37(c)(l)(iv). 6 Therefore, we sustain
rejections B-D of dependent claims 5, 8, 13, and 14.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusion
For at least these reasons, on this record, we are not persuaded the
Examiner erred. We find a preponderance of the evidence supports the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness for all claims on appeal.
6 See Hyatt v. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) ("When the
appellant fails to contest a ground of rejection to the Board, ... the Board
may treat any argument with respect to that ground of rejection as waived.")
11
Appeal2015-000726
Application 13/424,861
DECISION
We affirm the Examiner's rejections of claims 1, 2, 4---6, 8-16, and 19
under§ 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(f).
AFFIRMED
12