Ex Parte Garnier et alDownload PDFPatent Trial and Appeal BoardMay 23, 201613424861 (P.T.A.B. May. 23, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation