Ex Parte Marshall et al

Patent Trial and Appeal BoardMay 9, 2014

11616619 (P.T.A.B. May. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ANDREW MARSHALL, TITO GELSOMINI, and HARVEY DAVIS ____________________ Appeal 2011-009940 Application 11/616,619 Technology Center 2400 ____________________ Before KALYAN K. DESHPANDE, GLENN J. PERRY, and TRENTON A. WARD, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009940 Application 11/616,619 2 STATEMENT OF CASE1 Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 1, 2, and 4-22, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants invented a system and method for securing a mobile device and data thereon, utilizing an active transponder coupled to the mobile device to be protected and a passive wireless key in the possession of an authorized user. Specification ¶¶ 0004-0005. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below: 1. A system for controlling operation of a mobile device and/or access to data on the mobile device, comprising: an authorization transponder coupled to said mobile device, having a unique identification (UID), a transmitter for wirelessly transmitting said UID to a nearby device, a receiver able to receive a UID wirelessly from said nearby device, and a controller able to compare the authorization transponder UID with the UID transmitted by the nearby device, such that if a match is determined, operation of all or a subset of functions of said mobile device is enabled; and said nearby device, having a unique identification (UID), a receiver able to receive said UID from said authorization transponder, a controller able to compare the UID of said nearby device with the UID received from the authorization transponder, and a transmitter which transmits the UID of said nearby device to said authorization transponder if the UIDs match, said nearby device being a passive transponder, 1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,” filed Jan. 5, 2011), Reply Brief (“Reply Br.,” filed May 17, 2011), and the Examiner’s Answer (“Ans.,” mailed Apr. 4, 2011). Appeal 2011-009940 Application 11/616,619 3 generating power for its operation from the received radio frequency energy transmitted by said authorization transponder coupled to the mobile device. REFERENCES The Examiner relies on the following prior art: Forrest Carley et al. US 2004/0124966 A1 US 2007/0232241 A1 Ju1. 1, 2004 Oct. 4, 2007 REJECTION Claims 1, 2, and 4-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Forrest and Carley. Ans. 3-7. ISSUE The issue of whether the Examiner erred turns on (1) whether Forrest describes a “nearby device” that “transmits the [unique identifier] of said nearby device to said authorization transponder,” as recited in independent claim 1, and similarly recited in independent claims 2 and 7, and (2) whether the Examiner established a prima facie case of obviousness with respect to claim 6. ANALYSIS Independent claims 1, 2, and 7, and dependent claims 4, 5, 8- 11, 14-18, and 21-22 The Examiner found that Forrest describes the “authorization transponder coupled to said mobile device” and the claimed “nearby device,” as recited in claim 1. Ans. 4. Forrest describes an authentication system that allows an automated teller machine (ATM) to interact with a Appeal 2011-009940 Application 11/616,619 4 mobile telephone. Forrest ¶ 0026. The authentication system is set forth in Figure 2 as follows: Figure 2 shows system 18 for allowing secure communication between mobile telephone 16 and a designated ATM 12. Id. ¶ 0033. Wireless security module 20 is paired with one or more authorized mobile devices 16. Id. ¶ 0037. Control center 14 stores a detailed registry of authorized users that can be used to identify whether secure module 20 is on record as being paired with mobile device 16. Id. ¶ 0055. When mobile device 16 and wireless security module 20 are both proximate to ATM 12, ATM 12 communicates with control center 14 to authenticate that wireless security module 20 is an authorized module that is on record as being paired with mobile device 16. Id. ¶¶ 0053-0055. Once security module 20 and mobile device 16 have been authenticated with the by control center 14, the user of mobile device 16 is provided access to communicate directly with ATM 12 to perform a transaction. Id. ¶ 0055. The Examiner found that wireless security module 20 of Forrest corresponds to the claimed “authorization transponder,” mobile device 16 of Forrest corresponds to the claimed “mobile device,” and ATM 12 of Forrest Appeal 2011-009940 Application 11/616,619 5 corresponds to the claimed “nearby device.” Ans. 3-4, 7-8. Appellants contend that Forrest fails to describe a “nearby device” that includes “a transmitter which transmits the UID of said nearby device to said authorization transponder if the UIDs match,” as recited in claim 1. App. Br. 11-12; Reply Br. 7-8. Specifically, Appellants argue that “there is no teaching or suggestion in Forrest that ATM 12 ever sends its UID to security module 20.” App. Br. 11. We agree with Appellants. Claim 1 requires that the “nearby device” have a UID and transmits this UID to the authorization transponder. The UID of the “nearby device” is not the same as the UID of the authorization transponder. The Examiner has found that ATM 12 is the claimed “nearby device,” however, we find nothing in Forrest to describe the UID of ATM 12 or that ATM 12 transmits a UID to security module 12. The Examiner responds that Forrest’s security module 20 includes a communication module operable to transmit signals to and receive signals from the mobile device 16 and the ATM 12. Ans. 8 (citing Forrest ¶ 0039). The cited portion of Forrest, however, only describes that ATM 12 may transmit information to security module 20, and fails to disclose that ATM 12 transmits a unique identifier to security module 20. As such, we do not sustain the Examiner’s rejection of independent claim 1. Independent claim 2 recites “a transmitter which transmits the UID of said apparatus to said authorization transponder if the UIDs match,” and claim 7 recites “receiving in said authorization transponder a UID transmitted by a nearby wireless transponder.” Both of these limitations similarly require a nearby device to transmit a unique identifier to the authorization transponder. Consequently, we also are persuaded that the Appeal 2011-009940 Application 11/616,619 6 Examiner erred in rejecting claims 2 and 7 for the same reasons. Dependent claims 4, 5, 8-11, 14-18, 21, and 22 incorporate these features and we do not sustain the rejection of those claims for the same reason discussed above. As this issue is dispositive with respect to the rejections against these claims, we need not reach the remaining arguments presented by Appellants. Independent claim 6 and dependent claims 12, 13, 19, and 20 The Examiner found that claim 6 recites the same limitations as claim 1 and accordingly rejected claim 6 for the same reasons set forth in the rejection of claim 1. Ans. 5. Although claim 6 does not recite the limitation “a transmitter which transmits the UID of said nearby device to said authorization transponder if the UIDs match,” claim 6 recites at least one limitation that is not recited in claim 1. For example, claim 6 recites “transmitting an authorizing command from the nearby wireless transponder to the mobile device if the UIDs match.” The Examiner has not addressed this limitation. Consequently, the Examiner has not established a prima facie case of obviousness for claim 6. Therefore, we do not sustain the rejection. Dependent claims 12, 13, 19, and 20 depend on claim 6 and we do not sustain the rejection of these claims for the same reason. As this issue is dispositive with respect to the rejections against these claims, we need not reach the remaining arguments presented by Appellants. CONCLUSION The Examiner erred in rejecting claims 1, 2, and 4-22 under 35 U.S.C. § 103(a) as unpatentable over Forrest and Carley. Appeal 2011-009940 Application 11/616,619 7 DECISION The rejection of claims 1, 2, and 4-22 under 35 U.S.C. § 103(a) as unpatentable over Forrest and Carley is reversed. REVERSED msc