Ex Parte Nobakht et al

Patent Trial and Appeal Board

Nov 30, 2016

12257154 (P.T.A.B. Nov. 30, 2016)

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.
12/257,154 10/23/2008 Lida NOBAKHT 048285-0375424 6515
(VCX-001)
27498 7590 12/02/2016
PILLSBURY WINTHROP SHAW PITTMAN LLP (SV)
P.O. BOX 10500
MCLEAN, VA 22102
EXAMINER
MACILWINEN, JOHN MOORE JAIN
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIDA NOBAKHT and JAMES R.W. CLYMER
Appeal 2016-000939
Application 12/257,154
Technology Center 2400
Before ELENI MANTIS MERCADER, CATHERINE SHIANG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—5, 7—13, 15, 16, 18, 25, and 28—32, which are all the
claims pending and rejected in the application. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Introduction
The present invention relates to multimedia associated with a smart
card. See generally Spec. 1. Claim 1 is exemplary:
1. A method of accessing data on a server by a user at a client system,
access being controlled by a user specific smart card issued to said user, said
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Application 12/257,154
client system providing an interface for said user to access said server,
comprising:
reading user specific information from said smart card by said client
system, said information including a user specific electronic serial number;
transmitting said user specific information to said server;
processing said user specific information by said server to determine
user authorization to access data; and
providing said user is authorized, receiving data from said server by
said user at said client system;
wherein said smart card includes a read-only memory for storing
personal identification data, wherein said user specific information includes
said personal identification data,
the method further comprising blowing a fuse on said smart card after
said personal identification data is stored thereon, thereby forming said read­
only memory, wherein said smart card includes an encryption program for
encrypting said personal identification data, and wherein said data received
from said server permits said client system to access user specific
information from said smart card,
the method further comprising:
each time said user changes a URL, sending an additional packet of
user specific information to said server identifying said URL;
storing said URLs on said server; and
processing the history of URLs visited to determine said user’s
consumer interests,
wherein said data includes an advertisement matching said user’s
consumer interests.
References and Rejections
Basso Jr. US 6,131,090 Oct. 10, 2000
Strubbe US 7,178,720 B1 Feb. 20, 2007
Boyles US 2004/017252 A1 Sept. 2, 2004
Stetson US 2002/0169669 A1 Nov. 14, 2002
Makofka US 2003/0037330 A1 Feb. 20, 2003
Hoyle US 6,628,314 B1 Sept. 30, 2003
Sahota US 2014/0130085 A1 May 8, 2014
Du US 2001/0042212 A1 Nov. 15,2001
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Kikuchi US 4,908,692 Mar. 13, 1990
Chan, Mobile Cookies Management on a Smart Card.
Communications of the ACM. Vol. 48, No. 11. November 2005. pp. 3 8—43.
Claims 1, 5, 10-13, 15, and 16 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Basso, Strubbe, and Boyles.
Claims 2-A and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Basso, Strubbe, Boyles, and Dal Canto.
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Basso, Boyles, and Chan.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Basso, Strubbe, Boyles, Chan, and Stetson.
Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Basso, Strubbe, Boyles, Makofka, and Hoyle.
Claims 28—31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Basso, Strubbe, Boyles, and Sahota.
Claim 32 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Basso, Strubbe, Boyles, and Du.
ANALYSIS
On this record, the Examiner did not err in rejecting claim 1.
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
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appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.1
I
Appellants contend Basso does not teach “reading user specific
information from said smart card by said client system,” as recited in claim
1 (emphasis added). See App. Br. 6; Reply Br. 6—8. In particular,
Appellants assert:
[NJowhere does Basso teach or suggest that this
certificate is stored on a smart card, as would be required to
meet the limitations of the claims. Rather, col. 7, lines 41— 45
state that information is uploaded from the smart card. Then
after that information is uploaded, the “individual P returns a
certificate” (col. 8, lines 15—24). It therefore appears that this
certificate is provided in a separate process than the process of
uploading data from the smart card.
App. Br. 6; see also Reply Br. 6—8.
Appellants have not persuaded us of error.
In response to Appellants’ arguments, the Examiner provides further
findings showing Basso teaches “reading user specific information from said
smart card by said client system,” as required by the claim (emphasis
added). See Ans. 2—6. In particular, the Examiner cites Basso’s column 5,
lines 26-43 (Ans. 2), which states:
The smartcard of individual P includes medical
information or other information such as insurance information
together with encryption keys, certificates and other data
needed to control access to the medical information, while the
smartcard of provider H includes encryption keys, certificates
1 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. §41.41 (b)(2).
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and other information 30 needed to obtain access to the
medical information, as will be described further below . . .
it is preferred that at least part of the information needed
by provider H to access information on the smartcard of
individual P be stored on one or more smartcards to increase
security and to allow individual users of terminal 12 to be
identified.).
Basso 5:26-43 (emphases added). Further, the Examiner cites Basso’s
teaching of “individual P returns a certificate” and subsequently, “[tjerminal
12 receives the certificate of individual P,” and determines that “reading user
specific information from said smart card” (emphasis added) is taught by or
obvious in light of Basso’s teachings. See Ans. 3^4 (citing Basso 8:15,
8:24). Appellants fail to persuasively respond to such findings, and,
therefore, fail to show error in the Examiner’s findings. In particular,
Appellants simply ignore the cited teachings from Basso’s column 5, lines
26-43 and the associated findings by the Examiner. See In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court [or this Board] to examine the claims in greater detail than argued
by an appellant, looking for [patentable] distinctions over the prior art.”).
Further, Appellants’ argument that the Examiner misleads the reader
about Basso’s column 7, lines 35—40 (Reply Br. 6—7) contradicts the record.
Basso states:
Table 1 shows data which is initially provided to the Trusted
Authority, provider H and individual P; more particularly the
data which is stored in Data processing center 30, terminal 12
(or which is uploaded from the smartcard of provider H to
terminal 12), and the smartcard of individual P.
Basso’s 7:35^40 (emphases added).
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Contrary to Appellants’ argument (Reply Br. 6—7), the
Examiner correctly finds the above Basso excerpt describes storing
data at multiple locations, including the smartcard. See Ans. 2—3.
Therefore, that excerpt supports the Examiner’s determination that
“reading user specific information from said smart card” (emphasis
added) is taught by or obvious in light of Basso’s teachings.
In addition, Appellants have not persuasively shown Basso’s
column 7, lines 30—34 render the Examiner’s findings—especially the
findings based on Basso’s column 5 and ignored by Appellants—
incorrect. Further, immediately following that excerpt, Basso
describes storing data at multiple locations, including the smartcard
(Basso 7:35—40), which supports the Examiner’s finding (discussed
above). See Ans. 2—3 (citing Basso 7:35—40).
II
Appellants contend Basso does not teach “reading user specific
information from said smart card by said client system, said information
including a user specific electronic serial number,” as recited in claim 1
(emphasis added). See App. Br. 6; Reply Br. 8. In particular, Appellants
assert:
[TJhose skilled in the art would not consider such a
certificate to be a user specific electronic serial number as set
forth in the claims .... Those skilled in the art, after reading
the specification, would thus clearly appreciate that a trust
authority certificate is not a user specific electronic serial
number as set forth in the claims.
App. Br. 6 (emphasis omitted); see also Reply Br. 8.
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In response to Appellants’ arguments, the Examiner provides further
findings showing Basso teaches the disputed claim limitation. See Ans. 5—6.
In particular, the Examiner explains why the claimed “a user specific
electronic serial number” is taught by or obvious in light of Basso’s
teachings. See Ans. 5—6. Appellants fail to persuasively respond to such
findings and therefore, fail to show error in the Examiner’s findings. In
particular, as discussed above, Appellants’ argument that the certificate is
not stored on the smart card (Reply Br. 8) is unpersuasive. See Baxter
Travenol Labs., 952 F.2d at 391.
Ill
Appellants contend:
[N]owhere would the alleged combination teach or
suggest blowing a fuse on said smart card after said personal
identification data is stored thereon, thereby forming said read­
only memory in the smart card. Kikuchi merely teaches a
semiconductor fuse. Nowhere does Kikuchi teach or suggest
including such a fuse in a smart card, much less blowing such a
fuse to create a read-only memory in a smart card, as even
further clearly required by the claims.
App. Br. 7 (emphasis omitted); see also App. Br. 7—8; Reply Br. 8—10.
Appellants’ argument is unpersuasive because the Examiner relies on
the combination of Basso, Strubbe, Boyles, and Kikuchi to teach the
disputed claim limitation, Appellants cannot establish nonobviousness by
attacking Kikuchi individually. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Further, in response to Appellants’ argument, the
Examiner provides detailed findings as to why the combination teaches the
disputed claim limitation (Ans. 6—9), and Appellants fail to persuasively
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show error in the Examiner’s findings. See Baxter Travenol Labs., 952 F.2d
at 391. In particular, Appellants’ unsupported attorney arguments (Reply
Br. 8—10) are insufficient for showing Examiner error.
In the Reply Brief and for the first time, Appellants belatedly argue
about the Examiner’s findings in the June 26, 2014 communications. See
Reply Br. 9. Appellants have waived such arguments because they are
untimely, and Appellants have not demonstrated any “good cause” for the
belated presentation. See 37 C.F.R. § 41.41(b)(2) (2012).
IV
Appellants contend:
Applicants . . . dispute one skilled in the art would be motivated
to combine Kikuchi with Basso, Boyles and/or Strubbe as
alleged in the Office Action. Kikuchi is from the art of
semiconductor devices, while the other references are in the
media access and smart card storage arts. One skilled in the art
confronting problems in connection with media access and
smart card storage would not look to the non-analogous art of
semiconductor devices to solve them.
Kikuchi itself is not specifically directed to the art of read only
memories, and one skilled in the art would not consider Kikuchi as a
helpful source of information regarding read only memories. Rather,
it is directed to the art of semiconductor devices[.]
App. Br. 8.
The Examiner responds:
[L]ike Kikuchi, the other cited prior art (i.e., Basso in
view of Stubbe and Boyles) are directed to semiconductor
devices. A smartcard is itself a semiconductor device. As
noted above, Basso shows such a smartcard in Fig.3. In
Basso’s Fig. 3, item 52 is a microprocessor and item 54 is
described as “program and working memory”. A
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microprocessor and programmatically addressable memory are
both examples of items that utilize semiconductors . . .
A read-only memory is an example of a semiconductor-
based device.
Ans. 9.
We disagree with Appellants.
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citations omitted)
(emphasis added). “Whether a reference in the prior art is ‘analogous’ is a
fact question.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citations
omitted).
Appellants acknowledge “Kikuchi is from the art of semiconductor
devices,” and Basso, Strubbe, and Boyles “are in the media access and smart
card storage arts.” App. Br. 8.2 As shown above, the Examiner finds Basso,
Strubbe, and Boyles, and Kikuchi all belong to the field of semiconductor
devices because “[a] smartcard is itself a semiconductor device.” Ans. 9.
Appellants have not shown error in the Examiner’s findings because
Appellants do not persuasively respond to such findings. See Baxter
Travenol Labs., 952 F.2d at 391. In particular, Appellants’ conclusory
assertion that the Examiner’s finding “is simply not well based” (Reply Br.
11) lacks adequate analysis and is unpersuasive of error.
2 Appellants do not contend this invention is not in the field of
semiconductor devices.
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Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claim 1.
We also sustain the Examiner’s rejection of corresponding dependent
claims 2—5, 7—13, 15, 16, 18, 25, and 28—32, which Appellants do not
separately argue with substantive contentions.
DECISION
We affirm the Examiner’s decision rejecting claims 1—5, 7—13, 15, 16,
18, 25, and 28-32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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