Ex Parte Noda et al

Patent Trial and Appeal BoardDec 17, 2012

10240274 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MASANORI NODA and RYOSUKE IWAI ____________ Appeal 2010-011006 Application 10/240,274 Technology Center 2400 ____________ Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and ANDREW CALDWELL, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-3, 5, 8, 9, 27, and 28. Claims 4, 6, 7, and 10-26 are cancelled. An oral hearing was conducted on this appeal on November 6, 2012. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-011006 Application 10/240,274 2 STATEMENT OF THE CASE Rather than reiterate the arguments of Appellants and the Examiner, reference is made to the Supplemental Appeal Brief (filed Mar. 1, 2010), the Answer (mailed May 13, 2010), and the Reply Brief (filed July 13, 2010).1 Only those arguments actually made by Appellants have been considered in this decision. Arguments which Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived (see 37 C.F.R. § 41.37(c)(1)(vii)). Appellants’ Invention Appellants’ invention relates to authentication of a user using bio- information. Spec. 1:7-10. Claim 1 is illustrative of the invention and is shown below with key disputed limitations italicized: 1. An authentication method for authenticating a user of a portable authentication module, comprising: storing a plurality of types of bio-information of a user on a portable authentication module; designating, for each of a plurality of bio-information designation units, at least one type of bio-information of the plurality of types of bio-information stored on the portable authentication module to be used for authenticating the user and associating the designated at least one type of bio-information with an ID of the user; receiving, via an input unit associated with one of the plurality of bio- information designation units, bio-information of said user corresponding to said at least one type or bio-information designated for the associated bio-information designation unit; 1 We have not considered the non-compliant Appeal Brief filed on December 07, 2009, since that brief was superseded by the Supplemental Appeal Brief filed on March 1, 2010. Appeal 2010-011006 Application 10/240,274 3 detecting with a detector said bio-information inputted via said input unit; comparing, with an authenticator, stored bio-information corresponding to the user ID stored in said portable authentication module or in a remote storage medium and the detected bio- information; and authenticating a legitimacy of said user based on the comparison result. The Examiner’s Rejection2 The Examiner relies on the following prior art references to show unpatentability: Piosenka US 4,993,068 Feb. 12, 1991 Hamid US 6,072,891 June 6, 2000 (filed July 24, 1997) Claims 1-3, 5, 8, 9, 27, and 28 were rejected under 35 U.S.C. § 103(a) as being unpatentable over Piosenka in view of Hamid. Ans. 4-9. ANALYSIS Claims 1 and 3 Appellants do not argue independent claim 3 separately from independent claim 1. App. Br. 4-6; Reply Br. 1-2. We will therefore treat claims 1 and 3 as a single claim grouping and select claim 1 as representative of this group. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants argue that neither Piosenka nor Hamid teaches the step of “designating” in method claim 1. App. Br. 5-6. Appellants explain that 2 In the Answer, the Examiner withdrew the rejection of claims 1, 2, 5, 9, and 27 under 35 U.S.C. § 112, second paragraph. Appeal 2010-011006 Application 10/240,274 4 neither Piosenka nor Hamid teaches a user selecting the bio-information for each of a plurality of bio-information designation units. Id. Although claim 1 includes the step of “designating,” the claim language does not specify the entity that designates. Appellants’ Specification, however, describes how a user or a business may designate the type of bio-information to be used for authentication. Spec. 52:5-8. The Examiner acknowledges that Piosenka does not explicitly teach that a user may designate the type of bio-information to be used for authentication. See Ans. 5. The Examiner relies upon Hamid for teaching designation performed by a user. Id. Although the Examiner’s rationale is reasonable, we find, given the breadth of the claim, that the Examiner’s reliance on Hamid is technically cumulative to Piosenka. Piosenka teaches a system for both the generation of a biometric credential and for the subsequent use of the credential. Col. 1, ll. 6-10. Piosenka uses the term “authorization” to describe the credential’s generation and “verification” to describe the credential’s subsequent use. Col. 4, ll. 30-32; col. 7, ll. 38-44. Piosenka explains that one authorization segment can support a community of verification sites, each using a different combination of biometric trait sensors. Col. 5, ll. 12-15. Piosenka also describes how validation (i.e., verification) sites may perform different functions and use different biometric sensors. Col. 9, ll. 32-39. Based on these teachings alone, Piosenka teaches an entity, or community of verification sites, designating the types of biometric information that must be collected during the authorization process and subsequently used during the verification process. Appeal 2010-011006 Application 10/240,274 5 Piosenka also describes how the same credential is presented at a point of sales terminal and also used to access a military base. Col. 9, ll. 46- 64. Verification of a user at the point of sale terminal uses a different set of biometrics than the set used to gain access to the military base. Id. Neither a financial institution nor the military would allow the other to designate the biometrics to be used for verification. We therefore conclude that the Examiner’s reliance upon Hamid was unnecessary and therefore technically cumulative to Piosenka’s teachings, which actually anticipate claim 1. However, we are not persuaded that the Examiner erred in rejecting claim 1 as obvious over both Piosenka and Hamid since “‘anticipation is the epitome of obviousness.’” In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (citation omitted); see also In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979) (noting that obviousness rejections can be based on references that happen to anticipate the claimed subject matter). In the Reply Brief, Appellants argue that the combination fails to teach associating designated bio-information with an ID of the user. Reply Br. 1-2. Appellants explain that associating designated bio-information with an ID of the user is inconsistent with Hamid providing a user the flexibility to designate the biometric parameters. Id. at 2. Appellants present this argument for the first time in the Reply Brief. Appellants do not explain what good cause there might be to consider the new argument. Appellants’ new argument is thus untimely and accordingly, has not been considered. See Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative). Even if the argument were timely raised, we are not persuaded that Appellants identify error in the rejection. Piosenka teaches a credential storing biometric information as well as optional attribute data such as the Appeal 2010-011006 Application 10/240,274 6 bearer’s name or social security number, which identify a user. Col. 5, ll. 28-51. When a user’s name and biometric information are stored in a credential, the identifier and the biometric information are associated. We therefore conclude that the Examiner’s reliance upon Hamid was unnecessary and that Piosenka anticipates claim 1. However, we are not persuaded that the Examiner erred in rejecting claim 1 as obvious over both Piosenka and Hamid since “‘anticipation is the epitome of obviousness.’” McDaniel, 293 F.3d at 1385. Claims 2, 5, 8, 9, 27, and 28 Appellants do not separately argue any of the pending dependent claims that were rejected under 35 U.S.C. § 103(a). App. Br. 6. We therefore treat claims 2, 5, 8, 9, 27, and 28 as a single claim grouping and select claim 5 as representative of this group. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants argue the Examiner failed to make a prima facie case of obviousness for the dependent claims for a number of reasons. App. Br. 6. First, Appellants explain that the Final Office Action states that Piosenka and Hamid “enable” various limitations of the dependent claims. Id. Second, Appellants contend that the Examiner fails to ascertain the differences between the claimed invention and the prior art. Id. We do not agree with Appellants that the Examiner has failed to make a prima facie case of obviousness with respect to claim 5. The Examiner states in the Answer that the “combination enables” the claim. Ans. 7-8. The “combination” refers to Piosenka and Hamid. While use of the verb “enable” in an obviousness rejection is somewhat unorthodox, we are Appeal 2010-011006 Application 10/240,274 7 convinced that the Examiner merely intends to state that the combination teaches the additional limitation of claim 5. We are not persuaded that the Examiner’s mere use of terminology that differs from what is customary rises to the level of reversible error. Nor are we persuaded that the Examiner erred by failing to ascertain the differences between the claimed invention and the prior art. The Examiner points to Piosenka to show an authentication apparatus separate from said portable authentication module (i.e., card) as in claim 5. Piosenka’s Figure 2 shows the card as separate from the authentication apparatus. Furthermore, claim 5 is a dependent claim and incorporates the Examiner’s prior discussion of the parent claim. The rejection of the independent claims does establish differences between the claimed invention and the prior art. Since the totality of the Examiner’s rationale establishes the differences between the claimed invention and the prior art, we are not persuaded that Appellants have identified reversible error in the rejection CONCLUSION Based on the analysis above, we conclude that Appellants have not shown that the Examiner erred in rejecting claims 1-3, 5, 8, 9, 27, and 28 under 35 U.S.C. § 103(a). DECISION The Examiner’s decision rejecting claims 1-3, 5, 8, 9, 27, and 28 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2010-011006 Application 10/240,274 8 AFFIRMED babc