Ex Parte Obrea et al

Patent Trial and Appeal Board

Apr 11, 2013

11011982 (P.T.A.B. Apr. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANDREI OBREA and THOMAS J. FOTH
____________________

Appeal 2010-0110721
Application 11/011,982
Technology Center 2600
____________________

Before JEAN R. HOMERE, JOHNNY A. KUMAR, and BRYAN F.
MOORE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Pitney Bowes, Inc. (App Br. 3.)
Appeal 2010-011072
Application 11/011,982

2
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1 and 4-11. Claims 2, 3, and 12-18 have been
canceled. (App. Br. 3.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for establishing secure
communication between a radio frequency identification (RFID) circuit (10)
and a RFID reader (16). In particular, in response to a data request received
from the RFID reader, the RFID circuit returns a tag ID for which a laser
control computer (14) retrieves a cryptographic key from a database (15) to
encrypt the request as a signed message, which is retransmitted in a light
beam to the RFID circuit (10). Upon detecting a permitted request in
received encrypted message, the RFID circuit (10) returns the requested data
to the reader. (Fig. 1, Spec. [0015].)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for securely communicating between a radio
frequency identification device and a reader, which comprises
the steps of:
A) generating a light beam that carries power and secure
information using digital cryptographic methods to be received
by the radio frequency identification device,
B) determining a permitted request contained in the
information;
Appeal 2010-011072
Application 11/011,982

3
C) transmitting a RFID signal from the RFID device in
response to the permitted request; and
D) receiving a radio frequency signal from the radio
frequency identification device in response to the information
carried by the light beam.

Prior Art Relied Upon
Beenau US 7,303,120 B2 Dec. 4, 2007
Kahlman WO 03/071477 A1 Aug. 28, 2003

Rejections on Appeal2
The Examiner rejects the claims on appeal as follows:
1. Claims 1 and 4-11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Beenau and Kahlman.
2. Claim 11 stands rejected under 35 U.S.C. § 112, second paragraph
as being indefinite.3

2 The Examiner withdraws the rejection previously entered against claims 1,
and 4-11 as being unpatentable over the combination of Kahlman and
Schuster. Similarly, the Examiner withdraws the indefiniteness rejection
previously entered against claims 1 and 4-10. (Ans. 3-5.)
3 Appellants proposed to cancel claim 11, and offered no response to the
indefiniteness rejection pertaining to that claim. (App. Br. 14.) However, the
Examiner did not enter Appellants’ proposed amendment. Because the
indefiniteness rejection is uncontested, we affirm pro forma the rejection.
Similarly, because Appellants failed to respond to the rejection of claim 11
as being unpatentable over the combination of Beenau and Kahlman, we
affirm pro forma the rejection.
Appeal 2010-011072
Application 11/011,982

4
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 14-19.

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding that the combination of Beenau and Kahlman teaches or suggests in
response to determining that a permitted request is contained in a signed
message received from a RFID reader, a RFID device transmits the
requested data to the RFID reader, as recited in claim 1?

Appellants argue that the proffered combination does not teach or
suggest the disputed limitations emphasized above. (App. Br. 14-17.) In
particular, Appellants argue that Beenau discloses unconditionally
transmitting RFID fob information to a secure reader regardless whether the
fob is visible to the reader, as opposed to transmitting the requested fob
information contained in a signed message, as required by claim 1 (Id. at
15.)
In response, the Examiner finds that because the disputed limitations
recite neither a conditional nor an unconditional transmission of the RFID
information between the RFID reader and circuit, but only require
establishing a secure communication between the devices, Beenau’s
disclosure of a reader encrypting information exchanged between a reader
and a fob teaches the disputed limitations. (Ans. 9-10.)
Based upon our review of the record before us, we find no error with
the Examiner’s finding of obviousness regarding claim 1. We note at the
Appeal 2010-011072
Application 11/011,982

5
outset that Appellants do not dispute the Examiner’s finding that the
Beenau-Kahlman combination discloses using a unique encryption key to
establish a secure communication between a RFID reader and a fob. In
particular, we note that Appellants have left unchallenged the Examiner’s
conclusion that the disputed limitations do not distinguish from the prior art
of record because they do not specify that the transmission of data be
performed conditionally or unconditionally depending on whether the RFID
is visible to the reader, and thereby does not impose any restriction on the
communication between fob and reader so long as such communication is
secure as taught by the Beenau-Kahlman combination. (Id.) We agree with
the Examiner that Appellants’ arguments are not commensurate with the
scope of the claim limitations. Therefore, those arguments are unavailing.
Further, we find we find Appellants’ failure to address the aforementioned
findings and conclusions made by Examiner to be tantamount to conceding
the material and salient points pertaining to the issue before us.
Consequently, Appellants have failed to show error in the Examiner’s
obviousness rejection of claim 1.
Because Appellants argue the rejection of all claims on appeal as a
single group, claims 4-11 fall together with claim 1 for the reasons discussed
above. See 37 C.F.R. § 1.37(c)(1)(vii).

DECISION
We affirm the Examiner’s rejections of claims 1 and 4-11 as set forth
above.
Appeal 2010-011072
Application 11/011,982

6
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).

AFFIRMED

msc