Ex Parte Smtih et al

Patent Trial and Appeal BoardMar 12, 2019

13742748 (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/742,748 01/16/2013 27268 7590 03/14/2019 Faegre Baker Daniels LLP 300 NORTH MERIDIAN STREET SUITE 2700 INDIANAPOLIS, IN 46204 FIRST NAMED INVENTOR Clayton Douglas Smtih 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. 110500.110002-01-US-E 5911 EXAMINER BARAKAT, MOHAMED ART UNIT PAPER NUMBER 2689 NOTIFICATION DATE DELIVERY MODE 03/14/2019 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): inteas@faegrebd.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CLAYTON DOUGLAS SMTIH 1 and LINDSAY MAR TIN KENT Appeal2018-006382 Application 13/742,748 Technology Center 2600 Before JOSEPH L. DIXON, JAMES W. DEJMEK, and STEPHEN E. BELISLE, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL 1 This Appellant's last name is SMITH, per the Declaration filed Jan. 16, 2013. Appellants misspelled this inventor's name of the originally filed Application Data Sheet. We urge Appellants to correct this name misspelling in the record. Appeal2018-006382 Application 13/742,748 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-3, 5, 12-14, 16, and 17. Claims 4 and 15 are canceled, and claims 6-11 are withdrawn from consideration. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. The claims are directed to a method and apparatus for remote portable wireless device authentication using a smart card reader emulation device. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for user authentication carried out by a smart card reader emulation device, comprising: receiving a selected signal strength level for a smart card emulation authentication process; receiving a signal from a portable wireless device radio transceiver of a portable wireless device comprising a smart card emulator; measuring the signal strength of the signal from the portable wireless device; in response to the signal being at or above the selected signal strength level, transmitting one or more signals to the portable radio device radio transceiver requesting user authentication by the smart card emulator, and if the signal is not at or above a selected signal strength level, refusing a request to authenticate by the portable radio device radio transceiver even though a sufficient radio connection may be 2 Appellants indicate that the real party in interest is Entrust, Inc. (App. Br. 3). 2 Appeal2018-006382 Application 13/742,748 made between the smart card reader emulation device and the portable wireless device; and receiving one or more authentication response signals from the smart card emulator in the portable radio device in response to the request for user authentication, the one or more response signals including at least authentication information unique to a user. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Graves Griffin Brand US 2006/0236373 Al US 2009/0191811 Al US 8,111,141 Bl REJECTION The Examiner made the following rejection: Oct. 19, 2006 July 30, 2009 Feb. 7,2012 Claims 1-3, 5, 12-14, 16, and 17 stand rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Graves in view of Griffin and Brand. ANALYSIS With respect to independent claims 1, 12, and 17, Appellants rely upon the arguments set forth with respect to independent claim 1. (App. Br. 9). Therefore, we select independent claim 1 as the representative claim and will address Appellants' arguments thereto. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). We do not consider arguments that Appellants could have 3 Appeal2018-006382 Application 13/742,748 made but chose not to make in the Brief so we deem any such arguments as waived. 37 C.F.R. Â§ 4I.37(c)(l)(iv). With respect to representative independent claim 1, Appellants argue the claim language is being misconstrued. (App. Br. 10). Appellants contend: Claim 1, the "smart card reader emulation device" requests "user authentication" and "refus[ es] a request to authenticate by the portable radio device radio transceiver even though a sufficient radio connection may be made between the smart card reader emulation device and the portable wireless device." The claim does not state authenticating a radio transceiver as alleged by the rejection. (App. Br. 10). Appellants further contend the Brand reference does not teach the claimed subject matter and does not teach what is alleged by the Examiner. (App. Br. 10). Specifically, Appellants contend: Brand is not used to transmit " ... one or more signals ... requesting user authentication" to authenticate a user using a portable device radio transceiver if the signal is above a strength qualification level but to the contrary, validates a signal from the fixed sign post. As claimed, the requesting user authentication is sent to the portable wireless device in response to the signal being at or above the selected signal strength level and refusing a request to authenticate by the portable wireless device radio transceiver even though a sufficient radio connection may be made between the smart card reader emulation device and the portable wireless device. (App. Br. 10-11). 4 Appeal2018-006382 Application 13/742,748 We disagree with Appellants' arguments, and agree with and adopt the Examiner's findings and conclusions in (i) the action from which this appeal is taken and (ii) the Answer to the extent they are consistent with our analysis below. The Examiner maintains that Appellants are attacking the references individually rather than the combination as applied by the Examiner. (Ans. 5). The Examiner further identifies that the Brand reference is merely relied on to show that it was well known in the art of wireless communication to refuse to authenticate a portable device radio transceiver even though a sufficient radio connection may be made between the portable radio transceiver and another reader device. (Ans. 7). We agree with the Examiner's factual finding and conclusion of obviousness. In the Reply Brief, Appellants repeat similar arguments set forth in the Appeal Brief and contend that the Examiner's phrasing of the rejection misconstrues the claim language. (Reply Br. 2--4). Appellants contend that they are not attacking the references individually, but "instead set forth the reasons why the Examiner's contentions as to each of the references is improper and/or that the references do not teach what the Examiner alleges." (Reply Br. 4). We disagree with Appellants and find that the Examiner is addressing the claim limitations in the manner that the Examiner applied the prior art teachings where the Graves and Brand references each teach authentication using a tag or ID, but the Griffin reference teaches a card emulation authentication aspect. The Examiner addresses the claim limitations and teachings relied on in each of the specific prior art references. As a result, the Examiner's phrasing within the rejection addresses each claim limitation 5 Appeal2018-006382 Application 13/742,748 in the corresponding manner that the Examiner applied the prior art teaching where each reference teaches and suggests parts of the overall claimed invention. As a result, we agree with the Examiner that Appellants are arguing the deficiencies of each of the references individually rather than as combined in the grounds of the obviousness rejection. With respect to dependent claims 2, 3, and 5, Appellants argue that the portions of the Graves reference relied upon by the Examiner do not mention any reader authentication response signal that is coded based on an encryption key and at least in part on the challenge. 3 (App. Br. 12). The Examiner further explains the Examiner's reliance upon the Graves reference with a password which is considered a challenge and clinician-specific tag ID 42. (Ans. 8-9). The Examiner further finds these features to be claimed are "broad limitations and fail[] to include[] any characteristic or further limitations that distinguish them from the prior art; i.e. one of ordinary sill [ sic: skill] in the art would consider the challenge as the request for the password and that the password inputted is the coded response based on one or more encryption keys." (Ans. 9). Appellants do not respond in the Reply Briefto the Examiner's clarifications regarding the dependent claims. As a result, we agree with the Examiner's factual findings and conclusion of obviousness with regards to dependent claim 5. Additionally, we find Appellants' arguments directed to dependent claim 5 to be unpersuasive with regards to the separate limitations 3 We note that the Appellants repeat the language of dependent claim 5, but dependent claims 2 and 3 do not contain similar limitations. Thus, Appellants' arguments are not commensurate in scope with these claims. 6 Appeal2018-006382 Application 13/742,748 of dependent claims 2 and 3, and we group the claims 2 and 3 as falling with representative independent claim 1. CONCLUSION The Examiner did not err in rejecting claims 1-3, 5, 12-14, 16, and 17 based upon obviousness under pre-AIA 35 U.S.C. Â§ 103(a). DECISION For the above reasons, we affirm the Examiner's obviousness rejection of claims 1-3, 5, 12-14, 16, and 17. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 7