Thomas Suwald et al.

Patent Trials and Appeals Board

Nov 29, 2019

14527680 - (D) (P.T.A.B. Nov. 29, 2019)

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.
14/527,680 10/29/2014 Thomas Suwald 81580772US02 8415
65913 7590 11/29/2019
Intellectual Property and Licensing
NXP B.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
JOHNSON, CARLTON
ART UNIT PAPER NUMBER
2436
NOTIFICATION DATE DELIVERY MODE
11/29/2019 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS SUWALD and ARNE BURGHARDT

Appeal 2019-000595
Application 14/527,680
Technology Center 2400
____________

BEFORE JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16, which are all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. USPTO assignment records (Reel/Frame 050745/0001;
Sept. 10, 2019) indicate the instant application has been assigned to NXP
B.V., which we understand to be the real party in interest.
Appeal 2019-000595
Application 14/527,680

2
STATEMENT OF THE CASE2
Introduction
Appellant’s disclosed and claimed invention relates to an
authentication system for operating a security token while controlling power
consumption. See Spec. 3:14–21. The authentication system may include a
mobile device (e.g., a near field communication (NFC) enabled smart phone)
and a security token (e.g., a smart card), which interact via short-range RF
communication in order to authenticate the security token and facilitate a
mobile transaction. Id. 6:15–22. In a disclosed embodiment, while its
microcontroller unit (MCU) is in a first sleep state, the smartcard’s secure
element may receive an authentication command from the mobile device. Id.
8:1–5. The secure element may decode the authentication command, send a
corresponding authentication request to the MCU, and subsequently enter a
second sleep state. Id. 8:5–7. Upon receiving the authentication request, the
MCU may wake up and determine an amount of available power delivered
by the mobile device by checking the smart card’s RFID antenna voltage. Id.
8:7–9, 9:10–12. The MCU may process the authentication request only if the
determined amount of power exceeds a threshold. Id. 8:9–10, 9:12–15.

2 Our Decision refers to the Final Office Action mailed March 5, 2018
(“Final”) and Advisory Action mailed June 13, 2018 (“Advisory”);
Appellant’s Appeal Brief filed June 19, 2018 (“Appeal Br.”) and Reply Brief
filed October 30, 2018 (“Reply Br.”); the Examiner’s Answer mailed
October 4, 2018 (“Ans.”); and the original Specification filed October 29,
2014 (“Spec.”).

Appeal 2019-000595
Application 14/527,680

3
Illustrative Claim
Claims 1, 11, and 12 are independent claims. Claim 1 is illustrative of
the subject matter on appeal and reproduced below:
1. A method of operating a security token, said security
token comprising a secure element and a microcontroller unit
coupled to said secure element, wherein:
the secure element receives an authentication command
from a host device while the microcontroller unit is in a first sleep
state and the secure element is in a third sleep state prior to
receiving the authentication command;
the secure element decodes the authentication command,
sends a corresponding authentication request to the
microcontroller unit, and subsequently enters into a second sleep
state, wherein power is restricted, but not completely switched
off, to the microcontroller unit in the first sleep state and the
secure element in both the second sleep state and the third sleep
state;
the microcontroller unit wakes up upon receiving the
authentication request and subsequently determines an amount
of available power from an antenna of the security token; and
the microcontroller unit processes the authentication
request only after the amount of available power exceeds a
threshold.
Appeal Br. 13 (Claims App.).

Rejections on Appeal
The Examiner rejected claims 1–13, 15, and 16 under 35 U.S.C. § 103
as being unpatentable over Confer et al. (US 2014/0120832 A1; May 1,
2014) (“Confer”), Awad (EP 2541995 A1; Jan. 2, 2013), and Martin-Cocher
et al. (US 2009/0098914 A1; Apr. 16, 2009) (“Martin-Cocher”). Final 5–21.
Appeal 2019-000595
Application 14/527,680

4
The Examiner rejected claim 14 under 35 U.S.C. § 103 as being
unpatentable over Confer, Awad, Martin-Cocher, and John (US 9,095,729
B2; Aug. 4, 2015). Id. at 21–23.

ANALYSIS
Based on Appellant’s arguments in the Briefs (Appeal Br. 7–8; Reply
Br. 2–3), the dispositive issue before us is whether the Examiner’s proposed
combination of Confer, Awad, and Martin-Cocher would have taught or
suggested that “the microcontroller unit . . . determines an amount of
available power from an antenna of the security token,” as recited in claim
1.3
In the Final Office Action, the Examiner finds Martin-Cocher teaches
that “the microcontroller . . . determines an amount of available power” with
its disclosure of checking whether a battery level of a mobile device is above
or below a particular threshold. Final 8 (citing Martin-Cocher ¶ 14). The
Examiner additionally finds that Awad teaches “wherein available power [is]
from an antenna of a computing device” with its disclosures of first and
second NFC devices, each of which contains an antenna for communicating
data with another device. Id. at 9 (citing Awad ¶¶ 35, 43).
In the Advisory Action, the Examiner explains that “checking a
battery level” is “analogous to [checking] a power level based on voltage”
and, thus, Martin-Cocher’s disclosure of “determining whether a battery
level . . . is above or below a particular threshold . . . is analogous to

3 To the extent Appellant makes other arguments in the Briefs with respect
to the claims, we do not address them because our decision of this issue is
dispositive.
Appeal 2019-000595
Application 14/527,680

5
determining the amount of available power.” Advisory 2. The Examiner
further explains that “Awad discloses the capability for determining whether
available power associated with a component such as an antenna is
adequate” because its NFC device “utiliz[es] the available (and adequate)
power for signal generation or data transmissions . . . over the antenna,”
which is required for such data transmission. Id.
In the Appeal Brief, Appellant disputes the Examiner’s findings and
argues that “while Awad might disclose antennae 106/108, Awad fails to
determine an amount of available power from any antenna.” Appeal Br. 8.
Appellant further argues that “Martin-Cocher’s battery level teachings are
inapplicable to Awad because the broadest reasonable interpretation of
available power from an antenna cannot encompass a battery level.” Id.
In the Answer, the Examiner makes several additional findings with
respect to Awad and Martin-Cocher. See Ans. 3–9. In particular, the
Examiner finds that Awad “discloses the capability for a first NFC device to
harvest energy (electrical energy, power) from a second NFC device, while
. . . in close proximity to each other.” Ans. 3–4 (citing Awad ¶¶ 14, 40).
The Examiner also finds that Awad discloses using an algorithm to
determine when to power on or power off certain components of the NFC
devices and powering on the memory for a data transfer upon determining
there is sufficient power to perform it. Id. at 4 (citing Awad ¶¶ 47–48). The
Examiner finds Martin-Cocher “discloses the capability to determine
whether there is sufficient power (i.e.[,] battery level, a measure of electrical
energy) to operate a particular component” such that “[i]f the battery level is
insufficient to operate the particular component, . . . the component is not
enabled for operation.” Id. at 4–5 (citing Martin–Cocher). The Examiner
Appeal 2019-000595
Application 14/527,680

6
further finds that “[Martin-Cocher] discloses a battery level parameter which
is analogous to a power level[,] [a]nd Awad discloses an analogous
mechanism whereby power is harvested from the field (i.e.[,]
electromagnetic energy as electrical energy) by an NFC device utilizing an
antenna.” Id. at 5.
In the Reply Brief, Appellant responds that the Examiner’s findings
fail to address the actual claim language, which requires “determin[ing] an
amount of available power from an antenna of the security token.” Reply Br.
2 (emphasis added). In particular, Appellant explains that “[r]ather than
determining an amount of available power, paragraph [0047] of Awad
discloses a time period: ‘a specific number of microseconds’ and powers
memory 206 for that length of time.” Id. Appellant also disputes the
Examiner’s finding that Martin-Cocher’s “‘battery threshold’ is equivalent
to a power level” because it “fail[s] to consider the recited language of
available power from an antenna of the security token,” and “a battery level
is measured by voltage, which is not equivalent to power,” but “[i]nstead . . .
measures electrical energy: the state of charge on the battery.” Id. at 2–3.
Appellant adds that “[t]he Examiner’s allegation on ‘[Awad’s] capability to
harvest energy’ are [sic] unrelated to any ability to determine an amount of
available power from an antenna.” Id. at 3.
We are persuaded by Appellant’s arguments that the Examiner erred.
Awad does teach that an NFC device has an antenna for communicating
with another NFC device, as well as for harvesting power used to generate
signals and transmit data. Awad ¶¶ 35, 40, 60. Awad in particular teaches
that an NFC device may harvest energy from another NFC device, convert
the energy to electrical power, and selectively power on or off components
Appeal 2019-000595
Application 14/527,680

7
coupled to the NFC device using the converted electrical power. Id. ¶ 14.
But the Examiner does not provide any persuasive evidence that Awad
teaches or suggests an NFC device that generates signals, transmits data, or
selectively powers on or off features based on a determination of an
available amount of power. Although Awad’s NFC device has an antenna
used for providing power to operate a device, there is no discussion
regarding determining an available amount of power from the antenna. And
even though Martin-Cocher teaches determining an available amount of
power by checking the battery level, the Examiner does not provide any
persuasive evidence that it determines such information from an antenna.
Martin-Cocher ¶ 14.
Further, the Examiner’s proposed reasons and explanations for
combining the teachings of Awad and Martin-Cocher do not fill the gaps in
the cited prior art. The Examiner reasons that “[i]t would have been obvious
. . . to modify Confer-Awad for . . . determining an amount of available
power . . . as taught by Martin[-]Cocher” because “[o]ne of ordinary skill in
the art would have been motivated to employ the teachings of Martin[-]
Cocher for the benefits achieved from the flexibility and efficiency of a
system that performs task-management or function-management based on
battery life for a particular device.” Final 8–9 (citing Martin-Cocher ¶ 1).
But the Examiner does not explain the nature of these purported benefits or
provide a citation to the prior art that adequately supports such an assertion.
Nor does the Examiner provide any persuasive evidence that applying
Martin-Cocher’s technique for checking the battery level to Awad’s NFC
device would have been obvious or that determining an available amount of
power from an antenna would have been a predictable result of the
Appeal 2019-000595
Application 14/527,680

8
combined teachings. The Examiner also does not cite Confer or John for
teaching or suggesting the disputed limitation or otherwise filling the gaps in
the rejection.
In view of the foregoing, the Examiner has not adequately shown that
the combined teachings of the cited prior art references would have taught or
suggested claim 1, including claim 1’s recitation of a microcontroller that
“determines an amount of available power from an antenna of the security
token.”
Accordingly, on this record, we are constrained to find the Examiner
erred because the Examiner has not adequately shown that the proposed
combination of prior art references renders claim 1 obvious by a
preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed.
Cir. 1985) (Examiner’s burden of proving non-patentability is by a
preponderance of the evidence).
Thus, we do not sustain the Examiner’s rejection of claim 1 under
§ 103. For similar reasons, we do not sustain the Examiner’s § 103 rejections
of claims 2–16, which include similar deficiencies.

CONCLUSION
We reverse the Examiner’s rejections of claims 1–16 under 35 U.S.C.
§ 103.

In summary:
Appeal 2019-000595
Application 14/527,680

9
Claims
Rejected
35
U.S.C.
§
Basis Affirmed Reversed
1–13, 15, 16 103 Confer, Awad,
Martin-Cocher
1–13, 15,
16
14 103 Confer, Awad,
Martin-Cocher,
John
14
Overall
Outcome
1–16

REVERSED