Xavier BanchelinDownload PDFPatent Trials and Appeals BoardMar 31, 20212020000297 (P.T.A.B. Mar. 31, 2021) Copy Citation 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. 12/747,619 06/11/2010 Xavier Banchelin 1032326-000522 7684 21839 7590 03/31/2021 BUCHANAN, INGERSOLL & ROONEY PC 1737 KING STREET SUITE 500 ALEXANDRIA, VA 22314-2727 EXAMINER LEMMA, SAMSON B ART UNIT PAPER NUMBER 2498 NOTIFICATION DATE DELIVERY MODE 03/31/2021 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XAVIER BANCHELIN Appeal 2020-000297 Application 12/747,619 Technology Center 2400 BEFORE MAHSHID D. SAADAT, JENNIFER L. McKEOWN, and SCOTT E. BAIN, Administrative Patent Judges. MCKEOWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 5–6, 8–11, and 13–27. 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(a). Appellant identifies the real party in interest as Gemalto SA. Appeal Br. 2. Appeal 2020-000297 Application 12/747,619 2 CLAIMED SUBJECT MATTER The claims are directed to “a process for authorising [sic] communication with a portable electronic device, such as access to at least one memory zone of the device.” Spec, p. 1, ll. 6–8. Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A portable electronic device comprising: a processor configured to generate a first item of variable information; a display configured to display first visible information comprising: (i) a first portion comprising the first item of variable information, and (ii) a second portion comprising an item of fixed information, wherein display of information via the first portion is configured to vary and display of information via the second portion is configured to be fixed; an interface configured to receive an other item of information, from an electronic communication device, wherein the other item of information is based at least in part on the first item of variable information and the item of fixed information; and wherein the processor is further configured to compare the other item of information and at least part of the first item of variable information, and authorise a communication exchange between the electronic communication device and the portable electronic device, based on at least in part the other item of information and the first item of variable information. REJECTION The Examiner rejected claims 5–6, 8–11, and 13–27 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 7–8. Appeal 2020-000297 Application 12/747,619 3 OPINION The Examiner rejected independent claim 11, for failing to sufficiently describe the claimed “an interface configured to receive another item of information, from an electronic communication device, wherein the other item of information is based at least in part on the first item of variable information and the item of fixed information,” as required by the claims. Final Act. 7–8. According to the Examiner, There is no explicit or implicit teaching in the specification’s general description, examples, and/or drawings that the second item of information is based upon an item of fixed information. Instead, the specification describes that the second item of information is based upon the first item of variable information (see relevant ¶¶45, 98, 109, 112, and 113 of Applicant’s published specification). This is a material change in the claim which is unsupported by the originally filed specification. Final Act. 7–8. Appellant, on the other hand, argues that the Specification sufficiently describes the claimed limitation. Namely, Appellant points to paragraph 80 describing that visible information, information displayed on the LCD screen on the base of the passport, includes both variable and fixed parts. Appeal Br. 5. Appellant then points to paragraph 82 that states that the information displayed on the LCD screen, entirely or in part, may be used for authentication. Id. According to Appellant, these disclosures together, for example, support the claimed “other item of information is based at least in part on the first item of variable information and the item of fixed information.” Id. Appellant additionally asserts “that the Examiner is using a strict literal interpretation of the individual passages in isolation, rather than considering them in the overall context of the disclosure. That is not the proper standard for compliance with the written description requirement Appeal 2020-000297 Application 12/747,619 4 of 35 U.S.C. § 112(a).” Appeal Br. 6; see also Reply Br. 3 (pointing out that “[t]he [written description] standard is whether the specification demonstrates that the inventor had possession of the claimed concept, not whether it is described as a ‘necessary’ feature.”). We agree with Appellant. The Specification teaches a visible item of information may include both fixed and variable parts. Spec. ¶ 80.2 Then, the Specification generally describes using the visible information (which may include both fixed and variable parts) for authentication of an external interlocutor. Spec. ¶¶ 82, 84. The Specification further describes that the reader reads the visible information (which may include both fixed and variable parts) from the passport. Spec. ¶ 95. The Specification, in one embodiment, teaches the passport and the optical reader, both perform the same function or algorithm to compute first and second authentication values. Spec. ¶¶ 126, 127. Although the Specification expressly describes, in one embodiment, using the variable item of information to get another item of information, the Specification also reasonably conveys to a skilled artisan possession of using visible information (with fixed and variable parts) for authentication and both the passport and optical reader performing the same function to compute authentication values, i.e. other item of information. As such, based on the record before us, we determine that the Specification reasonably conveys to a skilled artisan possession of the claimed limitation of “other item of information is based at least in part on the first item of variable information and the item of fixed information.” 2 Paragraph references are to the published application US 2010/0263034 A1 (Oct. 14, 2010). Appeal 2020-000297 Application 12/747,619 5 Accordingly, we reverse the rejection of claims 5–6, 8–11, and 13–27 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. CONCLUSION The Examiner’s rejection of claims 5–6, 8–11, and 13–27 is reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 5–6, 8–11, 13–27 112(a) Written Description 5–6, 8–11, 13–27 REVERSED Copy with citationCopy as parenthetical citation