Xavier Banchelin

Patent Trials and Appeals Board

Mar 31, 2021

2020000297 (P.T.A.B. Mar. 31, 2021)

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
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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
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Application 12/747,619
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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
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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