Ex Parte 5940526 et al

Patent Trial and Appeal Board

Sep 27, 2012

90010936 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/010,936 04/26/2010 5940526 15192-2001 4868
7590 09/27/2012
Christopher F. Regan
ALLEN DYER DOPPELT MILBRATH & GILCHRIST
P.O. BOX 3791
Orlando, FL 32802-3791
EXAMINER
WEAVER, SCOTT LOUIS
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AuthenTec Inc.,
Appellant

____________________

Appeal 2012-012297
Reexamination Control No. 90/010,936
U.S. Patent 5,940,526
Technology Center 3900
____________________

Before, KARL D. EASTHOM, JONI Y. CHANG, and
THOMAS L. GIANNETTI Administrative Patent Judges.

CHANG, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-012297
Reexamination Control No. 90/010,936
U.S. Patent 5,940,526

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Patent Owner, AuthenTec Inc., appeals under 35 U.S.C. §§ 134(b) and
306 from a final rejection of claim 13 of U.S. Patent 5,940,526 (hereinafter
“the ’526 patent”). (App. Br. 2; Reply Br. 2-3.) 1 We have jurisdiction
under 35 U.S.C. §§ 6(b), 134, and 306.
We AFFIRM.

STATEMENT OF THE CASE
This reexamination proceeding arose from a request for ex parte
reexamination of the ’526 patent filed on February 8, 2008. The ’526 patent
relates to a fingerprint sensor having a plurality of semiconductor devices.
(Abs.) Independent claim 13 is the sole claim on appeal:
13. A fingerprint sensor [30] comprising:
a substrate [65];
a plurality of semiconductor devices [73] adjacent said
substrate and defining active circuit portions for generating an
output related to a sensed fingerprint;
a package surrounding said substrate [51];
a first external electrode carried by said package for
contact by a finger [54]; and
power control means for controlling operation of active
circuit portions based upon sensing finger contact with said
first external electrode.
(App. Br. 14, reference numbers to figures 1-2 and emphasis added.)

1 Patent Owner’s Appeal Brief filed March 2, 2012 (“App. Br.”) and Reply
Brief filed on August 17, 2012 (“Reply Br.”).
Appeal 2012-012297
Reexamination Control No. 90/010,936
U.S. Patent 5,940,526

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Figures 1 and 2 of the ’526 patent are reproduced below:

Figures 1 and 2 show a fingerprint sensor and a circuit portion of the
fingerprint sensor.

Rejection on Appeal
The Examiner rejected claim 13 under U.S.C. § 102(b) as being
anticipated by Jensen (U.S. Patent 4,784,484). (Ans. 3).

Issues on Appeal
The principal issues in this appeal are:
1. Whether the corresponding structure of a “power control means” as
recited in claim 13 includes a wake-up means and protection means;
2. Whether Jensen describes a “power control means” as recited in
claim 13; and
3. Whether Jensen describes a package as recited in claim 13.
Appeal 2012-012297
Reexamination Control No. 90/010,936
U.S. Patent 5,940,526

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PRINCIPLES OF LAW
“One construing means-plus-function language in a claim must look
to the specification and interpret that language in light of the corresponding
structure, material, or acts described therein, and equivalents thereof, to the
extent that the specification provides such disclosure.” In re Donaldson, 16
F.3d 1189, 1193 (Fed. Cir. 1994). This holding does not conflict with the
principle that claims are to be given their “broadest reasonable
interpretation.” Id. at 1194.
During reexamination, the Office must give claims their broadest
reasonable construction consistent with the specification. In re Icon Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). We must be careful
not to read a particular embodiment appearing in the written description into
the claim if the claim language is broader than the embodiment. See In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
“Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984).

ANALYSIS
Claim Construction
Appellant does not dispute that the claim term “power control means”
is a means-plus-function element invoking 35 U.S.C. § 112, ¶ 6. (App.
Br. 6.) Appellant, however, argues that the Examiner erred in construing the
term by taking the position that the corresponding structure that performs the
recited function does not include a wake-up means or a protection means.
Appeal 2012-012297
Reexamination Control No. 90/010,936
U.S. Patent 5,940,526

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(App. Br. 7; Reply Br. 2-3.) According to Appellant, the corresponding
structure includes “the finger sense circuit 101, and the wake-up means
and/or protection means provided by the wake-up/protect controller 102
including the illustrated switch that selectively couples the active circuit
portions 100 to power for the wake-up means, or to ground for the protection
means.” (App. Br. 6-8., citing col. 6:13-58, and figure 4.) We disagree.
When construing a means-plus-function limitation, the claim “shall be
construed to cover the corresponding structure, material, or acts described in
the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6. In this
regard, the statute requires identification of the structure in the specification
which performs the recited function. Rodime PLC v. Seagate Tech., Inc.,
174 F.3d 1294, 1302 (Fed. Cir. 1999). The statute does not “permit
incorporation of structure from the written description beyond that necessary
to perform the claimed function.” Micro Chem., Inc. v. Great Plains Chem.
Co., 194 F.3d 1250 1258 (Fed. Cir. 1999).
In this case, Appellant improperly imports into the claim the structure
of the preferred embodiment (i.e., a wake-up means and protection means)
that is not necessary to perform the function “for controlling operation of
active circuit portions based upon sensing finger contact with said first
external electrode” recited in claim 13. We agree with the Examiner that
such a structure should not be construed as a part of the corresponding
structure for the term “power control means.”
The specification clearly shows that the wake-up means and
protection means are optional features in the preferred embodiment. (Col.
6:14-31, reproduced below.) For example, the first embodiment of the
Appeal 2012-012297
Reexamination Control No. 90/010,936
U.S. Patent 5,940,526

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power control means disclosed in the specification does not include a wake-
up means or a protection means (see col. 6:14-18, the first sentence below):
The sensor may include power control means for controlling
operation of active circuit portions 100 based upon sensing
finger contact with the first external electrode 54 as determined
by the illustrated finger sense block or circuit 101. For
example, the finger sense circuit 101 may operate based upon a
change in impedance to an oscillator to thereby determine finger
contact. Of course, other approaches for sensing contact with
the finger are also contemplated by the invention. The power
control means may include wake-up means for only powering
active circuit portions upon sensing finger contact with the first
external electrode to thereby conserve power. Alternately or
additionally, the power control means may further comprise
protection means for grounding active circuit portions upon not
sensing finger contact with the first external electrode. In the
illustrated embodiment, a combination of wake-up and
protection controller circuits 102 are illustrated. (Col. 6:14-31,
emphasis added.)
Figure 4 illustrates a preferred embodiment that has the combination
of wake-up and protection controller:

Figure 4 is a circuit diagram of a fingerprint sensor.
Further, the specification expressly states that the wake-up means is
for the additional function of conserving power (col. 6:22-25), and the
Appeal 2012-012297
Reexamination Control No. 90/010,936
U.S. Patent 5,940,526

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protection means is for the additional function of grounding active circuit
portions (col. 6:26-29). Claim 13, however, does not recite those additional
functions. As explained by the Examiner, those functions are recited only in
the dependent claims (see, e.g., claims 16 and 17). Given that, we do not
find that the Examiner erred for not reading the additional functions from the
dependent claims into claim 13.
When applying 35 U.S.C. § 112, ¶ 6, we must construe the term
“power control means” to include only what is necessary to perform the
function recited in claim 13 and not import structures that, though present in
the preferred embodiment, are not actually necessary. See Wenger Mfg., Inc.
v. Coating Mach. Sys., Inc., 239 F.3d 1225, 123 (Fed. Cir. 2001). As such,
we find the Examiner’s claim construction that does not include the wake-up
means and protection means to be reasonable.
Whether Jensen Describes a Power Control Means
Appellant alleges that Jensen’s device is not the disclosed structure or
equivalent of the claimed “power control means.” (App. Br. 9-11.)
Specifically, Appellant argues that Jensen’s structure is substantially
different than the corresponding structure for the “power control means” as
recited in claim 13. (App. Br. 10-11.) Appellant further argues that the
structure identified by the Examiner is not a “power control means,” but
rather a portion of the fingerprint sensing circuit. (App. Br. 10.)
We do not find these arguments persuasive. Rather, we agree with the
Examiner’s determination that Jensen describes the claim limitation “power
control means for controlling operation of active circuit portions based upon
sensing finger contact with said first external electrode” as recited in
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Reexamination Control No. 90/010,936
U.S. Patent 5,940,526

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claim 13. We also adopt as our own the Examiner’s findings set forth in the
Answer (e.g., Ans. 10-11). As stated above, we determine that the
corresponding structure for the term “power control means” does not include
a wake-up means or a protection means.
Jensen describes an automatic fingerprint scanning system. (Abs.) In
particular, Jensen’s system includes the following: a measuring means 5 for
skin resistance and finger rate of movement; a double skin resistance
measuring circuit 12; a control circuit, converter circuit and power supply
14; and a linear photo array, active part 10. (Col. 2:34 to col. 3:65.)

Figure 1 of Jensen is reproduced as follows:

Figure 1 of Jensen illustrates a fingerprint scanning system.

Figure 2 of Jensen is reproduced as follows:
Appeal 2012-012297
Reexamination Control No. 90/010,936
U.S. Patent 5,940,526

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Figure 2 of Jensen shows the electrical circuit of the fingerprint scanning
system.

Jensen’s measuring means 5 is equated to Appellant’s first external
electrode, and Jensen’s double skin resistance measuring circuit 12 is
equated to Appellant’s finger sense circuit 101. Further, Jensen’s photo
array, active part 10 is equated to Appellant’s active circuit portions 100.
Jensen’s resistance measuring circuit 12 works together with Jensen’s
converter circuit and converter circuit and power supply 14 to control the
operation of Jensen’s photo array, active part 10 based upon sensing finger
contact with Jensen’s measuring means 5. Given that, we find that the
Examiner’s determination that Jensen describes a “power control means” as
recited in claim 13 is supported by a preponderance of the evidence.

Appeal 2012-012297
Reexamination Control No. 90/010,936
U.S. Patent 5,940,526

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Whether Jensen Describes a Package
Appellant argues that Jensen fails to disclose a package surrounding
the substrate as recited in claim 13. (App. Br. 11.) In particular, Appellant
argues that, as shown in Jensen’s figure 1, Jensen’s package 16 does not
surround the scanning means 9. (App. Br. 12.) We are not convinced by
these arguments.
While we agree with Appellant that Jensen’s figure 1 does not show a
covering that completely surrounds the scanning means 9, we nevertheless
note that Jensen’s figure 1 is a simplified drawing that illustrates how the
inner parts (e.g., optical/electrical scanning means 9, photo array 10, and
wires A-D) connect together. Further, as pointed out by the Examiner,
Jensen describes a fingerprint scanning system that “can be built into an
existing apparatus such as telephone apparatus, entrance control apparatus
and the like” (col. 1:29-33). One of ordinary skill in the art would have
recognized that the existing apparatus will completely surround Jensen’s
fingerprint scanning system, including Jensen’s scanning means 9.
Therefore, we agree with the Examiner that Jensen does describe a package
surrounding the substrate (scanning means 9) as recited in claim 13.

For the foregoing reasons, we conclude that the Examiner did not err
in construing the term “power control means” and in determining that Jensen
describes a “power control means” and a package as recited in claim 13.
Appeal 2012-012297
Reexamination Control No. 90/010,936
U.S. Patent 5,940,526

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SUMMARY
We affirm the rejection of claim 13 under 35 U.S.C. § 102(b).
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

PATENT OWNER:
Christopher F. Regan
ALLEN DYER DOPPELT MILBRATH & GILCHRIST
P.O. Box 3791
Orlando, FL 32802-3791

THIRD PARTY REQUESTER:
Sanjeek K. Dutta
ORRICK HERRINGTON & SUTCLIFFE, LLP
4 Park Plaza, Suite 1600
Irvine, CA 92614

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