Ex Parte Barbaric et al

Patent Trial and Appeal Board

Feb 8, 2017

13924356 (P.T.A.B. Feb. 8, 2017)

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.
13/924,356 06/21/2013 Tvrtko Barbaric 81423484US03 7010
65913 7590
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
HOLLOWAY III, EDWIN C
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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 .u s @ nxp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TVRTKO BARBARIC, HANS DE JONG, AD ARTS, and
PETER BUKOV JAN
Appeal 2016-006684
Application 13/924,3561
Technology Center 2600
Before STEPHEN C. SIU, JOHNNY A. KUMAR, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—4 and 6-18, which are all the claims pending in this
application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is NXP B.V. App. Br. 1.
2 Claim 5 is canceled. App. Br. 10 (Claims App’x).
Appeal 2016-006684
Application 13/924,356
STATEMENT OF THE CASE
Introduction
Appellants’ application relates to producing, authenticating, and
reading an RFID transponder. Abstract. Claim 1 is illustrative of the
appealed subject matter and reads as follows:
1. A method for producing an RFID transponder, the
method comprising:
providing the RFID transponder with a transponder-
specific identifier;
providing the RFID transponder with a signature usable
for authentication of the transponder; and
generating said signature by signing at least a part of the
transponder-specific identifier, wherein said signature is stored
in a hidden memory of the RFID transponder.
The Examiner’s Rejections
Claims 1-4, 6-12, 15, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Sakazaki et al. (US 2012/0099725 Al; Apr. 26, 2012)
and Oberle (US 2009/0096574 Al; Apr. 16, 2009). Final Act. 4-18.
Claims 13, 14, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sakazaki, Oberle, and Collins et al. (US 2005/0049979
Al; Mar. 3, 2005). Final Act. 18-20.
ANAFYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
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Application 13/924,356
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
Claim 1
Appellants argue the Examiner erred in rejecting claim 1 because the
combination of Sakazaki and Oberle does not teach or suggest a “hidden
memory.” App. Br. 5, Reply Br. 2. In particular, Appellants argue that
instead of teaching a hidden memory, Oberle teaches a password protected
memory. App. Br. 5 (citing Oberle 30, 32).
The Examiner finds the claimed “hidden memory,” interpreted in
view of the Specification, includes memory accessible only by means of
dedicated commands. Ans. 2, see also Spec. 6:24-26, 7:19-24. In response,
Appellants argue Oberle’s password protected memory is different than
hidden memory and the Examiner has “unreasonably broadened the meaning
of ‘hidden.’” Reply Br. 2.
Oberle teaches an RFID device with publicly accessible memory and
password protected memory. Oberle 1 80. Authentication data is stored in
the password protected memory. Id. The authentication data can only be
accessed by retrieving an encrypted password from the publicly accessible
memory, decrypting the password, and using the password to access the
protected memory. Id.
The issue before us turns on the claim construction of “hidden
memory.” As a matter of claim construction, we apply the broadest
reasonable interpretation of claim terms, consistent with the specification, as
would be understood by one of ordinary skill in the art. In re Am. Acad, of
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Application 13/924,356
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). In
light of the Specification’s example of “hidden memory” being accessible by
dedicated command from a reader (see Spec. 6:24-26, 7:19-24), we agree
with the Examiner that the broadest reasonable interpretation of “hidden
memory” includes Oberle’s teaching of a reader using a decrypted password
to access a portion of memory that is not publicly accessible. Appellants
have not provided persuasive argument or identified any persuasive evidence
to support a narrower definition of “hidden memory.” Accordingly, we are
not persuaded the Examiner erred in finding Oberle teaches a “hidden
memory” as the term is used in claim 1. We, therefore, are not persuaded
the Examiner erred in rejecting claim 1.
Appellants argue the patentability of independent claims 7 and 12 for
the same reasons as claim 1. See App. Br. 5. We, therefore, also sustain the
rejection of independent claims 7 and 12. We also sustain the rejection of
dependent claims 2—4, 6, 8-11, 13, 14, 16, and 17, which were not argued
separately from their respective independent claims. See App. Br. 7-8.
Claims 15 and 18
Claim 15 recites “[t]he method of claim 1, wherein the hidden
memory is only accessible by means of dedicated commands.” Similarly,
claim 18 recites “[t]he non-transitory medium of claim 12, wherein the
hidden memory is only accessible by means of dedicated commands.”
Appellants argue the Examiner erred in rejecting claims 15 and 18 because
Oberle does not teach or suggest a “hidden memory” that is accessible only
by “dedicated commands.” App. Br. 6, Reply Br. 3. Appellants’ argument
has not persuaded us of Examiner error for the reasons set forth above with
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Application 13/924,356
respect to claim 1. We, therefore, sustain the rejections of claims 15 and 18
for the same reasons.
DECISION
We affirm the decision of the Examiner to reject claims 1—4 and 6-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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