Ex Parte Bechtel

Patent Trial and Appeal Board

Nov 14, 2017

14033836 (P.T.A.B. Nov. 14, 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.
8855-010B 2578
EXAMINER
STREGE, JOHN B
ART UNIT PAPER NUMBER
2665
MAIL DATE DELIVERY MODE
14/033,836 09/23/2013
4678 7590 11/15/2017
MACCORD MASON PLLC
300 N. GREENE STREET, SUITE 1600
P. O. BOX 2974
GREENSBORO, NC 27402
J. Scott Bechtel
11/15/2017 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 J. SCOTT BECHTEL
Appeal 2017-000854
Application 14/033,836
Technology Center 2600
Before JOHN A. JEFFERY, JEFFREY S. SMITH, and
MICHAEL J. STRAUSS, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-000854
Application 14/033,836
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1—15. This application, serial number 14/033,836 (Appeal 2017-000854), is
a continuation of an application serial number 11/267,365, which had a prior
decision on appeal (Appeal 2012-005171). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a finger guide device with circumscribing
ring. Spec., Title. Claim 1, reproduced below, is representative of the
claimed subject matter:
1. A finger guide device for mounting in alignment with a
fingerprint sensor, the fingerprint sensor being disposed in a
position of a global minimum relative to said finger guide device,
the finger guide device having side surfaces that form a recess
for receiving a finger, the side surfaces having a coefficient of
friction that is sufficiently low for enabling the finger to slide
downwardly until reaching a stable position of global minimum
over the fingerprint sensor, the side surfaces of the finger guide
device having a forward and backward portion, the side surfaces
of the finger guide device having side edges,
whereby the finger guide device aligns the finger with the
fingerprint sensor in essentially the same position in an axial
direction to capture a relevant portion of the finger, said axial
alignment occurring along a forward and backward portion of the
finger guide device, the forward and backward portion of the side
surfaces of the finger guide device guiding the finger toward the
same position in the axial direction over the fingerprint sensor in
a repeatable manner for purposes of identification and
authentication,
whereby the finger guide device aligns the finger with the
fingerprint sensor in essentially the same position in a lateral
direction to capture the relevant portion of the finger, said lateral
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Application 14/033,836
alignment occurring between side edges of the finger guide
device, the side edges of the side surfaces of the finger guide
device guiding the finger toward the same position in the lateral
direction over the fingerprint sensor in a repeatable manner for
purposes of identification and authentication, and
whereby the recess is defined by sloped end walls in the
axial direction, the end wall in the axial direction which, in use,
is adjacent the tip of the user’s finger being more steeply sloped
than the end wall in the axial direction which, in use, is remote
from the tip of the user’s finger,
whereby the finger guide device enables the relevant
portion of the finger to rest in a stable position over the
fingerprint sensor each time identification and authentication is
needed, the finger guide device reducing incidents of “false
rejects” for purposes of identification and authentication of a
person touching the finger guide device, the fingerprint sensor
being in alignment with the finger guide device and in a proper
position to provide the relevant portion of the fingerprint, and
whereby a side surface of the finger guide device has a
higher thermal conductivity than surrounding parts so that heat
is conducted away from the skin more rapidly by said finger
guide device than by the surrounding parts, said finger guide
device having a tactile property of feeling cooler to the touch
than the surrounding parts, thereby communicating to the user
that the finger is placed in the correct area.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schneider
Bechtel
Allen
Tsuda
US 6,937,748 B1
US 7,929,736 B2
US 2004/0124246 A1
JP 3226888
Aug. 30, 2005
Apr. 19, 2011
July 1, 2004
Oct. 7, 1991
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Application 14/033,836
REJECTIONS
The Examiner made the following rejections:
Claims 1—15 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1—21 of U.S. Patent No.
7,929,736. Final Act. 3^1.
Claims 1—8 and 10—15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tsuda and Schneider. Final Act. 4—14.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsuda, Schneider, and Allen. Final Act. 15.
APPELLANT’S CONTENTIONS
1. “Tsuda has no end wall in the axial direction which, in use, is remote
from the tip of the user’s finger [as required by claim 1].” App. Br.
12.
2. The prior art fails to teach or suggest a finger guide device having a
higher thermal conductivity than surrounding parts. App. Br. 13—14.
3. “Schneider's structure is very different than the claimed structure.”
App. Br. 15.
4. Schneider avoids sliding fingers by placing the entire hand on a platen
thereby teaching away from the claim requirement for a low
coefficient of friction to enable a finger to slide. App. Br. 16.
ANALYSIS
Appellant’s arguments are unpersuasive of Examiner error. We adopt
as our own (1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken (Final Act. 2—15), and (2) the reasons
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Application 14/033,836
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 2—9) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
Double Patenting
Appellant has not contested the nonstatutory double patenting
rejection of claims 1—15 over claims 1—21 ofU.S. Patent No. 7,929,736 and,
instead, has filed a terminal disclaimer. App. Br. 6. However, the Examiner
has yet to accept the terminal disclaimer and withdraw the rejection.
Accordingly, we summarily affirm the nonstatutory double patenting
rejection of claims 1—15.
35U.S.C. § 103(a)
Contention 1
Appellant argues Tsuda fails to disclose an end wall remote from the
user’s fingertip. App. Br. 12. The Examiner finds Tsuda’s indentation 101
forms an edge at an end remote from the fingertip disclosing the disputed
end wall. Ans. 3. We agree with the Examiner. Appellant fails to provide
sufficient evidence or explanation to distinguish Tsuda’s recess (i.e.,
indentation) depicted in Figure 5d from the disputed end wall recited in
claim 1.
Contention 2
In connection with Appellant’s contention that the prior art fails to
teach or suggest the disputed portion having a higher thermal conductivity,
Appellant argues, “if the examiner is correct that making the guide of [a high
thermal conductivity material such as] metal is desired because [metal] is a
durable material, then the entire device would be made of metal and the
claimed differing thermal conductivities would not be present.” App. Br. 13.
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Application 14/033,836
The Examiner responds, finding the finger sensor itself could not be made of
pure metal, noting “[t]he finger platen (26 of figure la) as disclosed by
Schneider is not made out of metal, but rather the side post to guide the
finger (16 of figure la) is made out of metal (col. 2 lines 56-65 and col. 5
lines 17-29).” Ans. 6.
Appellant’s argument is unpersuasive of Examiner error. As indicated
by the Examiner, only portions of the Schneider’s fingerprint scanner are
made of metal, other portions are made of nonmetallic materials such the
platen, described by Appellant as being made of glass (App. Br. 16). Thus,
we disagree with Appellant that, according to the Examiner’s rationale, the
entirety of the device needs to be made of metal.
Appellant further argues the Examiner improperly applies the law of
inherency in finding Schneider’s metal posts have a high thermal
conductivity. App. Br. 14. According to Appellant, inherency is only
applicable to anticipation rejections, not to obviousness rejections. Id. The
Examiner responds by directing attention to Appellant’s Specification for
equating metals and metal plated surfaces with materials with high thermal
conductivity. Ans. 5. The Examiner reasons:
[Bjased on the Applicant’s own specification, the limitation of
thermal conductivity making the side surface feel cooler to the
touch, is carried out by making the side surfaces of metal, thus
the teaching of Schneider of using a guide post made of metal
would meet this limitations since it would feel cooler to the touch
than the sensor itself which is not made of metal.
Id.
We are not persuaded by Appellant’s argument. Although we agree
that inherency is only applicable under 35 U.S.C. § 103(a) if the inherent
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characteristic was known to those skilled in the art,1 2the Examiner finds a
metal guide post, as taught by Schneider, was known to those skilled in the
art to have a high thermal conductivity. Ans. 4—6. Therefore, in the absence
of sufficient evidence to the contrary, we agree with the Examiner and find
Appellant’s argument unpersuasive.
In connection with contention 3, Appellant makes the conclusory
statement that “[njeither Schneider nor Choshi[2] suggest applicant’s
invention having a recess such as the one described in claim 1 as: [language
of substantially all of claim 1].” App. Br. 15. Such a contention amounts to
no more than a naked assertion the corresponding elements were not found
in the prior art and are, therefore, unpersuasive of Examiner error. Our rules
requires more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art. 37 C.F.R. § 41,37(c)(l)(iv); see also In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
In connection with contention 4, Appellant argues Schneider guides
the whole hand so as to avoid distortion caused by sliding fingers on the
platen. App. Br. 16. Thus, according to Appellant, Schneider teaches away
from a guide the enables a finger to slide such as disclosed by Tsuda such
that it would be improper to combine their teachings. App. Br. 16—17.
1 See, e.g., PAR Pharm., Inc. v. TWIPharm., Inc., 773 F.3d 1186, 1195—96
(Fed. Cir. 2014) (“[I]n order to rely on inherency to establish the existence
of a claim limitation in the prior art in an obviousness analysis—the
limitation at issue necessarily must be present, or the natural result of the
combination of elements explicitly disclosed by the prior art.”).
2 Although Appellant asserts the Examiner “cites, but does not rely on, U.S.
Patent 7,327,862 to Choshi et al as disclosing metal electrodes as finger
guides” (App. Br. 13—14), we find no such citation in either the Final Action
or Answer.
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The Examiner responds, finding Schneider does not teach away from
sliding a finger because “[f]or a finger to be placed into any finger guide it
would be expected that there might be some contact with the guide and
therefore a certain degree of sliding of the finger over the guide. The fact
that Schneider tries to prevent a finger from sliding in no way teaches
against using [metal] as the material of Tsuda’s finger guide.” Ans. 8.
Appellant’s contention 4 is unpersuasive of error. We agree with the
Examiner in finding Schneider does not avoid all finger sliding motion.
Furthermore, even if Schneider were to teach avoiding certain forms of
sliding, Appellant fails to provide sufficient evidence or argument that the
reference so disparages alternative finger placement methods as to
discourage the ordinary artisan from using a sliding finger insertion
technique as per Tsuda. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997) (holding that merely “express[ing] a preference” falls short of
discouraging one of ordinary skill in the art from following a particular
path); In re Dunn, 349 F.2d 433, 438 (CCPA 1965) (merely teaching an
alternative or equivalent method does not teach away from the use of a
claimed method).
For the reasons discussed supra, we are unpersuaded the Examiner
erred in combining the teachings of Tsuda and Schneider in rejecting claim
1. Instead, we find the Examiner has articulated reasoning based on rational
underpinning, sufficient to support the combination and a conclusion of
obviousness. Final Act. 7—8; Ans. 9.
Because Appellant’s contentions are unpersuasive of Examiner error,
we sustain the rejection of claim 1 under 35 U.S.C. § 103(a) over Tsuda and
Schneider. Appellant addresses the remaining independent claims 2, 3, 10,
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Application 14/033,836
11, and 13—15 as “hav[ing] similar language about placement of a finger [as
required by claim 1].” App. Br. 17. Such assertions do not amount to
separate argument for patentability. Accordingly, we likewise sustain the
rejection of those independent claims under 35 U.S.C. § 103(a) together with
the rejections of dependent claims 4—9 and 12 which are not argued
separately with particularity.
DECISION
We affirm the Examiner’s decision to reject claims 1—15 on the
ground of nonstatutory double patenting.
We affirm the Examiner’s decision to reject claims 1—15 under
35 U.S.C. § 103(a).
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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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