Ex Parte Cihula

Board of Patent Appeals and Interferences

May 26, 2011

10746077 (B.P.A.I. May. 26, 2011)

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.
10/746,077 12/24/2003 Joseph F. Cihula INT.P010 2207
45512 7590 05/27/2011
LAWRENCE CHO ATTORNEY AT LAW
C/O CPA GLOBAL
P.O. BOX 52050
MINNEAPOLIS, MN 55402
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
05/27/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH F. CIHULA
____________

Appeal 2010-001046
Application 10/746,077
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001046
Application 10/746,077

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 20 to 32, 34, 35, and 43 to 55. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).

BACKGROUND
Appellant’s invention is directed to a smart card and more specifically
to a method and apparatus for establishing trust in smart card readers
(Specification 2).
Claim 20 is illustrative:
20. A smart card, comprising:
an attestation verifier unit to test a trustworthiness of a smart card
reader by comparing a test result of a component of the smart card reader
with test result stored on the smart card.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Lee US 5,204,663 Apr. 20, 1993
Deo US 5,721,781 Feb. 24, 1998
Appellant appeals the following rejection:
Claims 20 to 32, 34, 35, and 43 to 55 under 35 U.S.C. § 103(a) as
unpatentable over Deo in view of Lee.

FACTUAL FINDINGS
We adopt the Examiner’s finding of facts as it relates to the rejection of
claims 20 and 22 to 25 found in the Answer at pages 3 to 4 and 7 to 8.

We add the following factual findings:
Appeal 2010-001046
Application 10/746,077

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Deo discloses that the smart card reader sends a certificate to the
smart card so that the smart card can verify the authenticity of the smart card
reader (col. 3, ll. 7 to 13). The certificate contains the serial number of the
smart card reader (col. 6, ll. 7 to 8). Deo does not disclose that the
certificate contains a measurement of anything.
Deo also discloses that if the smart card determines that the terminal-
resident application is not authentic, it will cease all communication and
forego conducting any transactions (col. 9, ll. 17 to 19).
Appellant’s Specification discloses that the smart card 110 tests the
smart card reader 120 for trustworthiness by transmitting a request to the
smart card reader 120 for its trust data. The trust data may include
certificates describing attributes of components of the smart card reader
(Specification 6). The certificates may include a cryptographically signed
description of a manufacturer, model number, or other information of a
component (Specification 7).
Appellant’s Specification further discloses a measurement agent
manager 230 that retrieves measurement values from the measurement agent
127. The measurement values may represent information regarding a
component or state of the smart card reader 120 (Specification 8).
Lee discloses that the smart card reader includes an indicator in the
form of LED 40 that flashes red if the smart card format is not compatible
with the smart card reader (col. 9, ll. 3 to 17). Lee does not disclose an
indicator on the smart card.

Appeal 2010-001046
Application 10/746,077

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ANALYSIS
Claims 20, 22 to 25, and 27
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the prior art relied on by the Examiner fails to
disclose a test result of a component of the smart card reader and that the
comparison performed by Lee is performed by the smart card reader, not the
smart card. We agree with the Examiner that the receipt of the smart card
reader’s certificate is a test of a component of the smart card reader.
Appellant’s Specification discloses that a test of the smart card reader can be
performed by verifying the authenticity of the certificate of the smart card
reader and that this test is a test of the trustworthiness of the smart card
reader. This is what is done in Deo.
In addition, we are not persuaded of error by the Examiner by
Appellant’s argument that a test is not performed by the smart card in Lee
because Deo, not Lee, teaches a smart card testing the trustworthiness of a
smart card reader by verifying the smart card’s certificate. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 20. We will also sustain the rejection as it is directed to claims 22 to
25 and 27 because Appellant has not argued the separate patentability of
these claims.
Claims 26, 35, and 53 to 55
We will not sustain the Examiner’s rejection of claim 26, 35, and 53
to 55 which are dependent on claim 35 because we agree with Appellant that
Appeal 2010-001046
Application 10/746,077

5
the prior art does not disclose a comparator unit that compares measurement
values in data with measurement values stored on the smart card. We do not
agree with the Examiner that the verification of the smart card reader by use
of its certificate is a comparison of measurement values in data by
measurement values stored on the smart card because the certificate does
include measurement values.
Claims 21, 28 to 32, 34, and 43 to 52
We agree with Appellant that Deo does not disclose a smart card with
an indicator to output an indication of trustworthiness of the smart card
reader. We do not agree with the Examiner that Deo discloses this subject
matter at column 9, lines 17 to 19. All that is disclosed in this portion of
Deo is that the smart card will cease communication with a smart card reader
that has been determined to be inauthentic. This does not comprise an
indicator that outputs an indication. In addition, the portion of Deo relied on
by the Examiner relates to the situation in which the smart card has
determined that the smart card reader is not trustworthy and as such does not
relate to an indication that the smart card reader is trustworthy as required by
claim 21. We also agree with Appellant that Lee does not disclose an
indicator on the smart card but rather an indicator on the smart card reader.
Therefore, we will not sustain the rejection as it is directed to claim 21. We
will also not sustain the rejection as it is directed to claims 28 to 32, 34, and
43 to 52 because these claims contain similar recitations to an indicator on
the smart card as is found in claim 21.

Appeal 2010-001046
Application 10/746,077

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DECISION
We affirm the Examiner’s rejection as it is directed to claims 20, 22 to
25, and 27.
We do not affirm the Examiner’s rejection as it is directed to claims
21, 26, 28 to 32, 34, 35, and 43 to 55.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).

ORDER
AFFIRMED-IN-PART

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