Ex Parte Corda et al

Patent Trial and Appeal Board

Sep 29, 2016

12679874 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/679,874 03/24/2010
65913 7590 10/03/2016
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
FIRST NAMED INVENTOR
Alexandre Corda
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
81343087 US06 1211
EXAMINER
PYZOCHA, MICHAEL J
ART UNIT PAPER NUMBER
2437
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDRE CORDA, LUIS BOBO, and
JONATHAN AZOULAI
Appeal2014-009206
Application 12/679,874
Technology Center 2400
Before JAMES R. HUGHES, CATHERINE SHIANG, and
KAMRAN JIVANI, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATE1\1ENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Decision rejecting claims 17, 18, and 20. Claims 14--16
and 19 have been canceled (Final Act. 1-2.) 1 The Examiner indicates claims
1-13 include allowable subject matter. Final Act. 8. We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse.
1 We refer to Appellants' Specification ("Spec.") filed Mar. 24, 2010
(claiming benefit of EPO 07291159.7, filed Sept. 27, 2007); Appeal Brief
("App. Br.") filed Apr. 4, 2014; and Reply Brief ("Reply Br.") filed Aug. 27,
2014. We also refer to the Examiner's Answer ("Ans.") mailed Aug. 6,
2014 and Final Office Action (Final Rejection) ("Final Act.") mailed Jan.
10, 2014.
Appeal2014-009206
Application 12/679,874
Appellants ; Invention
The invention at issue on appeal concerns secure elements
(apparatuses) for providing (granting) a trusted service provider access to
applications stored in the secure element (i.e., a Smart device). The secure
element includes an arithmetic-logic unit and a memory storing a plurality of
applications and instructions for receiving a first access code from a
"Trusted Services Manager," and associating and storing the first access
code with the applications. The access code is utilized to restrict access to
the applications. (Spec. 1:7-20; 4: 14--7:3; Abstract.)
Illustrative Claim
Independent claim 1 7, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
17. A secure element comprising an arithmetic-logic unit and
a non-transitory memory, the non-transitory memory storing a
plurality of applications, the non-transitory memory further
comprising instructions for:
receiving a first access right code from a Trusted Services
Manager;
storing the first access right code in association with a set
of the applications, the first access right code restricting access
to the set of the applications;
connecting to a wallet that is installed in the secure
element;
receiving from the wallet a second access right code;
comparing the second access right code to the stored first
access right code; and
if the access right codes match, granting the wallet access
to the set of applications installed in the secure element which
are restricted by the first access right code.
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Appeal2014-009206
Application 12/679,874
Rejections on Appeal
1. The Examiner rejects claims 17 and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Zhu (US 8,285,329 Bl, issued Oct. 9,
2012 (filed Apr. 2, 2007)), Kwok (US 2005/0050366 Al, pub. Mar. 3,
2005), and Fisher (US 2003/0231103 Al, pub. Dec. 18, 2003).
2. The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over Zhu, Kwok, Fisher, and Takayama (US
2009/0055284 Al, pub. Feb. 26, 2009 (filed Apr. 19, 2006)).
ISSUE
Based upon our review of the administrative record, Appellants'
contentions, and the Examiner's findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in concluding that Zhu, Kwok, and Fisher
would have taught or suggested "receiving a first access right code from a
Trusted Services Manager" and "storing the first access right code in
association with a set of the applications, the first access right code
restricting access to the set of the applications" as recited in Appellants'
claim 17?
ANALYSIS
Appellants contend that Zhu, Kwok, and Fisher do not teach the
disputed features of claim 17. App. Br. 3-7; Reply Br. 2--4. Specifically,
Appellants contend that Kwok, cited by the Examiner as teaching the first
access right code stored and associated within a set of the applications and
restricting access to the set of the applications (see Final Act. 5-7), does not
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Appeal2014-009206
Application 12/679,874
teach the access right code. App. Br. 3-7; Reply Br. 2--4. Appellants
contend Kwok instead describes a PIN code that is not stored with and does
not restrict access to a set of applications. App. Br. 7.
We agree with Appellants that Kwok does not teach the recited right
access code. See App. Br. 3-7; Reply Br. 2--4. The Examiner points (see
Final Act. 5-7; Ans. 3, 5-7) to separate features of Kwok, namely the secure
key or certificate (Kwok i-f 10), PIN code (Kwok i-fi-125-26; Fig. 3), and web
page (Kwok i-f 25; Fig. 3) as teaching the access code (right access code) and
set of applications. The Examiner further maintains Kwok describes
restricting access to the applications in that Kwok describes blocking a user
(exiting a user from a procedure) if an incorrect PIN is entered too many
times (see Kwok i-f 26; Fig. 3). Ans. 5-7; Final Act. 6-7. We agree with
Appellants that the Examiner conflates the various teachings of Kwok and
does not sufficiently explain how Kwok teaches the recited right access
code. App. Br. App. Br. 3-7; Reply Br. 2--4.
Consequently, we are constrained by the record before us to find that
the Examiner erred in concluding that Zhu, Kwok, and Fisher teach the
disputed limitations of Appellants' claim 1 7. Claim 18 depends on claims
17. Accordingly, we reverse the Examiner's obviousness rejection of claims
17 and 18.
With respect to dependent claim 20 rejected as obvious over Zhu,
Kwok, and Fisher, as well as Takayama, we reverse the Examiner's
obviousness rejection for the same reasons set forth with respect to claim 17
(supra). The Examiner does not suggest that the addition of Takayama cures
the deficiencies of Kwok (discussed supra).
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Appeal2014-009206
Application 12/679,874
CONCLUSION
Appellants have shown that the Examiner erred in rejecting claims 17,
18, and 20 under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's rejections of claims 17, 18, and 20.
REVERSED
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