Ex Parte Gorelik

Board of Patent Appeals and Interferences

Jun 24, 2011

10725116 (B.P.A.I. Jun. 24, 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.
10/725,116 12/02/2003 Victor Gorelik 2789
7590 06/24/2011
Dr. Victor Gorelik
Apt. C1
254 73 Street
Brooklyn, NY 11209
EXAMINER
LOUIE, OSCAR A
ART UNIT PAPER NUMBER
2436
MAIL DATE DELIVERY MODE
06/24/2011 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 VICTOR GORELIK
________________

Appeal 2009-006970
Application 10/725,116
Technology Center 2400
________________

Before MAHSHID D. SAADAT, JASON V. MORGAN, and
BRUCE R. WINSOR Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 – 5. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
1. A method for securely submitting biometric data from
a client to a server comprising the steps of:
performing sampling of a real biometric characteristic at
the client; and
shuffling arrays of real biometric characteristics in the
sequence known at client only to thereby generate
twisted biometric data; and
submitting the twisted biometric data from the client to
the server.
5. A system for secure use of biometric data comprising:
the means for performing twisted sampling by changing
the sequence of terms in biometric array and and/or
identification of the client.
(App. Br. 16, Claims App’x).
Rejections and Appellant’s Contentions
Appellant contends that the Examiner erred in rejecting claims 1 – 5
under 35 U.S.C. § 103(a) as being unpatentable over Buffam (US 6,185,316
B1) and Scheidt (US 6,542,608 B2) because:
Every one of my 5 claims is different from Buffam’s and
Scheidt’s inventions:
- claim 1 describes the shuffling of coordinates of true biometric
points instead of creating additional false points (Buffam) or
randomizing of a digital string corresponding to biometric
vector (Scheidt);
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- claim 2 states that the shuffling is done on the basis of
information known only to the user instead of calculation of
new false points (Buffam) or instead of randomization on the
basis of user’s identifying data (Scheidt);
- claim 3 is additional multiplication of the coordinates instead of
producing encoding key from the false points and plain text
(Buffam) or assembling the key from different splits (Scheidt);
- claim 4 is a comparison of submitted twisted data against
twisted data stored on the server instead of calculating the
cipher text on the basis of submitted real biometric data and
plain text (Buffam) or instead of decoding transmitted text
using composed biometric key (Scheidt);
- claim 5 is a description of means for implementing methods of
claims 1 – 4.
(App. Br. 15).
ISSUES
1. Did the Examiner err in finding that the combination of Buffam and
Scheidt teaches or suggests shuffling arrays of real biometric characteristics
in a sequence known at a client only to thereby generate twisted biometric
data?
2. Did the Examiner err in finding that the combination of Buffam and
Scheidt teaches or suggests the limitations of claim 2?
3. Did the Examiner err in finding that the combination of Buffam and
Scheidt teaches or suggests multiplying arrays of biometric characteristics
by sequences of numbers fixed for each type of array and known at a client
only?
4. Did the Examiner err in finding that the combination of Buffam and
Scheidt teaches or suggests the limitations of claim 5?
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PRINCIPLES OF LAW
The claims in a patent provide the metes and bounds of the exclusive
rights the patent confers on the patentee. Corning Glass Works v. Sumitomo
Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). Arguments for
patentability not based on the limitations actually recited in the claims are
not persuasive. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
While the Examiner bears the initial burden of establishing an initial
case of unpatentability, once that burden has been met the burden of coming
forward with evidence or arguments demonstrating error in the Examiner’s
rejection shifts to the Appellant. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). Mere lawyer’s arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellant’s conclusions with respect to claims 1, 2,
and 5. Except as detailed herein, we adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief. With the exception of
claims 3 and 4, we concur with the conclusions reached by the Examiner.
(1) Whether the Examiner erred in finding that the combination of Buffam
and Scheidt teaches or suggests shuffling arrays of real biometric
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characteristics in a sequence known at a client only to thereby generate
twisted biometric data
We agree with the Examiner that the combination of Buffam with
Scheidt’s disclosure of “randomizing a digital string corresponding to the
biometric vectors 58 with biometric combiner data 60” (col. 5. ll. 36 – 41)
(emphasis added) teaches or suggests the claimed step of “shuffling arrays of
real biometric characteristics in the sequence known at client only to thereby
generate twisted biometric data” (Ans. 3 – 4).
While Appellants argue that shuffling and randomization are different
(App. Br. 15), we do not see a patentable distinction between “shuffling”—
mixing in a mass confusedly (Merriam-Webster’s Collegiate Dictionary
(10th ed., 1993), 1087)—and “randomizing”—selecting, assigning, or
arranging in a way lacking a definite plan, purpose, or pattern (see Merriam-
Webster’s Collegiate Dictionary (10th ed., 1993), 967). In particular,
Appellant has not presented persuasive evidence, and we do not find, that
that randomization somehow precludes multiplication of coordinates, as
opposed to how “shuffling allows multiplication of coordinates” (App. Br.
15) (emphasis added). Appellant also does not even identify any claim
limitations in claim 1 related to such multiplication.
Accordingly, we are not persuaded of error in the Examiner’s
rejection with respect to this issue.
(2) Whether the Examiner erred in finding that the combination of Buffam
and Scheidt teaches or suggests the limitations of claim 2
Appellant does not provide arguments or evidence, based on the
limitations of claim 2 and responsive to the Examiner’s case for
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unpatentability, persuasively showing error in the Examiner’s rejection with
respect to this issue.
(3) Whether the Examiner erred in finding that the combination of Buffam
and Scheidt teaches or suggests multiplying arrays of biometric
characteristics by sequences of numbers fixed for each type of array and
known at a client only
As discussed above, Appellant does not identify any claim limitations
in claim 1 related to multiplication. In contrast, claim 3 recites
“the step of multiplying the arrays of biometric characteristics by the
sequences of numbers fixed for each type of array and known at the client
only” (Claims App’x 16).
The Examiner relies on Buffam’s disclosed use of “[f]alse image
points [that] are generated and [that] are selectively interposed among a
chosen subset of the true image points, forming a transient template” (col.
12, ll. 10 – 12)” as teaching or suggesting the claimed array multiplication
(Ans. 5 – 6). However, Appellant provides examples that illustrate the
distinction between array multiplication (e.g., multiplying the sequence {3,
10, 2, 7, 1, −1} and shuffled points (22, 35), (34, 11), (10, 23) to produce
points (66, 350), (68, 77), (10, −23)) and false image point generation and
selective interposition (e.g., interposing false points (46, 47), (58, 59) with
true points (10, 11), (22, 23), (34, 35) to create the five points (10, 11), (22,
23), (34, 35), (46, 47), (58, 59)) (App. Br. 6).
The Examiner does not show how inserting fake data, as taught by
Buffam, teaches or suggests array multiplication, even though Appellant has
shown that array multiplication and inserting fake data are distinguishable.
The Examiner also does not show that Scheidt cures this deficiency.
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Accordingly, we do not sustain the Examiner’s rejection of claim 3, or of
claim 4 which depends therefrom.
(4) Whether the Examiner erred in finding that the combination of Buffam
and Scheidt teaches or suggests the limitations of claim 5
Appellant does not provide arguments or evidence, based on the
limitations of claim 5 and responsive to the Examiner’s case for
unpatentability, persuasively showing error in the Examiner’s rejection with
respect to this issue. Furthermore, Appellant also does not identify any claim
limitation in claim 5 that incorporates the distinguishing characteristics of
claim 3.
Accordingly, we are not persuaded of error in the Examiner’s
rejection with respect to this issue.
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
claims 1, 2, and 5 are unpatentable because the Examiner did not err in
finding:
1. that the combination of Buffam and Scheidt teaches or suggests
shuffling arrays of real biometric characteristics in a sequence known at a
client only to thereby generate twisted biometric data;
2. that the combination of Buffam and Scheidt teaches or suggests the
limitations of claim 2; and
3. that that the combination of Buffam and Scheidt teaches or suggests
the limitations of claim 5.
We conclude that the Examiner has not demonstrated that claims 3
and 4 are unpatentable because the Examiner erred in finding that the
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combination of Buffam and Scheidt teaches or suggests multiplying arrays
of biometric characteristics by sequences of numbers fixed for each type of
array and known at a client only.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, and 5.
We reverse the Examiner’s decision rejecting claims 3 and 4.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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