Ex parte KAPP et al.

Board of Patent Appeals and Interferences

Jun 22, 1998

08233546 (B.P.A.I. Jun. 22, 1998)

Application for patent filed April 26, 1994. 1
According to appellants, the application is a continuation of
Application 07/930,964, filed August 17, 1992.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL A. KAPP,
FLOYD JONES,
TOM DONNELLY,
DAVID A. ELLIS,
DAVID M. ALLGEIER, and
ROBERT L. PROTHEROE
__________
Appeal No. 95-3991
Application 08/233,5461
__________
ON BRIEF
__________
Before THOMAS, JERRY SMITH, and BARRETT, Administrative Patent
Judges.
Appeal No. 95-3991
Application 08/233,546
2
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 21, 23 and 33-37,
which constitute all the claims remaining in the application.

The disclosed invention pertains to a method and
apparatus for enhancing security with respect to
identification of a user of a business terminal.
Specifically, the invention considers three different security
measures. First, the invention alters the keyboard
configuration on a touch-screen display to make finger pattern
movement irrelevant to an observer. Second, the invention
alters the location of the keyboard on a touch-screen display
to make surreptitious copying more difficult. Finally, the
disclosed invention checks a signature input by the user as a
form of identification in addition to the standard personal
identification number.
Appeal No. 95-3991
Application 08/233,546
3
Representative claim 21 is reproduced as follows:
21. A process for enhancing security with respect to
identification of a user of a business terminal in a system,
comprising the following steps:
(a) providing a combined touch screen and display on
which a chosen one of a plurality of keyboard configurations
may be displayed in a chosen location on the display, with
certain areas of the display representing different keyboard
values at different times in accordance with the particular
keyboard configuration chosen;
(b) providing a particular keyboard configuration in a
chosen location on the display;
(c) entering personal identification data into the
combined touch screen and display by contacting selected areas
of the configuration on the combined touch screen and display
on which data representations appear;
(d) providing an area for entry of a user signature on
the screen;
(e) entering a user signature on the combined touch
screen and display; and
(f) verifying the identity of the user of the business
terminal by comparison of the personal identification data and
the signature with corresponding data contained in the system.
The examiner relies on the following references:
Hirsch 4,479,112 Oct. 23, 1984
Dunkley et al. (Dunkley) 4,752,965 June 21, 1988
Thrower 4,857,914 Aug. 15, 1989
Cairns 4,962,530 Oct. 09, 1990
Winn et al. (Winn) 4,970,655 Nov. 13, 1990
Appeal No. 95-3991
Application 08/233,546
4
Sklarew 4,972,496 Nov. 20, 1990
Robert Cowart, Mastering Windows 3.1, Special Edition, 1993,
pages 16-17 and 418-419 (Windows).
Claims 21, 23 and 33-37 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the examiner applies the
prior art as follows:
1. Claim 21 - the teachings of Winn, Sklarew and
Dunkley;

2. Claim 23 - the teachings of Winn, Sklarew, Dunkley,
Thrower and Hirsch;
3. Claim 33 - the teachings of Winn, Sklarew, Dunkley,
Thrower, Windows and Cairns;
4. Claim 34 - same as claim 33;

5. Claim 35 - the teachings of Winn, Sklarew, Dunkley,
Windows, Thrower and Hirsch;
6. Claim 36 - the teachings of Winn, Sklarew, Dunkley,
Thrower, Cairns, Windows and Hirsch;
and
7. Claim 37 - the teachings of Thrower, Cairns,
Windows and Hirsch.

Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
Appeal No. 95-3991
Application 08/233,546
5
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellants'
arguments set forth in the brief along with the examiner's
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner's answer.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 21, 23 and 33-37. Accordingly, we
reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Appeal No. 95-3991
Application 08/233,546
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In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by
the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992).
Appeal No. 95-3991
Application 08/233,546
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1. The rejection of claim 21.
The examiner asserts that Winn teaches the steps of
claim 21 except for the handwriting entry, the touch screen
and the signature verification. The examiner cites Sklarew
for teaching that handwriting entry on a touch screen is an
art-recognized alternative to keyboard entry. The examiner
cites Dunkley for teaching signature verification for security
purposes [answer, pages 5-6]. In the examiner’s view, all the
steps of claim 21 are suggested by these three references, and
the only issue is whether it would have been obvious to
combine the references within the meaning of 35 U.S.C. § 103
[answer, pages 6-7].
Appellants argue that the references relied upon,
whether taken separately or in combination, do not show or
suggest the step of providing a chosen one of a plurality of
keyboard configurations as recited in step (a) of claim 21, or
the entering of personal identification data and a user
signature on the touch screen as recited in steps (c) and (e)
of claim 21 [brief, pages 21-22].
Appeal No. 95-3991
Application 08/233,546
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Although we can agree with the examiner that the broad
recitations of entering personal identification data and a
user signature on a touch screen would have been suggested to
the artisan by the applied prior art, we agree with appellants
that none of the applied prior art suggests the step of
providing a chosen one of a plurality of keyboard
configurations on the touch screen display. The preferred
embodiment of Winn uses a conventional, fixed keyboard 20.
Although Winn suggests that a touch screen could replace the
keyboard [column 6, lines 58-62], Winn would suggest nothing
more than that the fixed mechanical keyboard could be a fixed
touch screen keyboard. None of the art applied by the
examiner has any suggestion of a changing keyboard
configuration wherein the display represents different
keyboard values at different times.
Since the examiner has not identified how the applied
prior art teaches step (a) of claim 21, and since we can find
no basis in the applied prior art for the obviousness of step
(a) of claim 21, we conclude that the examiner has failed to
establish a prima facie case for the obviousness of claim 21.
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Application 08/233,546
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Therefore, we do not sustain the rejection of claim 21 based
on the prior art applied by the examiner.
2. The rejection of claim 23.
Claim 23 depends from claim 21 and adds the step of
selecting a particular one of the plurality of keyboard
configurations to over-ride the keyboard configuration
provided by the system in response to data read by a card
reader. Since claim 23 depends from claim 21, the prior art
teachings of Winn, Sklarew and Dunkley also do not suggest the
invention of claim 23. However, the examiner has added the
teachings of Thrower and Hirsch in support of the rejection of
claim 23. Thrower and Hirsch each teaches the concept of
varying the appearance of a keyboard display to enhance the
security of data input. In our view, the additional teachings
of Thrower and Hirsch would have suggested to the artisan the
obviousness of broadly changing keyboard configurations on a
touch screen display. The examiner also cites the general art
of automated teller machines (ATMs) as an example of using a
personal card to enter data into a business terminal.
Finally, the examiner also asserts that the configuration of
Appeal No. 95-3991
Application 08/233,546
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an ATM is user-specified such as when making the multiple
language selection [answer, pages 8-10].
Appellants argue that "the examiner has failed to cite
as a reference any ATM machine which employs the process
recited in claim 21 or in which data is entered from a user’s
personal card by use of a reader to select a particular one of
a plurality of available keyboard configurations to over-ride
the keyboard configuration provided by the system, as recited
in claim 23" [brief, page 26].
We find ourselves in agreement with appellants. The
examiner’s reliance on the supposed operation of generic ATM
systems is unsupported by the prior art relied on in the
rejection. It is also clear that a user-selected input in any
of the machines of the applied prior art does not result in
the over-ride of a keyboard configuration. The applied prior
art teaches either the automatic changing of a keyboard
configuration (Thrower and Hirsch) or a keyboard configuration
which does not change at all (Winn). The examiner’s
contention that the applied prior art suggests the claimed
over-ride of a keyboard configuration simply is not supported
Appeal No. 95-3991
Application 08/233,546
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by the prior art applied against claim 23. Therefore, we do
not sustain the examiner’s rejection of claim 23 based on the
prior art applied by the examiner.
3. The rejection of claims 33 and 34.
The examiner notes that claim 33 is parallel to claim
21 except that instead of dealing with a plurality of keyboard
configurations, claim 33 deals with a plurality of different
locations on different portions of the display, and claim 33
recites a "depiction" of the keyboard [answer, pages 10-11].
The examiner asserts that the different locations on different
portions of the display would have been obvious in view of the
applied prior art. The examiner also cites Windows as an
example of moving a keyboard during entry of information. The
examiner cites Cairns for teaching the changing of a keyboard
depiction [answer, page 11].
Appellants argue that the "references relied upon are
believed to be lacking in a showing or suggestion of a
capability of moving a keyboard configuration depiction to
different locations on a combined touch screen and display"
[brief, page 28]. We agree with appellants’ assessment. We
Appeal No. 95-3991
Application 08/233,546
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fail to see how the broad teaching of an ability to move a
window in the Windows operating environment would have
suggested the claimed step of moving the location of a
keyboard depiction on the touch screen of a business terminal.
The examiner has not applied any prior art which relates to
the claimed security feature of selecting one of a plurality
of different locations on a touch screen for displaying a
depiction of a keyboard. We do not sustain the rejection of
claim 33 based on the applied references.
Claim 34 depends from claim 33 and is rejected on the
same combination of references. Therefore, the rejection of
claim 33 clearly cannot be sustained. We note for the record,
however, that the examiner now argues that Thrower teaches the
changing of keyboard locations as recited in the claim
[answer, page 24]. We view Thrower as teaching the relocation
of keys within the keyboard area, but not the relocation of
the keyboard itself. Specifically, Thrower teaches
"scrolling" the character-to-key assignments to make it
impractical for an observer to interpret the inputted
information. Thrower states that "[b]y 'scrolling' the array
Appeal No. 95-3991
Application 08/233,546
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of assigned characters is meant a stepwise shifting of the
lines of characters within the array in any coordinate
direction thereof" [column 2, lines 19-21]. We view this
passage as teaching that the keyboard array does not change
locations, but only the key assignments are scrolled. Thus,
Thrower does not suggest the changing of the location of the
depiction of the keyboard configuration from one location to
another as recited in claim 34.
4. The rejection of claim 35.
The examiner basically relies on the arguments made
against claim 34 as supporting the rejection of claim 35
[answer, pages 14-15]. For purposes of our consideration, it
is sufficient to note that claim 35 recites a processing means
"capable of displaying any one of a plurality of selected
keyboard configurations in any one of a plurality of different
locations on different portions of the display." For reasons
discussed above with respect to the rejection of claims 33 and
34, this concept of changing the location of the keyboard on
the display is not suggested by any of the prior art
Appeal No. 95-3991
Application 08/233,546
14
references applied by the examiner. Accordingly, we do not
sustain the rejection of claim 35.
5. The rejection of claim 36.
Claim 36 has a recitation substantially the same as
the recitation quoted from claim 35 above. None of the
applied prior art teaches this feature for reasons discussed
above. Therefore, we do not sustain the rejection of claim
36.
6. The rejection of claim 37.
Claim 37 is broader in many respects than the other
independent claims, but claim 37 recites the step of
overriding the provided keyboard configuration with a
configuration selected by the user in response to data read
from a personal card. All the arguments made by the examiner
in support of the rejection of claim 37 have been considered
in our discussion above. Appellants argue that "[n]owhere in
any of the references has there been found a showing or a
suggestion of the concept of employing data from a user’s
Appeal No. 95-3991
Application 08/233,546
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personal card entered by a card reader to over-ride a provided
keyboard configuration and replace it with a configuration
selected by the user" [brief, page 34].
For reasons discussed above with respect to claim 23,
we agree with appellants that the over-ride feature of claim
37 is not suggested by any of the applied references.
Therefore, we do not sustain the rejection of claim 37.
In summary, we have not sustained any of the
examiner’s rejections of the claims based on the prior art
applied by the examiner. Accordingly, the decision of the
examiner rejecting claims 21, 23 and 33-37 is reversed.

REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
Appeal No. 95-3991
Application 08/233,546
16
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Douglas S. Foote
AT&T Global Information Solutions Company
Law Department
Intellectual Property Section
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