Ex Parte Kim

Board of Patent Appeals and Interferences

Sep 6, 2011

10896403 (B.P.A.I. Sep. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUNG-HYUN KIM
____________

Appeal 2009-011558
Application 10/896,403
Technology Center 2400
____________

Before ALLEN R. MacDONALD, JEFFREY S. SMITH, and MICHAEL R.
ZECHER, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-16, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2009-011558
Application 10/896,403

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Invention
Appellant’s invention relates to a detection circuit to determine
whether a tampering of a smart card has occurred, the smart card having
shield layers and non-shield layers. A comparator compares the count of
shield layers and non- shield layers to generate and output based on which a
reset signal to protect the smart card can be generated if the smart card has
been tampered. Abstract.

Representative Claim
1. A detection circuit of a chip card with an active
shielding function, the circuit comprising:
a plurality of shield layers;
a plurality of non-shield layers;
a shield layer counter for counting the shield layers and
including a plurality of series-connected count logic modules;
a non-shield layer counter for counting the non-shield
layers and including a plurality of series-connected count logic
modules; and
a comparator for determining whether the chip card has
been tampered by comparing a count value of the shield layer
counter with a count value of the non-shield layer counter,
wherein the plurality of series-connected count logic modules
of the shield layer counter is interrupted by a tampering.

Appeal 2009-011558
Application 10/896,403

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Examiner’s Rejections
Claims 1-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Comerford (US 5,117,457) and Fuhrmann (US
2002/0126792 A1).

ISSUE
Did the Examiner err in finding that Comerford would have taught a
person of ordinary skill in the art at the time of invention that non-shield
layers can be counted and compared?

FINDINGS OF FACT
Comerford
1. Comerford teaches tamper resistant packaging for information
protection in electronic circuitry. Title.
2. A distributor is arranged to selectively energize one or a group
of sense lines. A compare element compares the identity of those sense lines
which should be conducting current with those sense lines which actually are
conducting current. Only if the two patterns match identically does the
compare element allow the power gate to conduct power to the RAM. Col.
7, l. 45 - col. 8, l. 14.
Fuhrmann
3. Furhmann teaches frequency counters that count a reference
frequency and an oscillation frequency of an RC circuit that may be changed
based upon interference of a conductor pattern on a chip card. Abstract, ¶
[0034].

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Application 10/896,403

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PRINCIPLES OF LAW
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Appellant contends that Comerford does not teach a plurality of non-
shield layers that can be counted and compared with the count of the shield
layers. According to Appellant, Comerford is comparing lines that are
expected to be energized to lines that are actually energized. Appellant
further contends that Furhmann provides frequency counters that count a
reference frequency and an oscillation frequency of an RC circuit that may
be changed based upon interference of a conductor pattern on a chip card.
According to Appellant, the frequency counters of Fuhrmann do not provide
any benefit to the tamper detecting system of Comerford, because
Comerford does not need to count anything. (Br. 5-6.)
The Examiner finds that the “shield layers” recited in claim 1
encompass the sense lines that are energized, as taught by Comerford, and
the “non-shield layers” encompass the sense lines that are not energized.
The Examiner further finds that Comerford directly compares every shield
layer and non-shield layer with what the shield layers and non-shield layers
should be without first counting the layers. The Examiner then finds that if
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Application 10/896,403

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the non-shield layers can be directly compared, the non-shield layers can be
counted and compared. Ans. 11.
We do not agree with the Examiner’s findings. The Examiner has not
shown that Comerford directly compares every shield layer and non-shield
layer with what the shield layers and non-shield layers should be. The
section of Comerford cited by the Examiner only teaches comparing the
sense lines, which should be conducting current (that the Examiner interprets
as “shield layers”), with the sense lines that actually are conducting current.
The cited section of Comerford does not teach comparing sense lines, which
should not be conducting current (that the Examiner interprets as “non-
shield layers”), to anything. FF2. Therefore, the Examiner’s finding that
Comerford directly compares every non-shield layer with what the non-
shield layers should be is erroneous. As a result, the Examiner’s finding that
if the non-shield layers can be directly compared, then the non-shield layers
can be counted and compared, is erroneous.
We thus conclude that a person of ordinary skill in the art would not
have added “a non-shield layer counter” as recited in claim 1 to the tamper
resistant packaging of Comerford, because Comerford does not compare,
and therefore would not count, non-energized sense lines. Independent
claims 6, 8, and 15 each contain a limitation similar to that of claim 1 for
which the rejection fails. We do not sustain the rejection of claims 1-16
under 35 U.S.C. § 103.

Appeal 2009-011558
Application 10/896,403

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CONCLUSION OF LAW
The Examiner erred in finding that Comerford would have taught a
person of ordinary skill in the art at the time of invention that non-shield
layers can be counted and compared.

DECISION
The rejection of claims 1-16 under 35 U.S.C. § 103(a) as being
unpatentable over Comerford and Fuhrmann is reversed.

REVERSED

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