Ex Parte KimDownload PDFBoard of Patent Appeals and InterferencesJul 24, 200810924301 (B.P.A.I. Jul. 24, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte RICHARD C. KIM _____________ Appeal 2008-1636 Application 10/924,301 Technology Center 2600 ______________ Decided: July 24, 2008 _______________ Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and ROBERT E. NAPPI, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 6(b) of the final rejection of claims 1 through 33. We affirm in part the Examiner’s rejections of these claims. INVENTION The invention is directed towards a device for verifying the identity of a user. The device includes a pen that can collect biometric information about the user, encrypt the information, and compare the information to stored encrypted biometric information. See page 4 of Appellant’s Appeal 2008-1636 Application 10/924,301 Specification. Claim 1 is representative of the invention and reproduced below: 1. A method for capturing and verifying biometric information, comprising: writing a reference signature using a pen, said pen being configured to record and digitize two or more forms of biometric information; encrypting said biometric information to create an encrypted reference value; writing a signature to be verified using a pen, said pen also configured to record and digitize two or more forms of biometric information; encrypting said biometric information from said signature to be verified to create an encrypted data value; and comparing said encrypted reference value with said encrypted data value to determine if the values substantially match. REFERENCES Curtis U.S. 5,719,691 Feb, 17, 1998 Black U.S. 6,307,956 B1 Oct. 23, 2001 REJECTIONS AT ISSUE Claims 1-4, 6-8, 9-12, 14-23, 25-30, 32, and 33 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Black. The Examiner’s rejection is on pages 3 through 6 of the Answer. Claims 5, 8, 13, 24, and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Black in view of Curtis. The Examiner’s rejection is on pages 6 and 7 of the Answer. Throughout the opinion, we make reference to the Brief (received February 21, 2007), Reply Brief (received August 27, 2007) and the Answer (mailed June 27, 2007) for the respective details thereof. 2 Appeal 2008-1636 Application 10/924,301 ISSUES Rejection 35 U.S.C. § 102(b). Appellant argues on pages 4 through 11 of the Brief that the Examiner’s rejection of claims 1-4, 6-8, 9-12, 14-23, 25-30, 32, and 33 is in error. Appellant asserts that Black does not teach the steps of collecting two or more forms of biometric information that are used to create an encrypted reference value; using similar steps to create an encrypted data value and comparing the two values. Brief 6, Reply Brief 3. Thus, Appellant’s contentions with respect to the rejection of claims 1-4, 6-8, 9-12, 14-23, 25-30, 32, and 33 present us with the issue of whether the Examiner erred in finding that Black teaches collecting two or more forms of biometric information that are used to create an encrypted reference value; using similar steps to create an encrypted data value and comparing the two values. Rejection 35 U.S.C. § 103(a). Appellant argues on pages 11 through 15 of the Brief that the Examiner’s rejection of claims 5, 8, 13, 24, and 31 is in error. Appellant asserts that the combination of Black and Curtis does not teach the steps of collecting two or more forms of biometric information that are used to create an encrypted reference value; using similar steps to create an encrypted data value and comparing the two values. Brief 13. Thus, Appellant’s contentions with respect to the rejection of claims 5, 8, 13, 24, and 31 present us with the same issue as discussed with respect to the rejection under 35 U.S.C. § 102(b) and whether the additional teaching of Curtis makes up for any deficiencies in the rejection under 35 U.S.C. § 102(b). 3 Appeal 2008-1636 Application 10/924,301 PRINCIPLES OF LAW When the term “means” is used in a claim it creates a presumption that the inventor used the term to invoke 35 U.S.C. § 112, sixth paragraph. Altiris, Inc. v Symantec Corp. 318 F3d 1363, 1375 (Fed. Cir. 2003). Under § 112, sixth paragraph, means-plus-function claim language must be construed by “look[ing] to the specification and interpret[ing] that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). “If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claims will be found invalid as indefinite.” Biomedino v. Waters Tech. Co. 490 F.3d 946, 950 (Fed. Cir. 2007). It is wrong to rely upon speculative assumptions as to the meaning of claims and basing a rejection under prior art. In re Steele 305 F.2d 859, 862 (CCPA1962). 37 C.F.R. § 41.37 (c)(1)(v) states: For each independent claim involved in the appeal and for each dependent claim argued separately under the provisions of paragraph (c)(1)(vii) of this section, every means plus function and step plus function as permitted by 35 U.S.C. 112, sixth paragraph, must be identified and the structure, material, or acts described in the specification as corresponding to each claimed function must be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters. 4 Appeal 2008-1636 Application 10/924,301 FINDINGS OF FACT 1. Black teaches a identify verification system that makes use of biometric sensors on a stylus. Abstract. 2. The biometric sensors can measure fingerprints. The stylus also includes sensors that can measure grip, point pressure, position of fingers with respect to each other and point of stylus, angle of stylus during use, speed of signing, etc. Black, col. 7, ll. 53-67. 3. In one embodiment of Black, the stylus has finger print sensors on the grip. When the prints are captured, they are submitted for comparison to the prints of the authorized user. Col. 10, ll. 51-65 4. The stylus can include an insert 50 which includes an encrypted identifier that contains an encrypted reference print and the name of the user of the device. The encrypted identifier can also be contained on a smart card. The encrypted print can be obtained by a similar stylus. Black, col. 11, ll. 15-18, ll. 41-43 and col. 13, ll. 27-30. 5. The print captured by the stylus is compared to the encrypted print, if there is a match the event is allowed if not it is blocked. Col. 11. l. 67 – col. 12 l. 3. 6. Black only discusses encryption of reference prints that have been registered. 7. Black also teaches an embodiment of the stylus where the grip which measures fingerprints is removable, for situations where the fingerprints are not to be used. Col. 16, ll. 33-38. 5 Appeal 2008-1636 Application 10/924,301 ANALYSIS Rejection 35 U.S.C. § 102(b). Independent claims 1 and 9. Initially, we note that while Appellant’s Brief identifies each claim rejected, the statements associated with each claim merely recite the limitations of the claim and state that they are not taught. Such statements are not separate arguments under 37 C.F.R. § 41.37 (c)(1)(v). As such Appellant has grouped all of the claims together. However, as discussed infra, Appellant’s arguments have persuaded us of error in the Examiner’s rejection of the claims which include the argued limitations; we will address each independent claim. Appellant’s arguments have persuaded us that the Examiner erred in finding that Black teaches collecting two or more forms of biometric information that are used to create an encrypted reference value, using similar steps to create an encrypted data value and comparing the two values. Independent claim 1 recites a method of creating an encrypted reference value from two or more forms of biometric information, creating an encrypted data value from two or more forms of biometric information obtained while writing a signature to be verified, and comparing the two encrypted values to determine if there is a match. Independent claim 9 recites similar limitations. We concur with the Examiner’s finding that Black teaches a pen (stylus) where two or more biometric values are captured. Fact 2. These values can be used to create a value that is compared to an encrypted identifier that includes an encrypted reference print. Fact 4. Black teaches that the stylus can also be used to capture the prints to create the reference print. Fact 4. However, Black only mentions 6 Appeal 2008-1636 Application 10/924,301 comparing the captured prints to the encrypted reference prints, and does not discuss encrypting the captured prints prior to comparing the reference prints. Fact 6. Thus, we do not find that Black teaches all of the limitations of claim 1 and we will not sustain the Examiner’s rejection of independent claims 1 and 9 or dependent claims 2 through 4, 6 through 8, 10, 11, 14 and 15 which are similarly rejected under 35 U.S.C. § 102(b). Independent claim16. Independent claim 16 is significantly different from independent claim 1 and does not recite any steps of encrypting or comparing values. As identified above, Appellant’s Brief mentions claim 16, but merely recites the limitations and recites that the features are not taught by Black. On page 5 of Reply Brief, Appellant presents the additional argument: Beyond the Examiner's comment that Black discloses that the pen is in a wireless network, there is no other indication as to why the Examiner believes that Black discloses "a pen for capturing biometric information, comprising a pen with sensors disposed inside, wherein said pen is . . . configured with one or more of a removable grip and a cartridge so that one or more of the grip or the cartridge may be easily replaced by each user." Reply Br. 5. These arguments have not persuaded us of error in the Examiner’s rejection. Claim 16 recites a pen with sensors inside,1 which is communicatively connected to a data acquisition device. From the Examiner’s statements it is clear that the Examiner considers a pen in a 1 We note claim 16 is awkward as it recites “a pen … comprising a pen” (i.e. the pen comprises itself). Perhaps the claim would be clearer if it recited “a 7 Appeal 2008-1636 Application 10/924,301 wireless network to meet such a device. As Appellant’s have not contested this finding by the Examiner, we accept the Examiner’s finding. Further, claim 16 recites that the “pen is further configured with one or more of a removable grip and a cartridge.” Thus, to meet the claim, Black only needs to teach one of a removable grip or a removable cartridge. We find that Black teaches that the pen, with sensors disposed therein, also includes a removable grip with fingerprint sensors. Fact 7. Thus, Appellant’s arguments have not persuaded us that the Examiner erred in rejecting claim 16. As discussed supra, Appellant’s statements directed to dependent claims 17 through 19 are not separate arguments under 37 C.F.R. § 41.37 (c)(1)(vii), thus claims 17 and 19 are grouped as falling with claim 16. Accordingly, we sustain the Examiner’s rejection of claims 16 through 19. Independent claims 20 and 27. As discussed infra, we now reject claims 20 through 23, 25 through 30, 32 and 33 under 35 U.S.C. § 112, second paragraph. As the scope of these claims is indefinite, it is inappropriate to consider the art rejection. In Re Steele 305 F.2d 859, 863. Accordingly, we will not sustain the Examiner’s rejection of these claims under 35 U.S.C. § 102(b). Rejection 35 U.S.C. § 103(a). Claims 5, 8, and 13. Appellant’s arguments have persuaded us of error in the Examiner’s rejection of claim 5, 8, and 13. These claims depend upon independent device ... comprising a pen.” While the claim is awkward we do not consider it to be ambiguous. 8 Appeal 2008-1636 Application 10/924,301 claims 1 or 9. The Examiner’s rejection of theses claims relies upon Black to teach the limitations of the independent claims. As discussed above, we consider the Examiner’s rejection of these claims to be in error. Further, the Examiner has not found, nor do we find that Curtis teaches encrypting the captured prints prior to comparing then to the reference prints (the noted deficiency in the rejection of claim 1). Accordingly, we do not find that the combination of the references teaches all of the limitations of claims 5, 8, and 13 and we will not sustain the Examiner’s rejection of these claims. Claims 24 and 31. As discussed infra, we now reject claim 24 and 31 under 35 U.S.C. § 112, second paragraph. As the scope of these claims is indefinite, it is inappropriate to consider the art rejection. In Re Steele 305 F.2d 859, 863. Accordingly, we will not sustain the Examiner’s rejection of these claims under 35 U.S.C. § 103(a). NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b) Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under 35 U.S.C. § 112. Claims 20 through 33 are Indefinite Under 35 U.S.C. § 112 as failing to particularly point out and distinctly claim the subject matter which Appellant regards as their invention. Independent claim 20 recites “a pen capable of digitizing data relating to the biometric characteristics of the pen during the act of signing.” Appellant’s Specification on page 5, paragraph 0021, states “‘biometric information’ means information relating to the characteristics of the user 9 Appeal 2008-1636 Application 10/924,301 when using the pen.” Thus, the claim is ambiguous and its scope can not be determined as it is unclear how the pen can have biometric information as such information relates to a user and not a pen. Independent claim 20 is drafted using means-plus-function limitations, notably, “means for writing a reference signature using a pen” and “means for writing a signature to be verified using a pen.” Under § 112, sixth paragraph, means-plus-function claim language must be construed by “look[ing] to the specification and interpret[ing] that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). 37 C.F.R. § 41.37 (c)(1)(v) requires Appellant, in the Brief, to identify the corresponding structure. Appellant’s statement on page 3 of the Brief, restates the claim and refers to the “Specification page 2 [sic, 6] paragraph 0024 to page 3 [sic 11] paragraph 36” (this represents all but 4 paragraphs of the detailed description of the invention). Thus, Appellant has not identified the structure corresponding to these means, nor do we find it readily apparent what structure corresponds to the functions related to these limitations. Clearly, the means for writing a signature using a pen, is not a pen, as a pen can not use itself. Although, it is not clear, it appears that the means for writing might be the user, a person, which clearly is not structure. As we can ascertain no corresponding structure of these limitations, we find the claims to be indefinite. See Biomedino v. Waters Tech. Co., 490 F.3d 946, 948. 10 Appeal 2008-1636 Application 10/924,301 CONCLUSION For the foregoing reasons, we sustain the Examiner’s rejections of claims 16 through 19 under 35 U.S.C. § 102(b) and we reverse the Examiner’s rejection of claim 1-4, 6-8, 9-12, 14-17, 20-23, 25-30, 32, and 33 35 U.S.C. § 102(b) and claims 5, 8, 13, 24, and 31 under 35 U.S.C. § 103(a). We have, however, entered a new ground of rejection under 37 C.F.R. § 41.50(b) for claims 20 through 33 under 35 U.S.C. § 112, second paragraph. ORDER The decision of the Examiner is affirmed-in-part. Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides "[a]ppellant may file a single request for rehearing within two months from the date of the original decision of the Board." In addition to affirming the Examiner's rejection(s) of one or more claims, this decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 11 Appeal 2008-1636 Application 10/924,301 37 CFR § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should the Appellant elect to prosecute further before the Examiner pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If the Appellant elects prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Board of Patent Appeals and Interferences for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). 12 Appeal 2008-1636 Application 10/924,301 AFFIRMED-IN-PART 37 CFR § 41.50(b) eld DUBOIS, BRYANT, CAMPBELL & SCHWARTZ, LLP 700 LAVACA STREET SUITE 1300 AUSTIN, TX 78701 13 Copy with citationCopy as parenthetical citation