Ex Parte Kim

Board of Patent Appeals and Interferences

Jul 24, 2008

10924301 (B.P.A.I. Jul. 24, 2008)

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