Ex Parte Machida

Patent Trial and Appeal Board

Apr 29, 2013

10839921 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte AKIHIRO MACHIDA

________________

Appeal 2011-000093
Application 10/839,921
Technology Center 2600
________________

Before TREVOR M. JEFFERSON, JOHN G. NEW, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000093
Application 10/839,921

2
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-22. Specifically, claims 1-6, 9-16,
and 19-22 stand rejected as unpatentable under 35 U.S.C. § 103(a) as being
obvious over the combination of Bolle et al. (US 2004/0042642 A1, March
4, 2004) (“Bolle”) and Kashi et al. (US 5,828,772, October 27, 1998)
(“Kashi”). Claims 7, 8, 17, and 18 stand rejected as unpatentable under 35
U.S.C. § 103(a) as being obvious over the combination of Bolle, Kashi, and
Baharav et al. (US 2004/0208348 A1, October 21, 2004) (“Baharav”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to finger-based identification
systems and methods. Briefly, a two-dimensional fingerprint image of a
person’s finger contacting an input surface is captured. Finger trace data is
captured from movement of the person’s finger over the input surface.
Based on the captured two-dimensional fingerprint image and the captured
finger trace data, a determination is made whether the person corresponds
to an enrolled person. Abstract.

GROUPING OF CLAIMS
Because Appellant argues that the Examiner erred for substantially
the same reasons with respect to claims 1-22, we select claim 1 as
representative. App. Br. 6, 10, 11. Claim 1 recites:
1. An identification method, comprising:

Appeal 2011-000093
Application 10/839,921

3
capturing a two-dimensional fingerprint image of a
person's finger contacting an input surface during a capturing
mode;

capturing finger trace data of a movement of the person's
finger relative to the input surface as the person's finger moves
relative to the input surface during a finger navigation mode;

converting the finger trace data into a sequence of
directional symbols to form a trace data passcode; and

determining whether the person corresponds to an
enrolled person based on the captured two-dimensional
fingerprint image and the trace data passcode.

App. Br. 13.
ISSUES AND ANALYSES
We address each of Appellant’s arguments seriatim, as presented in
Appellant’s Brief.

Issue 1
Appellant argues that the Examiner erred because Bolle teaches away
from the claimed invention. App. Br. 7. We therefore address the issue of
whether the Examiner so erred.

Analysis
Appellant argues that Bolle teaches or suggests implementing
rotational, rather than translational, movements. App. Br. 7. Appellant
asserts that, specifically, Bolle teaches away from translational movements
such as sliding a finger, palm, or other unit over the input surface. Id.
(citing Bolle, ¶ [0056]). Moreover, Appellant argues, Kashi detects
Appeal 2011-000093
Application 10/839,921

4
movements of a stylus over a signature pad and reduces the signature to a
plurality of vector links that represent the signature input at the pad. App.
Br. 8.
Appellant therefore contends that Bolle teaches away from
implementing a sliding motion that would form a signature and,
consequently, teaches away from using the movements towards which
Kashi is directed.
The Examiner responds that Bolle teaches that “[t]he present
invention achieves these and other objectives by extracting the motion
(including rotational) component from a sequence of distorted finger or
palm-print images acquired in a time-continuous fashion.” Ans. 12
(quoting Bolle, ¶ [0027]). The Examiner finds that Bolle further teaches
that “[a]ffine motion M 1130 can transform shape 1140 into shape 1145 in
FIG. 11B and quantifies translation 1150, rotation 1152 and shear 1154 due
to image flow ….” Ans. 12 (quoting Bolle, ¶ [0068]; see also Fig. 11).
Consequently, finds the Examiner, Bolle teaches that time-continuous
finger sequence motion data can be detected; not only as a rotational
component but also as translational (i.e., sliding) and shearing components.
Ans. 12.
We are persuaded by the Examiner’s reasoning. A reference may be
said to “teach away” when “a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Appellant relies on Bolle’s teaching that “[Fig. 5] is an example of a
resultant fingerprint biometric where the user can rotate the finger on the
Appeal 2011-000093
Application 10/839,921

5
fingerprint reader 510 (without sliding over the glass platen).” Bolle,
¶ [0056]; see App. Br. 7. However, the cited paragraph does not discourage
the use of translational or shearing components, nor lead a person of
ordinary skill in a divergent direction, but merely teaches that, in one
embodiment, rotational movement is sufficient. Bolle, ¶ [0056]. We agree
with the Examiner that, contrary to Appellant’s argument, Bolle also
teaches or suggests that translational and shearing motions, in addition to
rotational movements, of the finger on the glass platen may be used. Bolle,
¶ [0068], Fig. 11B; see Ans. 12. We therefore find that Bolle does not teach
away from combination with Kashi and conclude that the Examiner did not
err in combining the cited prior art references.

Issue 2
Appellant argues that the Examiner erred in failing to provide a
rational underpinning for his prima facie finding of obviousness because
there is no showing of a small data size in the proposed combination of
Bolle and Kashi. App. Br. 8. We therefore address the issue of whether the
Examiner so erred.

Analysis
Appellant argues that, in finding that the combination of Bolle and
Kashi would result in a “small” size, it is unclear what is meant by “small.”
App. Br. 8. Appellant contends that the term “small” is a relative term and,
therefore, insinuates that the data size must be smaller than some other data
size within the scope of the combination. Id. Appellant argues that there is
no indication that the suggested combination of teachings from Bolle and
Appeal 2011-000093
Application 10/839,921

6
Kashi might result in a data size that is smaller than the data used in Bolle
or Kashi, individually. Id. Rather, argues Appellant, the proposed
combination would appear to merely result in adding to the data package of
Bolle and the combination would have a larger data size than that taught in
Kashi. App. Br. 8-9.
The Examiner responds that Kashi teaches a methodology as a
stroke-direction code (SDC) with smaller data size. Ans. 14 (quoting
Kashi, col. 1, ll. 59-62 (“[I]t is desirable to characterize the entrant's
signature by a set of numerical parameters which, although relatively small,
still identify that person’s signature with a high degree of confidence”)).
Moreover, the Examiner finds that a person of ordinary skill in the
contemporaneous art would have been motivated to include the personal
identification system of Bolle with the application of sequence of
directional symbols to trace data, as taught by Kashi, which provides a
smaller data size. Ans. 7.
We are not persuaded by Appellant’s argument. The U.S. Supreme
Court admonishes us, when conducting an obviousness analysis, to be
mindful that:
[a]lthough common sense directs one to look with care at a
patent application that claims as innovation the combination of
two known devices according to their established functions, it
can be important to identify a reason that would have prompted
a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Specifically, we
are reminded that:
it will be necessary for a court to look to interrelated teachings
of multiple patents; the effects of demands known to the design
Appeal 2011-000093
Application 10/839,921

7
community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.

Id.
We do not agree with Appellant’s implicit contention that the
Examiner must somehow demonstrate that the combination of Bolle and
Kashi would actually result in smaller data size than either reference
individually. App. Br. 8-9. Nor are we persuaded by Appellant’s argument
that the fact that the term “small” is a relative term somehow fails to
support the Examiner’s finding that a person of ordinary skill in the
contemporary art would be motivated to combine the teachings of the cited
prior art references. App. Br. 8.
We find that the Examiner has set forth a rational underpinning of
why an artisan of ordinary skill would be motivated to combine the
teachings of Bolle and Kashi to arrive at Appellant’s claimed invention,
viz., to realize a small data size (as taught by Kashi) for the personal
identification system taught or suggested by Bolle. Ans. 7. Kashi teaches
that methods taught by the prior art “require a relatively large amount of
information about the reference signature to be stored. This requirement is
disadvantageous in applications where only limited storage is available”
and that the method taught or suggested by Kashi is “an efficient and
economical way to add information to the signature code that complements
the global features.” Kashi, col. 1, ll. 55-58; col. 2, ll. 56-58; see Ans. 14.
We find that this is sufficient to satisfy the Examiner’s prima facie burden
to show motivation to combine the references.
Appeal 2011-000093
Application 10/839,921

8
Consequently, we conclude that the Examiner did not err by failing to
provide a rational underpinning for the combination of Bolle and Kashi.

Issue 3
Appellant argues that the Examiner erred by failing to provide a
rational underpinning of the Examiner’s prima facie case of obviousness
because there is no showing of a high degree of identification confidence in
the proposed combination of Bolle and Kashi. App. Br. 9. We therefore
address the issue of whether the Examiner so erred.

Analysis
Appellant advances substantially the same argument with respect to
“high degree of confidence” as with respect to “small data size,” supra.
App. Br. 9. Appellant contends that there is no indication that the
suggested combination of teachings from Bolle and Kashi might result in a
degree of confidence that is greater or lesser than the confidence achieved
by either Bolle or Kashi. Id.
The Examiner responds that one of ordinary skill in the art would
recognize “that Bolle’s system, which uses a parameter based matching
technique, is incomplete in the absences of directly relating the shape of the
components of a signature and would result in an incomplete record of the
signature, resulting in inconsistencies in identification (as taught by
Kashi).” Ans. 15. The Examiner finds that applying Kashi’s technique of
stroke-direction code (SDC) directly relating the shape of the components
of a signature by converting the signature into a sequence of directional
vectors in Bolle’s system would result in a complete record of the signature,
Appeal 2011-000093
Application 10/839,921

9
which would eliminate inconsistencies between the same individual’s
signatures and result in a high degree of identification confidence. Id. The
Examiner concludes that it would have been obvious at the time the
invention was made, that one of ordinary skill in the art would have been
motivated to include the Bolle’s personal identification system with the
application of sequence of directional symbols to trace data, as taught by
Kashi, because of the higher degree of identification confidence taught by
Kashi. Ans. 7.
We agree with the Examiner for the reasons related supra with
respect to the issue of smaller data size. We consequently conclude that the
Examiner did not err by failing to provide a rational underpinning for the
combination of Bolle and Kashi.

Issue
Appellant also argues that the Examiner erred because the
combination of the cited prior art references does not teach all of the
limitations of claim 1. App. Br. 10. We therefore address the issue of
whether the Examiner so erred.

Analysis
Appellant argues that the combination of Bolle and Kashi does not
teach a capturing mode and a navigation mode. App. Br. 10. Appellant
contends that Bolle teaches only the verification of a finger or palm print
through comparing the images against a template to analyze the distortion
of the image under the presence or absence of torque and force. Id.
Appellant argues that Bolle teaches that the input action is a single action
Appeal 2011-000093
Application 10/839,921

10
that is input as a one-dimensional function of time. Id. (citing Bolle, ¶
[0055]). Appellant therefore argues that Bolle does not teach separate
capture and navigation modes, as recited in claim 1. App. Br. 10.
The Examiner responds that Bolle teaches or suggests the traditional
fingerprint identification 202 with input 250 and numeral 204 for the
changing appearance of the biometric over time (i.e., fingerprints trace data)
identification with input 260. Ans. 15-16 (citing Bolle, Fig. 3D). The
Examiner finds that Bolle teaches that: “[i]n the present preferred
embodiment, a template for a resultant biometric is a combination of a
traditional template of the biometrics and a template describing the
changing appearance of the biometric over time.” Ans. 16 (quoting Bolle, ¶
[0044]). The Examiner therefore finds that Bolle teaches fingerprint
capturing mode (i.e., the traditional biometrics template) and fingerprint
trace navigation mode (i.e., the template describing the changing
appearance of the biometric over time) as inputs in order to apply to the
sequential identification process. Ans. 16.
We are persuaded by the Examiner’s reasoning and adopt it as our
own. Specifically, Bolle’s Fig. 3 teaches the combining of multiple,
different biometrics. Bolle, ¶ [0051]; see Ans. 16. Such biometrics can be
traditional fingerprint methods or motion-induced translational, rotational,
or shear shapes. Bolle, ¶ [0068]; see Ans. 12. We agree with the Examiner
that Bolle therefore teaches or suggests a fingerprint capturing mode (i.e.,
the traditional biometrics template) and a fingerprint trace navigation mode
(i.e., the template describing the changing appearance of the biometric over
time) as inputs in order to apply to the sequential identification process.
Ans. 16. We therefore conclude that the Examiner did not err in finding
Appeal 2011-000093
Application 10/839,921

11
that the combination of Bolle and Kashi teaches or suggests all of the
limitations of claim 1.

DECISION

The Examiner’s rejection of claims 1-22 as unpatentable under 35
U.S.C. 103(a) is affirmed.

TIME PERIOD FOR RESPONSE
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

tj