Ex Parte Noda et al

Patent Trial and Appeal Board

Dec 17, 2012

10240274 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MASANORI NODA and RYOSUKE IWAI
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Appeal 2010-011006
Application 10/240,274
Technology Center 2400
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Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and
ANDREW CALDWELL, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-3, 5, 8, 9, 27, and 28. Claims 4, 6, 7, and 10-26 are cancelled.
An oral hearing was conducted on this appeal on November 6, 2012. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Supplemental Appeal Brief (filed Mar. 1, 2010), the
Answer (mailed May 13, 2010), and the Reply Brief (filed July 13, 2010).1
Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be waived
(see 37 C.F.R. § 41.37(c)(1)(vii)).

Appellants’ Invention
Appellants’ invention relates to authentication of a user using bio-
information. Spec. 1:7-10.
Claim 1 is illustrative of the invention and is shown below with key
disputed limitations italicized:
1. An authentication method for authenticating a user of a portable
authentication module, comprising:
storing a plurality of types of bio-information of a user on a portable
authentication module;
designating, for each of a plurality of bio-information designation
units, at least one type of bio-information of the plurality of types of
bio-information stored on the portable authentication module to be
used for authenticating the user and associating the designated at
least one type of bio-information with an ID of the user;
receiving, via an input unit associated with one of the plurality of bio-
information designation units, bio-information of said user
corresponding to said at least one type or bio-information designated
for the associated bio-information designation unit;

1 We have not considered the non-compliant Appeal Brief filed on
December 07, 2009, since that brief was superseded by the Supplemental
Appeal Brief filed on March 1, 2010.
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detecting with a detector said bio-information inputted via said input
unit;
comparing, with an authenticator, stored bio-information
corresponding to the user ID stored in said portable authentication
module or in a remote storage medium and the detected bio-
information; and
authenticating a legitimacy of said user based on the comparison
result.

The Examiner’s Rejection2
The Examiner relies on the following prior art references to show
unpatentability:
Piosenka US 4,993,068 Feb. 12, 1991
Hamid US 6,072,891 June 6, 2000
(filed July 24, 1997)
Claims 1-3, 5, 8, 9, 27, and 28 were rejected under 35 U.S.C. § 103(a)
as being unpatentable over Piosenka in view of Hamid. Ans. 4-9.

ANALYSIS
Claims 1 and 3
Appellants do not argue independent claim 3 separately from
independent claim 1. App. Br. 4-6; Reply Br. 1-2. We will therefore treat
claims 1 and 3 as a single claim grouping and select claim 1 as
representative of this group. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that neither Piosenka nor Hamid teaches the step of
“designating” in method claim 1. App. Br. 5-6. Appellants explain that

2 In the Answer, the Examiner withdrew the rejection of claims 1, 2, 5, 9,
and 27 under 35 U.S.C. § 112, second paragraph.
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neither Piosenka nor Hamid teaches a user selecting the bio-information for
each of a plurality of bio-information designation units. Id.
Although claim 1 includes the step of “designating,” the claim
language does not specify the entity that designates. Appellants’
Specification, however, describes how a user or a business may designate
the type of bio-information to be used for authentication. Spec. 52:5-8.
The Examiner acknowledges that Piosenka does not explicitly teach
that a user may designate the type of bio-information to be used for
authentication. See Ans. 5. The Examiner relies upon Hamid for teaching
designation performed by a user. Id. Although the Examiner’s rationale is
reasonable, we find, given the breadth of the claim, that the Examiner’s
reliance on Hamid is technically cumulative to Piosenka.
Piosenka teaches a system for both the generation of a biometric
credential and for the subsequent use of the credential. Col. 1, ll. 6-10.
Piosenka uses the term “authorization” to describe the credential’s
generation and “verification” to describe the credential’s subsequent use.
Col. 4, ll. 30-32; col. 7, ll. 38-44. Piosenka explains that one authorization
segment can support a community of verification sites, each using a different
combination of biometric trait sensors. Col. 5, ll. 12-15. Piosenka also
describes how validation (i.e., verification) sites may perform different
functions and use different biometric sensors. Col. 9, ll. 32-39. Based on
these teachings alone, Piosenka teaches an entity, or community of
verification sites, designating the types of biometric information that must be
collected during the authorization process and subsequently used during the
verification process.
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Piosenka also describes how the same credential is presented at a
point of sales terminal and also used to access a military base. Col. 9, ll. 46-
64. Verification of a user at the point of sale terminal uses a different set of
biometrics than the set used to gain access to the military base. Id. Neither
a financial institution nor the military would allow the other to designate the
biometrics to be used for verification. We therefore conclude that the
Examiner’s reliance upon Hamid was unnecessary and therefore technically
cumulative to Piosenka’s teachings, which actually anticipate claim 1.
However, we are not persuaded that the Examiner erred in rejecting claim 1
as obvious over both Piosenka and Hamid since “‘anticipation is the epitome
of obviousness.’” In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002)
(citation omitted); see also In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979)
(noting that obviousness rejections can be based on references that happen to
anticipate the claimed subject matter).
In the Reply Brief, Appellants argue that the combination fails to
teach associating designated bio-information with an ID of the user. Reply
Br. 1-2. Appellants explain that associating designated bio-information with
an ID of the user is inconsistent with Hamid providing a user the flexibility
to designate the biometric parameters. Id. at 2. Appellants present this
argument for the first time in the Reply Brief. Appellants do not explain
what good cause there might be to consider the new argument. Appellants’
new argument is thus untimely and accordingly, has not been considered.
See Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative).
Even if the argument were timely raised, we are not persuaded that
Appellants identify error in the rejection. Piosenka teaches a credential
storing biometric information as well as optional attribute data such as the
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bearer’s name or social security number, which identify a user. Col. 5, ll.
28-51. When a user’s name and biometric information are stored in a
credential, the identifier and the biometric information are associated. We
therefore conclude that the Examiner’s reliance upon Hamid was
unnecessary and that Piosenka anticipates claim 1. However, we are not
persuaded that the Examiner erred in rejecting claim 1 as obvious over both
Piosenka and Hamid since “‘anticipation is the epitome of obviousness.’”
McDaniel, 293 F.3d at 1385.

Claims 2, 5, 8, 9, 27, and 28
Appellants do not separately argue any of the pending dependent
claims that were rejected under 35 U.S.C. § 103(a). App. Br. 6. We
therefore treat claims 2, 5, 8, 9, 27, and 28 as a single claim grouping and
select claim 5 as representative of this group. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellants argue the Examiner failed to make a prima facie case of
obviousness for the dependent claims for a number of reasons. App. Br. 6.
First, Appellants explain that the Final Office Action states that Piosenka
and Hamid “enable” various limitations of the dependent claims. Id.
Second, Appellants contend that the Examiner fails to ascertain the
differences between the claimed invention and the prior art. Id.
We do not agree with Appellants that the Examiner has failed to make
a prima facie case of obviousness with respect to claim 5. The Examiner
states in the Answer that the “combination enables” the claim. Ans. 7-8.
The “combination” refers to Piosenka and Hamid. While use of the verb
“enable” in an obviousness rejection is somewhat unorthodox, we are
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convinced that the Examiner merely intends to state that the combination
teaches the additional limitation of claim 5. We are not persuaded that the
Examiner’s mere use of terminology that differs from what is customary
rises to the level of reversible error. Nor are we persuaded that the Examiner
erred by failing to ascertain the differences between the claimed invention
and the prior art. The Examiner points to Piosenka to show an
authentication apparatus separate from said portable authentication module
(i.e., card) as in claim 5. Piosenka’s Figure 2 shows the card as separate
from the authentication apparatus. Furthermore, claim 5 is a dependent
claim and incorporates the Examiner’s prior discussion of the parent claim.
The rejection of the independent claims does establish differences between
the claimed invention and the prior art. Since the totality of the Examiner’s
rationale establishes the differences between the claimed invention and the
prior art, we are not persuaded that Appellants have identified reversible
error in the rejection

CONCLUSION
Based on the analysis above, we conclude that Appellants have not
shown that the Examiner erred in rejecting claims 1-3, 5, 8, 9, 27, and 28
under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1-3, 5, 8, 9, 27, and 28
under 35 U.S.C. § 103(a) is affirmed.
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).
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AFFIRMED

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