Ex Parte Suwald

Patent Trial and Appeal Board

Mar 21, 2017

14290176 (P.T.A.B. Mar. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/290,176 05/29/2014 Thomas Suwald 81541361US03 6508
65913 7590
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
CATTUNGAL, DEREENA T
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
03/23/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ip. department .u s @ nxp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS SUWALD
Appeal 2016-008682
Application 14/290,1761
Technology Center 2400
Before CARLA M. KRIVAK, HUNG H. BUI, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—20, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellant, the real party in interest is NXP B.V. App. Br. 1.
2 Our Decision refers to Appellant’s Appeal Brief filed February 29, 2016
(“App. Br.”); Reply Brief filed September 19, 2016 (“Reply Br.”);
Examiner’s Answer mailed September 6, 2016 (“Ans.”); Final Office Action
mailed November 27, 2015 (“Final Act.”); Advisory Action mailed February
23, 2016 (“Advisory Act.”); and original Specification, filed May 29, 2014
(“Spec.”).
Appeal 2016-008682
Application 14/290,176
STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to a security token and transaction
authorization system for multi-factor user authentication. Spec. 1:3—4, 1:22—
23, 4:1—6; Title. According to Appellant, the multi-factor user
authentication authenticates based on multiple factors including “something
a user knows (e.g. [,] a personal identification number), something a user has
(the smart card) and something that characterizes a user (a handwriting
characteristic).” Spec. 4:3—6. A user-specific credential used to authenticate
may be a challenge key or a one-time password, in addition to a personal
identification number. Spec. 7:9-11.
Representative Claim
Claims 1 and 14 are independent. Representative claim 1 is
reproduced below with disputed limitations in italics'.
1. A security token configured to support multi-factor user
authentication, said security token comprising:
a tactile sensing user interface configured to capture a
stream of input data corresponding to a sequence of positions of
a finger engaging with said tactile sensing user interface and
representing a user-specific credential for authorizing a
transaction;
a conversion unit configured to convert said stream of
input data into a machine-readable credential;
a computation unit configured to compute a machine-
readable authentication code based on the machine-readable
credential;
a contact-bound interface configured to transmit said
machine-readable authentication code to a first transaction
device; and
a contactless interface configured to transmit said
machine-readable authentication code to a second transaction
device, wherein the multi-factor user authentication requires
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Application 14/290,176
both the user-specific credential and a handwriting
characteristic.
App. Br. 13—17 (Claims App’x).
Examiner’s Rejections & References
(1) Claims 1—6, 8, 14—18, and 20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Wendt (US 2008/0148393
Al; published June 19, 2008) and Black (US 6,539,101 Bl; issued Mar. 25,
2003). Final Act. 2—8.
(2) Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wendt, Black, and Rhoads et al., (US 2008/0112596 Al;
published May 15, 2008; “Rhoads”). Final Act. 8—9.3
(3) Claims 9—13 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wendt, Black, and Hammad et al., (US
2013/0218765 Al; published Aug. 22, 2013; “Hammad”). Final Act. 9-12.
(4) Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wendt and Armington et al., (US 2003/0163739 Al;
published Aug. 28, 2003; “Armington”). Final Act. 12.
Issue on Appeal
Based on Appellant’s arguments, the dispositive issue on appeal is
whether the combination of Wendt and Black teaches or suggests “wherein
the multi-factor user authentication requires both the user-specific credential
3 The Examiner indicates Black is relied upon to support the rejection of
dependent claims 7, 9—13, and 19, and the omission of Black from the
rejection’s listing (Final Act. 8, 9, 12) was merely a typographical error.
Advisory Act. 2; Ans. 2, 4—6.
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and a handwriting characteristic,” as recited in Appellant’s independent
claims 1 and 14. App. Br. 4—6; Reply Br. 1—3.
ANALYSIS
With respect to independent claims 1 and 14, the Examiner finds
Wendt teaches Appellant’s claimed “security token” including a tactile
sensing user interface, a conversion unit, a computation unit, a contact-
bound interface, and a contactless interface. Final Act. 2—3 (citing Wendt
12—17, 19-20, 49-50, Figs. 1—4). The Examiner acknowledges Wendt
does not disclose multi-factor user authentication requiring both a user-
specific credential and a handwriting characteristic, but relies on Black for
teaching such multi-factor user authentication to support the conclusion of
obviousness. Final Act. 3—4 (citing Black 10:45—51, 18:6—14, and 27—33).
Appellant disputes the Examiner’s factual findings regarding Black.
Appellant contends Black does not teach the disputed limitation: “wherein
the multi-factor user authentication requires both the user-specific credential
and a handwriting characteristic,” as recited in Appellant’s independent
claims 1 and 14. App. Br. 5; Reply Br. 2—3. In particular, Appellant argues
“Black’s authentication does not rely upon handwriting characteristics”;
rather, Black uses a stylus with fingerprint sensors to detect fingerprints, and
therefore, Black’s authentication “uses fingerprints instead of handwriting
characteristics.” App. Br. 5 (citing Black 7:60, 8:10-14, 10:52—54); Reply
Br. 2. As such, Appellant argues “Black’s disclosure teaches away from
using a handwriting characteristic as claimed.” Reply Br. 3 (citing Black
24:33—48); see also App. Br. 5 (citing Black 11:2—3).
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Application 14/290,176
We do not find Appellant’s arguments persuasive. Rather, we find the
Examiner has provided a comprehensive response to Appellant’s arguments
supported by a preponderance of evidence. Ans. 3. Therefore, we adopt the
Examiner’s findings and explanations provided therein. Id.
For additional emphasis, we note Black describes:
The smart-pen is a wireless stylus 15 that writes on regular
paper but is connected to the computer. The smart-pen measures
speed, and acceleration forces in three dimensions .... [A]s the
smart-pen writes, the stylus tip will travel through three-
dimensional space near the paper. The tip of the stylus 15, as
calculated, is a three-dimensional curve lying around the writing
surface. The curve is projected on that plane representing the
stylus tip’s path along the paper, this path is the written text,
incorporating unique characteristics of the writer. Therefore
signature verification with the smart-pen does not depend on the
graphic image of the signature but on the dynamics of the act of
signing. The dynamics are strictly personal and thus allow the
authentication of the signer.
Black 24:33—48 (emphases added). As explained by Black, its stylus
“captures] the dynamic act of signature [handwriting characteristics]” to
authenticate a signer. Ans. 3 (citing Black 10:40-67, 24:33^48).
Furthermore, Black teaches a user’s “signature becomes the primary
biometric” used, together with a user-specific PIN credential, to identity the
user. See Black 16:33—35 (emphasis added); see also Black 10:44—51, 16:1—
2 and 10—15. Thus, Black teaches multi-factor user authentication that
requires both a user-specific credential and a user’s handwriting
characteristic, as recited in claims 1 and 14. Ans. 3.
We also are not persuaded that Black teaches away from Appellant’s
claimed invention. A reference does not teach away if it merely expresses a
general preference for an alternative invention from amongst options
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Application 14/290,176
available to the ordinarily skilled artisan, and the reference does not discredit
or discourage investigation into the invention claimed. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Black’s “thwart[ing] forgers even if the
signature is the same the prints [sensed by Black’s stylus] are not (the
content of the writing is unimportant)” (see App. Br. 5 (citing Black 11:2—
3)) merely discloses that fingerprints authenticate better than signatures.
However, Black does not suggest fingerprint authentication is the only
solution likely to work; rather Black positively discloses a signatures’
handwriting characteristics can also authenticate. See Black 18:6—14,
24:33—48.
For the reasons set forth above, Appellant has not persuaded us of
Examiner error. Accordingly, we sustain the Examiner’s obviousness
rejection of independent claims 1 and 14, and dependent claims 2—6, 8, 15—
18, and 20, which Appellant does not argue separately. App. Br. 7, 10.
With respect to dependent claims 7, 9—13, and 19, Appellant argues
the Examiner failed to cite Black and therefore “failed to present a prima
facie case of obviousness because there is no articulated reasoning to support
the application of the teachings of Rhoads [or Hammad and Armington] to
Wendt in view of Black.” App. Br. 8, 9, 11. However, the Examiner has
indicated the omission of Black from the dependent claims’ rejections was
merely a typographical error. Ans. 4—6; Advisory Act. 2. Additionally, the
Examiner has provided sufficient articulation—which Appellant does not
address—of the rational underpinning for combining Wendt with Black.
Final Act. 4, 6 (presenting rejections of base claims 1 and 14). As Appellant
has not persuaded us of Examiner error, we also sustain the Examiner’s
obviousness rejection of dependent claims 7, 9-13, and 19.
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CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1—20 under 35 U.S.C. § 103(a).
DECISION
As such, we AFFIRM the Examiner’s Final Rejection of claims 1—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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