Thomas Suwald et al.Download PDFPatent Trials and Appeals BoardNov 29, 201914527680 - (D) (P.T.A.B. Nov. 29, 2019) Copy Citation 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. 14/527,680 10/29/2014 Thomas Suwald 81580772US02 8415 65913 7590 11/29/2019 Intellectual Property and Licensing NXP B.V. 411 East Plumeria Drive, MS41 SAN JOSE, CA 95134 EXAMINER JOHNSON, CARLTON ART UNIT PAPER NUMBER 2436 NOTIFICATION DATE DELIVERY MODE 11/29/2019 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.us@nxp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS SUWALD and ARNE BURGHARDT Appeal 2019-000595 Application 14/527,680 Technology Center 2400 ____________ BEFORE JOHN A. EVANS, JOHN P. PINKERTON, and MICHAEL M. BARRY, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–16, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. USPTO assignment records (Reel/Frame 050745/0001; Sept. 10, 2019) indicate the instant application has been assigned to NXP B.V., which we understand to be the real party in interest. Appeal 2019-000595 Application 14/527,680 2 STATEMENT OF THE CASE2 Introduction Appellant’s disclosed and claimed invention relates to an authentication system for operating a security token while controlling power consumption. See Spec. 3:14–21. The authentication system may include a mobile device (e.g., a near field communication (NFC) enabled smart phone) and a security token (e.g., a smart card), which interact via short-range RF communication in order to authenticate the security token and facilitate a mobile transaction. Id. 6:15–22. In a disclosed embodiment, while its microcontroller unit (MCU) is in a first sleep state, the smartcard’s secure element may receive an authentication command from the mobile device. Id. 8:1–5. The secure element may decode the authentication command, send a corresponding authentication request to the MCU, and subsequently enter a second sleep state. Id. 8:5–7. Upon receiving the authentication request, the MCU may wake up and determine an amount of available power delivered by the mobile device by checking the smart card’s RFID antenna voltage. Id. 8:7–9, 9:10–12. The MCU may process the authentication request only if the determined amount of power exceeds a threshold. Id. 8:9–10, 9:12–15. 2 Our Decision refers to the Final Office Action mailed March 5, 2018 (“Final”) and Advisory Action mailed June 13, 2018 (“Advisory”); Appellant’s Appeal Brief filed June 19, 2018 (“Appeal Br.”) and Reply Brief filed October 30, 2018 (“Reply Br.”); the Examiner’s Answer mailed October 4, 2018 (“Ans.”); and the original Specification filed October 29, 2014 (“Spec.”). Appeal 2019-000595 Application 14/527,680 3 Illustrative Claim Claims 1, 11, and 12 are independent claims. Claim 1 is illustrative of the subject matter on appeal and reproduced below: 1. A method of operating a security token, said security token comprising a secure element and a microcontroller unit coupled to said secure element, wherein: the secure element receives an authentication command from a host device while the microcontroller unit is in a first sleep state and the secure element is in a third sleep state prior to receiving the authentication command; the secure element decodes the authentication command, sends a corresponding authentication request to the microcontroller unit, and subsequently enters into a second sleep state, wherein power is restricted, but not completely switched off, to the microcontroller unit in the first sleep state and the secure element in both the second sleep state and the third sleep state; the microcontroller unit wakes up upon receiving the authentication request and subsequently determines an amount of available power from an antenna of the security token; and the microcontroller unit processes the authentication request only after the amount of available power exceeds a threshold. Appeal Br. 13 (Claims App.). Rejections on Appeal The Examiner rejected claims 1–13, 15, and 16 under 35 U.S.C. § 103 as being unpatentable over Confer et al. (US 2014/0120832 A1; May 1, 2014) (“Confer”), Awad (EP 2541995 A1; Jan. 2, 2013), and Martin-Cocher et al. (US 2009/0098914 A1; Apr. 16, 2009) (“Martin-Cocher”). Final 5–21. Appeal 2019-000595 Application 14/527,680 4 The Examiner rejected claim 14 under 35 U.S.C. § 103 as being unpatentable over Confer, Awad, Martin-Cocher, and John (US 9,095,729 B2; Aug. 4, 2015). Id. at 21–23. ANALYSIS Based on Appellant’s arguments in the Briefs (Appeal Br. 7–8; Reply Br. 2–3), the dispositive issue before us is whether the Examiner’s proposed combination of Confer, Awad, and Martin-Cocher would have taught or suggested that “the microcontroller unit . . . determines an amount of available power from an antenna of the security token,” as recited in claim 1.3 In the Final Office Action, the Examiner finds Martin-Cocher teaches that “the microcontroller . . . determines an amount of available power” with its disclosure of checking whether a battery level of a mobile device is above or below a particular threshold. Final 8 (citing Martin-Cocher ¶ 14). The Examiner additionally finds that Awad teaches “wherein available power [is] from an antenna of a computing device” with its disclosures of first and second NFC devices, each of which contains an antenna for communicating data with another device. Id. at 9 (citing Awad ¶¶ 35, 43). In the Advisory Action, the Examiner explains that “checking a battery level” is “analogous to [checking] a power level based on voltage” and, thus, Martin-Cocher’s disclosure of “determining whether a battery level . . . is above or below a particular threshold . . . is analogous to 3 To the extent Appellant makes other arguments in the Briefs with respect to the claims, we do not address them because our decision of this issue is dispositive. Appeal 2019-000595 Application 14/527,680 5 determining the amount of available power.” Advisory 2. The Examiner further explains that “Awad discloses the capability for determining whether available power associated with a component such as an antenna is adequate” because its NFC device “utiliz[es] the available (and adequate) power for signal generation or data transmissions . . . over the antenna,” which is required for such data transmission. Id. In the Appeal Brief, Appellant disputes the Examiner’s findings and argues that “while Awad might disclose antennae 106/108, Awad fails to determine an amount of available power from any antenna.” Appeal Br. 8. Appellant further argues that “Martin-Cocher’s battery level teachings are inapplicable to Awad because the broadest reasonable interpretation of available power from an antenna cannot encompass a battery level.” Id. In the Answer, the Examiner makes several additional findings with respect to Awad and Martin-Cocher. See Ans. 3–9. In particular, the Examiner finds that Awad “discloses the capability for a first NFC device to harvest energy (electrical energy, power) from a second NFC device, while . . . in close proximity to each other.” Ans. 3–4 (citing Awad ¶¶ 14, 40). The Examiner also finds that Awad discloses using an algorithm to determine when to power on or power off certain components of the NFC devices and powering on the memory for a data transfer upon determining there is sufficient power to perform it. Id. at 4 (citing Awad ¶¶ 47–48). The Examiner finds Martin-Cocher “discloses the capability to determine whether there is sufficient power (i.e.[,] battery level, a measure of electrical energy) to operate a particular component” such that “[i]f the battery level is insufficient to operate the particular component, . . . the component is not enabled for operation.” Id. at 4–5 (citing Martin–Cocher). The Examiner Appeal 2019-000595 Application 14/527,680 6 further finds that “[Martin-Cocher] discloses a battery level parameter which is analogous to a power level[,] [a]nd Awad discloses an analogous mechanism whereby power is harvested from the field (i.e.[,] electromagnetic energy as electrical energy) by an NFC device utilizing an antenna.” Id. at 5. In the Reply Brief, Appellant responds that the Examiner’s findings fail to address the actual claim language, which requires “determin[ing] an amount of available power from an antenna of the security token.” Reply Br. 2 (emphasis added). In particular, Appellant explains that “[r]ather than determining an amount of available power, paragraph [0047] of Awad discloses a time period: ‘a specific number of microseconds’ and powers memory 206 for that length of time.” Id. Appellant also disputes the Examiner’s finding that Martin-Cocher’s “‘battery threshold’ is equivalent to a power level” because it “fail[s] to consider the recited language of available power from an antenna of the security token,” and “a battery level is measured by voltage, which is not equivalent to power,” but “[i]nstead . . . measures electrical energy: the state of charge on the battery.” Id. at 2–3. Appellant adds that “[t]he Examiner’s allegation on ‘[Awad’s] capability to harvest energy’ are [sic] unrelated to any ability to determine an amount of available power from an antenna.” Id. at 3. We are persuaded by Appellant’s arguments that the Examiner erred. Awad does teach that an NFC device has an antenna for communicating with another NFC device, as well as for harvesting power used to generate signals and transmit data. Awad ¶¶ 35, 40, 60. Awad in particular teaches that an NFC device may harvest energy from another NFC device, convert the energy to electrical power, and selectively power on or off components Appeal 2019-000595 Application 14/527,680 7 coupled to the NFC device using the converted electrical power. Id. ¶ 14. But the Examiner does not provide any persuasive evidence that Awad teaches or suggests an NFC device that generates signals, transmits data, or selectively powers on or off features based on a determination of an available amount of power. Although Awad’s NFC device has an antenna used for providing power to operate a device, there is no discussion regarding determining an available amount of power from the antenna. And even though Martin-Cocher teaches determining an available amount of power by checking the battery level, the Examiner does not provide any persuasive evidence that it determines such information from an antenna. Martin-Cocher ¶ 14. Further, the Examiner’s proposed reasons and explanations for combining the teachings of Awad and Martin-Cocher do not fill the gaps in the cited prior art. The Examiner reasons that “[i]t would have been obvious . . . to modify Confer-Awad for . . . determining an amount of available power . . . as taught by Martin[-]Cocher” because “[o]ne of ordinary skill in the art would have been motivated to employ the teachings of Martin[-] Cocher for the benefits achieved from the flexibility and efficiency of a system that performs task-management or function-management based on battery life for a particular device.” Final 8–9 (citing Martin-Cocher ¶ 1). But the Examiner does not explain the nature of these purported benefits or provide a citation to the prior art that adequately supports such an assertion. Nor does the Examiner provide any persuasive evidence that applying Martin-Cocher’s technique for checking the battery level to Awad’s NFC device would have been obvious or that determining an available amount of power from an antenna would have been a predictable result of the Appeal 2019-000595 Application 14/527,680 8 combined teachings. The Examiner also does not cite Confer or John for teaching or suggesting the disputed limitation or otherwise filling the gaps in the rejection. In view of the foregoing, the Examiner has not adequately shown that the combined teachings of the cited prior art references would have taught or suggested claim 1, including claim 1’s recitation of a microcontroller that “determines an amount of available power from an antenna of the security token.” Accordingly, on this record, we are constrained to find the Examiner erred because the Examiner has not adequately shown that the proposed combination of prior art references renders claim 1 obvious by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (Examiner’s burden of proving non-patentability is by a preponderance of the evidence). Thus, we do not sustain the Examiner’s rejection of claim 1 under § 103. For similar reasons, we do not sustain the Examiner’s § 103 rejections of claims 2–16, which include similar deficiencies. CONCLUSION We reverse the Examiner’s rejections of claims 1–16 under 35 U.S.C. § 103. In summary: Appeal 2019-000595 Application 14/527,680 9 Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–13, 15, 16 103 Confer, Awad, Martin-Cocher 1–13, 15, 16 14 103 Confer, Awad, Martin-Cocher, John 14 Overall Outcome 1–16 REVERSED Copy with citationCopy as parenthetical citation