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Patent Trials and Appeals Board

Oct 19, 2021

2020003171 (P.T.A.B. Oct. 19, 2021)

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.
15/433,921 02/15/2017 Roberto A. Masiero ES2016030-1 9590
126105 7590 10/19/2021
Duke W. Yee
Yee & Associates, P.C.
P.O. BOX 6669
MCKINNEY, TX 75071
EXAMINER
TRAN, TONGOC
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
10/19/2021 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):
ptonotifs@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERTO A. MASIERO, JUSTO D. PASTOR, VINCENT
CIVETTA, DEEPAK KAUSHAL, FRANCISCO VILLAVICENCIO,
SANJOLI AHUJA, MADUSUDHANAN RAGOTHAMAN, MICHAEL
NEPOMNYASHY, KRISHNA CHAITANYA PINNAMANENI,
NISHANT KAUSHIK, ZHITAO STEVE XU, PHILIP M. O’NEILL, and
NEHA PAHWA
_____________

Appeal 2020-003171
Application 15/433,921
Technology Center 2400
____________

Before RICHARD M. LEBOVITZ, ST. JOHN COURTENAY III, and
JASON J. CHUNG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–24, which constitute all the claims pending in this application. We
have jurisdiction over the pending claims 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(a). According to Appellant, the real party in interest in this
appeal is “Automatic Data Processing, Inc.” See Appeal Br. 2.

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STATEMENT OF THE CASE 2
Introduction
Embodiments of Appellant’s claimed subject matter relate generally
to “an improved authentication system for a device and, in particular, to a
method and system for authenticating a transaction from a user at a first
device using credentials from a second device.” Spec. ¶ 1.
Illustrative Claim 1
1. A method for authenticating a transaction of a user, the
method comprising:
receiving by a service provider a transaction between a
user and a website displayed on a first device;
[L1] identifying by the service provider a first
geolocation of the first device;
generating by the service provider a code for display on
the first device;
receiving by the service provider from a second device
credential information to identify the user;
receiving by the service provider the code from the
second device;
[L2] identifying by the service provider a second
geolocation of the second device;
determining, by the service provider, a level of risk for
the transaction based at in part on the first geolocation, the
second geolocation, and a self-learning statistical evaluation of

2 We herein refer to the Final Office Action, mailed May 10, 2019 (“Final
Act.”); the Appeal Brief, filed October 15, 2019 (“Appeal Br.”); the
Examiner’s Answer, mailed January 24, 2020, and the Reply Brief, filed
March 24, 2020 (“Reply Br.”).
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device profiling, behavioral profiling, and known fraud patterns
to generates a numeric risk score for the transaction;
in response to determining that the level of risk is an
acceptable level of risk, authenticating the user;
generating, by the service provider, information to enable
the user on the first device to perform the transaction with the
website; and
sending the information from the service provider to the
website.
Appeal Br. 17. Claims App. (disputed claim limitations bracketed and
emphasized as L1 and L2).

Prior Art Evidence Relied Upon by the Examiner
Name Reference Date
Kula US 2014/0181911 A1 June 26, 2014
Warikoo et al.
“Warikoo”
US 2016/0226893 A1 Aug. 4, 2016
Shastri et al.
(“Shastri”)
US 2017/0118025 A1 Apr. 27, 2017

Rejection 3
Claims
Rejected 35 U.S.C. § Reference(s)/Basis
1–24 103 Kula, Shastri, Warikoo

3 The Examiner withdrew the written description rejection under 35 U.S.C.
§ 112(a) in the Answer at page 3. Therefore, this rejection is not before us
on appeal.
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ISSUES AND ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are forfeited
or waived.4 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv). Throughout this opinion,
we give the claim limitations the broadest reasonable interpretation (BRI)
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). We highlight and address specific findings and arguments
for emphasis in our analysis below.

Obviousness Rejection of Claim 1
In the Appeal Brief, Appellant advances several related arguments
regarding limitations L1 and L2 of claim 1. At the outset, Appellant
contends that the “rejection improperly relies on the same structure as
disclosing two separate claimed elements.” Appeal Br. 10 (emphasis
added). Revealing some confusion as to the Examiner’s claim mapping,

4 See In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed. Cir.
2020) (some internal citation omitted):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993). “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464
(1938)) (additional citations omitted). The two scenarios can
have different consequences for challenges raised on appeal, id.
at 733–34, and for that reason, it is worth attending to which label
is the right one in a particular case.
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Appellant notes that “[t]he Examiner’s rejection requires either Kula’s
device 106 or 108 to act as both the Appellant's ‘first device’ and ‘second
device.’” Appeal Br. 11. After addressing the portions of Kula cited by the
Examiner, Appellant urges that the cited prior art “does not disclose [L1]
‘identifying by the service provider a first geolocation of the first device,’
and [L2] ‘identifying by the service provider a second geolocation of the
second device.’” Appeal Br. 14; see also claim 1.
In response, the Examiner further explains the basis for the rejection,
and finds Kula provides:
support that the website communicate[s] with two separate
devices and two separate channels. Each device
communicate[s] with the website with a different channel[] (see
Abstract). Because throughout the drawings as illustrated in
Fig. 4–7, Kula discloses the geo-location from a device, not the
first or the second device, is part of the authentication process
between the website server and a device.
Ans. 6 (citing Kula Abstract and paragraph 371) (emphasis added).
Appellant’s arguments present the following issues:
Issues: Under 35 U.S.C. § 103, has the Examiner erred in finding that
Kula, Shastri, and Warikoo would have collectively taught or suggested the
disputed limitations L1 and L2 of claim 1:
[L1] identifying by the service provider a first
geolocation of the first device; . . .
[L2] identifying by the service provider a second
geolocation of the second device;
Claim 1 (bracketing and emphases added).
Based upon our review of the record, we find the dispositive issue in
this appeal turns upon whether the Examiner’s rejection improperly relies
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upon the same structure in Kula5 as teaching or suggesting the two
separately claimed first and second devices as recited in disputed limitations
L1 and L2:
[L1] identifying by the service provider a first geolocation of the first
device;
[L2] identifying by the service provider a second geolocation of
the second device;
Claim 1 (emphasis added).
We note that Kula’s Figure 1, in pertinent part, depicts two client-side
devices, computing device 108 (upper right), and device 106 (lower right).
Kula describes that “[n]on-limiting examples for device 106 include cellular
telephones, smartphones and tablet computing devices.” Kula ¶ 45. Kula
further describes that “[n]onlimiting examples for computing device 108
include [a] laptop computer, netbook computer, notebook computer and [a]
personal computer.” Id.
In reviewing the rejection of claim 1, as set forth in the Final Action
(pp. 4–6), and as further explained by the Examiner’s responses in the
Answer (pp. 3–7), we observe that the Examiner never specifically maps the
claimed first and second devices of claim 1 to either device 106 or device
108 in Kula’s Figure 1, or to any other particular devices found in Kula,
Shastri, or Warikoo.
Therefore, on this record, and at the outset, we agree with Appellant
that the Examiner’s mapping regarding the disputed first and second devices
of claim 1 to the specific corresponding features found in Kula is unclear.

5 Based upon our review of the record, we note the Examiner does not rely
upon Shastri or Warikoo as teaching or suggesting the first and second
devices recited in limitations L1 and L2, respectively, of claim 1.
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See Appeal Br. 11 (first sentence on page).
But the mapping rule specifically requires: “When a reference is
complex or shows or describes inventions other than that claimed by the
applicant, the particular part relied on must be designated as nearly as
practicable. The pertinence of each reference, if not apparent, must be
clearly explained and each rejected claim specified.” 37 C.F.R.
§1.104(c)(2) (emphasis added).6

Limitation L1 of Claim 1
If we sua sponte consider the “first device” of limitation L1 as being
read on wireless device 106, a preponderance of the evidence supports the
Examiner’s finding regarding limitation L1 as being taught or suggested by
Kula at Figure 4B, step 432, because Kula expressly depicts a web service
requesting geo-location information from a device at step 428, followed by
the device receiving the geo-location request from the web service at step
430, followed by a determination if the geo-location feature is enabled at
step 432, followed by the device retrieving its geo-location information and
subsequently transmitting it to the web service at step 436. Lastly, the web
service is depicted as receiving the requested geo-location information at
step 438, according to the flow chart of Figure 4B.
However, what specific device number is Kula’s Figure 4B referring
to? This information is not provided within Figure 4B. Turning to the
supporting description of Kula’s Figure 4B, we find the device depicted in

6 An agency is bound by its own regulations. See Service v. Dulles, 354 U.S.
363, 388 (1957).

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Figure 4B is Kula’s device 106:
Referring back to FIG. 4B, for a determination in step 426 for
performing geo-location, then in a step 428 web-service requests
geo-location information from device.
Kula ¶ 103.
As a non-limiting example, web-service 122 (FIG. l) request geo-
location information from device 106 (FIG.1).
Kula ¶ 104 (emphasis added).
Referring back to FIG. 4B, then in a step 430 device receives
geo-location request from web-service.
Kula ¶ 105.
As a non-limiting example, device 106 (FIG. 1) receives geo-
location information request from web-service 122 (FIG. 1).
Kula ¶ 106 (emphasis added).

Limitation L2 of Claim 1
Having decided supra that Kula at least teaches or suggests limitation
L1 of claim 1, by identifying the geolocation of device 106,7 we next focus
our analysis on the question of whether the Examiner has established by a
preponderance of the evidence that Kula teaches or suggests limitation L2
which expressly requires “identifying by the service provider a second
geolocation of the second device.” Claim 1 (emphasis added).

7 We find the best teaching of limitation L1 of claim 1 is found at paragraph
111 of Kula: “As a non-limiting example, device 106 (FIG. 1) retrieves geo-
location information and transmits geo-location information to web-service
122 (FIG. 1).” (emphasis added). This paragraph of Kula was not cited by
the Examiner in the Final Action or Answer.
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We agree with Appellant that the claimed first and second devices
cannot be read on the same device found in Kula. See Appeal Br. 10–11;
see also Reply Br. 2. See e.g., Becton, Dickinson and Co. v. Tyco
Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a
claim lists elements separately, ‘the clear implication of the claim language’
is that those elements are ‘distinct component[s]’ of the patented
invention.”) (citations omitted).
But in the Final Action, the Examiner broadly reads limitation L2 on
paragraph 56 of Kula, without providing any explanation to clarify what
specific device in Kula teaches or suggests the disputed “second device”
recited in claim 1: “identifying by the service provider a second geolocation
of the second device (e.g. Kula, paragraph 0056).” Final Act. 4
We note paragraph 56 of Kula is almost a full column in length.
Paragraph 56 is silent regarding any mention of computing device 108. At
best, we find paragraph 56 describes pairing website 102 with the same
device 106 that we have addressed above regarding claim 1, limitation L1:
Web-service 122, if needed, may request application provide
geo-location information. For embodiments needing geo-
location capability and for device 106 not supporting geo-
location or refusing to provide geo-location information, web-
service 122 may terminate the connection. Furthermore,
application may present a warning message via device 106 and
may terminate the process. For continuation of the pairing
process, web-service 122 requests a certificate from certificate
server 120 and communicates the certificate information to
device 106. Application accepts the client certificate
information and stores the certificate via device 106. After
comp[l]eting the foregoing, device 106 is paired with website
102.
Kula ¶ 56 (in pertinent part).
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In reviewing the record, we find Kula is silent regarding any teaching
or suggestion of “identifying by the service provider a second geolocation of
the second device” if the claimed “second device” is read on computing
device 108, as depicted in Kula’s Figure 1. Assuming arguendo that the
Examiner could be reading the claimed “second device” on computer device
108, we find the Examiner has not fully developed the record to show how
the geolocation of the (second) computing device 108 is identified from the
server side (i.e., from some entity within web site 102, as depicted in Kula’s
Figure 1), in the manner required by the language of independent claim 1.
Referring to Kula’s Figure 1, we note that location file 124, is
retrieved by associated web-server 118 that transmits location file 124 to
device 106, which decodes location file 124 to communicate with web-
service 122 to validate its identity via a commercial SSL (Secure Socket
Layer) certificate, as described in paragraphs 56, and 89 through 97 of Kula.
If the Examiner is reading the second device in claim 1 on Kula’s computing
device 108, then we find Kula is silent regarding any teaching or suggestion
of limitation L2, “identifying by the service provider a second geolocation of
the second device.” Claim 1 (emphasis added).
Similar inconsistencies arise if we switch the mapping, i.e., reading
the claimed “first device” on Kula’s computing device 108, and reading the
claimed “second device” on Kula’s device 106. See Claim 1. We thus agree
with Appellant’s argument in the Appeal Brief: “Other inconsistencies arise
if interpreting Kula’s device 108 as the ‘first device’ and device 106 as the
‘second device.’ For example, Kula does not identify geolocation of device
108, in contrast to the Appellant’s claim 1 language of ‘identifying by the
service provider a first geolocation of the first device.’” Appeal Br. 13.
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In the Answer, the Examiner attempts to explain the absence of two
specifically mapped devices in the Final Action by pointing to the Abstract
of Kula which discusses first and second devices that communicate with a
computing system over first and second channels, respectively. See Ans. 4.
The Examiner additionally points to paragraph 371 of Kula as suggesting a
plurality of devices that are identified by geolocation, as follows:
Kula in paragraph 0371 provide[s] support that the website
communicate[s] with two separate devices and two separate
channels. Each device communicate[s] with the website with a
different channel[] (see Abstract). Because throughout the
drawings as illustrated in Fig. 4–7, Kula discloses the geo-
location from a device, not the first or the second device, is part
of the authentication process between the website server and a
device.
Ans. 6. 8
However, based upon our review of the evidence cited by the
Examiner in support of the rejection, we find a preponderance of the
evidence supports Appellant’s summary argument in the Reply Brief:
the cited art does not disclose “identifying by the service provider
a first geolocation of the first device,” and “identifying by the
service provider a second geolocation of the second device.”
None of Kula’s paragraphs [0056], [0080], [0107]-[0111], 432
of Kula's Fig. 4B, or elsewhere in the reference, describe
determining the geolocation of any device other than device 106.

8 Regarding the Examiner’s shifting findings regarding the teachings of Kula
in the Final Action at page 4 (relying upon paragraph 56 of Kula), and in the
Answer at page 6 (now relying upon Kula’s Abstract and paragraph 371),
see In re Vaidyanathan, 381 Fed. App’x. 985, 991 (Fed. Cir. 2010) (“the
agency’s contradictory findings of technological facts based on shifting
perceptions of the prior art impeach the deference normally owed to
administrative findings of fact.” (citation omitted).

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The rejection improperly relies on the same structure as
disclosing two separate claimed elements. Furthermore, the
combined art does not disclose all the features as set forth in the
claims. Thus, the rejection[] under 35 U.S.C. § 103 [is]
improper.
Reply Br. 2–3 (emphasis added).
Our reviewing court provides guidance that we find is applicable here:
“A rejection . . . must rest on a factual basis . . . .” In re Warner, 379 F.2d
1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not . . . resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.” Id.
To the extent that we must resort to some degree of speculation to
ascertain how the Examiner has mapped the disputed claimed first and
second devices of claim 1 to the corresponding specific features found in
Kula, we cannot affirm a rejection based upon speculation.
To the extent that the Examiner may be relying upon a theory of
inherency under section 103, our reviewing court has long “recognized that
inherency may supply a missing claim limitation in an obviousness
analysis.” PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc. 773 F.3d
1186, 1194–95 (Fed. Cir. 2014). However, the Federal Circuit cautions that,
[t]he mere fact that a certain thing may result from a given set of
circumstances is not sufficient. If, however, the disclosure is
sufficient to show that the natural result flowing from the
operation as taught would result in the performance of the
questioned function, it seems to be well settled that the disclosure
should be regarded as sufficient.
In re Oelrich, 666 F.2d at 581 (emphasis added) (citations and
quotation marks omitted). Thus, our early precedent, and that of
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our predecessor court, established that the concept of inherency
must be limited when applied to obviousness, and is present only
when the limitation at issue is the “natural result” of the
combination of prior art elements. Id.
PAR Pharm., 773 F.3d at 1195 (quoting In re Oelrich, 666 F.2d 578, 581
(CCPA 1981)) (emphasis added).
Here, we find the evidence cited by the Examiner (Final Act. 4; Ans.
4–7) is insufficient to show that “the natural result flowing from the
operation as taught would result in the performance of the questioned
function.” PAR Pharm., 773 F.3d at 1194–95 (internal citation omitted).
Nor has the Examiner shown that either of the secondary Shastri and
Warikoo references overcomes the aforementioned deficiencies of Kula.
Accordingly, for essentially the same reasons argued by Appellant in
the Briefs, as further discussed above, we are constrained on this record to
reverse the Examiner’s obviousness rejection of independent claim 1.
Remaining independent claims 9 and 17 recite the disputed limitations L1
and L2 of claim 1 using similar language having commensurate scope. For
the same reasons, we also reverse the Examiner’s obviousness rejection of
independent claims 9 and 17. Because we have reversed the Examiner’s
rejection of each independent claim on appeal, for the same reasons, we
reverse the Examiner’s obviousness rejection of each dependent claim on
appeal.

CONCLUSION
The Examiner erred in rejecting claims 1–24 under 35 U.S.C. § 103
over the collective teachings and suggestions of Kula, Shastri, and Warikoo.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–24 103
Kula, Shastri,
Warikoo

1–24

REVERSED