Ex Parte Camacho et al

Board of Patent Appeals and Interferences

Nov 30, 2009

09801468 (B.P.A.I. Nov. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LUZ MARIA CAMACHO, ROGER D. PIRKEY,
and MICHAEL L. HANKINSON
____________________

Appeal 2009-006015
Application 09/801,4681
Technology Center 2400
____________________

Decided: November 30, 2009
____________________

Before KENNETH W. HAIRSTON, MARC S. HOFF, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Aurora Wireless Technologies, Ltd.
Appeal 2009-006015
Application 09/801,468

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4-8, 10-16, 18-21, 23-27, 29-35, 37-40, 43, and 45-51.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse, and enter a new ground of rejection.
Appellants’ invention relates to a method and apparatus for reducing
the occurrence of unauthorized use of on-line resources of a plurality of
companies. A dynamic profile is created and/or updated for each
consumer/merchant using the invention, by means of adaptive learning
techniques. If the stored business rules for the company identified as
associated with the requested on-line resource specify that authentication is
required, indicia of physical identification are obtained from the user and
compared to stored indicia. The request for on-line resources is fulfilled only
if the obtained indicia match the stored indicia (Spec. 4, 8).
Claim 1 is exemplary of the claims on appeal:
1. A method for reducing the occurrence of unauthorized use of on-
line resources, comprising:
storing business roles for a plurality of companies having on-line
resources;
receiving a message indicating a request from a user to use on-line
resources;
identifying a company associated with the requested on-line resource
from among the plurality of companies;
retrieving the stored business rules for the identified company;
determining whether the request requires authentication;
enabling the request to be fulfilled without authentication if the
determination indicates that authentication is not required;
obtaining an indicia of physical identification from the user if the
determination instead indicates that authentication is required;

2 Claims 3, 9, 17, 22, 28, 36, 41, 42, and 44 have been cancelled.
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comparing the obtained indicia to a stored indicia for the user; and
enabling the request to be fulfilled if the obtained indicia matches the
stored indicia,
wherein the step of determining whether the request requires
authentication includes determining whether stored business rules for the
identified company associated with the requested on-line resource indicates
that authentication for the user is required.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Blonder US 5,708,422 Jan. 13, 1998
Viavant US 5,784,566 Jul. 21, 1998
Baulier US 6,157,707 Dec. 5, 2000
Spiegel US 6,466,918 B1 Oct. 15, 2002
Pereira, III US 6,931,402 B1 Aug. 16, 2005
Claims 1, 4-6, 18-20, 23-25, 37-39, and 45 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Pereira in view of Viavant.
Claims 2, 7, 8, 21, 26, 27, 40, and 43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pereira in view of Viavant and Baulier.
Claims 10-16 and 29-35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pereira in view of Viavant and Blonder.
Claims 46-51 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pereira in view of Viavant, Baulier, and Spiegel.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed September 25, 2006), the Reply Brief (“Reply Br.,” filed
February 6, 2007) and the Examiner’s Answer (“Ans.,” mailed December 8,
2006) for their respective details.
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ISSUE
Appellants argue that Pereira does not teach or suggest: storing
business rules for a plurality of companies; identifying a company associated
with the requested on-line resource from among the plurality of companies;
retrieving stored business rules for the identified company; or determining
whether stored business rules for the identified company associated with the
requested on-line resource indicate that authentication for the user is
required (App. Br. 7). The Examiner finds that these limitations are met by
Pereira, because Pereira teaches controlling access per company. Pereira
teaches storing rules controlling access to a specific group of objects;
Pereira’s database has the attribute “company” among many other attributes;
and data objects may be restricted based on the “company” attribute (Ans. 7-
8).
Appellants’ contentions present us with the following issue:
Have Appellants shown that the Examiner erred in finding that Pereira
teaches controlling access by users to on-line resources of a plurality of
companies, including storing business rules for a plurality of companies
having on-line resources; identifying a company identified with a requested
on-line resource from among the plurality of companies; retrieving the
stored business rules for the identified company; and determining whether
stored business rules for the identified company associated with the
requested on-line resource indicate that authentication for the user is
required?
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FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, they have invented a method and
apparatus for reducing the occurrence of unauthorized use of on-line
resources of a plurality of companies. A dynamic profile is created and/or
updated for each consumer/merchant using the invention, by means of
adaptive learning techniques. If the stored business rules for the company
identified as associated with the requested on-line resource specify that
authentication is required, indicia of physical identification are obtained
from the user and compared to stored indicia. The request for on-line
resources is fulfilled only if the obtained indicia match the stored indicia
(Spec. 4, 8).
Pereira
2. Pereira teaches providing an extranet user access to an object
located in a foreign intranet (col. 3, ll. 20-21).
3. To reduce the replication of profile records across intranets, the
inventive profiling database may include records for users from different
companies (col. 3, ll. 24-28).
Viavant
4. Viavant teaches system and method for selecting and initiating
security services (i.e., authentication) for communication across computer
networks (Abstract).
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Baulier
5. Baulier teaches reducing fraud losses by invoking one or more
authentication measures based on a fraud score that indicates the likelihood
of fraud for that particular call or previously stored calls (Abstract).
Blonder
6. Blonder teaches an automated method for alerting a customer
that a transaction is being initiated and for authorizing the transaction based
on a confirmation/approval by the customer thereto (Abstract).
Spiegel
7. Spiegel teaches a computer-implemented method for
identifying popular nodes within a browse tree or other hierarchical browse
structure based on historical actions of online users, and for calling such
nodes to the attention of users during navigation of the browse tree
(Abstract).
PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
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The Supreme Court . . . has enunciated a definitive test to
determine whether a process claim is tailored narrowly enough
to encompass only a particular application of a fundamental
principle rather than to pre-empt the principle itself. A claimed
process is surely patent-eligible under § 101 if: (1) it is tied to a
particular machine or apparatus, or (2) it transforms a particular
article into a different state or thing. See Benson, 409 U.S. [63]
70, 93 S.Ct. 253 ("Transformation and reduction of an article 'to
a different state or thing' is the clue to the patentability of a
process claim that does not include particular machines.");
Diehr, 450 U.S. [175] 192, 101 S.Ct. 1048 (holding that use of
mathematical formula in process "transforming or reducing an
article to a different state or thing" constitutes patent-eligible
subject matter); see also Flook, 437 U.S. [584] 589 n.9, 98
S.Ct. 2522 ("An argument can be made [that the Supreme]
Court has only recognized a process as within the statutory
definition when it either was tied to a particular apparatus or
operated to change materials to a 'different state or thing'");
Cochrane v. Deener, 94 U.S. 780, 788, 24 L.Ed. 139 (1876) ("A
process is . . . an act, or a series of acts, performed upon the
subject-matter to be transformed and reduced to a different state
or thing.").
In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (footnote omitted).
The machine-or-transformation test is a two-branched inquiry;
an applicant may show that a process claim satisfies § 101
either by showing that his claim is tied to a particular machine,
or by showing that his claim transforms an article. See Benson,
409 U.S. at 70, 93 S.Ct. 253. Certain considerations are
applicable to analysis under either branch. First, as illustrated
by Benson and discussed below, the use of a specific machine
or transformation of an article must impose meaningful limits
on the claim's scope to impart patent-eligibility. See Benson,
409 U.S. at 71-72, 93 S.Ct. 253. Second, the involvement of the
machine or transformation in the claimed process must not
merely be insignificant extra-solution activity. See Flook, 437
U.S. at 590, 98 S.Ct. 2522.
Id., 545 F.3d at 961-62.
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ANALYSIS
SECTION 103 REJECTION OF CLAIMS 1, 4-6, 18-20, 23-25, 37-39, AND 45
Claims 1, 20, and 39 constitute all the independent claims in this
application. Each independent claim recites method or apparatus for: (1)
storing business rules for a plurality of companies having on-line resources;
(2) identifying a company associated with the requested on-line resource
from among the plurality of companies; (3) retrieving the stored business
rules for the identified company; and (4) determining whether the stored
business rules for the identified company associated with the requested on-
line resource indicate that authentication for the user is required.
In concluding that the combination of Pereira and Viavant renders the
claimed invention obvious, the Examiner finds that Pereira teaches access to
a specific group of objects (Ans. 7); that the access control rules of Pereira
are stored associating a company with a requested online resource from
among a plurality of companies [A, B, or C] (Ans. 8); and that while Pereira
teaches that the rules are applied to users, they are also the rules for the
companies involved (Ans. 8). The Examiner further finds that Viavant
teaches determining if authentication is required, and “authentication
methods in” (Ans. 9).
We do not agree with the Examiner’s findings that Pereira and
Viavant, taken together, teach all the limitations of claims 1, 20, and 39.
Broadly stated, the instant invention is concerned with receiving requests for
the use of on-line resources which may correspond to any one of a plurality
of different companies, determining for each request whether the business
rules corresponding to that particular company require user authentication,
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and if so performing such user authentication. Pereira, on the other hand, is
directed to providing an extranet user access to an object located in a foreign
intranet (FF 2). Pereira is concerned with who may be granted access to a
single company’s data; those granted access may be internal or external to
that single company. To reduce the replication of profile records across
intranets, the inventive profiling database may include records for users
from different companies (FF 3; emphasis added). The Examiner correctly
finds that Pereira teaches a database having a “Company” attribute (Ans. 7;
Pereira Fig. 1). However, that attribute is attached to each of a plurality of
users, rather than a plurality of stored data objects to be accessed by users.
The Examiner’s finding that Pereira teaches access to an online resource
“from among a plurality of companies” (Ans. 8) is erroneous. The
Examiner’s statement that an online resource may be associated with
“company A, B, or C” (Ans. 8) lacks support in the record. We have
reviewed Pereira and find no teaching that the on-line resources therein may
be associated with one of a plurality of companies.
Thus, we find that Pereira lacks a teaching of on-line resources
corresponding to a plurality of companies. Because Pereira is directed to
managing a single company’s data, Pereira necessarily lacks a teaching of
identifying which company corresponds to a particular resource request;
retrieving the business rules for the identified company; or determining
whether authentication is required before granting access to the identified
company’s resources.
Because Pereira lacks a teaching of the claim limitations discussed
supra, we find error in the Examiner’s prima facie case of obviousness over
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Pereira in view of Viavant. Therefore, we will not sustain the rejection of
claims 1, 4-6, 18-20, 23-25, 37-39, and 45 under § 103.
CLAIMS 2, 7, 8, 21, 26, 27, 40, AND 43
As explained supra, we reversed the rejection of claims 1, 20, and 39,
from which claims 2, 7, 8, 21, 26, 27, 40, and 43 variously depend. We have
reviewed Baulier, and find that it does not remedy the deficiencies noted
with respect to the combination of Pereira and Viavant. Thus, we will not
sustain the rejection of claims 2, 7, 8, 21, 26, 27, 40, and 43 under § 103, for
the same reasons given with respect to claims 1, 20, and 39, supra.
CLAIMS 10-16 AND 29-35
As explained supra, we reversed the rejection of claims 1 and 20,
from which claims 10-16 and 29-35 variously depend. We have reviewed
Blonder, and find that it does not remedy the deficiencies noted with respect
to the combination of Pereira and Viavant. Thus, we will not sustain the
rejection of claims 10-16 and 29-35 under § 103, for the same reasons given
with respect to claims 1 and 20, supra.
CLAIMS 46-51
As explained supra, we reversed the rejection of claims 1, 20, and 39,
from which claims 46-51 variously depend. We have reviewed Baulier and
Spiegel, and find that they do not remedy the deficiencies noted with respect
to the combination of Pereira and Viavant. Thus, we will not sustain the
rejection of claims 46-51 under § 103, for the same reasons given with
respect to claims 1, 20, and 39, supra.
New Grounds of Rejection of claim 1
We make the following new grounds of rejection using our authority
under 37 C.F.R. § 41.50(b).
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Claim 1 is rejected under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
We have reviewed the steps recited in method claim 1 and find that
none of the steps tie the method to a particular machine or apparatus. We
further find that the method of claim 1 does not transform an article into a
different state or thing. We therefore find that claim 1 is not tailored
narrowly enough to encompass only a particular application of a
fundamental principle rather than to pre-empt the principle itself. Bilski, 545
F.3d at 954. Thus, we conclude that claim 1 is directed to non-statutory
subject matter under § 101.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. 41.50(b), we emphasize that our decision does not
mean the remaining claims are patentable. Rather, we merely leave the
patentability determination of the remaining claims to the Examiner. See
MPEP § 1213.02.

CONCLUSIONS OF LAW
Appellants have shown that the Examiner erred in finding that Pereira
teaches controlling access by users to on-line resources of a plurality of
companies, including storing business rules for a plurality of companies
having on-line resources; identifying a company identified with a requested
on-line resource from among the plurality of companies; retrieving the
stored business rules for the identified company; and determining whether
stored business rules for the identified company associated with the
requested on-line resource indicate that authentication for the user is
required.
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ORDER
The Examiner’s rejection of claims 1, 2, 4-8, 10-16, 18-21, 23-27, 29-
35, 37-40, 43, and 45-51 is reversed.
We have also entered a new ground of rejection against claim 1 under
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that, “[a] new grounds of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding will be
remanded to the examiner …

(2) Request that the proceeding be reheard under 37 C.F.R. § 41.52
by the Board upon the same record …

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.1.36(a).

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REVERSED
37 C.F.R. § 41.50(b)

ELD

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P.O. BOX 10500
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