Ex Parte CHHABRA

Patent Trial and Appeal Board

Aug 27, 2018

12058950 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/058,950 03/31/2008 Jasmeet CHHABRA
45209 7590 08/29/2018
WOMBLE BOND DICKINSON (US) LLP/Mission
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30357-0037
UNITED ST A TES OF AMERICA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
42P27099 4137
EXAMINER
ZIEGLE, STEPHANIE M
ART UNIT PAPER NUMBER
4165
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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):
Database_ Group@bstz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASMEET CHHABRA
Appeal2017-004889
Application 12/058,950 1
Technology Center 4100
Before CAROLYN D. THOMAS, IRVINE. BRANCH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 10-14, 16-19, and 21-27, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to providing increased security in online
electronic transactions. Spec. Abstract.
Illustrative Claim
Claim 10 is illustrative and reproduced below:
1 According to Appellant, the real party in interest is Intel Corporation. Br.
3.
Appeal2017-004889
Application 12/058,950
10. A method comprising:
providing, via a primary operating system executed by a
processor of a computing device, an Internet webpage for
conducting an online transaction;
providing, via a secondary operating system executed by
a manageability engine implemented on hardware logic of the
computing device separate from the processor, an interface to the
Internet webpage;
receiving, at the secondary operating system via the
interface, data entered by a user;
accessmg a hardware memory location of the
manageability engine not connected to the processor to retrieve
secret data representing account information for an account;
comparing, via the secondary operating system, the data
entered by the user to the secret data to verify the data entered by
the user;
transmitting a request to a server associated with the
account upon the secondary operating system determining the
data entered by the user is verified, bypassing the primary
operating system;
in response to the transmitting, receiving, from the server
by the secondary operating system, transaction specific code for
completing the online transaction; and
providing the transaction specific code to the Internet
webpage via a secure interface from the secondary operating
system to the primary operating system.
Rejections2
Claims 10-14, 16-19, and 21-27 stand rejected under 35 U.S.C. § 112
(pre-AIA), second paragraph, as being indefinite for failing to particularly
2 Rather than repeat the Examiner's positions and Appellant's arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
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Application 12/058,950
point out and distinctly claim the subject matter which the inventor or
applicant regards as the invention. Final Act. 6.
Claims 10-14, 16-19, and 21-27 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more. Final Act. 7-9.
Claims 16-19 stand rejected under 35 U.S.C. § 101 because the
claims are directed to non-statutory subject matter, namely a signal. Final
Act. 8-9.
Claims 10, 11, 13, 14, 16, 17, 19, 21, 22, 26, and 27 stand rejected
under pre-AIA 35 U.S.C. § I02(b) as anticipated by Demoff (US 6,456,984,
issued Sept. 24, 2000). Final Act. 10-14.
Claims 12, 18, 23, and 25 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Demoff and Bellovin (US 2001/0056409 Al,
published Dec. 27, 2001). Final Act. 15-16.
Claim 24 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Demoff and Maybayoje (US 2008/0060068 Al, published
Mar. 6, 2008). Final Act. 17.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
July 7, 2015 ("Final Act.") and the Examiner's Answer mailed November
22, 2016 ("Ans.").
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Application 12/058,950
The§ 112 Rejection
Claim 10 recites, in pertinent part, "comparing, via the secondary
operating system, the data entered by the user to the secret data to verify the
data entered by the user; [ and] transmitting a request to a server associated
with the account upon the secondary operating system determining the data
entered by the user is verified."
The Examiner finds the claim indefinite because "[i]t is unclear how
the transmitting can be done upon the data being verifying when no
positively recited step of verifying has occurred." Final Act. 6. The
Examiner also finds as follows:
Ans. 3.
Two people of ordinary skill in the art could come
to two different conclusions regarding whether the
verification is occurring or not. One person of
ordinary skill might come to the conclusion that the
verification is actually occurring; however a second
person of ordinary skill might come to the
conclusion that the verification has not yet occurred.
Appellant argues error because "[b ]ased on such a claim recitation, it
is clear that a comparison is made to verify that data entered by a user." Br.
8 (referring to the limitation "upon the secondary operating system
determining the data entered by the user is verified").
We are persuaded the claim is not indefinite. Without regard to
whether the verifying step is positively recited, the claim can be understood.
The limitation "transmitting a request to a server associated with the
account" is contingent "upon the secondary operating system determining
the data entered by the user is verified." By the plain meaning of the claim,
transmitting is not performed in the absence of the data being verified. So
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Application 12/058,950
we disagree with the Examiner that "a second person of ordinary skill might
come to the conclusion that the verification has not yet occurred" (Ans. 3),
because the claim does not include the verification not occurring.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 112
rejection of claims 10-14, 16-19, and 21-27 on this basis.
The§ 101 Rejections
The Examiner concludes that the claims are directed to an abstract
idea- specifically, a fundamental economic practice or organizing human
activity- without significantly more. Final Act. 7-8. The Examiner
determines "the claims are directed to an abstract idea with additional
generic computer elements that do not add meaningful limitations to the
abstract idea because they require no more than a generic computer to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the industry." Id. at 8; see Ans.
5.
Appellant argues, inter alia, that the Examiner's rejection lacks
evidentiary basis. Br. 9.
At least for this reason, we agree with Appellant. "Whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination." Berkheimer v. HP Inc.,
881 F.3d 1360, 1369 (Fed. Cir. 2018). The Examiner's response to
Appellant's argument does not provide the required evidence that the
computer elements and functions of Appellant's claim "are well-understood,
routine, and conventional activities previously known to the industry." Final
Act. 8; see Ans. 5.
Accordingly, on this record, we cannot sustain the Examiner's
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35 U.S.C. § 101 rejection of claims 10-14, 16-19, and 21-27 because the
Examiner has not shown sufficiently that the claims are directed to a judicial
exception without significantly more.
We reach a different conclusion, however, with respect to the
Examiner's additional 35 U.S.C. § 101 rejection of claims 16-19 because we
agree with the Examiner that the broadest reasonable construction of the
claims includes a signal per se, which is non-statutory subject matter. Final
Act. 8-9; see also Advisory Action 2 (Sept. 11, 2015) ("because the
amendments were not entered the rejection is still maintained at this time").
Specifically, we agree with the Examiner's reasoning and sustain this
rejection, which Appellant fails to rebut. See generally Br. 8-17. 3
The§ 102 Rejection
The Examiner finds claim 10 is anticipated by Demo ff. Final Act.
10-11.
Appellant argues as follows:
Appellant submits that one skilled in the art would
not consider the Examiner's interpretation
reasonable. For instance, Demoff explicitly
discloses that the electronic commerce program is
executed at a PC. See Demoff at col. 4, 11. 29-31.
One skilled in the art would recognize that such a
disclosure would most reasonably indicate that the
program is executed by a processor at the PC, not
software on an interface implemented in memory.
Moreover, there is no disclosure in Demoff of
an interface that is implemented on memory.
Demoff merely discloses that a temporary
transaction number can be generated, assigned, and
3 We note that the Examiner proposed overcoming this rejection by adding
the limitation "non-transitory" to the claim. Final Act. 9.
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Br. 16.
sent back to a requesting mobile telephone unit for
storage in a memory. See Demoff at col. 4, 11. 17-
23. However, there is no disclosure, or reasonable
suggestion, that an interface is implemented on the
memory.
Finally, even if the memory could somehow
be construed as implementing an interface, there is
no disclosure of providing both an Internet
webpage for conducting an online transaction via a
primary operating system executed by a processor
and such an interface implemented on memory.
The Examiner responds as follows:
Demoff, in at least column 5 line 44-column 6 line
1 7 discloses a merchant providing an internet
webpage for conducting an online transaction to a
customer via the customer's computer. Demoff, in
at least Figures 1-3 and 8, the related text, column 4
lines 29-54, and column 7 lines 9-32, also discloses
a user using an electronic commerce program that is
implemented using the memory of the computer, to
execute the program in conjunction with the
transaction processing system server to generate a
transaction specific code for completing the
transaction at the merchant. The code can be
automatically inputted into the internet webpage of
the merchant subsequent to being created. The
broadest reasonable interpretation of a second
operating system executed by a manageability
engine is software and an interface that is
implemented on memory. The electronic commerce
program is software and an interface that is
implemented using the memory of the computer in
conjunction with the separate transaction
processing system server to achieve the transaction
specific code, the memory is hardware that is
separate from the processor. Therefore, as shown in
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Ans. 7.
the final rejection, Demoff does indeed disclose the
claimed limitations.
On this record, in view of the Examiner's unrebutted findings, we are
not persuaded of error. Specifically, Appellant's arguments (Br. 16) do not
rebut the Examiner's specific determination that
[t]he broadest reasonable interpretation of a second
operating system executed by a manageability
engine is software and an interface that is
implemented on memory. The electronic
commerce program is software and an interface that
is implemented using the memory of the computer
in conjunction with the separate transaction
processing system server to achieve the transaction
specific code, the memory is hardware that is
separate from the processor.
Ans. 7. The Specification supports this interpretation. In particular, the
Specification discloses that although "[t]he manageability may be localized
in a hardware portion of a computer," "[a]ltemately the manageability
engine or its functionality may be embodied in protected or secure software
executed by for example a main processor and/or OS of a computer, or its
functionality may be embodied in a manner other than a separate module."
Spec. 4.
Accordingly, on this record, we sustain the Examiner's rejection
under§ 102 of claim 10, and the Examiner's rejections under§§ 102 and
103 of the remaining claims, argued on the same basis. See Br. 16.
SUMMARY
We do not sustain the Examiner's 35 U.S.C. § 112 rejection of claims
10-14, 16-19, and 21-27, nor the Examiner's 35 U.S.C. § 101 rejection of
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Application 12/058,950
claims 10-14, 16-19, and 21-27 because the claims are directed to a judicial
exception without significantly more.
We sustain (1) the Examiner's 35 U.S.C. § 101 rejection of claims
16-19 because the claims include non-statutory subject matter, i.e., a signal
perse; (2) the Examiner's 35 U.S.C. § 102 rejection of claims 10, 11, 13, 14,
16, 17, 19, 21, 22, 26, and 27; and (3) the Examiner's 35 U.S.C. § 103
rejection of claims 12, 18, 23, and 25.
DECISION
The Examiner's decision rejecting claims 10-14, 16-19, and 21-27 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). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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