Ex Parte Doyle

Board of Patent Appeals and Interferences

Sep 21, 2007

09537068 (B.P.A.I. Sep. 21, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.
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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RONALD P. DOYLE
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Appeal 2007-0231
Application 09/537,0681
Technology Center 2100
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Decided: September 21, 2007
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Before KENNETH W. HAIRSTON, LEE E. BARRETT, and
ALLEN R. MacDONALD, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-27. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We affirm-in-part.

1 Application for patent filed March 28, 2000, entitled "Using
Biometrics on Pervasive Devices for Mobile Identification."
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BACKGROUND
The claims are directed to a method, system, and computer program
product for using biometrics on mobile pervasive devices for purposes of
mobile identification. Mobile pervasive devices are mobile computing
devices which are typically small, lightweight, and with a relatively limited
amount of storage, such as cellular phones, programmable digital assistants
(PDAs), handheld computers, etc. (Specification 1-2).
Claim 1 is illustrative:
1. A computer program product for using biometrics on pervasive
devices for mobile identification, said computer program product
embodied on a medium readable by said pervasive device and
comprising:

programmable code means for capturing, using a biometric
input reader which is attached to or incorporated within a mobile
pervasive device possessed by a first party, biometric data of a second
party; and

programmable code means for identifying said second party
using said capture biometric data by comparing biometric data to
previously-stored biometric data.

THE REFERENCES

Maes US 6,016,476 Jan. 18, 2000
Crane US 6,510,236 B1 Jan. 21, 2003
(filed Dec. 11, 1998)
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THE REJECTIONS
Claims 1-4, 7, 10-13, and 16 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Crane.
Claims 5, 6, 8, 9, 14, 15, and 17-27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Crane further in view of Maes.

DISCUSSION
Claims 1 and 10
Arguments and rejection
Claims 1 and 10 recite "capturing, using a biometric input reader
which is attached to or incorporated within a mobile pervasive device
possessed by a first party, biometric data of a second party" and "identifying
said second party using said capture biometric data."
Appellant argues that "it is clear that these distinct 'first' and 'second'
parties are simultaneously involved when capturing biometric data and using
this biometric data for identification" (Br. 8). It is argued that "Appellant
finds no teaching in Crane that pertains to two distinct parties who are
simultaneously participating in any action" (Br. 9). It is argued that Crane
discusses validating the user, which is distinct from Appellant's two-party
claim limitations (Br. 9-10).
We agree with Appellant that the Examiner misinterprets the
argument about "simultaneously involved" to mean "simultaneously
processing biometric data of two different parties" and finding this is not
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claimed (Answer 7, 9, and 12). We agree with Appellant's reply (Reply
Br. 2-4) that what is argued is that there are two parties simultaneously
involved, the first party who possesses the mobile pervasive device and the
second party whose biometric data is being captured.
The most relevant arguments by the Examiner are: (1) ownership or
physical possession of a device is not a patentable distinction (Answer 8);
(2) the device and system have no structural differences from the prior art
and "the use of a device can not serve to distinguish a system, apparatus or
product, if there [are] no structural differences" (Answer 11); (3) "apparatus
or device claims must distinguish over the prior art in terms of structur[e]
rather than function" (Answer 12); and (4) "[t]he limitation of possession,
which is a descriptive term does not relate to nor does it affect the
functionality and operations of the biometric pervasive device"
(Answer 13-14) and does not limit the claim.
Appellant responds that the "identifying" limitation of claim 10
performs a different function than the authenticating taught by Crane (Reply
Br. 6). "In particular, Appellant's 'identifying' limitation is for identifying
'said second party' who[se] biometric data has been captured -- and . . . this
second party is not the device-possessing first party that is being
authenticated by Crane" (Reply Br. 6).

Analysis
Claim 1 recites a "computer program product . . . said computer
program product embodied on a medium readable by said pervasive device,"
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which product comprises "programmable code means" for performing two
functions. The "programmable code means" is interpreted to be instructions
of a computer program stored on a tangible medium in the pervasive device.
We interpret the limitations "for capturing" and "for identifying" to be
functions to be performed when the program is executed on the pervasive
device (i.e., executory functions), because what is claimed is a static
computer program product, not a system or a method. The structures of the
pervasive device and the biometric input reader are interpreted to be
statements of the environment for the computer program product and not
part of the claimed subject matter of the computer program product.
Claim 1 recites "programmable code means for identifying said
second party using said captured biometric data by comparing biometric data
to previously-stored biometric data," which requires that the comparison
takes place on the pervasive device where the computer program product is
stored. This apparently corresponds to the alternative embodiment described
at Specification 16-17 where the pervasive device contains pre-stored
biometric information. Claim 2 recites transmitting biometric data to a
remote server, retrieving information using the biometric data, and returning
the retrieved information to the pervasive device. Claim 2 corresponds to
the description in the Specification where the comparison apparently takes
place at the server (it is not expressly described that the transmitted
biometric data is compared to biometric data at the server). It is not clear
that claim 2 is consistent with and further limits claim 1 because claim 1
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requires that the comparison of biometric data is done at the pervasive
device where the program product is located, whereas claim 2 implies that
comparison is done by server software. We leave the issue to be resolved by
Appellant and the Examiner. For purposes of this appeal, we assume that
claim 1 covers both remote and local comparison of biometric data.
There is another related claim language problem between claims 1
and 2. Claim 1 recites a "computer program product . . . said computer
product embodied on a medium readable by said pervasive device." Claim 2
recites "programmable code means for retrieving, by said remote server,
information from a repository using said transmitted biometric data; and
programmable code means for returning said retrieved information to said
mobile pervasive device" which requires two programmable code means at
the server, which is inconsistent with the computer program product of
claim 1 which is embodied on a medium readable by the pervasive device,
not a system of software. We again leave the issue to be resolved by
Appellant and the Examiner. Claims 10 and 11 do not have this problem
because they are to a "system."
We conclude that the limitations "possessed by a first party" and
"biometric data of a second party" are statements of intended use for the
computer program product structure which do not limit the structure and are
not entitled to any patentable weight. "There is an extensive body of
precedent on the question of whether a statement of intended use constitutes
a limitation for the purpose of patentability. Such statements often, although
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not necessarily, appear in the claims preamble . . . . Whether a preamble of
intended purpose constitutes a limitation to the claims is, as has long been
established, a matter to be determined on the facts of each case in view of
the claimed invention as a whole." (Citations omitted.) In re Stencel,
828 F.2d 751, 754, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987). See also
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345, 65 USPQ2d 1961, 1965 (Fed. Cir. 2003) ("An intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.");
Loctite Corp. v. Ultraseal, Ltd., 781 F.2d 861, 868, 228 USPQ 90, 94 (Fed.
Cir. 1985) ("we interpret 'adapted to remain ... metal surfaces' as merely
language of intended use, not a claim limitation"). What is claimed is
structure: "programmable code means" stored on a tangible medium. Who
is in "possession" of the mobile pervasive device and who is seeking to
validate biometric data do not affect the structure. It is well known that the
only way to claim a new use for a known structure is as a "process" under
35 U.S.C. § 100(b). See 1 Chisum on Patents § 1.03[8] (2003).
Crane inherently has programmable code means to capture biometric
data and programmable code means to identify the person to allow access
because it may be a mobile pervasive computing device which inherently
runs on software (col. 4, ll. 24-28). Crane indicates that the comparison of
captured biometric data to previously-stored biometric data is performed by
the authentication device 16 in Figure 1 or the authentication controller 57 in
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Figure 3, which then sends an identification of the device type (the
"device-id"), as well as what user (the "id") is requesting access, to an
application server 12 (col. 4, ll. 48-63). If the device is trusted, the
application server 12 sends the authentication data to an authentication
device server 18 (col. 4, l. 64, to col. 5, l. 27). The authentication device
server 18 verifies the authentication data and provides a Yes or No to the
application server 12, which knows if the user is to be given access and
passes an authorization token to the user (col. 5, ll. 29-37). Thus, Crane
discloses the claimed structure of a program embodied in the pervasive
device for capturing and comparing biometric data to identify a person. This
is not contested by Appellant. The limitation of "programmable code means
for identifying said second party using said capture biometric data by
comparing biometric data to previously-stored biometric data" in claim 1
does not exclude granting access to the pervasive device in response to the
identifying a person as opposed to taking some other action.
The limitations of "possessed by a first party" and "biometric data of a
second party" are not entitled to patentable weight because they do not affect
the structure, but only recite an intended use for the structure. For example,
if the owner of a pervasive device which uses biometric data to allow the
owner access gives it to another person to hold while he or she enters the
biometric data, the device is unchanged, but the device is "possessed by a
first party" who holds the device and the owner is a second party who is
identified by "biometric data of a second party." That is, who "possesses"
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the device (legally or physically) and who is "identified" does not change the
structure of the computer program product. The rejection of claim 1 is
affirmed.
Claim 10 is also directed to structure and the limitations of "possessed
by a first party" and "biometric data of a second party" are not given
patentable weight because they do not affect the structure. The rejection of
claims 10 is affirmed for the reasons discussed for claim 1.

Claims 3 and 12
Arguments and rejection
Claim 2 recites retrieving information from a remote server using the
transmitted biometric data and claim 3 recites "wherein said retrieved
information comprises a photograph of a party to whom said biometric data
corresponds." Claim 12 contains the same limitation. Appellant argues that
Crane does not teach these limitations and, in particular, the photograph is a
photograph of the party, not a photograph of biometric data (Br. 13-14).
The Examiner characterizes Appellant's argument as saying that Crane
does not teach the use of a photograph as biometric data (Answer 14). The
Examiner provides a long discussion of the biometric operations
(Answer 14-23). The gist of the discussion appears to be that photographs
were a well known type of biometric data which is encompassed by Crane.
Appellant responds that the Examiner misinterprets the "photograph"
in the claims. It is argued that the claim language does not specify use of
photographs as biometric data and that "photographs" refers to conventional
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photographs, used as a picture of a person (Reply Br. 6-7). It is noted that
the photographs are retrieved based on the biometric data (Reply Br. 7).

Analysis
We agree with Appellant's arguments. The photograph is recited to be
a photograph of a party to whom the biometric data corresponds. The
photograph is not used as biometric data as understood by the Examiner.
The photograph is retrieved in response to transmitted biometric data, which
is not taught by Crane. Crane only returns an authorization token (col. 5,
ll. 29-37). Thus, to the extent the nature of the biometric data (a photograph)
is considered "nonfunctional descriptive matter," Crane does not return any
biometric data. The rejection of claims 3 and 12 is reversed.

Claim 19
Arguments and rejection
Although claim 19 stands rejected under 35 U.S.C. § 103(a), it
appears that the Examiner rejects it for the reasons stated with respect to
claims 1 and 10 because the Examiner does not propose modifying Crane
with any teaching of Maes. Appellant argues that claim 19 is patentable for
the same reasons discussed with respect to claims 1 and 10, in particular,
because there is no teaching of two distinct parties that can be aligned to the
claimed "first party" and "second party" and because no text from Maes has
been cited as teaching these distinct parties (Br. 16). The Examiner relies on
the reasoning for claims 1 and 10 (Answer 23).
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Analysis
It is well known that a "new use" of a known machine, manufacture,
or composition of matter must be claimed as a "process" under 35 U.S.C.
§ 100(b). Whereas the statements of intended use were not entitled to
patentable weight in the computer program product of claim 1 and the
system of claim 10 because they did not limit the structure, the process
format of claim 19 requires a slightly different analysis. The issue is
whether the "use" limitations of "possessed by a first party" and "biometric
data of a second party" patentably distinguish the method of claim 10 from
the method performed by the apparatus of Crane. "A different use of a
known substance, machine, or process is not 'new' within the meaning of this
statute [§ 100(b)] if it merely analogous or cognate to the uses theretofore
made." Elrick Rim Co. v. Reading Tire Mach. Co., 264 F.2d 481, 486-87,
120 USPQ 514, 518 (9th Cir. 1959).
The limitation of "possessed by a first party" simply requires that the
device is physically possessed by a person; it does not require legal
ownership. Pervasive computing devices can be physically possessed by
anyone, so this use limitation would at least have been obvious. The
limitation of "biometric data of a second party" simply requires that another
person, different from the first person, enter his or her biometric data.
Again, nothing about pervasive computing devices limits who may enter
biometric information, so this use limitation would at least have been
obvious. For example, if you are showing off your pervasive computer
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device to a friend and you enter your biometric data while he or she is
holding it, the limitations are met. Or, if you are using a pervasive device
which is the property of your employer, this satisfies the first person/second
person limitation. The biometric verification device in Crane can be used
for verification for any purpose by any party. Therefore, the rejection of
claim 19 is affirmed.

Claims 8, 17, and 26
Arguments and rejection
The Examiner finds that Crane does not disclose a secure meeting
where the coded means is used to identify attendees at a meeting. The
Examiner finds that Maes discloses providing access to a secure building via
a pervasive device at column 2, lines 50-58 (Final Rejection 4). Presumably,
(because it is not expressly stated), the rejection is that it would have been
obvious to use the pervasive device of Crane to control access to a secure
building in view of the teachings of Maes.
Appellant argues that the cited portion of Maes does not pertain to "a
plurality of meeting attendees" or a plurality of any other type of people, nor
does it teach the two-party approach (Br. 17).

Analysis
Claim 8 presents the same issue of intended use as claim 1. The
limitation that the computer program product "is used to enable on-demand
creation of a secure meeting site by repeating operation of said
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programmable code means for capturing and said programmable code means
for identifying for each of a plurality of meeting attendees," is a statement of
intended use for the device once a person has been identified and the use
does not limit the structure of the "computer program product." That is,
"repeating operation of said programmable code means for capturing and
said programmable code means for identifying for each of a plurality of
meeting attendees" is done by the programmable code means in Crane for
each user authorized for access to the computer or the network resource.
Allowing access to a meeting based on the outcome of the identification is
not performed by the computer program product, but is simply a way that
the outcome of the identification can be used. Claim 8 does not patentably
distinguish over the computer program structure in Crane.
Although a further reference is not needed, Maes discloses using a
pervasive device (a PDA) with biometric security to provide user
verification (col. 2, ll. 31-34) to allow access to a building (col. 2, ll. 50-58),
which would have motivated one of ordinary skill in the art to control access
to a building based on biometric identification. The building is considered a
secure meeting site because verification is necessary to enter. Claim 8 does
not patentably distinguish over the computer program structure in Crane or
the use of the device in Crane to control access to a building as taught by
Maes. The rejection of claim 8 is affirmed. Claims 17 and 26 contain
similar limitations and the rejection of claims 17 and 26 is also affirmed.

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Claims 9, 18, and 27
Arguments and rejection
The Examiner finds that Crane does not disclose transmitting a trusted
message. The Examiner finds that Maes discloses transmitting trusted
messages at column 2, lines 23-67, column 3, lines 15-35, and 40-67.
Presumably, (because it is not expressly stated), the rejection is that it would
have been obvious to use the pervasive device of Crane to transmit a trusted
message in view of the teachings of Maes.
Appellant argues that the cited portion of Maes does not pertain to
"biometric data of a second party" or a "second party [who] is a potential
recipient of [a] trusted message," but relates to utilizing biometric security to
provide user verification (Br. 18). It is argued that Maes does not teach a
two-party approach as claimed in the claims from which claims 9, 18, and 27
depend (Br. 18).

Analysis
Again, claim 9 presents the issue of intended use. Claim 9 recites that
"said computer program product is used to exchange a trusted message by
performing operation of said programmable code means for capturing and
said programmable code means for identifying wherein said second party is
a potential recipient of said trusted message." The only structural limitations
are the programmable code means for capturing and the programmable code
means for identifying. The exchange of a trusted message is not required to
be performed by operation of the computer program product as disclosed in
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the Specification, pages 13-14, where the possessor of the pervasive device
decides whether to deliver a message depending on the identification. Thus,
the use does not structurally limit the computer program product and is not
entitled to patentable weight.
Although a further reference is not needed, Maes discloses using a
pervasive device (a PDA) with biometric security to access confidential
information (col. 2, ll. 31-34, 50-58), which is another way of saying
exchanging a trusted message. Claim 9 does not patentably distinguish over
the computer program structure in Crane or the use of the device in Crane to
control access to information as taught by Maes. The rejection of claim 9 is
affirmed. Claims 18 and 27 contain similar limitations and the rejection of
claims 18 and 27 is also affirmed.

Claim 21
Claim 21 is rejected for the same reasons as stated for claims 3
and 12. For the reasons discussed in connection with claims 3 and 12, the
rejection of claim 21 is reversed.

Claims 2, 4-7, 11, 13-16, 20, and 22-25
Appellant states that dependent claims 2, 4-7, 11, 13-16, 20, and
22-25 stand or fall with the independent claims from which they depend
(Br. 15; Br. 20). Because these claims depend on rejected claims whose
rejection has been affirmed, the rejection of claims 2, 4-7, 11, 13-16, 20, and
22-25 is affirmed.
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CONCLUSION
The rejections of claims 1, 2, 4-11, 13-20, and 22-27 are affirmed.
The rejections of claims 3, 12, and 21 are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).
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AFFIRMED-IN-PART

eld

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