Ex Parte Guiney

Patent Trial and Appeal Board

Jun 5, 2018

14571958 (P.T.A.B. Jun. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/571,958 12/16/2014 Christopher A. Guiney
120493 7590 06/07/2018
Harness, Dickey & Pierce, PLC
7700 Bonhomme
Suite 400
St. Louis, MO 63105
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.
16754-000077-US 6619
EXAMINER
LAGOR, ALEXANDER
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
06/07/2018 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):
gwmefile@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER A. GUINEY
Appeal2017-010755
Application 14/571,958 1
Technology Center 2400
Before JOHNNY A. KUMAR, MONICA S. ULLAGADDI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 4, 8, 12, 15, 18, 22, 23, 34--40, 42, and 46-49, which constitute
all of the claims pending in this application. Claims 2, 3, 5-7, 9-11, 13, 14,
16, 17, 19-21, 24--33, 41, and 43--45 have been cancelled. See Supp. App.
Br. 26-31 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellant identifies itself, MasterCard International Incorporated, as the
real party in interest. App. Br. 3.
Appeal2017-010755
Application 14/571,958
THE INVENTION
The disclosed and claimed invention is directed to a systems and
methods for user authentication. Spec. i-f 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for authenticating a user, the method
compnsmg:
at a server computer:
generating a symbol arrangement;
generating a series of authentication instructions with
associated human intelligible text representing the series of
instructions and computer-executable code for
performing the series of instructions on a machine,
wherein at least some of the instructions relate to performing
actions on the symbol arrangement and wherein applying the
series of instructions on the symbol arrangement yields a non-
ambiguous instruction series result;
executing the computer-executable code for performing
the series of instructions on a machine, thereby obtaining the
instruction series result; and
transmitting the symbol arrangement and the human
intelligible text representing the series of instructions from the
server computer to a user computer;
at the user computer:
displaying the symbol arrangement and the human
intelligible text representing the series of instructions on a
display of the user computer; receiving a user input; and
transmitting the result of the user input from the user
computer to the server computer;
at the server computer:
comparing the received result of the user input with the
instruction series result; and
authenticating the user if the received result of the user
input corresponds to the instruction series result.
2
Appeal2017-010755
Application 14/571,958
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Kolb
Jakobsson et al.
("J akobsson")
US 2010/0306055 Al
US 2013/0007875 Al
REJECTIONS
Dec. 2, 2010
Jan.3,2013 2
Claims 1, 4, 8, 12, 15, and 18 stand rejected under 35 U.S.C.
§ 102(a)(l) as being anticipated by Jakobsson. 3 Final Act. 5-7.
Claims 22, 23, 34--40, 42, and 46-49 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Jakobsson in view ofKolb. 4 Final Act. 8-
20.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are persuaded by Appellant's arguments regarding the pending claims that
the Examiner erred.
2 Jakobsson was filed on June 20, 2011.
3 Although the heading indicates that claim 18 is rejected as anticipated,
there is no discussion in the Office Action regarding the additional limitation
recited in claim 18. Because we reverse the Examiner's rejection of
independent claim 1 from which claim 18 depends, that omission is
harmless.
4 Although the heading indicates that claims 41 and 43--45 are rejected on
this ground, those claims have been cancelled. Compare Final Act. 17-19
(reciting rejections of claims 41 and 43--45), with id.at 1 (indicating that
claims 41 and 43--45 are not among the pending claims).
3
Appeal2017-010755
Application 14/571,958
Claims 1, 4, 8, 12, 15, 18, 22, 23, and 34-39
Appellant argues the Examiner erred in finding Jakobsson discloses
"at a server ... executing the computer-executable code for performing the
series of instructions on a machine, thereby obtaining the instruction series
result," as recited in claim 1. App. Br. 8-17; Reply Br. 2-8. According to
Appellant, "Jakobsson merely discloses a CAPTCHA test, in which pictures
of cars, boats, and animals are displayed to a user, along with instructions on
how to interact with the pictures." App. Br. 9. Appellant further contends
there is no disclosure in Jakobsson of the computer following the
instructions itself to determine the correct answer:
There is NO disclosure in Jakobsson, though, that the
server actually rotates/moves the cube, in accordance with the
cues, and then compares the end result (as obtained by the
server) to an end result received from the user. In fact, here,
again, Jakobsson specifically says that a machine would have
"a difficult time comprehending the instructions (particularly
since the instructions are graphical in nature) and therefore will
likely fail the CAPTCHA." See, Jakobsson at i-f0049.
Thus, Jakobsson fails to disclose that the server actually
performs the instructions on how to interact with the pictures
(which are provided to the user), i.e., that the server is
separately obtaining the result of the instructions and
comparing that result to the results received from the user
performing the instructions. That is, again in the above
example, the server is not "dragging" the sail boat to the dog
(i.e., performing the instruction) to determine what the correct
dragging path or result of the user's input would be. Rather, the
Jakobsson computer server merely determines if the sail boat is
sufficiently located over the dog, by means of a predetermined
threshold. See, Ci-fi-10051-52 and i-fi-f 65-66 of Jakobsson. More
specifically, "did the outer boundary of the boat touch the outer
boundary of the dog?" See, i-f0052 of Jakobsson. Nothing in
Jakobsson, as cited by the Examiner, says more.
4
Appeal2017-010755
Application 14/571,958
App. Br. 10-11. Instead, Appellant argues, "[t]he only disclosure in
Jakobsson of the instructions being performed is the performance of the
instructions by the user ... not the server or some other machine - as is
recited in independent Claim 1." Id. at 11. Appellant also asserts the
Examiner's claim construction in the Answer is unreasonable in that it does
not require the instructions to be performed by a machine at the server.
Reply Br. 3.
The Examiner finds Jakobsson discloses the executing the computer-
executable code step recited in claim 1. Final Act. 5 (citing Jakobsson
i-fi-164--70). The Examiner also concludes that "the claim does not require
that the server 'actually' performs the instructions on how to interact with
the pictures." Ans. 4. Instead, the Examiner concludes that the "executing"
limitation refers to "computer code that generates the questions and answers
that are then later manipulated by the user on a device in possession by the
user." Id. at 5.
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
5
Appeal2017-010755
Application 14/571,958
We disagree with the Examiner's interpretation of the claim. Claim 1
recites a number of steps that are performed at the server, including the
disputed executing the computer-executable code step. Although the claim
does not specify which specific machine is performing the step, it must be a
machine at the server. Accordingly, the Examiner's interpretation that the
step can be performed by a user at the user's computer is unreasonable and
inconsistent with the Specification.
We are persuaded by Appellant's argument as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
Jakobsson teaches the properly construed executing the computer-executable
code step recited in claim 1. As Appellant argues, there is nothing in the
cited sections of Jakobsson that describes the computer performing the
instructions to get the results. See Jakobsson i-fi-164--70
Accordingly, we agree with Appellant the Examiner's finding that
Jakobsson discloses the disputed limitation is in error because it is not
supported 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.); see also In re Warner, 379 F.2d 1011,
1017 (CCP A 1967) ("The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.").
Therefore, we are constrained on this record to reverse the Examiner's
rejection of claim 1, along with the rejections of dependent claim 4, 7, 12,
15, and 18.
6
Appeal2017-010755
Application 14/571,958
Moreover, because the Examiner has not shown that Kolb cures the
foregoing deficiency regarding the rejection of the claim 1, we will not
sustain the obviousness rejection of dependent claims 22 and 23, which
depend from claim 1, and claims 34--39, which recite limitations
commensurate in scope to the disputed limitation discussed above.
Claims 40, 42, and 46--49
Appellant argues the Examiner "fails to provide any explicit
explanation for the motivation to combine Jakobsson and Kolb." App. Br.
22 (emphasis omitted); see also Reply Br. 8. Instead, Appellant argues "the
Examiner merely provides a restatement of generic motivations" and,
therefore, fails to make a prima facie case of obviousness. App. Br. 23.
With regard to the additional findings in the Answer, Appellant asserts those
findings are still insufficient because "the [E]xaminer has simply added the
phrases 'words,' 'letters,' and 'symbols' to certain tenants of obviousness
jurisprudence." Reply Br. 10-11.
In the Final Action, the Examiner made the following finding as a
reason to combine the teachings of Jakobsson and Kolb:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the teaching of
Jakobsson to include multiple symbols from the symbol
arrangement, as taught in Kolb.
One or more of the following underpinning rational(s), as
discussed in KSR International Co. v. Teleflex Inc., et al., 550
U.S. 398 (2007) U.S.P.Q.2d 1385, also see MPEP § 2141 (Ill),
are used to support this conclusion of obviousness:
(A) Combining prior art elements according to known
methods to yield predictable results;
(B) Simple substitution of one known element for
another to obtain predictable results;
7
Appeal2017-010755
Application 14/571,958
(C) Use of known technique to improve similar devices
(methods, or products) in the same way;
(D) Applying a known technique to a known device
(method, or product) ready for improvement to yield
predictable results;
(E) "Obvious to try" - choosing from a finite number of
identified, predictable solutions, with a reasonable expectation
of success;
(F) Known work in one field of endeavor may prompt
variations of it for use in either the same field or a different one
based on design incentives or other market forces if the
variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior
art that would have led one of ordinary skill to modify the prior
art reference or to combine prior art reference teachings to
arrive at the claimed invention.
Final Act. 16-17. In the Answer, the Examiner made the additional finding
that:
Adding alpha numeric characters, i.e. letters and
numbers, in the instructions or answer would have:
a. yielded the predictable result of having letters instead
of symbols;
b. substituted letters for symbols;
c. use a known technique of using letters over symbols;
d. applied the known technique for substituting letters
with symbols to a known device (e.g. computer);
e. obvious to try to user letters instead of symbols;
f. using symbols for CAPTCHAs, as for example
demonstrated by Jakkobson, would have prompted the variation
of using letters; and
g. Jakkobson discloses the use of obfuscated words or
letters in the background (see i-f0005).
Ans. 9.
"In rejecting claims under 35 U.S.C. § 103, the [E]xaminer bears the
initial burden of presenting a prima facie case of obviousness." In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d
8
Appeal2017-010755
Application 14/571,958
1443, 1445 (Fed. Cir. 1992)). Rejections based on obviousness must be
supported by "some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness." In re Kahn, 441F.3d977,
988 (Fed. Cir. 2006) (cited with approval in KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007)). Additionally, a rejection cannot be based on
"speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis." Warner, 379 F.2d at 1017.
We agree with Appellant that the Examiner has failed to provide
adequate reasoning to combine the references to support the legal conclusion
of obviousness of independent claim 40. The reasoning provided by the
Examiner is generic, conclusory, and fails to provide sufficient factual basis
as to why a person of ordinary skill in the art would, as opposed to could,
combine the relevant teachings of the references.
Accordingly, we do not sustain the Examiner's rejection of claim 40,
along with the rejection of dependent claims 42 and 46-49.
DECISION
For the above reasons, we reverse the Examiner's decisions rejecting
claims 1, 4, 8, 12, 15, 18, 22, 23, 34--40, 42, and 46-49.
REVERSED
9