Ex Parte Herder

Board of Patent Appeals and Interferences

Aug 11, 2009

09627558 (B.P.A.I. Aug. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS J. HERDER
____________

Appeal 2008-004578
Application 09/627,558
Technology Center 2400
____________

Decided: August 11, 2009
____________

Before LANCE LEONARD BARRY, JAY P. LUCAS, and
THU A. DANG, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2008-004578
Application 09/627,558

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The Patent Examiner rejected claims 1-8 and 10-22. The Appellant
appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
INVENTION
The invention at issue on appeal biometrically validates a user for an
on-line transaction to be effectuated using a transaction card such as a
calling card or phone card. (Spec. 7.)

ILLUSTRATIVE CLAIM
1. A method of validating a user for a transaction to
be effectuated by using a transaction card, comprising:
configuring a biometric profile for said user, said
biometric profile including a plurality of biometric
samples received from the user, the plurality of biometric
samples corresponding to a plurality of questions;
associating said biometric profile with an indicium
assigned to said transaction card;
biometrically interrogating said user when said
transaction is attempted by said user, wherein said
biometrical interrogation includes querying said user for
a biometric response associated with a randomly selected
one of said plurality of questions;
monitoring said biometric response generated with
respect to said user in response to the biometrical
interrogation;
determining if said biometric response matches a
biometric sample in said biometric profile corresponding
to the randomly selected one of said plurality of
questions; and
if so, approving said user for said transaction.

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PRIOR ART
Weiss US 4,998,279 Mar. 5, 1991
Fujimoto US 5,897,616 Apr. 6, 1999
Kanevsky US 5,897,616 Apr. 27, 1999
Buffam US 6,185,316 Feb. 6, 2001
Glaze US 6,320,974 Nov. 20, 2001
Sawyer US 6,324,271 Nov. 27, 2001
Chmaytelli US 6,542,729 Apr. 1, 2003

REJECTIONS
Claims 1-3 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buffam and Kanevsky.

Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buffam, Kanevsky, and Fujimoto.

Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buffam, Kanevsky, and Glaze.

Claims 8 and 101 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buffam, Kanevsky, and Sawyer.

Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buffam, Kanevsky, Sawyer, and Fujimoto.

1 The Reply Brief (p. 3) mistakenly lists claim 9 as part of this rejection. As
noted elsewhere therein (p. 2), the Examiner has "indicat[ed] at page 2 of the
Examiner's Answer that claim 9 stands objected to as being dependent upon
a rejected based claim" rather than rejected.
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Claims 12-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buffam, Sawyer, Chmaytelli, and Weiss.

Claims 16-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buffam, Kanevsky, Sawyer, and Weiss.

CLAIMS 1-8, 10, 11, AND 16-22
Based on the Appellant's arguments (Appeal Br. 6-21), we will decide
the appeal on claims 1-8, 10, 11, and 16-22 on the basis of independent
claims 1, 8, and 16 alone. See 37 C.F.R. § 41.37(c)(1)(vii). "With this
representation in mind, rather than reiterate the positions of the parties in
toto, we focus on the issue therebetween." Ex parte Nikoonahad, No. 2006-
3247, 2007 WL 1591636, at *2 (BPAI 2007).

ISSUE
The issue before us is whether the Appellant has shown error in the
Examiner's finding that the combined teachings of Buffam and Kanevsky
would have suggested querying a user for a biometric response associated
with a randomly selected one of a plurality of questions and determining if
the response matches a biometric sample in a biometric profile
corresponding to the randomly selected question as in claim 1; querying a
user for a voice response to a question that is randomly selected from a
plurality of personalized questions as in claim 8; and querying a user for a
response relating to a randomly selected one of a plurality of biometric
samples as in claim 16.

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LAW
"The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art." In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)). "Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references." In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). In determining
obviousness, furthermore, a reference "must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole." Id.

FINDINGS OF FACT ("FFS")
1. Buffam discloses that "biometric authentication methods typically
employ two modes: enrollment, step 800, and verification, step 805, as
illustrated in FIG. 7." (Col. 18, ll. 22-24.)

2. "The enrollment process includes the storing, step 820, of a data
set 825 representative of an individual's biological feature (physical
characteristic or personal trait) to be used later to verify the user's
identity." (Id. ll. 27-31.) The biological feature may be "a voice pattern . . .
." (Id. l. 41.) "Once the digital representation [of the voice pattern], called
the transient template, has been processed to the desired point, it is then
stored, usually in some form of user credential 860." (Id. ll. 51-54.) "[T]he
user credential 160 on which [the] template . . . is stored can be a smartcard .
. . ." (Col. 14, ll. 19-20.)

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3. "Once the user is enrolled, the biometric is used to verify the user's
identity, step 805. When claimant 870 needs to be authenticated, a
sample 872 of the user's biological feature is sensed, digitized, and
processed. The digitized sample is compared to the stored biometric
template, step 875, here stored in credential 860." (Col. 18, l. 64 – col. 19,
l. 2.) "A comparison algorithm used in comparator 880 yields a result of
how close the live scan is to the stored template. If the result falls into an
'acceptable' range, an affirmative response is given, step 885; if the result
falls into an 'unacceptable' range, a negative response is given, step 890."
(Col. 19, ll. 5-9.)

4. Kanevsky discloses that "[v]oice-based verification systems are
especially useful when it is necessary to identify a user who is requesting
telephone access to a service/facility" (col. 2, ll. 1-3); "such services may
include . . . telephone services . . . ." (Col. 1, ll. 25-26.) Like Buffman,
Kanevsky features enrollment and verification modes.

5. During enrollment, Kanevsky explains that "information in . . .
database[s] and . . . user models may be built . . . ." (Col. 7, ll. 41-43.)
Specifically, a "speaker may call into the system and, after making an
identity claim, the system asks questions and uses the answers to build . . .
models . . . ." (Id. ll. 44-47.)

6. During verification, Kanevsky explains that "[a] potential user 12
of the service/facility . . . . identifies himself via his name, for example, and
requests access to the service/facility.” (Col. 6, ll. 1-6.) "[U]tilizing the
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specific information from the identified user's database, the server 22
generates a random question (or multiple random questions) for the user . . .
. The user answers the random question(s) which is sent back to the
server 22 . . . ." (Id. ll. 24-28.) “The semantic analyzer 40 analyzes the
answer to determine if the answer is correct, or not, in accordance with the
information in the user's database.” (Id. ll. 37-39.)

7. The latter reference also discloses that "because of the fact that . . .
the questions are random in nature and the entire process is monitored
throughout the dialog, even frauders using tape recorders or speech
synthesizers cannot fool the system of the invention as such fraudulent
processes cannot handle the random questions and/or the dialog in real-
time." (Col. 7, l. 64 – col. 8, l. 3.)

ANALYSIS
The Examiner is relying on the combined teachings of Buffam and
Kanevsky to have suggested the limitations at issue. Buffman queries a user
for a voice sample and determines if the sample matches a voice template
stored in a credential. (FF 3.)

For its part, Kanevsky queries a user for a voice response to a question
that is randomly selected from a plurality of personalized questions and
determines if the response matches information in the user's database. (FF
6.) The latter reference explains that the use of random questions improves
security. (FF 7.)

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We agree with the Examiner's finding that the combined teachings of
Buffam and Kanevsky would have suggested querying a user for a biometric
response associated with a randomly selected one of a plurality of questions
and determining if the response matches a biometric sample in a biometric
profile corresponding to the randomly selected question; querying a user for
a voice response to a question that is randomly selected from a plurality of
personalized questions; and querying a user for a response relating to a
randomly selected one of a plurality of biometric samples. The Appellant's
arguments (App. Br. 8-10, 12, 13, 19, and 20) attack Kanevsky individually,
which cannot establish non-obviousness.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellant has shown no error in the Examiner's finding that the combined
teachings of Buffam and Kanevsky would have suggested querying a user
for a biometric response associated with a randomly selected one of a
plurality of questions and determining if the response matches a biometric
sample in a biometric profile corresponding to the randomly selected
question as in claim 1; querying a user for a voice response to a question that
is randomly selected from a plurality of personalized questions as in claim 8;
and querying a user for a response relating to a randomly selected one of a
plurality of biometric samples as in claim 16.

CLAIMS 12-15
The issue before us is whether the Appellant has shown error in the
Examiner's findings about claims 12-15.
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LAW
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability." In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "On appeal to the Board,
an applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness." In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed.Cir.
1998)).
FINDINGS OF FACT
8. The Examiner makes the following findings and conclusion.
As per claims 12, Sawyer teaches a network operable
with a terminal in association with a transaction card,
(Col 4 lines 20-24). Sawyer teaches a controller to
handle network queries, (Col 6 lines 8-14). Sawyer
teaches submitting a biometric profile for authentication,
(Col 7 lines 45-52). Sawyer does not teach submitting the
biometric authentication over a network. Sawyer does
not teach determining if a fraudulent action is being
attempted, and if so, to biometrically interrogate the user.
Chmaytelli teaches an authentication method wherein if a
user fails to enter a password correctly the system will
lock. Chmaytelli teaches that the user may unlock the
system by using a voice recognition procedure, (Col 8
lines 6-20). Weiss teaches submitting biometric indicia
over a telephone network to a store with biometric
profiles for authentication.
It would have been obvious to one skilled in the art to use
the network and biometric store of Weiss with the
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biometric authentication of Sawyer, so that the biometric
profiles would be in a secure location.
As per claim 13, Buffam-Kanevsky combination fails to
teach a calling card. Sawyer teaches the transaction to be
placing a calling card call, or accessing an account, (Fig.
1, Col 8 lines 64).
As per claim 14, Buffam-Kanevsky combination teaches
using audio" biometrics. Sawyer teaches using a
voiceprint, (Col 7 line 50).
As per claim 15 Buffam-Kanevsky combination fails to
teach using a fingerprint. Sawyer teaches using a
fingerprint, (Col 7 line 50).
(Ans. 7-8.)

9. The "Appellant does not wish to present arguments regarding the
patentability of these claims at this time." (App. Br. 16.)

ANALYSIS
The Examiner's findings and a conclusion (FF 8) establish a prima
facie case of obviousness. The Appellant chose not to contest the
Examiner's rejection of claims 12-15. (FF 9.)

CONCLUSION
Based on the aforementioned fact, we conclude that the Appellant has
shown no error in the Examiner's findings or conclusion about claims 12-15.

DECISION
We affirm the rejections of claims 1-8 and 10-22.

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No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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