Ex Parte Isaacson et al

Board of Patent Appeals and Interferences

Feb 25, 2009

10430542 (B.P.A.I. Feb. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCOTT ALAN ISAACSON, STEPHEN R. CARTER,
and FRANK ALLAN NUTT
____________

Appeal 2008-1884
Application 10/430,542
Technology Center 2100
____________

Decided:1 February 26, 2009
____________

Before JAMES D. THOMAS, JAY P. LUCAS,
and ST. JOHN COURTENAY III, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

INVENTION
The present invention relates to techniques for assembling or
otherwise aggregating electronic identities.

REPRESENTITIVE CLAIM
Below is reproduced independent claim 1:

1. A method implemented in a computer-readable medium to
aggregate an identity, comprising:

accessing one or more identity authorities and one or more identity
stores with a schema to acquire identifiers and attributes associated with the
aggregated identity, wherein the identifiers are information used to identify
the identity; and

assembling the acquired identifiers and attributes to aggregate the
identity.

PRIOR ART
The Examiner relies on the following references as evidence of
unpatentability:
Gai US 6,167,445 Dec. 26, 2000
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Lucovsky US 2003/0131073 A1 Jul. 10, 2003
(filed Oct. 22, 2001)
Arora US 2004/0002939 A1 Jan. 1, 2004
(filed Jun. 28, 2002)
Pecherer US 2004/0083222 A1 Apr. 29, 2004
(Effective filing date May 9, 2002)

EXAMINER’S REJECTIONS
Claims 1-27 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
All claims on appeal, claims 1-27, also stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness as to claims 1-8, the Examiner relies
upon Lucovsky in view of Arora in a first stated rejection. In a second
stated rejection of claims 9-24, the Examiner relies upon Pecherer in view of
Arora. The Examiner relies upon this combination of references, further in
view of Gai, as to claims 25-27 in a third stated rejection under 35 U.S.C.
§ 103.

CLAIM GROUPINGS
Since Appellants do not make any arguments in the principal and
Reply Brief as to the rejection under 35 U.S.C. § 101 pertaining to any
particular claim, we regard independent claim 1 as representative of all
claims on appeal. As to the first stated rejection of claims 1-8 under
35 U.S.C. § 103, Appellants’ remarks at pages 15 and 16 of the principal
Brief on appeal regard claim 1 as representative of all these claims. So do
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we. Next, as to the separate rejection of claims 9-24 under the second stated
rejection under 35 U.S.C. § 103, independent claims 9, 16, and 22 are argued
collectively. Furthermore, as to the third stated rejection of claims 25-27
under 35 U.S.C. § 103, Appellants’ remarks at pages 16 and 17 of the
principal Brief rely upon the same remarks with respect to those set forth as
to the second stated rejection under 35 U.S.C. § 103.

ISSUES
1. Have Appellants shown that the Examiner erred in finding that
claims 1-27 are directed to non-statutory subject matter within 35 U.S.C.
§ 101?
2. Have Appellants shown that the Examiner erred in finding that the
subject matter of representative independent claim 1 and the collective
subject matter of independent claims 9, 16, and 22 would have been obvious
to a person of ordinary skill in the art within 35 U.S.C. § 103?

FINDINGS OF FACT (FF)
1. The preamble of independent claim 1 recites a “method
implemented in a computer–readable medium.” The preamble of
independent claim 9 recites a “data store implemented in a computer-
readable medium, residing in a computer-accessible medium.” Likewise,
the preamble of independent claim 16 recites a “schema data structure used
to aggregate an identity and implemented in a computer accessible medium.”
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Lastly, the preamble of independent claim 22 recites a “system implemented
in a computer-readable medium.”
2. Specification page 5, line 26 through page 6, line 4 states:
Of course, the invention can be implemented in a variety of
applications, systems, schema conventions, programming languages,
and data formats. Additionally, the invention is not limited to any
particular network. Thus, any hardwired (direct or indirect), or
wireless network can be used.
FIG. 1 is a flowchart representing one method 100 to aggregate
an identity, according to one embodiment of the invention. The
method is implemented in an electronic environment on a network.
The network can be, without limitation, a Local Area Network (LAN),
a Wide Area Network (WAN), or a combination of LANs and WANs
interfaced together. Furthermore, as mentioned above, the network
can be hardwired or wireless.

3. In accordance with the general discussion at the bottom of page 4
and pages 6 and 8 of the Specification, a conceptually broad view of the
word “identity” is established to be mere data, essentially of any kind,
including policies, entities, objects, and decisions/results.
4. The term “schema” is revealed at the top of page 5 of the
Specification to be “a definition for a data model.” Although some schema’s
are said to be known in the art, others are intended to be undefineable and
have functionality that is not set forth in the present tense, may result in
future undefineable actions, are not tangible or are of unknown scope, and
are fleeting and continually changeable in nature, as generally indicated in
the paragraph bridging Specification pages 8 and 9.
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5. The data store mentioned in claimed 9 and shown in Fig. 2 is
generally taught to be volatile and transitory in nature and maybe embodied
apparently in any kind of data warehouse, data base, directory file and the
like and is not necessarily required to be a tangible physical item.
Specification page 9, lines 23-28.

PRINCIPLES OF LAW
Pertinent case law with respect to 35 U.S.C. § 101 will be set forth
subsequently in the analysis section.
As to the obviousness rejections, we note the following principles:
“To reject claims in an application under section 103, an
examiner must show an unrebutted prima facie case of
obviousness…. On appeal to the Board, an applicant can
overcome a rejection [under § 103] 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)).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).
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The Supreme Court reaffirmed principles based on its precedent that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id. at 1740.
The Court noted that “[c]ommon sense teaches . . . that familiar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” Id. at 1742.
The Federal Circuit recently concluded that it would have been
obvious to combine (1) a device for actuating a phonograph to play back
sounds associated with a letter in a word on a puzzle piece with (2) a
processor-driven device capable of playing the sound associated with a first
letter of a word in a book. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1161 (Fed. Cir. 2007). In reaching that conclusion, the
Federal Circuit recognized that “[a]n obviousness determination is not the
result of a rigid formula disassociated from the consideration of the facts of a
case. Indeed, the common sense of those skilled in the art demonstrates why
some combinations would have been obvious where others would not.” Id.
at 1161 (citing KSR, 127 S. Ct. 1727, 1739 (2007)). The Federal Circuit
relied in part on the fact that Leapfrog had presented no evidence that the
inclusion of a reader in the combined device was “uniquely challenging or
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difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Id. (citing KSR, 127 S. Ct. at 1740-41).
In the absence of separate arguments with respect to claims subject to
the same rejection, those claims stand or fall with the claim for which an
argument was made. See In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).
See also 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Dovetailing with this precedent, we note further that the test for
obviousness has been further characterized as not whether the features of a
secondary reference may be bodily incorporated into the structure of a
primary reference. It is also not that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. In re Keller, 642 F.2d 414, 425 (CCPA
1981); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
The prior art relied on to prove obviousness must be analogous art.
As explained in Kahn,
the ‘analogous-art’ test . . . has long been part of the primary Graham
analysis articulated by the Supreme Court. See Dann [v. Johnston,]
425 U.S. [219,] 227-29 (1976), Graham, 383 U.S. at 35. The
analogous-art test requires that the Board show that a reference is
either in the field of the applicant’s endeavor or is reasonably
pertinent to the problem with which the inventor was concerned in
order to rely on that reference as a basis for rejection. In re Oetiker, at
1447. References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary skill in
the art. Id. (“[I]t is necessary to consider ‘the reality of the
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circumstances,’- in other words, common sense-in deciding in which
fields a person of ordinary skill would reasonably be expected to look
for a solution to the problem facing the invention.” (quoting In re
Wood, 599 F.2d 1032 (C.C.P.A. 1979)).

Kahn, 441 F.3d at 986-87. See also In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992) (“[a] reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.”).

ANALYSIS
1. REJECTION UNDER 35 U.S.C. § 101
We generally agree with the thrust of the Examiner’s rejection that the
preambles and bodies of the claims on appeal are directed to abstract ideas.
The Supreme Court has specifically identified abstract ideas as unpatentable
subject matter. See Diamond v. Diehr, 450 U.S. 175, 185 (1981). We note
as well, the case law cited by the Appellants in the Brief and Reply Brief
have been over shadowed by the following case law.
At least with respect to method independent claim 1, the nature and
scope of the subject matter in the body of this claim is to broadly include an
implementation by human intervention or action without a positively stated
embodiment in a machine or the recitation of a computer implemented
method, notwithstanding the suggestibility/desirability of such in the
preamble of this representative claim. See In re Comiskey, 499 F.3d 1365,
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1377-79 (Fed. Cir. 2007). The features of accessing and assembling are not
tied to another statutory class of invention, such as a machine or computer
and do not transform any underlying tangible subject matter to a different
state or thing. The steps in the body of claim 1 may be embodied in
software alone or alternately could be performed as mental steps upon
broadly conceptualized concepts of data. Moreover, representative claim 1
is broadly directed to only non-tangible embodiments.
Additionally, to the extent that the preamble has any bearing upon the
broad recitations in the body of representative independent claim 1 on
appeal, the subject matter also appears to be proscribed by the reasoning in
In re Nuijten, 500 F.3d 1346, 1359 (Fed. Cir. 2007). The broadly claimed
“medium” in the preambles of all independent claims on appeal is not
necessarily required to be embodied in a tangible computer-readable
medium. Indeed, the subject matter is so broadly disclosed that there is no
discussion of what the claimed “medium” is supposed to be or otherwise be
comprised of in the Specification as filed. As such, the medium appears to
be a broadly definable wireless network that encompasses signals per se
proscribed by Nuijten as revealed earlier by findings of facts 1 and 2 .
To continue with this and the Examiner’s abstract idea analysis, the
references to findings of facts 3 and 4 confirm that the nature of the claimed
identities, schema, attributes and identifiers, for example, generally relate to
extremely broadly defined or essentially indefinable intellectual concepts,
subject to many interpretations; they appear boundless. Additionally, based
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upon the analysis in the previous and this paragraph at least, the data store
broadly recited in the preamble of independent claim 9 is not positively
stated to be embodied in a tangible device conventional in the arts since it is
merely recited to be “implemented in a computer-readable medium, residing
in a computer-accessible medium.” A similar observation is appropriate for
the schema data structure of independent claim 16. We are not aware of any
authority which permits the direct claiming alone of a data structure per se.
With respect to the system of claim 22, it is not necessarily recited to be a
tangible computer system since all the recited elements are inclusive of non-
tangible embodiments or abstract concepts as already discussed with respect
to independent claims 1, 9, and 16.
The reasoning outlined here also is believed to be consistent with the
reasoning in In re Bilski, 545 F.3d 943 (Fed . Cir. 2008)(Fed. Cir. revised
1/13/09).

2. REJECTION UNDER 35 U.S.C. § 103
The three separate rejections encompassing all claims (claims 1-27)
on appeal are also sustained. It is noted that the third stated rejection of
dependent claims 25-27, where the Examiner relies upon Pecherer in view of
Arora and Gai is essentially not argued at pages 16 and 17 of the principal
Brief on appeal since there is no discussion of Gai and no arguments are
presented that this reference is not properly combinable with Pecherer and
Arora.
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The Examiner’s choice of prior art as to Lucovsky, Arora, and
Pecherer and the Examiner’s reasoning of combinability within 35 U.S.C.
103 is consistent with the above-noted case law reproduced earlier in this
opinion. Lucovsky relates directly to schema-based services for identity-
based data access where Pecherer relates to aggregation of identity-type
information. Appellants’ arguments to the contrary in the principal and
Reply Briefs regarding the first and second stated rejections under 35 U.S.C.
§ 103 are misplaced to the extent they argue there is a requirement for a
motivation analysis within this statutory provision. As the KSR decision,
noted earlier in this opinion, makes clear, there is no such motivation
analysis requirement after the Supreme Court rendered its decision in this
case. The Examiner’s reliance upon Arora is also consistent with the
guidance provided by the above-noted case law. The weight of the evidence
provided by the above-noted applied prior art supports the Examiner’s
choice of prior art and the reasoning of combinability of the teachings of it.
We observe a common theme among the arguments presented by
Appellants in the Brief and Reply Brief as to the first and second stated
rejections under 35 U.S.C. § 103. This theme been isolated by the Examiner
at page 20 of the Answer where the Examiner states that “no limitation can
be found in the claims that limits the claimed invention to specific language
of ‘multiple identifiers for a single and same identity are represented in a
single schema’.” Taking in this light, Appellants’ arguments with respect to
specific references to Lucovsky, Pecherer, and Arora are misplaced.
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Rather than arguments directed to separate references, it is the
collective teachings of Lucovsky and Arora, and Pecherer and Arora that
must be properly considered together in assessing the patentability or
unpatentability of the corresponding rejected subject matter of the first and
second stated rejections under 35 U.S.C. § 103. It is readily apparent to us
that the Examiner has not exercised any improper hindsight to the extent
argued in the Brief and Reply Brief. Additionally, it is our view that an
artisan would have well understood that the teachings of Lucovsky,
Pecherer, and Arora do not teach away from what Appellants have claimed.
There is no active discouragement from following the paths set out in the
references and it does not appear that they would have led the artisan in a
direction divergent from the path taken by Appellants.
Even if Appellants’ observation, for example, is correct at the top of
page 6 of the Reply Brief that the artisan would have viewed Lucovsky as
teaching a technique that uses a single schema for a given service to provide
different access to different identities for users (that is, if it can be read in
this manner for different identities of users), it can be read to be inclusive of
doing it for one. As to Pecherer, figure 1 of this reference shows an
aggregate identity, which may well be construed as being comprised of
plural identifiers that may in turn be characterized as different identities
themselves. Therefore, different identifiers may characterize a single, or
same identity.

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CONCLUSIONS OF LAW
1. Appellants have not shown that the Examiner erred in finding that
the subject matter of claims 1-27 is directed to non-statutory subject matter.
2. Appellants have not shown that the Examiner erred in finding that
the subject matter of claims 1-27 would not have been obvious to a person of
ordinary skill in the art within 35 U.S.C. 103.

DECISION
The Examiner’s § 101 rejection of claims 1-27 is affirmed. In like
manner, the Examiner’s three separate rejections under 35 U.S.C. 103
encompassing claims 1-27 are 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.
§ 1.136(a)(1)(iv).

AFFIRMED

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