Ex Parte Kurapati et al

Patent Trial and Appeal Board

Sep 25, 2017

14594973 (P.T.A.B. Sep. 25, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/594,973 01/12/2015 Srikrishna Kurapati 4366YDT-136-DIV 7420
48500 7590 09/27/2017
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
WALIULLAH, MOHAMMED
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
cjacquet@ sheridanross.com
pair_Avay a @ firsttofile. com
edocket @ sheridanross .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AVAYA INC.1
Appeal 2017-005034
Application 14/594,973
Technology Center 2400
Before DENISE M. POTHIER, JASON J. CHUNG, and ALEX S. YAP,
Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 9—28. Claims 1—8 have been canceled. App. Br. 2.2 We
have jurisdiction under 35 U.S.C. § 6(b).
1 The listed inventors are Srikrishna Kurapati, Rajesh Mohan, Karthikeyan
Sadhasivam, and Satyam Tyagi.
2 Throughout this opinion, we refer to (1) the Final Action (Final Act.)
mailed November 20, 2015, (2) the Appeal Brief (App. Br.) filed April 29,
2016, (3) the Examiner’s Answer (Ans.) mailed January 12, 2017, and
(4) the Reply Brief (Reply Br.) filed February 1, 2017.
Appeal 2017-005034
Application 14/594,973
The Examiner withdraws the rejection of claims 10 and 21. Ans. 2,
13. We presume no outstanding rejection exists for these claims and that
these claims would be allowable if rewritten in independent form and
included all the limitations of their base claims and any intervening claim.
As to the remaining claims, we affirm but designate the rejections as
new grounds pursuant to 37 C.F.R. § 41.50(b).
Invention
Appellant’s invention concerns “a system, method, and apparatus for
authenticating calls that [are] a robust Anti-vishing solution.” Spec. 17.
According to the disclosure, the term “‘Vishing’” refers to a “Voice variant
of well[-]known web/email phishing.” Id. 1 5. For example, caller ID can
be spoofed by an “attacker pretending] to be [a] bank or financial institution
to solicit information that could lead to theft of the target’s financial assets.”
Id.
Independent claim 9 is reproduced below:
9. A method for authenticating a user of a calling device
comprising:
receiving a first call from the calling device;
in response to receiving the first call from the calling
device, terminating the first call;
placing a second call to the calling device;
in the second call, prompting the user to speak one or
more words and depress one or more keys on the calling device;
receiving, in the second call, the spoken words and one
or more signals associated with the depressed keys;
comparing one or more biometric parameters of the
received spoken words with a stored voice biometric template
for the user, the received spoken words with the prompted
words and the received signals with the signals associated with
the prompted keys; and
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transferring the second call to a called device whenever
the user is authenticated as a result of the comparison.
The Examiner relies on the following as evidence of unpatentability:
Huang
Mizuno
Thomas
Kirchhoff
Hodge
US 5,937,381
US 2003/0046354 A1
US 2005/0021761 A1
US 2006/0142012 A1
US 2009/0046841 A1
Aug. 10, 1999
Mar. 6, 2003
Jan. 27, 2005
June 29, 2016
Feb. 19, 2009
(cont. of U.S. App. No.
10/893,575, filed
July 16, 2004)
The Rejections
Claims 9, 11, 14, 15, 18—20, 24, 25, and 28 are rejected under
35 U.S.C. § 103(a) as unpatentable over Mizuno, Hodge, and Thomas. Final
Act. 2-4.3
Claims 12, 13, 16, 17, 22, 23, 26, and 27 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mizuno, Hodge, Thomas, and Huang. Final
Act. 5-7.4
OBVIOUSNESS REJECTION OVER MIZUNO, HODGE,
AND THOMAS
Regarding independent claim 9, the Examiner finds that Mizuno
teaches its first three steps. Final Act. 2—3 (citing Mizuno, Figs. 6A—B and
“associated texts”). The Examiner cites Hodge in combination with Mizuno
to teach the remaining steps in claim 9, except for the “transferring” step.
3 Although the rejection’s heading does not include claims 15 and 25 (Final
Act. 2), the rejection’s body discusses these claims {id. at 4).
4 Although the rejection’s heading does not include claims 13, 16, 23, and 26
(Final Act. 5), the rejection’s body addresses these claims {id. at 6—7).
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Id. at 2—3 (citing Hodge Tflf 150—151, 163, Figs. 2B—C). The Examiner turns
to Thomas in combination with Mizuno and Hodge to teach claim 9’s
“transferring” step. Id. at 3 (citing Thomas 29-30, Figs. 3, 5, 7).
Appellant argues Mizuno fails to teach (1) receiving a first call from
the calling device, (2) in response to receiving the first call from the calling
device, terminating the first call, and (3) placing a second call to the calling
device. App. Br. 7—9. Specifically, Appellant contends that Mizuno does
not suggests using a voice call or handset 21a and using a handset would be
illogical. Id. at 8; Reply Br. 6—8. Appellant also asserts that “a user could
not answer the second call of Mizuno because it is automatically dropped so
that network charges can be avoided.” Id. at 9; see also id. at 11. Appellant
contends, even when combining Hodge with Mizuno, the call would be
disconnected before the user could authenticate or speak and the user would
not be able to authenticate. Id. at 11—12; Reply Br. 8.
Appellant further contends Hodge verifies a user can place an
outbound call, which is opposite of claim 9, which verifies a received or
inbound call. Id.', Reply Br. 7. Appellant argues Thomas is similar to
Hodge and teaches initiating an outgoing call and is opposite of claim 9. Id.
at 12. Appellant asserts one skilled in the art would not have been motivated
to combine Hodge’s teachings with Mizuno for several reasons, including
rendering Mizuno inoperable for its intended purpose. Id. at 9-10. In
Appellant’s view, Mizuno is solving a completely different problem than
that set forth in claim 9 and is unrelated to authenticating a user as recited.
Id. at 11—12; Reply Br. 5—6, 8.
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ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 9 by
finding that Mizuno, Hodge, and Thomas collectively would have taught or
suggested its limitations as disputed?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?
ANALYSIS
For the following reasons, we are not persuaded by Appellant’s
arguments. Appellant argues Mizuno fails to teach receiving a first call from
the calling device, in response to receiving the first call from the calling
device, terminating the first call, and placing a second call to the calling
device. App. Br. 7—8. We disagree with Appellant. As the rejection states,
Mizuno teaches these steps in Figure 6A, Figure 6B, and the accompanying
text. Final Act. 2—3; see also Ans. 8 (discussing steps S3 and S5).
Specifically, Mizuno teaches receiving a first call (e.g., inquiry call) from a
calling device at step S3 and terminating the call at step S5 in response to
receiving the call. Mizuno 104—114, Fig. 6A. Mizuno further teaches
making a second call (e.g., response call) to the calling device at either steps
Sll or SI6. Mizuno 11 123, 131-132, Fig. 6B.5
Appellant also contends Mizuno does not suggest using a voice call or
handset 21a and using such a handset would be illogical. App. Br. 8.
5 Appellant argues that Mizuno fails to make a response call when there is
no “newly-arrived or unopened emails.” App. Br. 9; see also id. at 11. In
the Reply Brief, Appellant concedes a second or response call is made in
Mizuno whether or not new or unopened emails exists. See Reply Br. 7.
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Instead, Appellant states Mizuno teaches using a facsimile to make a
facsimile call. Id. at 7—8; Reply Br. 6—8. Appellant asserts “Mizuno would
not work for voice calls because voice calls are managed differently” and
“Mizuno does not discuss the user using [sic] making a voice call using the
handset to determine if there are new emails.” Reply Br. 7. These
arguments are unavailing.
As noted by the Examiner (Ans. 8) and conceded by Appellant (Reply
Br. 6), claim 9 recites “a first call” and “a second call” without limiting the
calls to voice calls. That being said, claim 9 requires “prompting the user to
speak one or more words and depress one or more keys on the calling
device,” which could involve a voice or, alternatively, a tone prompt. Claim
9 further requires “receiving ... the spoken words” “in the second call,”
such that the call has the ability to receive speech. Mizuno teaches such an
embodiment.
In particular, Mizuno teaches an embodiment where a cordless
terminal “is used as an extension set of the internet facsimile apparatus 2.”
Mizuno 173, Fig. 3; see also id. 13 (discussing communication terminals
include telephones). Extension set 3 includes speaker 3 lzzi, microphone
31 <22, display unit 38, operations keys 39a, and dial keys 39b. Id. 174, Fig.
3. Mizuno explains extension set 3 can set and release the communication
channel necessary for communication with apparatus 2, extension control
unit 33 controls transmitting an inquiry call about the presence of emails
addressed to the user to either an internet connection device or a server
device through apparatus 2, and unit 33 controls receiving a response call
from either the internet connection device or server device through apparatus
2. Id. 75—76, Fig. 3. Mizuno further states an audio or voice signal can
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be sent to speaker 3 \a\ informing the user of email presence/absence. Id.
176, Fig. 3.
Mizuno thus suggests to one skilled in the art an embodiment (e.g.,
cordless terminal that is an extension of the apparatus 2 in Figure 2) where a
first or inquiry can be a “voice” call and the second or response call also
being a “voice” call, such that Mizuno would work using voice to determine
if there are new emails. We therefore disagree with Appellant that receiving
“the spoken word” (e.g., voice signals) as recited would render Mizuno
inoperable. See App. Br. 10. Whether or not using such signals would incur
costs (see App. Br. 10; Reply Br. 5), Mizuno teaches using voice signals in
at least one embodiment and thus allows for speech.
Also, despite Appellant’s contentions, we disagree that (1) any
combination with Mizuno would result in facsimile call with no spoken
voice signal prompting the user to speak and (2) the record has no reason for
the user to speak any words. See App. Br. 9-11; Reply Br. 6—8. That is,
combining Hodge (Hodge H 150, 151, 163, Figs. 2B-C) with the above
Mizuno teachings (Mizuno H 73—76, Fig. 3) would have yielded no more
than one skilled in the art would have expected from such an arrangement—
a calling system with an authentication technique (Final Act. 2—3; Ans. 10).
See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The proposed
combination would have arranged simply a known technique of prompting a
user to speak (e.g., state their name) and depressing keys (e.g., enter a PIN)
on Mizuno’s calling device prior to completing the second call (e.g.,
response call) to the desired recipient in order to verily the user as taught by
Hodge. Final Act. 2—3 and Ans. 10 (both citing Hodge H 150, 151, 163,
Figs. 2B—C). Thus, the proposed combination would have resulted in
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Mizuno’s calling device and Hodge’s verification technique performing the
same functions they had been known to perform. See KSR, 550 U.S. at 417.
Moreover, Hodge teaches a known technique for enhancing security
in a telecommunication system by restricting access to authorized users
using prompts to provide a PIN and name (e.g., require authentication prior
to access). Hodge 150-151, 163, Fig. 2C. Mizuno teaches a known
telecommunication system that provides a service to a calling device to
determine whether new or unopened emails exists. See Mizuno 119, cited
in Ans. 10; see also id. 118, Abstract. As such, an ordinarily skilled artisan
would have recognized that Hodge’s verification technique (see Hodge
150, 151, 163, Fig. 2C) would have improved Mizuno’s
telecommunication system in the same way, such that the combined
Mizuno/Hodge system would have prevented an unauthorized user’s from
obtaining access to another user’s unopened or unread emails. See KSR, 550
U.S. at 417; see also Ans. 10 (stating the combination results in a secure
system that includes authenticating users and provides call screening).
Even more, Appellant asserts that
a user could not answer the second call of Mizuno because it is
automatically dropped so that network charges can be avoided.
There is no way the user could speak the one or more words or
depress one or more keys as required by claim 9 because the
response call in Mizuno is automatically dropped.
App. Br. 9; see also id. at 11. Appellant contends, even when combined
with Hodge, the call would be disconnected before the user could
authenticate or speak. Id. at 11—12; Reply Br. 8. In the Reply Brief,
Appellant further argues “Mizuno already assumes the authenticity of the
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caller” (Reply Br. 6) and thus one skilled in the art would not have been
motivated to include an authentication process in Mizuno. Id. at 5—6.
We are not persuaded. As discussed above, Hodge’s teachings
provide a reason to enhance security within Mizuno’s system by including a
verification technique prior to the user obtaining the desired information. As
such, presuming without agreeing that Mizuno assumes authenticity (Reply
Br. 6), Hodge provides an enhanced feature to Mizuno’s system that ensures
authenticity. Additionally, Appellant has not provided a convincing
argument why Hodge’s techniques could not have been implemented
between Mizuno’s step SI 1 or S16 and Mizuno’s second call terminating at
step SI3, for example, or applying such techniques are beyond an ordinarily
artisan’s skill. That is, we see no reason why Hodge’s teaching could not
have been implemented in Mizuno’s system prior to disconnection in order
verify the user is the proper person while enhancing security. See also Ans.
10, 12 (discussing enhancing security and ensuring access to authorized
users only). Nor would this verification process require a third call as
asserted by Appellant. See Reply Br. 8.
We further disagree with Appellant that there is no reason to combine
Hodge with Mizuno. App. Br. 10-11. Notably, KSR does not require the
Examiner to “provide a motivation to combine all the references together”
(App. Br. 7) as argued. See KSR, 550 U.S. at 419. Rather, the Supreme
Court indicates that “there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR,
550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
As described above, we have discussed various reasons with rational
underpinnings for combining Hodge with Mizuno as proposed.
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Appellant also asserts Hodge verifies a user can place an outbound
call, which is opposite of claim 9, verifying a received or inbound call. App.
Br. 11; Reply Br. 7. Appellant further argues Thomas is similar to Hodge
and teaches initiating an outgoing call and is opposite of claim 9. App. Br.
12. For this reason, Appellant contends the Examiner is using impermissible
hindsight in combining Mizuno, Hodge, and Thomas. Id. This argument is
unavailing.
Hodge is not being relied upon to teach the direction of a call. See
Final Act. 2—3; see also Ans. 10, 12. Nor is Hodge being relied upon to
teach placing a second call. Reply Br. 7. Rather, Hodge is cited for the
limited purpose of teaching verifying authorized users, regardless of its
direction, prior to completing a call. See Hodge Tflf 150-151, 163, Figs.
2B-C, cited in Final Act. 3. Additionally, Thomas is relied upon to teach
the general concept of call authentication, regardless of the call’s direction,
and transferring a call upon authentication. See Final Act. 3 (citing Thomas
Tflf29-30, Figs. 3, 5, 7); see also Ans. 12. These techniques are proposed to
be included in Mizuno’s system to improve and enhance security and
prevent unauthorized individuals from using Mizuno’s system. Final Act. 3;
Ans. 10, 12. As such, Appellant’s arguments attack portions of Hodge and
Thomas not relied upon and are not consistent with the rejection as
proposed.
Appellant also contends Mizuno is solving a completely different
problem than that set forth in claim 9 and is unrelated to authenticating a
user as recited. App. Br. 11—12; Reply Br. 5—6, 8. “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
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the inventor was concerned in order to rely on that reference as a basis for
rejection.” Kahn, 441 F.3d at 986—87 (citing In re Oetiker, 977 F.2d 1443,
1447 (Fed. Cir. 1992)). As such, Mizuno need not solve the same problem
with which the inventors were concerned in order to rely on a reference as a
basis for an obviousness rejection. We determine both Mizuno and
Appellant are in the same field of endeavor, which both include controlling
telecommunications over the public telecommunication network and internet
service providers. Mizuno Tflf 1, 3, 73—76, 78—79, Figs. 1, 3; Spec. 3—4,
Abstract. Both also concern techniques for terminating calls from a calling
device and initiating new calls to the calling device in return. Mizuno
11 123, 131-132, Figs. 6A-B (steps S5, SI 1, and S16); Spec. 1131-32,
Figs. 10-11 (steps 502, 412, 902).
In the Reply Brief, Appellant further argues that two possible numbers
are used as a return call in Mizuno and this would result in connecting to a
different device than intended when authenticated. Reply Br. 7. We are not
persuaded. The return call is still addressed to the caller and received by
caller using the caller’s stored telephone number despite two different
numbers or calling lines being used depending on whether new and/or
unopened emails exist. See Mizuno 123, 126, 129, Fig. 6B.
For the foregoing reasons, we affirm the rejection of claim 9. To the
extent our findings and reasoning change the thrust of the rejection presented
by the Examiner, we designate the ground as new. We also apply a similar
analysis to independent claims 19 and 20 and designate the rejection of these
claims as a new ground.
Additionally, we adopt the Examiner’s findings and conclusions
related to claims 11, 14, 15, 18, 24, 25, and 28 as our own. Final Act. 3^4;
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Ans. 4—5. We therefore designate the rejection of claims 11, 14, 15, 18, 24,
25, and 28 as a new ground.
Accordingly, we sustain the rejection of claims 9, 11, 14, 15, 18—20,
24, 25, and 28 under 35 U.S.C. § 103 based on Mizuno, Hodge, and Thomas
but designate the rejection a new ground.
THE REMAINING OBVIOUSNESS REJECTION
Appellant does not argue separately the rejection of claims 12, 13, 16,
17, 22, 23, 26, and 27 under 35 U.S.C. § 103(a) over Mizuno, Hodge,
Thomas, and Huang. Instead, Appellant relies on “the same reasons as
independent” claims 9 and 19. App. Br. 12—13. We are not persuaded for
previously stated reasons. However, as explained above, we designate this
rejection as a new ground to the extent our findings and reasoning change
the thrust of the rejection presented by the Examiner. As to the undisputed
limitations, we adopt the Examiner’s findings and conclusions as our own.
Final Act. 5—7.
DECISION
We affirm the Examiner’s rejections of claims 9, 11—20, and 22—28
under § 103, designating the rejections as new grounds.
Claims 10 and 21 are pending but have no outstanding rejection.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
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When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
AFFIRMED
37 C.F.R, $ 41.50(b)
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