Ex Parte Lindsay

Patent Trial and Appeal Board

Jan 23, 2018

12489416 (P.T.A.B. Jan. 23, 2018)

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.
12/489,416 06/22/2009 Jeffrey Dean Lindsay JL-4 1609
66125 7590 01/25/2018
JEFFREY DEAN LINDSAY
20 DIANE LANE
APPLETON, WI54915
EXAMINER
CHEUNG, CALVIN K
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
01/25/2018 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):
jeff @ magicinnovation.com
jeff@jefflindsay.com
ldsfaq @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY DEAN LINDSAY
Appeal 2016-0048611
Application 12/489,4162
Technology Center 3600
Before MICHAEL W. KIM, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—12 and 21—29. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
November 5, 2015) and Reply Brief (“Reply Br.,” filed April 8, 2016), and
the Examiner’s Answer (“Ans.,” mailed February 9, 2016) and Final Office
Action (“Final Act.,” mailed July 13, 2015).
2 Appellant identifies the inventor, Jeffrey Dean Lindsay, as the real party in
interest. App. Br. 3.
Appeal 2016-004861
Application 12/489,416
CLAIMED INVENTION
Appellant’s claimed invention “pertains to security systems that
restrict access to an account or other asset.” (Spec. 12).
Claim 1, reproduced below, is the sole independent claim and
representative of the claimed subject matter:
1. A security management system providing
controlled access to a secure electronic account accessible via an
electronic account access interface in communication with an
account server, the security management system comprising:
a computerized administrative interface having security
rules for governing account access via the electronic account
access interface, the security rules being stored in a memory in
communication with a processor operably associated with the
account server,
wherein the computerized administrative interface is
programmed to receive commands from an authorized user to
customize the security rules to provide different levels of account
access responsive to entry via the electronic account access
interface of user credentials, the user credentials comprising a
user ID and either a primary password or a secondary password
selected from one or more secondary passwords,
wherein the computerized administrative interface
provides selections in the security rules for both a primary
password and one or more secondary passwords,
and wherein the computerized administrative interface
provides a selection for a covert cue method to serve as a
component of a primary password.
REJECTION
Claims 1—12 and 21—29 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
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Appeal 2016-004861
Application 12/489,416
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered “individually and ‘as an ordered
combination”’ to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 566 U.S. at 78).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
“whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
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Appeal 2016-004861
Application 12/489,416
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under § 101, the Examiner finds that
the claims are directed to “the abstract idea of a graphical user interface
(GUI) displaying some selections/menu options for an administrator to go in
and set up some desired security rules”; and that the additional elements or
combination of elements in the claims, other than the abstract idea, amounts
to “no more than: (i) mere instructions to implement the idea on a general
computer, and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry” (Final
Act. 3—4). The Examiner reasons that the claims involve nothing more than
a GUI for a user to input commands into a computer, and opines that the
invention has merely taken the abstract idea of placing security measures to
control access to sensitive information “and embellished it with steps of
providing security measures (i.e., rules) that are customized to provide
different levels of account access” {id. at 2—3).
Appellant argues, inter alia, that even if the claims are directed to an
abstract idea, the claims include features, i.e., the use of covert cue methods,
which amount to “significantly more” than the abstract idea. In this regard,
Appellant argues that the claims recite improvements to another technology
or technical field, i.e., the fields of password security and password
management by “a novel application of covert cue methods” (see App. Br.
27—28). Appellant, thus, maintains that the incorporation of covert cue
methods allows for added security features that can “withstand the
observation of an onlooker observing the entry of a primary password due to
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Appeal 2016-004861
Application 12/489,416
the difficulty in even recognizing that ‘something more’ than an ordinary
password has been entered” {id. at 28).
The Specification describes the difficulties that even security­
conscious users face in safeguarding and protecting their passwords and
other personal information {see, e.g., Spec. H 3—5), and also details the
inadequacies associated with prior techniques aimed at increasing the
security of password-accessible systems and reducing the risk of identity
theft {id. at H 6—16). The Specification, thus, describes that the claimed
invention is directed to improving the security of password-protected assets
by allowing the asset owner, either directly or through an administrator, to
establish customized security rules to provide different levels of account
access, e.g., from full access to merely feigned access, responsive to entry of
user credentials comprising either a primary password or a secondary
password {see, e.g., id. at H 17—18, 20-21, 88—89). Either the primary
password or the secondary password may include a covert component, i.e., a
hidden action, taken during login, account access, account use, or during
some other phase of accessing or attempting to access an asset, that covertly
conveys information relative to user credentials such that an observer is
unlikely to recognize that such information has been conveyed {see, e.g., id.
at 11 87, 91, 113-123; Figs. 4 and 5).
Putting aside whether the Examiner erred in finding that the claims
are directed to an abstract idea, we are persuaded that even if the claims are
directed to an abstract idea, the Examiner has not adequately explained why
the claims fail to recite limitations that are “significantly more” than the
abstract idea itself. For example, the Examiner does not explain why, in
view the express claim language read in light of the above-referenced
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Appeal 2016-004861
Application 12/489,416
portions of the Specification, the claimed invention would not be considered
an improvement in the fields of password security and password
management. Instead, the Examiner summarily concludes, without any
further analysis, that the limitations beyond the abstract idea are “mere
instructions to implement the idea on a general computer, and/or (ii)
recitation of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry” (Final Act. 3—4). We
are persuaded that such cursory reasoning is inadequate to sustain the
rejection, when the above-referenced portions of the record are considered as
whole.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1—12 and 21—29 under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1—12 and 21—29 under 35 U.S.C.
§ 101 is reversed.
REVERSED
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