Ex Parte LoBean et al

Patent Trial and Appeal Board

Jun 6, 2016

13091249 (P.T.A.B. Jun. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/091,249 04/21/2011
127893 7590 06/06/2016
Streets & Steele - Lenovo (Singapore) Pte, Ltd,
13100 Wortham Center Drive
Suite 245
Houston, TX 77065
FIRST NAMED INVENTOR
Dorathea LoBean
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.
XRPS920110013US1 4225
EXAMINER
MEHEDI, MORSHED
ART UNIT PAPER NUMBER
2438
MAILDATE DELIVERY MODE
06/06/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DORATHEA LOBBAN, ADRIAN X. RODRIGUEZ,
and IAN C. TEWKSBURY
Appeal2014-001199
Application 13/091,249
Technology Center 2400
Before JOSEPH L. DIXON, JEFFREY A. STEPHENS, and
JOHN D. HAMANN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-001199
Application 13/091,249
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a controlled user account access with
automatically revocable temporary password. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computer-implemented method, comprising:
associating a single usemame and primary password with
a user account;
selectively setting a temporary password for the user
account, wherein the temporary password is distinct from the
primary password;
granting access to the user account in response to receiving
login credentials that include either the primary password or the
temporary password; and
automatically revoking the temporary password in
response to receiving login credentials that include the primary
password.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fazal
Vidal
US 2007/0079143 Al
US 8,281,372 Bl
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Apr. 5, 2007
Oct. 2, 2012
Appeal2014-001199
Application 13/091,249
REJECTIONS
The Examiner made the following rejections:
Claims 1-7 stand rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter. (Final Act. 3--4)
Claims 8-15 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter, and in
particular does not fall in one of the four statutory categories (process,
machine, manufacture, and composition of matter) because the claims
merely recite software per se. (Final Act. 4--5).
Claims 16 and 17 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. (Final Act. 5-
6).
Claims 1, 2, 5, 7-9, 12, 13, 15, and 16 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Vidal. (Final Act. 6-10).
Claims 3, 4, 10, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Vidal as applied to claims 1, 8, and 16 respectively,
further in view of Fazal. (Final Act. 10-13).
Claims 6 and 14 stand rejected under 35 U.S.C. § 102(e) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Vidal. (Final Act. 14--15).
ANALYSIS
At the outset, we note that Appellants have not filed a Reply Brief to
further respond to the Examiner's clarifications in the statutory subject
matter rejections and the prior art rejections.
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred. We disagree with Appellants' arguments
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and we adopt as our own: ( 1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 2-14);
and (2) the reasons set forth by the Examiner in the Examiner's Answer in
response to Appellants' Appeal Brief (Ans. 14--21). We concur with the
conclusions reached by the Examiner, and emphasize the following.
35 U.S.C. § 101
With respect to independent claim 1, the Examiner maintains that
claim 1 is "not tied to a machine and could have [been] done by a human
being, hence non-statutory subject matter." (Final Act. 3--4).
Appellants assert that the claim is directed to "[a] computer-
implemented method." A computer is a machine and the entire method of
claim 1 comprising "associating," "setting," "granting," and "revoking" is
computer-implemented. (App. Br. 6).
The Examiner maintains that the phrase "computer-implemented" is
in the preamble and is not given patentable weight. We agree with the
Examiner and further agree that the phrase "automatically" does not
necessarily make a method step computerized or machine implemented.
(Ans. 15). We find Appellants' general argument to be unpersuasive to
show error in the Examiner's conclusion that independent claim 1 is directed
to non-statutory subject matter and dependent claims 2-7 are not separately
argued.
With respect to independent claim 8, the Examiner finds that
independent claim 8 is directed to a computer program product. (Final Act.
4--5). The Examiner further finds that "in [the] specification of the instant
application, computer usable storage medium does not have a specific
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definition and does not limit the claimed storage from being a transitory
medium such as signal." (Final Act. 5).
Appellants contend that claim 8 is directed to "[a] computer program
product, including computer usable program code embodied on a tangible
computer usable storage medium (emphasis added)." Appellants also
contend a tangible storage medium does not encompass a signal, and code
embodied on a tangible storage medium is not a signal. (App. Br. 6).
Appellants further contend that the Specification defines the term "storage
medium" to exclude propagated signals. (App. Br. 6). We note the portion
of the Specification (i1i124--26) relied upon by Appellants discloses the
invention using different terminology. The Specification discloses:
computer readable medium(s) may be utilized. The computer
readable medium may be a computer readable signal medium or
a computer readable storage medium. A computer readable
storage medium may be, for example, but not limited to, an
electronic, magnetic, optical, electromagnetic, infrared, or
semiconductor system, apparatus, or device, or any suitable
combination of the foregoing. ivfore specific examples (a non-
exhaustive list) of the computer readable storage medium would
include the following: an electrical connection having one or
more wires, a portable computer diskette, a hard disk, a random
access memory (RAM), a read-only memory (ROM), an erasable
programmable read-only memory (EPROM or Flash memory),
an optical fiber, a portable compact disc read-only memory (CD-
ROM) an optical storage device, a magnetic storage device, or
any suitable combination of the foregoing.
(Spec. i1 24 (emphasis added)). Because the language of independent claim
8 does not directly correspond to Appellants' disclosed Specification
("usable" versus "readable") and Appellants' storage medium may be a
"wire" or "fiber," we find the scope of claim 8 to be broader than
Appellants' proffer. Consequently, Appellants' argument does not show
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error in the Examiner's conclusion that the broadest reasonable
interpretation of independent claim 8 includes a signal.
Additionally, Appellants rely upon paragraphs 37 and 38 of the
Specification. Appellants specifically contend:
"a computer readable storage medium may be any tangible
medium that can contain, or store a program." (Specification,
para. 37, lines 12-14). "A computer readable signal medium may
include a propagated data signal" and "[a] computer readable
signal medium may be any computer readable medium that is not
a computer readable storage medium." (Specification, para. 38).
(App. Br. 6).
From our review of the originally filed Specification, we note that the
originally filed Specification concludes at paragraph 33. We find support
for Appellants' quotations in paragraphs 24 and 25 of the Specification.
Yet, Appellants' proffered distinctions do not correspond to the express
claim language.
The Examiner maintains that the broadest reasonable interpretation of
independent claim 8 is to a signal per se. (Ans. 15-17). We agree with the
Examiner. Consequently, Appellants' argument does not show error in the
Examiner's conclusion of a lack of statutory subject matter of independent
claim 8 and dependent claims 9-15 not separately argued.
With respect to independent claim 16, the Examiner maintains that
independent claim 16 is directed to non-statutory subject matter. (Final Act.
6).
Appellants generally assert that claim 16 is directed to "[a] computer-
implemented system." A computer is a machine and the entire system of
claim 16 is computer-implemented. (App. Br. 7).
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The Examiner maintains that the phrase "computer-implemented" is
included in the preamble and has not accorded patentable weight. (Ans. 17).
We agree with the Examiner and further find the language of independent
claim 16 does not expressly recite a computer or any related
structural/physical elements. Consequently, Appellants' argument does not
show error in the Examiner's conclusion of a lack of statutory subject matter
of independent claim 16 and dependent claim 1 7 not separately argued.
35 U.S.C. § 102
With respect to independent claims 1, 8, and 16, Appellants argue the
claims together. (App. Br. 9). Appellants contend that the Examiner's
reliance upon column 19 of the Vidal reference does not support the
Examiner's finding that the Vidal reference discloses the claimed
"automatically revoking the temporary password in response to receiving the
primary password." (App. Br. 10).
The Examiner further clarifies the rejection in the Examiner's Answer
and further identifies column 20, lines 50-55 to support the finding that "the
password manager 184 automatically expire or revoke a secondary password
(i.e. temporary password) upon a first successful login." (Ans. 18). We note
that Appellants did not file a Reply Brief to respond to the Examiner's
additional reliance upon column 20 of the Vidal reference. As a result,
Appellants do not show error in the Examiner's finding of anticipation of
representative independent claim 1 and claims 2, 5, 7-9, 12, 13, 15, and 16
not separately argued.
Additionally, we agree with the Examiner that the Vidal reference
discloses the claimed limitation. We find the continuation of the "[f]or
example, ... "portion of the Vidal reference relied upon by the Examiner in
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column 20, discloses the "automatically revoking" the temporary password,
i.e., at column 21, lines 1-3 ("For example, the password manager 184 may
automatically expire or revoke a secondary password ... upon logging in to
the email account by the owner-user by using the primary password (e.g., in
order to avoid concurrent access to the email account by both the owner-user
and the friend-user).").
35 U.S.C. § 103
Claims 3, 4, 10, 11, and 1 7
With respect to dependent claims 3, 4, 10, 11, and 17, Appellants
contend that the Fazal reference "teaches changing the 'primary password,'
not the 'temporary password' as set out in claims 3 and 10." (App. Br. 13).
We agree with the Appellants.
The Examiner maintains:
The primary reference Vidal teaches the primary and the
temporary password (col. 8 lines 3 8-43: a primary password
such as "Swordfish" and a secondary password such as
"Elephant''). Further, the secondary reference Fazal teaches the
changing passwords (para. [0007]: the primary password (i.e.
temporary password) is reset (i.e. changing) to a default string
(e.g., "'johnl23 "', "password", etc.) where primary password is
temporary password). Therefore, the combination of Vidal and
Fazal clearly teaches the above limitations.
(Ans. 19-20). The Examiner maintains similar arguments with regards to
dependent claims 4, 10, 11, and 17. (Id. at 20-21). We find the Examiner's
response does not show that either reference teaches or suggests changing
the temporary password as claimed. As a result, Appellants have shown
error in the Examiner's factual findings underlying the conclusion of
obviousness of dependent claims 3, 4, 10, 11, and 17.
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35 U.S.C. § 102, or in the alternative 35 U.S.C. § 103
Claims 6 and 14
Appellants rely upon the arguments advanced with respect to
independent claims 1 and 8. (App. Br. 14). Because we found Appellants'
argument to be unpersuasive with respect to independent claim 1, we
similarly find Appellants' argument to be unpersuasive regarding the
anticipation rejection of dependent claims 6 and 14.
CONCLUSIONS
The Examiner did not err in rejecting claims 1-17 based on a lack of
statutory subject matter under 35 U.S.C. § 101 and did not err in rejecting
claims 1, 2, 5-9, and 12-16 based upon anticipation under 35 U.S.C. § 102,
but the Examiner erred in rejecting claims 3, 4, 10, 11, and 17 based upon
obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner's rejections of claims
1-17 based on a lack of statutory subject matter under 35 U.S.C. § 101 and
claims 1, 2, 5-9, and 12-16 based upon anticipation under 35 U.S.C. § 102.
We reverse the Examiner's rejections of claims 3, 4, 10, 11, and 17
based upon obviousness under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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