Ex Parte Ludlow et al

Patent Trial and Appeal Board

Dec 1, 2016

12265666 (P.T.A.B. Dec. 1, 2016)

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.
12/265,666 11/05/2008 Nelson Ludlow 064599- 8004.U SOI 2588
25096 7590 12/05/2016
PFRKTNN TOTF TIP- NFA General
EXAMINER
PATENT-SEA BROWN, VERNAL U
P.O. BOX 1247
SEATTLE, WA 98111 -1247 ART UNIT PAPER NUMBER
2686
NOTIFICATION DATE DELIVERY MODE
12/05/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NELSON LUDLOW, STEVEN ZEHM,
BRIAN BLOOD, and TRISTAN LEONARD
Appeal 2016-002064
Application 12/265,6661
Technology Center 2600
Before LARRY J. HUME, CATHERINE SHIANG, and
NATHAN A. ENGELS, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 4—19, and 22—33 which are all the claims pending in
the application. Appellants have canceled claims 2, 3, 20, 21, and 34. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Intellicheck Mobilisa,
Inc. App. Br. 1.
Appeal 2016-002064
Application 12/265,666
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention relates to dynamic access
control in response to flexible rules. Title.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added):
1. A method in a computer system for controlling
access to a location based on one or more access rules, the
method comprising:
receiving identification information associated with an
individual from a piece of identification;
comparing at least some of the received identification
information with a first data set to assess the likelihood that the
individual is a person of interest,
wherein a person of interest includes an
individual who raises heightened concern for
security purposes, and
wherein the first data set includes a set of
persons of interest;
denying the individual access if the individual is a person
of interest;
comparing at least some of the received identification
information with a second data set to assess whether the
individual is pre-authorized to access the location,
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
June 4, 2015); Reply Brief ("Reply Br.," filed Dec. 7, 2015); Examiner's
Answer ("Ans.," mailed Oct. 7, 2015); Final Office Action ("Final Act.,"
mailed Sept. 5, 2014); and the original Specification ("Spec.," filed
Nov. 5, 2008).
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Application 12/265,666
wherein the second data set includes a set of
pre-authorized persons;
allowing the individual access if the
individual is a pre-authorized person; and
if the received identification information does not
substantially match a person of interest and does not
substantially match a pre-authorized person, applying,
automatically and without manual input, one or more access
rules to at least some of the read identification information to
determine whether the individual is to be granted or denied
access to the location.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Gullman et al.
("Gullman")
US 5,280,527 Jan. 18, 1994
Merkert, SR.
("Merkert")
US 2005/0082365 Al Apr. 21,2005
Kinsella US 6,914,517 B2 July 5, 2005
Zagami US 2005/0171787 Al Aug. 4, 2005
Weekes US 7,147,155 B2 Dec. 12, 2006
Atwood et al.
("Atwood")
US 8,086,525 B2 Dec. 27, 2011
(filed Oct. 31,2008)
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Application 12/265,666
Rejections on Appeal3
Rl. Claims 1, 4—13, 18, 19, 22—27, 29, and 30-33 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Weekes and Zagami. Final Act. 4.
R2. Claims 14 and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Weekes, Zagami, and Merkert.
Final Act. 9.
R3. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Weekes, Zagami, and Gullman. Final
Act. 10.
R4. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Weekes, Zagami, and Kinsella. Id.
R5. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Weekes, Zagami, and Atwood. Final
Act. II.4
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 15—19), we decide the
appeal of obviousness Rejection Rl of claims 1, 4—13, 18, 19, 22—27, 29,
and 30-33 on the basis of representative claim 1.
3 We note the Examiner has withdrawn the rejection of claim 33 under 35
U.S.C. § 101; and the rejection of claims 1, 4—19, and 22—33 under 35
U.S.C. § 112, first paragraph, as lacking written description support. Ans. 2.
4 The Examiner omits citation to the Zagami reference in the explicit
statement of Rejection R5, but addresses the combination of Weekes,
Zagami, and Atwood in the detailed rejection. Final Act. 11.
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Remaining claims 14—17 and 28 in rejections R2 through R5, not
argued separately, stand or fall with the respective independent claim from
which they depend.5
ISSUE
Appellants argue (App. Br. 15—17; Reply Br. 2—9) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Weekes and Zagami is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method in a computer system for controlling access to a
location based on one or more access rules" that includes, inter alia, the
conditional limitation of:
if the received identification information does not
substantially match a person of interest and does not
substantially match a pre-authorized person, applying,
automatically and without manual input, one or more access
rules to at least some of the read identification information to
determine whether the individual is to be granted or denied
access to the location,
as recited in claim 1?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
5 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv)
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Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1, 4—
19, and 22—33, and we incorporate herein and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellants' arguments. We incorporate such
findings, reasons, and rebuttals herein by reference unless otherwise noted.
However, we highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
Appellants contend independent claims 1,19, and 33 "all recite the
'blacklist' feature, the 'whitelist' feature, and the 'grey area' feature", but the
cited prior art, Weekes and Zagami "only disclose the 'whitelist' feature and
the'blacklist'feature." App. Br. 15. "For purposes of this appeal, the
primary question to the Board is whether or not such a 'grey area' teaching is
found in the applied references." Id.
We first note, Appellants' arguments are not commensurate with the
scope of the claim, as claim 1 does not recited a "whitelist," a "blacklist," or
a "grey area," as pointed out by the Examiner. Ans. 2—3.
Appellants further argue Weekes' teaching of automatically denying
access to an individual in the absence of finding the individual on a whitelist
or blacklist does not teach or suggest the claimed conditional "applying . . .
one or more access rules" when an individual falls within the asserted "grey
area." App. Br. 16.
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The Examiner finds, "[t]he limitation of the access rule is broadly
claimed and does not provide any definition of what the access rule includes
. . . [because the] limitation regarding the access rules is broader than
argued, the claimed limitations does not include the access rules as argued
on page 16 of the Appeal Brief." Ans. 3.
Appellants contend:
An "access rule" as claimed is different than the
automatic barring of individuals as taught by Weekes for at
least two reasons. First, an access rules makes an additional
assessment of circumstances under which an individual may be
granted access to a location. That is, application of an access
rule inherently has two outcomes—either to deny access or to
grant access. Weekes cannot be said to disclose or suggest an
access rule, since its sole outcome is to preclude access in all
circumstances. To read Weekes otherwise is to ignore the
limitation pertaining to granting access to the location in the
plain language of the claim.
Second, the "one or more access rules" discussed above
each utilize certain objective pieces of information to access the
circumstances under which access is granted. For example, an
access rule may depend on the individual who wants to access a
location (e.g., rules by virtue of an individual's rank), the type
of identification document scanned, or the location itself (e.g.,
rules based on the location of a scanning device). Weekes takes
no such objective information into account, and is not in
possession of any additional factors on which an access
decision can be based. Weekes therefore cannot be said to
disclose or suggest an access rule.
App. Br. 16—17.
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We note Appellants have not cited to a definition of "access rule" in
the Specification that would preclude the Examiner's broader reading.
Ans. 3.6,7
We agree with the Examiner's factual findings in support of the legal
conclusion of obviousness cited above. Moreover, as a matter of claim
interpretation in further support of the Examiner's conclusion of
obviousness, and using the broadest reasonable interpretation of claim 1, we
conclude the conditional step of "applying . . . one or more access rules,"
may never occur. See Ex parte Schulhauser, Appeal No. 2013-007847, at *9
(PTAB, April 28, 2016) (precedential) (holding "[t]he Examiner did not
need to present evidence of the obviousness of the remaining method steps
6 In particular, the Weekes reference teaches:
verifying the traveler's information before the traveler is
allowed to embark and uploading traveler's identification
information for verification (col. 5 lines 63—66). Weekes further
teaches enhancing the traveler's information with information
gathered from immigration, police and national identification
authorities (col. 6 lines 5—15) and the examiner consider such
enhancements as access rule and allowing access based on
substantial matching of data or partial matching of data
represents an obvious variation and only requires routine skills
in the art.
Ans. 3.
7 Further, any special meaning assigned to a term "must be sufficiently clear
in the specification that any departure from common usage would be so
understood by a person of experience in the field of the invention."
Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir.
1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d
1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer
and assign to a term a unique definition that is different from its ordinary
and customary meaning; however, a patentee must clearly express that intent
in the written description.").
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of claim 1 that are not required to be performed under a broadest reasonable
interpretation of the claim (e.g., instances in which the electrocardiac signal
data is not within the threshold electrocardiac criteria such that the condition
precedent for the determining step and the remaining steps of claim 1 has not
been met"); see also Ex parte Katz, Appeal No. 2010-006083, 2011 WL
514314, at *A-5 (BPAI Jan. 27, 2011).8
Here, we apply the precedential guidance of Schulhauser. Therefore,
the Examiner need not present evidence establishing the obviousness of the
conditional "applying" step of claim 1, because it is not required to be
performed under the broadest reasonable interpretation of the claim, e.g.,
instances when the received identification information does substantially
match a pre-authorized person, such that the condition precedent for the
applying step, i.e., "if the received identification information does not
substantially match a person of interest and does not substantially match a
pre-authorized person," is not met.
Therefore, we find Appellants' argument that Weekes fails to teach or
suggest the conditional applying step of claim 1 to be unavailing, because it
is not commensurate with the broadest reasonable interpretation of claim 1.
See In re Schulhauser, Appeal 2013-007847, at *9.
8 See, also e.g., Appier a Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed.
Cir. 2010) (unpublished) (affirming a district court's interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cybersettle, Inc. v. Nat 'l Arbitration
Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is
of course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.").
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Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 4—13, 18, 19, 22—27, 29, and 30-33 which fall therewith. See Claim
Grouping, supra.
§ 103(a) Rejections R2 through R5 of Claims 14 1 7 and 28
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 through R5 of claims 14—17 and 28 under
§103 (see App. Br. 18), we sustain the Examiner's rejections of these
claims. Arguments not made are waived.9
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2—9) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
9 Appellants merely argue, "Weekes and Zagami fail to disclose all the
claimed features of claims 1 and 19. Neither Merkert, Gullman, Kinsella,
nor Atwood cures the deficiency of Weekes and Zagami described above."
App. Br. 18.
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CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
through R5 of claims 1, 4—19, and 22—33 under 35 U.S.C. § 103(a) over the
cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1, 4—19,
and 22—33.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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