Ex Parte Nandagopal

Patent Trial and Appeal Board

May 8, 2013

11345695 (P.T.A.B. May. 8, 2013)

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.
11/345,695 02/02/2006 Thyagarajan Nandagopal Nandagopal 8
(LCNT/127786
8879
46363 7590 05/08/2013
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
D AGOSTA, STEPHEN M
ART UNIT PAPER NUMBER
2643
MAIL DATE DELIVERY MODE
05/08/2013 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 THYAGARAJAN NANDAGOPAL
________________

Appeal 2010-009972
Application 11/345,695
Technology Center 2600
________________

Before DENISE M. POTHIER, JEREMY J. CURCURI, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
1

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-13 and 15-24. Claims 14 and 25 are objected to. App.
Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1-13 and 15-24 are rejected under 35 U.S.C. § 103(a) as
obvious over Codron (WO 03/015043 A1; published Feb. 20, 2003), Van

1
Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the following documents for their respective
details: the Appeal Brief (App. Br.) filed March 12, 2010; the Examiner’s
Answer (Ans.) mailed April 8, 2010; and the Reply Brief (Reply Br.) filed
June 8, 2010.
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Rensburg (WO 01/55984 A1; published Aug. 2, 2001), and Krueger (US
6,980,970 B2; issued Dec. 27, 2005). Ans. 5-8.
We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to providing authentication and
verification services for third party vendors using mobile devices,
eliminating the need for the vendor to solely rely on the auxiliary security
verification information (ASVI) in order to authenticate the user. Spec. 2:2-
5. Claim 1 is illustrative and reproduced below:
1. A method for authenticating a transaction between a user
and a vendor, the method comprising:
receiving, at a service provider, a mobile device identifier and other
identifying data associated with the user participating in the transaction;
determining, by the service provider, a mobile device associated with
the mobile device identifier and other identifying data associated with a
registered user of the mobile device;
comparing the received and determined other identifying data,
wherein a match between the received and determined other identifying data
indicates that the user participating in the transaction is the registered user;
and
transmitting a data string toward the vendor and toward the mobile
device, wherein the data string is configured to indicate authenticity of the
user participating in the transaction if the user is able to provide the data
string transmitted toward the mobile device to the vendor.

PRINCIPLES OF LAW
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398 (2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
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either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson’s-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 550 U.S. at 417.
If the claimed subject matter cannot be fairly characterized as
involving the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” Id. at 418. Such a showing requires:
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”.... [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

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ANALYSIS
Claims 1, 2, 5-10, 12, 13 and 15-19, 21-23
We agree with the Examiner’s position, with regard to claim 1, that
Codron, Van Rensburg, and Krueger collectively teach all claim limitations.
Ans. 5-7. The Examiner relies on Codron for all recited limitations except
for (i) transmitting the data string toward the vendor; and (ii) using the data
string for authentication, for which the Examiner relies on Van Rensburg
and Krueger. Ans. 5-7. The Examiner reasons that it would have been
obvious to one of ordinary skill in the art at the time of the invention to
modify Codron to achieve the claimed invention to provide means for the
user to locally authenticate with the vendor based on a received data string,
offloading the authentication process from the service provider network.
Ans. 6-7.
Appellant argues the Examiner has improperly construed the recited
“mobile device identifier,” and Codron does not disclose the recited mobile
device associated with the mobile device identifier. App. Br. 12-14.
Appellant further argues neither Van Rensburg nor Krueger discloses the
recited “the received and determined other identifying data.” App. Br. 15.
Appellant even further argues the Examiner fails to provide some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. App. Br. 15-16. See also Reply Br. 14-23.
In response, the Examiner explains a mobile device cannot connect to
a mobile network without first providing credentials to the network, and
Codron teaches a mobile device connecting to a server. Ans. 11 (citing
Codron, p. 5). We agree with the Examiner.
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The Examiner further explains that Codron (see Codron, Abstract)
sends a message to a user’s mobile phone when the user’s credit card is
used, Van Rensburg (see Van Rensburg, pp. 15, l. 25-16, l. 2) verifies
transactions with PINs/passwords, and Krueger (see Krueger, col. 2, ll. 39-
64) teaches an authentication system whereby a trusted third party sends
“data strings” which are used to confirm if the merchant should proceed with
the purchase. Ans. 10-11. The Examiner explains Codron’s message can be
adapted to be a PIN/password. Ans. 12. The Examiner explains that by
combining the prior art, the user and vendor receive a
message/PIN/password whereby the message/PIN/password must be
inputted and authenticated by the vendor. Ans. 12. Again, we agree with the
Examiner.
We see no reason why Codron would not benefit from verifying
transactions with PINs/passwords, such as those taught by Van Rensburg
(see Van Rensburg, p. 15, l. 25-p. 16, l. 2), which also describes transaction
processing. Further, we see no reason why Codron as modified in light of
Van Rensburg (Codron/Van Rensburg) would not benefit from a trusted
third party providing verification data strings to the merchant and customer,
such as disclosed by Krueger (see Krueger, col. 2, ll. 39-64), which also
describes transaction processing. Krueger’s verification data strings sent to
the merchant and customer, and then compared at the merchant, are readily
applicable to Codron/Van Rensburg as Codron/Van Rensburg verifies
transactions with PINs/passwords (data strings), and sends a message to a
user’s mobile phone when the user’s credit card is used. Modifying
Codron’s system to send a PIN/password/data string to a customer’s mobile
phone, to send a data string to the vendor, and to compare the data strings at
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the vendor for verification, is a predictable use of prior art elements
according to their established functions — an obvious improvement. See
KSR, 550 U.S. at 417.
Regarding Appellant’s arguments (App. Br. 12-14) that the Examiner
has improperly construed the recited “mobile device identifier,” and Codron
does not disclose the recited mobile device associated with the mobile
device identifier, we see no error in the Examiner’s finding that Codron
teaches the recited limitations.
Appellant’s Specification (5:18-21) states “the user account is
associated with the user’s name (and optionally the user’s address) and
information and an identifier specific to the mobile device, (e.g., subscriber
identity module (SIM) or electronic serial number (ESN)).” Although this
discussion informs our construction of “mobile device identifier,” it is not
limiting. Notably, Appellant does not define the term “mobile device
identifier” in the Specification, but rather describes it in connection with
preferred embodiments.
The term “identifier” is defined in pertinent sense as “: one that
identifies.”
2
The term “identifies” is defined in pertinent sense as “2 a: to
establish the identity of.”
3
Therefore, a broad, but reasonable, construction
of the term “mobile device identifier” includes something that establishes
the identity of a mobile device.
With this construction, we see no error in the Examiner’s reliance on
Codron for teaching the recited mobile device associated with the mobile
device identifier.

2
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY, 10th Ed., p. 575 (1997).
3
Id. at 575.
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Codron (p. 2, ll. 19-20) states “[t]he mobile phone account data and/or
email account data may be presented on the [credit] card.” The mobile phone
account data establishes the identity of a mobile phone; thus, the mobile
phone account data is a mobile device identifier and is also associated with
the mobile device as recited in claim 1.
Regarding Appellant’s arguments (App. Br. 15) that neither Van
Rensburg nor Krueger discloses the recited “the received and determined
other identifying data,” we find these arguments unavailing because the
Examiner relies on Codron for teaching “comparing the received and
determined other identifying data.” Ans. 5 (citing Codron, pp. 2, l. 19- 3, l.
9). One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Appellant, for the first time in the Reply Brief, argues that combining
Van Rensburg and Krueger would destroy the functionality of either
arrangement, and a person of ordinary skill in the art at the time of the
invention would not have seen a reasonable likelihood of success in
combining the Van Rensburg and Krueger teachings as proposed by the
Examiner. Reply Br. 17-18. Appellant’s arguments on these points are
untimely and waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”).
Weighing Appellant’s arguments against the Examiner’s findings, we
find that Codron, Van Rensburg, and Krueger collectively teach the
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limitations of claim 1, and the Examiner’s reason to combine these teachings
is supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion.
We, therefore, sustain the Examiner’s rejection of claim 1, as well as
claims 2, 5-10, 16-19 and 21-23, which are not argued separately with
particularity.
Claims 3, 4, 11-13, 15, 20 and 24
Regarding claims 3, 11 and 24, the Examiner takes Official Notice
that the recited randomly generating the data string is well-known in the art.
Ans. 7.
Regarding claims 4 and 20, the Examiner takes Official Notice that
the recited subscriber identity module (SIM) and electronic serial number
(ESN), and the recited name and address of the registered user are well-
known in the art. Ans. 7.
Regarding Appellant’s attempt (App. Br. 17-19; Reply Br. 25-27) to
traverse the Examiner’s taking Official Notice (Ans. 7) with regard to claims
3, 4, 11, 20 and 24, we find Appellant’s arguments unpersuasive because
Appellant merely provides blanket, unsupported assertions without
explaining why the noticed facts are not considered to be common
knowledge or well-known in the art. See e.g., MPEP 2144.03 (C) (“To
adequately traverse such a finding, an applicant must specifically point out
the supposed errors in the examiner’s action, which would include stating
why the noticed fact is not considered to be common knowledge or well-
known in the art.”).
We, therefore, sustain the Examiner’s rejection of claim 3, 4, 11, 20
and 24, and dependent claims 12, 13 and 15 not separately argued.
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ORDER
The Examiner’s decision rejecting claims 1-13 and 15-24 is 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)(1).

AFFIRMED

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