Ex Parte Pitt et al

Patent Trial and Appeal Board

Apr 21, 2017

13667109 (P.T.A.B. Apr. 21, 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.
13/667,109 11/02/2012 Alan M. Pitt DIH 3001-CON 1150
30868 7590 04/25/2017
KRAMER & AMADO, P.C.
330 JOHN CARLYLE STREET
3RD FLOOR
ALEXANDRIA, VA 22314
EXAMINER
CARTER, AARON W
ART UNIT PAPER NUMBER
2665
NOTIFICATION DATE DELIVERY MODE
04/25/2017 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):
mail@krameramado.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN M. PITT and SHAHRAM PARTOVI
Appeal 2016-007098
Application 13/667,1091
Technology Center 2600
Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and
DAVID M. KOHUT, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 9-17. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Dignity Health. App.
Br. 2.
Appeal 2016-007098
Application 13/667,109
INVENTION
Appellants’ invention relates to anonymously storing and accessing
biometric data. Spec. 1; Abstract. Claim 9 is representative of the invention
and reproduced below:
9. A method for performing an action requiring multiple
levels of authentication, the method comprising:
receiving a request to perform an action from a first user
operating a first biometric node;
receiving biometric data from the first user;
determining, using the biometric data, whether additional
authorization is required to allow the requested action to proceed;
querying a database with the biometric data to obtain a biometric
random key, the biometric random key generated during a first
enrollment process independently of the biometric data and
stored in association with the biometric data
sending a request for additional authorization to allow the first
user to view information from authorized personnel to a second
biometric node when additional authorization is required;
receiving authorization data at the second biometric node; and
allowing the requested action to proceed.
REJECTIONS AT ISSUE
The Examiner has rejected claims 9—17 under 35U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter. Final Act. 4—5.2
2 Throughout this opinion we refer to Appeal Brief filed February 5, 2016
(“Appeal Br.”), Reply Brief filed July 8, 2016 (“Reply Br.”), Final Action
mailed November 18, 2015 (“Final Act.”), and the Examiner’s Answer
mailed June 9, 2016 (“Ans.”).
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Application 13/667,109
The Examiner has rejected claims 9 and 11—16 as obvious over
Orlassino et al. (US 2009/0158423 Al, published June 18, 2009)
(“Orlassino”) and Vicard (US 2003/0154382 Al, published Aug. 14, 2003).
Final Act. 5—9.
The Examiner has rejected claim 10 as obvious over Orlassino,
Vicard, and Gullman et al. (US 5,280,527, issued Jan. 18, 1994)
(“Gullman”). Final Act. 9—10.
The Examiner has rejected claim 17 as obvious over Orlassino,
Vicard, and Flom (US 2006/0293925 Al, published Dec. 28, 2006). Final
Act. 10-11.
ISSUES
Appellants argue, on pages 6—10 of the Appeal Brief, that the
Examiner’s obviousness rejection of independent claim 9 is in error. We
direct our analysis to claim 9 as dispositive of the issues. Appellants’
arguments present us with the following issues:
1. Did the Examiner err in finding the combination of
Orlassino and Vicard teaches or suggests generating a
biometric random key during a first enrollment process
independent of the biometric data and stored in association
with the biometric data, as recited in independent claim 9?
2. Did the Examiner err in finding the combination of
Orlassino and Vicard teaches or suggests sending a request
for additional authorization to allow the first user to view
information from authorized personnel to a second biometric
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Appeal 2016-007098
Application 13/667,109
node, when additional authorization is required, as recited in
independent claim 9?
We note on pages 2—3 of the Reply Brief, Appellants argue for the
first time that the combination of the references does not teach or suggest
generating a code independently of the biometric data and does not teach or
suggest determining, using the biometric data, whether additional
authorization is required to allow the requested action to proceed.
Appellants have not shown good cause as to why these arguments could not
be presented earlier. As such, these arguments are waived and have not been
considered. See Ex parte Borden, 93 USPQ2d 1473, 1473—74 (BPAI 2010)
(informative) (absent a showing of good cause, the Board is not required to
address arguments in Reply Brief that could have been presented in the
principal Appeal Brief); 37 C.F.R. § 41.41(b)(2).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contention that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments. Appellants’ arguments have
not persuaded us of error in the rejection of claims 9—17.
Indefiniteness rejection of claims 9—17
The Examiner rejects claims 9—17 under 35U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter. Final Act. 4—5. Specifically, the Examiner finds
that claim 9 is unclear because, in the sending step, it is uncertain whether
the request for authorization is sent from authorized personnel or if the
information to be viewed is from the authorized personnel. Final Act. 4.
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Application 13/667,109
Appellants presented no arguments or amendments in response to the
indefmiteness rejection. We summarily sustain the indefmiteness rejection.
Because independent claim 9 and claims 10—17, which are dependent
upon claim 9, are ambiguous, determining the scope of the claims requires
speculation. Our reviewing court has said that it is wrong to rely upon
speculative assumptions as to the meaning of claims when considering a
prior art rejection. In re Steele, 305 F.2d 859, 862 (CCPA 1962). However,
in this case, speculation is not required as the ambiguity is directed to a
conditional limitation in a method claim, which may not occur.
Accordingly, in the interest of compact prosecution, we resolve the
remaining arguments presented by Appellants towards obviousness
Claim 9 recites “determining, using the biometric data, whether
additional authorization is required to allow the requested action to
proceed. . . sending a request for additional authorization to allow the first
user to view information from authorized personnel to a second biometric
node when additional authorization is required” i.e., the determining step is
a conditional limitation in a method claim. As a matter of claim
construction under the broadest reasonable interpretation, of such a
conditional limitation in a method claim is that the sending step may never
occur if additional authorization is not required. See Ex parte Schulhauser,
Appeal No. 2013-007847, slip op. at 9 (PTAB, April 28, 2016)
(precedential).
Obviousness rejection
Issue 1
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Application 13/667,109
Appellants assert that the combination of Orlassino and Vicard fails to
teach or suggest generating a biometric random key during a first enrollment
process independent of the biometric data and stored in association with the
biometric data. App. Br. 9. Specifically, Appellants argue that Vicard’s
code is a number input by a user, and, therefore, is not biometric or random.
Id. at 8.
Appellants’ arguments have not persuaded us of error. The Examiner
provides a comprehensive response to Appellants’ arguments on page 4 of
the Answer. We have reviewed the Examiner’s response and the evidence
relied upon by the Examiner and concur with the Examiner’s conclusion of
unpatentability. Specifically, the Examiner finds Vicard teaches a code
generated during a biometric enrollment process and then pre-assigned to a
security token. Ans. 4; see Vicard Tflf 8—9, 30, 31, 35—40. The Specification
discloses that the “biometric random key may be a globally unique identifier
associated with the raw biometric data.” Spec. 14. The Examiner finds
Vicard’s code to be “biometric” because the code is generated during the
biometric enrollment and associated with a matching biometric profile. Ans.
4; see Vicard 8—9, 30, 31, 35—40. The Examiner further finds Vicard’s
code is “random” because the number is pre-assigned to the user who has no
involvement with the selection of the code numbers. Id. We concur with
the Examiner’s findings and we agree that the combination of references
teaches or suggests generating a biometric random key during a first
enrollment process independent of the biometric data and stored in
association with the biometric data as claimed.
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Application 13/667,109
Issue 2
Appellants’ assert that the combination of Orlassino and Vicard fails
to teach or suggest “sending a request for additional authorization to allow
the first user to view information from authorized personnel to a second
biometric node when additional authorization is required.” App. Br. 9-10.
Appellants’ arguments are not persuasive because they are not
commensurate with the broadest reasonable interpretation of the claim as
discussed above.
For these reasons, we are not persuaded that the Examiner erred
rejecting independent claim 9. As to the remaining claims 10—17, we
likewise are not persuaded that the Examiner erred where Appellants rely on
their arguments as to claim 9. App. Br. 10—11. Accordingly, we sustain the
Examiner’s rejections.
DECISION
The decision of the Examiner to reject claims 9—17 as indefinite for
failing to particularly point out and distinctly claim the subject matter is
affirmed.
The decision of the Examiner to reject claims 9 and 11—16 as obvious
over Orlassino and Vicard is affirmed.
The decision of the Examiner to reject claim 10 as obvious over
Orlassino, Vicard, and Gullman is affirmed.
The decision of the Examiner to reject claim 17 as obvious over
Orlassino, Vicard, and Flom is affirmed.
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Application 13/667,109
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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