Ex Parte SinghalDownload PDFPatent Trial and Appeal BoardMar 15, 201613199739 (P.T.A.B. Mar. 15, 2016) Copy Citation 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. 13/199,739 09/07/2011 Tara Chand Singhal 11195.81C 2494 103550 7590 03/15/2016 Tara Chand Sighal P.O. Box 5075 Torrance, CA 90510 EXAMINER CHAI, LONGBIT ART UNIT PAPER NUMBER 2431 MAIL DATE DELIVERY MODE 03/15/2016 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 TARA CHAND SINGHAL ____________ Appeal 2014-005530 Application 13/199,739 Technology Center 2400 ____________ Before JOHNNY A. KUMAR, KAMRAN JIVANI, and MATTHEW J. McNEILL, Administrative Patent Judges. JIVANI, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejections of claims 1–20, which are the claims pending in the present patent application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The present application relates to a remote user authentication system that dynamically performs multiple factors of remote user authentication into a network with one card-device alone. Spec. 1:22–25. Appeal 2014-005530 Application 13/199,739 2 Claim 1 is illustrative (disputed limitations emphasized):1 1. A remote user authentication system, comprising: a. an authentication server and an authentication database; b. an authentication logic operable in the server and the database, the logic receives and processes an authentication record from a card-device of a remote user, where the authentication record has multiple separate, at least two and up to four different factors of authentication of “what you know”, “what you have”, “what you are”, and “where you are”. The Rejections 1. Claims 10 and 13 stand rejected under 35 U.S.C. § 102(b) over Boyles (US 6,738,901 B1, issued May 18, 2004). 2. Claim 10 stands rejected under 35 U.S.C. § 102(e) over Geosimonian (US 7,308,581 B1, issued December 11, 2007). 3. Claims 1, 2, 8, 14, and 19 stand rejected under 35 U.S.C. § 103(a) over Hind ’066 (US 6,948,066 B2, issued September 20, 2005), which incorporates by reference Hind ’690 (US 6,826,690 B1, issued November 30, 2004) (collectively, “Hind”). 4. Claims 4 and 16 stand rejected under 35 U.S.C. § 103(a) over Hind and Brainard (US 2003/0105964 A1, published June 5, 2003). 5. Claims 5, 6, 17, and 18 stand rejected under 35 U.S.C. § 103(a) over Hind and Ginter (US 6,253,193 B1, issued June 26, 2001). 1 Appellant includes in the Claims Appendix the set of claims filed on Aug. 6, 2012. App. Br. 44. This claim set does not reflect the various amendments made during prosecution. Pursuant to 37 C.F.R. 41.37(c)(v), we decide the Appeal based on the claims as they stood at the time of the Office Action on appeal, namely the claim set filed on May 26, 2013. Appeal 2014-005530 Application 13/199,739 3 6. Claims 9 and 20 stand rejected under 35 U.S.C. § 103(a) over Hind and Dickinson (US 2005/0102244 A1, published May 12, 2005). 7. Claims 1–3, 7, 8, 14, 15, and 19 stand rejected under 35 U.S.C. § 103(a) over Boyles and Hind. 8. Claim 11 stands rejected under 35 U.S.C. § 103(a) over Boyles and Brainard. 9. Claim 12 stands rejected under 35 U.S.C. § 103(a) over Boyles and Ginter. 10. Claims 1–20 stand rejected for obviousness-type double patenting over claims 1–22 of Singhal ’945 (US 8,090,945 B2, issued January 3, 2012). ANALYSIS Rejection Nos. 1 and 2: Anticipation Claim 10 recites in relevant part, “the database has fields for multiple and separate factors of authentication that represent, (i) what you have (ii) what you know, (iii) what you are, and (iv) where you are factors of remote user authentication.” Appellant argues Rejection Nos. 1 and 2 together as a single ground. App. Br. 23. Appellant contends the Examiner errs in finding Boyles anticipates claims 10 and 13 (Rejection No. 1) because, although Boyles discloses “three different factors of remote user authentication,” Boyles fails to disclose the claimed factor, namely ‘where you are’. App. Br. 24. Appellant further contends the Examiner errs in alternatively finding Geosimonian anticipates claim 10 (Rejection No. 2) because, although Geosimonian discloses “three different factors of remote user Appeal 2014-005530 Application 13/199,739 4 authentication,” Geosimonian fails to disclose the claimed factor, namely ‘where you are’. Id. at 24–25. Initially, as a matter of claim construction, we observe the Specification discloses the claimed “where you are” factor “uses GPS location data via GPS sensor chip within the card-device to provide this factor of authentication such that if the card-device is authorized to be used from certain locations and it can only be used from those locations and not from any other location because the earth coordinates of these locations are pre-stored in the authentication database.” Spec. 3:15–20 (emphasis added). Given this disclosure, we find one of ordinary skill in the art would understand the claimed ‘where you are’ factor to require use of GPS location coordinates. In light of this construction, we agree with Appellant that the cited portions of Boyles do not disclose the claimed ‘where you are’ factor because Boyles’ user geographical information lacks GPS location coordinates. Similarly, we agree with Appellant that the cited portions of Geosimonian do not disclose the claimed ‘where you are’ factor because Geosimonian’s user address lacks GPS location coordinates. A claim is anticipated only if each and every element as set forth in the claims is found, either expressly or inherently described in a single prior art reference, and arranged as required by the claim. Verdegaal Bros., Inc. v. Union Oil. Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Accordingly, we do not sustain the Examiner’s rejection of independent claim 10 and its dependent claim 13 as anticipated by Boyles (Rejection No. 1). Similarly, we do not sustain the Examiner’s rejection of independent claim 10 as anticipated by Geosimonian (Rejection No. 2). Appeal 2014-005530 Application 13/199,739 5 Rejections 3–6: Obviousness Appellant argues Rejection Nos. 3–6 together as a single ground. App. Br. 28. Appellant argues these rejections collectively on the basis of claims 1, 10, and 14, together with their respective dependent claims (App. Br. 28), despite claim 10 and its dependent claims 11–13 not being subject to these rejections. Final Act. 11–15. Specifically, Appellant contends: (i) Hind ’690 “lacks relevancy to the claimed subject matter, as the claimed subject matter is directed to an authentication database server with fields for four different factors of authentication from a remote human user and not a communicating device.” App. Br. 30 and 33. (ii) Obviousness requires that “if there is no teaching or suggestion or motivation, then a combination of prior art references would not combined by a person of ordinary skill and thus would be un-obvious. . . .” Id. at 33. We are not persuaded by Appellant’s arguments for at least the following reasons. First, Appellant’s argument regarding the relevance of Hind ’690 is not responsive to the Examiner’s findings. In each of Rejection Nos. 3–6, the Examiner applies the teachings and suggestions of Hind ’066 together with the teachings and suggestions of Hind ’690, incorporated by reference into Hind ’066. E.g., Final Act. 9. Appellant does not argue the relevance of Hind ’066. Rather, Appellant’s argument reduces to an assertion that one of ordinary skill in the art would not read the reference explicitly incorporated into Hind ’690. Appellant’s argument is thus tantamount to arguing the cited references individually. Where, as here, a rejection is Appeal 2014-005530 Application 13/199,739 6 based on a combination of references, one cannot show non-obviousness by attacking references individually. In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Second, Appellant’s argument requiring application of the so-called TSM test is misguided. Such argument seeks to apply an overly rigid and formalistic test contrary to the law. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 404, 418 (2007). Further, by arguing generally Rejection Nos. 3–6 together, Appellant fails to identify which references an artisan of ordinary skill would allegedly not combine. Appellant’s contentions, therefore, necessarily do not identify in the record before us persuasive evidence that such combinations were “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Accordingly, we sustain the Examiner’s rejections of: independent claims 1 and 14, together with their dependent claims 2, 8, and 19 as obvious over Hind (Rejection No. 3); dependent claims 4 and 16 as obvious over Hind and Brainard (Rejection No. 4); dependent claims 5, 6, 17, and 18 as obvious over Hind and Ginter (Rejection No. 5); and dependent claims 9 and 20 as obvious over Hind and Dickinson (Rejection No. 6). Rejections 7–9: Obviousness Appellant argues Rejection Nos. 7–9 together as a single ground. App. Br. 35. Appellant argues these rejections collectively on the basis of claims 1, 10, and 14, together with their respective dependent claims. Id. Specifically, Appellant contends: Appeal 2014-005530 Application 13/199,739 7 (a) Although “the prior art teaches three different factors of remote user authentication, prior art does not teach a fourth factor of remote user authentication that of ‘where you are’ factor.” Id. at 41. (b) Hind ’690 “lacks relevancy to the claimed subject matter, as the claimed subject matter is directed to an authentication database server with fields for four different factors of authentication from a remote human user and not a communicating device.” Id. at 41. Rejection No. 7: We are not persuaded by Appellant’s argument when applied in the context of Rejection No. 7 for at least the following reasons. Independent claim 1 recites in relevant part, “at least two and up to four different factors of authentication of ‘what you know’, ‘what you have’, ‘what you are’, and ‘where you are’.” Independent claim 14 recites commensurate limitations. The Examiner cites Boyles as teaching or suggesting the claimed ‘what you have’ and ‘what you are’ factors, not the claimed ‘where you are’ factor. Final Act. 11–12. Thus, Appellant’s argument (a) regarding the ‘where you are’ factor is unpersuasive because it is not responsive to the Examiner’s findings. Further, Appellant’s argument (b) regarding the relevance of Hind ’690 is unpersuasive because it is tantamount to arguing Hind ’066 and Hind ’690 separately, as discussed above in the context of Rejections 3–6. Accordingly, we sustain the Examiner’s rejection of claims 1 and 14 as obvious over Boyles and Hind. Appellant advances no further argument Appeal 2014-005530 Application 13/199,739 8 on dependent claims 2, 3, 7, 8, 15 and 19 in the context of this rejection, instead arguing them together with their respective independent claims. App. Br. 42. Accordingly, we sustain the Examiner’s rejection of claims 2, 8, and 19 as obvious over Boyles and Hind. Rejection Nos. 8 and 9: Claims 11 and 12 each depend from independent claim 10. Claim 10 recites in relevant part, “the database has fields for multiple and separate factors of authentication that represent, (i) what you have (ii) what you know, (iii) what you are, and (iv) where you are factors of remote user authentication.” As discussed above, the Examiner incorrectly cites Boyles as anticipating claim 10. Here, in the context of claims 11 and 12, the Examiner fails to make any findings in Brainard (for claim 11) or Ginter (for claim 12) to repair the deficiencies of Boyles with respect to the ‘where you are’ factor inherited from claim 10. Without additional findings from the Examiner addressing why the ‘where you are’ factor is purportedly obvious, we agree with Appellant’s argument (a) that Boyles fails to teach or suggest the claimed ‘where you are’ factor. Accordingly, we do not sustain the Examiner’s rejections of claim 11 as obvious over Boyles and Brainard (Rejection No. 8) and claim 12 as obvious over Boyles and Ginter (Rejection No. 9). Rejection 10: Obviousness-type Double Patenting Appellant argues the Examiner errs in rejecting claims 1–20 for obviousness-type double patenting because the claims of Singhal ’945 claims are “exclusively directed to features of a remote user authentication Appeal 2014-005530 Application 13/199,739 9 card-device” rather than the claimed authentication system with an authentication database. App. Br. 27. Appellant advances no further arguments on this rejection. Id. We are not persuaded by Appellant’s argument. The Examiner finds claims 1–20 obvious in light of, inter alia, the recitation in Singhal ’945 claims 1, 16, and 17 of an authentication server, an authentication database, and a card-specific algorithm. Final Act. 4. Appellant fails to address in the record before us these findings. See App. Br. 27. Accordingly, we sustain the Examiner’s obviousness-type double patenting rejection of claims 1–20. Appeal 2014-005530 Application 13/199,739 10 DECISION We reverse the Examiner’s decision rejecting claims 10 and 13 under 35 U.S.C. § 102(b) over Boyles. We reverse the Examiner’s decision rejecting claim 10 under 35 U.S.C. § 102(e) over Geosimonian. We reverse the Examiner’s decision rejecting claim 11 under 35 U.S.C. § 103(a) over Boyles and Brainard. We reverse the Examiner’s decision rejecting claim 12 under 35 U.S.C. § 103(a) over Boyles and Ginter. We affirm the Examiner’s decision rejecting claims 1, 2, 8, 14, and 19 under 35 U.S.C. § 103(a) over Hind. We affirm the Examiner’s decision rejecting claims 4 and 16 under 35 U.S.C. § 103(a) over Hind and Brainard. We affirm the Examiner’s decision rejecting claims 5, 6, 17, and 18 under 35 U.S.C. § 103(a) over Hind and Ginter. We affirm the Examiner’s decision rejecting claims 9 and 20 under 35 U.S.C. § 103(a) over Hind and Dickinson. We affirm the Examiner’s decision rejecting claims 1–3, 7, 8, 14, 15, and 19 under 35 U.S.C. § 103(a) over Boyles and Hind. We affirm the Examiner’s decision rejecting claims 1–20 for obviousness-type double patenting over claims 1–22 of Singhal. 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)(iv). Appeal 2014-005530 Application 13/199,739 11 AFFIRMED Copy with citationCopy as parenthetical citation