Ex Parte Singhal

Patent Trial and Appeal Board

Mar 15, 2016

13199739 (P.T.A.B. Mar. 15, 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.
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.

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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.
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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
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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).
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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
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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:

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(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
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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
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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.

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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).

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AFFIRMED