Ex Parte Starner et al

Patent Trial and Appeal Board

Oct 13, 2017

13889872 (P.T.A.B. Oct. 13, 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.
13/889,872 05/08/2013 Thad Eugene Starner 13-187 8963
98929 7590 10/13/2017
McDonnell Boehnen Hulbert & Berghoff
LLP/Google LLC
300 South Wacker Drive, Suite 3100
Chicago, IL 60606
EXAMINER
ALMEIDA, DEVIN E
ART UNIT PAPER NUMBER
2492
MAIL DATE DELIVERY MODE
10/13/2017 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 THAD EUGENE STARNER and
MICHAEL PATRICK JOHNSON1
Appeal 2017-001692
Application 13/889,872
Technology Center 2400
Before MARC S. HOFF, JOHN P. PINKERTON, and
MATTHEW J. McNEILL, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—13, 15—23, and 27—31, which constitute all the
claims pending in this application. Claims 14 and 24—26 are canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Google Inc. as the real party in interest. App. Br. 1.
Appeal 2017-001692
Application 13/889,872
STATEMENT OF THE CASE
Appellants generally describe the disclosed invention as follows:
A first computing device can detect a machine-readable code
displayed by a second computing device, where the machine-
readable code can identify protected information viewable via
the second computing device. In response to detecting the
machine readable code, the first computing device can acquire
biometric data via one or more biometric sensors associated with
the first computing device. Based at least in part on the biometric
data, the first computing device can generate an authentication
message that includes authentication information and identifies
the protected information. The first computing device can then
send the authentication message to an authentication server for
verification of the authentication information, where verification
of the authentication information can allow access to the
protected information via the second computing device.
Abstract.2
Claim 1 is illustrative and reads as follows (with the disputed
limitation emphasized):
1. A method, comprising:
determining, by a first computing device, that the first
computing device is being worn;
while the first computing device is determined to be worn,
detecting, by the first computing device, a machine-readable
code that is displayed by a second computing device, wherein the
machine-readable code identifies protected information that is
viewable via the second computing device; and
responsive to detecting the machine-readable code while
the first computing device is determined to be worn:
2 Our Decision refers to the Final Office Action mailed Jan. 15, 2016 (“Final
Act.”), Appellants’ Appeal Brief filed June 13, 2016 (“App. Br.”) and Reply
Brief filed Nov. 9, 2016 (“Reply Br.”), the Examiner’s Answer mailed Sept.
20, 2016 (“Ans.”), and the original Specification filed May 8, 2013
(“Spec.”).
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Application 13/889,872
causing one or more biometric sensors associated with the
first computing device to perform actions to collect, at the first
computing device, biometric data after the first computing device
detects the machine-readable code,
based at least in part on the biometric data, the first
computing device generating an authentication message that
includes authentication information and identifies the protected
information,
sending the authentication message to an authentication
server for verification of the authentication information, wherein
verification of the authentication information allows access to the
protected information via the second computing device, and
after sending the authentication message to the
authentication server for the verification of the authentication
information, deleting the collected biometric data.
Rejections on Appeal
Claims 1—13, 15—23, 28, 29, and 31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hito et al. (US 2011/0219427 Al,
published Sept. 8, 2011) (“Hito”), Kozlay (US 2006/0115130 Al; published
June 1, 2006), and Aikawa et al. (US 2010/0085150 Al; published Apr. 8,
2010) (“Aikawa”).
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hito, Kozlay, Aikawa, and Linden (US 6,431,705 Bl;
issued Aug. 13, 2002).
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Application 13/889,872
ANALYSIS
The dispositive issue raised by the Briefs3 is whether the combination
of Hito, Kozlay, and Aikawa teaches or suggests the limitation
responsive to detecting the machine-readable code . . .
causing one or more biometric sensors associated with the
first computing device to perform actions to collect, at the first
computing device, biometric data after the first computing device
detects the machine-readable code
as recited in claim 1, and as similarly recited in claim 15.
Appellants argue that the combination of Hito, Kozlay, and Aikawa
does not teach or suggest acquiring biometric data in response to detecting a
machine-readable code. App. Br. 7—10; Reply Br. 3—5. In particular,
Appellants argue that the Examiner ignores a clear difference between Hito
and the claimed invention because Hito’s methods rely upon “the user’s
device generating and storing in memory the device/user keys before
detecting a machine-readable code, so that the device/user keys can be
retrieved at a later time (e.g., after detecting the machine-readable code).”
App. Br. 8—9. Appellants further argue that, “[i]n contrast, the claimed
invention involves a wearable computing device acquiring the biometric data
after detecting a machine-readable code and in response to detecting the
machine-readable code while the wearable comyutins device is beins worn.
Id. at 9.
Regarding Kozlay, Appellants argue “[e]ven if Kozlay teaches an
eyewear device detecting that it is being worn and responsively collecting
3 Although Appellants make other arguments in the Briefs, we do not need
to address them because the resolution of this issue is dispositive.
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Application 13/889,872
biometric data, Kozlay still does not make up for the deficiencies of Hito.”
Id. Appellants further argue:
At best, the combination of Hito, Kozlay, and Aikawa teaches a
method of authenticating a user using biometric data in which a
user first provides their biometric data to be stored securely on
the smart phone or eyewear before a QR code or other machine-
readable code is detected, and then, after detecting a QR code or
other machine-readable code, the smart phone or eyewear
provides the biometric data that had been provided before the OR
code or other machine-readable code was detected to the
authentication server or other computing device. Again, in
contrast, the claimed invention involves acquiring the biometric
data after detecting a QR code or other machine-readable code
and in response to detecting the QR code or other machine-
readable code while the wearable computing device is being
worn.
Id. at 9—10.
In response to Appellants’ argument that Hito relies on the user’s
device generating and storing the device/keys before detecting a machine
readable code, the Examiner finds “there is nothing in Hito that clearly
prevents or discourages modification of Hito’s authentication method to
include collecting authentication information each time authentication
occurs or that such collection could be in response to detection of the
machine-readable code.” Ans. 2. The Examiner also finds:
Although Hito discloses storing the user/device keys (Hito
paragraph 0029), Hito also discloses that the described protocol
enables a user to authenticate through a single action without
needing to type in usernames or passwords manually (Hito
paragraph 0030). Modifying Hito to include the use of collecting
biometric data in place of the username and password (as
collected by Hito at paragraph 0014) as suggested by Kozlay
(paragraphs 0041, 0043, and 0045) would further the object of
Hito of allowing authentication without needing to type in
usernames or passwords (Hito paragraph 0030) rather than
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Application 13/889,872
teaching away from such a collection in response to detecting
machine-readable code while the device is determined to be worn
(Hito, paragraphs 0014-0015, code detected; Kozlay, paragraph
0043, collecting biometric when glasses are detected as being
worn).
Id. at 3.
We are persuaded by Appellants’ arguments that the Examiner erred.
Specifically, we agree with Appellants that the Examiner has not provided
persuasive reasoning or arguments to establish that the combination of the
references teaches or suggests “that the function of causing one or more
biometric sensors to collect biometric data is performed after the first
computing device detects the machine-readable code, in response to
detecting the machine-readable code.'1'’ See Reply Br. 3. Appellants argue,
and we agree, that “regardless of whether Hito ‘prevents or discourages’ a
modification to collect authentication information from a user in response to
detecting a machine-readable code, the fact remains that Hito at best teaches
storing authentication information before detecting a machine-readable code,
so that the authentication information can be retrieved at a later time (after
detecting the machine-readable code).” Reply Br. 3^4. Appellants also
argue, and we agree,
Hito’s teaching of storing authentication information
(user/device keys, passwords, etc.) before detecting a machine-
readable code is the exact way that Hito accomplishes its
objective of allowing the user to authenticate without needing to
type in usernames or passwords. Therefore, modifying Hito to
acquire authentication information after detecting the machine-
readable code does not “further the object” of Hito.
Id. at 4.
Accordingly, on this record, we are constrained to find the Examiner
erred because the Examiner has not shown that the combination of Hito,
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Kozlay, and Aikawa teaches or suggests the disputed limitation by a
preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed.
Cir. 1985) (Examiner’s burden of proving non-patentability is by a
preponderance of the evidence). Thus, we do not sustain the Examiner’s
rejection of claims 1 and 15, and dependent claims 2—13, 16—23, and 27—31,
for obviousness under § 103(a).
DECISION
We reverse the Examiner’s rejection of claims 1—13, 15—23, and 27—
31 for obviousness under § 103(a).
REVERSED
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