Ex Parte Starr

Patent Trials and Appeals Board

May 6, 2019

14883006 - (D) (P.T.A.B. May. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/883,006 10/14/2015
83902 7590 05/08/2019
AT & T LEGAL DEPARTMENT- G&M
ATTN: PA TENT DOCKETING
2A-2120NEAT & TWAY
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
Thomas J J Starr
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2015-0553 9393
EXAMINER
CRUTCHFIELD, CHRISTOPHER M
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
05/08/2019 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):
mmurdock@texaspatents.com
bpierotti@texaspatents.com
eOfficeActionDocs@att.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS J. J. STARR1
Appeal2018-004793
Application 13/883,0062
Technology Center 2400
Before JAMES R. HUGHES, JASON J. CHUNG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-20, which constitute all the claims
1 AT&T Intellectual Property I, L.P. ("Appellant") is the Applicant as
provided in 37 C.F.R. § 1.46 and is identified as the real party in interest.
Appeal Br. 2.
2 The application on appeal has an effective filing date of Oct. 14, 2015.
Therefore, the Leahy-Smith America Invents Act (AIA) amendments to the
U.S. Code(§§ 102, 103) are applicable. See MPEP § 2159.02 (9th ed. 2018)
(the amended sections "apply to any patent application that contains ... a
claimed invention that has an effective filing date that is on or after March
16, 2013.").
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Application 13/883,006
pending in this application. See Final Act. 1. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appellant's Invention
The invention relates generally "to communication devices for placing
calls via a network" (Spec. ,-J 1 ). More specifically, the invention relates to
articles of manufacture, communication methods, and communication
devices including a communication interface "configured to facilitate a call
from a user of the communication device to a communication device of a
called party via a network, the call including voice communications of the
user," and one or more "imaging sensor[s] ... configured to capture video of
the user." Spec. ,-J 14; see Spec. ,-J,-J 32-36; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A communication device comprising:
a communication interface configured to facilitate a call
from a user of the communication device to a remote device of a
called party via a network, the call including voice
communications of the user communicated to the called party
during the call;
at least one imaging sensor configured to capture a video
of the user during the call;
a memory that stores instructions; and
3 We refer to Appellant's Specification ("Spec.") filed Oct. 14, 2015; Appeal
Brief ("Appeal Br.") filed Feb. 5, 2018; and Reply Brief ("Reply Br.") filed
Apr. 5, 2018. We also refer to the Examiner's Final Office Action ("Final
Act.") mailed Aug. 9, 2017; and Answer ("Ans.") mailed Feb. 22, 2018.
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a processor coupled to the memory, wherein responsive to
executing the instructions, the processor is configured to perform
operations comprising:
comparing the video of the user during the call to
the voice communications of the user communicated to the called
party during the call to determine if the video of the user is
consistent with the voice communications;
analyzing the video of the user to determine if an
identity of the user is authenticated; and
generating an indication of user authentication,
responsive to determining the identity of the user is authenticated
and to determining the video of the user coincides with the voice
communications of the user communicated to the called party
during the call;
wherein the communication interface is further configured
to send the indication of the user authentication to the called
party in association with the call.
Appeal Br. 18 (Claim App'x).
Re} ections on Appeal4
1. The Examiner rejects claims 1-3, 6-13, and 16-20 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. See
Final Act. 3.
2. The Examiner rejects claims 1-5, 9-15, and 19 under 35 U.S.C.
§ 103 as being unpatentable over Benco et al. (US 2005/0097131 A 1,
published May 5, 2005) ("Benco"), Hoyos et al. (US 2014/0337930 Al,
4 The Examiner includes a rejection of claim 20 as being directed to non-
statutory subject matter in the Final Rejection (see Final Act. 2-3), but
appears to withdraw this same rejection (see Final Act. 23-24). The
Examiner does not address this ground of rejection in the Examiner's
Answer. See Ans. 2. We find the rejection of claim 20, as being directed to
non-statutory subject matter, was included in error, and we need not address
this ground of rejection.
3
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Application 13/883,006
published Nov. 13, 2014 (filed May 13, 2014)) ("Hoyos"), Kawasaki (US
2004/0143515 Al, published July 22, 2004), and Tischer et al. (US
2006/0069567 Al, published Mar. 30, 2006) ("Tischer"). See Final Act. 5.
3. The Examiner rejects claims 6, 8, 16, and 18 under 35 U.S.C.
§ 103 as being unpatentable over Benco, Hoyos, Kawasaki, Tischer, and
Novack et al. (US 2006/0034287 Al, published Feb. 16, 2006) ("Novack").
4. The Examiner rejects claims 7 and 17 under 35 U.S.C. § 103 as
being unpatentable over Benco, Hoyos, Kawasaki, Tischer, Novack, and
Momhineway et al. (US 2008/0088700 Al, published Apr. 17, 2008)
("Momhineway").
5. The Examiner rejects claim 20 under 35 U.S.C. § 103 as being
unpatentable over Benco, Hoyos, and Tischer.
ISSUES
Based upon our review of the record, Appellant's contentions, and the
Examiner's findings and conclusions, the issues before us follow:
1. Did the Examiner err in concluding that Appellant's claims
were directed to patent-ineligible subject matter, without significantly more,
under 35 U.S.C. § 101?
2. Did the Examiner err in finding that Benco, Hoyos, Kawasaki,
and Tischer collectively would have taught or suggested "comparing the
video of the user during the call to the voice communications of the user
communicated to the called party during the call to determine if the video of
the user is consistent with the voice communications" and "generating an
indication of user authentication, responsive to determining the identity of
the user is authenticated and to determining the video of the user coincides
with the voice communications of the user communicated to the called party
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during the call," within the meaning of claim 1, and the commensurate
limitations of claim 11?
ANALYSIS
Patent-Ineligible Subject Matter
The Examiner rejects claims 1-3, 6-13, and 16-20 as a group based
on claim 1 (see Final Act. 3) and concludes claim 1 is directed to patent-
ineligible subject because claim 1 is directed to "an abstract idea"-
"comparing the video of the user to the voice communications to determine
if the video of the user is consistent with the voice communications,
analyzing the video of the user to determine if an identity of the user is
authenticated and generating an indication of user authentication"-which
"preempt[ s] all methods for performing video authentication based on
audio." Final Act. 3; see Ans. 24-28. In the Answer, the Examiner further
explains that the instant claims are not like those considered patent eligible
in McRO (McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016)) because "Applicant has provided no rules for making the
determination of if the video of the user coincides with the audio based on
the user's facial expressions or other criterion, simply requiring that the
captured video and voice communications be 'consistent."' Ans. 25; see
Ans. 24-26. The Examiner also explains that the instant claims do not
"amount to significantly more than the abstract idea" because the claims
only include "slight additions"-"a communications interface, an imaging
sensor to capture the video, a processor and memory to carry out the recited
functions[,] and an indication of the authentication result"- which are
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"insufficient to amount to substantially more than the abstract idea," in that
the additions are generic computer elements. Ans. 26; see Ans. 27-28.
Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 5-9; Reply
Br. 2-3. Specifically, Appellant contends (with respect to claim 1 and the
other pending claims rejected under § 101) the Examiner did not establish a
prima facie case that the claims are directed to patent-ineligible subject
matter. See Appeal Br. 5-7. Appellant further contends the Examiner has
not provided a meaningful analysis as required in the Enfzsh decision
(Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). See
Appeal Br. 7-9; Reply Br. 2-3.
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77-80 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 573 U.S.
at 217. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to "determine whether the claims at issue are
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directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. See Alice, 573 U.S. at 219 ("On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk."). Concepts determined to be abstract
ideas, and thus patent ineligible include, but are not limited to, certain
methods of organizing human activity, such as fundamental economic
practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental
processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267-68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). The
Supreme Court continued by qualifying its findings, indicating that a claim
"seeking patent protection for that formula in the abstract ... is not accorded
the protection of our patent laws, ... and this principle cannot be
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circumvented by attempting to limit the use of the formula to a particular
technological environment." Id. ( citing Benson and Flook) ( citation
omitted); see, e.g., id. at 187 ("It is now commonplace that an application of
a law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.").
If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step of the Alice and Mayo
framework where the elements of the claims are considered "individually
and 'as an ordered combination' to determine whether the additional
elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78-79).
This second step is described as "a search for an 'inventive concept'-i.e.,
an element or combination of elements that is ' ... significantly more than
... the [ ineligible concept] itself."' Id. at 217-18 ( alteration in original)
( quoting Mayo, 566 U.S. at 72-73). "A claim that recites an abstract idea
must include 'additional features' to ensure 'that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea]."' Alice, 573 U.S.
at 221 (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic
computer implementation[] fail[ s] to transform that abstract idea into a
patent-eligible invention." Id.
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
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abstract idea and merely invoke generic processes and machinery. See
Enfzsh, 822 F.3d at 1336.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised Guidance").
Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes) (hereinafter "Step 2A, Prong l "); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h))
(hereinafter "Step 2A, Prong 2").
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.5
See 2019 Revised Guidance, 84 Fed. Reg. at 51-52, 55-56.
Eligibility Analysis-Revised Guidance Steps 1 and 2A, Prong 1
Turning to the first step of the eligibility analysis, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
5 Items (3) and ( 4) are collectively referred to as "Step 2B" hereinafter and
in the 2019 Revised Guidance.
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as a tool." Enfzsh, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, 837 F.3d at 1312 (quoting
0 'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)).
The Examiner determines independent claim 1 recites an abstract idea
of "comparing the video of the user to the voice communications to
determine if the video of the user is consistent with the voice
communications, analyzing the video of the user to determine if an identity
of the user is authenticated and generating an indication of user
authentication." Final Act. 3; see Ans. 24-28. Here, in rejecting the claims
(in particular claim 1) under 35 U.S.C. § 101, the Examiner purportedly
analyzed the claims using the Mayo/Alice two-step framework, consistent
with the guidance set forth in the USPTO's "2014 Interim Guidance on
Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), in
effect at the time the rejection was made, i.e., on Aug. 9, 2017. See Ans.
24-28. In view of the 2019 Revised Guidance, we provide our detailed
patent eligibility analysis as follows.
Claim 1 recites a communication device including a number of
components performing a variety of functions. The device specifically
includes: (1) "a communication interface configured to facilitate a call"
between the communication device and a remote device "via a network,"
where the call includes "voice communications"-that is, an interface
providing interconnected communication via a network, where the
communication includes audio information or audio data (voice
communications); (2) "at least one imaging sensor configured to capture a
video of the user during the call"-that is, a video camera capturing video
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data ( of the user during the call); (3) "a memory that stores instructions";
(4) "a processor coupled to the memory," which "is configured to perform
operations," including: (i-ii) "comparing the video" "to the voice
communications" "to determine if the video of the user is consistent with the
voice communications," (iii) "analyzing the video" "to determine if an
identity of the user is authenticated," and (iv-v) "generating an indication of
user authentication responsive to determining the identity of the user is
authenticated and to determining the video of the user coincides with the
voice communications"- that is, a processor that (i) compares the video and
voice (audio) data, (ii) determines the video and voice data are "consistent,"
(iii) analyzes the video data to authenticate ( confirm the identity of) the user,
(iv) determines that the video data (of the user) "coincides with" the voice
data, and ( v) generates an indication in response to authenticating the user
and determining the video and audio data coincide; and ( 5) "the
communication interface" "further configured to send the indication" "to the
called party in association with the call"-that is, the communication
interface sending the indication during the call. Claim 1 (Appeal Br. 18
(Claim App'x)); see Spec. ,-J,-J 14, 32-37.
In summary, claim 1 recites a communication device including an
interface providing interconnected voice (audio) and video communication
via a network, a video imaging sensor that captures a video of a user during
a particular communication session ( call), memory, and a processor. The
processor performs certain functions, including comparing video and voice
data, determining that the video and voice data are consistent, authenticating
(analyzing the video data to authenticate) the user's identity, determining
that the video data coincides with the voice data, and generating an
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indication in response to the authentication and determination that the video
and audio data coincide. The interface then sends the indication during the
particular communication session ( call). Hereinafter, we refer to this device
as the "communication device."
We conclude that claim 1 recites on its face a "device"-that is an
apparatus or machine-which is a statutory category of invention (subject
matter) (USPTO's Step 1 ). Utilizing our interpretation of claim 1 (supra),
we analyze whether the claim is directed to an abstract idea (USPTO's Step
2A). Here, Appellant's claims generally, and independent claim 1 in
particular ( as summarized, supra), recite a communication device including
a processor that analyzes voice and video data to authenticate a user and
determine that the voice and video data transferred during a communication
session are consistent and coincide. These operations of the processor are
not an abstract idea as delineated in the 2019 Revised Guidance.
As explained in 2019 Revised Guidance, abstract ideas fall within one
( or more) of three groupings:
1. Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
2. Mental processes-concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
3. Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions
between people (including social activities, teaching, and
following rules or instructions).
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According to the 2019 Revised Guidance, "claims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. 2019 Revised Guidance, 84 Fed. Reg. at 53. Here, the claim
does not recite mathematical calculations. Further, the processor operations
analyze communication data and for this reason cannot be performed
mentally and do not relate to organizing human activity. Accordingly,
Appellant's claim 1 does not recite a judicial exception (an abstract idea)
(USPTO's Step 2A, Prong l; see 2019 Revised Guidance).
Eligibility Analysis-Revised Guidance Step 2A, Prong 2
Appellant's claim 1 does not recite a judicial exception under Revised
Guidance Step 2A, Prong 1. Therefore, we need not address whether
additional elements in Appellant's claim 1 integrate a judicial exception into
a practical application of the exception under USPTO's Step 2A, Prong 2 of
the 2019 Revised Guidance. Even so, we find Appellant's claim 1 recites a
number of structural or physical elements including an interface, an imaging
sensor, memory, and a processor (supra). These elements, in particular the
processor, perform functions of analyzing voice and video data during a
communication session to authenticate a user and determine if the voice and
video data coincide and are consistent. See Spec. ,i,i 35-37.
Appellant's claims are similar to patent-eligible claims such as those
in McRO, BASCOM (BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)), and DDR Holdings (DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)) that are
directed to "a specific means or method that improves the relevant
technology" (McRO, 837 F.3d at 1314), solving a technology-based problem
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(BASCOM, 827 F.3d at 1349-52), or performing functionality "rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer [technology]" (DDR Holdings, 773 F.3d at 1257).
See MPEP § 2106.05(a)-b).
In summary, Appellant's claim 1 does not recite an abstract idea
Uudicial exception), and recites structure (elements) that integrate the
processor functionality into a practical application. Thus, we disagree with
the Examiner that the claims are directed to an abstract idea.
Obviousness Rejection of Claims 1-5, 9-15, and 19
Appellant argues independent claims 1 and 11, and dependent claims
2-5, 9, 10, 12-15, and 19, together as a group with respect to the§ 103
rejection. See Appeal Br. 10-13. We select independent claim 1 as
representative of Appellant's arguments with respect to claims 1-5, 9-15,
and 19. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner rejects representative independent claim 1 as being
obvious over Benco, Hoyos, Kawasaki, and Tischer. See Final Act. 5-15;
Ans. 28-29. 6 The Examiner cites Benco as teaching the structure of the
communication system as well as facial recognition. See Final Act. 5-6;
Ans. 28 ( citing Benco ,-J,-J 37-45). The Examiner cites Hoyos as describing
facial recognition, matching video and voice data (see Hoyos ,-J 128), and
6 The Examiner mistakenly omits a detailed discussion of Tischer with
respect to claim 1 in the Final Rejection (see Final Act. 7-8), but includes a
discussion of Tischer with respect to dependent claim 2 (see Final Act. 9-
10) and independent claim 11 (see Final Act. 14-15). The Examiner also
clarifies the rejection and includes a discussion of Tischer in the Examiner's
Answer (see Ans. 28-29). Accordingly, for the purposes of this appeal, we
incorporate the discussions of Tischer into the obviousness rejection of
claim 1, and find the Examiner's omission to be harmless error.
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suggesting video facial recognition (see Hoyos ,i 167). See Final Act. 6-8;
Ans. 28 (citing Hoyos ,i,i 28, 125, 128, 167). The Examiner further cites
Kawasaki as describing a single device (mobile terminal) that includes a
processor, interface, and imaging sensor and also performs authentication
functions. See Final Act. 7-8; Ans. 28-29 (citing Kawasaki ,i 124). The
Examiner also cites Tischer as describing authentication (voice
authentication) of a caller during a telephone call. See Final Act. 9-10, 14-
15; Ans. 28-29 (citing Tischer,i,i 93-94).
Appellant contends that Benco, Hoyos, Kawasaki, and Tischer do not
teach the disputed limitations of claim 1. See Appeal Br. 10-13; Reply Br.
4-8. Specifically, Appellant contends that the Examiner admits Benco,
Hoyos, and Kawasaki do not describe the recited functionality being
performed during a call-
the Office expressly admits that "Benco as modified by Hoyos
and Kawasaki fails to disclose the authentication/comparison
occurs during the course of the call such that the communications
include voice communications of the user communicated to the
called party during the call the video is captured during the call,
the comparison of the video is to the voice of the user
communicated to the called party during the call or that the
indication of authentication indicates that the user is
authenticated as the user communicated to the called party during
the call."
Reply Br. 5 ( emphasis in original); see Appeal Br. 11-12; Reply Br. 4.
Appellant further contends "the Office expressly relies on Tischer to
disclose the video is captured during the call, and furthermore that the
comparison of the video is to the voice of the user communicated to the
called party during the call." Reply Br. 5 (emphasis in original); see Appeal
Br. 12. Appellant also contends "Tischer entirely fails to disclose
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authentication operations that include comparing the video of the user during
the call to the voice communications of the user communicated to the called
party during the call to determine if the video of the user is consistent with
the voice communications." Appeal Br. 13; see Appeal Br. 12-13; Reply
Br. 5-8.
We disagree with Appellant that Benco, Hoyos, Kawasaki, and
Tischer do not teach the disputed features of claim 1. The Examiner
provides a detailed explanation how Benco, Hoyos, and Kawasaki teach or
suggest the disputed features of Appellant's claim 1 with the exception of
explicitly teaching that the recited functionality occurs during a
communication session (a call)-that is, "captur[ing] a video of the user
during the call," "comparing the video of the user during the call to the voice
communications ... during the call," "determining if the video of the user is
consistent with the voice communications," "analyzing the video of the user
to determine if an identity of the user is authenticated," and "determining the
video of the user coincides with the voice communications of the user ...
during the call" (Claim 1 (Appeal Br. 18 (Claim App'x))). See supra. The
Examiner explains that Tischer describes authentication occurring during a
call and, accordingly, teaches the functionality ( described in Benco, Hoyos,
and Kawasaki) occurring during a call. See supra. We adopt as our own:
( 1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Act. 5-15), and (2) the reasons set forth by
the Examiner in the Examiner's Answer (Ans. 28-29) in response to
Appellant's Appeal Brief. We concur with the findings and conclusions
reached by the Examiner, and we address specific findings, conclusions, and
arguments for emphasis as follows.
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Initially, Appellant misconstrues the Examiner's rejection. As
delineated above, in that the Examiner does not cite Tischer for teaching
authentication, comparing video and voice communications, or determining
if user video is consistent with voice communications, contended by
Appellant. Compare Final Act. 7-8 and Ans. 28-29, with Appeal Br. 12-13
and Reply Br. 5.
Secondly, based on the misconstruction of the rejection, Appellant
contends for the first time in the Reply Brief that "Tischer cannot be ...
properly applied to the combination of Benco, Hoyos and Kawasaki to
render claim 1 as obvious" (Reply Br. 6) because Tischer "would require an
impermissible change in the principle of operation ... [ ofJ Hoyos" (Reply
Br. 8). See Reply Br. 5-8. This argument is, again, based on a
misunderstanding of the Examiner's rejection and, in any event, is waived
because it is untimely. Appellant's combinability arguments (supra) were
not made in the Appeal Brief, but could have been, and are not responsive to
any new evidence set forth by the Examiner in the Answer. Absent a
showing of good cause why the arguments could not have been presented in
the Appeal Brief, which Appellant did not provide, Appellant's arguments
are untimely and deemed waived. We need not consider these arguments
raised for the first time in the Reply Brief. See Ex parte Nakashima, 93
USPQ2d 1834, 1837 (BP AI 2010) (Informative); Ex parte Borden, 93
USPQ2d 1473, 1477 (BPAI 2010) (Informative); 37 C.F.R.
§ 41.37(c)(l)(iv).
We agree with the Examiner's findings (see Final Act. 5-8; Ans. 28-
29) that Benco, Hoyos and Kawasaki describe the features and functionality
of the recited communication device, and that Tischer describes comparing
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data and authentication operations occurring during a communication
session (see Final Act. 9-10, 14-15; Ans. 28-29). Accordingly, we also
agree with the Examiner's conclusion that the combination of Benco, Hoyos,
Kawasaki, and Tischer teaches or at least suggests performing the recited
functionality during a communication session (a call).
Appellant fails to appreciate the collective teachings of Benco, Hoyos,
Kawasaki, and Tischer. Contrary to Appellant's arguments, "[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCPA 1981) (emphasis added). Here, Appellant argues the references
individually and does not address the specific arguments set out by the
Examiner. The references cited by the Examiner must be read, not in
isolation, but for what each fairly teaches in combination with the prior art
as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
( one cannot show non-obviousness by attacking references individually
where the rejections are based on combinations of references).
We find that it would have been within the skill of an ordinarily
skilled artisan to combine the known communication-device features and
functionality ( as taught by Benco and Kawasaki) with the video-
authentication techniques and matching of voice and video data as taught by
Hoyos, all occurring during a communication session as taught by Tischer.
See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f 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
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same way, using the technique is obvious unless its actual application is
beyond his or her skill."). We are not persuaded that combining the
respective familiar elements of the cited references in the manner proffered
by the Examiner would have been "uniquely challenging or difficult for one
of ordinary skill in the art" at the time of Appellant's invention. Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418).
Thus, a preponderance of the evidence demonstrates Benco, Hoyos,
Kawasaki, and Tischer teach or suggest the disputed features of Appellant's
representative claim 1. Appellant does not persuade us of error in the
Examiner's obviousness rejection of the claim. In the Appeal Brief,
Appellant did not separately argue independent claim 11, or dependent
claims 2-5, 9, 10, 12-15, and 19. See Appeal Br. 10-13. In the Reply Brief,
however, Appellant presents for the first time arguments with respect to
dependent claim 10. See Reply Br. 8-9. Appellant's argument with respect
to claim 10 is waived because it is untimely. Accordingly, we affirm the
Examiner's obviousness rejection of representative claim 1, independent
claim 11, and dependent claims 2-5, 9, 10, 12-15, and 19, not separately
argued with particularity (supra).
Obviousness Rejections of Claims 6---8, 16--18, and 20
Appellant does not provide separate arguments with respect to
dependent claims 6-8 and 16-18. See Appeal Br. 13-15 and Reply Br. 10-
11. Appellant also does not separately argue with particularity independent
claim 20. Appellant simply reiterates the same arguments made with respect
to claim 1. See Appeal Br. 16 and Reply Br. 12. Accordingly, we affirm the
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Examiner's obviousness rejections of claims 6-8, 16-18, and 20 for the
same reasons as claim 1 (supra).
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1-3,
6-13, and 16-20 under 35 U.S.C. § 101.
Appellant has not shown that the Examiner erred in rejecting claims
1-20 under 35 U.S.C. § 103.
DECISION
We have affirmed at least one ground of rejection with respect to each
claim on appeal. Accordingly, we affirm the Examiner's rejection of claims
1-20. See 37 C.F.R. § 41.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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