Ex Parte Stukanov

Patent Trial and Appeal Board

May 20, 2014

11899159 (P.T.A.B. May. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte IGOR IGOREVICH STUKANOV
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Appeal 2011-012006
Application 11/899,159
Technology Center 2400
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Before ELENI MANTIS MERCADER, MICHAEL J. STRAUSS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) of finally rejected claims
1-4. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Throughout this Decision, we refer to Appellant’s Appeal Brief (“App.
Br.” filed April 11, 2011), Appellant’s Reply Brief (“Reply Br.” filed July 7,
2011), the original Specification (“Spec.” filed September 5, 2007), and the
Examiner’s Answer (“Ans.” mailed June 23, 2011) for the respective
positions of Appellant and the Examiner.
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STATEMENT OF THE CASE
THE INVENTION
Appellant’s invention relates to a method and system, which allows
significantly reducing efficiency of phishing attacks by fraudsters. Spec.,
1:12-13.
Claims 1 and 3, reproduced below are illustrative:
1. A low-cost, highly efficient, convenient for users
method for reducing the impact of phishing attacks on online
users consisting of the following steps:
1) a user selects a number of additional login pages
called ‘safety gates’, which are placed before a user login
page into a real online account;
2) for each ‘safety gate’ the user creates a
username and a password to use during a login process;
3) the user enters, creates and uploads digital
content consisting from text, pictures, video, audio for
each ‘safety gate’, which will be displayed on a content
page after successful login into the ‘safety gate’;
4) these files of uploaded digital content are stored
securely on one or several geographically distributed
servers;
5) the user selects what type of historical activity
information should be displayed on the content pages;
6) this information of historical activity is stored
securely on one or several geographically distributed
servers;
7) after login into the ‘safety gate’ the page with
the digital content and historical activity information is
displayed, which allows the user to determine if the site
is legitimate;
8) if the user recognizes all digital content and
historical activity information she/he may safely login
into the next ‘safety gate’;
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9) if the user does not recognize something on at
least one of the content pages she/he must leave the site;
10) after successfully passing all ‘safety gates’ the
user may safely login into the online account.

3. A method as in claim 1, where instead of ordinary
passwords the ‘dynamic’ passwords are used as described in the
patent application N 11/716,733.

THE REJECTIONS
Claims 3 and 4 are rejected under 35 U.S.C. § 112, second paragraph
as indefinite.
Claims 1-4 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Agarwal et al., “Phishing Forbidden,” ACM Queue (2007) and Singh (US
2007/0094727 A1).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant did not make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

SECTION 112 REJECTION
The Examiner finds, “Claims 3 and 4 are indefinite because they
incorporate an entire co-pending application as a limitation. It is pointed out
that a patent application is not a claim limitation and it is unclear how the
application is to be combined with the current claims.” Ans. 6. The
Examiner further concludes the additional recitation of claims 3 and 4 is
given no patentable weight. Id. Appellant argues the claim makes clear
what portion of the identified co-pending application is to be relied on—
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namely, some unidentified portions that relate to “dynamic passwords.”
App. Br. 5.
We are not persuaded that the Examiner has erred. The Examiner
correctly explains “it is not possible to ascertain the metes and bounds of the
limitations by simply referencing the entire US Patent Application
11/716,733.” Ans. 13. We agree. Material external to the Specification
may be “incorporated by reference.” 37 C.F.R. § 1.57. However, 37 C.F.R.
§ 1.57(b) requires the incorporation by reference “express a clear intent to
incorporate by reference by using the root words ‘incorporat(e)’ and
‘reference’ (e.g., ‘incorporate by reference’).” We find no such express
intent in Appellant’s Specification. Thus, the essential material (see 37
C.F.R. § 1.57(c)) required to understand claims 3 and 4 is not properly
incorporated in the Appellant’s Specification. Furthermore, even if the
external material were incorporated into the Specification, “[i]ncorporation
into the claims by express reference to the specification and/or drawings is
not permitted except in very limited circumstances.” Ex Parte Fressola, 27
USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993).

In view of the above discussion, we will sustain the rejection of
claims 3 and 4 under § 112, second paragraph.

SECTION 103 REJECTION
The Examiner finds Agarwal teaches all elements of claim 1 except
“does not expressly mention the use of historical activity information in the
safety gates.” Ans. 7-8. The Examiner further finds Singh teaches this
feature and articulates a reason for combining Agarwal and Singh. Ans. 8-9.
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Appellant argues, inter alia, the combined references teach the sign-in seal is
combined with the login screen such that there is only a single login screen.
App. Br. 4. Appellant contrasts this with the express language of the claims
requiring a plurality of additional login pages (referred to as “safety gates”)
presented to a user before the ultimate logic page. App. Br. 4-5. The
Examiner contends a single login screen:
makes for an improvement over the claim limitations as the
user does not need to process several logins, remember possibly
multiple usernames and passwords and associate each username
and password with the selected content to gain access to an
account. The user only has to look at the personalized sign-in
seal to determine if the login page is legitimate or not. The
claimed limitations are merely a different, more complicated
formulation of the cited prior art.
Ans. 12-13. In other words, the Examiner concedes the prior art does not
teach multiple safety gates preceding the ultimate login page, but instead
reasons that a single login screen is preferred (“makes for an improvement”)
over multiple safety gates (additional login pages) which lead to a final login
page. Appellant argues, “[i]n contrast to this invention the proposed by the
Applicant[’s] invention guaranty that the online accounts of the users will be
safe even in the cases when a one or several safety gates will be
compromised.” App. Br. 5. To paraphrase Appellant’s position, multiple
security features are better than a single security feature. Appellant
reiterates the assertion that the combination does not disclose a number (a
plurality) of safety gates that precede the ultimate login page. Reply Br. 2.
On the record before us, we are constrained to agree with Appellant
because the Examiner has failed to show that the prior art combination
teaches or reasonably suggests multiple safety gates presented to a user prior
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to presentation of the ultimate login page. Rather, the Examiner speculates
that a single login page is an improvement over the claimed invention.

NEW GROUNDS OF REJECTION
We note that an artisan is presumed to possess both skill and common
sense. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). The Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. at 416.
First New Ground of Rejection
Appellant argues that, in the combination proposed by the Examiner, a
plurality of additional login pages (referred to as “safety gates”) is not
presented to a user before the ultimate logic page. App. Br. 4-5. Thus, what
is missing from the art of record is the teaching of additional login pages.
Stoll teaches multiple login pages as part of the authentication process
as an alternative to a single login page (see ¶ [0020], US Patent Application
2004/0139030 A1, effective filling date of July 19, 2002). Given the finite
or limited number of predictable solutions of either using a single login page
or multiple login pages, ordinary skilled artisans would have had good
reasons to pursue all of these options within their technical grasp. Thus, we
enter new grounds for rejection of claim 1 as unpatentable under 35 U.S.C. §
103(a) as unpatentable based on Agarwal and Singh (as presented by the
Examiner) further in view of Stoll.
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Second New Ground of Rejection
Furthermore, we note that claim 1 recites the mere duplication of
elements (e.g., multiple login pages) without providing a new and
unexpected result. See, e.g., MPEP § 2144.04(VI)(B) (citing In Re Harza,
274 F.2d 669 (CCPA 1960)). Here, we discern no new or unexpected result
from the use of multiple login screens as compared with use of a single login
screen. Therefore, we additionally reject claim 1 under 35 U.S.C. § 103(a)
as unpatentable over Agarwal and Singh (as presented by the Examiner)
because it would have been obvious to an ordinarily skilled artisan to modify
the combined teachings to present additional login screens to a user for the
predictable result of enhanced security attained by added layers of security.

In view of the above discussion we reverse the Examiner’s rejection
under § 103 of claim 1 and claims 2-4 dependent therefrom and we
designate new grounds of rejection with respect to claim 1.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean the remaining claims (2-4) are patentable. Rather, we leave the
patentability determination of the remaining claims to the Examiner. See
MPEP § 1213.02.

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DECISION
For the above reasons, the Examiner’s decision to reject claims 3 and
4 under § 112 is affirmed.
For the above reasons, the Examiner’s decision to reject claims 1-4
under § 103(a) is reversed.
We have entered new grounds of rejection against claim 1 under § 103
pursuant to our authority under 37 C.F.R. § 41.50(b). 2
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or both, and have
the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner …
(2) Request that the proceeding be reheard under 37 C.F.R. § 41.52
by the Board upon the same record …
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).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

2 The Examiner has indicated that the indefinite recitations for claims 3 and
4 deserve no patentable weight. In this light, should prosecution continue,
we suggest the Examiner consider whether claims 3 and 4 should also be
rejected pursuant to 35 U.S.C. §112, fourth paragraph as not further limiting
the claim from which they depend.
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