Gaeta, Michael Joseph. et al.

Patent Trials and Appeals Board

May 20, 2020

2019004669 (P.T.A.B. May. 20, 2020)

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.
12/363,961 02/02/2009 Michael Joseph Gaeta US-0591.01|ENT3 3106
123882 7590 05/20/2020
Kane Kessler, P.C.
666 Third Avenue
New York, NY 10017-4041
EXAMINER
ZHOU, YINGYING
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/20/2020 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):
ipdocket@kanekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL JOSEPH GAETA and BHARAT PRASAD
____________

Appeal 2019-004669
Application 12/363,961
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–7. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed January 11, 2019) and Reply Brief (“Reply Br.,” filed May 30, 2019),
and the Examiner’s Answer (“Ans.,” mailed April 8, 2019), and Final Office
Action (“Final Act.,” mailed August 6, 2018). Appellant identifies United
Services Automobile Association (“USAA”) as the real party in interest
(Appeal Br. 3).
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CLAIMED INVENTION
The claimed invention relates to “systems and methods for
authentication of an individual on a communications device” (Spec. ¶ 5).
Claim 1, reproduced below, is the sole independent claim, and
representative of the subject matter on appeal:
1. A computer-based method for authenticating a user
attempting to conduct a transaction comprising the steps of:
a) sending authentication software to be
installed on a first user device;
b) receiving an indication from a known user
identifying i) a type of transaction the known user wants
to require voice authentication to process and ii) the first
user device to associate with the known user;
c) receiving a transaction attempt from a second
device that is different from the first user device, the
transaction attempt being purported to be initiated by the
known user;
d) contacting the first user device associated
with the known user based on the indication from the
known user after step c);
e) receiving a device identification key from the
first user device;
f) receiving a signal comprising a voice sample
from the first user device;
g) comparing a voice pattern of the voice
sample to that of a previously recorded voice sample of the
known user; and
h) comparing the received device identification
key to a previously stored device identification key
associated with the first user device associated with the
known user.
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REJECTIONS
Claims 1–7 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.2
Claims 1–6 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Di Mambro et al. (US 2007/0185718 A1, published Aug. 9, 2007)
(“Di Mambro”), Carter et al. (US 2009/0152343 A1, published June 18,
2009) (“Carter”), and Casey et al. (US 8,127,982 B1, issued Mar. 6, 2012)
(“Casey”).
Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Di Mambro, Carter, Casey, and Estes et al. (US 7,158,776 B1, issued
Jan. 2, 2007 (“Estes”).3
ANALYSIS
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,

2 The Examiner has withdrawn the rejection of claims 1–7 under 35 U.S.C.
§ 112, first paragraph, as failing to provide written description support for
“indication from a known user identifying a type of transaction . . . and the
first user device to associate with the known user, the type of transaction
utilizing the known user’s second device” (Ans. 3). The Examiner also has
withdrawn the rejection of claim 2 as failing to provide written description
support for “receiving of the transaction attempt triggers step d)” (id.).
3 We treat the Examiner’s omission of Casey in setting forth the rejection of
claim 7 (see Final Act. 8), inasmuch as claim 7 depends from claim 1.
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using the same terms or in haec verba) in order to satisfy the written
description requirement. But, the specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, the inventors were
in possession of the claimed invention. See id.
The Examiner notes that claim 1 recites “receiving a transaction
attempt from a second device that is different from the first user device, the
transaction attempt being purported to be initiated by the known user” (Final
Act. 7). And the Examiner takes the position that this is new matter, which
is not supported by the Specification (id.).
We agree with Appellant that the requisite written description support
is provided at least at paragraphs 38, 39, 41, and 49 of the Specification, as
originally filed (Appeal Br. 9–11). Therefore, we do not sustain the
Examiner’s rejection of claims 1–7 under 35 U.S.C. § 112, first paragraph.
Obviousness
Independent Claim 1 and Dependent Claims 2–6
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because Casey, on
which the Examiner relies, fails to disclose or suggest “receiving a
transaction attempt from a second device that is different from the first user
device, the transaction attempt being purported to be initiated by the known
user,” i.e., limitation (c), as recited in claim 1 (Appeal Br. 12–13).
Casey discloses “various techniques for defining financial transaction
rules for controlling a subsidiary financial account,” associated with, and
linked to, a primary financial account, which is ultimately responsible for
purchases made using the subsidiary account (Casey 4:25–31). The
relationship between the primary account holder and the subsidiary account
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holder may be a parent-child relationship, an employer-employee
relationship, or any other type of relationship in which control over the
subsidiary financial account is desired (id. at 4:31–36).
At column 13, lines 18–44, on which the Examiner relies (Final
Act. 6–7), Casey discloses a transaction, with reference to Figure 4, between
a subsidiary account holder 164 and a merchant 168, and describes that the
transaction may involve the purchase of merchandise 166 by the subsidiary
account holder (Casey 13:18–23). Casey discloses that if the transaction
takes place, person-to-person, at a physical store, the subsidiary account
holder may present a physical card to the merchant; additionally, “in some
instances, the subsidiary account holder may possess an electronic device,
configured to store the subsidiary account information” from which the
merchant can receive payment information (id. at 13:29–44).
The Examiner ostensibly equates the electronic device that Casey
describes may be possessed by the subsidiary account holder to “a second
device that is different from the first user device.” However, we agree with
Appellant that there is nothing in the cited portion of Casey that discloses or
suggests that the identity of the holder of this second device, i.e., the
subsidiary account holder, is challenged based on this device being different
from a first user device (Appeal Br. 13). As Appellant observes, in Casey,
there are two different accounts (i.e., a primary account and a subsidiary
account) of two different people (e.g., a parent and child), not two different
devices of the same user (id.). The primary account holder, e.g., the parent,
may impose preset rules (e.g., a spending limit) on the subsidiary account;
but, there is nothing in the cited portion of Casey that discloses or suggests
that the identity of the subsidiary account user, using the second device, is
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challenged based on a previously authenticated first device, as called for in
claim 1.
Casey is concerned with controlling a subsidiary financial account,
e.g., a parent controlling his or her child’s purchase transactions. The
argued limitation, on the other hand, involves a user attempting a transaction
on a “second device,” and having his or her identity verified using his or her
own previously registered “first user device.”
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of dependent claims 2–6.
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious”).
Dependent Claim 7
The Examiner’s rejection of claim 7 does not cure the deficiency in
the Examiner’s rejection of independent claim 1. Therefore, we do not
sustain the Examiner’s rejection of claim 7 for the same reasons set forth
above with respect to claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7 112, first
paragraph
Written
Description
1–7
1–6 103(a) Di Mambro,
Carter, Casey
1–6
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7 103(a) Di Mambro,
Carter, Casey,
Estes
7
Overall
Outcome
1–7
REVERSED