2020006145 (P.T.A.B. Dec. 30, 2021)

International Business Machines Corporation

Patent Trials and Appeals BoardDec 30, 2021

2020006145 (P.T.A.B. Dec. 30, 2021)

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. 16/397,136 04/29/2019 Manohar V.R. Jammalamadaka END920170073US02 9105 37945 7590 12/30/2021 DUKE W. YEE YEE AND ASSOCIATES, P.C. P.O. BOX 6669 MCKINNEY, TX 75071 EXAMINER AVERY, JEREMIAH L ART UNIT PAPER NUMBER 2431 NOTIFICATION DATE DELIVERY MODE 12/30/2021 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): ptonotifs@yeeiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MANOHAR V.R. JAMMALAMADAKA, VENKATA S. KAPPAGANTU, LALITH K. MADDALI, and TAKAOMI MIGIMATSU ____________________ Appeal 2020-006145 Application 16/397,136 Technology Center 2400 ____________________ Before MAHSHID D. SAADAT, CATHERINE SHIANG, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part and enter a new ground of rejection under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies International Business Machines Corporation as the real party in interest. Appeal Br. 2. Appeal 2020-006145 Application 16/397,136 2 STATEMENT OF THE CASE Introduction Appellant states that the disclosure: relates generally to fingerprint recognition technology and more specifically to enabling a single on display screen finger contact to authenticate a user of an electronic device, unlock the electronic device, and launch and login to a secure application in parallel using a whole display screen fingerprint scanner of the electronic device. Spec. ¶ 1.2 Claims 1, 9, and 14 are independent. Claim 1 is representative of the subject matter on appeal and is reproduced below: 1. A computer-implemented method for providing single tap user authentication, launch and login to a secure application having restricted access requiring authentication for access thereto by a user, the computer-implemented method comprising: responsive to a data processing system receiving an input via a finger of the user on a display screen to execute the secure application, verifying, by the data processing system, user authentication information based on fingerprint data; responsive to verifying the user authentication information, launching, by the data processing system, the secure application using the user authentication information as an invoking parameter to execute the secure application; and receiving, by the data processing system, content corresponding to the secure application in response to execution of the secure application, wherein the user is authenticated by 2 Our Decision refers to the Final Office Action mailed Mar. 23, 2020 (“Final Act.”); Appellant’s Appeal Brief filed Apr. 16, 2020 (“Appeal Br.”) and Reply Brief filed Aug. 26, 2020 (“Reply Br.”); the Examiner’s Answer mailed July 31, 2020 (“Ans.”); and the original Specification filed Apr. 29, 2019 (“Spec.”). Appeal 2020-006145 Application 16/397,136 3 verifying the user authentication information, the secure application is launched, and the user is logged into the secure application responsive to a single tap of the finger of the user on the display screen. Appeal Br. 18 (Claims App.). Rejection on Appeal3 Claims 1–20 stand rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Krishnapura (US 2017/0124328 A1; published May 4, 2017). Final Act. 7–22. ANALYSIS Claims 1, 2, 6, 9, 10, 14, 15, and 18 We have reviewed the Examiner’s rejection of claims 1, 2, 6, 9, 10, 14, 15, and 18 in light of Appellant’s arguments in the Appeal Brief and the Reply Brief. See Appeal Br. 8–11; Reply Br. 3–8. Any other arguments Appellant could have made, but chose not to make, are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). Unless otherwise indicated, we agree with, and adopt as our own, the Examiner’s findings of fact and conclusions as set forth in the Final Office Action from which this appeal is taken and in the Answer. Final Act. 7–9, 12–15, 17–19, and 21–22; Ans. 3–5. We provide the following explanation for emphasis. Appellant argues claims 1, 2, 6, 9, 10, 14, 15, and 18 as a group focusing on independent claim 1. See Appeal Br. 8–11; Reply Br. 3–8. 3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 100 et seq. effective on March 16, 2013. Because this application is a continuation of US Application Serial No. 15/451,560 filed on Mar. 7, 2017 (now US Patent No. 10,360,359), the Examiner examined the claims under the AIA version of 35 U.S.C. § 102. Final Act. 2. Appeal 2020-006145 Application 16/397,136 4 Accordingly, we select claim 1 as representative, and the remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner rejected claim 1 under 35 U.S.C. § 102(a)(2) as being anticipated by Krishnapura. Final Act. 7–9; see also Ans. 3–5. In particular, the Examiner finds that Krishnapura discloses “verifying” user authentication information based on fingerprint data, where a fingerprint sensor captures a user’s fingerprint image in response to an individual application causing “operating system 112 to request the user’s fingerprint for an authentication process prior to undertaking a specific action, such as providing access to the operating system 112 during a log-on process for the electronic device 100.” Final Act. 7 (citing Krishnapura ¶¶ 29, 31, 39, 40, 45–48, 56; Figs. 2 and 3). The Examiner then finds that Krishnapura discloses responsive to verifying the user authentication information, “launching” the secure application using the user authentication information as an invoking parameter to execute the application and “receiving” content corresponding to the secure application, “wherein the user is authenticated by verifying the user authentication information, the secure application is launched, and the user is logged into the secure application responsive to a single tap of the finger of the user on the display screen.” Id. at 8 (citing Krishnapura ¶¶ 13, 14, 45, 53, 60, 63, 65). Applicable Law “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (To anticipate a patent claim under 35 U.S.C. Appeal 2020-006145 Application 16/397,136 5 § 102, “a single prior art reference must expressly or inherently disclose each claim limitation.”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). This is not an ipsissimis verbis test, however—identical terminology is not required. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Whether a reference anticipates is assessed from the perspective of an ordinarily skilled artisan. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference.”). “[A]nticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation . . . .” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). Appellant’s Arguments Appellant makes several arguments that the Examiner erred in finding Krishnapura discloses certain limitations of claim 1. See Appeal Br. 8–11; Appeal 2020-006145 Application 16/397,136 6 Reply Br. 3–8. For the reasons discussed below, we are not persuaded by Appellant’s arguments that the Examiner erred. Initially, Appellant argues that none of the cited portions of Krishnapura describe “a single tap user authentication, launch and login to a secure application,” but instead describe an “already running” application that uses an operating system to request a user’s fingerprint for an authentication process without regards to launching and login to a secure application. Appeal Br. 8–9. According to Appellant, [t]o the extent that Krish[napura] describes execution of an application, the application is already executing prior to having obtained a user’s fingerprint since it is this executing application that requests the operating system to obtain fingerprint information – and therefore this executing application is not specially launched for execution using the Krish[napura] fingerprint image as an invoking parameter4, as claimed. Id. at 9 (emphasis omitted). Appellant also argues that, to the extent Krishnapura describes execution of an application in paragraph 45, “the application is already executing prior to having obtained a user’s fingerprint” since it is this executing application that requests the operating system to obtain fingerprint information - and therefore this executing application is not specially launched for execution using the Krishnapura fingerprint image as an invoking parameter, as claimed. Id. at 10. Appellant makes the same or substantially the same arguments in the Reply, asserting that Krishnapua’s authentication applications described in paragraph 45 are “already running” 4 parameter - any of a set of physical properties whose values determine the characteristics or behavior of something (Source: https://www .merriam-webster.com/dictionary/parameter) Appeal 2020-006145 Application 16/397,136 7 prior to the user being prompted to, and providing, their fingerprint information. Reply Br. 3–5. These arguments are not persuasive of Examiner error. First, we determine Appellant’s argument that Krishnapura’s authentication applications are “already running” when fingerprint information is requested is not commensurate with the limitations of claim 1. In that regard, claim 1 specifically distinguishes “receiving” a user’s fingerprint from “executing” or “running” the secure application. In particular, claim 1 first recites “responsive to a data processing system receiving an input via a finger of the user.” Claim 1 then recites the subsequent execution (“running”) of the application by performing the “verifying” and “launching” steps, in which “the secure application is launched, and the user is logged into the secure application.” In other words, in claim 1, the step of receiving user fingerprint information is not performed by an executing application, but by the data processing system, and then the steps of “verifying” and “launching” are performed to execute or run the secure application. Second, contrary to Appellant’s assertions, we find that Krishnapura’s authentication applications are not “already running” (i.e., executing for a particular purpose) prior to obtaining a user’s fingerprint for authentication. Paragraph 45 of Krishnapura discloses that application suite 114 contains applications for authenticating a user of an electronic device, which may include “an operating system log-on authentication application, a screen saver authentication application, a folder/file lock authentication application, an application lock and a password vault application.” Krishnapura explains that each of these applications “may cause the operating system 112 to request the user’s fingerprint for an authentication process prior to Appeal 2020-006145 Application 16/397,136 8 undertaking a specific action, such as providing access to the operating system 112 during a long-on process for the electronic device 100.” Krishnapura ¶ 45. Thus, Krishnapura discloses authentication applications that first cause the operating system to obtain a user’s fingerprint for authentication before log-on and execution (or “running”) of the application for a specific action. Third, the Examiner finds, and we agree, that Krishnapura discloses the disputed limitations of claim 1.5 Ans. 3–5; see also Final Act. 2–3, 7–9. In particular, the Examiner finds that Krishnapura discloses a method for providing “single tap user authentication, launch, and login to a secure application” because Krishnapura discloses reading of a user’s fingerprint for an authentication process prior to that user undertaking a specific action during a log-on process for an electronic device. Ans. 3–4 (citing Krishnapura ¶¶ 14, 45, 53); see also Final Act. 8 (citing Krishnapura ¶¶ 13, 14, 45, 53). For example, paragraph 13 of Krishnapura discloses launching and logging in to a secure application because it describes that “a user may authenticate with a particular ‘purpose,’ such as to unlock a mobile device to check email or to unlock the mobile device to call someone.” The Examiner also finds that Krishnapura discloses “the secure application using the user authentication information as an invoking 5 Appellant argues that in the final rejection, the Examiner re-characterizes the identified missing claim limitations “to be much broader than the actual claim language” and then finds passages of Krishnapura disclose the “broader characterization.” Reply Br. 3. We are not persuaded by this argument. Regardless, we give the claim limitations their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appeal 2020-006145 Application 16/397,136 9 parameter to execute the secure application” because Krishnapura describes that to access a particular application, “the user’s authentication information (i.e., a fingerprint) is analyzed prior to any access and usage being granted.” Ans. 4 (citing Krishnapura ¶¶ 13, 45) (emphasis omitted). Although Krishnapura does not specifically refer to an “invoking parameter,” identical terminology is not required. See Bond, 910 F.2d 832. In addition, Krishnapura’s analysis of the user’s fingerprint in the authentication process meets Appellant’s definition of “parameter” as “any of a set of physical properties whose values determine the characteristics or behavior of something” because the physical properties of the fingerprint image are used to determine access. See Appeal Br. 9 fn.2. For these reasons, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 102(a)(2). For the same reasons, we sustain the Examiner’s rejection of independent claims 9 and 14, and dependent claims 2, 6, 10, 15, and 18, under § 102(a)(2). Claims 3, 4, 11, and 16 Claim 36 depends from claim 2, which depends from claim 1, and further recites “responsive to the data processing system scanning the fingerprint, retrieving, by the data processing system, the user authentication information based on matching the fingerprint data to a stored biometric fingerprint template, wherein the user authentication information is specific to the secure application.” Appellant argues the Examiner erred in rejecting claim 3 because the portions of Krishnapura cited by the Examiner do not 6 Appellant argues these claims as a group focusing on claim 3. Appeal Br. 11–12. Accordingly, we select claim 3 as representative of these claims, and the remaining claims stand or fall with claim 3. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-006145 Application 16/397,136 10 disclose “the user authentication information is specific to the secure application.” Appeal Br. 11–12; Reply Br. 8–9. We agree with Appellant. Thus, we do not sustain the Examiner’s rejection of claim 3 and claims 4, 11, and 16 under § 102(a)(2). Claims 5 and 17 Claim 5 depends from claim 1 and further recites “wherein the display screen is locked when the finger of the user contacts the display screen, and wherein the user authentication information is verified by the data processing system without unlocking the display screen.” Appellant argues the Examiner erred in rejecting claim 5 because the sections of Krishnapura cited by the Examiner do not disclose “the user authentication information is verified by the data processing system without unlocking the display screen.” Appeal Br. 12–13; Reply Br. 10–11. We agree with Appellant. Thus, we do not sustain the Examiner’s rejection of claim 5 and claim 17 under § 102(a)(2). Claims 7, 12, and 19 Claim 7 depends from claim 1 and further recites “displaying, by the data processing system, the content of the secure application in response to the secure application receiving the user authentication information.” Appellant argues that the portions of Krishnapura cited by the Examiner fail to disclose “displaying content” of the secure application “in response” to the application receiving the user authentication information. Appeal Br. 13–15; Reply Br. 11–12. According to Appellant, the cited portions of Krishnapura fail to account for the specific “invocation/triggering mechanism” aspects of claim 7 where content of the secure application is Appeal 2020-006145 Application 16/397,136 11 displayed in response to the secure application receiving the user authentication information. Reply Br. 11–12. We are not persuaded by Appellant’s argument that the Examiner erred. For the reasons discussed above in regard to claim 1, we find that the specific “triggering” steps of claim 1 for “receiving” content are disclosed by Krishnapura. The Examiner also finds, and we agree, that Krishnapura discloses that upon successful authentication of the user, then access is granted and content may be displayed on a display screen. Ans. 8–9 (citing Krishnapura ¶¶ 13, 45; Fig. 2). Such content could be user email, as described in paragraph 13 of Krishnapura. Accordingly, we sustain the Examiner’s rejection of claim 7, and claims 12 and 19, under § 102(a)(2). Claims 8, 13, and 207 Claim 8 depends from claim 1 and further recites “wherein the data processing system utilizes an operating system of the data processing system to concurrently perform the verifying of the user authentication information and the launching of the secure application.” Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 8, 13, and 20 under 35 U.S.C. § 112(b) for indefiniteness. The second paragraph of 35 U.S.C. § 112(b) requires the claims to particularly pointing out and distinctly claim the subject matter which the 7 Appellant argues these claims as a group focusing on claim 8. Appeal Br. 15–16. We note that Appellant has mistakenly identified claim 19, rather than claim 20, as reciting features corresponding to claim 8. See Appeal Br. 23 (Claims App). Accordingly, we select claim 8 as representative of claims 8, 13, and 20, and the remaining claims stand or fall with claim 8. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-006145 Application 16/397,136 12 inventor or a joint inventor regards as the invention. In discussing the requirements of the pre-AIA second paragraph of 35 U.S.C. § 112, the Court of Customs and Patent Appeals in In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970), stated at 166 USPQ 208: Its purpose is to provide those who would endeavor, in future enterprise, to approach the area circumscribed by the claims of a patent, with the adequate notice demanded by due process of law, so that they may more readily and accurately determine the boundaries of protection involved and evaluate the possibility of infringement and dominance. Under 35 U.S.C. § 112, second paragraph, the test for definiteness is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Language in a claim is unclear if, when given its broadest reasonable interpretation, it is “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention,” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014), or if it “is amenable to two or more plausible claim constructions,” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). Because the language of 35 U.S.C. § 112(b) is substantially the same as its predecessor, 35 U.S.C. § 112, second paragraph, the same test for definiteness applies here. Claim 1 recites a series of steps. The first step is, “responsive to a data processing system” receiving input of a user’s finger on a display screen, “verifying . . . user authentication information based on fingerprint data.” The second step of claim 1 is, “responsive to verifying the user authentication information, launching . . . the secure application.” On the Appeal 2020-006145 Application 16/397,136 13 other hand, claim 8, which depends from claim 1, requires “concurrently perform[ing] the verifying of the user authentication information and the launching of the secure application” (emphasis added). Thus, the claims are contradictory. Claim 1 requires the steps of “verifying” and “launching” to be performed in sequence, one after the other, while claim 8 requires them to be performed concurrently or at the same time. Accordingly, we find it is impossible for claim 8 to provide competitors with an accurate determination of the “metes and bounds” of protection involved so that an evaluation of the possibility of infringement may be ascertained with a reasonable degree of certainty. Accordingly, for this reason we reject claim 8 under 35 U.S.C. § 112(b) for indefiniteness. In view of the indefiniteness of claim 8, we do not review the Examiner’s § 102(b) rejection. Such a review would require us to engage in speculation and conjecture to determine the scope of the claimed invention of claim 8. This we decline to do. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious–the claim becomes indefinite.”); see also In re Aoyama, 656 F.3d 1293 (Fed. Cir. 2011) (Because a claim cannot be both indefinite and anticipated, the court does not reach the anticipation ground of rejection.) (internal quotation and citation omitted). Therefore, we pro forma reverse the Examiner’s rejection of claim 8, as well as claims 13 and 20. Our decision in this regard is based solely on Appeal 2020-006145 Application 16/397,136 14 the indefiniteness of the claimed subject matter and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. 37 C.F.R. § 41.50(b) Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 8, 13, and 20 under 35 U.S.C. § 112(b) for indefiniteness. 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” In addition, 37 C.F.R. § 41.50(b) provides that, the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. 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 rehearing. Request that the proceeding be reheard under 37 C.F.R. § 41.52 by the Board upon the same record . . . . DECISION We affirm the Examiner’s rejection of claims 1, 2, 6, 7, 9, 10, 12, 14, 15, 18, and 19 under 35 U.S.C. § 102(a)(2). We reverse the Examiner’s rejection of claims 3–5, 11, 16, and 17 under 35 U.S.C. § 102(a)(2). We pro forma reverse the Examiner’s rejection of claims 8, 13, and 20. SUMMARY In summary: Appeal 2020-006145 Application 16/397,136 15 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–20 102(a)(2) Krishnapura 1, 2, 6, 7, 9, 10, 12, 14, 15, 18, 19 3–5, 8, 11, 13, 16, 17, 20 8, 13, 20 112(b) Indefiniteness 8, 13, 20 Overall Outcome 1, 2, 6, 7, 9, 10, 12, 14, 15, 18, 19 3–5, 8, 11, 13, 16, 17, 20 8, 13, 20 AFFIRM-IN-PART; 37 C.F.R. § 41.50(b)