Tara Chand. Singhal

Patent Trials and Appeals Board

May 22, 2020

11503825 - (D) (P.T.A.B. May. 22, 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.
11/503,825 08/13/2006 Tara Chand Singhal 11195.79 2707
103550 7590 05/22/2020
Tara Chand Singhal
P.O. Box 5075
Torrance, CA 90510
EXAMINER
D AGOSTA, STEPHEN M
ART UNIT PAPER NUMBER
2414
NOTIFICATION DATE DELIVERY MODE
05/22/2020 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):
chand@internetpromise.com
singhal@att.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TARA CHAND SINGHAL

Appeal 2018-007992
Application 11/503,825
Technology Center 2400
____________

Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 25, 26, 28, 29, 31–34, 36, 37, and 39–
44, constituting all claims pending in the application. Claims 27, 30, 35 and
38 are objected to as being dependent upon a rejected base claim, but would
be allowable if rewritten in independent form including all of the limitations

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Tara Chand
Singhal. Appeal Br. 4.
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of the base claim and any intervening claims. Final Act. 17. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant’s invention generally relates to using certain features of a
telephone network for two-factor remote user authentication, without the use
of a security token and/or biometrics. Spec. 1–3. Claim 25, reproduced
below, is representative of the claimed subject matter:
25. A system for a multi-factor remote user authentication service
(RUAS), the system comprising:

a) an authentication server of a business for authenticating a
remote user to a business system of the business on a global computer
network, wherein the authentication server has an interface with a
cellular wireless telephone network for receiving voice calls from a
mobile wireless device of the remote user operating in the cellular
wireless telephone network of a wireless carrier;

b) a security device in the physical possession of a remote user,
for a “what you have” factor of remote user authentication, wherein
the security device is simulated by a SIM card of the mobile wireless
device of the remote user, and wherein the SIM card in the mobile
wireless communication device has a caller id assigned by the
wireless carrier;

c) a call handling logic in the wireless carrier that screens
incoming calls from the mobile wireless device for having been
originated by an account holding customer of the wireless carrier and
routes the screened calls to the authentication server on a private
number having been pre-assigned to the authentication server by the
wireless carrier, and wherein, the authentication server receives
incoming voice calls only from the mobile wireless device;

d) the authentication server has a first logic that screens
incoming calls received on the private number based on the caller id
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having been pre-stored in an authentication database and further based
on receiving a numeric personal identification number, having been
also pre-stored in the authentication database and wherein, the
authentication server uses the SIM card of the mobile wireless device
as the security token in the physical possession of the remote user for
the “what you have” factor of remote user authentication to the
RUAS, as part of the multi-factor remote user authentication system.

REJECTIONS
Claims 25, 26, 31–34, 39, 40, and 42 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of West et al. (US
6,538,996 B1; issued Mar. 25, 2003) (“West”), Roach et al. (US 5,526,401;
issued June 11, 1996) (“Roach”), and Raith (US 5,930,706; issued July 27,
1999) (“Raith”) or Chaudhary et al. (US 7,155,526 B2; issued Dec. 26,
2006) (“Chaudhary”).
Claims 28, 29, 36, 37, 43, and 44 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of West, Roach, Raith
or Chaudhary, and Fraser et al. (US 5,329,589; issued July 12, 1994)
(“Fraser”) or Cook US 6,788,770 B1; issued Sept. 7, 2004) (“Cook”).
Claim 41 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of West, Roach, Raith or Chaudhary, and
Bathrick et al. (US 5,280,581; issued Jan. 18, 1994) (“Bathrick”).

ANALYSIS
The application was previously subject to an appeal (No. 2014-
004011) (hereafter “Prior Appeal”), challenging the Examiner’s obviousness
rejection over the same prior art references. The Prior Appeal was decided
on March 30, 2016, affirming the Examiner. Following the Prior Appeal,
Appellant amended the claims, however, the Examiner states that Appellant
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“merely rearranged the claims from before.” Final Act. 2; see also Ans. 3–6
(“[A]ppellant re-opened prosecution by filing similar claims/concepts”).2
Appellant argues “the claims are NOT similar claims/concepts,” but instead
“better define the scope of the invention” and “bear no resemblance to the
claims that were ruled on by the Board in March 2016.” Reply Br. 3, 8.
Appellant argues there are “three different distinguishing features” of
the claims over the prior art. Appeal Br. 26. According to Appellant, these
three distinguishing features are: (1) “the claimed subject matter minimizes
the number of actions and steps a remote user needs to perform for a two-
factor remote user authentication to a remote system”; (2) the claimed
“private line” differs from “the information security industry prior art of
IPSec tunnel;” and (3) “the routine prior art authentication [via MIN/ESN
and Kc, encryption key] does not teach or make obvious the ‘call handling
logic’ of the claimed subject matter as performing an entirely different
function.” Id. at 26–27; Reply Br. 31–32.
We note that these are the same “three distinguishing features” over
the prior art that Appellant argued in the Prior Appeal. See Prior Appeal 5–
8. Appellant presents the same arguments here, as in the Prior Appeal, as to
these characteristics as compared to the same prior art references. Compare
Appeal Br. 26–28; Reply Br. 31–33 with Prior Appeal 5–8. To that end,
Appellant has undercut its own argument that “the claims are NOT similar
claims/concepts” as the prior claims. Given the foregoing, we are not
persuaded by these arguments for the same reasons as set forth in the Prior

2 The Examiner provides a chart comparing the prior claims with the
amended claims, along with explanation of why the Examiner finds they are
similar. See Ans. 3–4.
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Appeal, as well as the reasons set forth by the Examiner. Prior Appeal 5–8;
Ans. 7–16, 24.
Appellant also presents similar arguments as in the Prior Appeal with
respect to the combination of the references. Compare Appeal Br. 24–26,
30; Reply Br. 35 with Prior Appeal 8–11. We are not persuaded by these
arguments for the same reasons as set forth in the Prior Appeal, as well as
the reasons set forth by the Examiner. Prior Appeal 8–11; see also Final
Act. 4–10; Ans. 7–16. We find the Examiner has articulated how the
claimed features are met by the proposed combination of the reference
teachings with some rational underpinning, consistent with the guidelines in
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 390, 416 (2007). See Final Act. 4–
10; Ans. 7–16, 23–24.
Appellant also separately argues several of the claim limitations in
independent claims 25 and 33. Appeal Br. 12–15, 20–23; Reply Br. 16–20,
25–28. The Examiner has provided a detailed mapping describing how the
prior art discloses each claim limitation. See Ans. 7–16. In general,
Appellant’s arguments are incommensurate with the scope of the claim
language and/or are conclusory and do not sufficiently address the
Examiner’s findings. For example, Appellant argues under the broadest
reasonable interpretation of the claims, the Examiner has erred in equating
each of the claim limitations “with the combination of the prior art directed
[to] features of a telephone network.” Reply Br. 11–13 (emphasis omitted).
This argument oversimplifies and does not sufficiently address the
Examiner’s findings, as will be discussed further below.
Appellant argues the combination of references does not teach or
suggest “the authentication server has an interface with a cellular wireless
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telephone network for receiving voice calls from a mobile wireless device of
the remote user operating in the cellular wireless telephone network of a
wireless carrier,” as recited in independent claims 25 and 33. Appeal Br.
12–13, 21. Appellant contends “any server on a global computer network,
with a telephone line interface, does not have any prior art mechanism that
can determine the origination of a call as being from a mobile wireless
device operating in a cellular network.” Id. at 13. Appellant continues “[a]
person of ordinary skill in the art, with the knowledge of the combination of
the cited prior art has no reason to restrict incoming telephone calls to a
server on a global computer network exclusively from a mobile wireless
device operating in a wireless network.” Id.
With respect to this limitation, the Examiner finds West teaches
authentication at the accessed computer using a pre-stored username and
password, as well as interfaces to various communications networks that
receive calls, including PSTN, Internet, and Direct Access. Ans. 7–10, 14.
The Examiner finds Chaudhary teaches laptops, cellphones, and PDAs
accessing both wired and wireless networks. Ans. 11, 14. Appellant’s
arguments do not address the Examiner’s findings as to this limitation, or
explain why the Examiner’s findings are in error. In addition, Appellant’s
arguments are not commensurate with the scope of the limitation, which
does not recite “restrict[ing] incoming telephone calls to a server on a global
computer network exclusively from a mobile wireless device operating in a
wireless network.” Nor does this limitation recite a “mechanism that can
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determine the origination of a call as being from a mobile wireless device
operating in a cellular network,” as Appellant argues. Appeal Br. 13.
Appellant devotes a section of its Appeal Brief to separately
describing each of the prior art references. See id. at 18–20. With respect
to West, Appellant states, in part, that “[a] West remote user then had two
choices (i) either connect via an Internet service provider, if available and if
not available, (ii) then use a landline dial out using the PTSN telephone
network.” Id. at 18. Appellant also states “[a]ll business networks for
remote access have authentication mechanisms . . . .” Id. at 19. With
respect to Chaudhary, Appellant states it “teaches art related to integrating a
WLAN radio access network (for Internet access) into a GSM cellular
network using a radio link manager.” Id. at 20. Therefore, it is unclear from
Appellant’s argument why West and Chaudhary do not teach the foregoing
limitation. Discrepancies such as these are rife throughout Appellant’s
briefing, which make Appellant’s arguments unclear as to why, specifically,
the reference or combination of references (depending on the Examiner’s
mapping) does not teach the argued limitation. We find the Examiner has
sufficiently established that this limitation is taught by the combination of
references.
Appellant also argues the combination of references does not teach or
suggest “a security device in the physical possession of a remote user, for a
‘what you have’ factor of remote user authentication, wherein the security
device is simulated by a SIM card of the mobile wireless device of the
remote user,” as recited in independent claims 25 and 33. Id. at 13, 20.
Appellant argues “the cited combination of the prior art does not teach or
fairly suggest to a PHOSITA that SIM card hidden inside a cell phone can
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act as a security device as a factor of remote user authentication.” Id. at 13.
Appellant continues “[a] person of ordinary skill in the art, with the
knowledge of the combination of the cited prior art has no reason to simulate
the SIM card as a physical security device for a factor of remote user
authentication. A SIM card is exclusively a feature of a mobile wireless
device operating in a wireless network.” Id. at 13–14.
The Examiner finds West teaches a computer having “what you have”
authentication factors of username/password and caller identification. Ans.
8–10, 13–14. The Examiner finds Chaudhary teaches data/keys stored on a
SIM card and the use of that stored data for network access verification, and
Roach, Raith, and Chaudhary teach identifying the user by MIN/ESN or
IMSI (i.e., caller identification). Ans. 11–15; Final Act. 9. Appellant’s
arguments do not persuasively address the Examiner’s findings, or explain
why the combination of references does not teach or suggest the disputed
limitation. Nor is it clear from Appellant’s description of Chaudhary,
Roach, and Raith why the Examiner’s findings are in error. See Appeal Br.
18–20.
Appellant also argues the combination of references does not teach or
suggest “routes the screened calls to the authentication server on a private
number having been pre-assigned to the authentication server by the wireless
carrier, and wherein, the authentication server receives incoming voice calls
only from the mobile wireless device,” as recited in independent claims 25
and 33. Id. at 14, 21. Appellant argues “a PHOSITA has no reason to and
sees no reason to assign a private number to the authentication server by the
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wireless carrier and sees no reason to restrict the calls to the private number
from the mobile wireless device.” Id. at 19.
The Examiner finds West teaches that pre-assigned “CALLING
FROM” and “CALLING TO” numbers are provided, as well as the use of
known communication parameters in order to connect and route data to the
recipient. Final Act. 5; Ans. 15. However, the Examiner finds “West does
not ‘screen’ users based upon whom their HOME cellular service provider is
nor does he only pass through calls from users who are customers of that
HOME network.” Final Act. 6. Therefore, the Examiner relies on Roach to
teach determining whether the user is an account holder or a roamer, and
denying service based on that parameter. Final Act. 7; Ans. 15. The
Examiner further finds that Raith and Chaudhary also teach determining if a
user is roaming and then either allowing or denying them access to the
network. Ans. 15–16. Once again, Appellant’s arguments do not
persuasively address the Examiner’s findings, or explain why the
combination of references does not teach or suggest the disputed limitation.
Nor is it clear from Appellant’s description of Chaudhary, Roach, and Raith
why the Examiner’s findings are in error. See Appeal Br. 18–20.
Appellant also argues the combination of references does not teach or
suggest
a first logic that screens incoming calls received on the private
number based on the caller id having been pre-stored in an
authentication database and further based on receiving a
numeric personal identification number, having been also pre-
stored in the authentication database and wherein, the
authentication server uses the SIM card of the mobile wireless
device as the security token in the physical possession of the
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remote user for the ‘what you have’ factor of remote user
authentication,
as recited in independent claims 25 and 33. Id. at 15, 21. Appellant argues
“[a] person of ordinary skill in the art, with the knowledge of the
combination of the cited prior art has no reason to create the feature of the
first logic in the authentication server as above.” Id. at 15.
As discussed above, the Examiner finds West teaches “what you
have” authentication at the accessed computer using a pre-stored username
and password and caller identification. Ans. 16; Final Act. 5–6. The
Examiner finds Chaudhary teaches data/keys stored on a SIM card and the
use of that stored data for network access verification, and Roach, Raith, and
Chaudhary teach identifying the user by MIN/ESN or IMSI (i.e., caller
identification). Ans. 16; Final Act. 6–7. Again, Appellant’s arguments do
not persuasively address the Examiner’s findings, or explain why the
combination of references does not teach or suggest the disputed limitation.
Nor is it clear from Appellant’s description of Chaudhary, Roach, and Raith
why the Examiner’s findings are in error. See Appeal Br. 18–20.
Appellant presents similar types of arguments for several of the
limitations in independent claim 41. See id. at 22 (“[a] person of ordinary
skill in the art, with the knowledge of the combination of the cited prior art
has no reason to screen incoming telephone calls to a server on a global
computer network in a two step process using a combination of PIN-1 and
PIN-2”); id. at 23 (“[a] person of ordinary skill in the art, with the
knowledge of the combination of the cited prior art has no reason to screen
incoming telephone calls to a server on a global computer network by
calling back by the authentication server and prompting for entry of PIN-2”);
id. at 15 (“the cited prior art . . . in any combination does not teach or
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suggest any of the features of a cellular network, a call handling logic in the
cellular network, and a private line number from the cellular network to a
business authentication server”). For the same reasons as set forth above,
we do not find Appellant’s arguments persuasive.
Appellant does not separately argue the dependent claims. See
generally Appeal Br., Reply Br. Accordingly, for the reasons stated above,
we are not persuaded the Examiner erred in rejecting claims 25, 26, 28, 29,
31–34, 36, 37, and 39–44 under 35 U.S.C. § 103(a).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
25, 26,
31–34,
39, 40,
42
103 West, Roach,
Raith/Chaudhary
25, 26,
31–34,
39, 40,
42

28, 29,
36, 37,
43, 44
103 West, Roach,
Raith/Chaudhary,
Fraser/Cook
28, 29,
36, 37,
43, 44

41 103 West, Roach,
Raith/Chaudhary,
Bathrick
41
Overall
Outcome
25, 26,
28, 29,
31–34,
36, 37,
39–44

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED