Ex Parte Edmeades et al

Patent Trial and Appeal Board

Mar 23, 2016

13407077 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/407,077 02/28/2012
46320 7590 03/25/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Jason C. Edmeades
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.
RSW920100113US2
(644DIV)
CONFIRMATION NO.
5590
EXAMINER
RAZA, MUHAMMAD A
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON C. EDMEADES, PETER J. JOHNSON, DAVID LOCKE,
CLARE J. OWENS, and FENGLIAN XU
Appeal2014-004807
Application 13/407,077
Technology Center 2400
Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and TERRENCE
W. MCMILLIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-004807
Application 13/407,077
STATEivIENT OF THE CASE
This is an appeal 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 affirm.
Representative Claim
1. A method for predictive user identification (ID) request
processmg compnsmg:
receiving a request for a user ID from a user to access a portion
of a computing system;
determining at least one characteristic of the user;
correlating the characteristic of the user to at least one user ID
option that differs from the requested user ID; and,
prompting the user to accept the user ID option.
Schmidt
Buchholz
Prasad
Prior Art
US 2003/0120948 Al
US 2003/0229812 Al
US 7,010,600 Bl
Examiner's Rejections
June 26, 2003
Dec. 11, 2003
Mar. 7, 2006
Claims 1-7 stand provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 8-19
of copending Application No. 12/983,017.
Claims 1-7 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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Application 13/407,077
Claims 1-3, 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Prasad and Buchholz.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Prasad, Buchholz, and Schmidt.
Related Appeals
This appeal is related to Appeal No. 2014-004767; Serial No.
12/983,017.
ANALYSIS
We adopt the findings of fact made by the Examiner in the Final
Rejection and Examiner's Answer as our own. We concur with the
conclusions reached by the Examiner for the reasons given in the
Examiner's Answer. We highlight the following for emphasis.
Provisional double patenting rejection of claims 1-7
Appellants do not provide arguments for the provisional obviousness-
type double patenting rejection of claims 1-7, which we summarily sustain.
Section 1 OJ rejection of claims 1-7
Appellants contend "because Appellants' claims include limitations
that attach the underlying idea of the claim to a specific application of the
underlying idea, Appellants' claims are directed to statutory subject matter."
App. Br. 8. Appellants further contend it is "clear from the specification that
the claimed method is carried out in a data processing system as shown in
Fig. 2." App. Br. 9. The Examiner found that claim 1 is "directed to an
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Application 13/407,077
abstracted idea" and is "sufficiently broad that the claim could be completely
performed mentally, verbally or without a machine nor is any transformation
apparent." Ans. 19, 20. We agree with the Examiner.
Abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2355 (2014). Section 101 covers neither mental
processes as part of a category of abstract ideas, nor processes that merely
invoke a computer and its basic functionality for implementing such mental
processes. See Gottschalk v. Benson, 409 US 63, 67-68 (1972); Parker v.
Flook, 437 US 584, 589 (1978). In Alice, the Supreme Court articulated the
required analysis for distinguishing patents that claim abstract ideas from
patents that claim patent-eligible applications of these concepts. The first
step in the analysis is to determine whether the claims at issue are directed to
a patent-ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at
2355. If the claims are directed to a patent-ineligible concept, then the
second step in the analysis is to consider the claim elements individually and
as an ordered combination to determine whether the additional elements
transform the nature of the claim into a patent-eligible application. Id.
Here, claim 1 is directed to an abstract idea of a mental process of
"determining at least one characteristic of the user" and "correlating the
characteristic of the user to at least one user ID option that differs from the
requested ID." This mental process is similar to other unpatentable mental
processes identified by the Supreme Court, such as converting binary-coded
decimal numerals into pure binary form (Benson, 409 US at 71-72);
computing an alarm limit (Flook, 437 US at 594-595); hedging against the
financial risk of price fluctuations (Bilski v. Kappas, 561 U.S. 593, (2010));
and using a third party to mitigate settlement risk (Alice, 134 S. Ct. at 2357).
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Application 13/407,077
This mental process is also similar to an unpatentable abstract idea identified
by the Federal Circuit, namely, comparing new and stored information and
using rules to identify options in SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 F.App'x 950, 955 (Fed. Cir. 2014).
The additional claim limitations are directed to an insignificant data
gathering step of "receiving a request for a user ID from a user" and an
insignificant post-solution step of "prompting the user to accept the user ID
option." The additional pre- and post-solution limitations do not transform
the patent-ineligible concept of a mental process to a patent-eligible concept.
Parker, 437 US at 590. Even if the claimed method is carried out in a data
processing system as argued by Appellants, the claims still recite computer
functions that can be performed by a generic computer and are therefore not
sufficient to transform an abstract idea into a patent-eligible invention.
Alice, 134 S. Ct. at 2357-58.
Accordingly, we sustain the Examiner's rejection of claims 1-7 under
35 U.S.C. § 101.
Section 103 rejection of claims 1-3, 6 and 7
Appellants contend the combination of Prasad and Buchholz does not
teach "to correlate the characteristic of the user to at least one user ID option
that differs from the requested user ID," as recited in claim 8. App. Br. 5.
Specifically, Appellants argue paragraph 7 of Buchholz teaches the end user
does apply for the second system, so the user ID of Buchholz is the
requested user ID, not an "ID option that differs from the requested user ID."
App. Br. 8; Reply Br. 3-5. Appellants' contention is inconsistent with
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paragraphs 8 and 9 of Buchholz, which teach mapping and automatically
granting access to the user.
For example, paragraph 8 of Buchholz teaches mapping privileges of
a user to corresponding roles in a second system, and automatically granting
access to the user according to the mapping to provide the user with an ID
that can access the resources in the second system. Paragraph 9 of Buchholz
teaches mapping roles of a user to privileges in a second system and
automatically granting access to the user to privileges in the second system
according to the mapping.
Paragraph 17 of Appellants' Specification discloses:
Of note, the user profile 130 can contain information such as the job
role and location of the user. The ID prediction logic 120 can inspect
the user profile information of the profile 130 in order to offer
different user ID options to different users based upon their respective
job roles. For example, an administrator requesting a normal ID for
one system resource may be offered the option to request an
administrator ID for the system resource while a non-administrator
would not be offered this option.
The scope of "correlating the characteristic of the user to at least one user ID
option that differs from the requested user ID," when read in light of
paragraph 17, encompasses correlating a role of a user with an additional
system resource to provide the user with an ID that can allow the user to
access the additional resource. Appellants have not provided persuasive
evidence or argument to distinguish mapping a role of the user to provide the
user with an ID that can allow the user to access a second system as taught
by Buchholz from "correlating the characteristic of the user to at least one
user ID option that differs from the requested user ID," as recited in claim 1.
Appellants further contend Buchholz does not teach or suggest "to
prompt the user to accept the user ID option," as recited in claim 1.
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Specifically, Appellants argue "in Buchholz, no additional ID is provided to
the user." App. Br. 14; Reply Br. 6. We are not persuaded by Appellants'
arguments because the Examiner relies on Prasad, not Buchholz, to teach or
suggest prompting the user to access the user ID option. Ans. 13.
Appellants have not persuasively rebutted the Examiner's finding that the
combination of Prasad and Buchholz teaches the disputed limitation.
We sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellants
do not present arguments for separate patentability of dependent claims 2, 3,
6 and 7, which fall with claim 1. Accordingly, we sustain the rejection of
claims 2, 3, 6 and 7 under 35 U.S.C. § 103.
Section 103 rejection of claims 4 and 5
Appellants do not present arguments for separate patentability of
dependent claims 4 and 5, which fall with claim 1. Accordingly, we sustain
the rejection of claims 4 and 5 under 35 U.S.C. § 103.
DECISION
The Examiner's double patenting rejection of claims 1-7 is affirmed.
The Examiner's rejection under 35 U.S.C. § 101 of claims 1-7 is
affirmed.
The Examiner's rejections under 35 U.S.C. § 103 of claims 1-7 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(±).
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AFFIRMED
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