Ex Parte Krauss et alDownload PDFPatent Trial and Appeal BoardJul 20, 201613173306 (P.T.A.B. Jul. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/173,306 06/30/2011 110936 7590 07/22/2016 Great Lakes Intellectual Property, PLLC /CableLabs 44750 Yorkshire Novi, MI 48375 Simon L. Krauss 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. CONFIRMATION NO. CTL60275PUS I 60275 8905 EXAMINER CHAMPAGNE, LUNA ART UNIT PAPER NUMBER 3627 NOTIFICATION DATE DELIVERY MODE 07/22/2016 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): j. buser@ greatlakesiplaw. com d.smith@cablelabs.com USPTO@dockettrak.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SIMON L. KRAUSS and OSCAR G. MARCIA Appeal2014-002117 1 Application 13/173,3062 Technology Center 3600 Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and MATTHEWS. MEYERS, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-15 and 21-25. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Our decision references Appellants' Appeal Brief ("Br.," filed July 26, 2013) and the Examiner's Answer ("Ans.," mailed October 2, 2013) and Final Office Action ("Final Act.," mailed January 23, 2013). 2 Appellants identify Cable Television Laboratories, Inc. as the real party in interest. Br. 1. Appeal2014-002117 Application 13/173,306 CLAIMED INVENTION Appellants' claimed invention "relates to personal authentication, such as but not limited to personal authentication based on biometric information" (Spec. i-f 1 ). Claims 1 and 24, reproduced below, are illustrative of the subject matter on appeal: 1. A method of authenticating a purchaser comprising: receiving biometric information reflective of biometric commands issued from the purchaser to command a user device, the user device communicating signals through a first access point to facilitate access to electronic services associated with a service provider, the biometric information being transmitted from the user device through the first access point; determining a biometric signature of the purchaser from the biometric information transmitted through the first access point; receiving a biometric authentication result from signaling transmitted through a second access point associated with a point of sale system, the second access point being remotely positioned from the first access point and less trusted than the first access point, the point of sale system being configured to facilitate purchase of a product by the purchaser, the point of sale system facilitating a biometric authentication test of the purchaser when the purchaser attempts to purchase the product, the point of sale system operable to: 1. administer the biometric authentication test to the purchaser; 11. determine the biometric authentication result from one or more answers made by the purchaser to questions associated with the biometric authentication test; determining a biometric authentication test score for the purchaser from the received biometric information and the received biometric authentication results, the biometric authentication test score correlating the biometric authentication result with the biometric signature; and 2 Appeal2014-002117 Application 13/173,306 facilitating use of the biometric authentication test score by the point of sale system for use in authenticating the purchaser to purchase the product, including authenticating the purchaser to purchase the product if the biometric authentication test score is greater than a threshold and unauthenticating the purchaser to purchase the product if the biometric authentication test score is less than the threshold. 24. A secure payment system operable to authenticate a purchaser attempting to make a purchase through a point of sale system, the system comprising: a service provider operable to provide media services to one or more media output devices, the service provider assigning unique addresses to each media output device to facilitate providing the media services; a biometric signature device operable with the service provider to generate biometric signatures for users from media output device originating biometric information transmitted from the one or more media output devices, the media output device originating biometric information biometrically characterizing user interaction with one or more of the media devices, each biometric signature being related to the address of the media output device transmitting the corresponding media output device originating biometric information; a biometric authentication device operable to receive point of sale originating biometric information transmitted from the point of sale system, the point of sale originating biometric information biometrically characterizing purchaser interaction with the point of sale system; and wherein the biometric authentication device is operable to identify the purchaser as the user having the biometric signature most closely correlated with the point of sale originating biometric information, the biometric authentication device authenticating the identified user to make the purchase if the address related to the biometric signature of the identified user is within an address domain of the service provider and denying authentication of the identified user to make the purchase of the address related to the biometric signature of the identified user is beyond the address domain. 3 Appeal2014-002117 Application 13/173,306 REJECTIONS3 Claims 1-5 and 9-11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Schulz (US 8,189,878 B2, iss. May 29, 2012) and Aziz (US 2012/0253953 Al, pub. Oct. 4, 2012). Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Schulz, Aziz, and Peirce (US 7,690,032 Bl, iss. Mar. 30, 2010). Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Schulz, Aziz, Peirce, and Official Notice (as evidenced by Ting (US 2007/0136792 Al, pub. June 14, 2007)). Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Schulz, Aziz, and Yap (US 2010/0332308 Al, pub. Dec. 30, 2010). Claims 12-15, 21, and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Schulz, Aziz, and Lee (US 2007/0250451 Al, pub. Oct. 25, 2007). Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Schulz, Aziz, Peirce, and Official Notice (as evidenced by Michaelis (US 2008/0222711 Al, pub. Sept. 11, 2008) and Wei (US 2007/0094509 Al, pub. Apr. 26, 2007)). Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over Schulz, Aziz, Lee, and Sands (US 7 ,404,086 B2, iss. July 22, 2008). 3 The rejection of claims 1 and 7 under 35 U.S.C. § 112, first paragraph and the rejection of claim 1 under 35 U.S.C. § 112, second paragraph have been withdrawn (Ans. 2). "The argument regarding the [§] 112, second paragraph rejection of claim 12 is moot since the Examiner had already addressed the issue with Appellant[ s] via a telephone call and in the Advisory Action mailed May 15, 2013" (id.). 4 Appeal2014-002117 Application 13/173,306 Independent claim 24 ANALYSIS Independent claim 24 is directed to a secure payment system operable to authenticate a purchaser attempting to make a purchase through a point of sale system, and recites that the system comprises, inter alia, "a biometric signature device operable ... to generate biometric signatures for users from media output device originating biometric information" and "a biometric authentication device operable to receive point of sale originating biometric information transmitted from the point of sale system." Claim 24 further recites that the "biometric authentication device is operable to identify the purchaser as the user having the biometric signature most closely correlated with the point of sale originating biometric information." In other words, the biometric authentication device correlates point of sale originating biometric information (purchaser) with media output device originating biometric information (users) such that the most closely correlated one of the users is identified as the purchaser. We are persuaded by Appellants' argument that the Examiner erred in rejecting claim 24 under 35 U.S.C. § 103(a) because Schultz, on which the Examiner relies, fails to disclose or suggest that "the biometric authentication device is operable to identify the purchaser as the user having the biometric signature most closely correlated with the point of sale originating biometric information," as recited in claim 24 (Br. 8; see also id. at 10-11, 15). The Examiner cites column 4, lines 5-18 and 26-33 of Schultz as disclosing the argued limitation (Ans. 4). But we find nothing in that portion of Schultz that discloses or suggests "identify[ing] the purchaser 5 Appeal2014-002117 Application 13/173,306 as the user having the biometric signature most closely correlated with the point of sale originating biometric information," as recited in claim 24. Schultz is directed to a method and system for authenticating individuals and businesses before allowing certain operations to be performed, and discloses that the process begins with the receipt by a multifactor authentication device of a request to authenticate a particular user; the request may include an address, e.g., a telephone number or URI, for the user and also specify what authentication operations are to be performed, e.g., a voice biometric operation, a facial biometric operation (see, e.g., Schultz, Abstract, col. 7, 11. 15-27). Schultz discloses that when the authentication request is received, the multifactor authentication device establishes a multimedia session with the user's multimedia device, e.g., telephone, video conferencing device (id. at col. 2, 11. 3-13). The multifactor authentication device may then use video and audio from the multimedia session to authenticate the user, for example, facially and/or via voice authentication, by comparing the biometric identifiers obtained from the user during the multimedia session with stored biometric identifiers (see, e.g., id. at col. 1, 11. 47---60; col. 8, 11. 9-37). Each biometric authentication operation results in an authentication score, which represents the degree to which the obtained biometric identifier matches the stored biometric identifier (id. at col. 8, 11. 28-31 ). Schultz discloses at column 4, lines 5-18 and 26-33, cited by the Examiner, that the multifactor authentication device may include one or more components that perform biometric authentication operations, and that one such component, the voice biometric component, may receive voice information, e.g., a spoken utterance, and information identifying the user 6 Appeal2014-002117 Application 13/173,306 with whom the voice information is associated. Schultz discloses that the voice biometric component performs a voice biometric operation on the voice information to determine the degree to which the voice information matches a stored voice biometric sample associated with the user (id. at col. 4, 11. 26-33). But we find nothing in this portion of Schultz that discloses or suggests identifying a user based on correlated biometric information, i.e., comparing point of sale biometric information to a plurality of biometric signatures, as called for in claim 24. Instead, Schulz discloses that information identifying the user is provided with the authentication request (see id.; see also id. at col. 7, 11. 15-27), and used to recover previously stored biometric information (see id. at col. 8, 11. 38--45) for use in performing the authentication operation. In view of the foregoing, we do not sustain the Examiner's rejection of claim 24 under 35 U.S.C. § 103(a). Dependent claim 25 Claim 25 depends from claim 24. The Examiner's rejection of claim 25 based on Sands, in combination with Schulz, Aziz, and Lee, does not cure the deficiency in the Examiner's rejection of claim 24. Therefore, we do not sustain the Examiner's rejection of claim 25 under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to claim 24. Independent claim 12 and dependent claims 13-15 and 21 Claim 12 includes language substantially similar to the language of claim 24 and stands rejected based on the same rationale applied with respect to claim 24. Therefore, we do not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of independent claim 12, and claims 13-15 and 21, 7 Appeal2014-002117 Application 13/173,306 which depend therefrom, for the same reasons set forth above with respect to claim 24. Independent claim 1 We are not persuaded by Appellants' argument (Br. 18-19) that the Examiner erred in rejecting claim 1under35 U.S.C. § 103(a) because the feature that Appellants argue is not disclosed in the cited references, i.e., "the second access point being ... less trusted than the first access point," constitutes non-functional descriptive material, which does not affect how the method is performed and may not be relied on to distinguish over the prior art for purposes of patentability. The rationale underlying the "printed matter" cases has been extended to the analysis of the patentability of method claims. King Pharms Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278-79 (Fed. Cir. 2010) (applying the "printed matter" reasoning to method claims containing an "informing" step that could be either printed or verbal instructions). Here, the relevant question is whether the recitation that the second access point is less trusted than the first access point has a "new and unobvious functional relationship" with the method. Id. at 1279. Here, regardless of the relative trustworthiness of the second access point, the underlying method, including the steps of "receiving a biometric authentication result" and "determining a biometric authentication test score for the purchaser from the received biometric information and the received biometric authentication results," is the same. The relative trustworthiness of the second access point does not depend on the method, and the method does not depend on the relative trustworthiness of the second access point. As such, it constitutes non-functional descriptive material that may not be 8 Appeal2014-002117 Application 13/173,306 relied on for patentability. See Jn re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). Because our rationale differs from that of the Examiner, we designate our affirmance as a new ground of rejection. Dependent claim 6 Claim 6 depends from claim 1, and recites that the method further comprises "overriding authentication of the purchaser to purchase the product if the first access point is untrusted in order to prevent the biometric test score from being based on cloned biometric signatures, the cloned biometric signatures being determined from biometric information collected through an untrusted access point." We are persuaded by Appellants' argument that the Examiner erred in rejecting claim 6 under 35 U.S.C. § 103(a) because Peirce, on which the Examiner relies, does not disclose or suggest assessing whether data being used as part of authentication can be trusted and, therefore, does not disclose or suggest "overriding authentication of the purchaser to purchase the product ifthe first access point is untrusted," as recited in claim 6 (Br. 19- 20). The Examiner cites column 2, lines 45---61 of Peirce as disclosing the argued limitation (Final Act. 7). But that portion of Peirce merely discloses that trusted authenticating entities have various levels of trust and that these levels of trust are used for controlling the release of device data, i.e., "to determine whether the requested biometric and personal data are permitted to be released" (Peirce, col. 2, 11. 56-57). We fail to see how, and the Examiner does not adequately explain how, determining whether requested 9 Appeal2014-002117 Application 13/173,306 biometric data are permitted to be released from a trusted authenticating entity based on the level of trust discloses or suggests assessing whether released data, i.e., biometric data received through a first access point, can be trusted and overriding authentication if the first access point is untrusted, as called for in claim 6. Therefore, we do not sustain the Examiner's rejection of claim 6 under 35 U.S.C. § 103(a). Dependent claims 7, 22, and 23 Each of claims 7, 22, and 23 depends from claim 6. Neither the rejection of claims 7 based on Official Notice, in combination with Schulz, Aziz, and Peirce, nor the rejection of claims 22 and 23, based on Official Notice and Wei, in combination with Schulz, Aziz, and Peirce, cures the deficiency in the Examiner's rejection of claim 6. Therefore, we do not sustain the Examiner's rejections under 35 U.S.C. § 103(a) of claims 7, 22, and 23 for the same reasons set forth above with respect to claim 6. Dependent claims 2-5 and 8-11 Appellants do not present any arguments in support of the patentability of dependent claims 2-5 and 8-11. Therefore, we summarily sustain the Examiner's rejections of these claims under 35 U.S.C. § 103(a). 10 Appeal2014-002117 Application 13/173,306 DECISION The Examiner's rejections of claims 1-5 and 8-11 under 35 U.S.C. § 103(a) are affirmed. Insofar as the rationale for our affirmance of claim 1 differs from that set forth by the Examiner, we denominate this a NEW GROUND OF REJECTION. The Examiner's rejections of claims 6, 7, 12-15, and 21-25 under 35 U.S.C. § 103(a) are reversed. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. 11 Appeal2014-002117 Application 13/173,306 (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in MPEP § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) 12 Copy with citationCopy as parenthetical citation