Ex Parte Kuhlman et alDownload PDFPatent Trial and Appeal BoardMar 30, 201611152607 (P.T.A.B. Mar. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 111152,607 124177 7590 Fox Rothschild LLP 997 Lenox Drive Building 3 FILING DATE 06/14/2005 04/01/2016 Lawrenceville, NJ 08648-2311 FIRST NAMED INVENTOR Douglas A. Kuhlman 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. 106751.00211 7428 EXAMINER DADA, BEEMNET W ART UNIT PAPER NUMBER 2435 NOTIFICATION DATE DELIVERY MODE 04/01/2016 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): ipdocket@foxrothschild.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DOUGLAS A. KUHLMAN, EZZAT A. DABBISH, THOMAS S. MESSERGES, and DEAN H. VOGLER Appeal2014-007374 Application 11/152,607 Technology Center 2400 Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH, and AARON W. MOORE, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants are appealing the Final Rejection of claims 2, 3, and 6-8 under 35 U.S.C. § 134(a). 1 Reply Brief 4. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Introduction The invention is directed to a method for "registering a user device in a domain of a domain authority ... using biometric information." Abstract. 1 Appellants cancelled claims 1, 4, 5, 9-14, and 16-20. Appeal Brief 10-12. Claim 15 was objected to as being dependent on a rejected base claim. Final Rejection 10. Appeal2014-007374 Application 11/152,607 Representative Claim (disputed limitations emphasized) 2. A method for registering a first user device in a domain of a domain authority and using the first user device to access digital data of the domain, the method comprising: sending a request for the first user device to join the domain, wherein the request is sent by the first user device to the domain authority; submitting from the user device to the domain authority authentication information of the first user device making the request, after sending the request to join the domain; requesting biometric information of a user of the user device after sending the request to join the domain; authenticating biometric information of the user captured in response to the request for biometric information; receiving a domain key by the first user device, wherein the domain key has been transmitted in response to successful authentication of both the first user device and the biometric information; and accessing digital data by the first user device, wherein the digital data is stored in a protected form external to the first user device, such that the digital data is only accessible by using the domain key of the domain, and wherein the request for the biometric information is prompted by a request from the domain authority to the first user device. Rejections on Appeal Claims 2, 3, and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Messerges (US Patent Application Publication Number 2002/0157002 Al; published October 24, 2002) and Sweet (US Patent 2 Appeal2014-007374 Application 11/152,607 Application Publication Number 2002/0031230 Al; published March 14, 2002). Answer 4; Final Rejection 3-9. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Messerges, Sweet, and Hollingshead (US Patent Number 6,353,889 Bl; issued March 5, 2002). Answer 4; Final Rejection 9. ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed January 21, 2014), the Reply Brief (filed June 25, 2014), the Examiner's Answer (mailed April 25, 2014), and the Final Rejection (mailed January 7, 2013) for the respective details. We have considered in this Decision only those arguments Appellants actually raised in the Briefs. Appellants argue "that the rejection of claim 2 mischaracterizes Sweet" because "applicant[s] see[] nothing in these paragraphs [(271-76 and 280)] that supports a conclusion that Sweet describes the requirement of applicant's claim 2: 'wherein the request for the biometric information is prompted by a request from the domain authority to the first user device."' Appeal Brief 5---6. We do not find Appellants' arguments persuasive because the Examiner relied upon the combination of Messerges and Sweet. See Final Rejection 4, 5, 7. Appellants fail to address the combination of the cited references. 2 Consequently, we sustain the Examiner's obviousness rejection of claim 2 and claim 3 not argued separately. See Appeal Brief 6. 2 "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., Inc., 800 F.2d 1091, 1097 3 Appeal2014-007374 Application 11/152,607 Appellants argue "that the rejection of claim [ 6] does not show the use of two user device [sic] and also mischaracterizes Messerges as showing the use of biometric information" because "using biometric information is not a standard method based [upon] the public-key or shared key certificates." Appeal Brief 7 (citing Messerges paragraphs 41, 81 ). We do not find Appellants' argument persuasive because Appellants have not demonstrated that Messerges teaches away from using biometric information as disclosed by Sweet. 3 Appellants' arguments are based upon conclusory statements only.4 Therefore, we sustain the Examiner's obviousness rejection of claim 6. Appellants contend the rejection of claim 7 is improper because Hollingshead fails to address the Messerges/Sweet combination's failure to describe or disclose the use of two user devices. Appeal Brief 7-9. Claim 7 requires, "wherein the biometric information is processed by a second user (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (Fed. Cir. 1981)). 3 "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Kahn, 441F.3d977, 990 (Fed. Cir. 2006) (internal citation and internal quotation marks omitted); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely disclosing more than one alternative does not teach away from any of these alternatives if the disclosure does not criticize, discredit, or otherwise discourage the alternatives). 4 Attorney "argument ... cannot take the place of evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); see, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney arguments or conclusory statements are insufficient to rebut a prima facie case). 4 Appeal2014-007374 Application 11/152,607 device and wherein the processing by the second user device comprises capturing and authenticating the biometric information of the user." Appellants argue that Hollingshead discloses: [T]he verification code that results from a comparison of the fingerprint acquired by the portable access device 14 from a user wishing to gain access to the key actuated device is passed to the key actuated device 12 which then passes it on to the central database YY. The central database uses it to authenticate a valid user. Thus, there is no second user device that captures and authenticates the biometric information, as required by claim 7. Appeal Brief 9. We do not find Appellants' arguments persuasive because the Examiner relied upon the combination of Messerges, Sweet, and Hollingshead. See Final Rejection 9. Appellants fail to address the combination of the cited references. 5 Consequently, we sustain the Examiner's obviousness rejection of claim 7 and claim 8 not argued separately. See Appeal Brief 9. DECISION The Examiner's obviousness rejections of claims 2, 3, and 6-8 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(±). AFFIRMED 5 See footnote 2. 5 Copy with citationCopy as parenthetical citation