Ex Parte Kuhlman et al

Patent Trial and Appeal Board

Mar 30, 2016

11152607 (P.T.A.B. Mar. 30, 2016)

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