Ex Parte Balasubramanian et al

Patent Trial and Appeal Board

Jul 27, 2018

11381270 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/381,270 05/02/2006
144885 7590 07/31/2018
The Webb Law Firm/ Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
FIRST NAMED INVENTOR
Chandra Balasubramanian
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.
8223-1710074 4056
EXAMINER
HALE,TIMB
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANDRA BALASUBRAMANIAN,
FRANCIS SHERWIN, and MICHAEL A. KERESMAN III
Appeal2017-002615
Application 11/381,270 1
Technology Center 3600
Before LARRY J. HUME, LINZY T. MCCARTNEY, and
NORMAN H. BEAMER, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-19, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is
CARDINALCOMMERCE CORPORATION. App. Br. 1.
Appeal2017-002615
Application 11/381,270
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[]
generally to identity authentication." Spec. ,r 2. "More specifically, it is
directed to the generation and dispensing of unique, random numbers or one-
time-use authentication codes or passwords that are used for a variety of
transactional applications and, in particular, to applications using these
numbers, codes or passwords for authentication purposes." Id.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
1. A method for provisioning a mobile device with a
personalized authorization code generating application, said
method comprising:
(a) collecting user information and a password;
(b) generating an application specific encryption key
from at least the collected user information and the password;
( c) embedding the generated application specific
encryption key in a software code which generates personalized
authorization codes based on the application specific
encryption key embedded therein;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Sept. 30, 2015); Examiner's Answer ("Ans.," mailed Oct. 5, 2016); Final
Office Action ("Final Act.," mailed Dec. 19, 2014); and the original
Specification ("Spec.," filed May 2, 2006). We note Appellants did not file a
Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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Application 11/381,270
( d) delivering the software code having the application
specific encryption key embedded therein to the mobile device
via a communications network;
( e) executing the delivered software code on the mobile
device to dispense at least one personalized authorization code
based on the embedded application specific encryption key; and
wherein steps (a}-( e) are performed by one or more
configured computer processors; and
wherein an account code is combined with a personalized
authorization code of the at least one personalized authorization
codes.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Ginter et al. us 5,892,900 Apr. 6, 1999
("Ginter")
Hasebe et al. us 5,935,243 Aug. 10, 1999
("Hase be")
Walker et al. us 6,163,771 Dec. 19, 2000
("Walker")
Arnold et al. US 6,289,452 Bl Sept. 11, 2001
("Arnold")
Chen et al. US 6,496,979 B 1 Dec. 17, 2002
("Chen")
Tatebayashi et al. US 6,859,535 Bl Feb.22,2005
("Tatebayashi")
Brainard et al. US 6,985,583 B 1 Jan. 10,2006
("Brainard")
Chakravorty et al. US 7,139,372 B2 Nov. 21, 2006
("Chakravorty")
Law et al. ("Law") US 2007 /0130463 Al June 7, 2007
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Application 11/381,270
Rejections on Appeal
RI. Claims 1, 5, 6, 9, 11-14, and 17 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Brainard, Arnold,
Chen, and Walker. Final Act. 3.
R2. Claims 2 and 3 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Brainard, Arnold, Chen, Walker, and
Hasebe. Final Act. 8.
R3. Claims 4, 18, and 19 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Brainard, Arnold, Chen, Walker,
Hasebe, and Ginter. Final Act. 9.
R4. Claims 7 and 8 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Brainard, Arnold, Chen, Walker, and
Tatebayashi. Final Act. 10.
R5. Claim 10 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Brainard, Arnold, Chen, Walker, and
Law. Final Act. 12.
R6. Claims 15 and 16 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Brainard, Arnold, Chen, Walker,
and Chakravorty. Final Act. 12.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 3-8), we decide the appeal
of obviousness Rejection RI of claims 1, 5, 6, 9, 11-14, and 17 on the basis
of representative claim 1.
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Application 11/381,270
Remaining claims 2--4, 7, 8, 10, 15, 16, 18, and 19 in Rejections R2
through R6, not argued separately (App. Br. 10), stand or fall with the
respective independent claim from which they depend. 3
ISSUE
Appellants argue (App. Br. 5-10) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of
Brainard, Arnold, Chen, and Walker is in error. These contentions present
us with the following issue:
Did the Examiner err in concluding claim 1 is obvious under § 103
because of allegedly improper motivation to combine the cited references in
the manner suggested, purportedly because "Arnold is not directed to the
subject matter of the present invention nor related to any recognized problem
associated therewith" (Br. 6), an argument we interpret to mean that the
Arnold reference allegedly is non-analogous art.
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Application 11/381,270
We disagree with Appellants' arguments with respect to claim 1 and,
unless otherwise noted, we incorporate by reference herein and adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
The Examiner finds Brainard teaches or suggests "(b) generating an
application specific encryption key from at least the collected user
information and the password", and Arnold teaches or suggests
" ( c) embedding the generated application specific encryption key in a
software code which generates personalized authorization codes based on
the application specific encryption key embedded therein." Final Act. 4.
As a reason to combine these references, the Examiner further finds:
It would have been obvious to one of ordinary skill in the art to
include in the system of Brainard the technique as taught by
Arnold since the claimed invention is merely a combination of
old elements, and in the combination each element merely
would have performed the same function as it did separately,
and one of ordinary skill in the art would have recognized that
the results of the combination were predictable.
Final Act. 4--5.
Appellants contend, " [ o ]f some importance in analyzing the present
rejection is determining whether or not Arnold constitutes suitable prior art
for combination with Brainard .... Applicant submits that the Examiner has
reconstructed Applicant's invention 'only with the benefit of hindsight'."
App. Br. 7. Further, "Arnold is unconcerned with and provides no teaching
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regarding the generation of personalized authorization codes" (App.
Br. 7-8), and "provides no teaching of a solution to a problem addressed by
Applicant's invention .... [which] is not directed to the delivery of digital
products." App. Br. 8. "Rather, Applicant's invention is directed to the
generating personalized authorization codes and Arnold provides no
teaching regarding such a problem." App. Br. 9.
In the Answer, the Examiner finds:
In this case, both Brainard and Arnold are directed to protection
of user assets by use of cryptography. Hence, they are both in
the inventor's field of endeavor. Furthermore, even if Brainard
and Arnold were found not to be within the field of the
inventor's endeavor, both Brainard and Arnold generate a code
to protect user assets. Hence, they are both directed to a
problem in which the inventor is involved.
Ans. 5-6.
Appellants' arguments focus on whether the prior art references are
analogous. A rejection under 35 U.S.C. § 103 cannot be based on non-
analogous art. Innovention Toys, LLC, v. MGA Entm 't, Inc., 637 F.3d 1314,
1321 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In
re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Art is analogous when it is:
( 1) from the same field of endeavor as the claimed invention; or
(2) reasonably pertinent to the particular problem faced by the inventor, if
the art is not from the same field of endeavor. Bigio, 381 F.3d at 1325-26.
"The Supreme Court's decision in KSR ... directs us to construe the scope of
analogous art broadly." Wyers v. Master Lock Co., 616 F.3d 1231, 1238
(Fed. Cir. 2010). "The field of endeavor of a patent is not limited to the
specific point of novelty, the narrowest possible conception of the field, or
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Application 11/381,270
the particular focus within a given field." Unwired Planet, LLC v. Google
Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016).
According to Appellants, their claimed invention is directed to " [a]
method for provisioning a mobile device with a personalized authorization
code generating application" (Claim 1 (preamble)) and, additionally,
Appellants' disclosed embodiments and claimed invention "relate[] generally
to identity authentication. Spec. ,r 2.
We find Brainard "relates to the field of computer-based security
systems and, more particularly, to the distribution of authentication seeds."
Brainard col. 1, 11. 6-8. Furthermore, Arnold "relates generally to digital
products, and more particularly to a method and system for delivering digital
products in an on-line environment." Arnold col. 1, 11. 6-8.
We agree with the Examiner's finding that "both Brainard and Arnold
are directed to protection of user assets by use of cryptography. Hence, they
are both in the inventor's field of endeavor." Ans. 5. "Furthermore, even if
Brainard and Arnold were found not to be within the field of the inventor's
endeavor, both Brainard and Arnold generate a code to protect user assets.
Hence, they are both directed to a problem in which the inventor is
involved." Ans. 5-6. We also agree with the Examiner's alternative
analysis.
We note Appellants do not rebut the Examiner's findings and legal
conclusions by filing a Reply Brief.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
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find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 5, 6, 9, 11-14, and 17 which fall therewith. See
Claim Grouping, supra.
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 through R6 of claims 2--4, 7, 8, 10, 15, 16, 18,
and 19 under§ 103 (see App. Br. 10), we sustain the Examiner's rejection of
these claims. Arguments not made are waived. 4
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
through R6 of claims 1, 2--4, 7, 8, 10, 15, 16, 18, and 19 under 35 U.S.C.
§ I03(a) over the cited prior art combinations of record, and we sustain the
rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2--4, 7, 8, 10,
15, 16, 18, and 19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
4 Appellants merely argue, "[t]he rejections of claims 2-16, 18 and 19 are
therefore erroneous for at least the same reason(s) that the rejection of
claims 1 and 17 is erroneous." App. Br. 10.
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