Ex Parte Karaki

Patent Trial and Appeal Board

Jul 31, 2018

14508706 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/508,706 10/07/2014 Mohammad Karaki
30448 7590 08/02/2018
AKERMANLLP
P.O. BOX 3188
WEST PALM BEACH, FL 33402-3188
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.
10505-4 4697
EXAMINER
WARDEN, MICHAEL J
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
ip@akerman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMMAD KARAKI
Appeal2017-003301
Application 14/508,706
Technology Center 3600
Before ERIC B. CHEN, JOSEPH P. LENTIVECH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1-20, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
Appeal2017-003301
Application 14/508, 706
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention generally relates to an online transaction
verification system. Spec. 1. Claims 1 and 14, which are illustrative of the
claimed invention, read as follows:
1. An online transaction verification system, comprising:
one or more memory units configured to:
store one or more instructions; and
store a plurality of comparison codes; and
one or more processors coupled to the memory units and
configured, upon executing the one or more instructions, to:
receive an indication that a card user is attempting
to perform an online transaction using payment card
information and a transaction device, the transaction
device being communicatively coupled to a merchant
device with which the card user is attempting to perform
the online transaction;
following reception of the indication, transmit a
challenge code configured to interrogate a card user
identification device for a first verification code, wherein
the challenge code is received by a card user verification
device communicatively coupled to the transaction device,
wherein the challenge code is re-transmitted from the card
user verification device to the card user identification
device;
following transmittal of the challenge code, receive
the first verification code from the card user identification
device, wherein the first verification code is selected, by
the card user identification device, from a plurality of
verification codes stored by the card user identification
device, wherein the first verification code is selected, by
the card user identification device, according to a first
manner of selection;
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select a first comparison code from the plurality of
comparison codes according to the first manner of
selection;
compare the first comparison code to the first
verification code from the card user identification device;
and
following a determination that the first comparison
code matches the first verification code, transmit a
verification signal configured to indicate that the online
transaction has been verified.
14. A method, comprising:
storing, by one or more processors, a plurality of
comparison codes;
receiving, by the one or more processors, an indication that
a card user is attempting to perform an online transaction using
payment card information and a transaction device, the
transaction device being communicatively coupled to a merchant
device with which the card user is attempting to perform the
online transaction;
following reception of the indication, transmitting, by the
one or more processors, a challenge code configured to
interrogate a card user identification device for a first verification
code, wherein the challenge code is received by a card user
verification device communicatively coupled to the transaction
device, wherein the challenge code is re-transmitted from the
card user verification device to the card user identification
device;
following transmittal of the challenge code, receiving, by
the one or more processors, the first verification code from the
card user identification device, wherein the first verification code
is selected, by the card user identification device, from a plurality
of verification codes stored by the card user identification device,
wherein the first verification code is selected, by the card user
identification device, according to a first manner of selection;
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selecting, by the one or more processors, a first
comparison code from the plurality of comparison codes
according to the first manner of selection;
comparing, by the one or more processors, the first
comparison code to the first verification code from the card user
identification device; and
following a determination that the first comparison code
matches the first verification code, transmitting, by the one or
more processors, a verification signal configured to indicate that
the online transaction has been verified.
References
The Examiner relies on the following prior art in rejecting the claims:
Saunders US 2009/0106157 Al
McDowell et al. US 2009/0260064 Al
Delia et al. US 2010/0100948 Al
Rejections
Apr. 23, 2009
Oct. 15, 2009
Apr. 22, 2010
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter under 35 U.S.C. § 101. Final Act. 6-7.
Claims 1, 4--8, 11-14, and 17-20 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of McDowell and
Saunders. Final Act. 8-21.
Claims 2, 3, 9, 10, 15, and 16 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over the combination of McDowell, Saunders, and
Delia. Final Act. 21-24.
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ANALYSIS
101 Rejection
Issue: Did the Examiner err in finding that claims 1-20 are directed to
judicially-excepted subject matter under 35 U.S.C. § 101?
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). In Alice,
the Supreme Court reiterated the two-step framework previously set forth in
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66,
70 (2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S. Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. The Court
acknowledged in Mayo that "all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the claims
focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery. See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). If the claims are not
directed to an abstract idea, the inquiry ends. Otherwise, the inquiry
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proceeds to the second step where the elements of the claims are considered
"individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
Turning to the first step of the analysis, the Examiner finds "[ t ]he
claims are directed to the abstract idea of verifying a user in a transaction;
which is a fundamental economic practice." Final Act. 7; see also Ans. 3.
Appellant argues the claims are not directed to an abstract idea because even
if the claims are directed to verifying a user in a transaction, "this is not an
abstract idea at all" and the Examiner "does not provide any explanation or
reasoning for how 'verifying a user in a transaction' is allegedly a
'fundamental economic practice' that qualifies as an abstract idea." App.
Br. 17. Appellant further argues "'verifying a user in a transaction' does not
even appear to meet the USPTO' s explanation of a fundamental economic
practice." App. Br. 18 ( citing July 2015 Update on Subject Matter
Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015)). According to Appellant,
the claims, instead, are "similar to the type of claim that the USPTO has
found to not be an abstract idea." App. Br. 19 (citing Examples: Abstract
Ideas, United States Patent and Trademark Office 4--6 (Jan. 27, 2015)). In
particular, Appellant argues the claims "address the business challenge of
preventing fraud in online transactions, which is particular to the Internet (or
other communication networks)" and "the claimed solution is necessarily
rooted in computer technology to overcome a problem specifically arising in
the realm of computer networks." App. Br. 20.
We do not find Appellant's arguments persuasive. We agree with the
Examiner that the claims are directed to verifying a user in a transaction,
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which is both a fundamental economic practice and a method of organizing
human activity. As noted by Appellant "if a customer wants to use a credit
card to purchase a product in a store, the cashier simply needs to ask the
customer for their identification" and if the identification is insufficient to
verify the customer, the transaction is denied. App. Br. 22. Verifying a user
in a transaction is similar to concepts found to be within the realm of
abstract ideas such as verifying credit card transactions in CyberSource (see
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011) ), collecting and analyzing information to detect and notify of misuses
in Fair Warning (see Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093-94 (Fed. Cir. 2016)), and guaranteeing transactions in buySAFE
(see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)).
That the claims require the use of a computer and for the transaction to be an
"online transaction" does not cause the claims to be directed to something
other than an abstract idea. See CyberSource Corp., 654 F.3d at 1370
(computer-implemented system for "verifying the validity of a credit card
transaction[] over the Internet" was patent-ineligible).
Additionally, we note that in performing the verification, the claims
require steps related to the collection and analysis of data and outputting a
result based on the collection and analysis. Claim 1, for example, recites:
(1) "stor[ing] one or more instructions" and "plurality of comparison codes;"
(2) "receiv[ing] an indication that a card user is attempting to perform an
online transaction;" (3) "transmit[ting] a challenge code;" (4) "receiv[ing]
the first verification code from the card user identification device;" (5)
"select[ing] a first comparison code;" ( 6) "compar[ing] the first comparison
code to the first verification code;" and (7) "following a determination that
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the first comparison code matches the first verification code, transmit[ting] a
verification signal." Our reviewing court has repeatedly held that
information collection and analysis, including when limited to particular
content, is within the realm of abstract ideas. See, e.g., Elec. Power Grp.,
830 F.3d at 1353 (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent-ineligible concept"); Fair Warning, 839 F.3d
at 1093-94 ( claims directed to collecting information and analyzing it
according to certain rules were directed to an abstract idea); CyberSource,
654 F.3d at 1370 (computer-implemented system for "verifying the validity
of a credit card transaction[] over the Internet" was patent-ineligible).
Appellant's argument that the claims "address the business challenge
of preventing fraud in online transactions, which is particular to the Internet
(or other communication networks)" and, therefore, "the claimed solution is
necessarily rooted in computer technology to overcome a problem
specifically arising in the realm of computer networks" (App. Br. 20) is not
persuasive because the mere application of an abstract idea on a computer
system does not make a claimed invention patentable. See Alice Corp., 134
S. Ct. at 2358 ("[I]f a patent's recitation of a computer amounts to a mere
instruction to 'implemen[ t ]' an abstract idea 'on ... a computer,' []that
addition cannot impart patent eligibility.") ( citations omitted). Contrary to
Appellant's arguments, neither the problem nor the solution here are rooted
in computer technology. Appellant's Specification does not describe any
new or unique computer hardware or software, and the law is clear that
simply programming a computer to perform what would otherwise be an
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abstract idea is not sufficient to impart patent eligibility. See Alice, 134 S.
Ct. at 2359.
Turning to the second step of the analysis, we agree with the
Examiner that the claim limitations, when viewed individually and as a
whole, do not transform the claim to something significantly more than an
abstract idea. Final Act. 7; Ans. 6-9.
Appellant argues the claimed method for providing fraud prevention
in an online transaction "is clearly significantly more than the alleged
abstract idea of 'verifying a user in a transaction."' App. Br. 26. Appellant
argues the claims recite limitations that would not be included in "the
alleged abstract idea of 'verifying a user in a transaction"' and, therefore, "is
so vastly different from the generic idea of 'verifying a user in a
transaction,' that there is absolutely no risk of Independent Claim 1
preempting the use of 'verifying a user in a transaction."' App. Br. 26.
We do not find Appellant's arguments persuasive. Claims that are
otherwise directed to patent-ineligible subject matter cannot be saved by
arguing the absence of complete preemption. Return Mail, Inc. v. US.
Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017). "While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility." Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot." Id.
Appellant further contends the Examiner's findings regarding the
claims not reciting significantly more than the abstract idea are improper.
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App. Br. 27 ( citing July 2015 Update on Subject Matter Eligibility, 80 Fed.
Reg. 45,429 (July 30, 2015)). Appellant argues the Examiner's findings are
conclusory and improperly fail to explain why the additional elements
recited in the claims do not amount to significantly more than the abstract
idea. App. Br. 27. We disagree.
Appellant essentially argues the Examiner's reliance upon conclusory
statements is insufficient to carry the burden of producing a prima facie case
of subject matter ineligibility. See App. Br. 27. The Federal Circuit has
repeatedly noted that "the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production." Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The court has, thus, held that the Office carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, "together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
All that is required of the Office is that it set forth the statutory basis
of the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990) (noting that section 132 "is violated when a
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection"). Appellant's arguments
regarding the Examiner's findings evidence that the rejection was not so
uninformative that it prevented Appellant from recognizing and seeking to
counter the grounds for rejection.
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Appellant contends the claims recite limitations that are significantly
more than the abstract idea because the recited limitations provide a protocol
for making online payment systems more secure and "[ t ]his ability to make
online payment systems more secure qualifies as a patent-eligible
'improvement to another technology or technical field."' App. Br. 27-28
(bracketing in original removed).
We do not find Appellant's contention persuasive because Appellant's
argument overlooks that the argued "solution" must be a technical solution.
Appellant's argument does not explain how either the problem or solution
are technical. Unlike the claims at issue in cases such as DDR (see DDR,
773 F.3d at 1257 (claims at issue are "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks")) and Enfish (see Enfish, 822 F.3d at 1339 ( claims at
issue are "directed to a specific implementation of a solution to a problem in
the software arts")), the claims here merely address a business challenge (see
App. Br. 20) through the use of generic, computer-related recitations that do
not add meaningful limitations to steps otherwise directed to an abstract
idea.
Appellant contends the claims recite specific limitations other than
what is well-understood, routine, and conventional in the field or add
unconventional steps that confine the claims to a particular useful
application. App. Br. 28. Appellant argues the recited limitations "do not
appear to be old and well known, as they do not appear to fall into any of the
categories prescribed by the courts and the USPTO as being old and well
known." App. Br. 29 (citing July 2015 Update on Subject Matter Eligibility,
80 Fed. Reg. 45,429). Appellant further argues "even if one or more of the
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limitations could be construed as 'old and well known' ... such a situation
would not be dispositive of patent-ineligibility. App. Br. 29. Appellant
argues "similar to DDR Holdings, Independent Claim 1 addresses the
business challenge of preventing fraud in online transactions, which is
particular to the Internet ( or other communication networks)" and "like DDR
Holdings, Independent Claim 1 'do[es] not broadly and generically claim
'use of the Internet' to perform an abstract business practice (with
insignificant added activity)."' App. Br. 29 (citing DDR, 773 F.3d at 1258).
We do not find Appellant's arguments persuasive. The majority of
steps recited in Appellant's claims are directed to transmitting and receiving
data and do not rescue the claims. See buySAFE, 765 F.3d at 1355 ("That a
computer receives and sends information over a network-with no further
specification-is not even arguably inventive"); see RecogniCorp, LLC v.
Nintendo Co., Ltd., 855 F.3d 1322, 1327 ("Adding one abstract idea (math)
to another abstract idea ( encoding and decoding) does not render the claim
non-abstract."). While the claims require that the verification code and the
comparison code are selected "according to a first manner of selection," this
does not cause the claims to be directed to patent-eligible subject matter.
See FairWarning, 839 F.3d at 1095. Additionally, the recitation of one or
more memory units, one or more processors, a transaction device, a
merchant device, and a card user verification device in claims 1, 8, and 14
merely recite a generic computer components used in their routine and
conventional ways to implement the abstract idea.
To the extent Appellant argues the claims are directed to novel and
nonobvious subject matter and, therefore, necessarily entail an inventive
concept that transforms the claims to significantly more than the abstract
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idea, we disagree. Although the second step in the Alice/Mayo framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or non-obviousness, but rather a search for "'an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 134 S. Ct. at 2355. A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 132 S. Ct. at 1304.
Because Appellant's claims 1-20 are directed to a patent-ineligible
abstract concept, and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
these claims under 35 U.S.C. § 101.
103 Rejections
CLAIM 14
Issue: Did the Examiner err in finding the combination of McDowell and
Saunders teaches or suggests "wherein the first verification code is selected,
by the card user identification device, according to a first manner of
selection" and "selecting, by the one or more processors, a first comparison
code from the plurality of comparison codes according to the first manner of
selection," as recited in claim 14?
Appellant contends the combination of McDowell and Saunders fails
to teach or suggest the disputed limitations because McDowell, upon which
the Examiner relies, does not teach or suggest selecting a verification code
and a comparison code according to a same manner of selection, as required
by claim 14. App. Br. 30-36. In particular, Appellant argues:
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[ A ]lthough McDowell discloses that the "first
authorization key" is retrieved and compared to the "second
authorization key," McDowell never discloses how this relied-
upon "second authorization key" is selected, let alone that it is
selected according to the same "first manner of selection" as the
"first authorization key." In particular, all that McDowell
discloses is that a comparison occurs. There is no explanation at
all for how the "second authorization key" is selected for that
comparison ( or if it is even selected at all). It would be improper
to assume that such a selection occurs according to the same
"first manner of selection" as the "first authorization key," as is
required by Independent Claim 14.
App. Br. 33. Appellant further argues "the automatic or permission-based
retrieval of [the first authorization key, as taught by] McDowell is not a 'first
manner of selection"' because "the automatic or permission-based retrieval
would merely allow a key to be retrieved" and would not "determine how 1
key out of the 5 different keys is selected for retrieval." App. Br. 34--35.
Alternatively, Appellant argues "even if the automatic or permission-based
retrieval of McDowell could be considered a 'first manner of selection,"'
this manner of selection "only applies to the 'first authorization key' of
McDowell (i.e., the Final Office Action's alleged 'first verification code'),
not the 'second authorization key' of McDowell (i.e., the Final Office
Action's alleged 'first comparison code')." App. Br. 35 (citing McDowell
,r,r 80-81 ).
We do not find Appellant's arguments persuasive. During
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification. In re Prater, 415
F.2d 1393, 1404--05 (CCPA 1969). "Construing claims broadly during
prosecution is not unfair to the applicant ... because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage." In
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re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Appellant's Specification provides examples of manners of selecting a
verification code including:
[S]equentially rotating through each of the verification
codes 114 (e.g., rotating from a first code to a second code), by
skipping over a predefined number of the verification codes 114
(e.g., skipping from the first code to the fifth code), by selecting
a position of one of the verification codes 114 ( e.g., selecting the
code positioned in column five, row ten), any other manner of
selecting one of the verification codes 114 according to a
predefined manner based on verification management
application 46b, or any combination of the preceding.
Spec. p. 26, 11. 5-11 (emphasis added). As such, we agree with the
Examiner that the broadest reasonable interpretation of "according to a first
manner of selection," consistent with the Specification, includes
electronically selecting the code and selecting the appropriate code.
Ans. 10. The Examiner finds, and we agree, McDowell teaches retrieving a
device authorization key and comparing it to a stored device authorization
key. Ans. 10 ( citing McDowell ,r 80). Based on the broadest reasonable
interpretation of "according to a first manner of selection," we agree with the
Examiner that McDowell's teaching of electronically obtaining both device
authorization keys teaches or suggests the disputed limitations.
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 1 and claims 2-14 and 16-20, which are not separately argued with
particularity. See App. Br. 36.
CLAIM 15
Issue: Is the combination of McDowell, Saunders, and Delia proper?
Claim 15 depends from claim 14 and recites:
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in accordance with the first manner of selection, the first
comparison code is selected, by the one or more processors, by
sequentially rotating through the plurality of comparison codes;
and
in accordance with the first manner of selection ner [sic],
the first verification code is selected, by the card user
identification device, by sequentially rotating through the
plurality of verification codes.
App. Br. A-7 (Claims App'x.). The Examiner finds Delia teaches "selecting
a password by sequentially rotating through a plurality of passwords." Final
Act. 22 (citing Delia ,r,r 39-40). The Examiner finds:
It would have been obvious to one of ordinary skill in the
art at the time of filing to include in the selecting of a code in
McDowell the ability to sequentially rotate through a list of codes
as taught by Delia since this would increase security. Since the
claimed invention is merely a combination of old elements, and
in the combination each element would have performed the same
function as it did separately, one of ordinary skill in the art would
have recognized that the results of the combination were
predictable.
Final Act. 22-23. Additionally, the Examiner finds one of ordinary skill in
the art would have been motivated to combine the teachings of the cited
references because "going through a list of codes eliminates the need to
create a new code every time a transaction occurs." Final Act. 23.
Appellant contends the combination of McDowell, Saunders, and
Delia is improper. App. Br. 36-39. Appellant argues modifying the
teachings of McDowell to include sequentially rotating through a plurality of
passwords, as taught by Delia, "would not make any sense, and is therefore
improper" (App. Br. 36) because "the purchaser of McDowell would no long
have any control over what payment method was used to conduct the
transaction" (App. Br. 37). Appellant argues the modification
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[W]ould even render McDowell unsatisfactory for its
intended purpose ( as it would prevent the customer from using
the credit card that the customer desires), and would also change
the principle of operation of McDowell ( as it would force
McDowell to rotate to a different credit card even when the
system could just select the credit card desired by the customer).
App. Br. 37-38.
We are not persuaded by Appellant's arguments, which are premised
on a "physical" or "bodily" incorporation of limitations of one reference into
the other. However, this is not the standard. See In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review."). The relevant inquiry is whether the claimed subject matter would
have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413,425
(CCP A 1981 ). Rather than express obviousness as the physical
incorporation of a structure from one reference into the structure of another
reference, the prior art should be viewed as a combination of teachings from
different sources, and the use of those teachings by one of ordinary skill in
the art. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007) (the
conclusion of obviousness can be based on the interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art.)
Here, the Examiner finds Delia teaches a list of passwords and that
passwords within the list may be automatically selected by sequentially
rotating through the list of passwords. Ans. 11. The Examiner finds:
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If one of ordinary skill in the art where to apply this
teaching to McDowell, then the sequential rotation of codes as
taught by Delia could be used as the manner of selection. The
device authorization key would be a list of sequentially rotating
passwords, and the corresponding stored device authorization
key would also be the same list of sequentially rotating
passwords.
Ans. 11-12.
We find these teachings to be properly combinable. "Common sense
teaches ... that familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle" since the
skilled artisan is "a person of ordinary creativity, not an automaton." KSR,
550 U.S. at 420-21. We further find that the Examiner has articulated how
the claimed features are met by the proposed combination of the reference
teachings with some rational underpinning, consistent with the guidelines
stated in KSR. See Final Act. 22. Appellant has not provided persuasive
evidence that combining such teachings was "uniquely challenging or
difficult for one of ordinary skill in the art," or that such a combination
"represented an unobvious step over the prior art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 15.
DECISION
We affirm the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 101.
18
Appeal2017-003301
Application 14/508, 706
We affirm the Examiner's rejections of claims 1-20 under 35 U.S.C.
§ 103(a).
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).
AFFIRMED
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