Ex Parte Nickell et al

Board of Patent Appeals and Interferences

Mar 15, 2012

11171452 (B.P.A.I. Mar. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/171,452 07/01/2005 Seth Nickell 0040.0006 6997
7590 03/15/2012
Daniel E. Ovanezian
Lowenstein Sandler PC
65 Livingston Avenue
Roseland, NJ 07068
EXAMINER
ALVESTEFFER, STEPHEN D
ART UNIT PAPER NUMBER
2171
MAIL DATE DELIVERY MODE
03/15/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte SETH NICKELL and BRYAN WILLIAM CLARK
________________

Appeal 2010-008158
Application 11/171,452
Technology Center 2100
________________

Before ELENI MANTIS MERCADER, BRADLEY W. BAUMEISTER,
and DENISE M. POTHIER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008158
Application 11/171,452

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-3 and 5-8, which stand rejected under 35 U.S.C.
§ 103(a) as obvious over McCulligh (US 6,643,784 B1; Nov. 4, 2003) in
view of Hiles (US 6,026,491; Feb. 15, 2000).
We reverse.
Pursuant to our authority under 37 C.F.R. 41.50(b), we reject
independent claim 1 under 35 U.S.C. § 101 for being directed to
non-patentable subject matter.

STATEMENT OF THE CASE
Appellants describe their invention as follows:
Methods and systems are provided to assist users with the
entry of strong passwords. The password may be considered
strong if it satisfies one or more requirements. A set of these
requirements may be selected and then presented to the user.
The requirements may be randomly selected one by one or as a
group. The requirements may also be presented to the user one
by one in a random order or in the form of a list with a random
order. As characters for the password are entered, the user may
then be notified when one or more [sic: of] the requirements
have been satisfied.
(Abstract).
Independent claim 1 is illustrative:
1. A method of creating a password, wherein the password
is subject to a set of requirements, said method comprising:
randomly selecting a first requirement from the set of
requirements;
providing the first requirement for creating the password;
receiving characters for the password;
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determining whether the characters satisfy the first
requirement;
providing information that indicates whether the
characters satisfy the first requirement; and
randomly selecting a second requirement for creating the
password from the set of requirements in response to the
characters satisfying the first requirement, wherein the second
requirement is selected independently of the first requirement.

POSITIONS AND CONTENTIONS
The Examiner finds that McCulligh discloses every limitation of
claim 1 except “McCulligh does not teach that the first and second
requirements for creating the password are randomly selected independently
from a set of requirements” (Ans. 5). The Examiner finds, though, that
“[r]andomly selecting requirements from a set of requirements was
well-known” (id.). To support this finding, the Examiner cites Hiles, which
the Examiner maintains, “teaches such random selection of requirements for
forming a password” (id. (citing col. 4, ll. 10-21)).
Appellants contend that “Hiles fails to disclose, teach, or suggest a
random selection of requirements for forming a password, and fails to cure
the deficiencies of McCulligh” (App. Br. 11). Appellants specifically assert,
inter alia, “that Hiles [instead] teaches allowing access only after a user
provides successful personalized response phrases, or passwords, to a series
of sequentially-presented challenge phrases” (Reply Br. 6).

ANALYSIS
Appellants’ arguments are persuasive. The portions of Hiles cited by
the Examiner are directed to protocols for selecting challenge phrases (e.g.,
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Ans. 10 (citing col. 4, ll. 10-21)). Challenge phrases are phrases “selected
by the user to serve as a reminder of the appropriate response” (col. 2, ll. 37-
38). This “appropriate response,” or answer to the challenge, is a “very long
password phrase[]” that allows the user to gain access to the system (col. 1,
ll. 66-67; col. 2, ll. 2-4, 10-19). The act of randomly generating challenge
phrases that serve as prompts for a user’s previously-created passwords is
not the same thing as randomly selecting requirements for creating a
password, as required by claim 1.
Accordingly, we do not sustain the Examiner’s rejection of:
(1) independent claims 1, 7, and 8, which all contain commensurate
limitations of randomly selecting a second requirement for creating a
password, or (2) claims 2, 3, 5, and 6, which depend from independent claim
1.

NEW REJECTION UNDER 35 U.S.C. § 101
Independent claim 1 is directed to a method of creating a password.
Although a method (or “process”) is one of the four patent-eligible subject
matter categories, further analysis indicates that claim 1 wholly embraces a
judicially recognized exception. See Memorandum from Andrew H.
Hirshfeld, Acting Deputy Comm’r for Patent Examination Policy, U.S.
Patent and Trademark Office, to the Technology Center Directors, New
Interim Patent Subject Matter Eligibility Examination Instructions (August
24, 2009), available at http://www.uspto.gov/web/offices/pac/dapp/opla/
2009-08-25_interim_101_instructions.pdf.
Claim 1 does not recite any computer or other machine. For example,
the claim does not recite that the steps of randomly selecting and providing
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the requirements must be performed by a computer, that the steps of
receiving characters for the password must be performed by a computer, or
that the step of determining whether the characters satisfy any requirements
must be performed by a computer. As such, claim 1 is broad enough to read
on two human beings communicating verbally, with the first person
performing all of the recited steps. For example, the first person: (1) selects
and provides through speech the requirements for creating the password and
the information that indicates whether the characters satisfy the requirements
to a second person; (2) receives the selected characters for the password
from the second person through speech; and (3) determines whether the
characters satisfy the requirements by making mental decisions based upon
some previously established set of parameters.
We, therefore, conclude that claim 1 is not tied to a particular machine
or apparatus, and claim 1 does not transform a particular article to a different
state or thing. That is, claim 1 fails the so-called “machine-or-
transformation test.” The claim, instead, wholly embraces the judicially
recognized exception of abstract ideas. Specifically, the claim is directed to
a set of mental processes and communications that can be performed solely
by a human being.
Having determined that claim 1 fails the machine-or-transformation
test, we next consider whether any additional factors indicate that claim 1 is
nonetheless patent-eligible. See Memorandum from Robert W. Bahr, Acting
Assoc. Comm’r for Patent Examination Policy, U.S. Patent and Trademark
Office, to the Patent Examining Corps, Interim Guidance for Determining
Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos
(July 27, 2010), available at
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http://www.uspto.gov/patents/law/exam/bilski_guidance_27jul2010.pdf
(including Interim Guidance for Determining Subject Matter Eligibility for
Process Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43,922 (July 27,
2010) (notice)).
We are unable to identify any additional factors that would weigh
towards eligibility. We therefore exercise our authority under 37 C.F.R.
§ 41.50(b), rejecting independent claim 1 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Although we decline to reject
every claim under our discretionary authority under 37 C.F.R. § 41.50(b),
we emphasize that our decision does not mean the remaining claims are
patent eligible under § 101. Rather, we merely leave the patentability
determination of these claims to the Examiner. See MPEP § 1213.02.

DECISION
The Examiner’s decision rejecting claims 1-3 and 5-8 is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claim 1 under 35 U.S.C. § 101.
Regulation 37 C.F.R. § 41.50(b) (2007) states that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new grounds 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
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reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

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