Ex Parte Petrone et al

Patent Trials and Appeals Board

Oct 31, 2018

12870174 - (D) (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/870,174 08/27/2010
27571 7590
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
11/02/2018
FIRST NAMED INVENTOR
James F. Petrone
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.
6857-11301 9305
EXAMINER
KIM,TAEW
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
patents@ascendalaw.com
tarek.fahmi@ascendalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES F. PETRONE and MARKS. MERKOW
Appeal2017-003396
Application 12/870, 174
Technology Center 2800
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
JULIA HEANEY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
September 23, 2015 decision finally rejecting claims 1, 2, 6, 9, 14, and 17-
31 ("Final Act."). We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We affirm.
1 III Holdings 1, LLC is identified as the real party in interest (Appeal Br. 3).
Appeal2017-003396
Application 12/870, 174
CLAIMED SUBJECT MATTER
Appellants' disclosure relates to authenticating a requestor using a
previously-stored biometric print (Abstract). Records are stored in a
database, where each record contains a previously-stored biometric print
corresponding to an individual and is disassociated from the identity of the
individual (id.). An identifier and a biometric sample are requested from the
requestor, and the identifier is then used to locate one of the plurality of
records corresponding to the requestor (id.). The requestor is authenticated
if the biometric sample matches the previously-stored biometric print (id.).
Details of the claimed invention are set forth in representative claim 1,
which is reproduced below from the Claims Appendix to the Appeal Brief
(emphasis added):
1. An article of manufacture including a non-transitory
computer readable medium having instructions stored thereon
that, in response to execution by a computing device, cause the
computing device to perform operations comprising:
determining whether to anonymously authorize a
transaction request from an individual, wherein the determining
includes:
receiving the transaction request;
receiving an encrypted identifier associated with the
transaction request;
matching the encrypted identifier with a record of a
plurality of records, wherein the record does not include
information usable to identify the individual;
determining a biometric print associated with the record;
receiving a biometric sample associated with the
transaction request; and
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Application 12/870, 174
determining whether to anonymously authenticate the
transaction request based on whether the biometric sample
matches the biometric print.
REJECTIONS
I. Claims 1, 2, 6, 9, 17, 19-26, 30, and 31 are rejected under
35 U.S.C. § I03(a) as unpatentable over Wrage2 in view ofBarr. 3
II. Claim 14 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Wrage modified by Barr in view of Gennaro. 4
III. Claim 18 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Wrage modified by Barr in view of Oh. 5
IV. Claim 21 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Wrage modified by Barr in view of Gennaro.
V. Claims 27-29 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Wrage modified by Barr in view of Voltmer. 6
DISCUSSION
Appellants argue all of the claims together, stating that claims 2, 6, 9,
14, and 17-31 will stand or fall with claim 1. Accordingly, we focus our
discussion on the rejection of claim 1 over Wrage in view of Barr.
The Examiner finds that Wrage discloses each limitation of claim 1,
except that Wrage does not disclose that (1) the authorization and the
2 Wrage, US 2006/0177106 Al, published August 10, 2006.
3 Barr et al., US 2004/0039914 Al, published February 26, 2004.
4 Gennaro et al., US 6,317,834 Bl, issued November 13, 2001.
5 Oh et al., US 2006/0090079 Al, published April 27, 2006.
6 Voltmer et al., US 2002/0112177 Al, published August 15, 2002.
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Application 12/870, 174
authentication are anonymous, (2) the identifier is an encrypted identifier,
and (3) the record does not include information usable to identify the
individual (Final Act. 2-3). The Examiner further finds that Barr discloses
that its authorization and authentication processes are anonymous (Final Act.
3--4 ). The Examiner determines that it would have been obvious to
incorporate Barr's teachings into Wrage's device in order to secure the
authorization credential from being used by an unauthorized person (Final
Act. 4).
Appellants make four principal arguments seeking reversal of the
rejection: (1) neither Wrage nor Barr teaches or suggests the "transaction
request" limitations of claim l; (2) the Examiner has not articulated a proper
motivation to combine the references, and so no prima facie case of
obviousness has been established; (3) the proposed combination would
render Wrage unsatisfactory for its intended purpose; and (4) the proposed
combination would impermissibly change the principle of operation of
Wrage (Appeal Br. 9).
Argument (1). The Examiner finds that Wrage discloses the
"transaction request" recited in claim 1 (Final Act. 2-3). However,
Appellants argue that the recited "transaction request" is not disclosed in
Wrage (Appeal Br. 10-11). The Examiner responds by finding that Wrage's
disclosure of presenting an identification card to initiate steps of authorizing
a transaction corresponds to the claimed "transaction request" (Ans. 5, citing
Wrage ,r,r 36 and 55). Ultimately, Appellants do not challenge this finding
and, therefore, fail to show reversible error in it. Accordingly, Argument (1)
is not persuasive of reversible error in the rejection.
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Application 12/870, 174
Argument (2). Appellants acknowledge that there is no requirement
that an express written motivation to combine the prior references be found
in the references themselves, but correctly state that the motivation to
combine the references should be explicitly articulated by the Examiner
(Appeal Br. 12). Appellants argue the Examiner's reasoning that a person of
skill in the art would have combined the teachings of the references "in order
to secure the authorization credential from being used by an unauthorized
person" is too conclusory to satisfy the requirements of an obviousness
rejection (Appeal Br. 12-13).
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR, 550 U.S. 398, 418 (2007). In this instance, the Examiner
has explained that the reason to have combined the references would have
been to prevent the unauthorized use of an authorization credential. This
explanation is sufficient, as preventing unauthorized use of a credential is
plainly a desirable outcome. Although Appellants argue that the Examiner
failed to make additional findings as to why preventing unauthorized use of
credentials is important (Appeal Br. 13), in this instance such subsidiary
findings are not required, in our judgment.
Arguments (3) and (4). Appellants argue that Wrage teaches that
comparing the captured live fingerprint with the biometric template stored in
the database allows confirmation of the identity of the bearer to the
identification card, and that after such confirmation the personal information
in the stored database record is made available (Appeal Br. 14, citing Wrage,
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,r 56). According to Appellants, Wrage teaches storing personal information
with the biometric identification to allow for identification of a person
bearing the identification card (Appeal Br. 14--15). Therefore, Appellants
contend, a system which prevents identification of the individual bearing the
card would frustrate the purpose of Wrage's invention (Appeal Br. 15). This
argument is not persuasive, essentially for the reasons set forth by the
Examiner (Ans. 3--4). Specifically, as set forth by the Examiner, the
combination of Barr and Wrage provides a system in which identification of
the user is made more complicated (i.e. there is an additional step required),
but does not prevent such identification. Accordingly, the proposed
combination would not have rendered Wrage unsuitable for its intended
purpose. Moreover, the proposed combination would not have changed the
principal of operation of Wrage because, as explained by the Examiner (Ans.
3--4), Barr's teachings as combined with Wrage provide a system which
enhances Wrage's purpose of safeguarding a user's personal information.
Accordingly, we do not find Appellants' arguments persuasive of
reversible error.
CONCLUSION
We AFFIRM the rejection of claims 1, 2, 6, 9, 17, 19-26, 30, and 31
under 35 U.S.C. § 103(a) as unpatentable over Wrage in view of Barr.
We AFFIRM the rejection of claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Wrage modified by Barr in view of Gennaro.
We AFFIRM the rejection of claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Wrage modified by Barr in view of Oh.
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We AFFIRM the rejection of claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Wrage modified by Barr in view of Gennaro.
We AFFIRM the rejection of claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Wrage modified by Barr in view of Voltmer.
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).
AFFIRMED
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