Ex Parte Singhal

Patent Trial and Appeal Board

Mar 29, 2016

11503825 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
111503,825
103550 7590
Tara Chand Sighal
P.O. Box 5075
Torrance, CA 90510
FILING DATE FIRST NAMED INVENTOR
08/13/2006 Tara Chand Singhal
03/30/2016
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.
11195.79 2707
EXAMINER
D AGOSTA, STEPHEN M
ART UNIT PAPER NUMBER
2643
MAILDATE DELIVERY MODE
03/30/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte TARA CHAND SINGHAL
Appeal2014-004011
Application 11/503,825
Technology Center 2600
Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-7, 10-13, and 16-24. Claims 8, 9,
14, and 15 have been canceled. See App. Br. 30-31 (Claims App'x). We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-004011
Application I 1/503,825
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention generally relates to two-factor remote user
authentication that does not use a security token and uses certain features of
a telephone network. Spec. I. Claims I 0, I2, and 2 I are independent claims
and read as follows:
I 0. A remote user authentication system comprising:
a. an authentication server that is used for authenticating
remote users to a business computer network has an interface A
with a telephone network;
b. the authentication server also has an Interface B with a
private communication line with a cellular telephone network of
a cellular wireless carrier, which verifies caller id of authorized
callers to the authentication server, and the authentication
server;
c. the authentication server has different methods of
authentication A and B respectively depending upon which
interface A or B a remote user connection authentication
request originated from.
I2. A method for a remote user authentication system
comprising the steps:
a. setting up an interface between an authentication server
that is used for authenticating remote users to a business
computer network and a telephone network for receiving
telephone calls on the interface and the server prompting by an
interactive voice response system for entry of a PIN-I;
b. verifying PIN-I in an authentication database and
delivering a message of an "to hang up now" otherwise a
message of "an unauthorized call";
c. calling back by the system on a caller id that is present
for this PIN-I in the database immediately after step (b );
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d. prompting for entry of a PfN-2, a secret number, and
checking it in database to authenticate the remote user.
21. A cellular telephone network providing enhanced remote
user authentication services to their business clients from
cellular network's own clients that connect to the business's
authentication servers via their cellular telephone devices,
compnsmg:
a. the cellular telephone network establishes a private
communication line, with an assigned telephone number, to an
authentication server of a business for authenticating remote
users, the network only routs on to the assigned number callers
whose caller id can be verified within the cellular telephone
network database;
b. a call handling logic operative within the computer
systems of the cellular telephone network that receives a
plurality of telephone calls and of these plurality of received
calls screens those calls that originated from customers of its
own network and routes only those calls to the assigned
telephone number for which the network is able to verify a
caller id of the caller, wherein the caller id serves both as a user
identification and as an authentication step to the authentication
server thereby minimizing number of remote user
authentication steps.
Rejections
Claims 1-7, 10, 16, and 19-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over West et al. (US 6,538,996 Bl; issued
Mar. 25, 2003) in view of Roach, Jr. et al. (US 5,526,401; issued June 11,
1996), and (Raith (US 5,930,706; issued July 27, 1999) or Chaudhary et al.
(US 7,155,526 B2; issued Dec. 26, 2006)). Final Act. 4--11.
Claims 11 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over West in view of Roach and (Raith or Chaudhary), and
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Application 11/503,825
further in view of Cook et al. (US 6,788,770 Bl; issued Sept. 7, 2004).
Final Act. 11-13.
Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over West in view of Roach and (Raith or Chaudhary), and
further in view of Bathrick et al. (US 5,280,581; issued Jan. 18, 1994). Final
Act. 13-15.
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over West in view of Roach and (Raith or Chaudhary), and
further in view of Fraser et al. (US 5,329,589; issued July 12, 1994) and
Cook. Final Act. 15-16.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over West in view of Roach and (Raith or Chaudhary), and
further in view of Fraser. Final Act. 16.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We disagree with Appellant's
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the Final Office Action from which this appeal is taken and the
reasons set forth in the Examiner's Answer in response to Appellant's
Appeal Brief. Final Act. 2-16; Ans. 2-11. We highlight and address
specific findings and arguments for emphasis as follows.
Claims 1-7 and 19-22
Appellant argues claims 21 and 22 as a group. App. Br. 12-21; Reply
Br. 3-8. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select
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Application 11/503,825
independent claim 21 as the representative claim. Claim 22 stands or falls
together with claim 21. See id.
Issue 1 : Did the Examiner err by finding the combination of West,
Roach, and (Raith or Chaudhary) teaches or suggests the limitations recited
in claim 21?
Appellant contends the Examiner erred in rejecting claim 21 because
the Examiner fails to "understand[] the specialized art remote user
authentication as the first prong of the Graham driven obviousness enquiry is
to determine the nature and scope of the claimed subject matter." App.
Br. 19; Reply Br. 18. Appellant contends the claimed subject matter
includes several distinguishing features over the combination of applied
references. App. Br. 20; Reply Br. 19. Particularly, Appellant contends the
distinguishing characteristics include: (1) "[ t ]he claimed subject matter
minimizes the number of actions and steps a remote user needs to perform
for a two-factor remote user authentication to a remote system;" (2) the
claimed "private line" differs from "the information security industry prior
art of IP Sec tunnel;" and (3) identification and authentication via MIN/ESN
and Kc, encryption key "does not teach or make obvious the 'call handling
logic' of the claimed subject matter as performing an entirely different
function." App. Br. 20-21; Reply Br. 19--20.
Regarding the first distinguishing characteristic, Appellant contends:
Having a cell phone with a SIM card and the ability of
the remote system to ascertain that a telephone call had
originated in a cellular system and that the cellular telephone
system assures the remote system by use of a private line to the
remote system, provides assurance to the remote system that a
caller id of such a call can be relied upon to perform one or
more factors of remote user authentication protocol.
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This thereby, minimizes the number of steps a user needs
to perform for remote user authentication, as carrying and any
use of a physical card token for a "what you have" factor is
eliminated as well as user id step is also eliminated as a caller id
also functions not only as user id but at the same time also
functions as a security token.
App. Br. 20; Reply Br. 19.
We do not find Appellant's contentions persuasive. The Examiner
finds, and we agree, West teaches a corporate communication system that
includes firewall security for authenticating a user attempting to remotely
access a corporate network. Final Act. 4 (citing West, Figs. 1, 3, 6, 8, 22,
23); Ans. 5. The Examiner also finds, and we agree, West teaches accepting
an identification of a user of the remote computer. Final Act. 5 (citing West
3:1-2); Ans. 6-7. We further agree with the Examiner that Roach teaches
that a phone number (e.g. MIN (mobile identification number)) can be used
to identify a user. Ans. 7; Final Act. 5. For example, Roach teaches a
cellular radiotelephone unit transmits an identification signal, which includes
an electronic serial number (ESN), to the cellular mobile radiotelephone
(CMR) system when the cellular radio telephone unit first identifies itself to
the CMR system. Roach 6:43--49. Roach teaches determining whether the
radiotelephone is an authorized user or subscriber by looking up the unit's
telephone number, serial number, and other information supplied by the
radiotelephone to see if there is an entry in the mobile switching center's
database corresponding to that particular radiotelephone. Roach 13: 17-22.
Further, we agree with the Examiner's findings that Roach, Raith, and
Chaudhary teach determining if a user is roaming (not a customer) and
allowing or denying accessed based on that determination. Ans. 7; Final
Act. 6-7. Regarding the claimed "private line," the Examiner finds:
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[T]he concept of a "private line" is taught when one skilled
combines the network design put forth by West ( eg. [sic] only
one path exists to the corporate network through either a PSTN
link or an Internet link in figure 1 which ultimately connect to
the router/firewall as shown in figure 3, #330/#331) AND
taking the teachings that a user can be allowed/denied access as
based on them being a customer (or non-roamer) to thusly yield
that the service provider is acting as a "filtering agent" to only
allow communications to the corporate network via their
"private link". Hence while West shows a communications link
to the corporate network, it is only accessible via the ability of
the remote user to authenticate to the service provider and prove
that the[y] are a customer of that service provider and should be
allowed access.
Final Act. 7-8; see also Ans. 7. As such, we agree with the Examiner that
the combined teachings of the references teach or suggest the limitations
recited in claim 21.
Regarding Appellant's second distinguishing characteristic, Appellant
contends:
"Private line" of [the] claimed subject matter is not the same as
the information security industry prior art of IP Sec tunnel ( not
in the West) because, IP Sec tunnel is used for secure encrypted
data communication, whereas the claimed subject matter
"private line" to a business authentication server is used to
automatically identify and authenticate a caller by their verified
caller id and thus remove or does away with step of user
identification and authentication in a multi-factor remote user
authentication scheme.
App. Br. 20; Reply Br. 19.
We do not find Appellant's contentions persuasive because they are
not responsive to the Examiner's findings. As discussed supra, the
Examiner finds the combined teachings of the references teach or suggest
the claimed "private line." Appellant's contention fails to address the
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combined teachings of the references and, therefore, is unpersuasive of error.
Regarding Appellant's third distinguishing characteristic, Appellant
contends "[a] cellular network as a routine part of their security and business
operation authenticate those who connect to their wireless network ... via
MIN/ESN and Kc encryption key" and "' [ s ]creening' or filtering agent, as
[the] Examiner characterizes it, is not the same as the claimed subject matter
element (b) to a person of ordinary skill for having used very different
means for an entirely different purpose." App. Br. 20-21; Reply Br. 20.
We do not find Appellant's contentions persuasive. As discussed
supra, the Examiner finds the combined teachings of the applied references
teach or suggest the limitations recited in claim 21. Appellant offers no
persuasive explanation or reasoning as to how or why the cited portions of
the applied references fail to teach or suggest the respective limitations. See
37 CPR
§ 41.37(c)(l)(iv) ("The arguments shall explain why the examiner erred as
to each ground of rejection contested by [A ]ppellant. . . . [A ]ny arguments
or authorities not included in the appeal brief will be refused consideration
by the Board for purposes of the present appeal.") (Emphasis added.)
Moreover, arguments not made are deemed waived. See id. Cf In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of
this court to examine the claims in greater detail than argued by an
[A]ppellant, looking for nonobvious distinctions over the prior art.").
Issue 2: Did the Examiner err by combining the teachings of West in
view of Roach, and (Raith or Chaudhary)?
Appellant contends the combination of applied references is improper
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because the Examiner fails to "understand[] 'a person of ordinary skill in the
art' requirement and the 'ordinary skill person' driven requirements to be
able to combine prior art references." App. Br. 19; Reply Br. 18. Appellant
contends:
[The] Examiner misunderstands and misapplies the
Graham v. Deere obviousness analysis including KSR driven
amplification of "a person of ordinary skill in the art" driven
obviousness analysis to the claims for the following reasons.
Under the third prong of the obviousness enquiry, to be
able to combine prior art references, by "a person of ordinary
skill in the art", a teaching, suggestion or motivation in the arts
themselves is a necessary pre-requisite to be able to combine
these prior art references. Stated differently, that is, if there is
no teaching or suggestion or motivation, then a combination of
prior art references would not be combined by a person of
ordinary skill and thus would be un-obvious under this prong of
the Graham obviousness analysis. KSR amplified the definition
of that ordinary skill of a person to include common sense of
the person. However, that application of KSR or common
sense based obviousness enquiry is limited; with specific KSR
pre-conditions.
The KSR driven "common sense" enquiry is limited by
the preconditions of (i) a known problem, known in the
industry, (ii) the problem is solved by combining known parts
present in the prior art references, and (iii) the problem is
solved by combining these known parts working in known
ways. That is, for the "common sense" driven obviousness
enquiry, each of these three separate and distinct preconditions
have to be satisfied. If any of these three pre-conditions cannot
be satisfied, then the common sense enquiry cannot even begin
as it is conditioned by the presence of each of these pre-
conditions.
App. Br. 19; Reply Br. 18-19; see also App. Br. 24; Reply Br. 23.
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We do not find Appellant's contentions persuasive. We are unable to
find, and Appellant does not cite to, any authority in support of Appellant's
contention that the "common sense driven obviousness enquiry" is limited to
the three pre-conditions discussed supra. Instead, KSR instructs "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." KSR Int 'l Co.
v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Further:
[ o ]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; ... and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.
Id. at 418. Additionally:
[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 .... [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
Id. (citation and internal quotation marks omitted). The Examiner finds:
It would have been obvious to one skilled in the art at the time
of the invention to modify the combo, such that it uses caller-id
and a "private communication line"; and (i) calls that originate
in the cellular telephone network of the carrier from customers
of the cellular wireless carrier and thus have a verifiable caller
identity data in the carrier's own database and (ii) all other calls
that have originated from other telephone networks and have
been forwarded to the cellular telephone network of the carrier
for routing to customers of the wireless carrier; c. the call
handling logic then routes only those incoming calls to the
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authentication server on the private line that have originated in
its own network from its own customers and thus is able to
provide an assurance of their caller identity data to the
authentication server for the authentication server to use such
caller, to provide means for identifying only customers of that
one service provider to be pass through to the remote corporate
network for added security (prevents roamers/hackers).
Final Act. 8; see also Ans. 9-10. We find 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 in
KSR. Appellant does not present persuasive evidence that the resulting
arrangement was "uniquely challenging or difficult for one of ordinary skill
in the art" or "represented an unobvious step over the prior art." See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418-19). Accordingly, we are unpersuaded
the Examiner erred in combining the teachings of the applied references.
For the foregoing reasons; we are unpersuaded the Examiner erred in
rejecting claim 21; claim 22, which falls with claim 21; and claims 1-7, 19,
and 20, which depend from claims 21 and 22 and are not separately argued
with particularity.
Claims 10, 11, and 16-18
Issue 3: Did the Examiner err in finding the combination of West in
view of Roach and (Raith or Chaudhary) teaches or suggests the limitations
recited in claim 1 O?
Appellant contends the Examiner erred in rejecting claim 10 because:
Claim 1 O's subject matter teaches two different specific
methods for an authentication server, using telephone
connections, one exclusively with a wireless carrier with the
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ability to verify a caller id and other with any telephone network.
These two different claimed methods are not the same and
are distinguishable over the cited prior art methods of using
MIN/ESN for authenticating a wireless device to a wireless
network and using user id and password for logging into a web
server, to a person of ordinary skill in the art because, for one
claimed methods are used in the same authentication server and
whereas the prior art methods operate and are used in entirely
different domain for different purposes using entirely different
protocols.
App. Br. 21; Reply Br. 20. Appellant further contends:
[C]laim 10 is patentable over the cited prior art in any
combination, because the cited prior art to a person of ordinary
skill in the art do not teach the claimed subject matter, as the
claimed subject matter is directed to a system that require two
different methods of remote user authentication that are directed
to facilitating remote user authentication for a business client of
the telephone company.
App. Br. 21-22; Reply Br. 21.
We do not find Appellant's contentions persuasive. The Examiner
finds, and we agree, West teaches establishing multiple communication links
between a remote user and a corporate network. Final Act. 4 (citing West,
Figs. 1, 3); Ans. 5. West teaches that the multiple communication links
include a communication link established using a public switched telephone
network (PSTN) and a communication link established by coupling the
remote computer (e.g., a remote user) to a direct Internet access network.
West 5: 1-11. West teaches that the direct Internet access network can use a
cellular digital packet data (CDPD) wireless connection. West 5: 11-16.
The Examiner also finds, and we agree, West teaches a corporate
communication system that includes firewall security for authenticating a
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user attempting to remotely access the corporate network. Final Act. 4
(citing West, Figs. 1, 3, 6, 8, 22, 23); Ans. 5. The Examiner further finds,
and we agree, West teaches a user must typically interact with multiple
authentication and authorization systems requiring different passwords to
access a computer system via different networks. Ans. 6 (citing West 2:9-
19). West, therefore, teaches or suggests "an authentication server that is
used for authenticating remote users to a business computer network has an
interface A with a telephone network;" "the authentication server also has an
Interface B with a ... communication line with a cellular telephone network
of a cellular wireless carrier;" and "the authentication server has different
methods of authentication A and B respectively depending upon which
interface A or B a remote user connection authentication request originated
from." As discussed supra, the combined teachings of the references teach
or suggest "a private communication line" and "verif[ying] caller id of
authorized callers to the authentication server." As such, we are
unpersuaded the Examiner erred in finding the combination of the applied
references teaches or suggests the limitations recited in claim 10.
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 10 and claims 11 and 16-18, which depend from claim 10 and are not
separately argued with particularity.
Claims 12, 13, 23, and 24
Issue 4: Did the Examiner err by finding the combination of West in
view of Roach and (Raith or Chaudhary), and further in view of Bathrick
teaches or suggests the limitations recited in claim 12?
Appellant contends the Examiner erred in rejecting claim 12. App.
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Br. 22-24; Reply Br. 25. Appellant contends in contrast to the teachings of
the applied references
the claimed subject matter is on features of a cellular
communication network that provides enhanced remote user
authentication services to their business clients by eliminating
the step of user identification for those clients connecting to the
authentication server by using only their cell phone devices and
for which their caller id is verified within the databases of the
cellular telephone network.
App. Br. 22-23. Appellant contends "[t]he call handling logic in the cellular
telephone network of the claimed subject matter is not related or impacted
by the cellular technologies of HLR and Roaming and these play no role in
the claimed subject matter." App. Br. 23.
Appellant's contentions are similar to those discussed supra regarding
claims 10 and 21. For the reasons discussed with respect to claims 10 and
21, we are unpersuaded the Examiner erred.
Appellant contends the Examiner erred in rejecting claim 12 because
Bathrick' s "call back feature from a Host is for purposes other than for
remote user authentication, as the remote user has already been
authenticated" and "[ w ]hile Bathrick teaches the concept of call back by a
server, it does not teach or suggest using such call back to authenticate a
remote user." App. Br. 26; Reply Br. 25.
We do not find Appellant's contention persuasive. Bathrick relates to
a system for remotely accessing a host from a remote location. Bathrick,
Abstract. As found by the Examiner (Ans. 11 ), Bathrick teaches permitting
a user to remotely change a telephone number that allows the host computer
to dial the user's current location and that the user is permitted to perform
this change only after the user has been authenticated. Bathrick, Abstract;
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Fig. 2. Bathrick also teaches:
To protect a host computer system from outside intruders
using a dial-in modem attached thereto, the host computer system
may require users to use a call-back procedure. A typical
conventional call-back procedure works as follows. A remote
user of the host computer system registers a remote telephone
number with the system administrator. This remote telephone
number is one where the remote computer is located. Once the
user is at the remote location, and after he signs on, the user
provides a user identification code and password. Then, the host
computer system will call back to the user at the registered phone
number for further processing.
Bathrick 1: 13-25. Bathrick, therefore, teaches or suggests using the call-
back procedure to authenticate a remote user. As such, we are unpersuaded
the Examiner erred.
Accordingly, we are unpersuaded the Examiner erred in rejecting
claim 12 and claims 13, 23, and 24, which depend from claim 12 and are not
separately argued with particularity.
DECISION
We affirm the Examiner's rejections of claims 1-7, 10-13, and 16-24
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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