MasterCard International Incorporated

Patent Trials and Appeals Board

Sep 29, 2020

2020003430 (P.T.A.B. Sep. 29, 2020)

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.
15/131,718 04/18/2016 Manoneet Kohli P02955-US-
UTIL (M01.428)
9494
125619 7590 09/29/2020
Mastercard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
KUCAB, JAMIE R
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/29/2020 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):
colabella@bmtpatent.com
martin@bmtpatent.com
szpara@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANONEET KOHLI
Appeal 2020-003430
Application 15/131,718
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, AND
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–5 and 15–19, which are all rejections
pending in the application. Appellant has canceled claims 6–14 and 20. See
Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Real Party in Interest is Mastercard International Inc. Appeal
Br. 2.
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Application 15/131,718

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STATEMENT OF THE CASE2
The claims are directed to a system and method of device profiling for
transaction scoring and loyalty promotion. See Spec. (Title). In particular,
Appellant’s embodiments disclose “an authentication service for online
transactions may perform device authentication processes based on
characteristics of a user device in regard to application programs (apps) that
are operating in the user device.” Spec. 4, ll. 3–5.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphases added to contested prior-art limitations):
1. A method comprising:
receiving current device profile data with respect to a mobile
device;
comparing the received current device profile data with stored
reference device profile data; and
making a device authentication determination with respect to
the mobile device based at least in part on a result of the
comparing step;
said received current device profile data and said stored
reference device profile data indicative of at least one
application program characteristic of the mobile device;
wherein said at least one application program
characteristic of the mobile device includes respective amounts
of power usage attributable to respective application programs.

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 8, 2019); Reply Brief (“Reply Br.,” filed April 3, 2020); Examiner’s
Answer (“Ans.,” mailed March 6, 2020); Final Office Action (“Final Act.,”
mailed July 5, 2019); and the original Specification (“Spec.,” filed
April 18, 2016).
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Application 15/131,718

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REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Spencer, III et al. (“Spencer”) US 2015/0278805 A1 Oct. 1, 2015
Desai et al. (“Desai”) US 2016/0155128 A1 June 2, 2016
Sankaranarasimhan et al.
(“Sanka”)3
US 2016/0188324 A1 June 30, 2016
REJECTIONS
R1. Claims 1, 4, 5, 15, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Spencer and Sanka.
Final Act. 4.
R2. Claims 2, 3, 16, and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Spencer, Sanka, and Desai. Final Act. 5.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 4) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness
Rejection R1 of claims 1, 4, 5, 15, 18, and 19 on the basis of representative
claim 1.
We address Rejection R2 of remaining claims 2, 3, 16, and 17, not
separately argued, infra.4

3 We adopt the Examiner’s shorthand designation of the Sankaranarasimhan
reference as “Sanka.” See generally Final Act., Ans.
4 “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
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1–5
and 15–19 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 Appellant’s
arguments. We highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
1. § 103 Rejection R1 of Claims 1, 4, 5, 15, 18, and 19
Issue 1
Appellant argues (Appeal Br. 4–6) the Examiner’s rejection of claim 1
under 35 U.S.C. § 103 as being obvious over the combination of Spencer
and Sanka is in error. Appellant’s contentions present us with the following
issues:
(1) Did the Examiner err in finding the cited prior art combination
teaches or suggests “wherein said at least one application program
characteristic of the mobile device includes respective amounts of power

patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does 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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usage attributable to respective application programs,” as recited in
claim 1?
(2) Did the Examiner err in combining the prior art in the manner
suggested because Sanka is allegedly non-analogous art?
Principles of Law
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
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Application 15/131,718

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than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“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. at 418).
“Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011).
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Analysis
Issue (1): All Limitations are Taught or Suggested
The Examiner finds the combination of Spencer and Sanka teaches or
suggests the contested limitations in paragraph 8 of Spencer and paragraph
99 of Sanka. Final Act. 4–5.
Appellant contends, “While Spencer teaches a number of different
data elements making up a hardware profile that is used for device
authentication, Spencer fails to teach or suggest using application power
usage as a hardware profile data element for purposes of device
authentication.” Appeal Br. 5.
The Examiner responds to this argument in the Answer by explaining
that Spencer’s teaching of “frequency of use of applications” from which
power usage can be estimated combined with Sanka’s teaching of the
application state of information also including battery usage of the
application teaches the disputed limitation. Ans. 3.
We agree with the Examiner’s finding that the combined teachings of
Spencer and Sanka at least suggest the contested limitations of claim 1
because Spencer’s teaching of a hardware profile including frequency of use
of applications, which is indicative of battery usage and drain, combined
with Sanka’s application state information, that includes information on the
battery usage of the application, teach or at least suggest the disputed
limitation. See Spencer ¶ 8, Sanka ¶ 99.
Issue (2): Sankaranarasimhan is Analogous Art
The Examiner relies upon Sanka’s application state information
including battery usage of the application for teaching or suggesting “at least
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one application program characteristic of the mobile device includes . . .
power usage attributable to . . . application programs.” Final Act. 5.
Therefore, “it would have been obvious to one of ordinary skill in the art . . .
to modify Spencer to include the application power usage of
Sankaranarasimhan in order to achieve the predictable result of a more
resilient digital fingerprinting system capable of dealing with a wider variety
of potential attacks.” Id.
Appellant’s argument focuses on whether the prior art references are
analogous. See Ans. 3 for the Examiner’s understanding of Appellant’s
argument. A rejection under 35 U.S.C. § 103 cannot be based on non-
analogous art. Innovention Toys, LLC, v. MGA Entertainment, 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. However, “[t]he 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 the particular focus within a
given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed.
Cir. 2016).
Specifically, Appellant argues, “The general subject of Sanka’s
disclosure relates to accessing configurations (also called “states”) of mobile
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applications. Sanka has nothing to do with device authentication.” Appeal
Br. 5.
We disagree with Appellant because, as found by the Examiner:
As noted by Appellant, Sanka is directed to determining
“configurations (also called ‘states’) of mobile applications”
(Brief, pg. 5). Because the instant invention is directed to the
problem of determining device identity, one of the mechanisms
for determining device identity is to determine application state,
and the Sanka reference is directed to determining application
state, the Sanka reference is reasonably pertinent to the problem
addressed by the instant invention.
Ans. 4.
Even if Appellant were correct that Sanka is not from the same field
of endeavor as Appellant’s claimed invention or Spencer, we agree with the
Examiner because Sanka at least satisfies the second prong of the Bigio test,
i.e., Sanka is reasonably pertinent to the particular problem faced by the
inventor, because Sanka provides application state information including
data on battery usage of the application. Ans. 3–4, Sanka ¶ 99.
Appellant also alleges a lack of motivation to combine the references.
Appeal Br. 5.
We disagree with Appellant’s contention and further find the
Examiner’s stated motivation to combine is proper, i.e., “[i]t would have
been obvious to one having ordinary skill in the art at the time of the
invention to modify Spencer to include the application power usage of
Sankaranarasimhan in order to achieve the predictable result of a more
resilient digital fingerprinting system capable of dealing with a wider variety
of potential attacks.” Final Act. 5. The Examiner further finds:
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[A]pplication state is a useful tool in identifying user devices,
and the more of these tools employed, the more likely that the
device will be correctly identified. Or, as put in the final
rejection, “[i]t would have been obvious . . . to include the
application power usage of [Sanka] in order to achieve the
predictable result of a more resilient digital fingerprinting
system capable of dealing with a wider variety of potential
attacks.” Additionally, the primary reference uses “frequency of
use of applications” as one of its measured application states,
and using Sanka's application power usage could be seen as
substituting one known equivalent process for another, because
higher use frequency typically results in higher power usage.
Ans. 5.
We find these motivational statements meet the requirements of Kahn
and KSR. See Kahn, 441 F.3d 977 at 988; KSR, 550 U.S. at 418.
Appellant further argues the application power usage characteristic
data is functionally operative — and not nonfunctional descriptive material
as the Examiner concludes. Ans. 6, Final Act. 5. Although we need not
reach this non-dispositive issue, we are not persuaded by Appellant’s
argument because the type of this data does not affect the outcome of the
method or apparatus as claimed.
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 limitations of claim 1, nor do we 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 4, 5, 15, 18, and 19 which fall therewith. See Claim Grouping, supra.
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2. § 103 Rejection R2 of Claims 2, 3, 16, and 17
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of claims 2, 3, 16, and 17 under § 103, we
sustain the Examiner’s rejection of these claims. Arguments not made are
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
and R2 of claims 1–5 and 15–19 under 35 U.S.C. § 103 over the cited prior
art combinations of record, and we sustain the rejections.
DECISION SUMMARY
Claims
Rejected
35
U.S.C
§
Basis /
References Affirmed Reversed
1, 4, 5, 15, 18,
19 103
Obviousness
Spencer, Sanka
1, 4, 5, 15, 18,
19
2, 3, 16, 17 103
Obviousness
Spencer, Sanka,
Desai
2, 3, 16, 17
Overall
Outcome 1–5, 15–19
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED