Proxense, LLC

Patent Trials and Appeals Board

Mar 22, 2022

2021000645 (P.T.A.B. Mar. 22, 2022)

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. 16/551,243 08/26/2019 John J. Giobbi 10001-07708 US 9138 89194 7590 03/22/2022 Patent Law Works/Proxense Greg Sueoka 310 East 4500 South, Suite 400 Salt Lake City, UT 84107 EXAMINER VU, PHY ANH TRAN ART UNIT PAPER NUMBER 2438 NOTIFICATION DATE DELIVERY MODE 03/22/2022 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): docketing@patentlawworks.net patents@patentlawworks.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN J. GIOBBI ___________ Appeal 2021-000645 Application 16/551,243 Technology Center 2400 ____________ Before CARL W. WHITEHEAD JR., MINN CHUNG and DAVID J. CUTITTA II, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 is appealing the final rejection of claims 1-20 under 35 U.S.C. § 134(a). See Appeal Brief 5. Claims 1 and 12 are independent. We have jurisdiction under 35 U.S.C. § 6(b). 1 Rather than reiterate Appellant’s arguments and the Examiner’s determinations, we refer to the Appeal Brief (filed August 6, 2020), the Final Action (mailed April 9, 2020) and the Answer (mailed September 1, 2020), for the respective details. 2 Appellant refers to “applicant” as defined in 37 C.F.R. §1.42(a) (2022). (“The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.”). Appellant identifies Proxense, LLC as the real party in interest. Appeal Brief 3. Appeal 2021-000645 Application 16/551,243 2 We affirm. Introduction According to Appellant, “The present invention relates generally to computerized authentication, and more specifically, to an authentication responsive to biometric verification of a user being authenticated.” Specification ¶ 3. Representative Claim3 (disputed limitations emphasized) 1. A method comprising: storing, in a storage element of a user device, fingerprint data of a legitimate user, the user device having an identifier code uniquely identifying the user device; responsive to receiving a request for a fingerprint verification of the legitimate user, capturing scan data from a fingerprint scan using a biometric scanner of the user device; comparing the scan data to the fingerprint data to determine whether the scan data matches the fingerprint data; responsive to a determination that the scan data matches the fingerprint data, establishing a secure communication link between the user device and a reader device proximate to the user device for sending the identifier code uniquely identifying the user device from the user device to the reader device, the reader device sending the identifier code to a trusted authority server for authenticating the identifier code; and 3 Appellant does not argue independent claims 1 or 12 individually. See Appeal Brief 22 (“With respect to independent claim 12, while differing from claim 1 in scope and statutory class, claim 12 patentably distinguishes over the proposed combination of the cited portions of Kenneth and Wheeler for at least reasons analogous to those discussed above regarding claim 1.”). Accordingly, we select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone.”). Appeal 2021-000645 Application 16/551,243 3 responsive to the trusted authority server successfully authenticating the identifier code, receiving a communication from the reader device that a transaction is allowed to complete. References (Reference citation is to the first named inventor only.) Name Reference Date Hsu US 6,041,410 March 21, 2000 Wheeler US 2002/0023217 A1 February 21, 2002 Li WO 01/35334 A1 May 17, 2001 Rejections on Appeal4 Claims 1-4, 6-15 and 17-20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Li and Wheeler. Final Action 4-9. Claims 5 and 16 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Li, Wheeler and Hsu. Final Action 9-10. ANALYSIS Appellant contends: While [Li] describes that “the card transmits a signal corresponding to the stored account number . . . to the transaction machine” this is however insufficient to suggest “... the reader device sending the identifier code to a trusted authority server for authenticating the identifier code” much less “responsive to the trusted authority server successfully authenticating the identifier code, receiving a communication from the reader device that a transaction is allowed to complete” as recited by claim 1. 4 For the purpose of this decision, we use Applicant’s surname Li when referring to the WO 01/35334 A1 reference instead of Kenneth. See Final Action, Answer and Appeal Brief. Appeal 2021-000645 Application 16/551,243 4 Appeal Brief 16 (underlined emphasis added); see Li page 7, lines 10-13. The Examiner finds that Li discloses: [T]he reader device sending the identifier code to a trusted authority server for authenticating the identifier code (page 7, lines 5-10, page 8, lines 11-20, account number is sent from the transaction machine to the initialization machine at the bank. It is obvious that the account number is then verified for authenticity by the initialization machine at the bank to ensure the account number is correct). Final Action 5 (emphasis omitted). The Examiner further finds that although Li “does not explicitly disclose the identifier code uniquely identifying the user device,” “Wheeler discloses an account number that uniquely identifies a device ([0125], public key is indexed as account number which uniquely identifies a device).” Final Action 5. Appellant argues that Li “as a whole merely suggests checking the authenticity of the fingerprint for transmitting” a corresponding signal for the stored account number so that the transaction may continue however “[t]here is nothing about verifying the account number ‘for authenticity by the initialization machine at the bank to ensure the account number is correct’ as asserted by the Examiner on page 5 of the Final Office Action.” Appeal Brief 16. Appellant’s argument is unpersuasive of Examiner error. The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art. See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981). Wheeler discloses, “the Security Profile of each device is indexed in the secure database to the public key of the device and is retrievable from the secure database based on Appeal 2021-000645 Application 16/551,243 5 the public key.” Wheeler ¶ 125. Wheeler also discloses, “Upon receipt of an EC [electronic communication] including the digital signature and device identifier, a recipient then obtains the suspect device public key by cross- referencing the device identifier with a known database or reference for public keys and Security Profiles linked therewith.” Wheeler ¶ 125. Wheeler further discloses that “the recipient forwards the device identifier to a Secure Entity for identifying the suspect device public key and Security Profile.” Wheeler ¶ 125. Wheeler discloses authenticating a device’s account number and/or public key to ensure that the number and/or key are correct. See Wheeler ¶¶ 22-23. It would have been obvious to one of ordinary skill in the art to modify the method of Li by incorporating the step of authenticating an identifier code of a user’s device in view of the teachings of Wheeler. Appellant argues that, “[Li] explicitly teaches away from ‘the reader device sending the identifier code to a trusted authority server for authenticating the identifier code’” and because Li teaches away, “one of ordinary skill in the art would not modify [Li] to incorporate certain features of Wheeler in an effort to arrive at the claimed invention.” Appeal Brief 19. Appellant contends that Li teaches away because: there is no suggestion or a motivation for the “transaction machine” in [Li] to verify the “account number” or actually the “set of numbers which represents the fingerprint” by sending to the “initialization machine” at the bank when “[t]he processor in the card” has already done so using “pertinent information . . . stored locally in the smart card itself rather than in the central database.” Appeal Brief 19. Appeal 2021-000645 Application 16/551,243 6 Appellant’s argument is not persuasive of Examiner error. As articulated by the Federal Circuit, “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citations and internal quotation marks omitted). Li’s objective is to prevent fraudulent transactions and by adding a step that further assist in achieving that objective-authenticating a user’s device as taught by Wheeler, does not discourage an artisan from following the path set forth in Li. See Li page 1, lines 22-31; Wheeler ¶¶ 22-23; see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely disclosing more than one alternative does not teach away from any of these alternatives if the disclosure does not criticize, discredit, or otherwise discourage the alternatives). Accordingly, we sustain the Examiner obviousness rejections of claims 1-20 not argued separately. See Appeal Brief 22-23. CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 6-15, 17-20 103(a) Li, Wheeler 1-4, 6-15, 17-20 5, 16 103(a) Li, Wheeler, Hsu 5, 16 Overall Outcome 1-20 Appeal 2021-000645 Application 16/551,243 7 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) (2022). See 37 C.F.R. § 1.136(a)(1)(v) (2022). AFFIRMED