Ex Parte Buer et al

Patent Trial and Appeal Board

Jul 16, 2018

12748106 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/748,106 03/26/2010
26111 7590 07/18/2018
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
Mark Buer
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.
3875.4150005 4505
EXAMINER
ROJAS, HAJIME S
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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):
e-office@stemekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK BUER, CHARLES ABRAHAM,
DAVID GARRETT, JEYHAN KARAOGUZ,
DAVID LUNDGREN, and DAVID MURRAY
Appeal2017-000539
Application 12/748,106 1
Technology Center 3600
Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1, 2, 4--13, and 15-22. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Broadcom
Corporation. (Appeal Br. 2.)
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Application 12/7 48,106
CLAIMED SUBJECT MATTER
Appellants' claimed invention relates to "authorizing network
transactions based on device location." (Spec. ,r 7 .)
Claims 1 and 12 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method for authorizing transactions, comprising:
receiving, by a location server having a location based
service (LBS) account stored thereon, a request to approve a
transaction corresponding to an account, the account being
associated with the LBS account, wherein the request is initiated
from a first communication device;
determining, by the location server, a second
communication device associated with the LBS account;
receiving, by the location server, data representative of a
location of the first and second communication devices;
determining, by the location server, whether to approve
the transaction based on the data;
sending, by the location server, a second request to the
second communication device to approve the transaction when
the location server denies the transaction based on the data; and
approving, by the location server, the transaction when the
second communication device approves the second request.
REJECTION
Claims 1, 2, 4--13, and 15-22 are rejected under 35 U.S.C. § I03(a) as
unpatentable in view of Kirkland (US 2004/0254868 Al, pub.
Dec. 16, 2004).
ANALYSIS
Kirkland discloses a "method for early detection of identity theft."
(Kirkland, Abstract.) In Kirkland, "an authorized user ... registers both a
mobile device and a notification device with the organization's computing
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system." (Id.) When a transaction is attempted, e.g., through a POS
terminal ( a first communication device) at a store, "[ t ]he current location of
the mobile device [ ( a second communication device)] is then compared to
the location of the source of the request for authorization." (Id.) Based on
the location information, a notification may "be sent to the notification
device [ ( a third communication device)] requesting authorization of the
attempted use." (Id.)
The Examiner finds that "Kirkland does not explicitly disclose that the
second and third communication devices are the same." (Final Action 4.)
However, the Examiner determines that
(Id.)
it was known at the time of the invention for mobile devices to
also include PDA or portable computer capabilities ( e.g.
receiving email at an email address) . . . . Therefore, it would
have been obvious to a person having ordinary skill in the art at
the time of the invention to modify the invention as disclosed by
Kirkland and combine the mobile device and the notification
device into one device (second device), since the claimed
invention is merely a combination of old elements, and in the
combination each element merely would have performed the
same function as it did separately, and one of ordinary skill in the
art would have recognized that the results of the combination
were predictable. In addition, one of ordinary skill in the art at
[sic] would have found it obvious to update the use of two
separate devices with two different capabilities as found in
Kirkland and use one device with the two capabilities as
commonly found at the time of the invention, in order to gain the
commonly understood benefits of such adaptation, such as not
having to rely on and/or carry multiple devices to achieve the
same purpose. This would be accomplished with no
unpredictable results.
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Appellants disagree and argue that "the Examiner relies on nothing
more than mere speculation and conjecture that these two alleged
communication devices [(second and third devices)] of Kirkland can be
combined to form 'an updated device."' (Appeal Br. 8, citing Final
Action 7.) Pointing to the "Response to Argument" section of the Final
Action, Appellants argue that
the Examiner has not provided any objective evidence of:
1. "by the time the present invention was filed, text
messaging (using an email address, social media profile, etc.)
was a prevalent feature in mobile phones and that mobile phones
were in fact portable computers;"
2. "in 2003 ... most devices functioned in the manner
disclosed by Kirkland (i.e. separate devices for separate
functions);" and
3. "In 2010... single devices having multiple
functionalities were prevalent ( e.g. smartphones, etc.)".
Clearly, without any objective evidence in the record,
these statements in the Final Office Action amount to nothing
more than mere speculation and conjecture which is improper.
(Id. at 9, quoting Final Action 7-8.)
The Examiner answers that "the Examiner explicitly states in the
Advisory Action that the Official Notice statements taken in the Final
Rejection (prior to the Advisory Action) were made final because Appellant,
in the response after Final Rejection, did not properly traverse the Official
Notice." (Answer 3.)
"To adequately traverse such a finding [e.g., to challenge a factual
assertion as not properly based on common knowledge], an applicant must
specifically point out the supposed errors in the examiner's action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art." (MPEP § 2144.03 C.) "We feel it to
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be perfectly consistent with the principles governing procedural due process
to require that a challenge to judicial notice by the board contain adequate
information or argument so that on its face it creates a reasonable doubt
regarding the circumstances justifying the judicial notice." Application of
Boon, 439 F.2d 724, 728 (CCPA 1971).
Here, Appellants do not state why the above noted findings would not
have been considered to be either common knowledge or well-known in the
art. Moreover, Appellants do not point to anything in the record that
contradicts the Examiner's findings. See In re Chevenard, 139 F.2d 711,
713 (CCAP 1943). In view of the above, we agree with the Examiner that
Appellants have not adequately traversed the Examiner's findings based on
Official Notice.
Appellants further argue that "the Advisory Action dated
November 27, 2015 ('Advisory Action') still fails to provide any objective
evidence to support the allegation that the two alleged communication
devices of Kirkland can be combined to form 'an updated device."' (Appeal
Br. 10.) But Appellants did not adequately traverse the Examiner's findings
based on Official Notice, and those findings are of record. Therefore, we do
not find this argument persuasive of error.
Appellants additionally argue that "[ m ]odifying the teachings of
Kirkland to combine the second and third communication devices as
proffered in the Final Office Action would change Kirkland's principle of
operation." (Id. at 11.) Specifically, Appellants argue that
[ t ]he method taught by Kirkland relies on the fact that the second
communication device (mobile device) and third communication
device (notification device) are separate devices. According to
Kirkland, "the notification device is different from the mobile
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device," (Kirkland, claim[s] 2 and 12,) and by using two
physically separate devices, "[i]f either one of the mobile device
or the notification device verification fails, the registration of the
authorized user with the verification system will fail. In this way,
an identity thief cannot merely steal a user's mobile device and
attempt to register the identity with the verification server ... it is
unlikely that an identity thief will steal both the authorized user's
mobile device and notification device and be able to obtain
access to all of this requisite information."
(Id., emphasis omitted, citing Kirkland ,r 53; see also Reply Br. 6.) Thus,
Appellants argue, "Kirkland teaches away from combining the second and
third communication devices." (Id.)
As an initial matter, we agree with the Examiner "that having the
different functionalities of Kirkland present in a single device do [sic] not
change the principle of operation, the device still performs the functions of a
mobile phone ( e.g., using functions of a cellphone [to locate]) and a
notification device ( e.g., for sending/receiving texts and emails [to notify])."
(Answer 8.) Appellants do not persuasively argue why having a single
device function as the location and notification devices, changes the
principle of operation of detecting identity theft by comparing the location of
a mobile device to the location of the source of the request for authorization,
and sending a request for authorization to a notification device.
With regard to Appellants' "teaching away" argument, "[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 Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
"Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosure are unlikely to
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produce the objective of the applicant's invention." Syntex (US.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).
Here, Kirkland discloses a preferred embodiment in which use of a
separate mobile device and notification device provides
[ a ]dded protection against identity theft ... since it is less likely
that an identity thief will go to the extent to register a mobile
device with a first service provider using a stolen identity,
register a notification device with a second service provider
using the same stolen identity, and then attempt to register the
identity with the organization's computing system.
(Kirkland ,r 52.) We agree with Appellants that Kirkland teaches that using
separate mobile (i.e., location) and notification devices provides added
protection. But we do not agree with Appellants that including the added
protection obtained by using separate mobile and notification devices
therefore teaches away from using a single device that performs both
location and notification functions to detect identity theft by comparing the
location of a mobile device to the location of the source of the request for
authorization, and sending a request for authorization to a notification
device.
Appellants do not separately argue independent claim 12 or dependent
claims 2, 4--11, 13, and 15-22. Therefore, they fall with claim 1. See 37
C.F.R. § 4I.37(c)(l)(iv).
DECISION
The Examiner's rejection of claims 1, 2, 4--13, and 15-22 under
35 U.S.C. § 103(a) is affirmed.
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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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