Ex Parte Heintzman et al

Patent Trial and Appeal BoardSep 25, 2012

10734772 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DOUGLAS HEINTZMAN, RICHARD S. SCHWERDTFEGER, and LAWRENCE F. WEISS ____________ Appeal 2009-015320 Application 10/734,772 Technology Center 2600 ____________ Before BRADLEY W. BAUMEISTER, DENISE M. POTHIER, and JENNIFER S. BISK, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-015320 Application 10/734,772 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention Appellants’ invention relates to a method and apparatus for modifying visual presentations based on the environment, display characteristics, and user preferences. See Abstract. Claim 1 is reproduced below with the key disputed limitation emphasized: 1. A method, comprising: receiving data indicative of light conditions proximate to a visual presentation device; authenticating a user identification; receiving data associated with at least one visibility profile associated with the authenticated user identification; and determining visual data to be displayed by the visual presentation device based on at least a portion of the received data indicative of the light conditions and at least a portion of the received data associated with the at least one visibility profile. The Examiner relies on the following as evidence of unpatentability: Lin US 6,618,045 B1 Sept. 9, 2003 Davis US 6,870,529 B1 Mar. 22, 2005 (filed Mar. 28, 2002) The Rejections 1. The Examiner rejected claims 1-5, 7, 10-21, and 24-29 under 35 U.S.C. § 102(a)1 as anticipated by Davis. Ans. 3-5.2 1 Davis is also available under the provisions of paragraph (e). 2 Throughout this opinion, we refer to (1) the Appeal Brief filed March 11, 2009 (resubmitted to correct deficiencies noted in the Notification of Appeal 2009-015320 Application 10/734,772 3 2. The Examiner rejected claims 6, 8, 9,3 22, and 23 under 35 U.S.C. § 103(a) as unpatentable over Davis and Lin. Ans. 6. THE CONTENTIONS Regarding representative claim 1, the Examiner finds that Davis teaches the authenticating step at step 100, where the user identification (ID) is read, as well as other related passages. Ans. 3, 9. Appellants argue that these passages in Davis only disclose user identification and logging into an account, but not authentication. App. Br. 11; Reply Br. 5. In particular, Appellants contend that logging in only requires identification and not necessarily authentication. App. Br. 11. ISSUE Under § 102, has the Examiner erred in rejecting claim 1 by finding that Davis discloses authenticating a user identification? ANALYSIS Based on the record before us, we find no error in the Examiner’s rejection of claim 1 which calls for, in pertinent part, “authenticating a user identification.” We will give the phrase, “authenticating” in claim 1, its broadest reasonable construction in light of the specification. See In re Am. Non-Compliant Appeal Brief mailed February 11, 2009); (2) the Examiner’s Answer mailed May 2, 2008; and (3) the Reply Brief filed July 2, 2008. 3 Claim 9 depends from claim 8 and was improperly grouped with the § 102 rejection based on Davis. Ans. 4. We assume that claim 9 is rejected based on Davis and Lin and find the Examiner’s error harmless since the Examiner relies on Davis’ teaching to reject claim 9. Appeal 2009-015320 Application 10/734,772 4 Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations omitted). Appellants have not defined the term. See generally Specification. However, Appellants provide an example of authenticating in the disclosure to include the user authenticating (at step 425) by using user identification (Spec 18:2-3) and describes the user identification to include “a name, a username or alias, a password, and the like” (Spec. 17:21-22). Appellants support this position by stating that authentication requires “entry of a password[.]” App. Br. 11. Additionally, the Examiner confirms this understanding of the phrase, “authenticating,” by providing a customary meaning of the term. Ans. 9. This ordinary definition states “authentication” is “the process by which the system validates a user’s logon information. A user’s name and password are compared against an authorized list, and if the system detects a match, access is granted to the extent specified in the permission list for that user.” Ans. 9 (quoting Microsoft® Computer Dictionary (3rd ed. 1997)). We thus find that the phrase, “authenticating a user identification” in claim 1, includes validating user identification information during logon that grants access to a system. Davis discloses such a system. As cited by the Examiner (Ans. 3, 9), Davis discloses that a user logs onto the computer. Col. 3, ll. 4-7. Davis further describes obtaining a user identifier from a processor or input/output (I/O) device (col. 4, ll. 50-52) and that the user identifier is “of the user currently authorized to utilize [a] computer” (col. 5, ll. 19-20; see also col. 5, ll. 18-21; Fig. 4). Davis thus discloses that the user of the system has been authorized or granted access to use the system and thus some information must have been used to make this authorization or validation. Appeal 2009-015320 Application 10/734,772 5 Also, in order for Davis to obtain a user identifier for the currently authorized user (col. 4, ll. 50-52), the computer must have been provided such information. Davis discloses user identification includes a user name, password, fingerprint, or other biometric identifier. Col. 2, ll. 62-64. Thus, while we agree that some systems may not require authentication to log into an account (App. Br. 11) and that Davis does not explicitly use the word, “authenticate,” Davis discloses an embodiment where a validating information (e.g., a user name or password) is provided to the system so that the user is authorized to use the system (i.e., authenticates a user identification). In the Reply Brief, Appellants assert that, by introducing a definition of “authentication,” the Examiner has improperly relied upon his new evidence. Reply Br. 5. We disagree and find the Examiner is permitted to look to dictionaries or extrinsic evidence to construe the ordinary meaning of the language found in the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1317-1318 (2005). Furthermore, Appellants do not dispute this definition. See Reply Br. 5; see also App. Br. 10-12. Also, we find that the Examiner’s rejection is still based on Davis and can be sustained without the provided definition. While claim 1 does not explicitly recite authenticating “prior to retrieval of a user profile” (see Ans. 7), we agree with Appellants that claim 1 requires the authentication of the user identification prior to “receiving data associated with at least one visibility profile . . . .” See Reply Br. 3-4. That is, as Appellants note, claim 1 requires “receiving data associated with at least one visibility profile associated with the authenticated user identification” (emphasis added), which indicates that the authentication has Appeal 2009-015320 Application 10/734,772 6 already happen. See id. Nonetheless, the Examiner found that Davis discloses the steps in the order recited. See Ans. 8. Additionally, we agree with Appellants (Reply Br. 2-3) that the “adapted to” phrases found in independent claims 11 and 20 are intended use or functional recitations, and the prior art must have the ability to perform such functions. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Yet, even construing these claims properly, we find that the Examiner has demonstrated that Davis, as explained above and in the Examiner’s Answer (Ans. 3-5, 9), has an apparatus or system “adapted to” authenticate a user identification as recited. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 1 and claims 2-5, 7, 10-21, and 24-29 not separately argued with particularity (App. Br. 10-12). THE OBVIOUSNESS REJECTION We are also not persuaded by Appellants’ argument (App. Br. 12; Reply Br. 5-7) concerning the obviousness rejection of claims 6, 8, 9, 22, and 23 based on Davis and Lin for the reasons disclosed previously concerning Davis and claim 1. We need not address whether Lin cures any deficiency. This argument also fails to persuasively rebut the Examiner’s prima facie case of obviousness (Ans. 6) – a position we find reasonable. CONCLUSION The Examiner did not err in rejecting claims 1-5, 7, 10-21, and 24-29 under § 102 and claims 6, 8, 9, 22, and 23 under § 103. Appeal 2009-015320 Application 10/734,772 7 DECISION The Examiner’s decision rejecting claims 1-29 is affirmed. 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). AFFIRMED rwk