Ex Parte Ibrahim et al

Patent Trial and Appeal Board

Aug 15, 2017

13481082 (P.T.A.B. Aug. 15, 2017)

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.
13/481,082 05/25/2012 Mamdouh IBRAHIM END920080312US3 4217
46583 7590
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
EXAMINER
MCINTYRE, CHARLES AARON
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
08/17/2017 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@rmsc2.com
lgallaugher@rmsc2.com
dbeltran @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAMDOUH IBRAHIM, SRI RAMANATHAN, TAP AS K. SOM,
and MATTHEW B. TREVATHAN
Appeal 2015-006472
Application 13/481,082
Technology Center 3600
Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Mamdouh Ibrahim, Sri Ramanathan, Tapas K. Som, and Matthew B.
Trevathan (Appellants) seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1—19, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 15, 2014) and Reply Brief (“Reply Br.,” filed June 19,
2015), and the Examiner’s Answer (“Ans.,” mailed April 20, 2015), and
Final Action (“Final Act.,” mailed August 20, 2014).
Appeal 2015-006472
Application 13/481,082
The Appellants invented a way to support identity theft protection and,
in particular, for supporting identity theft protection as part of a distributed
service oriented ecosystem in Internet protocol (IP) multimedia subsystem
(IMS) and non-IMS networks. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer program product comprising a computer usable
storage medium having readable program code embodied in a
storage device, the computer program product includes at least
one component that when executed by a processor causes the
processor to perform the steps of:
[1] process an authentication request
comprising one or more credentials
in order to access an account of a subscriber;
[2] process the one or more credentials
to identify the subscriber;
[3] determine that the subscriber has an Internet protocol (IP)
multimedia subsystem (IMS) device;
and
[4] send a notification message to the subscriber
notifying the subscriber that the authentication request to
access the subscribers account has been made.
The Examiner relies upon the following prior art:
Bhansali US 2005/0044404 A1 Feb. 24, 2005
Putman US 2008/0086564 A1 Apr. 10, 2008
Kongalath US 2009/0307141 A1 Dec. 10, 2009
Kolhi US 2009/0304009 A1 Dec. 10, 2009
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Application 13/481,082
Noldus US 2011/0255531 A1 Oct. 20,2011
Claims 1—19 stand rejected under 35U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—11 and 13—18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kongalath and Noldus.2
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kongalath, Noldus, and Putman.
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kongalath, Noldus, and Bhansali.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kongalath, Noldus, and Kolhi.
ISSUES
The issues of eligible subject matter turn primarily on whether intangible
signals are encompassed within claim scope. The issues of obviousness turn
primarily on whether the art describes all of the recited steps.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
2 Although the statutory statement of rejection omits claim 13 (Final Act. 6),
the analysis includes it {id. at 10).
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Application 13/481,082
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of “device.”
02. The ordinary definition of a device is an object designed and
manufactured to perform one or more functions.3
03. The ordinary definition of manufacture as a verb is to make or
produce a product.4
04. The ordinary definition of product is something produced by
human or mechanical effort or by a natural process, as an item that
is made or refined and marketed.5
05. The computer-usable or computer-readable medium may be, for
example but not limited to, an electronic, magnetic, optical,
electromagnetic, infrared, or semiconductor system, apparatus,
device, or propagation medium. Spec. par. 42.
Facts Related to the Prior Art
Kongalath
06. Kongalath is directed to protecting identity data for performing
secure transactions. Kongalath para. 2.
07. The steps a user performs for setting up a trustee database can
generally be described in three phases. In the first phase a user
3 American Heritage Dictionary
https://www.ahdictionary.com/word/search.html?q=device
4 American Heritage Dictionary
https: //www. ahdictionary. com/ word/ search, html? q=manufacture
5 American Heritage Dictionary
https: //www. ahdictionary. com/ word/ search.html? q=product
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Application 13/481,082
submits a list of cards to a trustee database. In phase two, the user
provides the authorization check uniform resource indicator (URI)
to the desired companies. This authorization check URI is
associated with an authorization server which can access the
database. In the third phase, a user sets up group approvals for
automatic transaction enabling or blocking as desired. Kongalath
paras. 34—35.
08. A user uses a card to purchase a product at an establishment,
which transmits the credit card information as a request message
to an automated clearing house (ACH). The ACH uses the
information in the request message, looks up the field for the
authorization URI (which was previously submitted by the user)
and contacts the authorization server linked to the URI via an
invite message, as well as other desired parameters of the
transaction. The authorization server then sends a validation
inquiry to a trustee database and looks up whether the credit card
can be used for the requested transaction using the previously
entered user inputs as described above. Kongalath para. 36.
09. The Trustee database then returns the validation result,
including details as to whether the credit card is enabled or
disabled, for the requested transaction. Based upon this
information, the authorization server transmits a success or failure
message, along with a transaction digest to the ACH which then
forwards the message to the establishment device in the form of a
yes approval or a no disapproval response. Kongalath para. 37.
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10. After a user has input a variety of personal information,
including credit card information, into a trustee database, at some
future point in time, the user then decides to make an online
transaction using a web browser which acts as a POS terminal.
The transaction is sent to the ACH which in turn looks up the user
supplied URI and uses the URI to query, e.g., transmit an identity
request message as a SIP INVITE message, the identity server
(which also acts as an authorization server). The identity server
verifies with the trustee database that the referenced credit card is
enabled for this transaction. Kongalath para. 50.
11. The identity server requests user acceptance by, for example,
requesting a PIN number. Additionally, the identity server
verifies location, communicates with the SIM associated with the
user's mobile phone, and receives a soft/hard token. The location
of the POS terminal is then compared with the location of the user
and if the locations are acceptably close, assuming all other
authorization requirements have passed, the transaction is
approved. This approval information is then transmitted back to
the POS terminal through the ACH as a message, e.g., SIP OK
message. Kongalath para. 51.
Noldus
12. Noldus is directed to setting up a call from a non-IMS network
to a destination node in an IMS network, the destination node
serving a called terminal. Noldus para. 1.
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13. The combined database node receives an information request
message from the Network Gateway Node (NGN) and then it
determines the capabilities of the NGN. The combined database
node can derive implicitly from the address of the NGN the
capabilities of the NGN using a capability table. Subsequently,
the combined database node generates the response message
comprising the step of determining whether the called terminal is
an IMS subscriber. The subscriber profile associated with the
called terminal comprises information indicating whether the
called terminal has an IMS subscription. If the called terminal is
not an IMS subscriber, then normal call handling will take place,
that is, the combined database node sends e.g. a Mobile Station
Roaming Number, MSRN or a Terminating-Call Camel
Subscription Information, T-CSI, code to the NGN. Noldus
para. 67.
14. If it is determined that the called terminal is an IMS subscriber,
the combined database node will before generating the response
message determine whether the combined database node contains
an S-CSCF address of the destination node. Furthermore, if it is
determined that the combined database node contains an S-CSCF
address of the destination node, the combined database node will
before generating the response message determine whether the at
least one capability indicates that the NGN comprises an
integrated GMSC-MGCF. The supported capability of the NGN
may be indicated explicitly in a message, or may be derived from
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the address of the NGN, by using a capability table. Noldus
para. 68.
ANALYSIS
Claims 1—19 rejected under 35 U.S.C. § 101 as directed to non-statutory
subject matter
Transitory propagating signals are unpatentable under 35 U.S.C. § 101.
In reNuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). According to U.S.
Patent & Trademark Office (USPTO) guidelines:
A claim that covers both statutory and non-statutory
embodiments . . . embraces subject matter that is not eligible for
patent protection and therefore is directed to non-statutory
subject matter. ... For example, a claim to a computer readable
medium that can be a compact disc or a carrier wave covers a
non-statutory embodiment and therefore should be rejected
under § 101 as being directed to non-statutory subject matter.
U.S. Patent & Trademark Office, Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 2009,
at 2, available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_mterim_101_ instructions.pdf (“Interim Instructions”).
The USPTO also provides the following guidance:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . typically covers forms of non-
transitory tangible media and transitory propagating signals per
se in view of the ordinary and customary meaning of computer
readable media, particularly when the specification is silent. . . .
When the broadest reasonable interpretation of a claim covers a
signal per se, the claim must be rejected under 35 U.S.C. § 101
as covering non-statutory subject matter.
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David J. Kappos, Subject Matter Eligibility of Computer Readable
Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
Independent claim 1 recites, in pertinent part, “a computer usable storage
medium having readable program code embodied in a storage device.”
Upon reviewing Appellants' Specification for context, we find that what
constitutes the claimed “computer usable storage medium” may include a
propagation medium. We conclude that the claimed “computer usable
storage medium” can be broadly, but reasonably, construed to encompass
both non-transitory tangible media and transitory propagating signals per se.
The limitation of being embodied in a storage device is not explicitly
described in the Specification, and the word device means an object
designed and manufactured to perform one or more functions. To
manufacture is to make or produce a product and a product is something
produced. An object in the computer context is a piece of software.
Absent some constraint on longevity, the word “storage” really adds
nothing to the phrase “computer readable medium.” Storage does not mean
static, it just means retention, which a wave performs, else it could not be
read at a time subsequent (albeit at or near light speed) to its propagation.
As a notorious example, our radio telescopes read waves emitted by stars
thousands of years ago — the content of those waves were stored for that
duration.
The limitation of being embodied in a storage device, therefore,
encompasses being embodied on a waveform that is produced by a
computer. As independent claim 1 covers both statutory and non-statutory
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embodiments, it embraces subject matter that is not eligible for patent
protection and, therefore, is directed to non-statutory subject matter.
We are not persuaded by Appellants' argument that a non-precedential
Board Decision6 found that a device was physical. App. Br. 3. Aside from
the fact the Decision was non-precedential, the Decision based its
conclusions on the absence of any reference to non-tangible products in the
Specification, in contrast with the present application.
We are not persuaded by Appellants’ argument that the claimed
computer program product is being executed by a processor. Id. Claim 1
uses the subjunctive form “the computer program product includes at least
one component that when executed by a processor causes the processor to
perform.” That is, it recites what one hopes to occur when, at a later time,
the instructions are executed.
Claims 1—11 and 13—18 rejected under 35 U.S.C. § 103(a) as unpatentable
over Kongalath and Noldus
We are not persuaded by Appellants' argument that
Kongalath does not disclose sending a notification message to a
subscriber notifying the subscriber that an authentication
request to access the subscribers account has been made.
Instead, Kongalath discloses that a transaction authorization
request will either be sent to a trustee database 204 or to a user
in order to enable or disable the transaction. Moreover, the
success or failure message 318 simply relays the results of a
requested transaction and transmitted to the establishment
device 302. Accordingly, Kongalath cannot reasonably be
6 Ex Parte Ludtke, App. No. 2009-001989 (BPAI, August 18, 2010.)
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considered to disclose sending a notification message to a
subscriber, but instead, is merely seeking authorization for a
transaction at a third party establishment device 302.
App. Br. 6. Kongalath describes sending a notification message to a
subscriber notifying the subscriber that a transaction request has been either
accepted or denied. To do so, Kongalath describes the first two steps in
claim 1. This is undisputed. The third step is not at issue in this argument,
as the Examiner applies Noldus. The fourth step is to “send a notification
message to the subscriber notifying the subscriber that the authentication
request to access the subscribers account has been made.” The functional
part of this step, sending a notification message to the subscriber, is
explicitly performed by Kongalath as we find supra. The issue is the
content of the message.
First, the Examiner finds the content of the message is undeserving of
patentable weight. Ans. 9. We agree. Mental perceptions of what data
represents are non—functional and given no weight. King Pharm., Inc. v.
Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“[T]he relevant
question is whether ‘there exists any new and unobvious functional
relationship between the printed matter and the substrate.’”) The content of
the message does not affect the operation of the steps and the operation of
the steps does not affect the content of the message. See King Pharm, id.
To the extent the message to notify that an authentication request has
been made is considered functionally dependent on the authentication
request in the first limitation, the fourth limitation does not recite any
particular implementation, so again the message content per se is not
functionally dependent on the first limitation. It is the sending of the
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message that is functionally dependent, but that is described by Kongalath.
In any event, because the response in Kongalath requires the authentication
request, the message implies the authentication request irrespective of the
actual content. This is sufficient to provide the recited notification.
We are not persuaded by Appellants' argument that
Noldus does not disclose determining whether a subscriber has
an IMS device. Instead, Noldus discloses determining whether
a requesting device is an IMS subscriber, but there is no
determination whether a device is an IMS or non-IMS device.
In other words, simply determining whether the called terminal
is an IMS subscriber cannot reasonably be considered to
correspond to determining that a subscriber has an IMS device.
Moreover, being an IMS subscriber does not require the
subscriber to have an IMS device.
App. Br. 8. The problem Appellants have is they do not define what an
IMS device is. IMS is an acronym meaning Internet Multimedia Subsystem.
The question becomes how does the modifier “IMS” modify the phrase
“IMS device.” This is unclear from the Specification. One of ordinary skill
could reasonably interpret this as a device attached to an Internet multimedia
subsystem. This would then be a device within such a subsystem and
logically such a subsystem device. Appellants admit the evident fact that
Noldus discloses determining whether a requesting device is an IMS
subscriber. That is, determining whether the requesting device subscribes to
an Internet multimedia subsystem. As such a subscriber, the device would
be part of the Internet multimedia subsystem.
As to claim 3, reciting a component to determine that the authentication
request is in a blackout time and charge the subscriber for the message, we
are persuaded by Appellants’ argument that Kongalath fails to describe a
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blackout time. App. Br. 9. The Examiner cites three paragraphs from
Kongalath, none of which describe this. Final Act. 8; Ans. 13.
As to claim 4, reciting a component to convert the authentication request
to a SIP and publish the converted authentication request, we are persuaded
by Appellants’ argument that Kongalath fails to describe a conversion to
SIP. App. Br. 10. The Examiner cites two paragraphs from Kongalath,
none of which describe this. Final Act. 8; Ans. 13.
As to claim 14, reciting allowing the subscriber to reject an unauthorized
login attempt based on the notification message, and allowing changing of
credentials as a result of the unauthorized login attempt, we are not
persuaded by Appellants’ argument that Kongalath fails to describe a
conversion to SIP. App. Br. 10. As the Examiner finds, this limitation is
broad enough to encompass Kongalath’s request for approval as an
implementation of allowing rejection, and the offer by the customer of a
different card as an implementation of changing credentials. Final Act. 8;
Ans. 13. As the claim recites no implementation, any implementation will
fall within the claim scope.
The remaining claims are argued on the basis of claim 1.
Claim 12 rejected under 35 U.S.C. § 103(a) as unpatentable over
Kongalath, Noldus, and Putman
This is not separately argued.
Claims 17 and 18 rejected under 35 U.S.C. § 103(a) as unpatentable over
Kongalath, Noldus, and Bhansali
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This is not separately argued.
Claim 19 rejected under 35 U.S.C. § 103(a) as unpatentable over
Kongalath, Noldus, and Kolhi
This is not separately argued.
CONCLUSIONS OF LAW
The rejection of claims 1—19 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
The rejection of claims 1, 2, 5—11 and 13—18 under 35 U.S.C. § 103(a)
as unpatentable over Kongalath and Noldus is proper.
The rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable
over Kongalath and Noldus is improper.
The rejection of claims 17 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Kongalath, Noldus, and Bhansali is proper.
The rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Kongalath, Noldus, and Kolhi is proper.
The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable over
Kongalath, Noldus, and Putman is proper.
DECISION
The rejection of claims 1—19 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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