Ex Parte M et al

Patent Trial and Appeal BoardSep 23, 2014

11418227 (P.T.A.B. Sep. 23, 2014)

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. 11/418,227 05/05/2006 David M'Raihi 06224.228 (L0121) 1769 14698 7590 09/23/2014 Patent Docket Administrator Lowenstein Sandler LLP 65 Livingston Avenue Roseland, NJ 07068 EXAMINER GREGORY, SHAUN ART UNIT PAPER NUMBER 2432 MAIL DATE DELIVERY MODE 09/23/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID M’RAIHI, SIDDHARTH BAJAJ, and NICOLAS POPP Appeal 2012-0028811 Application 11/418,227 Technology Center 2400 ____________________ Before JEAN R. HOMERE, ELENI MANTIS MERCADER, and MICHAEL STRAUSS, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Symantec Corp. App Br. 1. Appeal 2012-002881 Application 11/418,227 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–14. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appellants’ Invention Appellants invented a method and system for allowing a token issued to a customer to be shared across many sites on a network to authenticate the consumer thereon. Spec. ¶ [0006]. In particular, upon authenticating the customer’s login credentials (username and password), the customer’s internet service provider (ISP-101) forwards to a validation/lookup server (103) a one-time password (OTP) generated by a first token that the ISP previously supplied to the customer (111) for further authentication. Fig. 1, ¶ [0012]. Likewise, after authenticating the customer, a relying party (e.g., bank- 102) forwards to the validation server (103) another OTP generated by a second token that the relying party previously supplied to the customer. Spec.¶ [0020]. Illustrative Claim Independent claim 6 further illustrates the invention. It reads as follows: 6. A method for authentication, including: at a token issuer, receiving from a user a first one time password generated by a token issued by the token issuer; at the token issuer, validating the first one time password with a one time password validation server; Appeal 2012-002881 Application 11/418,227 3 based upon said validating, authenticating the user for access to a service provided by the token issuer; at a token lookup service, receiving from a first relying party a first request for a network address of the one time password validation server, the request including a token identifier of a the token; determining a network address corresponding to the one time password validation server and the received token identifier; sending the network address to the first relying party in response to the first request; at the one time password validation server, receiving from the first relying party a request to validate a second one time password generated by the token; and sending a validation of the second one time password to the first relying party. Prior Art Relied Upon Brennan US 2003/0046551 A1 Mar. 6, 2003 Holdsworth US 7,412,420 B2 Aug. 12, 2008 Rejection on Appeal The Examiner rejects claims 1–14 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Brennan and Holdsworth. Appeal 2012-002881 Application 11/418,227 4 ANALYSIS We consider Appellants’ arguments seriatim as they are presented in the Appeal Brief, pages 3–8.2 Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in finding the combination of Brennan and Holdsworth teaches or suggests after validating a first OTP at a validation server where a token associated therewith was issued, a first relying party sends a request to the validation server to validate a second OTP associated with the same token, as recited in claim 6? Appellants argue the combination of Brennan and Holdsworth does not teach or suggest the disputed limitations emphasized above. App. Br. 6- 7. In particular, Appellants argue even if Brennan’s FiPass teaches a relying party, the references do not disclose receiving a request to validate a second OTP generated by the token from the FiPass system, as well as the token issuer validating a first OTP generated by the same token. Id. at 7. In response, the Examiner finds Brennan’s disclosure of a second website validating an OTP obtained from a FiPass token in combination with 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed July 18, 2011), and the Answer (mailed September 14, 2011) for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Briefs. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2012-002881 Application 11/418,227 5 Holdsworth’s disclosure of a merchant sending a request to an issuer authority to validate a token teaches the disputed limitations. Ans. 11–12. Based upon our review of the record before us, we find no error with the Examiner’s findings regarding claim 6 and we adopt them as our own without having to repeat them herein. Furthermore, we note Appellants have not presented any substantive arguments to rebut the specific findings made by the Examiner in the Answer. Because Appellants have not availed themselves of the opportunity to challenge in a Reply Brief the Examiner’s construction of the disputed limitations proffered in the Answer, we find reasonable the Examiner’s broad construction of the disputed claim limitations. Ans. 11. Further, while Appellants have provided a general description of Brennan and Holdsworth (App. Br. 5–6), Appellants have not provided a meaningful analysis of the cited specific textual portions of the cited references upon which the Examiner relied in the rejection. That is, Appellants’ arguments fail to compare and contrast the claim limitations with the Examiner’s specific findings regarding paragraph 0044 of Brennan and Column 9, ll. 37–44 of Holdsworth to show that the resulting combination does not teach the disputed limitations of claim 6. Ans. 11–12. Merely reciting the claim limitations, and discussing findings other than those upon which the Examiner relied in the rejection is not a responsive argument. Such a response to the Examiner’s findings is insufficient to persuade us of Examiner error, as mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see Appeal 2012-002881 Application 11/418,227 6 also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009) (informative). See also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”) Therefore, because Appellants have not provided sufficient evidence to rebut the Examiner’s finding that Brennan and Holdsworth disclose prior art elements that perform their ordinary functions to predictably result in a website that validates a first OTP obtained from FiPass token (Brennan ¶ [0044]), as well as a merchant server (relying party) issuing a request to an issuer authority to validate a second OTP received from a merchant, the proffered combination teaches or suggest the disputed limitations. It therefore follows that Appellants have failed to show error in the Examiner’s obviousness rejection of claim 6. Regarding the rejection of claim 1, Appellants argue that the combination of Brennan and Holdsworth does not teach validating a first factor before an OTP can be validated. App. Br. 7–8. This argument is unavailing. We agree with the Examiner’s findings because Brennan’s first Appeal 2012-002881 Application 11/418,227 7 web site does not forward the OTP to the second web site until after the username and password obtained from the user are validated at the first site. Ans. 11, Brennan 0049. Consequently, Appellants have not shown error in the Examiner’s rejection of claim 1. Because Appellants have not provided separate argument against the rejection of claims 2–5 and 7–13, these claims fall with claims 1 and 6 for same reasons set forth above. See 37 C.F.R. § 1.37(c)(1)(vii). Regarding the rejection of claim 14, we agree with Appellants that the combination of Brennan and Holdsworth does not teach or suggest a second OTP issued by a first relying party including a second validation server for validating the OTP. App. Br. 4–6. As discussed above, the proffered combination provides, at best, a first OTP issued by a FiPass validated at the FSS, and a second OTP issued by a merchant server. However, the proposed combination simply falls short of teaching that the second OTP is validated at the merchant server. It follows Appellants have shown error in the Examiner’s rejection of claim 14. DECISION We affirm the Examiner’s rejection of claims 1–13, as set forth above. However, we reverse the Examiner’s rejection of claim 14. 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). Appeal 2012-002881 Application 11/418,227 8 AFFIRMED-IN-PART kme