Ex Parte Milgramm

Patent Trial and Appeal Board

Mar 14, 2016

13251887 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/251,887 10/03/2011 Michael Milgramm
23432 7590 03/14/2016
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
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.
6616/80858-CA/GJG 4816
EXAMINER
LANIER, BENJAMINE
ART UNIT PAPER NUMBER
2437
MAILDATE DELIVERY MODE
03/14/2016 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 MICHAEL MILGRAMM
Appeal2014-003048
Application 13/251,887
Technology Center 2400
Before ALLEN R. MacDONALD, KEVIN C. TROCK and
ADAM J. PYONIN, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003048
Application 13/251,887
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
21-29. Claims 1-20 cancelled by preliminary amendment at initial filing on
October 3, 2011. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Claim 21 under appeal reads as follows (emphasis and formatting
added):
21. A method of independent biometric identification comprising the
steps of:
[(A)] receiving an access request from a user's system;
[(B)] connecting the user's system to an independent biometric
identification server;
[(C)] obtaining the user's biometric characteristics using a
capture device connected to the user's system;
[(C)] causing the user's system to convey said obtained
biometric characteristics to the independent biometric identification
server;
[ (E)] receiving from the user's system an access token created
by the independent biometric identification server after successfully
identifying the user by comparing said conveyed biometric
characteristics to templates stored in a database;
[ (F)] requesting from the independent biometric identification
server information associated with the access token; and
[(G)] deciding whether to grant access to the user's system
based on the information associated with the access token.
Rejection on Appeal
The Examiner rejected claims 21-29 under 35 U.S.C. § 102(e) as
being anticipated by Pu et al. (US 2003/0105966 Al; June 5, 2003).
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Appeal2014-003048
Application 13/251,887
ANALYSIS
We do not reach the merits of the rejection under 35 U.S.C. § 102(e).
Instead, we enter a new ground of rejection under 35 U.S.C. § 112,
second paragraph, of claims 21-29.
We also dismiss without prejudice the appeal as to all claims on
appeal.
New Grounds of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b ), we reject claims
21-29 under 35 U.S.C. § 112, second paragraph, as being indefinite.
Claim 21 recites steps (F) and (G), "requesting from the independent
biometric identification server information associated with the access token;
and deciding whether to grant access to the user's system based on the
information associated with the access token." There is no requirement that
would prevent these steps from being performed in a different session than
above steps (A}-(E) of the method.
Because Appellant has told us in the Appeal Brief that the claimed
invention requires the invention is "used in the same session" (App. Br. 18
(emphasis omitted)) and further because that requirement is not claimed, we
enter a new rejection under 35 U.S.C. § 112, second paragraph, on the basis
that Appellant is not claiming what is regarded as the invention. Cf In re
Prater, 415 F.2d 1393, 1404 (CCPA 1969) ("[i]nasmuch as claim 9 ...
reads on subject matter for which appellants do not ... regard[] as his
invention, ... the claim fails to comply with 35 U.S.C. § 112 which requires
that 'the specification shall conclude with one or more claims particularly
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Appeal2014-003048
Application 13/251,887
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention."'). Similarly, Appellant is not claiming what
Appellant regards as the invention because Appellant has told us in the
Appeal Briefthat the claimed invention requires "an application requests
the information associated with the access token from the independent
biometric identification server" (App. Br. 12 (emphasis added)) and that "an
application" requirement is not claimed. As the Examiner correctly points
out, "the claims do not require [the] claimed request step to be performed by
an 'application"' (Ans. 4). 1
Also, claim 21 recites "deciding whether to grant access to the user's
system." Emphasis added. The direction of the access grant is unclear.
That is, it is unclear whether this is a grant of access into the user's system
or a grant of access for the user's system into some unclaimed system.
Claims 22-29 incorporate the problems of claim 21 by their
dependency thereon.
We therefore do not reach the merits of the§ 102(e) rejection of the
claims. Cf In re Wilson, 424 F2d 1382, 1385 (CCPA 1970) ("Ifno
reasonably definite meaning can be ascribed to certain terms in the claim,
1 We note that Examiner pointed to Pu's "authentication module 52" inside
the authentication server as the source of the request (Ans. 3) and Appellant
contends that the authentication module cannot be the request source as the
module is part of the server and "from" requires the request be performed by
"a separate module" than the server (Reply Br. 4). Both these positions
overlook the "password sent by the client 20" is the initial trigger for the
retrieval by the module 52 (Pu i-f 38). This initial trigger password is
intentionally sent by the client and serves as a request that the module 52
retrieve the previously stored password from the server's database.
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Appeal2014-003048
Application 13/251,887
the subject matter does not become obvious -the claim becomes
indefinite."); In re Steele, 305 F.2d 859, 862 (CCPA 1962).
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
CONCLUSIONS
(1) We do not reach the Examiner's rejection of claims 21-29 as
being anticipated under 35 U.S.C. § 102(e).
(2) We reject claims 21-29 under 35 U.S.C. § 112, second paragraph,
as being indefinite.
(3) Claims 21-29 are not patentable.
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Application 13/251,887
DECISION
The appeal of the Examiner's rejection of claims 21-29 under 35
U.S.C. § 102( e) over Pu is dismissed without prejudice.
Claims 21-29 are newly rejected under 35 U.S.C. § 112, second
paragraph, for reasons set forth herein.
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).
DISMISSED WITHOUT PREJUDICE
37 C.F.R. § 41.50(b)
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