Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Jul 29, 2020

15254091 - (D) (P.T.A.B. Jul. 29, 2020)

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.
15/254,091 09/01/2016 Rod D. Waltermann RPS920150182-US-NP 1265
63203 7590 07/29/2020
ROGITZ & ASSOCIATES
4420 Hotel Circle Court
SUITE 230
SAN DIEGO, CA 92108
EXAMINER
LE, CANH
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
John@rogitz.com
Noelle@rogitz.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROD D. WALTERMANN,
JOSEPH MICHAEL PENNISI, TIMOTHY WINTHROP KINGSBURY,
DOUGLAS WARREN ROBINSON, and JUSTIN TYLER DUBS
Appeal 2019-002202
Application 15/254,091
Technology Center 2400
Before CARL W. WHITEHEAD JR., BARBARA A. BENOIT, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–20, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Lenovo Singapore Pte. Ltd. as the real
party in interest. Appeal Br. 2.
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Application 15/254,091

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TECHNOLOGY
The application relates to “authentication using one or modes of
authentication [each] associated with various strength levels so that the
strength levels collectively meet a total strength bar/threshold.” Spec. 3.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A device, comprising:
a processor; and
storage accessible to the processor and bearing
instructions executable by the processor to:
identify one or more forms of authentication each
associated with a respective predetermined weight, the
identification of the one or more forms of authentication
being based at least in part on the sum of the respective
predetermined weights at least meeting a predetermined
weight sum; and
based on the identification, permit an attempt at
authentication using the one or more forms of
authentication.
REFERENCES
The Examiner relies on the following prior art references:
Name Number Date
Aguilar-Macias US 2016/0036806 A1 Feb. 4, 2016
Burger US 9,633,322 B1 Apr. 25, 2017
Cha US 2016/0241537 A1 Aug. 18, 2016
Hayashi US 2008/0250495 A1 Oct. 9, 2008
Shimotono US 2012/0185931 A1 July 19, 2012
Ziraknejad US 9,430,629 B1 Aug. 30, 2016
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REJECTIONS
The Examiner makes the following rejections:
Claims Statute Basis / References Final Act.
1–20 § 101 Subject matter 10
1–6, 13, 19 § 103 Cha, Ziraknejad 14
7–9 § 103 Cha, Ziraknejad, Shimotono, Burger 20
10–12 § 103 Cha, Ziraknejad, Shimotono, Burger, Aguilar-Macias 23
14–18 § 103 Cha, Ziraknejad, Shimotono, Hayashi 26
20 § 103 Cha, Ziraknejad, Burger 30
ISSUES
1. Did the Examiner err in concluding that claim 1 is directed to
ineligible subject matter without significantly more?
2. Did the Examiner err in finding Ziraknejad teaches or suggests
to “identify one or more forms of authentication each associated with a
respective predetermined weight, the identification of the one or more forms
of authentication being based at least in part on the sum of the respective
predetermined weights at least meeting a predetermined weight sum,” as
recited in claim 1?
ANALYSIS
§ 101
The Supreme Court has set forth a two part test for § 101 to determine
whether the subject matter of a claim is patentable: (1) “whether the claims
at issue are directed to” “laws of nature, natural phenomena, and abstract
ideas” and (2) “whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014) (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
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In 2019, the U.S. Patent & Trademark Office (“USPTO”) expanded
on the Supreme Court’s test with revised guidance. USPTO, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”); USPTO, October 2019 Update: Subject Matter Eligibility,
available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (“Oct. Update”). Under that Guidance, we use the
following steps to determine whether a claim recites the following items:
USPTO
Step Does the claim recite ___? MPEP §
1 A process, machine, manufacture, or composition of matter 2106.03
2A,
Prong 1
A judicial exception, such as a law of nature or any
of the following groupings of abstract ideas:
1) Mathematical concepts, such as
mathematical formulas;
2) Certain methods of organizing human
activity, such as a fundamental economic
practice; or
3) Mental processes, such as an observation or
evaluation performed in the human mind.
2106.04
2A,
Prong 2
Any additional limitations that integrate the judicial
exception into a practical application
2106.05(a)–
(c), (e)–(h)
2B
Any additional limitations beyond the judicial
exception that, alone or in combination, were not
“well-understood, routine, conventional”
2106.05(d)
See Guidance 52, 55, 56.
“Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166
(Fed. Cir. 2018). As Appellant notes, the 2019 Guidance was published
after the Examiner’s Answer but before the Reply Brief. See Reply Br. 1.
We therefore reach the following conclusions in light of the Examiner’s
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findings, Appellant’s arguments, and the 2019 Guidance. Appellant’s
disputes begin with USPTO Step 2A, Prong 1.
USPTO Step 2A, Prong 1
Claim 1 recites to identify one or more items based on the sum of
predetermined weights for each of those items meeting or exceeding a
predetermined weight sum, then allowing an attempted action with those
items based on that identification.
“[W]ith the exception of generic computer-implemented steps, there is
nothing in the claims themselves that foreclose them from being performed
by a human, mentally or with pen and paper.” Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). For example, if
planning for an upcoming trip, a passenger mentally thinks about how
airport security requires at least one permissible form of identification (i.e., a
threshold of 1). A passport is permissible (i.e., weight of 1) whereas a
driver’s license is not (i.e., weight of 0). The passenger therefore mentally
identifies their passport as a permissible form of authenticating their identity
and chooses to use their passport rather than a driver’s license. Thus, the
claims recite a mental process, which the Guidance identifies as an abstract
idea. Guidance 52; see also Ans. 5 (analogizing to Federal Circuit cases on
collecting and analyzing information, including to detect misuse).
A sum of weights and the comparison of such a sum to a threshold
also are mathematical concepts, which the Guidance identifies as abstract
ideas. Guidance 52. Appellant argues that “no Supreme Court or Federal
Circuit opinion, as far as Appellant is aware, ever has sanctioned combining
multiple classes of ‘abstract ideas.’” Appeal Br. 5. However, even prior to
the Appeal Brief, the Federal Circuit held that “[a]dding one abstract idea
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(math) to another abstract idea . . . does not render the claim non-abstract.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Thus, claim 1 recites a mental process and mathematical concepts, and
therefore recites an abstract idea.
USPTO Step 2A, Prong 2
In addition to the abstract idea, claim 1 further recites the additional
limitations of “a processor” and “storage accessible to the processor and
bearing instructions executable by the processor to” perform the abstract
idea. Appellant argues that the Examiner has not sufficiently addressed
these hardware components. Appeal Br. 9. However, the Supreme Court
has held that “simply implementing a mathematical principle on a physical
machine, namely a computer, [is] not a patentable application of that
principle.” Mayo, 566 U.S. at 84; see also BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An
abstract idea . . . on a generic computer is still an abstract idea.”). In fact,
independent claim 13 does not even recite a processor or storage.
Appellant similarly argues the Examiner has not sufficiently
addressed the additional limitations related to “authentication.” Appeal Br.
9. Even if we treat authentication as an additional limitation under prong 2
rather than part of the abstract idea under prong 1, authentication merely
constitutes a field of use. See MPEP § 2106.05(h). The claims are not tied
to any particular technical improvement of authentication beyond the
abstract idea. “The Supreme Court and this court [i.e., the Federal Circuit]
have repeatedly made clear that merely limiting the field of use of the
abstract idea to a particular existing technological environment does not
render the claims any less abstract.” Affinity Labs of Tex., LLC v. DirecTV,
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LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016); see also Alice, 573 U.S. at 223;
Parker v. Flook, 437 U.S. 584, 595 (1978) (“[I]f a claim is directed
essentially to a method of calculating, using a mathematical formula, even if
the solution is for a specific purpose, the claimed method is nonstatutory.”
(quoting In re Richman, 563 F.2d 1026, 1030 (CCPA 1977))).
Appellant fails to identify any way in which an additional limitation
(rather than the abstract idea), whether alone or in combination, reflects an
improvement in any technical field, requires a particular machine integral to
the claim, transforms the article to a different state, or otherwise applies the
judicial exception in some meaningful way beyond generally linking the use
of the judicial exception to a particular technological environment (e.g.,
authentication). See Guidance 55.
Thus, claim 1 does not integrate the abstract idea into a practical
application.
USPTO Step 2B
Appellant argues that “allegations of what might be well-understood,
routine and conventional are factual determinations requiring evidentiary
proof” and “[n]o such proof has been provided here.” Appeal Br. 10
(discussing Berkheimer v. HP Inc., 881 F.3d 1360, 1363 (Fed. Cir. 2018)).
However, in Berkheimer, the Federal Circuit relied on the specification as
one source of determining whether the additional limitations were well-
understood, routine, and conventional. 881 F.3d at 1369–70. Here, the
Specification expressly states that the hardware components can be
“conventional.” E.g., Spec. 4 (“A processor may be any conventional
general purpose single- or multi-chip processor that can execute logic”), 5
(“a computer-readable storage medium . . . such as a random access memory
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(RAM), read-only memory (ROM), electrically erasable programmable
read-only memory (EEPROM), compact disk read-only memory (CD-ROM)
or other optical disk storage such as digital versatile disc (DVD), magnetic
disk storage or other magnetic storage devices including removable thumb
drives, etc.”), 6 (“the system 100 may be a desktop computer system, such as
one of the ThinkCentre® or ThinkPad® series of personal computers sold
by Lenovo . . . , or a workstation computer, such as the ThinkStation®,
which are sold by Lenovo”; “the system 100 may be, e.g., a game console
such as XBOX®, and/or the system 100 may include a wireless telephone,
notebook computer, and/or other portable computerized device”).
Similarly, Appellant does not dispute that the examples of
“authentication” identified in the Specification (“e.g., fingerprint readers,
keyboards, key card sensors, eye sensors, audio sensors, other biometric
sensors”) were well-understood, routine, and conventional at the time of the
invention. Spec. 9; see also id. at 20. Though not dispositive, see
Berkheimer, 881 F.3d at 1369, the Examiner also cites multiple prior art
references that treat such examples of authentication as routine and
conventional. Ans. 6–8.
Thus, claim 1 does not recite any additional limitations amounting to
significantly more than the abstract idea.
Other Claims
Although Appellant argues that the Examiner has not addressed each
element of each dependent claim, Appellant has not identified any specific
limitation from any other claim that would change the analysis above. See
Appeal Br. 10–11. The Federal Circuit has explained that “[c]ourts may
treat a claim as representative in certain situations, such as if the patentee
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does not present any meaningful argument for the distinctive significance of
any claim limitations not found in the representative claim or if the parties
agree to treat a claim as representative.” Berkheimer, 881 F.3d at 1365.
Given the lack of meaningful argument here, we treat claim 1 as
representative for purposes of § 101.
Conclusion on § 101
Accordingly, we sustain the Examiner’s § 101 rejection of claims 1–
20. See 37 C.F.R. § 41.37(c)(1)(iv).
§ 103
Independent Claim 1
Claim 1 recites to “identify one or more forms of authentication each
associated with a respective predetermined weight, the identification of the
one or more forms of authentication being based at least in part on the sum
of the respective predetermined weights at least meeting a predetermined
weight sum.”
The Examiner relies on Cha for teaching to “identify one or more
forms of authentication” and Ziraknejad for teaching “identifying of a user
by comparing authentication score to authentication threshold value”
wherein the authentication score is a sum of two weighted values. Ans. 10.
Appellant argues:
[N]either reference intimates identifying one or more forms of
authentication based on the “sum” of any predetermined weights
meeting a weight sum. Both references appear to assume use of
one or more forms of authentication regardless of any “weight
sum” being met to identify those forms of authentication in the
first place.
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Specifically, Cha . . . simply lets a user choose which form
of authentication to use based on the user’s “desire” . . . .
Ziraknejad . . . is only directed to what happens after the user
provides input for authentication and thus implies nothing about
how the forms of authentication that were used might have been
identified in the first place.
Reply Br. 8–9 (some emphasis omitted).
We agree with Appellant. The Examiner does not rely on Cha for
teaching the claimed weights, sum, or threshold. Final Act. 15 (“Cha does
not explicitly disclose[] each [form of authentication] associated with a
respective predetermined weight, the identification of the one or more forms
of authentication being based at least in part on the sum of the respective
predetermined weights at least meeting a predetermined weight sum”).
Although Ziraknejad does teach (A) weighting certain values, (B) summing
those values, and (C) comparing the sum to a threshold, those calculations
all occur after the forms of authentication (e.g., facial recognition and voice
recognition) have already been chosen and samples taken (e.g., an image of
the user’s face). See Ziraknejad 9:39–57.
Thus, the Examiner fails to explain sufficiently how the prior art,
whether alone or in combination, teaches or suggests identifying the forms of
authentication based on the sum, let alone based on the sum at least meeting
a threshold (“a predetermined weight sum”). Furthermore, because
Ziraknejad uses environmental conditions (e.g., lighting and background
noise) to weight the image matching score and voice matching score, the
Examiner has not explained sufficiently how Ziraknejad’s weights are
“predetermined” when the form of authentication is identified. See
Ziraknejad 9:39–57, Fig. 9.
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Independent Claims 13 and 19
Independent claim 13 recites “identifying at least a [first / second]
mode of authentication associated with a [first / second] predetermined
weight”; “identifying a threshold”; and “permitting an attempt at
authentication at least in part based on the first and second predetermined
weights together meeting the threshold.” Independent claim 19 recites
commensurate limitations.
As with claim 1, the Examiner fails to explain sufficiently how
Ziraknejad, alone or in combination, teaches that the modes of
authentication are associated with a “predetermined” weight.
Further, because Ziraknejad performs its weighting and comparison to
a threshold after an attempt at authentication has already begun, the
Examiner fails to explain sufficiently how Ziraknejad, alone or in
combination, teaches or suggests permitting an attempt at authentication
based on the weights together meeting the threshold.
Conclusion on § 103
Accordingly, we do not sustain the Examiner’s § 103 rejections of
independent claims 1, 13, and 19, and their dependent claims 2–12, 14–18,
and 20.
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OUTCOME
The following table summarizes the outcome of each rejection:
Claims
Rejected
35
U.S.C. § Basis / References Affirmed Reversed
1–20 101 Subject matter 1–20
1–6, 13, 19 103 Cha, Ziraknejad 1–6, 13,
19
7–9 103 Cha, Ziraknejad,
Shimotono, Burger
7–9
10–12 103 Cha, Ziraknejad,
Shimotono, Burger,
Aguilar-Macias
10–12
14–18 103 Cha, Ziraknejad,
Shimotono, Hayashi
14–18
20 103 Cha, Ziraknejad,
Burger
20
OVERALL
OUTCOME
1–20
TIME TO RESPOND
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.
§ 1.36(a)(1)(iv).
AFFIRMED