SugarCRM Inc.

Patent Trials and Appeals Board

Jun 22, 2020

2019002464 (P.T.A.B. Jun. 22, 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.
15/096,497 04/12/2016 Vladyslav Kulchytskyy 1301-087U 1959
112025 7590 06/22/2020
Shutts & Bowen LLP
Steven M. Greenberg, Esq.
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
EXAMINER
LIU, LI
ART UNIT PAPER NUMBER
2666
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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):
docketing@crgolaw.com
patents@shutts.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte VLADYSLAV KULCHYTSKYY

Appeal 2019-002464
Application 15/096,497
Technology Center 2600

Before LINZY T. McCARTNEY, JAMES W. DEJMEK, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 and 10–15. Appeal Br. 1. 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 (2018). Appellant identifies the real party in interest as
SugarCRM, Inc. Appeal Br. 2.
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Application 15/096,497

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CLAIMED SUBJECT MATTER
The claimed invention relates to a biometric state switching method.
Appeal Br 1. Independent claim 1 is illustrative, with the limitations at issue
italicized for emphasis:
1. A biometric state switching method comprising:
storing in a database a multiplicity of different states of
an application and a multiplicity of different fingerprints, each
in connection with a different state of a corresponding
application;
authenticating an end user into use of a computing device
by receiving in a fingerprint scanner affixed to the computing
device a scanned fingerprint, matching the scanned fingerprint
to one of the different fingerprints in the database, and if the
scanned finger print matches one of the different fingerprints in
the database, authenticating the end user into user of the
computing device; and,
subsequent to authentication, executing an application in
memory of the computing device, identifying a state for the
application stored in connection with the one of the different
fingerprints matched to the scanned fingerprint, and setting a
state of execution of the application to the identified state.
Independent claims 6 and 11 recite, respectively, a system and a
computer program product having the above-italicized limitations. Appeal
Br. 17, 19 (Claims App.). Dependent claims 2–5, 7, 8, 10, and 12–15 each
incorporate the limitations of their respective independent claims. Appeal
Br. 16–20. (Claims App.).
REFERENCES
Name Reference Date
Coogan et al.
(“Coogan”)
US 2007/0140530 A1 June 21, 2007
Kulchytskyy US 10,133,471 B2 Nov. 20, 2018
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REJECTIONS
Claims 1–8 and 10–15 are rejected under 35 U.S.C. § 112(b).
Claims 1–8 and 10–15 are rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Coogan.
Claims 1–8 and 10–15 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 7,
and 12 of copending U.S. Application 15/096,471, now Kulchytskyy.
OPINION
A. Indefiniteness
We have reviewed the Examiner’s indefiniteness rejection (Final
Act. 5–6) and Appellant’s contentions in the Appeal Brief (Appeal Br. 2).
We have further reviewed the discussion in the Examiner’s Answer (Ans. 3)
and the Reply Brief (Reply Br. 2).
The Examiner rejects claim 1 as being unclear whether the term “an
application” in line 3 is related to the “corresponding application” in line 5,
or to the “an application” recited in line 12. Final Act. 6. The Examiner
rejects independent claims 6 and 11 for having similar limitations, and
rejects the dependent claims for having the aforementioned limitations by
virtue of dependency. Id.
Appellant argues,
[f]or the purposes of this Appeal Brief, the Board is requested
to read Appellants’ claims in light of Examiner’s suggestions in
the Final Office Action. Specifically, claim 1, lines 3 through 5
should read: a multiplicity of different states of an application
and a multiplicity of different fingerprints, each in connection
with a different one of the states of a corresponding the
application.
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Appeal Br. 5. Appellant further requests that claims 1, 6, and 11 should read
“executing the application” rather than “executing an application.” Reply
Br. 2.
We are not persuaded of error in the Examiner’s rejection. Appellant
has not argued that the Examiner erred in making the rejection. Although
Appellant asks us to read such limitations into the claim, our decision is
limited to the language of the claims as they exist upon appeal. See, e.g., In
re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[T]he name of the
game is the claim”). Consequently, we affirm the Examiner’s rejection of
claims 1–8 and 10–15.
B. Anticipation
We have reviewed the Examiner’s anticipation rejection over Coogan
(Final Act. 3–4, 7–8) and Appellant’s contentions in the Appeal Brief
(Appeal Br. 10–15). We have further reviewed the discussion in the
Examiner’s Answer (Ans. 5–7) and Appellant’s Reply Brief (Reply Br. 4–6).
Appellant primarily contends that Coogan does not set a state of execution
of an application to an identified state. Reply Br. 5–6. We are not
persuaded by Appellant’s arguments.
The Examiner finds, inter alia, that Coogan discloses setting “states of
the application” in the form of computer software instructions in an ATM
application that execute tasks based upon recognition of specific
fingerprints. Ans. 5–6. The Examiner finds Coogan’s ATM to identify and
execute the set of instructions associated with the fingerprint in order to
accomplish tasks such as “Balance Inquiry” or “Deposit.” Id. at 6. The
Examiner further finds Coogan to authenticate a user “against a fingerprint
database (step 506), followed by determining which command to execute
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(block 508), and finally executing the command associated with the finger
(block 510).” Id. at 7.
Appellant contends that Coogan does not disclose “identifying a state
for the application stored in connection with the one of the different
fingerprints matched to the scanned fingerprint and setting a state of
execution of the application to the identified state,” as “[e]ssentially present”
in the independent claims. Appeal Br. 10–11. Appellant argues that Coogan
instead teaches “associating separate commands in the application with
different fingerprints.” Id. at 11–12. Appellant further characterizes Coogan
as having commands that may be customized based upon fingerprint input in
which a command is executed upon recognizing a fingerprint of an
authorized user. Id. at 12–13 (citing Coogan ¶ 36). Appellant argues that
Coogan “makes no reference to an identified state of execution or state of
the ATM application,” and thus fails to describe all elements of claim 1. Id.
at 13. Appellant argues that in Coogan, upon the fingerprint being
recognized, an operation such as withdrawal is performed irrespective of any
state or state of the execution of the ATM application. Id. Appellant further
argues that a state of an application may include a configuration of
commands, and an application is in a state of execution when it is able to
execute commands. Id. at 14. Appellant differentiates Coogan as being in a
state of execution as the commands are executed by the application, whereas
Appellant characterizes claim 1 as using fingerprint matching to set the state
of the application into a state of execution. Id. at 14–15.
Anticipation requires a single prior art reference to describe, either
expressly or inherently, each and every element as set forth in the
claim. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
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(Fed. Cir. 1987). The issue turns upon whether the ATM application
instructions of Coogan perform a task that describes, either expressly or
inherently, setting the state of an application into a state of execution.
To interpret the term “state of execution,” we turn to paragraph 21 of
the Specification, following Appellant’s direction. Appeal Br. 3. There,
Appellant describes a “fingerprint-to-state table.” Spec. ¶ 21. If a scanned
fingerprint matches an entry in the table, the corresponding state is applied
to a corresponding application (block 370). Id. The application of a state,
through functions and acts specified in the blocks, is performed by computer
instructions. Id. ¶ 26.
In view of the description in the Specification, we are not persuaded
by Appellant’s arguments. Appellant argues that the claim requires
fingerprints to be associated with separate states of execution, followed by
setting a state of execution corresponding to an identified fingerprint.
Appeal Br. 10–11. The Specification describes the claimed “setting a state
of execution” as an act, performed by a block, which is implemented by
computer instructions. Spec. ¶ 21. We agree with the Examiner that
Coogan’s association of fingerprints with particular commands, which are
then implemented by computer instructions, describes the claimed invention.
Appellant further argues that Coogan does not anticipate claim 1
because the Examiner’s nonstatutory double patenting rejection states that
the language of claim 1 is not identical to the language in Kulchytskyy.
Reply Br. 6. However, the double patenting rejection is based on
Kulchytskyy, not Coogan. Accordingly, whether claim 1 has identical
language as Kulchytskyy is not relevant to whether claim 1 is anticipated by
Coogan.
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For the aforementioned reasons, we are not persuaded that the
Examiner has erred in rejecting claim 1 as being anticipated by Coogan.
Because claims 2–8 and 10–15 have not been argued separately, those
claims fall with claim 1, and we sustain the Examiner’s rejection of claims
2–8 and 10–15. 37 C.F.R. 41.37 (c)(1)(iv).
C. Double Patenting
We have reviewed the Examiner’s nonstatutory double patenting
rejection (Final Act. 3–5) and Appellant’s contentions in the Appeal Brief
(Appeal Br. 5–10). We have further reviewed the discussion in the
Examiner’s Answer (Ans. 3–5) and the Reply Brief (Reply Br. 2–3). At the
time of the Final Rejection, the rejection was made over copending
application 15/096,471. During the briefing of this appeal, application
15/096,471 issued as U.S. Patent 10,133,471 B2. Because the conflicting
claims have now been patented, the rejection is no longer a “provisional”
rejection. See MPEP 1504.06 (“A provisional double patenting rejection
will be converted into a double patenting rejection when the first application,
which is the basis for the rejection, publishes as an application publication or
issues as a patent”).
The Examiner rejects claim 1 over Kulchytskyy’s claim 1, which read
as follows (emphasis added in italics):
Claim 1 Kulchytskyy claim 1
A biometric state switching method
comprising:
storing in a database a multiplicity
of different states of an application
and a multiplicity of different
fingerprints, each in connection with
a different state of a corresponding
A biometric shortcut method
comprising:

storing in a database a multiplicity
of different fingerprints, each in
connection with a different
command for a corresponding
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application;
authenticating an end user into use
of a computing device by receiving
in a fingerprint scanner affixed to
the computing device a scanned
fingerprint, matching the scanned
fingerprint to one of the different
fingerprints in the database, and if
the scanned finger print matches
one of the different fingerprints in
the database, authenticating the end
user into user of the computing
device; and,
subsequent to authentication,
executing an application in memory
of the computing device, identifying
a state for the application stored in
connection with the one of the
different fingerprints matched to the
scanned fingerprint, and setting a
state of execution of the application
to the identified state.
application;

authenticating an end user into use
of a computing device; and,

subsequent to authentication,
receiving in a fingerprint scanner
affixed to the computing device a
scanned fingerprint, matching the
scanned fingerprint to one of the
different fingerprints in the
database,

determining a command for a
corresponding application stored in
connection with the one of the
different fingerprints matched to the
scanned fingerprint, and issuing the
command in the corresponding
application executing in the
computing device.

The Examiner finds,
[b]oth the instant application and the copending application
#15/096471 are [a] computer-based system which, by
definition, involves issuance of “command[s]” in the form a set
of instructions or programs. The instructions or programs define
a “state of execution of the application” that instructs a
computer to do a specific task such as processing the fingerprint
of a specific finger. Different finger corresponds to different
processing (i.e., different command) associated with a different
set of instructions/programs (i.e., different state of execution of
the application).
Final Act. 3. The Examiner further states that the Specification indicates
that different tasks are associated with different sets of instructions. Ans. 4
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(citing Spec. ¶ 27 “each block in the flowchart or block diagrams may
represent a module, segment, or portion of instructions, which comprises one
or more executable instructions for implementing the specified logical
function(s)”).
Appellant argues that the claimed “multiplicity of different states of
an application” and “setting a state of execution of the application to the
identified state” based on a fingerprint identification is not the same as
Kulchytskyy’s “different commands” and “issuing the command in the
corresponding application” based on a fingerprint identification. Appeal
Br. 7. Appellant argues that the Examiner has not provided any basis for the
Examiner’s interpretation. Id. at 7–8.
Appellant further proposes definitions, taken from a computing
dictionary, of the terms “command,” “state,” “execution,” and “stateless.”
Id. at 8 (citing The Free On-line Dictionary of Computing). Appellant
argues that a “state of an application is a temporary configuration of the
application based on previous interaction with the application, which may
include a temporary configuration of commands.” Id. at 9. Appellant
further argues that “a state of an application is in a state of execution when
the state of the application is able to issue commands.” Id. Appellant argues
that commands are a specific set of instructions that may occur in stateful or
stateless applications. Id. Appellant concludes that “issuing a command in
an application that is already in a state of execution is necessarily different
than setting a state of the application before the state of the application is in
a state of execution.” Id.
We are not persuaded by Appellant’s arguments. In the Examiner’s
interpretation, a command defines a state of execution of the application that
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instructs a computer to do a specific task. Final Act. 3; Ans. 4. We find the
Specification to support such an interpretation. As discussed, supra at 6, the
claimed “setting a state of execution” is described as an act that is
implemented by computer instructions. Spec. ¶ 21. Appellant’s proffered
definitions show that a state of an application is a configuration based on
computer instructions. See Appeal Br. 9. We do not find this argument
inconsistent with the Examiner’s interpretation. Accordingly, we sustain the
Examiner’s rejection of claim 1. Because claims 2–8 and 10–15 have not
been argued separately, those claims fall with claim 1, and we sustain the
Examiner’s rejection of claims 2–8 and 10–15. 37 C.F.R. 41.37 (c)(1)(iv).

CONCLUSION
For the above-described reasons, we affirm the Examiner’s rejections
of claims 1–8 and 10–15 as being indefinite under 35 U.S.C. § 112(b), and
as being unpatentable on the ground of nonstatutory double patenting over
Kulchytskyy, and as being anticipated by Coogan under 35 U.S.C.
§ 102(a)(1).
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)(1)(iv).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Grounds Affirmed Reversed
1–8, 10–15 Double Patenting 1–8, 10–15
1–8, 10–15 112(b) Indefiniteness 1–8, 10–15
1–8, 10–15 102(a)(1) Coogan 1–8, 10–15
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Overall
Outcome
1–8, 10–15

AFFIRMED