Suzanne M. Beaumont et al.

Patent Trials and Appeals Board

Sep 4, 2019

14673969 - (D) (P.T.A.B. Sep. 4, 2019)

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.
14/673,969 03/31/2015 Suzanne M. Beaumont RPS920140198-US-NP 5633
55128 7590 09/04/2019
LENOVO - JVL
C/O LESLIE A. VAN LEEUWEN
6123 PEBBLE GARDEN CT.
AUSTIN, TX 78739
EXAMINER
SAVENKOV, VADIM
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
LESLIE@VL-PATENTS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SUZANNE M. BEAUMONT, JAMES A. HUNT, ROBERT J.
KAPINOS, AXEL RAMIREZ FLORES, and
ROD D. WALTERMANN
____________________

Appeal 2018–008350
Application 14/673,9691
Technology Center 2400
____________________

Before MARC S. HOFF, JENNIFER L. MCKEOWN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1–3, 5–10, 12–17, 19, and 20.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellants’ invention is a method and computer program product for
initiating a secure action by physical manipulation. A non-visual challenge

1 Appellants state the real party in interest is Lenovo (Singapore) Pte. Ltd.
App. Br. 2.
2 Claims 4, 11, and 18 have been cancelled.
Appeal 2018-008350
Application 14/673,969

2
request is sent to a wearable device worn by a user. A non-visual challenge
response is received from the wearable device, such as by the user moving
the wearable device. That challenge response is compared to an expected
response, and the system allows use of a resource by the user in response to
a match between the non-visual challenge response and the expected
response. Spec. ¶¶ 1, 2.
Claim 1 is exemplary of the claims on appeal:
1. A method comprising:
sending a non–visual challenge request to a wearable device, wherein
the request is a pattern of one or more vibrations that the
wearable device creates that are felt by a user of the wearable
device, wherein the pattern is selected from a plurality of
available patterns with each pattern corresponding to a different
one of a plurality of expected responses with the selected pattern
corresponding to a selected expected response from the plurality
of expected responses;
receiving a non–visual challenge response from the wearable device
based on a movement detected at the wearable device;
comparing the non–visual challenge response to the selected expected
response;
and
allowing usage of a resource by the user of the wearable device in
response to the comparison revealing that the non–visual challenge
response matches the selected expected response.

Appeal 2018-008350
Application 14/673,969

3
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Ho et al. US 8,430,310 B1 pat. Apr. 30, 2013
Najafi et al. US 8,749,361 B2 pat. Jun. 10, 2014
Sibert et al. US 2015/0326402 A1 pub. Nov. 12, 2015
Kalgi et al. US 2013/0205370 A1 pub. Aug. 8, 2013

Claims 1, 5–8, 12–15, 19, and 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Ho and Najafi.
Claims 2, 9, and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ho, Najafi, and Sibert. Final Act. 9.
Claims 3, 10, and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ho, Najafi, and Kalgi. Final Act. 11.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed Feb. 7, 2018), the Reply Brief (“Reply Br.,” filed Aug. 14,
2018), and the Examiner’s Answer (“Ans.,” mailed June 14, 2018) for their
respective details.

ISSUE
Appellants’ arguments present us with the following issue:
Does the combination of Ho and Najafi disclose or suggest sending a
non–visual challenge request to a wearable device?
PRINCIPLES OF LAW
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). The test of obviousness is not whether the
Appeal 2018-008350
Application 14/673,969

4
features of a secondary reference may be bodily incorporated into the
structure of the primary reference, nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. Id. at 425.
ANALYSIS
CLAIMS 1, 5–8, 12–15, 19, AND 20
Independent claim 1 recites, in pertinent part, “sending a non-visual
challenge request to a wearable device, wherein the request is a pattern of
one or more vibrations that the wearable device creates that are felt by a user
of the wearable device,” and “receiving a non-visual challenge response
from the wearable device.” The other independent claims (8 and 15) recite
nearly identical limitations.
Appellants argue that the Examiner improperly applied Graham v.
Deere by rewriting portions of the claims “to better match the art cited by
the Examiner.” Reply Br. 2. We do not agree that the Examiner unfairly
modified Appellants’ claim language, as alleged. App. Br. 7. Referring to
the Final Rejection, the Examiner listed each of the limitations of, e.g.,
independent claim 1, and described (where pertinent) how the Ho reference
disclosed the limitation. Final Act. 5–6. The Examiner then clearly stated
that Ho does not fully disclose “sending a non-visual challenge request to a
wearable device, wherein the request is a pattern of one or more vibrations
that the wearable device creates . . . .” Final Act. 6. Next, the Examiner
explained how Najafi is found to disclose the limitation(s) missing from Ho,
and why the proposed combination would have been obvious, in compliance
with Graham v. Deere.
Appeal 2018-008350
Application 14/673,969

5
Appellants contend that Ho does not disclose providing any signals to
a user using vibrations. Reply Br. 3. While Appellants correctly
characterize Ho, this absence in Ho is conceded by the Examiner, who then
relies on Najafi for its disclosure of non-visual challenge requests. “[T]he
authenticator 302 may tactilely communicate the authentication code to the
user 306 . . . using a sequence of discrete vibrations, e.g., a pattern, that may
be felt by the user’s hand, for instance.” Najafi 7:65–8:3.
Appellants contend that the Examiner erred in applying Najafi
because Najafi does not disclose non-visual data entry, and thus that neither
reference teaches or suggests “receiving a non-visual challenge request” as
claimed. Reply Br. 4. Appellants’ argument is not persuasive of error
because the Examiner relied on Ho, rather than Najafi, as teaching the
claimed “receiving a non-visual challenge response from the wearable
device.” “The challenge response may include a particular pattern of
motions detected at motion sensor 402.” Ho 20:34–35.
Last, Appellants argue that the combination of Ho and Najafi
proposed by the Examiner would not provide a workable solution, because
the approaches of the two references “cannot be combined into a single
wearable technology device.” Reply Br. 4. Appellants contend that the
combination of references “would require the user to wear or hold two
devices.” We do not agree with this contention and are not persuaded by
Appellants’ argument. We agree with the Examiner that the test of
obviousness is not whether Najafi can be bodily incorporated into Ho.
Ans. 6. Rather, the test is what the combined teachings of the references
would have suggested to the person having ordinary skill in the art. Keller,
642 F.2d at 425. We agree with the Examiner that the combination of
Appeal 2018-008350
Application 14/673,969

6
references fairly suggests modifying Ho in view of Najafi to include means
to communicate a non-visual challenge to the user, for example, by
vibration. Ans. 6–7.
We conclude that the Examiner did not err in rejecting claims 1, 5–8,
12–15, 19, and 20 over Ho and Najafi. We sustain the § 103 rejection.
CLAIMS 2, 9, AND 16
Claims 2, 9, and 16 depend from respective independent claims 1, 8,
and 15. Appellants present no separate argument for the patentability of
these claims in either the Appeal Brief or the Reply Brief. Accordingly, we
sustain the Examiner’s § 103 rejection of claims 2, 9, and 16 over Ho,
Najafi, and Sibert, for the reasons given supra with respect to the rejection
over Ho and Najafi alone.
CLAIMS 3, 10, AND 17
Claims 3, 10, and 17 depend from respective independent claims 1, 8,
and 15. Appellants present no separate argument for the patentability of
these claims in either the Appeal Brief or the Reply Brief. Accordingly, we
sustain the Examiner’s § 103 rejection of claims 3, 10, and 17 over Ho,
Najafi, and Kalgi, for the reasons given supra with respect to the rejection
over Ho and Najafi alone.

CONCLUSION
The combination of Ho and Najafi suggests sending a non–visual
challenge request to a wearable device.
ORDER
The Examiner’s decision to reject claims 1–3, 5–10, 12–17, 19, and
20 is affirmed.
Appeal 2018-008350
Application 14/673,969

7
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED