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In re Newburger

U.S. Court of Appeals, Federal Circuit

January 11, 1999


Before Newman, Circuit Judge, Skelton, Senior Circuit Judge, and Michel, Circuit Judge.

The opinion of the court was delivered by: Newman, Circuit Judge.

(Serial No. 08/003,323)

Mark J. Newburger appeals the decision of the Patent and Trademark Office ("PTO") Board of Patent Appeals and Interferences, holding claims 1, 2, and 6-17 of application 08/003,323 ("the '323 application") to be unpatentable. *fn1 We affirm the decision of the Board.


The invention pertains to a system to guard against "shoulder surfing." The system seeks to protect users of public telephones against persons who steal, by watching over the user's shoulder, the number of the calling card as it is entered into the keypad. The '323 specification, citing a 1992 New York Times article, states that: "It is estimated that approximately six hundred million dollars in calls are made annually in the United States as a result of access code numbers being obtained by shoulder surfers."

The '323 application describes a telephone system in which the caller is asked, through the earpiece and after the caller enters a telephone access code, a question that is selected at random from a list of stored questions. If the caller answers the question correctly, via the keypad, then the system processes the call. Since the shoulder surfer can not hear the question, and since the question is randomly selected from among several stored possibilities, the system enhances telephone calling card security. Claim 1 is representative:

"1. For use in a telephone system, a method for determining whether a caller attempting to pay for a telephone call at a telephone with a telephone access code is an authorized user of the access code, thereby deterring a third party observer watching the access code being keyed in by the caller from obtaining sufficient information to use the telephone access code by visually observing the caller keying in the access code at the telephone, the method comprising the steps of: receiving the telephone access code from the caller via a keypad of the telephone; randomly selecting a question from a plurality of questions stored in a question memory, the selected question having an expected answer; communicating the selected question to the caller via a speaker at the telephone such that the caller but not the third party observer watching the caller can hear the selected question through the speaker and such that the third party observer cannot see the selected question; receiving a response to the communicated selected question from the caller via the keypad of the telephone; comparing the received response with the expected answer; permitting the caller to make the telephone call if the response received from the caller matches the expected answer."

The Rejection

The Board affirmed the rejection of all of the claims remaining in the applicationCnamely, claims 1, 2, and 6-17Cunder 35 U.S.C. '103, based on three combinations of references. First, claims 1, 2, 6, 8, and 15-17 were rejected on a combination of admitted prior art and U.S. Patent No. 5,297,183 ("Bareis") in view of U.S. Patent No. 4,528,442 ("Endo"). Second, claims 1, 2, 6, 8, and 12-17 were rejected on a combination of the admitted prior art and the Bareis patent in view of U.S. Patent No. 5,056,141 ("Dyke"). Third, claims 7 and 9-11 were rejected on the admitted prior art and the Bareis patent in view of the Dyke patent and further in view of either U.S. Patent No. 5,136,633 ("Tejada") or U.S. Patent No. 4,958,368 ("Parker"). Mr. Newburger appeals, concentrating his argument on claim 1.

In the specification Mr. Newburger describes the use of telephone access codes, a description that the Board characterizes as "admitted prior art." The Bareis patent shows a cellular telephone system wherein the user is asked one or more stored personal questions; the user can respond to these questions via the telephone keypad. Unlike the Newburger system, Bareis does not explicitly teach the use of randomly selecting questions. The Endo patent describes a system for use in bank card or gate control systems, where the user is asked a randomly selected previously stored question; the answer is entered via the keypad. Similarly, Dyke describes an access control system that employs an identification card, such as for a financial account, and that asks randomly selected stored questions that are answered via the keypad.

The Board held that either Endo's or Dyke's teaching of random selection among a group of stored questions, combined with Bareis and the admitted prior art, rendered the invention obvious.



We review the Board's factual findings for clear error and the Board's ultimate legal Conclusion of obviousness for correctness. See In re Zurko, 142 F.3d 1447, 1449, 46 USPQ2d 1691, 1693 (Fed. Cir. 1998) (in banc); In re Mills, 916 F.2d. 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990). Obviousness is a determination of law based on underlying findings of fact. Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1479, 44 USPQ2d 1181, 1183 (Fed. Cir. 1997). The essential factual findings concern 1) the scope and content of the prior art, 2) the level of ordinary skill in the art, 3) the differences between the prior art and the claimed invention, and 4) any objective indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566, 1 USPQ2d 1593, 1595 (Fed. Cir. 1987).

In determining whether a reference is "prior art" in connection with a determination of obviousness, the inquiry is first, whether the reference is from the same field of endeavor, and second, if the reference is not within the field of the inventor's endeavor, whether the reference would have been viewed, by a person of ordinary skill, as pertinent to the problem confronting the inventor. See In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992). When an obviousness rejection depends on a combination of references there must be some teaching, suggestion, or motivation to combine the references in the way in which the inventor combined them in order to solve the inventor's problem. See In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987).

The primary references show a telephone system employing a question-based security check, and each of Endo and Dyke show the use of questions that are selected randomly in access card-based, rather than access number-based, security systems. Mr. Newburger argues that one of ordinary skill in the field of the invention would not have looked to the Endo or Dyke systems to supplement the telephone prior art, stating that there is no suggestion or motivation in the prior art to do so. Mr. Newburger argues that Endo and Dyke display or speak the questions and require the use of an access card, and thus do not solve the problems of telephone shoulder surfing. He states that private communication of the questions through the telephone earpiece is an important feature of his invention.

Upon consideration of these arguments, we do not discern clear error in the Board's Conclusion that a person of ordinary skill in the telephone security field would have looked to access control systems such as those of Endo and Dyke, wherein randomly-selected questions are used to identify the user. A reference is relevant if, although in a somewhat different field from that of the inventor's endeavor, the field is one that would reasonably have commended itself to an inventor's attention in considering his problem. See Clay, 966 F.2d at 659, 23 USPQ2d at 1061. Bareis and the admitted prior art show all of the claimed features of the Newburger system including the storage of the questions, except for the random selection of questions, which is shown by Endo and Dyke. The suggestion to combine the reference teachings flows from the references themselves, for Bareis suggests enhancing telephone security by prompting a user to answer one or more stored personal questions, and Endo, for instance, explicitly states that random selection results in a "higher degree of secrecy." Endo, column 15, lines 61-68.

We have considered all of Mr Newburger's arguments, and conclude that the claims were correctly held unpatentable on the ground of obviousness.


Mr. Newburger directs attention to U.S. Patent No. 5,311,594 ("Penzias"), filed after the Newburger application, and issued as a patent while the Newburger application was rejected. Penzias was mentioned in the examiner's final action rejecting Newburger's claims, although Penzias was not itself a ground of rejection because of its later filing date. Mr. Newburger points to the striking similarity between his invention and that of Penzias, and argues strongly that this presents an additional reason why his earlier-filed application should be allowed. However, we do not deem it appropriate to require the issuance of a patent to Newburger when the requirements of '103 have not been met.

No costs.

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