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In re Newburger

January 11, 1999

IN RE MARK J. NEWBURGER


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

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.

DISCUSSION

A.

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 ...


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