Brian P. Theado et al.

Patent Trials and Appeals Board

Sep 4, 2019

13332748 - (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.
13/332,748 12/21/2011 Brian P. Theado 20110224 9828
25537 7590 09/04/2019
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
NEUBIG, MARGARET M
ART UNIT PAPER NUMBER
3685
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):
patents@verizon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN P. THEADO, KHOA N. NGUYEN and
LLOYD S. PALMER JR.1
____________________

Appeal 2017-009512
Application 13/332,748
Technology Center 3600
____________________

Before JEAN R. HOMERE, JON M. JURGOVAN, and
JOHN R. KENNY, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–15 and 20–24. Claims App’x. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 The Appeal Brief indicates the real party in interest is Verizon
Communications Inc. App. Br. 3.
2 Our Decision refers to the Specification (“Spec.”) filed December 21,
2011, the Final Office Action (“Final Act.”) mailed September 8, 2016, the
Appeal Brief (“App. Br.”) filed January 5, 2017, the Examiner’s Answer
(“Ans.”) mailed May 4, 2017, and the Reply Brief (“Reply Br.”) filed June
27, 2017.
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CLAIMED SUBJECT MATTER
According to Appellants, the claimed subject matter relates to
network-based transaction services. Spec. ¶ 1. The transactions services
involve short sessions to support inquiry-and-response applications,
including credit/debit card authorization. Id. Claim 1, reproduced below, is
illustrative of the claimed invention:
1. A method comprising:
receiving a first message from a transaction device, the
first message requesting an authorization or a settlement of a
transaction;
emulating a customer host device based on a first portion
of the first message, wherein emulating the customer host
device includes emulating a Visa 2 protocol;
generating a second message via the emulation; and
routing the second message to the customer host device
via a persistent socket, the second message requesting a
component on the customer host device to authorize the
transaction or to settle the transaction.

App. Br. 24 (Claims Appendix).

REJECTIONS & EVIDENCE
Claims 1–5, 8–10, 14, 15, and 20–24 stand rejected under 35 U.S.C.
§ 103(a)3 based on Conrow (US 5,526,409, issued June 11, 1996) and
Ford Jr. (US 2010/0306072 A1, published Dec. 2, 2010). Final Act. 9–16.

3 The Final Office Action erroneously mentions 35 U.S.C. § 102(b) but the
heading, statutory language, and body of the rejection indicate a rejection
under 35 U.S.C. § 103(a). We find no evidence that the Appellants were
confused as to the statutory basis for the rejection. Accordingly, we view
the mention of § 102(b) in a § 103(a) rejection as harmless error.
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Claim 6 stands rejected under 35 U.S.C. § 103(a) based on Conrow,
Ford, and Spiker (US 2008/0208785 A1, published Aug. 28, 2008). Final
Act. 16–17.
Claim 7 stands rejected under 35 U.S.C. § 103(a) based on Conrow,
Ford, and Spiker. Final Act. 17.
Claim 11 stands rejected under 35 U.S.C. § 103(a) based on Conrow,
Ford, and Kramer (US 6,324,525 B1, issued Nov. 27, 2001). Final Act. 17–
18.
Claim 12 stands rejected under 35 U.S.C. § 103(a) based on Conrow,
Ford, and Saunders (US 2011/0306320 A1, published Dec. 15, 2011). Final
Act. 18–19.
Claim 13 stands rejected under 35 U.S.C. § 103(a) based on Conrow,
Ford, and Ofir (US 2004/0128201 A1, published July 1, 2004). Final Act.
19.

ANALYSIS
§ 103(a) Rejection
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (“KSR”). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
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secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).
Claim 1
The Examiner finds Conrow discloses the claimed “emulating a
customer host device based on a first portion of the first message, wherein
emulating the customer host device includes emulating a Visa 2 protocol.”
Final Act. 9–10 (citing Conrow 5:37–44; 6:8–27, 45–63; 18:51–19:36;
20:47–55). Appellants disagree with the Examiner, and present several
arguments in support of their contention that Conrow fails to disclose the
claimed feature. App. Br. 7–11.
Specifically, Appellants argue that Conrow discloses reformatting a
transaction to conform to a standard authorization request format called for
by a transaction card service provider, such as a Visa2 format. App. Br. 9;
Reply Br. 4. Appellants argue Conrow’s reformatting does not disclose
emulating a Visa 2 protocol, as required by claim 1. Id.
We do not agree with Appellants’ argument. Claim terms are given
their broadest reasonable interpretation consistent with the specification. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). The
Specification in this case does not define the claim term “emulating.” Under
this circumstance, it is appropriate to apply the plain (ordinary and
customary) meaning to the claim term. MPEP § 2111.01.
The Examiner relies on a dictionary definition of “emulate” to provide
the plain meaning of the claim term. According to this definition, “emulate”
means “[t]o represent a system by a model that accepts the same inputs and
produces the same outputs as the system represented. For example, to
emulate an 8-bit computer with a 32-bit computer.” Final Act. 3–4 (citing
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THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS, published by
STANDARDS INFORMATION NETWORK IEEE PRESS, the Institute of Electrical
and Electronics Engineering, Inc., New York, NY 2000). We accept the
Examiner’s definition of “emulate,” which is not only unrebutted, but is
relied upon by the Appellants in making their arguments. App. Br. 9–10.
The Examiner notes that Conrow’s Authorization and Draft Capture
Module (ADCM) 48 “is a reformatting editor which validates, formats, and
enhances the transaction to conform to the standard authorization request
format called for by the service provider, such as the standard VISA II
format, for example.” Ans. 6 (citing Conrow 6:60–63). We agree with the
Examiner that Conrow’s reformatting of an authorization request format into
VISA II format may be regarded by a person of ordinary skill in the art as an
instance of “emulating” the VISA II protocol.
Appellants argue that no device of Conrow accepts the same inputs
and produces the same outputs as would a system using Visa II protocol
according to the Examiner’s definition for “emulating.” App. Br. 9–10. As
noted, the Examiner finds that Conrow discloses receiving and reformatting
an authorization request message into VISA II format. Final Act. 5 (citing
Conrow 6:51–63). The Examiner also noted that Conrow’s system receives
an authorization response from the Authorization network 8. Id. (citing
Conrow 7:6–8). Accordingly, the Examiner demonstrates that Conrow’s
system uses VISA II format for an output (reformatted authorization request)
and an input (authorization response). Thus, Conrow’s system can be
understood as “emulating” the VISA II protocol under the Examiner’s
definition of the term. Therefore, we do not find Appellants’ argument
persuasive to show Examiner error.
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Appellants next argue “[a] system using a Visa2 protocol would not
output a reformatted authorization request, as alleged by the Examiner.
Instead, a system using a Visa2 protocol would process the authorization
request.” App. Br. 10. Initially, we note that claim 1 does not recite that any
system performs the claimed “emulating” or processes an authorization
request according to Appellants’ argument. Limitations not appearing in the
claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982). Moreover, the Examiner interprets the claimed
“customer host device” as corresponding to the Specification’s payment
processor 130, card association 140, and card issuer 150, and the claimed
“authorization network” as corresponding to the card association 14 and
card issuer 150. Ans. 10. The Examiner states that “[u]nder this
interpretation, Appellants payment processor sends the Visa 2-formated
transaction request to the authorization network, as does Conrow in the
citations described above.” Id. In other words, the Examiner interprets the
claimed “customer host device” as encompassing Conrow’s communication
system 4 which emulates Visa II protocol to generate an authorization
request, and also Conrow’s authorization network 8 which processes the
authorization request. Thus, Conrow’s system, composed of the
communication system 4 and authorization network 8, processes the
reformatted authorization request, contrary to Appellants’ argument that it
does not. Although Appellants argue in the Reply Brief that an authorization
network is not a customer host device, Appellants provide no evidence to
support that a person of ordinary skill in the art would have understood the
two things to be distinct. Lawyer’s arguments and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
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value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Appellants’
Reply Brief argument that Conrow does not disclose emulating the
authorization network based on a first portion of the authorization request
(Reply Br. 5) misapprehends how the Examiner’s maps claim 1 to Conrow,
as explained above.
Appellants further argue Conrow “does not disclose or suggest
emulating a customer host device based on a first portion of the first
message, wherein emulating the customer host device includes emulating a
Visa 2 protocol, as recited in claim 1.” App. Br. 10–11. As explained, the
Examiner shows that Conrow discloses a customer host device emulating a
VISA II protocol. Final Act. 4–5 (citing Conrow 6:51–63, 7:6–8); Ans. 6.
As to the claimed “emulating a customer host device based on a first portion
of the first message,” Conrow’s Figure 11 depicts a communication system
interface (CSI) message 148 with transport header 150, presentation header
152, and message data 154. Conrow 17:33–36. The message data 154
carries transaction information and constitutes a first portion of the first
message 148. Final Act. 9 (citing Conrow 18:51–19:36). ADCM 48
emulates VISA II format by reformatting the first portion of the first
message (the received authorization request) into a second message (the
reformatted transaction request). Conrow 6:60–63. Thus, we are not
persuaded that Conrow fails to disclose the claimed feature.
Appellants further argue Conrow fails to disclose the claimed
“generating a second message via the emulation.” Final Act. 8. Appellants
argue “the reformatted request of Conrow cannot correspond to the second
message of claim 1” because “it does not request a component on the
customer host device to authorize or settle a transaction.” App. Br. 11.
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Again, the Examiner maps the claimed “customer host device” to encompass
Conrow’s communication system 4 and authorization network 8. As so
mapped, Conrow’s communication system 4 and authorization network 8 are
components of the claimed “customer host device” which reformats
Conrow’s authorization request to conform to the VISA II format (the
claimed “generating the second message via the emulation”), authorizes or
settles the authorization transaction, and transmits an authorization response.
Ans. 10; Conrow 6:51–63, 7:6–8. Thus, Conrow discloses “generating a
second message via the emulation.” We do not find Appellants’ argument
persuasive in view of the manner in which the Examiner maps claim 1 to
Conrow.
The Examiner finds one of ordinary skill would have combined
Conrow and Ford “because a persistent socket would have allowed
transaction authorization requests and responses to have been routed
quickly, and would therefore have limited customer wait time and increased
the volume of transactions merchants were able to process.” Final Act. 10.
Appellants argue that one of ordinary skill in the art would not have
combined Conrow with Ford, contending the Examiner’s rationale to
combine is conclusory, and merely because Conrow and Ford together may
disclose the claimed limitations does not mean one would have combined
them. App. Br. 11–12. Appellants further argue Conrow discloses receiving
the authorization request from the processor controller via a serial cable, so
there would be no reason to combine Conrow and Ford to allow transaction
requests and responses to be routed more quickly, as the Examiner contends.
Id.
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We do not agree with Appellants’ arguments. As the Examiner notes,
both Conrow and Ford are in the same field of endeavor and address
transaction card processing. Final Act. 10; see also Conrow’s title; Ford ¶ 2.
We agree with the Examiner that “[s]peed in financial transactions is widely
accepted as important to customers and merchants alike.” Id. Moreover, as
the Examiner notes, Conrow discusses the benefits of faster transaction
authorization service, and ways to achieve it. Ans. 10 (citing Conrow 2:14–
48; 7:23–56). With these Conrow teachings, we find it reasonable one of
ordinary skill in the art would look to a feature such as Ford’s persistent
socket to achieve faster service, as the Examiner finds. Id. Thus, we do not
agree with Appellants’ argument that the Examiner’s rationale to combine
Conrow and Ford is conclusory and merely pieces together prior art
teachings without a sufficient reason for making the combination.
As to Appellants’ argument that Conrow’s receiving an authorization
request from the processor controller via a serial cable somehow means that
there is no reason to combine Ford to allow requests and responses to be
routed more quickly, we do not agree. App. Br. 12. A persistent socket
could exist between any of the elements 10, 12, 4 or 8 in Conrow’s system to
speed transactions, including over a serial cable between elements 12 and 4.
At least, Appellants do not present evidence showing otherwise. Lawyer’s
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. See Geisler, supra.
Accordingly, we do not find this argument to be persuasive.
Dependent Claim 8
Claim 8 depends from claim 1 and recites the following:
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8. The method of claim 1, wherein routing the second message
includes:
obtaining a destination address of the second message by
performing a lookup of the customer host device in a structured
query language (SQL) database, a linked list, or a hash table.
The Examiner finds this feature is disclosed by Conrow because the
value of the destination address becomes the value of the source
address when a response is sent by the destination to the source, and
because the destination address is used to determine the telephone
number to dial to establish a connection with the Authorization
network. Final Act. 12 (citing Conrow 18:63–65, 19:14–44); Ans. 5–
6. Although Appellants argue Conrow and Ford do not disclose the
claimed feature (App. Br. 15; Reply Br. 6), Appellants do not explain,
for example, why using a destination address to determine a telephone
number does not disclose a “linked list.” See 37 C.F.R.
§ 41.37(c)(1)(iv) (“The arguments shall explain why the Examiner
erred as to each ground of rejection contested by appellant.”
(Emphasis added)). Appellants do not argue that SQL databases,
linked lists, and hash tables are nonobvious features, nor do
Appellants explain how they could be nonobvious in combination
with any other claimed feature. Accordingly, we find Appellants’
argument unpersuasive to show Examiner error.
Dependent Claim 9
Claim 9 depends from claim 8 and recites the following:
9. The method of claim 1, wherein receiving the first message
from the transaction device includes receiving the first message
from the transaction device via a dial access server, the method
further comprising:
filtering the first message; and
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obtaining, based on the filtering, a transaction
information string inserted into the first message.
The Examiner finds the claimed feature disclosed by Conrow, and that
certain parts of the claim are not positively recited and are therefore
non-limiting. Final Act. 6, 12 (citing Conrow 17:33–19:21, Figures
11 and 12). Conrow states “[t]he message is received by CSI module
46 of CS 4 which determines that the message is an authorization
request.” Thus, the Examiner shows that Conrow evaluates the
message to determine it is an authorization request (the claimed
“filtering”), and extracts a transaction information string from
message data 154 (the claimed “obtaining”). See Conrow Figures 11
and 12.
Appellants argue Conrow does not disclose the claimed feature,
and that all limitations of the claim are positively recited. App. Br.
19–20; Reply Br. 7–8. Even assuming Appellants are correct that all
of the limitations of claim 9 are positively recited, Appellants do not
explain why the Examiner’s finding that Conrow discloses the claimed
“filtering” and “obtaining” may be erroneous. See 37 C.F.R.
§ 41.37(c)(1)(iv). Again, attorney argument is not evidence that could
support reversal of the Examiner’s rejection. See Geisler, supra.
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Accordingly, we are not persuaded the Examiner errs in the rejection
of claim 9.4
Remaining Claims and Rejections
Appellants present no separate arguments for the remaining claims or
their rejections. Accordingly, the remaining claims fall for the reasons
stated above. See 37 C.F.R. § 41.37(c)(1)(iv).

DECISION
We affirm the rejections of claims 1–15 and 20–24 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

4 Appellants argue in the Reply Brief that Conrow does not disclose
receiving a first message from a transaction device via a dial access server,
or a dial access server, as claimed. Reply Br. 7–8. These are new arguments
presented for the first time in the Reply Brief without a showing of good
cause. We do not consider such late arguments as the Examiner has not had
an opportunity to consider and respond to them. See 37 C.F.R.
§ 41.41(b)(2). In any case, Appellants do not explain why Conrow’s
communication system 4 would not be considered to disclose these features
of claim 9. See Conrow 5:1–4, 5:50–52, 6:56–59.