Ex Parte Atig

Board of Patent Appeals and Interferences

Feb 14, 2011

10297722 (B.P.A.I. Feb. 14, 2011)

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.
10/297,722 11/03/2003 Sami Atig ATIG-1772 7665
25628 7590 02/15/2011
LAW OFFICES OF WILLIAM H. HOLT
12311 HARBOR DRIVE
WOODBRIDGE, VA 22192
EXAMINER
FELTEN, DANIEL S
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
02/15/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte SAMI ATIG 8
___________ 9
10
Appeal 2009-014894 11
Application 10/297,722 12
Technology Center 3600 13
___________ 14
15
Before HUBERT C. LORIN, ANTON W. FETTING, and 16
BIBHU R. MOHANTY, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL1 19

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-014894
Application 10/297,722

2
STATEMENT OF THE CASE2 1

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed February 6, 2009) and the Examiner’s Answer (“Ans.,” mailed
May 12, 2009).
Sami Atig (Appellant) seeks review under 35 U.S.C. § 134 (2002) of a 2
final rejection of claims 9-15, which along with claims 16-28 withdrawn 3
from consideration, are the only claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellant invented a way of securing transactions performed with 6
cards provided with an owner identification number and protected by a 7
secret code for certain operations (Specification 1:4-6). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 13, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
13. A method for performing secure transactions 12
by means of cards provided with an identification 13
number, 14
said transactions including the steps of 15
[1] identifying said card via a telecommunications transaction 16
for communication of said identification number, 17
said transactions being the type in which the 18
identification number of said card comprises, 19
Appeal 2009-014894
Application 10/297,722

3
in positions predetermined by arrangement with 1
the institution handling the transactions, 2
at least one character that is modifiable with each 3
of said transactions, and 4
[2] modifying said character as a function of at least one 5
character of at least one predetermined parameter, and 6
being characterized in that 7
said predetermined parameter is an element of at 8
least one event that is random in nature, 9
chosen by agreement with said institution 10
for securing said transaction. 11
The Examiner relies upon the following prior art: 12
Parillo US 5,239,583 Aug. 24, 1993
Claims 9-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable 13
over Parillo. 14
ISSUES 15
The issue of obviousness turns on whether evidence shows it was 16
predictable to modify an identification character based on a character in a 17
predefined parameter that is an element of a random nature event chosen by 18
agreement with the institution as recited in limitation [2]. 19
FACTS PERTINENT TO THE ISSUES 20
The following enumerated Findings of Fact (FF) are believed to be 21
supported by a preponderance of the evidence. 22
Facts Related to the Prior Art Parillo 23
Appeal 2009-014894
Application 10/297,722

4
01. Parillo is directed to improving card access security by 1
eliminating the possibility that repeating an exact access code 2
which was successful will be successful in the next transaction. 3
Parillo 4:5-25. 4
02. Parillo alters a PIN number and Parillo modifies this number by 5
a repeating sequence. Parillo 3:68 – 4:25. 6
ANALYSIS 7
Claims 9-15 rejected under 35 U.S.C. § 103(a) as unpatentable over Parillo. 8
We agree with the Appellant that Parillo alters a PIN rather than a 9
customer identification number and Parillo modifies this number by a 10
repeating sequence rather than based on a character in a predefined 11
parameter that is an element of a random nature event chosen by agreement 12
with the institution as recited in claim 13 limitation [2]. Appeal Br. 4-5. 13
The Examiner admits this at Answer 3, but goes on to find that any 14
attempt (“try”) by one fraudulently employing the card is inherently random. 15
Ans. 3. The claim requires that the character in a predefined parameter 16
changes be random, not the attempts at fraudulent activity. 17
As claim 13 is the sole independent claim, this deficiency carries to the 18
rejection of the remaining claims. 19
CONCLUSIONS OF LAW 20
Rejecting claims 9-15 under 35 U.S.C. § 103(a) as unpatentable over 21
Parillo is in error. 22
Appeal 2009-014894
Application 10/297,722

5
DECISION 1
The rejection of claims 9-15 under 35 U.S.C. § 103(a) as unpatentable 2
over Parillo is not sustained. 3
4
REVERSED 5
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8
mev 9
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Address 11
LAW OFFICES OF WILLIAM H. HOLT 12
12311 HARBOR DRIVE 13
WOODBRIDGE VA 22192 14