Ex Parte Bursch

Board of Patent Appeals and Interferences

Aug 28, 2009

10282641 (B.P.A.I. Aug. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TODD BURSCH
____________

Appeal 2009-003384
Application 10/282,641
Technology Center 3600
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Decided: August 31, 2009
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Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-8 and 24-38. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellant’s claimed invention is directed to a method and system
that allows a consumer to generate a secure, single-use, transaction number
that can be used to make purchases of goods and services. (Spec. 4:2-3).
The transaction number contains a routing number, an account number, and
an authenticating number (Spec. 4:16-17).
Claim 1, reproduced below, is representative of the subject matter of
appeal.

1. A method of generating a single-use transaction number,
comprising:
generating a one-time password; and
combining the generated one-time password with a
routing number and an account number to form a single-use
transaction number;
wherein the single-use transaction number is formatted
such that the routing number can be used to route the single-use
transaction number.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
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Gallagher US 5,779,084 Aug. 25, 1998
Stambler US 5,974,148 Oct. 26, 1999
Ardnt US 2001/0047335 A1 Nov. 29, 2001
Ibuki US 2002/0013900 A1 Jan. 31, 2002
Ieta US 2002/0026379 A1 Feb. 28, 2002

The following rejections are before us for review:
1. Claims 1-4 and 24-38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stambler and Ibuki.
2. Claims 5-6 and 38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stambler and Arndt.
3. Claims 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Stambler and Ieta.
4. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Stambler and Gallagher.

THE ISSUE
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
With regard to claims 1-8, 24-30, 32-34, and 36-38 this issue turns on
whether it would have been obvious to combine the references to meet the
claimed limitations which have been argued.
With regards to claim 31 this issue turns on whether Stambler and
Ibuki disclose “means for slowing down generation of the one-time
password if an incorrect personal identification number (PIN) is entered.”
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With regards to claim 35 this issue turns on whether Stambler and
Ibuki disclose “means for interleaving bits of the routing number with bits of
the one-time password.”

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Stambler discloses a method for securing information relevant to a
transaction (Title).
FF2. Stambler discloses when a transaction or document needs to be
authenticated, information associated with one or more of the parties is
coded together to create a joint code. The joint code is used to code
information relevant to the transaction in order to produce a variable
authentication number (VAN) at the initiation of the transaction (Abstract).
FF3. Stambler discloses that the VAN may include instrument information
including the payers account number, check serial number, and routing
transit number (Claims 16 and 22).
FF3. Stambler does not disclose “means for slowing down generation of the
one-time password if an incorrect personal identification number (PIN) is
entered.”
FF4. Stambler does not disclose “means for interleaving bits of the routing
number with bits of the one-time password.”

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF5. Ibuki discloses a user authentication device for electronic commerce
(Title).
FF6. Ibuki discloses that an authentication device permits an authentication
number to be used only once to prevent unauthorized access [0112].

PRINCIPLES OF LAW
“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). 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
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415-16, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415, (citing Graham, 383 U.S.
at 12), and reaffirmed principles based on its precedent that “[t]he
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combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”) However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
Claims 1-8, 24-30, 32-34, and 36-38
The Appellant argues that the rejection of claim 1 is improper because
the references do not disclose or suggest “the single-use transaction number
being formatted such that the routing number can be used to route the single-
use transaction number” (Br. 11). The Appellant argues the Examiner
has improperly equated Stamber’s “joint code and VAN” to a “one-time
password and single use transaction number” respectively (Br. 12). The
Appellant argues that Stambler does not describe formatting the VAN in
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such a way that the routing number can be used to route the VAN (Br. 13).
The Appellant also argues there is no motivation to combine the references
of Stambler and Ibuki (Br. 14).
In contrast. the Examiner has determined that Stambler discloses
generating a transaction number with a routing number and an account
number and that Ibuki discloses using a one-time password using dynamic
technology (Ans. 4). The Examiner has determined that it would have been
obvious to modify Stambler’s system to include a single use transaction
number to prevent unauthorized access (Ans. 4).
We agree with the Examiner. Claim 1 requires:
“generating a one-time password; and
combining the generated one-time password with a routing
number and an account number to form a single-use transaction
number;
wherein the single-use transaction number is formatted such
that the routing number can be used to route the single-use
transaction number”

Stambler discloses when a transaction or document needs to be
authenticated, information associated with one or more of the parties is
coded together to create a joint code. The joint code is used to code
information relevant to the transaction in order to produce a variable
authentication number (FF2). Stambler discloses that the variable
authentication number (VAN) may include instrument information including
the payers account number, check serial number, and routing transit number
(FF3). Thus Stambler has disclosed that information may be coded together
to form a joint code (transaction number) that includes items such as a
routing number and an account number. Ibuki discloses that an
authentication device permits an authentication number to be used only once
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to prevent unauthorized access (FF5) which serves a “one-time password.”
The modification of the joint code of Stambler which may include the
account number and routing number to also include authentication number
as disclosed by Ibuki would have been an obvious, predictable combination
of elements for their known functions and to provide a more secure
transaction. The formatting of the routing transit number would have been
obvious, if not already present in the combination, to allow the number to
be read by machine scanning for routing. The Appellant argues that in one
embodiment that all the user has to do is press a button to pay in a vending
machine, toll booth, or parking meter (Br. 14), but these are not limitations
to the claims. For these reasons, the rejection of independent claims 1 and
claim 27 which has not been argued for separately is sustained. The
rejection of dependent claims 2-8, 28-30, 34, 36, and 38 is sustained for
these same reasons as they have not been argued for separately.
With regards to claims 24 and 37, the displaying of the single-use
transaction number would have been an obvious modification to let the user
access the number for transactions. With regards to claims 25 and 32, the
generation of a dynamic password as a function of user activation would
have been an obvious modification to only require password generation
when needed. The Appellant further argues that the rejection of claims 26
and 33 is improper because the references fail to disclose “generating a
dynamic password as a function of a factor selected from the group of
factors including a personal identification number (PIN) and an amount”
(Br. 17). The generation of the dynamic password based on the PIN would
have been an obvious measure to develop the random seed from since it is a
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number and known only to the user. For these above reasons, the rejection
of claims 24-26, 32-33, and 37 is also sustained.

Claims 31 and 35
The Appellant argues that the rejection of claim 31 is improper
because the references fail to teach “means for slowing down generation of
the one-time password if an incorrect personal identification number (PIN)
is entered” (Br. 18). The Appellant also argues that the rejection of claim 35
is improper because the references do not disclose “means for interleaving
bits of the routing number with bits of the one-time password” (Br. 18).
The Examiner has asserted that the limitations of claim 31 and 35 are
found in Stambler (Ans. 7) but provided no specific reference or citation to
this subject matter in the reference. A review of the Stambler reference has
further also not found these limitations to be present (FF3, FF4). Since the
Examiner has not provided a specific citation for the limitations in claims 31
and 35 in the Stambler reference, a prima facie case of obviousness has not
been established. For these reasons the rejection of claims 31 and 35 is not
sustained.

CONCLUSIONS OF LAW
We conclude that the Appellants have not shown that the erred in
rejecting claims 1-4 and 24-30, 32-34, and 36-38 under 35 U.S.C. § 103(a)
as unpatentable over Stambler and Ibuki.
We conclude that the Appellants have not shown that the erred in
rejecting claims 5-6 and 38 under 35 U.S.C. § 103(a) as unpatentable over
Stambler and Arndt.
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We conclude that the Appellants have not shown that the erred in
rejecting claims 7 under 35 U.S.C. § 103(a) as unpatentable over Stambler
and Ieta.
We conclude that the Appellants have not shown that the erred in
rejecting claims 8 under 35 U.S.C. § 103(a) as unpatentable over Stambler
and Gallagher.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 31 and 35 under 35 U.S.C. § 103(a) as unpatentable over
Stambler and Ibuki.

DECISON
The Examiner’s rejection of claims 1-8, 24-30, 32-34, and 36-38 is
sustained. The Examiner’s rejection of claims 31 and 35 is reversed.

AFFIRMED-IN-PART

JRG

SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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