Ex Parte Cannady et alDownload PDFPatent Trial and Appeal BoardOct 23, 201311609814 (P.T.A.B. Oct. 23, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STACY JOHN CANNADY, DAVID CARROLL CHALLENER, DARYL CROMER, MARK CHARLES DAVIS, DAVID RIVERA, RANDALL SCOTT SPRINGFIELD, and ROD D. WALTERMANN ____________ Appeal 2011-011569 Application 11/609,814 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and NINA L. MEDLOCK, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011569 Application 11/609,814 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-20 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellants’ claimed invention is directed to securely authorizing changes to a transaction restriction (Spec. [0007]). Claim 1, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 1. An apparatus comprising: [1] a computer readable storage medium storing a computer readable program; [2] a processor executing the computer readable program, the computer readable program comprising: [3] an authentication module receiving a first authentication from a user of the payment instrument at an authorized computer that the user designates as authorized to validate authentications for a payment instrument distinct from the authorized computer, electronically transacting payments with a payment server, and comprising a transaction restriction for the payment instrument; [4] a security module residing on the authorized computer and securely storing encryption keys, wherein a first encryption key is a hash of the first authentication, a second encryption key is shared by the security module and the payment server and is required to change the transaction restriction for payment instrument, and the payment server authorizes payments by the payment instrument at a point-of- sale station distinct from the authorized computer and changes Appeal 2011-011569 Application 11/609,814 3 the transaction restriction of the payment instrument; [5] the authentication module receiving a second authentication from the user only at the authorized computer; and [6] the security module validating the second authentication with the first encryption key, and authorizing a change to the transaction restriction by the payment server by communicating the second encryption key to the payment server if the second authentication is valid and the security module communicates the second encryption key through the authorized computer. THE REJECTIONS The following rejections are before us for review: 1. Claims 1, 2, 5-7, 9, 10, 13, 14, 16, 19, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Applicant’s Own Admissions (“AOA”), Ferrazzini (US 2009/0044007 A1, pub. Feb. 12, 2009), and Murashita (US 2005/0144136 A1, pub. Jun. 30, 2005). 2. Claims 3, 4, 8, 11, 12, 15, 17, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over AOA, Ferrazzini, Murashita, and Official Notice. FINDINGS OF FACT We find the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence1. 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). Appeal 2011-011569 Application 11/609,814 4 ANALYSIS The Appellants argue that the rejection of claim 1 is improper because the prior art does not disclose elements of claim limitations [5] and [6] as listed in the claim above (App. Br. 4-5, 12-15). In contrast, the Examiner has determined that cited claim limitations [5] and [6] are found in AOA (Spec., paras. [0005] and [0006]) and Ferrazzini at paragraphs [0004], [0054], [0056] (Ans. 12-13). We agree with the Appellants. Claim limitations [5] and [6] require: [5] the authentication module receiving a second authentication from the user only at the authorized computer; and [6] the security module validating the second authentication with the first encryption key, and authorizing a change to the transaction restriction by the payment server by communicating the second encryption key to the payment server if the second authentication is valid and the security module communicates the second encryption key through the authorized computer. (Claim 1, emphasis added). Thus, claim limitations [5] and [6] require in part receiving a second authentication from the user only at the authorized computer and authorizing a change to the transaction restriction … by communicating the second encryption key to the payment server...and the security module communicates the second encryption key through the authorized computer in some manner. Here, the above citations to AOA and Ferrazzini at paragraphs [0004], [0054], and [0056] fail to disclose cited claim limitations [5] and [6], and the rejection of record is not sustained. The rejection of record states that an “authorized computer” may take the form of any computing device (Ans. 11-12). However, the claim Appeal 2011-011569 Application 11/609,814 5 language clearly states that the user designates the “authorized computer” as authorized to validate authentications in claim limitation [3]. The Appellants’ Specification at paragraphs [0005] and [0006] makes no mention of a second authentication from a user or a separate payment server. Ferrazzini at paragraph [0004] describes the operation of a subscriber identity module (USIM) on a telephone without any mention of a second authentication as well. Ferrazzini at paragraph [0054] discloses delivering a second encryption key K to both the telephone and security module (USIM) but there is no disclosure of authorizing any change to the transaction restriction by a payment server as recited in the claim. Ferrazzini at paragraph [0056] fails to disclose the cited claim limitations as well and makes no mention of authorizing any change to the transaction restriction by a payment server. For these reasons the rejection of claim 1 and its dependent claims is not sustained. The remaining claims contain similar limitations and the rejection of these claims is not sustained for the same reasons given above. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting the claims as listed in the Rejection section above. DECISION The Examiner’s rejection of claims 1-20 is reversed. REVERSED Appeal 2011-011569 Application 11/609,814 6 mls Copy with citationCopy as parenthetical citation