Ex Parte Cannady et al

Patent Trial and Appeal Board

Oct 23, 2013

11609814 (P.T.A.B. Oct. 23, 2013)

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
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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

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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
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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).
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Application 11/609,814

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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
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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

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