Ex Parte Faith et al

Patent Trial and Appeal Board

Sep 7, 2016

12031036 (P.T.A.B. Sep. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/031,036 02/14/2008 Patrick Faith
66945 7590 09/09/2016
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
80083-721810(029300US) 1817
EXAMINER
HENNING, MATTHEW T
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
09/09/2016 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):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
EDurrell@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK FAITH and AYMAN HAMMAD 1
Appeal2014-009801
Application 12/031,036
Technology Center 2400
Before ERIC S. FRAHM, JAMES W. DEJMEK, and
STACY B. MARGOLIES, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 4, 6, 8, 15, 27, 29, and 30. Claims 2, 3, 5, 7, 9-14, and 16-25 have
been canceled. App. Br. 18-20. Claim 26 is objected to as being dependent
upon a rejected base claim, but would be allowable if rewritten in
independent form. Final Act. 10. We note the Final Office Action has
1 Appellants identify Visa U.S.A., Inc. as the real party in interest. App.
Br. 3.
Appeal2014-009801
Application 12/031,036
neither allowed nor rejected claim 28.2 We have jurisdiction over the
remaining pending claims under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellants' disclosed invention is directed to "generating verification
values." Spec. i-f 8. According to the Specification, "embodiments of the
invention provide improved methods and systems for dynamically
generating a card verification value for each transaction and for utilizing
such value to verify that the payment service is authentic and has not been
skimmed." Spec. i-f 23.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A method comprising:
generating a uniquely derived data string using
personalized information and a first encryption algorithm
utilizing a 12 8, 19 2, or 2 5 6 bit key, by a service provider
computer;
generating, by the service provider computer, at least one
uniquely derived key using the uniquely derived data string;
receiving from a payment device or point of service
terminal, a first dynamic verification value during a transaction,
wherein the first dynamic verification value is created by the
payment device or the point of service terminal, respectively,
2 Prior to articulating the objections and rejections of the pending claims, the
Examiner states "All objections and rejections not set forth below have been
withdrawn." Final Act. 4. Claim 28 is not included in the recited rejection
(although we also note claim 29, which depends from claim 28, is included
(Final Act. 10)). See Final Act. 6-10. Accordingly, we determine the
disposition of claim 28 is not properly before us.
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Application 12/031,036
using the at least one uniquely derived key and a second
encryption algorithm;
creating, by the service provider computer, a second
dynamic verification value using the second encryption
algorithm using the at least one uniquely derived key, wherein
the first encryption algorithm is different than the second
encryption algorithm;
determining ifthe first dynamic verification value matches
the second dynamic verification value; and
approving of the transaction if the first dynamic
verification value matches the second dynamic verification
value,
wherein the first encryption algorithm is an Advanced
Encryption Standard (AES) encryption algorithm and wherein
the second encryption algorithm is a Data Encryption Standard
(DES) algorithm or a triple DES encryption algorithm.
The Examiner's Rejection
Claims 1, 4, 6, 8, 15, 27, 29, and 30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sahota et al. (US 2005/0043997 Al;
Feb. 24, 2005) ("Sahota"); Announcing the ADVANCED ENCRYPTION
STANDARD (AES), Federal Information Processing Standards Publication
197 (Nov. 26, 2001) ("AES"); and DATA ENCRYPTION STANDARD
(DES), Federal Information Processing Standards Publication 46-3 (Oct. 25,
1999) ("DES"). Final Act. 6-10.
Issues on Appeal
1. Did the Examiner err in finding the combination of Sahota,
AES and DES teaches or suggests the disputed limitations of claim 1?
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2. Did the Examiner err in relying on the combination of Sahota,
AES, and DES because the proposed combination is not supported with an
articulated reasoning with rational underpinning, relies on hindsight
reconstruction, or fails to appreciate the advantages of Appellants' claimed
invention?
ANALYSIS3
Appellants contend the Examiner erred in relying on the combination
of Sahota, AES and DES in rejecting, inter alia, claim 1 because the
proposed combination there is no suggestion that a person of ordinary skill
in the art would use two different encryption methodologies-particularly,
those described in AES and DES-in practicing the method taught by
Sahota. App. Br. 6-11; Reply Br. 2-5. Rather, Appellants contend a person
of ordinary skill in the art "would choose a single encryption methodology
based on the length of the[] string being encrypted." App. Br. 10.
Additionally, Appellants assert AES and DES, as claimed, are being used in
a non-obvious way, which would not have been obvious to an ordinarily-
skilled artisan based solely on the teachings of Sahota, AES, and DES. App.
Br. 10-11.
We find Appellants' arguments unpersuasive of Examiner error. The
Examiner finds, and we agree, Sahota teaches a first encryption algorithm is
used to generate a unique derived key, which the Examiner equates to the
3 Throughout this Decision, we have considered the Appeal Brief, filed
March 25, 2014 ("App. Br."); the Reply Brief, filed September 17, 2014
("Reply Br."); the Examiner's Answer, mailed on July 30, 2014 ("Ans.");
and the Final Office Action ("Final Act."), mailed on November 8, 2013,
from which this Appeal is taken.
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Application 12/031,036
claimed uniquely derived data string. Ans. 3--4 (citing Sahota if 31, Fig. 2).
Sahota teaches the derivation of two unique keys wherein, for example, an
account number, an account sequence number, the inverse of the account
number, and the inverse of the account sequence number are concatenated
together to form a concatenated value. Sahota if 31. Sahota teaches in a
preferred embodiment, the length of the concatenated value may be 128 bits.
Sahota if 31. Further, Sahota teaches the concatenated value is then
encrypted (using "any type of encryption methodology"). Sahota if 31. The
Examiner finds, and we agree, a person of ordinary skill in the art at the time
of Appellants' invention, would have found it obvious to encrypt the
concatenated value of Sahota using the Advanced Encryption Standard
described in AES. 4 Final Act. 7. The Examiner explains that one of
ordinary skill would have been motivated to use an encryption standard that
works on the 128 bit concatenated value of Sahota. Final Act. 7. The
Examiner finds, and we agree, AES teaches an encryption algorithm for
encrypting data in blocks of 128 bits. Final Act. 7 (citing AES at i).
Additionally, the Examiner finds, and we agree, Sahota teaches a
second encryption. Ans. 4 (citing Sahota if 29, Fig. 1, items 121, 125, 129,
and 133); Final Act. 7-8. Sahota teaches the formation of a numeric string
based on an ATC (application transaction counter) and account number for
the payment service as part of creating a dynamically generated Card
Verification Value ( dCVV). Sahota if 29. Sahota teaches, in a preferred
embodiment, the numeric string is 128 bits in length but "is bisected into
two blocks of equal length," i.e., 64 bits each. Sahota if 29; see also Sahota
4 The Examiner notes, as do we, Appellants' Specification discloses AES
was a "well known encryption algorithm[]." Spec. if 34; Ans. 3.
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Fig. 1, blocks 116 and 118. Sahota teaches one of these blocks (Block A) is
encrypted. Sahota i-f 29; Fig. 1. The Examiner finds, and we agree, a person
of ordinary skill in the art at the time of Appellants' invention, would have
found it obvious to encrypt the concatenated value of Sahota using the Data
Encryption Standard described in DES. Final Act. 7-8. 5 The Examiner
explains that one of ordinary skill would have been motivated to use an
encryption standard that works on the 64 bit block of Sahota. Final Act. 8;
see also Sahota Fig. 1, blocks 116 and 121. The Examiner finds, and we
agree, DES teaches an algorithm that "is designed to encipher and decipher
blocks of data consisting of 64 bits .... " DES 8; Final Act. 8.
Thus, the Examiner finds, and we agree, Sahota teaches a second
encryption algorithm (which operates on a 64 bit input) different from the
first encryption algorithm (which operates on a 128 bit input). Ans. 4. The
Examiner explains:
The person having ordinary skill in the art at the time of invention
would have been motivated to provide a specific means for the
generic teaching of Sahota of a 128 bit encryption algorithm, as
well as a specific means for the generic teaching of Sahota of a
64 bit encryption algorithm. As such, in view of the teachings of
Sahota, AES, and DES, the person of ordinary skill in the art
would have arrived at the claimed invention.
Ans. 10.
A patent claim is unpatentable under 35 U.S.C. § 103(a) ifthe
differences between the claimed subject matter 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
5 The Examiner notes, as do we, Appellants Specification discloses DES was
a "well known encryption algorithm[]." Spec. i-f 34; Ans. 3.
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subject matter pertains. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). An obviousness 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." KSR, 550 U.S. at 418. "A person of
ordinary skill is also a person of ordinary creativity, not an automaton."
KSR, 550 U.S. at 421.
We agree with the Examiner's findings and adopt them as our own.
Appellants further argue there is "no rational underpinning to support
the legal conclusion of obviousness" (App. Br. 11-13; Reply Br. 5) and that
the Examiner relies on improper hindsight in rejecting claim 1 (App. Br. 13-
16; Reply Br. 6). In particular, Appellants contend "[t]he need identified in
Sahota is sufficiently met by the disclosed system of Sahota ... using [] one
type of encryption algorithm," and that there is no motivation or rationale to
use more than one encryption algorithm in Sahota' s disclosed system. App.
Br. 12. Additionally, Appellants assert "it would not have been 'obvious' to
one of ordinary skill in the art to [have combined the teachings of Sahota,
AES, and DES, as proffered by the Examiner] unless one had the benefit of
the Appellant[s'] application." App. Br. 15.
We do not find Appellants' persuasive of Examiner error. For the
reasons discussed supra, as well as the thorough explanations provided by
the Examiner in the Final Office Action (Final Act. 6-8) and Answer
(Ans. 2-12), we agree with the Examiner's findings and rationale to
combine the references, as well as the overall legal conclusion of
obviousness. See also Ans. 10.
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"Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper."
In re McLaughlin, 443 F.2d 1392, 1313-14 (CCPA 1971).
In contrast to Appellants' assertions, the Examiner's reasoning and
proposed combination of references relies not on knowledge gleaned solely
from Appellants' Specification, but rather on the teachings of the relied upon
references. See Ans. 12 (explaining Sahota's use for two different
encryption methodologies---one for a 128 bit data block and the other for a
64 bit data block).
Additionally, Appellants contend the cited references "fail[] to teach
or appreciate the advantages provided by embodiments of the invention."
App. Br. 16; Reply Br. 7.
In the instant case, as Appellants acknowledge, Sahota teaches
"improve[ d] security for transactions by implementing an encryption
methodology ... [and] is directed to a system for dynamically generating a
card verification value for a transaction ... [and] verify that a payment
service is authentic and has not been skimmed." App. Br. 16 (citing Sahota
i-f 21 ). The fact that Appellants have recognized another advantage
(increased difficulty for a putative skimmer to unencrypt data that has been
encrypted multiple times) which would flow naturally from following the
suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious. Ex parte Obiaya, 227 USPQ 58, 60
(BPAI 1985). Also, we note that "[a]s long as some motivation or
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Application 12/031,036
suggestion to combine the references is provided by the prior art taken as a
whole, the law does not require that the references be combined for the
reasons contemplated by the inventor." In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992). As discussed supra, we agree with the Examiner's
findings and articulated reasoning with rational underpinning for the
proposed combination of references. See KSR, 550 U.S. at 418.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claim 1 and, for
similar reasons, the rejection of independent claim 15, which recites similar
limitations and was not argued separately. Additionally, we sustain the
Examiner's rejection of claims 4, 6, 8, 27, 29, and 30, which were not
argued separately. See App. Br. 6.
DECISION
We affirm the Examiner's decision to reject claims 1, 4, 6, 8, 15, 27,
29, and 30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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