Ex Parte Gilbert et al

Patent Trials and Appeals Board

May 22, 2019

10258503 - (D) (P.T.A.B. May. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/258,503 10/25/2002
96592 7590 05/24/2019
FIS/FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
901 NEW YORK A VENUE
WASHINGTON, DC 20001-4413
FIRST NAMED INVENTOR
Kevin Gilbert
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.
l 1360.0151-00000 3763
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/24/2019 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):
jeffrey.berkowitz@finnegan.com
regional-desk@finnegan.com
michael. wrobel@fisglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN GILBERT, SCOTT R. STATLAND,
SUSAN M. KELLING, IAN A. LUMSDEN, and
CHUCK J. BRAM
Appeal 2018-003877 1
Application 10/258,503
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1 and 3-14. We
have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
1 The Appellants identify eFunds Corp. as the real party in interest. Appeal
Br. 3.
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Application 10/258,503
The invention relates generally to effecting an electronic transaction
between first and second entities utilizing a third entity to facilitate the
transaction. Spec. 1 :2-5.
Claim 1, the only independent claim on appeal, is illustrative:
1. A computer-implemented method comprising:
receiving, from a communications network by a
computer at a transaction facilitator, a request for a token from
a consumer computer, the request including:
encrypted data,
parameters associated with a financial transaction,
comprising at least one of an identity of a business entity
different from the transaction facilitator, a transaction date, or a
transaction time, and
transaction data associated with the consumer,
comprising at least one identifier for the encrypted data;
generating, by the computer at the transaction facilitator,
the token identifying the transaction data, using the at least one
identifier for the encrypted data;
storing, by the computer at the transaction facilitator, the
transaction data and the token, wherein storing comprises
associating the transaction data with the token;
providing, by the computer at the transaction facilitator,
the token to the consumer computer;
receiving, by the computer at the transaction facilitator,
from the consumer computer, the token previously-generated by
the transaction facilitator to initiate a financial transaction
between the consumer and the business entity;
obtaining, at the transaction facilitator, the stored
transaction data identified by the token;
verifying the transaction data meets a predetermined
requirement; and
initiating, by the computer at the transaction facilitator,
the financial transaction between the consumer and the business
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Application 10/258,503
entity and withholding at least a portion of the transaction data
from the business entity.
The Examiner rejected claims 1 and 3-9 under 35 U.S.C. § 102(e) as
anticipated by Flitcroft et al. (US 2003/0028481 Al, pub. Feb. 6, 2003)
("Flitcroft).
The Examiner rejected claims 10-14 under 35 U.S.C. § 103(a) as
unpatentable over Flitcroft.
We REVERSE.
ANALYSIS
Anticipation Re; ection
Claim 1 recites receiving a request that includes "encrypted data" and
an "identifier of the encrypted data."
The Specification describes several types of data that may be
encompassed within the encrypted data. See, e.g., Spec. 12, lines 14-23.
None of the data within the encrypted data, however, is utilized within the
scope of the claim. Specifically, encrypted data is sent to a transaction
facilitator, but within the scope of claims 1, 4, 6-8, and 10-14, no function is
recited that uses this data. The specific content of the encrypted data that is
received at the transaction facilitator, therefore, is not relevant to the
patentability of the claimed method.
The Specification also describes two examples of an identifier of
encrypted data: "a CD-ROM identifier (e.g., a CD-ROM number) that
associates the encrypted data on the CD-ROM to the security key" (Spec. 8,
lines 32-34), and the identification of the issuing financial institution
(Spec. 12, lines 29-30).
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Application 10/258,503
We first are unpersuaded by the Appellants' argument that Flitcroft is
undeserving of a priority date, prior to the priority date of the current
application, because, according to the Appellants, the applications to which
Flitcroft claims benefit of priority do not use the term "Controlled Payment
Number" ("CPN") that is present, and cited by the Examiner, in the cited
Flitcroft reference. Reply Br. 2-3; see also Appeal Br. 7-11 2. Flitcroft
describes that "for limited-use credit card number, the limitations of which
are defined by a consumer rather than a card issuer, the term Controlled
Payment Number, or CPN has been coined." Flitcroft ,-J 56. The oldest
Provisional Application to which Flitcroft claims benefit,
Application 60/092,500 ("Flitcroft '500"), describes a "single use credit card
number" that is used to avoid revealing a "master credit card number."
Flitcroft '500, 7 lines 5-21. The "single use credit card" is sufficient support
for the "limited-use credit card number," even though the term used as a
proxy, CPN, does not appear in this provisional. As an aside, the Examiner
does not rely on the "limitations of which are defined by a consumer."
Flitcroft ,-J 56.
However, the remainder of the Appellants' arguments are persuasive.
Appeal Br. 15-21; see also Reply Br. 3-6.
Claim 1 recites that a request that includes "encrypted data" and an
"identifier for the encrypted data." For the "encrypted data," the Examiner
cites Flitcroft, paragraphs 120, 148, and 153. Answer 3. Paragraph 120
discloses the encrypted storage of issued limited use numbers. Flitcroft
2 The Examiner responded, in an Advisory Action mailed November 22,
2016, to after-final arguments that Flitcroft is not a proper reference under
§ 102(b ), changing the rejection from under § 102(b) to § 102( e ), but still
relying on Flitcroft.
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Application 10/258,503
,i 120. However, Flitcroft also discloses these numbers are stored in
encrypted form on the user's computer, and decrypted on the user computer
for display or use, which is after a request for them was made. Flitcroft
,i,i 118, 13 8. Flitcroft discloses using the limited use numbers, but they are
decrypted at the user computer, and Flitcroft does not disclose that they are
sent in encrypted form. Flitcroft ,i,i 148, 153. We thus are unable to discern
what data is sent as part of the request, in encrypted form, in Flitcroft.
As to the "identifier for the encrypted data" ( corresponding to the
"encrypted data" we do not discern being sent as part of a request in
Flitcroft), the Examiner finds the identifier is disclosed in paragraph 204 of
Flitcroft. There, Flitcroft discloses that the card holder activates a limited
use card software on the card holder computer, and "then requests his or her
credit card number to be validated for the merchant as identified by the
merchant identification number." Flitcroft ,i 204 ( cited at Answer 3). The
Examiner specifically identifies the "user identification . . . merchant
identification number" as the "identifier for encrypted data." Answer 6.
The Examiner also specifically identifies the "password" as being the
"identifier for encrypted data." Answer 7.
We are left to speculate about what the Examiner means in the
rejection. Flitcroft discloses first sending user identification information,
and "then requests" the merchant-limited credit card number. Flitcroft
,i 204. We are unclear if the user identification along with the merchant
identification number are both considered the "identifier for the encrypted
data," because they are sent at different times. Perhaps the Examiner
combines both requests to be the claimed request. We envision a merchant-
limited credit card number being established based on the merchant
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Application 10/258,503
identification number, but do not see the relevance of the "user identification
information" or "password" in that context.
Then, as to the "withholding at least a portion of the transaction data
from the business entity," the Examiner cites paragraphs 141-46, 158,
and 185 of Flitcroft. Answer 4; see also Answer 6-7.
Based on the rejection and Response to Argument, however, we are
unable to discern what the Examiner is referring to. For example,
paragraphs 141-46 cite encrypting numbers before sending them to the
workstation, where they must be decrypted for use. The transaction data is
sent as part of the request for the token, but these numbers are not part of
that request, because they are the result of the request. Paragraph 15 8
announced functions performed "for handling limited use cards," but does
not clearly state that any of the data listed in paragraphs 159-72 are both
part of the request and withheld from a merchant. Paragraph 185 discloses
receiving transaction information "from the merchant." There is nothing
claimed that involves receiving information from a merchant in claim 1.
And any information received from the merchant cannot be said to have
been withheld from the merchant. We are unable to discern what
information from the "transaction data associated with the consumer,
comprising at least one identifier for the encrypted data," which is sent by a
user to a facilitator different from the merchant, is withheld from the
merchant, as claimed.
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987). When a reference is complex ... , the particular part
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relied on must be designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified." 37 C.F.R. § l.104(c)(2).
The Examiner has failed to meet the burden to establish anticipation
of claim 1 over Flitcroft, because the Examiner did not clearly explain the
correlation of claim elements with the cited sections of Flitcroft. For this
reason, we do not sustain the rejection of claim 1, nor of dependent
claims 3-9 also rejected as anticipated by Flitcroft. We also do not sustain
the obviousness rejection of claims 10-14 over Flitcroft for the same
reasons.
DECISION
We reverse the rejection of claims 1 and 3-9 under 35 U.S.C.
§ 102(e).
We reverse the rejection of claims 10-14 under 35 U.S.C. § 103(a).
REVERSED
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