Ex Parte Johnson

Board of Patent Appeals and Interferences

Jul 15, 2004

09272056 (B.P.A.I. Jul. 15, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte RICHARD C. JOHNSON

Appeal No. 2003-1410
Application 09/272,056

ON BRIEF

Before THOMAS, KRASS, and BARRY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1 through 40.
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Application 09/272,056
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Representative claim 1 is reproduced below:
1. A computer-implemented draft authentication method
for use in e-commerce, comprising the steps of:
storing, for each of a plurality of draft drawers, at
least one piece of unique identifying information, said at least
one piece of unique identifying information being linked at least
to said respective drawer’s financial information;
authenticating a drawer of a draft by immediately
encrypting at least a portion of an identification data provided
by the drawer and successfully matching the immediately encrypted
identification data with said at least one stored piece of
identifying information;
retrieving at least the drawer’s financial information
and establishing constraints based on the retrieved financial
information;
honoring a draft presented by a payee with whom the
drawee has a partner relationship only when the drawer of the
presented draft is successfully authenticated by drawee and the
constraints are satisfied.
The following reference is relied on by the examiner:
Sixtus 5,903,721 May 11, 1999
(filed Mar. 13, 1997)
Claims 1 through 40 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Sixtus.
Rather than repeat the positions of the appellant,
reference is made to the Brief and Reply Brief for appellant’s
positions and to the Answer for the examiner’s positions.
Appeal No. 2003-1410
Application 09/272,056
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OPINION
We reverse the rejection of claims 1 through 40 under
35 U.S.C. § 102. The examiner has not established a prima facie
case of anticipation of each of the respective independent
claims 1, 15, 26 and 38 on appeal.
The examiner’s attempts to show teachings in Sixtus
that correlate to the subject matter of independent claim 1 at
page 4 of the Answer and independent claim 15 at pages 5 and 6 of
the Answer, as well as the examiner’s reliance upon Sixtus to
reach the identified dependent claims, relies only upon the
abstract and portions of columns 1 through 3 of this reference.
Method independent claim 1 does in fact correspond to the subject
matter of medium independent claim 26, and appellant agrees to
this in the principal Brief on appeal. On the other hand, the
examiner’s view that claim 38 corresponds to independent claim 1
at page 8 of the Answer is clearly misplaced.
Additionally, the Answer contains substantially one
half page of responsive arguments at page 9 of the Answer to
respond to appellant’s significant arguments in the Brief. The
Appeal No. 2003-1410
Application 09/272,056
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examiner’s positions do not, in our view, address the principal
arguments raised by appellant as to each claim argued.
For example, appellant’s arguments at pages 9
through 12 of the principal Brief on appeal persuasively assert
that Sixtus does not teach the claimed authentication step of
claim 1 on appeal. The reasoning advanced by appellant here is
persuasive as to each independent claim on appeal because, as
appellant points out, Sixtus appears to go to great lengths to
point out the shortcomings of encryption schemes of the prior
art and indicates specifically that Sixtus chooses not to use
an encryption scheme of his own in his own invention. Column 3,
lines 15-18, states that it is an “object of the present
invention to provide such a system that does not rely on
encryption for transmittal of data over the Internet as part of
the transaction approval process.” This is consistent with the
general statements made at column 11.
The examiner has avoided any discussion in the
statement of the rejection and responsive arguments portion of
the Answer regarding this claimed feature and the fact that
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Application 09/272,056
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Sixtus expressly teaches that his invention does not use
encryption. This is significant because each of the
respective independent claims on appeal requires at least one
recitation of an encryption procedure.
Moreover, the examiner has made no argument to us that
a user computer calculation of UMAN and the corresponding
computation by the trust computer of TSMAN may correspond to some
form of encryption and/or decryption notwithstanding the clear
statements in the reference that it does not use encryption. The
examiner has taken no position on these teachings and it is not
clear to us that the artisan would have regarded the computation
of these respective numerical values based upon identical
mathematical functions as is typical in encryption environments
as a kind of encryption of any kind let alone the nature of the
encryption subject matter set forth in the claims on appeal.
In view of this scenario, we are inclined to agree with
appellant’s basic urgings at page 11 of the principal Brief that
Sixtus does not teach the feature of immediately encrypting at
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Application 09/272,056
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least a portion of an identification data provided by a drawer
(customer) and does not teach comparing the immediately encrypted
identification data with the stored piece of identification
information that is linked to a drawer’s financial information
as set forth in representative claim 1 on appeal in the
authentication clause and correspondingly in mirror image format
in independent claim 26.
As to independent claim 15, a significant feature
argued by appellant as to this claim at pages 14 through 17 of
the principal Brief on appeal is that this claim requires that
authenticated customers be given access to a plurality of Web
vendors with whom the financial institution has a partner
relationship via a secure Web site. This feature relates to the
showing in disclosed figure 1B in Steps 17B and Steps 18B. The
examiner’s arguments at page 6 of the Answer that the Abstract
and the notion of inherency is sufficient to meet this limitation
is misplaced. Our study of the entirety of Sixtus leads us to
conclude that there is absolutely no teaching or suggestion
within this reference of this claimed feature.
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Application 09/272,056
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Finally, that the examiner’s assertion at page 8 of the
Answer that claim 38 is identical to the features recited in
representative claim 1 on appeal is misplaced is noted again.
Appellant’s arguments at pages 17 through 21 of the principal
Brief on appeal are persuasive to justify the reversal of the
rejection of this claim. We agree with appellant’s view
expressed at page 19 of this Brief that Sixtus does not disclose
or suggest that the vendors maintain a second directory software
storing a master list controlled and periodically updated by the
first directory software where the master list includes a
priority of IDs and the corresponding encrypted passwords and an
identification of the financial institution. Correspondingly,
Sixtus does not teach that a bank or financial institution
periodically updates any list that may be maintained by a vendor
in his system.
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Application 09/272,056
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Therefore, on the basis of the weight of the arguments
and the lack of evidence persuading us of the anticipatory nature
of Sixtus as to each of the respective independent claims 1, 15,
26 and 38 on appeal, we reverse the rejection of all of these
claims and their respective dependent claims under 35 U.S.C.
§ 102. As such, the decision of the examiner is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
JDT:psb
Appeal No. 2003-1410
Application 09/272,056
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