Ex Parte Kelley et al

Patent Trial and Appeal Board

Jan 6, 2016

11843449 (P.T.A.B. Jan. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111843,449 08/22/2007 Edward E. KELLEY
46136 7590 01/07/2016
WHITHAM, CURTIS,CHRISTOFFERSON & COOK, P.C. (IBM)
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
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.
FIS920040207US2 5092
EXAMINER
MAI, THIENT
ART UNIT PAPER NUMBER
2887
MAILDATE DELIVERY MODE
01107/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD E. KELLEY and FRANCO MOTIKA
Appeal2013-009053
Application 11/843,449
Technology Center 2800
Before MAHSHID D. SAADAT, DEBRA K. STEPHENS, and
DAVID M. KOHUT, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-009053
Application 11/843,449
STATEMENT OF CASE 1
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 22-30. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The invention is directed to a secure credit card. Abstract.
Claim 22 is illustrative of the invention and is reproduced below:
22. A secure credit card comprising
a card body including a processor and associated storage
for a stored program for operation of said processor, a
communication interface, and a data entry means,
a non-volatile memory for storage of identification
information for said secure credit card, a personal identification
number (PIN) of a holder of said secure credit card and a PIN
and profile information specifying authorized conditions of use
including at least one of a transaction amount limit and a
merchant restnct10n of at least one authorized user of said
secure credit card, and
encryption means for encoding transaction information
and secure transaction codes in accordance with signals stored
in said non-volatile memory, and
means for distinguishing between said PIN of said holder
and a PIN of a said authorized user to include identity
information of said holder or identity information and said
profile information of said user in said transaction information
encoded by said encryption means.
App. Br. 24.
1 Our decision makes reference to Appellants' Appeal Brief ("App. Br.,"
filed June 4, 2010) and Reply Brief ("Reply Br.," filed Oct. 4, 2010), and the
Examiner's Answer ("Ans." mailed Aug. 4, 2010).
2 Claims 1-21 were canceled previously.
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Appeal2013-009053
Application 11/843,449
Dethloff
Kelley
Fletcher
REFERENCES
us 4,837 ,422
US 6,641,050 B2
US 2006/0076400 Al
REJECTIONS AT ISSUE
June 6, 1989
Nov. 4, 2003
Apr. 13, 2006
(filed Oct.7, 2004)
Claims 22-27 and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Dethloff and Kelley. Ans. 3---6.
Claims 28 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Dethloff, Kelley, and Fletcher. Ans. 6.
ISSUES
Did the Examiner err in finding the combination of Dethloff and
Kelley teaches or suggests:
(a) "means for distinguishing between said PIN of said holder and a
PIN of a said authorized user to include identity information of said holder
or identity information and said profile information of said user in said
transaction information encoded by said encryption means," as recited in
claims 22 and 30;
(b) "a program portion accessible ... in response to a PIN" as recited
in claims 24 and 25;
( c) "comparing transaction information with information stored in said
user profile" as recited in claim 26; and
( d) "said information stored in said user profile includes a transaction
amount limit" as recited in claim 2 7?
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Appeal2013-009053
Application 11/843,449
Did the Examiner err in combining Dethloff and Kelley?
With respect to independent claim 30, Appellants' arguments present
us with the same issue as independent claim 22. App. Br. 17-21. Separate
patentability is not argued for claims 23, 28, and 29. App. Br. 17-23.
Except for our ultimate decision, these claims are not discussed further
herein.
ANALYSIS
Claims 22 and 30
Appellants contend, because Dethloff is principally directed to
avoiding transmission of transaction information outside of Dethloff s credit
card, Dethloff does not teach or suggest "means for distinguishing between
said PIN of said holder and a PIN of a said authorized user to include
identity information of said holder or identity information and said profile
information of said user in said transaction information encoded by said
encryption means," as recited in claim 22 and similarly recited in claim 30.
App. Br. 19-20. Appellants' contention is based on the presumption that
"principles and constitution of the invention as recited in claims 22-30"
encompass "transmitting transaction information." Reply Br.3--4.
Appellants' contention is not commensurate with the scope of claim
22, which neither recites nor requires transmitting transaction information.
Thus, the reliance on this alleged distinction between the teachings of
Dethloff and claim 22 to rebut the rejection of claim 22 is misplaced and,
thus, unpersuasive.
Furthermore, Appellants' contention does not rebut the Examiner's
specific findings. App. Br. 19-20. The Examiner finds, and we agree, that
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Appeal2013-009053
Application 11/843,449
in Dethloff~ when a PIN is entered, Dethloff' s card determines if the PfN
belongs to a holder or sub-user. Ans. 4-5, 8. The cited passages of
Dethloff, therefore, teach "distinguishing between said PIN of said holder
and a PIN of said authorized user." Id. at 8. Additionally, the Examiner
finds, and we agree, that Dethloff s teaching that users and holders each
have respective transactions conducted, meets the limitation of "identity
information of said holder," as recited in claim 22 and similarly recited in
claim 30. Ans. 8. Accordingly, we sustain the Examiner's rejection of
claims 22 and 30 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Dethloff and Kelley.
Claims 24 and 25
Claims 24 and 25 are directed to a program on the secure credit card
being accessible in response to a PIN of a holder (claim 24) and an
authorized user (claim 25). Appellants' argument that "the program portions
accessible to a holder and a user, respectively, require input of a PIN once
initiated but are not responsive to a particular PIN being used to activate the
secure credit card, as recited in claims 24--25" is not commensurate with the
scope of the claims. App. Br. 20. Neither independent claim 22, dependent
claim 24, nor dependent claim 25 recites or requires a PIN to activate the
credit card.
Appellants additionally argue, in the Reply Brief, that "a running
available balance and a term of use," as taught in Dethloff, is not a profile as
claimed. Reply Br. 8. We find this argument to be belated and thus, entitled
to no consideration. See Ex parte Borden, 93 USPQ2d 1473, 1473-74
(BPAI 2010) ("informative") (absent a showing of good cause, the Board is
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Appeal2013-009053
Application 11/843,449
not required to address an argument newly presented in the Reply Brief that
could have been presented in the principal Brief on Appeal).
Nevertheless, this argument does not persuasively rebut the
Examiner's specific findings. The Examiner finds, and we agree, that
Dethloff s reset function that allows access to a particular sub-user profile
identified by a PIN and user access to a service via a PIN, teaches the
limitations of claims 24 and 25. Ans. 5, 10. Accordingly, we sustain the
Examiner's rejection of claims 24 and 25 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Dethloff and Kelley.
Claim 26
Claim 26 recites "comparing transaction information with information
stored in said user profile." Appellants argue Dethloff does not teach this
limitation because Detholoff does not compare transaction information with
a user profile but, rather, only maintains a running available balance within
the original sub-account allocation. App. Br. 20. We disagree with
Appellants.
The Examiner specifically finds Dethloff teaches comparing a sub-
user' s transaction to the sub-user's assigned term, spending amount, and
time limit. Ans. 5---6, 10. Thus, we agree with the Examiner (Ans. 5-6, 10)
that Dethloff does not teach just that the transaction is compared to an
available balance, but also to other variables stored within the user profile.
As a result, we are unpersuaded of Examiner error and sustain the
Examiner's rejection of claim 26 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Dethloff and Kelley.
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Application 11/843,449
Claim 27
Claim 27 recites "information stored in said user profile includes a
transaction amount limit." The Examiner finds Dethloff's assignment, to
each sub-user, of a term, spending amount, and time limit, teaches this
limitation. Ans. 5-6, 10. Appellants' argument that Dethloff does not
compare transaction information with a transaction limit, but Dethloff only
maintains a running available balance within the original sub-account
allocation, does not persuade us of error in the Examiner's findings, as
indicated above with respect to claim 26. App. Br. 20. As such, we sustain
the Examiner's rejection of claim 27 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Dethloff and Kelley.
Combination of Dethloff and Kelley
Appellants provide several arguments contending that the
combination of Dethloff and Kelley is improper. App. Br. 19-20; Reply Br.
7-9. Each of these arguments, however, is based on the improper premise,
discussed supra, that the claims require transmission of transaction
information. Id. Thus, we are not persuaded of Examiner error.
CONCLUSION
The Examiner has not erred in rejecting claims 22-30 under 35 U.S.C.
§ 103(a).
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Appeal2013-009053
Application 11/843,449
SUMMARY
The Examiner's decision to reject claims 22-30 under 35 U.S.C.
§ 103(a) is affirmed.
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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