Ex Parte Mullen et alDownload PDFPatent Trial and Appeal BoardSep 26, 201612858778 (P.T.A.B. Sep. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/858,778 08/18/2010 Shawn Patrick Mullen 45442 7590 09/28/2016 IBM CORPORATION (RVW) C/OROBERTV. WILDER, ATTORNEY AT LAW 10212 Cassandra Drive Austin, TX 78717 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. AUS920100277US1 6602 EXAMINER TROTTER, SCOTTS ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 09/28/2016 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): bobwilder@netzero.net rwilder6@austin.rr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHAWN PATRICK MULLEN and ARTHUR JAMES TYSOR Appeal2014-003151 Application 12/858,778 1 Technology Center 3600 Before HUBERT C. LORIN, ANTON W. PETTING, and KENNETH G. SCHOPPER, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Shawn Patrick Mullen et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-8 and 11-20. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM-IN-PART. 1 The Appellants identify International Business Machines Corporation as the real party in interest. App. Br. 2. Appeal2014-003151 Application 12/858,778 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for processing payment for a user transaction, .said method comprising: enabling user input of user-specific information to a computing device operated by said user, said user-specific information including a user personal identification number known only to said user and a transaction approving server; saving said user-specific information to a device memory unit within said computing device; saving a start time in said device memory unit, said start time being related to a start of an approval process for said user transaction; said computing device using said user-specific information and said start time to calculate a user-calculated one time password (UCOTP) for use in said approval process for processing payment for said user transaction; saving said user-specific information and said start time and said UCOTP in said device memory unit; and initiating a transmission process for transmitting said user- specific information and said start time and said UCOTP to a transaction approving server, said transaction approving server being operable to use said user-specific information and said start time to calculate a server-calculated one time password (SCOTP), said transaction approving server being further operable to compare said SCOTP with said UCOTP and to terminate said approval process if said SCOTP does not match said UCOTP. 2 Appeal2014-003151 Application 12/858,778 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Sovio Kean Nagaraja US 7,194,438 B2 US 2009/0200371 Al US 2009/0319771 Al The following rejections are before us for review: Mar. 20, 2007 Aug. 13, 2009 Dec. 24, 2009 1. Claims 1-8, and 12-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Sovio, Kean, and Nagaraja. 2. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Sovio and Kean. ISSUES Did the Examiner err in rejecting claims 1-8 and 12-20 under 35 U.S.C. § 103(a) as being unpatentable over Sovio, Kean, and Nagaraja? Did the Examiner err in rejecting claim 11 under 35 U.S.C. § 103(a) as being unpatentable over Sovio and Kean? FINDINGS OF FACT We rely on the Examiner's factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. 3 Appeal2014-003151 Application 12/858,778 ANALYSIS The rejection of claims 1--8and12-20 under 35 U.S.C. § 103(a) as being unpatentable over Savio, Kean, and Nagaraja. The Examiner's position is that Sovio discloses all the limitations in independent claims 1, 13, and 19, except that "Sovio does not detail how a payment is made after the terminal accepts the transaction." Final Act. 4, 9, 13. According to the Examiner, Kean teaches that terminals talk to the account issuers to approve transactions and settle accounts. (see at least Kean paragraph 55) Therefore it would have been obvious to a person of ordinary skill in the art of credit transactions for information to be transmitted to the approving agency to approve a transaction. While Sovio is not explicit about including the start time as part of the password Kean teaches including a time stamp as part of the password. (see at least Kean paragraph 12) Nagaraja is more explicit that in addition to a password context information such start time can be included as part of an authentication approval system. (see at least [Nagaraja] abstract and paragraph 67) Therefore it would have been obvious to a person of ordinary skill in the art at the time the invention was made since it was solving a known problem in a known way with an expectation of success. Final Act. 4, 9-10, and 13. With respect to independent claim 1, the Appellants argue that Sovio does not disclose or even suggest using a transaction start time in calculating a user-calculated one time password (UCOTP), transmitting the UCOTP to an approving agency server and having the server separately calculate a server- calculated one time password, compare the passwords and terminate the transaction if there is no match. App. Br. 11-12. Regarding the secondary references, the Appellants argue that 4 Appeal2014-003151 Application 12/858,778 while Kean discusses sending a start time as part of a transaction, it is noted that the start time is used merely as a reference to measure a transaction time and not used to calculate a one-time password as claimed. In Kean, the password is determined separately and independently from whatever the transaction start time is and not used in the calculation of the password itself as disclosed and claimed by the appellant. Id. at 12. And, "in paragraph 67, Nagaraja discusses the use of a transaction start time as part of 'contextual information' used in transaction identifying information but not used in calculating a user-calculated one time password as disclosed and claimed by appellant." App. Br. 14. The Appellants make the same argument with respect to independent claim 13; to wit, claim 13 also includes a recitation that the user-calculated one- time password is calculated at a user terminal and based upon the user-specific information and also the transaction start time, [which], as stated above, even a combination of Sovio, Kean and Nagaraja fails to disclose, teach or even suggest the above-noted features .... App. Br. 15-16. The Appellants correctly characterize independent claims 1 and 13 as requiring a transaction start time in calculating an UCOTP. See claim 1 ("said computing device using said user-specific information and said start time to calculate a user-calculated one time password (UCOTP) for use in said approval process for processing payment for said user transaction") and claim 13 ("said computing device being operable for calculating and saving to device memory said UCOTP based upon saved user-specific information and a start time related to when a user initiates said approval process for said transaction"). 5 Appeal2014-003151 Application 12/858,778 The Examiner found that using a transaction start time in calculating an UCOTP was disclosed in Kean because "Kean teaches including a time stamp as part of the password. (see at least Kean paragraph 12)." Final Act. 4. According to the Examiner, "Nagaraja is more explicit that in addition to a password context information such start time can be included as part of an authentication approval system. (see at least [Nagaraja] abstract and paragraph 67)." Final Act. 4. The Examiner is correct that para. 12 of Kean discloses a password may be time-stamped. See Kean, para. 12 ("The password may be randomly generated or generated by a function and may be time stamped.") Said disclosure is directed to a transaction process whereby a received password is compared. The password can be generated by an acquirer system or "a module, device or system other than the acquirer system." See id. at para. 13. However, Kean does not mention calculating an UCOTP. Nor is there any suggestion that the timestamp relates to "a start time in said device memory unit, said start time being related to a start of an approval process for said user transaction" (claim 1 ). What Kean discloses is insufficient to lead one of ordinary skill in the art to use "said start time to calculate a user- calculated one time password (UCOTP) for use in said approval process for processing payment for [a] user transaction" as claimed. Paragraph 67 ofNagaraja, which the Examiner also relies upon, is directed to establishing a trust relationship between a communication device (308) and a service provider (312). See paras. [0059] and [0060]. See also Fig. 4. This is accomplished by having the communication device (308) generate a shared secret K (318) via a pseudo-random function (PRF) (320). 6 Appeal2014-003151 Application 12/858,778 "Inputs to the PRF 320 can include, among other things, [a] master secret 314 and contextual information 322." Nagaraja, para. 61. Paragraph 67 is specifically directed to said contextual information (322). [C]ontextual_information can further be represented as follows: contextual_ information=. orgate. ( server_address, server_port, start_ time, end_time, random_nonce) (B) where .orgate. denotes a set of parameters as included in the parenthesis of equation (B). In this particular example, server_address is the network address of the service provider 312, server_port is the port number of the service provider 312, start_time is the beginning of the time of the communication device 308 sends the service request 40 to the service provider 312, end_time is the end of the time the aforementioned service request ends. Id. at para. 67. Nagaraja does not relate to calculating an UCOTP for use in an approval process for processing payment. While Nagaraja describes a "start time [which] is the beginning of the time of the communication device 308 sends the service request 40 to the service provider 312" (id. at para. 67), this would be insufficient to lead one of ordinary skill in the art to use "said start time to calculate a user-calculated one time password (UCOTP) for use in said approval process for processing payment for [a] user transaction" as claimed. For the foregoing reasons, we do not find that one of ordinary skill in the art having Kean and Nagaraja would have been led to modify Sovio and thereby reach the claimed subject matter, whereby a start time related to a start of an approval process for a user transaction (claim 1) or a transaction start time (claim 13) is used to calculate an UCOTP for use in said approval process for processing payment for said user transaction as claimed. Accordingly, the rejection of claims 1 and 13 and the claims dependent therefrom are not sustained. 7 Appeal2014-003151 Application 12/858,778 We reach a different result as to the rejection of claim 19. Claim 19 does not include the calculating step discussed above with respect to claims 1 and 13. The Appellants point out that [i]ndependent claim 19, includes, inter alia, a system feature in which the "time to complete" the approval transaction is selected by the user and transmitted along with the start time and the UCOTP to a card reader associated with an approval server system for use in an approval process for processing payment for said user transaction. App. Br. 16. On that basis, the Appellants argue that the claimed subject matter would not have been obvious over the cited prior art combination. However, we do not see any mention of a UCOTP in claim 19. Thus, the Appellants' argument is not commensurate in scope with what is claimed, and for that reason, unpersuasive as to error in the rejection. Accordingly, the rejection of claim 19, and claim 20 that depends therefrom, is sustained. The rejection of claim 11 under 35 U.S. C. § 103 (a) as being unpatentable over Savio and Kean. The rejection of claim 11 is not sustained for the reasons discussed in not sustaining the rejection of claims 1 and 13. Claim 11 includes the calculating step discussed above with respect to claims 1 and 13. CONCLUSIONS The rejection of claims 1-8 and 12-18 under 35 U.S.C. § 103(a) as being unpatentable over Sovio, Kean, and Nagaraja is reversed. The rejection of claims 19 and 20 under 35 U.S.C. § 103(a) as being unpatentable over Sovio, Kean, and Nagaraja is affirmed. 8 Appeal2014-003151 Application 12/858,778 The rejection of claim 11 under 35 U.S.C. § 103(a) as being unpatentable over Sovio and Kean is reversed. DECISION The decision of the Examiner to reject claims 1-8 and 11-20 is affirmed-in-part. AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation