Ex Parte Rau et al

Patent Trial and Appeal Board

Jan 15, 2013

11562100 (P.T.A.B. Jan. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/562,100 11/21/2006 Scott W. Rau 47004.000415 8634
21967 7590 01/15/2013
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
2200 Pennsylvania Avenue, N.W.
WASHINGTON, DC 20037
EXAMINER
ROSEN, ELIZABETH H
ART UNIT PAPER NUMBER
2615
MAIL DATE DELIVERY MODE
01/15/2013 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte SCOTT W. RAU and LEE KNACKSTEDT 7
___________ 8
9
Appeal 2011-003366 10
Application 11/562,100 11
Technology Center 2600 12
___________ 13
14
15
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16
MEREDITH C. PETRAVICK, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL 19
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 18, 2010) and Reply Brief (“Reply Br.,” filed December
6, 2010), and the Examiner’s Answer (“Ans.,” mailed November 8, 2010).
Scott W. Rau and Lee Knackstedt (Appellants) seek review under 2
35 U.S.C. § 134 of a final rejection of claims 1-5 and 7-29, the only claims 3
pending in the application on appeal. We have jurisdiction over the appeal 4
pursuant to 35 U.S.C. § 6(b) . 5
The Appellants invented a way of keeping check of financial 6
transactions using a register portion, in conjunction with performing 7
authentication of the transaction (Specification 1:12-14). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A system that keeps check of financial transactions by 12
maintaining a count of the financial transactions using a register 13
portion, in conjunction with performing authentication for at 14
least one transaction, the system comprising: 15
[1] a payment device including a data-bearing record, 16
the data-bearing record storing 17
a transaction count value 18
and 19
a device differentiator number 20
associated with the payment device; 21
[2] a receiver that receives 22
the transaction count value 23
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and 1
the device differentiator number; 2
[3] a transaction server comprising: 3
[4] a computer memory that stores stored data; 4
and 5
[5] a computer readable medium including program code 6
effective to perform the following: 7
[6] in a device identification portion, 8
identifying the payment device 9
based on the device differentiator number 10
and an account number associated with the 11
payment device; 12
[7] in a register portion, 13
maintaining a count of financial transactions 14
so as to provide a current transaction count 15
value associated with the device 16
differentiator number for the account 17
number, 18
the register portion maintaining current 19
transaction count values for respective 20
device differentiator numbers, 21
which device differentiator numbers are 22
associated with the account number; 23
and 24
[8] in an authentication portion, 25
performing authentication processing 26
based on a comparison process 27
that utilizes the current transaction count 28
value and the transaction count value, 29
the authentication portion generating an 30
authentication result, 31
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the authentication portion outputting the 1
authentication result. 2
The Examiner relies upon the following prior art: 3
Vizcaino US 5,317,636 May 31, 1994
Curry US 5,940,510 Aug. 17, 1999
Fleming US 5,953,710 Sep. 14, 1999
Olarig US 6,032,257 Feb. 29, 2000
Szewczykowski US 6,039,249 Mar. 21, 2000
Cuervo US 2002/0174016 A1 Nov. 21, 2002
Flitcroft US 2003/0028481 A1 Feb. 6, 2003
Guy US 2003/0172039 A1 Sep. 11, 2003
Roshkoff US 2004/0254837 A1 Dec. 16, 2004
Linlor US 2005/0199709 A1 Sep. 15, 2005
Claims 1, 4, 5, 8, 10-12, 15, 16, 19, 20, 23-25, 27, and 29 stand rejected 4
under 35 U.S.C. § 103(a) as unpatentable over Vizcaino, Linlor, and Guy. 5
Claims 2, 17, and 21 stand rejected under 35 U.S.C. § 103(a) as 6
unpatentable over Vizcaino, Linlor, Guy, and Curry. 7
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 8
Vizcaino, Linlor, Guy, and Szewczykowski. 9
Claims 7 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable 10
over Vizcaino, Linlor, Guy, and Cuervo. 11
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 12
Vizcaino, Linlor, Guy, and Fleming. 13
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Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 1
Vizcaino, Linlor, Guy, and Roshkoff. 2
Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 3
Vizcaino, Linlor, Guy, and Olarig. 4
Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 5
Vizcaino, Linlor, Guy, Curry, and Szewczykowski. 6
Claims 26 and 28 stand rejected under 35 U.S.C. § 103(a) as 7
unpatentable over Vizcaino, Linlor, Guy, and Flitcroft. 8
ISSUES 9
The issues of obviousness turn primarily on whether the references are 10
combinable and show transmitting a transaction count, and whether it was 11
predictable to have plural device differnetiators. 12
FACTS PERTINENT TO THE ISSUES 13
The following enumerated Findings of Fact (FF) are believed to be 14
supported by a preponderance of the evidence. 15
Facts Related to the Prior Art 16
Vizcaino 17
01. Vizcaino is directed to securing a transaction conducted by 18
means of a credit card. Vizcaino 1:6-8. 19
02. Vizcaino uses an authorization computer and a credit card that 20
work in conjunction to enhance the security of credit card 21
transactions. The smart credit card includes a processor, a 22
memory and a liquid crystal display. The credit card is used to 23
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produce a unique verification number by processing a transaction 1
sequence number with an encryption algorithm. The verification 2
number is then displayed in the display device, and transmitted to 3
the authorization computer along with a customer identifying 4
account number. The computer, which is used for authorizing the 5
credit card transactions of the customers of the credit card issuer, 6
uses the account number to access an account file for the credit 7
card customer. That account file has general account data for the 8
given customer, as well as a transaction sequence number, which 9
corresponds to the transaction sequence number stored in the 10
credit card. Additionally, the account file includes a de-11
encryption algorithm, which is complementary to the encryption 12
algorithm of the credit card, such that the computer can use the de-13
encryption algorithm together with the verification number to 14
produce a computed transaction sequence number. The computed 15
transaction sequence number is compared to the transaction 16
sequence number stored in the computer to determine whether the 17
two numbers correspond to one another. If they do, then the 18
computer will authorize the transaction, if they do not then the 19
transaction will be rejected. Both transaction sequence numbers, 20
the one in the card and the one in the computer are incremented, 21
thus maintaining an ongoing transaction count, after the 22
authorized transaction so that a different verification number is 23
generated and used in the authorization of each different credit 24
card transaction. Thus, the verification number used in one given 25
transaction will not be useful in a subsequent transaction. 26
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Therefore, even if someone were to see the verification number 1
used in one transaction, they would not be able to use it in a 2
subsequent transaction. Vizcaino 2:30 – 3:10. 3
Linlor 4
03. Linlor is directed to completing transactions using hand-held 5
devices. Linlor, para. [0003]. 6
04. The user of a hand-held device selects a desired product by 7
responding to a series of product menus or entering a product 8
identification code into the hand-held device. The payment 9
resolution module may immediately return a confirmation of the 10
selected product to the hand-held device, along with availability, 11
price, product description, and/or other product related 12
information. The payment resolution module determines the 13
identity of the mobile device user and communicates information 14
regarding the requested product, including total price of the 15
product, to a payment authorization source, such as a credit card 16
company. After the payment resolution module receives 17
authorization for payment of the total price from the payment 18
authorization source, the payment resolution module generates an 19
authorization code that is transmitted to the mobile device. In 20
order for the user of the hand-held device to retrieve the product at 21
the point-of-sale, the user must present the authorization code, 22
such as by entering the code into a computing device at the point-23
of-sale, to confirm the user’s identity. Linlor, para. [0007]. 24
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05. The payment resolution module identifies the user of the hand-1
held device using information that is unique to the hand-held 2
device, such as caller ID information or a device identifier specific 3
to the hand-held device. This information may be stored locally at 4
the payment resolution module. Linlor, para. [0022]. 5
Guy 6
06. Guy is directed to managing accounts at banks, retail 7
establishments and other commercial and non-commercial 8
institutions, and more particularly to a system and method for 9
managing transactions in connection with such accounts. Guy, 10
para. [0001]. 11
07. The presentation ID will be unique to the cardholder, even if 12
there are multiple cardholders for one account. This feature is 13
implemented by assigning a “role” to each cardholder. The 14
customer ID and the presentation ID stored in the database permit 15
the roles for cardholders to be defined not only for each account, 16
but also for all accounts for which a card has been issued to one 17
customer. Guy, para. [0022]. 18
08. When any one of the cards is presented for conducting a 19
transaction, and the presentation ID associated with that card is 20
provided, the identity of the account, the identity of the customer, 21
and the role of that customer on the account, can all be determined 22
by accessing the database. Guy, para. [0027]. 23
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ANALYSIS 1
Claims 1, 4, 5, 8, 10-12, 15, 16, 19, 20, 23-25, 27, and 29 rejected under 35 2
U.S.C. § 103(a) as unpatentable over Vizcaino, Linlor, and Guy. 3
Vizcaino basically describes most of claim 1, but does not describe using 4
a device for conveying the data, and Linlor describes doing so. As the claim 5
relies on some alias to the account, Guy provides this as well. Thus, Guy 6
and Linlor simply augment the basic procedure already described by 7
Vizcaino to meet the claim limitations. 8
We are not persuaded by the Appellants’ argument that “Vizcaino's 9
‘verification number’ is not a ‘transaction count value’”; “Linlor does not 10
disclose ‘a device differentiator number associated with a payment device’"; 11
and “Guy does not disclose the missing elements.” Appeal Br. 20-24. 12
Vizcaino maintains a transaction sequence number, which is 13
incremented for each transaction. While this sequence number is encoded 14
into a verification number, contrary to Appellants’ contentions, the use of 15
this verification number does not negate Vizcaino's transmission of the 16
transaction sequence number, as the decoded verification number once again 17
yields that sequence number. Thus, the equivalent of the claimed transaction 18
count number is transmitted in encoded form, but still transmitted. Linlor 19
describes using information that is unique to the hand-held device, such as 20
caller ID information or a device identifier specific to the hand-held device, 21
which corresponds to the claimed device differentiator number. Because 22
Vizcaino and Linlor do provide these claim limitations, the argument that 23
Guy does not is moot. 24
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We are not persuaded by the Appellants’ argument that there is no 1
reason to combine the references and that they teach away from each other 2
and render one another unsuitable for the intended purpose. Appeal Br. 16-3
20. Again, Guy and Linlor simply augment the basic procedure already 4
described by Vizcaino to meet the claim limitations. Appellants’ argument 5
of teaching away and unsuitability is simply that Vizcaino uses encrypted 6
numbers. The claim does not limit the counter to unencrypted formats. 7
Appellants’ argument that Linlor cannot be combined with Vizcaino is that 8
Linlor’s handheld device is not a payment device. This simply interprets the 9
phrase “payment device” too narrowly. Clearly Linlor’s handheld device is 10
used in a payment transaction. The claim does not narrow the precise 11
manner in which the payment device is used. 12
With regard to the remaining dependent claims, the arguments for them 13
simply recite the added limitations and allege they are not found. This is 14
insufficient to act as a separate argument under 37 C.F.R. § 41.37. As our 15
reviewing court held, 16
we hold that the Board reasonably interpreted Rule 41.37 to 17
require more substantive arguments in an appeal brief than a 18
mere recitation of the claim elements and a naked assertion that 19
the corresponding elements were not found in the prior art. 20
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). With regard to claims 24 21
and 25, nominally provided with an argument regarding Guy, we find that 22
Guy does at least describe applying different credit limit rules to different 23
parties. 24
With regard to claim 8, however, we find that the limitations are actually 25
further argued in the Appeal Brief as part of the arguments in support of 26
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claims 9 and 13. We find those arguments persuasive for the reasons infra. 1
Claims 10-12, 15, and 16 depend from claim 8. 2
Claims 2, 17, and 21 rejected under 35 U.S.C. § 103(a) as unpatentable over 3
Vizcaino, Linlor, Guy, and Curry. 4
Appellants rely on the arguments in support of claim 1 for claim 2. 5
We are persuaded by the Appellants’ argument that Curry fails to 6
describe the limitations of claims 17 and 21. Appeal Br. 26-27. The 7
Examiner does not respond to these arguments in the Answer. 8
Claim 3 rejected under 35 U.S.C. § 103(a) as unpatentable over Vizcaino, 9
Linlor, Guy, and Szewczykowski. 10
Claim 22 rejected under 35 U.S.C. § 103(a) as unpatentable over Vizcaino, 11
Linlor, Guy, Curry, and Szewczykowski. 12
We are persuaded by the Appellants’ argument that Szewczykowski 13
does not show why its RFID would be the payment device of the claim. 14
Appeal Br. 27. We agree with Examiner that it would be predictable to add 15
an RFID to Vizcaino for security, but that does not explain why the RFID 16
would then substitute for Linlor’s handheld device. 17
Claims 7 and 9 rejected under 35 U.S.C. § 103(a) as unpatentable over 18
Vizcaino, Linlor, Guy, and Cuervo. 19
Claim 13 rejected under 35 U.S.C. § 103(a) as unpatentable over Vizcaino, 20
Linlor, Guy, and Fleming. 21
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Claim 14 rejected under 35 U.S.C. § 103(a) as unpatentable over Vizcaino, 1
Linlor, Guy, and Roshkoff. 2
Claim 18 rejected under 35 U.S.C. § 103(a) as unpatentable over Vizcaino, 3
Linlor, Guy, and Olarig. 4
We are persuaded by the Appellants’ argument that Cuervo does not 5
disclose the claimed single physical card with multiple device differentiator 6
numbers. Appeal Br. 27-29. The Examiner equates passwords with device 7
differentiator numbers at Answer 40-41, but passwords do not differentiate 8
devices. 9
Claims 26 and 28 rejected under 35 U.S.C. § 103(a) as unpatentable over 10
Vizcaino, Linlor, Guy, and Flitcroft. 11
Appellants rely on the arguments in support of claims 24 and 25. 12
CONCLUSIONS OF LAW 13
The rejection of claims 1, 4, 5, 19, 20, 23-25, 27, and 29 under 35 U.S.C. 14
§ 103(a) as unpatentable over Vizcaino, Linlor, and Guy is proper. 15
The rejection of claims 8, 10-12, 15, and 16 under 35 U.S.C. § 103(a) as 16
unpatentable over Vizcaino, Linlor, and Guy is improper. 17
The rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over 18
Vizcaino, Linlor, Guy, and Curry is proper. 19
The rejection of claims 17 and 21 under 35 U.S.C. § 103(a) as 20
unpatentable over Vizcaino, Linlor, Guy, and Curry is improper. 21
The rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over 22
Vizcaino, Linlor, Guy, and Szewczykowski is improper. 23
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The rejection of claims 7 and 9 under 35 U.S.C. § 103(a) as unpatentable 1
over Vizcaino, Linlor, Guy, and Cuervo is improper. 2
The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over 3
Vizcaino, Linlor, Guy, and Fleming is improper. 4
The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over 5
Vizcaino, Linlor, Guy, and Roshkoff is improper. 6
The rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable over 7
Vizcaino, Linlor, Guy, and Olarig is improper. 8
The rejection of claim 22 under 35 U.S.C. § 103(a) as unpatentable over 9
Vizcaino, Linlor, Guy, Curry, and Szewczykowski is improper. 10
The rejection of claims 26 and 28 under 35 U.S.C. § 103(a) as 11
unpatentable over Vizcaino, Linlor, Guy, and Flitcroft is proper. 12
DECISION 13
The rejection of claims 1, 2, 4, 5, 19, 20, and 23-29 is affirmed. 14
The rejection of claims 3, 7-18, 21 and 22 is reversed. 15
No time period for taking any subsequent action in connection with this 16
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 17
§ 1.136(a)(1)(iv) (2011). 18
AFFIRMED-IN-PART 19
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