Ex Parte Royyuru

Patent Trial and Appeal Board

Feb 18, 2016

12641239 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/641,239 12/17/2009
20350 7590 02/22/2016
KILPATRICK TOWNSEND & STOCKTON LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO, CA 94111-3834
Vijay Royyuru
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.
020375-096600US 1232
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
02/22/2016 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):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIJA Y ROYYURU1
Appeal2013-009461
Application 12/641,239
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-18 under 35 U.S.C. § 103(a) as being unpatentable
over Dominguez2 and Ellmore. 3 See Final Action 2-9. We have jurisdiction
under 35 U.S.C. § 6(b).
"The present invention relates, in general, to financial account
enrollment, and more particularly, to enrollment authentication using a
partial account number (PAN)." Spec. i-f 2. Claims land 13 are
1 Appellant identifies the real party in interest as "First Data Corporation."
Appeal Br. 3.
2 Dominguez et al., US 2010/0063895 Al, published March 11, 2010.
3 Ellmore, US 2007/0192618 Al, published August 16, 2007.
Appeal2013-009461
Application 12/641,239
independent, and recite substantially similar subject matter. Representative
claim 1 recites:
1. A method of implementing enrollment
authentication, the method comprising:
receiving, by a processing system from a customer, a
partial primary account number (PAN) and an identifier of an
issuing financial institution of the partial PAN;
based on transaction history related to the partial PAN,
presenting, from the processing system, a plurality of challenge
questions to the customer;
receiving, by the processing system from the customer,
answers to the plurality of challenge questions;
based on the partial PAN, the identifier of the issuing
financial institution, and the answers to the plurality of
challenge questions, resolving, by the processing system, a
complete PAN;
prompting the customer to select a mutual trust phrase;
receiving, by the processing system, the selected mutual
trust phrase;
placing a call from an interactive voice response (IVR)
system to the customer;
playing back, by the IVR system to the customer, the
selected mutual trust phrase;
receiving, from a telephone, the customer's personal
identification number (PIN) associated with the complete PAN;
and
using, by the processing system, the complete PAN and
PIN combination to authenticate the customer.
Appeal Br. 13, Claims Appendix.
DISCUSSION
Independent claim 1 requires, inter alia, "receiving ... a partial
primary account number (PAN) and an identifier of an issuing financial
institution of the partial PAN; based on transaction history related to the
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Appeal2013-009461
Application 12/641,239
partial PAN, presenting, from the processing system, a plurality of challenge
questions to the customer." Id.
In maintaining the rejection of independent claim 1 as obvious over
Dominguez and Ellmore, the Examiner relies on Dominguez at paragraphs
64 and 77 for disclosing the limitation based on transaction history related
to the partial PAN, presenting, from the processing system, a plurality of
challenge questions to the customer. Answer 3--4 (emphasis added); see
also Final Action 3. Appellant challenges this finding, arguing the "hint
question and response pair" in Dominguez, which the Examiner relies on, is
not based on transaction history as required by claim 1. See Appeal Br. 7-8;
Reply Br. 2. In responding to Appellant's argument, the Examiner cites
paragraph 77 of Dominguez and reasons that "questions can be presented
during a transaction due to failed attempts to enter a [correct] password,"
and thus, those questions are based on transaction history. Answer 4.
Although Dominguez discloses presenting, from the processing
system, a plurality of challenge questions to a customer to verify the
customer's identity during authentication (Dominguez i-f 64), those challenge
questions are not based on transaction history related to the partial PAN, as
called for by claim 1. During examination, claims are to be given their
broadest reasonable interpretation consistent with the specification, and the
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Amer. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Paragraph 77
of Dominguez discloses "[i]f the cardholder is unable to correctly enter the
authentication password, then the cardholder can be prompted with the hint
question that was established during the cardholder's registration process."
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Appeal2013-009461
Application 12/641,239
Dominguez's challenge questions presented during the processing of a failed
transaction are based on stored customer information such as social security
number, driver's license number, billing address, email addresses, etc. See
Dominguez i-f 65. Claim 1 requires presenting a plurality of challenge
questions to the customer based on transaction history related to the
received partial PAN. Appellant's Specification provides that upon
receiving a partial PAN from the customer, a transaction repository database
is searched to locate matching transactions associated with that PAN, and
transaction history challenge questions are presented to the customer. Spec.
i-f 15. By using historical data from previously authenticated transactions
and posing them as challenge questions to the consumer, the correct owner
of the PAN that conducted those transactions would therefore know the
answers to those challenged questions. Id. at 16. In light of the
Specification, we find the Examiner's interpretation of this disputed claim
limitation to be unreasonably broad and inconsistent with the Specification.
Dominquez's customer information (i.e., social security number, email
address, driver's license number) stored during the enrollment process and
used to verify the identity of a consumer during a failed transaction attempt
is unrelated to transaction history, and the hint questions derived from that
enrollment information are not based on historical transactions related to the
received partial PAN. Dominguez thus fails to disclose that the challenge
questions presented to the customer are "based on transaction history related
to the partial PAN," as required by claim 1.
As such, we do not sustain the rejection of independent claim 1. We
also do not sustain the rejection of independent claim 13, which recites
substantially similar subject matter, and was rejected based on the same
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Appeal2013-009461
Application 12/641,239
erroneous finding. The Examiner does not rely on Ellmore to remedy this
error. Therefore, for the same reasons, we do not sustain the rejection of
claims 2-12 and 14--18, which depend either directly or indirectly from
independent claims 1 and 13.
DECISION
The Examiner's decision to reject claims 1-18 is reversed.
REVERSED
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