Ex Parte Royyuru et al

Patent Trial and Appeal Board

Dec 21, 2017

12357579 (P.T.A.B. Dec. 21, 2017)

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.
12/357,579 01/22/2009 Vijay K. Royyuru 87188-758686 (092600US) 1955
20350 7590 12/26/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
12/26/2017 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
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIJAY K. ROYYURU and ROBERT P. KLOTZ
Appeal 2016-0027891
Application 12/357,5792
Technology Center 3600
Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1-8, 10-16, and 39. We have
jurisdiction under § 6(b).
We REVERSE.
1 Our Decision references Appellants’ Specification (“Spec.,” filed Jan. 22,
2009), Appeal Brief (“Appeal Br.,” filed May 26, 2015), and Reply Brief
(“Reply Br.,” filed Jan. 19, 2016), as well as the Examiner’s Final Office
Action (“Final Act.,” mailed Dec. 23, 2014) and Answer (“Ans.,” mailed
Nov. 19, 2015).
2 Appellants identify First Data Corporation as the real party in interest.
Appeal Br. 3.
Appeal 2016-002789
Application 12/357,579
SUBJECT MATTER ON APPEAL
The invention generally relates to “handling information related to
financial transactions,” and more specifically, relates to “methods and
systems for utilizing dynamic cryptograms in a financial transaction.”
Spec. ^ 1. Claim 1, the sole independent claim on appeal, is representative
of the claimed subject matter and reproduced below with the disputed
limitations italicized:
1. A method of processing a financial transaction by a user
and related to a financial account having a real Primary Account
Number (PAN), the method comprising:
detecting, with a processor, initiation of the transaction
with a device used as a presentation instrument in the transaction;
generating, with the processor, a Dynamic Transaction
Cryptogram (DTC) at the device that is valid for a single
transaction, the DTC encrypted at the device using a card key
and based on personal information that is known to the user and
that identifies the user,
generating, with the processor, a dynamic PAN at the
device, the dynamic PAN comprising an encrypted form of the
real PAN that is valid for the single transaction; and
providing both the DTC and the dynamic PAN from the
device to a Point-of-Sale (POS) device for use in the transaction,
wherein the provided dynamic PAN is decrypted in order to
determine the real PAN for processing of the transaction,
wherein the real PAN that is determined from the provided
dynamic PAN is then used to retrieve a key corresponding to the
card key, and wherein the DTC is provided in order to
authenticate the transaction, using the retrieved key.
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Appeal 2016-002789
Application 12/357,579
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Walker et al. (“Walker”) US 6,163,771 Dec. 19, 2000
Brown et al. (“Brown”) US 7,580,898 B2 Aug. 25, 2009
REJECTION
The Examiner rejects claims 1-8, 10-16, and 39 under 35 U.S.C.
§ 103(a) as unpatentable over Brown and Walker.
ANALYSIS
We are persuaded by Appellants’ argument that Brown does not
disclose “the DTC encrypted at the device using a card key and based on
personal information that is known to the user and that identifies the user,”
as recited in independent claim 1. Appeal Br. 5-7; Reply Br. 1-2.
The Examiner finds that Brown discloses this limitation because
Brown discloses encrypting the expiration date, billing zip code, and CVV2
at the presentation instrument. Ans. 8 (citing Brown 5:10-55). Even if we
agree with the Examiner that the expiration date and CVV2 are personal
information encrypted at the device to form a DTC, the cited portion of
Brown discloses using crypto tables, not a card key, to encrypt the
information and generate the DTC. Brown 5:18-23. As such, the Examiner
has not sufficiently established that Brown discloses a DTC encrypted at the
device using a card key, as recited in the disputed limitation.
We are also persuaded by Appellants’ argument that Brown does not
disclose the limitation of independent claim 1 reciting:
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Appeal 2016-002789
Application 12/357,579
wherein the provided dynamic PAN is decrypted in order to
determine the real PAN for processing of the transaction,
wherein the real PAN that is determined from the provided
dynamic PAN is then used to retrieve a key corresponding to the
card key, and wherein the DTC is provided in order to
authenticate the transaction, using the retrieved key.
Appeal Br. 5-6, 7-8; Reply Br. 3-4.
As an initial matter, we disagree with the Examiner that this limitation
does not include positively recited steps. Ans. 10,11. According to the
Examiner, independent claim 1 is directed to a method performed by a
processor, and the steps of the disputed limitation are performed outside of
the processor. Id. Contrary to the Examiner’s determination, however,
independent claim 1 is not directed to a method performed by a processor.
Although independent claim 1 requires that certain steps are performed by a
processor, independent claim 1 does not require the entire method to be
performed by a processor. As such, the fact that the steps of the disputed
limitation are performed apart from the processor does not exclude them as
part of the recited method.
We also disagree that the disputed limitation constitutes nonfunctional
descriptive material. Ans. 11. The Federal Circuit has long held that where
a limitation claims printed matter that is not functionally or structurally
related to its physical substrate, the printed matter may not be relied on to
distinguish over the prior art for purposes of patentability. In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983). In applying the printed matter doctrine,
the first step is to determine whether the limitation is, in fact, directed to
printed matter, i.e., whether the limitation claims the content of information.
In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). If so, “one must then
determine if the matter is functionally or structurally related to the associated
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Application 12/357,579
physical substrate, and only if the answer is ‘no’ is the printed matter owed
no patentable weight.” Id. at 851.
Here, the disputed limitation does not describe the content of the
dynamic PAN and the DTC. Instead, the disputed limitation recites various
steps using the PAN and the DTC. Namely, the disputed limitation recites
that the dynamic PAN is decrypted to determine the real PAN, and that the
real PAN is used to retrieve a key for the DTC to authenticate the
transaction. As such, the disputed limitation does not constitute
nonfunctional descriptive material, but rather recites steps of the claimed
method.
Having determined that the disputed limitation further defines the
method of independent claim 1 and may be relied upon to distinguish the
claimed invention from the prior art, we turn to the Examiner’s finding that
Brown discloses the disputed limitation. Final Act. 4-5; Ans. 10 (both
citing Brown 5:45-50). Although the cited portion of Brown discloses
providing the PAN, expiration date, and CVV, as encrypted, to a point-of-
sale (POS) merchant location, Brown is silent regarding decrypting the
dynamic PAN to determine the real PAN and using the real PAN to retrieve
a key for the DTC to authenticate the transaction, as claimed. Accordingly,
the Examiner has not sufficiently established that Brown discloses this
disputed limitation of independent claim 1.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 and claims 2-8, 10-16, and 39 depending therefrom.
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Appeal 2016-002789
Application 12/357,579
DECISION
The Examiner’s decision to reject claims 1-8, 10-16, and 39 is
reversed.
REVERSED
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