Ex Parte Shakkarwar

Patent Trial and Appeal Board

May 27, 2016

12470203 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/470,203 05/21/2009
107456 7590 06/01/2016
Artegis Law Group, LLP
John Carey
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
FIRST NAMED INVENTOR
Rajesh G. Shakkarwar
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.
VERI/0002.Cl 3398
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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):
algdocketing@artegislaw.com
kcruz@artegislaw.com
mmccauley@artegislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJESH G. SHAKKAR WAR
Appeal2013-009497
Application 12/470,203 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rajesh G. Shakkarwar (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1--4, 6, 7, 10-18, 20, 21, 24--32, 34--36,
and 38--44. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We Affirm.
1 The Appellant identifies Verient, Inc. as the real party in interest. App. Br.
3.
Appeal2013-009497
Application 12/470,203
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for performing a payment
transaction with a merchant, the method comprising:
creating a one-time use personal account number to use with an
on-line transaction implemented via a merchant webpage;
receiving, from a payment processor, the one-time use personal
account number and details associated with the on-line transaction;
after receiving the one-time use personal account number,
replacing the one-time use personal account number with a user real
personal account number; and
transmitting the real personal account number and the details
associated with the on-line transaction to a financial institution server
at a user financial institution for approval,
wherein the steps of creating, receiving, replacing and
transmitting are performed by an authentication server.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Pare, Jr.
Franklin
Fisher
Walker
us 5,870, 723
us 6,000,832
US 7,225,156 B2
US 7,853,529 Bl
The following rejections are before us for review:
Feb.9, 1999
Dec. 14, 1999
May 29, 2007
Dec. 14, 2010
1. Claims 29-32, 34--36, and 38--44 are rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
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2. Claims 29-32, 34--36, and 38--44 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Franklin.
3. Claims 1--4, 6, 7, 11-18, 20, 21, 25-32, 34--36, and 38--42 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Franklin,
Walker, and Fisher.
4. Claims 10, 24, 43, and 44 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Franklin, Walker, Fisher, and Pare, Jr.
ISSUES
Did the Examiner err in rejecting claims 29-32, 34--36, and 38--44
under 35 U.S.C. § 101 as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 29-32, 34--36, and 38--44
under 35 U.S.C. § 102(b) as being anticipated by Franklin.
Did the Examiner err in rejecting claims 1--4, 6, 7, 11-18, 20, 21, 25-
32, 34--36, and 38--42 under 35 U.S.C. § 103(a) as being unpatentable over
Franklin, Walker, and Fisher?
Did the Examiner err in rejecting claims 10, 24, 43, and 44 under
35 U.S.C. § 103(a) as being unpatentable over Franklin, Walker, Fisher, and
Pare, Jr.?
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.
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ANALYSIS
The rejection of claims 29-32, 34-36, and 38--44 under 35 U.S.C. § 1 OJ as
being directed to non-statutory subject matter.
The Appellant has not responded to this rejection. Accordingly, it is
sustained.
The rejection of claims 29-32, 34-36, and 38--44 under 35 U.S.C. § 102(b)
as being anticipated by Franklin.
Independent claim 29 calls for "a server that ... is configured to: ...
after receiving [a] one-time use personal account number, replace the one-
time use personal account number with a user real personal
account number."
The Examiner takes the position that Franklin expressly discloses said
claim limitation. Final Act. 3. And yet the Examiner concedes that
"Franklin et al ('832) fails to disclose 'after receiving the one-time use
personal account number, replacing the one-time use personal account
number with a user real personal account number; wherein the steps of
replacing are performed by an authentication server.'" Final Act. 5 (in
addressing the rejection of claim 1 under § 103).
It appears the Examiner is also arguing that Franklin's server
inherently performs the claim steps. See Final Act. 4 ("Examiner notes that
the manner in which a claimed apparatus is intended to be used does not
distinguish the claimed apparatus from the prior art- if the prior art has the
capability to so perform .... "). The difficulty with that argument is that
there is inadequate support for it. The Examiner cites no evidence or
reasoning that Franklin's server (i.e., as disclosed at col. 4, 1. 10---34 is
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Application 12/470,203
configured to necessarily function as claimed. In fact, later in the Final
Action the Examiner concedes that it is not so configured. See Final Act. 5
("Franklin et al (' 832) fails to disclose "after receiving ... replacing .... "")
The argument is based on speculation. It is possible that Franklin's server
can be configured to function as claimed but "[i]nherency, however, may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient."
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939), quoted in Cont'!
Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991).
The rejection is not sustained.
The rejection of claims 1--4, 6, 7, 11-18, 20, 21, 25-32, 34-36, and 38--42
under 35 U.S.C. § 103(a) as being unpatentable over Franklin, Walker, and
Fisher.
Claims 1--4, 6, 7, and 11-14
The Appellant argued these claims as a group. See App. Br. 8-10. We
select claim 1 as the representative claim for this group, and the remaining
claims 2--4, 6, 7, and 11-14 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
We have carefully reviewed the Appellant's arguments but find them
unpersuasive as to error in the rejection.
The Appellant first argues that
Franklin teaches the issuing institution receiving a transaction number
from a merchant and then using the customer identification number
contained within the transaction number to look the customer specific
data. (See col. 2, Ins. 4 7-55). The issuing institution then computes its
own test code number to authentic the transaction. (See col. 2, Ins. 55-
64). Thereafter, the issuing institution substitutes the transaction
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number for the internal customer number and then processes the
authorization request for the transaction. Because the substitution step
is performed internally, Franklin does not teach or suggest the
"replacing" step using a server that is different from the server of the
issuing institution.
App. Br. 8. The Appellant appears to argue that the claimed subject matter
distinguishes from Franklin because the claimed subject matter does not
perform the substitution step internally. However, claim 1 does not preclude
the replacement step from being performed internally. It is required to be
performed "by an authentication server" but that does not preclude it from
being performed internally. There is no limitation in the claim that requires
the replacing step to be performed using a server that is different from the
server of the issuing institution. Furthermore, the Examiner clearly states
that Franklin fails to teach the "replacing" step and that it be performed by
an authentication server. Final Act. 5. The Examiner relied on Walker, not
Franklin, to show that the replacing step being performed by an
authentication server was known in the prior art. See Final Act. 5.
The Appellant next argues that "the claims recite transmitting the real
account number from a server to another financial institution server.
Franklin discloses using only the server of the issuing institution, thus does
not teach or suggest using another server to transmit to the server of the
issuing institution." App. Br. 8. But the Examiner did not rely on Franklin
as evidence that the claim step of "transmitting the real personal account
number and the details associated with the on-line transaction to a financial
institution server at a user financial institution for approval" was disclosed in
the prior art. The Examiner relied on Fisher. See Final Act. 6.
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The Appellant next argues that Walker suffers the same deficiency as
Franklin; that is, "there is no disclosure of performing the 'replacing' step
using a server that is different from the central processing system server.
This is the same deficiency exhibited by Franklin." App. Br. 9. But claim 1
does not include a limitation requiring the replacing step to use a server that
is different from the central processing system server. Claim 1 calls for an
authentication server to perform the steps of creating, receiving, replacing,
and transmitting; and a financial institution server, to which a real personal
account number and details associated with an on-line transaction are
transmitted for approval. There is no requirement in the claim for the
replacing step to use a server that is different from a central processing
system server. To the extent the Appellant is arguing that Walker as well as
Franklin do not disclose a server at a financial institution, it does not square
with the Examiner's position which relies instead on Fisher. See Final Act.
6 ("Fisher et al. (' 156) discloses 'transmitting the real personal account
number and the details associated with the on-line transaction to a financial
institution server at a user financial institution for approval wherein the steps
of transmitting are performed by an authentication server' (Column 20, lines
34-42; Column 20, lines 50- column 21, line 12).").
Regarding Fisher itself, the Appellant argues that "a person of
ordinary skill in the art would not be motivated to include Fisher's
transmitting step in Franklin's system" (App. Br. 9) because "Franklin
teaches using the issuing institution to generate and obtain the customer
number" and therefore "already has the customer number" (App. Br. 9) and
in Fisher "the actual card number must be transmitted to the issuing
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institution because the issuing institution does not have the actual card
number yet" (App. Br. 9). Similarly, the Appellant also argues that the
combination would render Franklin inoperable for its intended purposes
because if the issuing bank in Franklin creates the one time use account
number, the purposes of the PDPS device of Fisher would not have any use.
App. Br. 9-10. A reference may teach away from a use when that use would
render the result inoperable. McGinley v. Franklin Sports, Inc., 262 F.3d
1339, 1354 (Fed. Cir. 2001). But the Appellant's characterization of
Franklin and Fisher as describing an issuing institution operating in different
ways amounts to showing two alternative issuing institutions. "The prior
art's mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed in the
... application." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Cf In
re Boe, 355 F.2d 961 (CCPA 1966)
All of the disclosures in a reference must be evaluated for what they
fairly teach one of ordinary skill in the art. Thus, in In re Smith,
148 F.2d 351, 32 CCPA 959; in In re Nehrenberg, 280 F.2d 161,
47 CCPA 1159; and inin re Watanabe, 315 F.2d 924, 50 CCPA 1175,
this court affirmed rejections based on art which we concluded rendered
the claimed invention obvious to those of ordinary skill in the art
despite the fact that the art teachings relied upon in all three cases were
phrased in terms of a non-preferred embodiment or as being
unsatisfactory for the intended purpose.
Furthermore, this argument appears to be addressing a position that
the Examiner is not taking. The Examiner, consistent with what is claimed -
which makes no mention of an issuing institution - found that Franklin
discloses the claim "steps of creating and receiving are performed by an
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Application 12/470,203
authentication server" but "fails to disclose 'transmitting the real personal
account number and the details associated with the on-line transaction to a
financial institution server at a user financial institution for approval,
wherein the steps of transmitting are performed by an authentication
server,'" for which Fisher is relied upon. See Final Act. 5---6. Therefore, the
question is whether one of ordinary skill in the art would have been led to
modify Franklin so as to "transmit[ ] the real personal account number and
the details associated with the on-line transaction to a financial institution
server at a user financial institution for approval, wherein the steps of
transmitting are performed by an authentication server" as claimed, and not
whether one would have been led to modify Franklin's issuing institution.
Finally, the Appellant argues that "the motivation to combine
provided by the Examiner is inappropriate." App. Br. 10. According to the
Appellant, "Franklin teaches using its own internal validating system. In
contrast, Fisher teaches using an external (i.e., third party) validating system.
As such, it would not have been obvious to employ steps from a third party
validating system with an internal validating system." App. Br. 10. We
disagree.
The Examiner articulated an apparent reasoning with logical
underpinning. The Appellant's focus on Franklin's and Fisher's alternative
locations for a validating system does not undercut the rationale for
combining the references. Moreover, the question is not what each reference
teaches individually. "The question in a[§] 103 case is what the references
would collectively suggest to one of ordinary skill in the art." In re
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Ehrreich, 590 F.2d 902, 909 (citing In re Simon, 461F.2d1387 (CCPA
1972). The Examiner's position is simply stated in the Answer:
Franklin discloses the creating (Abstract, column 5, lines 24-57), and
the receiving (column 2, lines 47-60) steps, Walker discloses the
replacing step (Column 6, line 37-39), Fischer also discloses the
replacing step and further discloses the transmitting step (Column 20,
line 50 - column 21, line 12). The combination of Franklin modified in
view of walker and further in view of Fischer teaches the process as
claimed by the Appellant.
Answer 14. In other words, according to the Examiner, it would have been
obvious to one of ordinary skill in the art to combine all three prior art
disclosures and reach the claimed subject matter for the same purpose; that
is, "[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007). In that regard,
the Appellant has not come forward with secondary factors to dislodge the
prima facie obviousness determination.
The remaining arguments are unpersuasive.
For the foregoing reasons, the arguments challenging the rejection of
claim 1 are unpersuasive as to error in the rejection. Accordingly, the
rejection is sustained.
Appellant does not separately argue the rejection of claims 2--4, 6, 7,
and 11-14, each of which depends from claim 1. Therefore, we sustain the
rejection of claims 2--4, 6, 7, and 11-14 for the reasons discussed above
regarding claim 1.
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Claims 15-18, 20, 21, and 25-28
The Appellant challenges the rejection of these claims with arguments
similar to those made in challenging the rejection of claim 1. See App. Br.
10-12. As discussed above those arguments are unpersuasive as to error in
the rejection. Accordingly, the rejection of these claims is sustained for the
same reasons.
Claims 29-32, 34-36, and 38--42
The Appellant challenges the rejection of these claims with arguments
similar to those made in challenging the rejection of claim 1. See App. Br.
12-14. As discussed above those arguments are unpersuasive as to error in
the rejection. Accordingly, the rejection of these claims is sustained for the
same reasons.
We note the Appellant's comment that "[t]he Examiner incorrectly
ignored the functional limitations of claims 29-32, 34-36 and 38-44." App.
Br. 14. It is not clear what the Appellant is referring to, other than to say
"that descriptive or non-functional data (e.g 'to be used for paying the
merchant' ) will not distinguish the claimed invention from the prior art"
(Final Act. 7), the Examiner appears to have addressed all the claim
limitations.
The rejection of claims 10, 24, 43, and 44 under 35 U.S.C. § 103(a) as being
unpatentable over Franklin, Walker, Fisher, and Pare, Jr.
The Appellant has provided no response to this rejection.
Accordingly, it is sustained.
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CONCLUSIONS
The rejection of claims 29-32, 34--36, and 38--44 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter is affirmed.
The rejection of claims 29-32, 34--36, and 38--44 under 35 U.S.C.
§ 102(b) as being anticipated by Franklin is reversed.
The rejection of claims 1--4, 6, 7, 11-18, 20, 21, 25-32, 34--36, and
38--42 under 35 U.S.C. § 103(a) as being unpatentable over Franklin,
Walker, and Fisher is affirmed.
The rejection of claims 10, 24, 43, and 44 under 35 U.S.C. § 103(a) as
being unpatentable over Franklin, Walker, Fisher, and Pare, Jr. is affirmed.
DECISION
The decision of the Examiner to reject claims 1--4, 6, 7, 10-18, 20, 21,
24--32, 34--36, and 38--44 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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