Ex Parte Shakkarwar

Patent Trial and Appeal Board

Jun 16, 2016

12118646 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/118,646 05/09/2008
107456 7590 06/20/2016
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/0007. 02 1448
EXAMINER
HOLLY, JOHN H
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
06/20/2016 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
Appeal2014-003882
Application 12/118,646
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1, 6-26, and 29--42. We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF THE DECISION
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Our decision references Appellant's Appeal Brief ("Appeal Br.," filed
Sept. 16, 2013) and Reply Brief ("Reply Br.," filed Feb. 4, 2014), the
Examiner's Answer ("Ans.," mailed Dec. 4, 2013), and the Final Office
Action ("Final Action," mailed Mar. 5, 2013).
2 Appellant identifies the real party in interest as "Verient, Inc." (Appeal Br.
3).
Appeal2014-003882
Application 12/118,646
CLAIMED INVENTION
The claimed invention relates to "a payment processing platform"
(Spec. i-f 1 ). Claims 1 and 26 are the independent claims on appeal. Claim 1,
reproduced below with bracketed matter added, is illustrative of the subject
matter on appeal (Appeal Br. 12, Claims App.).
1. [l] A computer-implemented method for processing a
child transaction involving a child product, wherein the child
product is linked to a core account and is to be used for payment
transactions within use restrictions defined by one or more
control parameters, the method comprising:
[2] receiving one or more attributes defining the child
transaction, wherein the child transaction is initiated at a
merchant entity;
[3] comparing the one or more attributes to the one or more
control parameters stored in a first database executing on a
computing device to determine that the child transaction is valid;
[ 4] based on a child card number associated with the child
transaction, identifying a core account number associated with
the core account; and
[5] generating, within a payment processing platform, a
core account transaction based on the core account number,
[ 6] wherein the core account transaction is processed by a
financial institution entity that is separate and distinct from the
payment processing platform,
[7] wherein a result of the child transaction is based on a
result that is generated when the core account transaction is
processed.
REJECTIONS
1. Claims 1, 11-19, 21-26, and 33--42 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Fletcher (US 2006/0076400
Al, pub. Apr. 13, 2006), Huh (US 7,665,657 B2, iss. Feb. 23, 2010), and
Ishibashi (EP 1 383 073 Al, pub. Jan. 21, 2004).
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Appeal2014-003882
Application 12/118,646
2. Claims 6 and 20 stand rejected under 35 U .S.C. § 103(a) as
being unpatentable over Fletcher, Huh, Ishibashi, and Maritzen (US
2002/0095386 Al, pub. July 18, 2002).
3. Claims 7-10 and 29-32 stand rejected under 35 U.S.C. §103(a)
as being unpatentable over Fletcher, Huh, Ishibashi, and Blagg (US
2002/0198806 Al, pub. Dec. 26, 2002).
ANALYSIS
Independent claim 1 requires, inter alia, "wherein a result of the child
transaction is based on a result that is generated when the core account
transaction is processed" (Appeal Br. 12, Claims App.).
The Examiner finds this limitation disclosed in paragraphs 81, 218,
244, and 254 of Ishibashi (Final Act. 7; Ans. 3).
Appellant disputes this finding. In particular, Appellant argues that
the cited "paragraphs discuss the steps required to store information on the
PKI card and issue the PKI card, which is before any transaction occurs,"
and thus "do not involve a child transaction initiated at a merchant entity."
(Appeal Br. 8).
We agree with Appellant. We have reviewed the relied upon
paragraphs in Ishibashi, but we see no disclosure of a result of a child traffic
PKI card transaction based on a result that is generated when a parent PKI
card transaction is processed. Once value is stored in the traffic PKI card,
subsequent use of the PKI card at value-use machine 755 does not appear to
be based on any result of a transaction involving a parent card (see Ishibashi,
i-f 241-243). Although the disclosed signature validation involves validation
of a public-key certificate that is cryptographically linked to the parent card,
there is no "core account transaction" as required by claim 1.
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Application 12/118,646
Accordingly, we do not sustain the rejection of independent claim 1 as
obvious over Fletcher, Huh, and Ishibashi. For the same reasons, we do not
sustain the rejections of claims 6-25 dependent thereon. Cf In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if
the independent claims from which they depend are nonobvious").
Independent claim 26 recites similar limitations and the Examiner's rejection
of claim 11 as obvious over Fletcher, Huh, and Ishibashi relies on the same
erroneous findings as in claim 1. Thus, for the same reasons, we do not
sustain the rejections of independent claim 26, and claims 29--42 dependent
thereon.
New Ground of Rejection
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Appellant does not dispute the Examiner's findings that Fletcher
discloses claim I limitations [1], [2], and [3], nor does Appellant dispute the
Examiner's finding of limitation [ 4] as to Huh. We find that Fletcher
discloses limitations [5], [6], and [7] of claim 1. Accordingly, we enter a
new ground of rejection of claim 1under35 U.S.C. § 103(a) as being
unpatentable over Fletcher and Huh.
We find limitation [5] in Fletcher at paragraph 78, which discloses
that "CAS 7 then performs an authorization request for the PCA 20, as is
typically completed with any physical charge account, to ensure that the
primary charge account conditions (e.g., credit limit, expiration date, etc.)
have been met."
We find limitation [ 6] in Fletcher at paragraph 80, which discloses
that the "use of other third-party networks and systems are contemplated by
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Application 12/118,646
the present system" and the system can "associate LUPs to third-party
accounts," and "[t]he third-party issuer 92 processes the authorization
request and returns the result to CAS 7 for forwarding back to application
server 5 (step 84b )."
We find limitation [7] in Fletcher at paragraph 79, which discloses:
If CAS 7 authorizes use of PCA 20, the transaction involving
L UP 15 is approved and an approval code will be generated ...
If CAS Authentication Component 78 does not authorize use
under LUP 15 conditions and/or if CAS 7 does not authorize use
under PCA 20 conditions, the transaction will not be approved.
When the use conditions of both the primary charge account and
the limited use PIN s are satisfied, the transaction is approved.
In other words, Fletcher discloses that the result (approval or not) of the
limited use PIN (L UP) transaction is based on a result (authorization or not)
of the corresponding primary charge account (PCA) transaction. Thus,
Fletcher explicitly discloses "a result of the child transaction is based on a
result that is generated when the core account transaction is processed," as
required by claim 1.
In our view, modifying Fletcher to include the element taught by Huh,
would have been no more than the combination of known elements
according to their known functions, yielding a predictable result; therefore it
would have been obvious at the time Appellant's invention was made.
See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) ("The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results").
Accordingly, we reject independent claim 1 under 3 5 U.S. C. § 103 (a)
as obvious over Fletcher and Huh. Claim 26 recites substantially similar
limitations as claim 1, and Appellant's argue the patentability of claim 26 by
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Application 12/118,646
relying on arguments presented with respect to claim 1 (Appeal Br. 9).
Thus, we similarly reject claim 26 as being unpatentable over Fletcher and
Huh. We leave it to the Examiner's discretion as to whether these new
grounds should be applied to the dependent claims.
DECISION
The Examiner's decision to reject claims 1, 6-26, and 29--42 is
reversed.
We enter a new ground of rejection for independent claims 1 and 26
under 35 U.S.C. §103(a) as unpatentable over Fletcher and Huh.
NEW GROUND
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded
to the Examiner. ...
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
REVERSED; 37 C.F.R. § 41.50(b)
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