Ex Parte Sheets

Patent Trial and Appeal Board

Sep 26, 2016

12233206 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/233,206 09/18/2008 John Sheets
66945 7590 09/28/2016
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
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Suite 2800
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UNITED STATES DEPARTMENT OF COMMERCE
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www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
80083-747356 1716
EXAMINER
OHBA, MELLISSA M
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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
EDurrell@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN SHEETS
Appeal2015-006719
Application 12/233,206
Technology Center 2100
Before CARL W. WHITEHEAD JR., ERIC B. CHEN, and
AARON W. MOORE, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-006719
Application 12/233,206
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 4, 5, 9, 20, 24, 28, 32-34, and 37--42. Claims 2, 3, 6-8, 10-19,
21-23, 25-27, 29-31, 35, and 36 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Appellant's invention relates to data exchange in a transaction that is
protected by using a hashing function to transform sensitive data into a
scrambled form. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A method for securing data using a dynamic hash, the
method comprising:
creating a first hash input including a first set of data fields
selected from a first collection of data, the first set of data fields
including a first data field obtained from a consumer input device by a
point of data entry device, a second data field obtained from the
consumer input device by the point of data entry device and a third
data field obtained from the point of data entry device, the first data
field including an account identifier obtained from the consumer input
device, the second data field including sensitive data obtained from
the consumer input device, the third data field including data having a
value determined independent of the consumer input device;
performing a hash operation on the first hash input to create a
first hash output;
assembling a second collection of data including (i) at least a
portion of said first hash output and (ii) a second set of data fields
selected from the first collection of data, the second set of data fields
partially incorporating the first set of data fields at least in part by
including the first data field obtained from the consumer input device
and the third data field obtained from the point of data entry device
and being distinct with respect to the first set of data fields at least in
part by excluding the second data field obtained from the consumer
input device; and
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Application 12/233,206
securely communicating the sensitive data obtained from the
consumer input device to the remote destination at least in part by
transmitting the second collection of data over a network to a remote
destination;
wherein the second collection of data is assembled for each of a
plurality of transactions with respect to an account identified by the
account identifier and contents of said at least a portion of said first
hash output changes for each of the plurality of transactions.
Claims 1, 9, 20, 24, 28, 32-34, and 37-39 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Sahota (US 2005/0043997 Al;
Feb. 24, 2005) and Ross (US 2009/0006842 Al; Jan. 1, 2009).
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sahota, Ross, and Crispin (US 2005/0089160 Al;
Apr. 28, 2005).
Claims 40-42 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Sahota, Ross, and Kocher (US 2007/0033419 Al; Feb. 8, 2007).
ANALYSIS
§ 103 Rejection-Sahota and Ross
We are persuaded by Appellant's arguments (Supp. App. Br. 19-20)
that Ross does not teach the limitation "assembling a second collection of
data ... being distinct with respect to the first set of data fields at least in
part by excluding the second data field obtained from the consumer input
device," as recited in independent claim 1.
The Examiner found that the second sealed electronic data of Ross
corresponds to the limitation "assembling a second collection of data ...
being distinct with respect to the first set of data fields at least in part by
excluding the second data field obtained from the consumer input device."
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Application 12/233,206
(Ans. 3--4; see also Final Act. 5.) In particular, the Examiner found that
"Ross clearly states in paragraph 29 that the 'second sealed electronic data'
includes the 'second seal' and 'the first sealed electronic data' and therefore,
the 'second electronic data' includes the first or 'at least a portion' as taught
by the claim language." (Ans. 5 (citation omitted).) We do not agree that
this disclosure satisfies the disputed limitation.
Ross relates to "computer program products, associated with sealing
electronic data." (i-f l.) Ross explains that "a user ... generate[s] a seal of a
first electronic data, the first electronic data being associated with a second
electronic data" (i-f 19) and "[a] second sealed electronic data including the
second seal and the first sealed electronic data can be generated" (i-f 29). In
one example of Ross, the first electronic data can be an email and the second
electronic data can be an email attachment, such as an external file. (i-f 33.)
Furthermore, the first electronic data of Ross may include personal
information such as "a social security number, a license number, a passport,
a birth sealed registration document, a credit card number, a bank account
number, an email address, an identity card data, or any combination
thereof." (i-f 27.) Ross also explains that "[ t ]he multiple document sealing
process 750 can be used, for example, to seal an email including one or more
attachment files." (i-f 141.)
Even if the Examiner is correct that "the 'second electronic data'
includes the first or 'at least a portion' as taught by the claim language"
(Ans. 5) by citing the second sealed electronic data of Ross (Ans. 3--4; see
also Final Act. 5), the Examiner has provided insufficient evidence that Ross
teaches the limitation "assembling a second collection of data ... being
distinct with respect to the first set of data fields at least in part by excluding
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Application 12/233,206
the second data field obtained from the consumer input device," as claimed.
In particular, the Examiner has not demonstrated that Ross omits any data
from the second sealed electronic data. We do not agree that Ross'
disclosure of including the first unique identifier in the second electronic
data teaches or suggests excluding other data. Thus, on this record, the
Examiner has not demonstrated that Ross teaches the limitation "assembling
a second collection of data ... being distinct with respect to the first set of
data fields at least in part by excluding the second data field obtained from
the consumer input device," as recited in claim 1. Moreover, the Examiner's
application of Sahota does not cure the above noted deficiencies of Ross.
Accordingly, we are persuaded by Appellant's arguments that "[t]here
is clearly no teaching or suggestion of 'assembling a second collection of
data' with a 'first hash output,' 'a first data field' with an account number, 'a
third data field' with information independent of a consumer input device,
while excluding, a second data field with sensitive data." (Supp. App.
Br. 20 (emphasis omitted).)
Therefore, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a). Claims 9, 20, 32-34, and 37-39 depend from
independent claim 1. We do not sustain the rejection of claims 9, 20, 32-34,
and 37-39 under 35 U.S.C. § 103(a) for the same reasons discussed with
respect to independent claim 1.
Independent claims 24 and 28 recite limitations similar to those
discussed with respect to independent claim 1. We do not sustain the
rejection of claims 24 and 28 for the same reasons discussed with respect to
claim 1.
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§ 103 Rejection-Sahota, Ross, and Crispin
Claims 4 and 5 depend from independent claim 1. Crispin was cited
by the Examiner for teaching the additional features of claims 4 and 5.
(Final Act. 15-16.) However, the Examiner's application of Crispin does
not cure the above noted deficiencies of Ross.
§ 103 Rejection-Sahota, Ross, and Kocher
Claims 40-42 depend from independent claim 1. Kocher was cited by
the Examiner for teaching the additional features of claims 40-42. (Final
Act. 16-18.) However, the Examiner's application of Kocher does not cure
the above noted deficiencies of Ross.
DECISION
The Examiner's decision rejecting claims 1, 4, 5, 9, 20, 24, 28, 32-34
and 37--42 is reversed.
REVERSED
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