Ex Parte Singhal

Board of Patent Appeals and Interferences

Nov 9, 2011

09891913 (B.P.A.I. Nov. 9, 2011)

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.
09/891,913 06/26/2001 Tara Chand Singhal 11195.33 1401
7590 11/09/2011
Tara Chand Singhal
P.O. Box 5075
Torrence, CA 90510
EXAMINER
MONFELDT, SARAH M
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
11/09/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TARA CHAND SINGHAL
____________

Appeal 2010-011078
Application 09/891,913
Technology Center 3600
____________

Before: ANTON W. FETTING, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 106-124. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to systems and methods for
facilitating payment transactions to merchants using existing bankcards and
bank accounts of a customer, and more specifically, for protecting the
privacy and private data of a customer in data storage and during
transactions (Spec. 1:21-25). Claim 106, reproduced below, is further
illustrative of the claimed subject matter.
106. A method of protecting from theft and misuse
bankcard data from merchant computer systems and securely
selecting any one of a plurality of bankcards of a customer at a
merchant point of sale interface for a payment transaction to a
merchant comprising the steps of:
a. enabling selecting a debit card transaction requiring
entry of a PIN in a merchant point of sale (POS) interface,
enabling entering of (i) a customer identifier, without customer
identity data, by a payment card that encodes the customer
identifier and (ii) a bankcard specific personal identification
number (CPIN) in the merchant point of sale (POS) interface;
b. enabling sending the customer identifier and the CPIN
to an adapted prior art merchant gateway, along with the
payment transaction data that includes a merchant identifier and
a payment amount;
c. interfacing by the adapted prior art merchant gateway
with a payment card system, and sending to the payment card
system the customer identifier and the CPIN;
d. having stored customer bankcard data in the payment
card system, wherein, each bankcard is identified with a
separate CPIN, identifying a particular bankcard data of the
customer and verifying the customer by the bankcard specific
CPIN in the payment card system;

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e. returning to the adapted prior art merchant gateway the
bankcard data corresponding to the customer identifier and the
CPIN from the payment card system;
f. assembling by the adapted prior art merchant gateway,
a payment transaction record to include the bankcard data from
the payment card system and the payment transaction data, and
by submitting the payment transaction record to a bankcard
authorization network, wherein the method does not transfer
bankcard identity data to the merchant computer systems.

The Examiner relies upon the following prior art:
Low US 5,420,926 May 30, 1995
Duyck US 5,557,087 Sep. 17, 1996
Rose US 5,770,843 Jun. 23, 1998
Albert US 5,870,722 Feb. 9, 1999
Campisano US 6,227,447 B1 May 8, 2001
Gillin US 7,254,557 B1 Aug. 7, 2007
Claims 106-108 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rose in view of Campisano, Duyck, and Low; claims 109,
110, 114, and 123 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Rose; claims 111, 112, 115, and 116 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Rose in view of Campisano; claim 113 stands
rejected under 35 U.S.C. § 103(a) as unpatentable over Rose in view of
Campisano and Low; claim 117 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Rose in view of Low; claims 118-120 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Rose in view of Albert and Duyck;
claim 121 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Rose in view of Albert, Duyck, Campisano, and Gillin; claim 122 stands
rejected under 35 U.S.C. § 103(a) as unpatentable over Rose in view of

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Albert, Duyck, Campisano, and Gillin; and claim 124 stands rejected under
35 U.S.C. § 103(a) as unpatentable over Rose in view of Campisano and
Low.
We AFFIRM-IN-PART.

ISSUES
Did the Examiner err in asserting that a combination of Rose,
Campisano, Duyck, and Low render obvious independent claim 106?
Did the Examiner err in asserting that Rose renders obvious
independent claims 109, 114, and 123?

FINDINGS OF FACT
We adopt the Examiner’s findings of fact concerning independent
claims 106, 109, and 114, as set forth on pages 4-6, 9-13, and 29-40 of the
Examiner’s Answer.

ANALYSIS
Independent Claim 106
We are not persuaded the Examiner erred in asserting that a
combination of Rose, Campisano, Duyck, and Low render obvious
independent claim 106 (App. Br. 10-24; Reply Br. 6-19). Appellant asserts
that
[w]hat Rose [and Campisano do] not teach and the
distinguishing feature of the claimed subject matter payment
card system is that in the claimed subject matter, a payment
card system database that maintains customer bank account data

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does not return the customer bank data to the merchant
ATM/POS and to the merchant systems for creation of a
payment authorization record.
(App. Br. 11; Reply Br. 8-9, 12-14). However, Low is cited for disclosing
this aspect (Exam’r’s Ans. 6). See In re Merck & Co. Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (the argument that a single reference alone does not
disclose the recited claimed steps is not persuasive because nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures); In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness
by attacking references individually where, as here, the rejections are based
on combinations of references”). Appellant then asserts that it “would be
impossible in Rose/Campisano for the Merchant POS to not have the
customer id and bankcard data as they assemble this payment authorization
request record and send this record to a prior art merchant gateway” (Reply
Br. 13). However, Low explicitly discloses an intermediary for maintaining
customer “anonymity,” and we are not persuaded it would have been
impossible to insert this intermediary into the system of Rose/Campisano.
Appellant asserts that a combination of Rose and Campisano does not
render obvious “a customer identifier, without customer identity data,” as
recited in independent claim 106 (App. Br. 11, 13; Reply Br. 11). Under a
broadest reasonable construction in view of the Specification, customer
identity data can include any combination of, including just one of, the
customer’s “name, the customer address, the card number(s) of the existing
bank cards 31 of the customer 20 and/or the expiration date of the existing
bank cards 31 of the customer 20” (Spec. 7:5-8; 16:24-17:7). See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (“[d]uring
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examination [of a patent application, a pending claim is] given [the] broadest
reasonable [construction] consistent with the specification, and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art”) (internal citation and
quotations omitted). We agree with the Examiner that column 2, lines 1-3
and 15-23 of Rose disclose a customer identifier that does not include at
least the card owner’s name and account number, thus corresponding to the
recited “customer identifier, without customer identity data” (Exam’r’s Ans.
29-30).
Appellant asserts that a combination of Rose and Campisano does not
render obvious a “customer identifier … encoded by reference to an
algorithm to make even the customer identifier to be not on the card itself,
but an encoded customer identifier, encoded in a specific manner that
embeds a reference to an algorithm after the customer identifier is encoded
with this specific algorithm” (App. Br. 13-14). However, such as aspect is
not set forth in independent claim 106, which only recites “a customer
identifier, without customer identity data, by a payment card that encodes
the customer identifier.” We agree with the Examiner that placing the
customer identifier as a machine-readable code on a card, as disclosed at
column 2, lines 1-3 and 15-23 of Rose, corresponds to the recited encoding
of the customer identifier.
Appellant asserts that because the cited references were not directed to
solving the same problem as Appellant, the claimed subject matter is non-
obvious (App. Br. 11, 14-16, 22; Reply Br. 6-8, 12, 14-17, 19). However,
we are not aware of any case law setting forth such a requirement for
obviousness. Indeed, Graham v. Deere, 383 US 1 (1966) recites that for a
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proper obviousness analysis “[u]nder § 103, the scope and content of the
prior art are to be determined; differences between the prior art and the
claims at issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved.” Id. at 17. There is no mention of problems. To that
end, Appellant is misinformed as to the first of leg of the inquiry of Graham
v. Deere. Determining the scope and nature of the claim is only relevant as
to determining the scope and nature of the specifically recited claims
aspects. Any alleged problems solved are irrelevant to the analysis, because
if the cited combination of references renders obvious each aspect of the
claim, then the cited combination is inherently deemed to solve the same
problem as Appellant.
To the extent that Appellant is arguing that the Examiner’s rationale
for combining the references must coincide with Appellant’s problem, we
note that “any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” See KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007).
To the extent that Appellant is asserting non-analogous art, which
may include an analysis of the problems to be solved, we remind Appellant
that the analogous arts test is a two-part test:  (1) whether the art is from the
same field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004). Here, we have no trouble finding that the claimed invention, Rose,
and Campisano all meet both prongs of the test: authentication of card and
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PIN based merchant transactions. While this problem may not be the
primary problem addressed by Appellant, prong (2) is met if it is a
reasonably pertinent problem addressed by Appellant.
Appellant asserts that Low lacks certain aspects of the claimed
invention (App. Br. 16-18). However, Low is only cited for disclosing
“wherein the method does not transfer bankcard identity to the merchant
computer systems” (Exam’r’s Ans. 6). Rose, Campisano, and Duyck are
cited for disclosing the other aspects of independent claim 106 (Exam’r’s
Ans. 4-6). See In re Merck & Co. Inc., 800 F.2d at 1097; In re Keller, 642
F.2d at 426.
Appellant asserts that the Examiner misapplied a broadest reasonable
construction to certain aspects of independent claim 106 (App. Br. 23-24).
However, Appellant has not set forth a detailed, technical analysis as to how
the Examiner erred. In the absence of such an analysis, we will sustain this
rejection. See In re Keller, 642 F.2d at 425 (“[o]nce a prima facie case of
obviousness [is] established..., the burden shift[s] to appellant to rebut it”).
Appellant asserts that unlike the prior art, “the claimed subject matter
does not rely nor use or make any modification to the existing POS in
recognition of the humungous logistics and cost of modifying merchant POS
throughout the globe where merchants accept bankcards” (Reply Br. 9).
However, such an aspect is not set forth the in claims. See CollegeNet, Inc.
v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the
specification can be examined for proper context of a claim term, limitations
from the specification will not be imported into the claims). Regardless of
whether the prior art systems do or do not make such modifications, if the

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Examiner sets forth a combination of prior art corresponding to each recited
aspect, the claim is rendered obvious.
Appellant asserts that unlike the claimed adapted prior art merchant
gateways, “Rose and Campisano do not teach, suggest or make any change
to these routing gateways” (App. Br. 14-16; Reply Br. 10, 13, 18).
Appellant then asserts several features that the prior art merchant gateways
lack, however, none of these features are set forth in the claims. See
CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d at 1231.
Appellant asserts that the prior art lacks a card database including
certain features (Reply Br. 10-11). However, independent claim 106 does
not recite a card database.

Independent Claims 109, 114, and 123
We are partially persuaded the Examiner erred in asserting that Rose
renders obvious independent claims 109, 114, and 123 (App. Br. 10-24;
Reply Br. 9-19). Appellant asserts that Rose does not render obvious a
“customer identifier … encoded by reference to an algorithm to make even
the customer identifier to be not on the card itself, but an encoded customer
identifier, encoded in a specific manner that embeds a reference to an
algorithm after the customer identifier is encoded with this specific
algorithm” (App. Br. 13-14; Reply Br. 14, 18-19). However, the Examiner
asserts that
[e]ven though Rose does not explicitly state “algorithm”, Rose
teaches a code contained in the magnetic stripe that is
transmitted to the remote database management software,
causing the software to fetch account numbers and PINs which
are associated with the code. One of ordinary skill in the art
would have been motivated to include the embedded code,
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remote database with associated software since the associated
code and software fetch account numbers and PINs which are
associated with that code embedded in the magnetic stripe of
the card.
(Exam’r’s Ans. 33-44). With respect to independent claims 109 and 114, we
find no error with the Examiner’s reasoning. Although Appellant may have
intended for the algorithm to be more akin to cryptography as opposed to
embedding code on a magnetic stripe, such an aspect of the limitations is not
set forth in independent claims 109 and 114. See CollegeNet, Inc. v.
ApplyYourself, Inc., 418 F.3d at 1231.
We do find Examiner error, however, with respect to independent
claim 123, which recites “the customer identifier is encoded to be an
encoded customer identifier when encoded with an algorithm from a list of
such algorithms in a database maintained by the payment security system
and then embeds a reference code that references the algorithm.” The
Examiner has not shown how the customer identifier embedded on the
magnetic stripe of Rose renders obvious either (1) a database containing a
list of algorithms, or (2) an embedded code, separate from the encoded
customer identifier, that references one of those algorithms.
Appellant asserts that Rose does not render obvious “a customer
identifier that is without customer identity data,” as recited in independent
claims 109 and 114 (App. Br. 11, 13; Reply Br. 11). However, as elaborated
above, column 2, lines 1-3 and 15-23 of Rose disclose a customer identifier
that does not include at least the card owner’s name and account number,
thus corresponding to the recited “customer identifier that is without
customer identity data” (Exam’r’s Ans. 29-30).

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Appellant asserts that because the cited references were not directed to
solving the same problem as Appellant, the claimed subject matter is non-
obvious (App. Br. 11, 14-16, 22; Reply Br. 6-8, 12, 14-17, 19). Those
concerns have been addressed above in the analysis of independent claim
106.
Appellant asserts that
the current application claims 106, 109, 114, 123 and their
dependent claims, protect the customer id data from theft and
misuse from the merchant computer systems themselves, while
enabling a payment transaction with the help of the same
merchant computer systems, including the existing POS
interfaces, by not transferring customer identity and bankcard
data to merchant computer systems in the first place.
(App. Br. 14). However, only independent claim 106 specifically recites not
transferring customer identity and bankcard data to merchant computer
systems. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d at 1231.
Appellant asserts that the prior art lacks a card database including
certain features (Reply Br. 10-11). However, independent claims 109 and
114 do not recite a card database.

DECISION
The rejection of claims 106-122 is AFFIRMED.
The rejection of claims 123 and 124 is REVERSED.
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)(1)(iv).

AFFIRMED-IN-PART
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