Ex Parte Tapling et al

Patent Trial and Appeal Board

Sep 13, 2016

13490677 (P.T.A.B. Sep. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/490,677 06/07/2012
70432 7590 09/15/2016
Sughrne Mion PLLC
2100 Pennsylvania Avenue, NW
Washington, DC 20037
FIRST NAMED INVENTOR
Peter George TAPLING
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.
A215882 (3046-007) 9814
EXAMINER
MCCOY, RICHARD ANTHONY
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
09/15/2016 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):
pprocessing@sughrne.com
sughrne@sughrne.com
demery@sughrne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER GEORGE TAPLING, ANDREW ROBERT ROLFE,
and RA VI GANESAN
Appeal2014-007761
Application 13/490,677
Technology Center 2400
Before JEFFREYS. SivIITH, JOli1...J R. KE1\J1...JY, and
STACY B. MARGOLIES Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-007761
Application 13/490,677
STATEMENT OF THE CASE
This is an appeal 1 under 35 U.S.C. § 134(a) from the rejection of
claims 1-10, which are all the claims pending in the application. An oral
hearing was held on July 26, 2016. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm and enter new grounds of rejection.
Illustrative Claim
1. A method of operating a security server to securely transact
business between a user and an enterprise via a network,
compnsmg:
receiving, at the security server from an enterprise with
which the user is currently connected via the network, a request
of the enterprise to activate a secure communications channel
over the network between the user and the security server,
wherein the request includes contact information for contacting
the user via other than the network;
transmitting, by the security server in response to the
received activation request, an activation code for delivery to
the user via other than the network and corresponding to the
received contact information;
receiving, at the security server from the user via the
network, an activation code;
comparing, at the security server, the received activation
code with the transmitted activation code to validate the
received activation code; and
activating the secure communications channel based on
the validation of the received activation code.
1 This appeal is related to appeal no. 2014-008257, application no.
13/490715.
2
Appeal2014-007761
Application 13/490,677
Ganesan
Mansz
Mo as
Chu
Lesandro
Cramer
Prior Art
US 2002/0087465 Al
US 2006/0224888 Al
US 2010/0180328 Al
US 7,904,946 Bl
US 2012/0054095 Al
US 2013/0024918 Al
Examiner's Rejections
July 4, 2002
Oct. 5, 2006
July 15, 2010
Mar. 8, 2011
Mar. 1, 2012
Jan.24,2013
(filed Jul. 20, 2011)
Claims 1, 2, 5-7, and 9 stand rejected2 under 35 U.S.C. § 102(b) as
anticipated by Ganesan.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Ganesan and Lesandro.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Ganesan, Lesandro, and Moas.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Ganesan and Mansz.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Cramer and Chu.
2 The Examiner withdrew the rejection of claim 6. Ans. 2. However, we
enter new grounds of rejection for claim 6 as discussed below.
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Appeal2014-007761
Application 13/490,677
ANALYSIS
For the Examiner's rejections of claims 1-5 and 7-10, we adopt the
findings of fact made by the Examiner, concur with the Examiner's
decisions for the reasons given in the Final Action and Examiner's Answer,
and address several issues from the Reply Brief for emphasis. For Claim 6,
we enter new grounds of rejection.
Section 102 rejection of claim 1
Claim 1 recites "activating the secure communications channel based
on the validation of the received activation code." The Examiner finds the
scope of the claimed "secure communications channel" encompasses a
communication link that has been protected against unauthorized access,
operation, or use by means of isolation, encryption, or other forms of
control. Ans. 7-8. The Examiner finds the broadest reasonable
interpretation of "activating the secure communications channel based on the
validation" encompasses allowing a user to perform transactions over the
secure communications channel after the successful validation of the
received activation code as disclosed by Ganesan. Ans. 7-9.
Appellants contend that allowing a user to access information on a
secure server after completing a user log-in authentication process does not
disclose "activating the secure communications channel," because the
authentication process does not protect the communications channel between
the user and the server by either encrypting the communications, or by
isolating the channel from a network, or by any other technique. Reply Br.
11-13.
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Application 13/490,677
Appellants' Specification discloses that the "Start-Up and Activation
(Security Server Login) Phase" (Original Spec. 10:38; Substitute Spec. 11:8)
is completed when the user enters a phone number into a security window,
receives an activation code, and forwards the activation code to the security
server (Original Spec. 14:6-11; Substitute Spec. 14:20-25). Thereafter, the
user is ready to receive transactions. Original Spec. 14:11-13; Substitute
Spec. 14:25-27. Appellants' contention that the scope of "activating the
secure communications channel" excludes allowing a user to use the channel
after authenticating the user as described by Ganesan is inconsistent with
pages 10-14 of Appellants' Specification, which disclose the activation (or
security server login) process is completed after the user forwards the
activation code to the server, and thereafter, the user is ready to receive
transactions. We agree with the Examiner that the scope of "activating the
secure communications channel based on the validation of the received
activation code," when read in light of Appellants' Specification,
encompasses allowing a user to use the channel after the server validates the
user as disclosed by Ganesan.
Appellants present numerous arguments contending the claimed
"secure communications channel" means an encrypted channel. See, e.g.,
Reply Br. 11. However, the claim does not limit "the secure
communications channel" to only a channel that encrypts. The scope of a
claim cannot be narrowed by reading disclosed limitations into the claim.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). "Absent an express
definition in their specification, the fact that appellants can point to
definitions or usages that conform to their interpretation does not make the
PTO' s definition unreasonable when the PTO can point to other sources that
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Application 13/490,677
support its interpretation." Id. at 1056. Appellants do not show error in the
Examiner's finding that the scope of "activating the secure communications
channel," when read in light of Appellants' Specification, encompasses
allowing the user to use the channel after successful validation.
Further, we highlight that Appellants' contention that Ganesan does
not disclose a secure communications channel that uses encryption is
inconsistent with paragraphs 21 and 22 of Ganesan, which disclose
encrypting credit card data prior to transmission. Also, Appellants'
contention that a secure channel using encryption is novel over the prior art
is inconsistent with page 3 of the Appeal Brief, where Appellants admit
secure socket layer (SSL) encryption is conventional.
We also highlight that Appellants' contention that Ganesan does not
disclose a secure communications channel being isolated (Reply Br. 12-13)
is inconsistent with Figure 2 of Ganesan, which discloses a security server
130 as part of an enclosed (isolated) community.
We sustain the rejection of claim 1 under 35 U.S.C. § 102.
Section 102 rejection of claims 2 and 5
Appellants contend paragraphs 13 6 and 261 of Ganesan have nothing
to do with secure communication channels for communicating information
between one entity and another. Reply Br. 23-27. We find Appellants'
contention unpersuasive for the reasons given by the Examiner, and also for
the reasons given in our analysis of claim 1.
We further highlight the Title and Abstract of Ganesan disclose
electronic debit and credit transactions, Figure 2 discloses an enclosed
community of sellers and buyers that transact with one another, Figure 4
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Application 13/490,677
discloses a method of registering a buyer to communicate within the
enclosed community, and Figures 12 and 13 disclose methods of a sale
transaction between a buyer and a seller within the enclosed community,
which are examples of secure channels for communicating information
between one entity and another.
We sustain the rejection of claims 2 and 5 under 35 U.S.C. § 102.
Section 102 rejection of claim 7
The Examiner finds storing transaction information in a log as
described by Ganesan discloses "incorporating, at the security server, the
received transaction information into at least one of a voice stream and an
image" as recited in claim 7. Ans. 9-10. Appellants contend storing does
not describe incorporating, and the log does not describe an image. Reply
Br. 28-30. However, anticipation is not an ipsissimis verbis test. See In re
Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990). Other than showing a
difference in terminology, Appellants have not distinguished claim 7 from
Ganesan. In particular, Appellants have not provided persuasive evidence to
rebut the Examiner's finding that the scope of the claimed "image"
encompasses the log of Ganesan.
We sustain the rejection of claim 7 under 35 U.S.C. § 102.
Section 103 rejection of claim 3
Appellants contend the combination of Ganesan and Lesandro does
not teach "generating at the security server based on the received transaction
information, a one-time password for use by the user as a transaction
signature." Reply Br. 35--45. The Examiner finds paragraph 1713 of
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Application 13/490,677
Lesandro teaches transaction data signing, where details about a transaction
are used to generate a unique transaction authorization code ("one-time
password") specific to the transaction. See Final Act. 26-27.
Appellants have not persuasively shown that modifying the processing
agent of Ganesan to generate a transaction signature to send to the user was
"uniquely challenging or difficult for one of ordinary skill in the art" who
can generate a one-time password used for transaction signing as taught by
Lesandro. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,
419 (2007))).
We sustain the rejection of claim 3 under 35 U.S.C. § 103.
Section 103 rejection of claim 4
Appellants contend paragraph 87 of Moas does not teach "the one-
time password is generated based also on a secret shared by the security
server and the enterprise but not known to the user" as recited in claim 4
because, according to Appellants, the transaction code of Moas is known by
the user. Reply Br. 46-50. Appellants' contention is inconsistent with
paragraph 87 of Moas, which teaches not presenting the code to the user.
We sustain the rejection of claim 4 under 35 U.S.C. § 103.
Section 103 rejection of claim 8
Appellants do not present arguments for separate patentability of
claim 8 which falls with claim 7.
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Section 103 rejection of claim 10
Appellants contend the combination of Cramer and Cho does not
teach "transmitting, from the user network device to a security server via the
network, a user identifier identifying the user and a request to activate a
secure communications channel over the network between the user and the
security server" as recited in claim 10. Reply Br. 51---63. Appellants'
contention is based on the premise that Cramer does not teach activating a
secure communications channel, which we find unpersuasive for the reasons
given by the Examiner. We highlight that Cramer teaches a security
application for providing security throughout the drawings and
corresponding detailed description. We further highlight that Chu also
teaches security for communicating over a channel beginning with the Title
and continuing throughout the rest of the disclosure.
Appellants contend Chu does not teach "receiving, at the user network
device from the security server via the activated secure communications
channel, a seed corresponding to the transmitted user identifier and a secret
known only to the security server." Reply Br. 63---69. The Examiner finds
the scope of the seed corresponding to a secret known only to the security
server encompasses the portion of the secret stored on the user's device,
where the complete secret is stored on the server. Ans. 17. Appellants
contend the portion of the shared secret stored on the user's device, when
combined with the user's PIN, is the same as the shared secret stored on the
server. Reply Br. 64---67.
However, the portion of the secret stored on the client side is stored
without the PIN. Chu col. 3, 11. 19-22; col. 4, 1. 65---col. 5, 1. 3. An
algorithm in the user's device receives the PIN from the user, and, without
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Application 13/490,677
ever storing the PIN, uses the PIN and some part of the stored portion of the
shared secret to generate the one-time password. Chu col. 3, 11. 12-22.
Appellants have not persuasively shown that the complete secret is ever
stored, or "known," on the client side of Chu.
Further, the scope of the claimed "seed corresponding to the
transmitted user identifier and a secret known only to the security server,"
when read in light of page 23 of Appellants' Specification as originally filed
(and page 24 of the Substitute Specification), encompasses a private/public
key pair. Appellants' contention that the public "seed" and private "secret
known only to the security server" key pair are unknown in the prior art is
inconsistent with the well-known asymmetric public and private key pair as
taught, for example, by paragraph 15 of Moas.
We sustain the rejection of claim 10 under 35 U.S.C. § 103.
New grounds of rejection of claim 6
We reject claim 6 under 35 U.S.C. § 103(a) as unpatentable over
Ganesan and Lesandro.
Claim 6 recites "generating, at the security server based on the
received second transaction information, another one-time password for use
by the user as a transaction signature; transmitting the generated other one
time password from the security server to the user via the secure
communications channel." These steps are rendered obvious by the
combination of Ganesan and Lesandro for the reasons discussed in our
analysis of claim 3. We reiterate paragraph 1713 of Lesandro teaches
transaction data signing, where details about a transaction are used to
generate a unique transaction authorization code ("one-time password")
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Application 13/490,677
specific to the transaction. Appellants have not persuasively shown that
modifying the processing agent of Ganesan to generate a transaction
signature to send to the user was "uniquely challenging or difficult for one of
ordinary skill in the art" who can generate a one-time, transaction specific
password for transaction signing as taught by Lesandro.
The additional steps of "receiving, at the security server from the
second enterprise, confirmation of receipt by the second enterprise from the
user of the second transaction validly signed with the transmitted other one
time password; and transmitting, from the security server to the user via the
secure communications channel, confirmation that the second enterprise
received the validly signed second transaction" encompass a purchaser using
the signature to sign the transaction, sending the signature to the seller, and
receiving a confirmation from the seller. We find these steps for confirming
receipt of the signed transaction from the seller to the purchaser through the
secure server were within the level of ordinary skill of an artisan who can
allow a purchaser to sign the transaction as taught by Lesandro and transmit
the transaction information between purchaser and seller through a secure
server as taught by Ganesan. For example, when the purchase transaction
of Ganesan ( Ganesan i-f 146) includes the transaction signature of Lesandro,
the shipment notification from the seller ( Ganesan ,-r 151) confirms that the
seller received the purchase transaction.
Further, when a registered user who issues a bill "transaction" to
another registered user (Ganesan ,-r 195), and signs the bill transaction with
the transaction signature of Lesandro, the user who issued the validly signed
transaction then receives remittance information from the security server
130, which teaches "confirmation that the second enterprise (the user
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remitting the payment) received the validly signed second transaction" bill
within the meaning of claim 6.
We reject claim 6 under 35 U.S.C. § 103.
In addition, the terms "another one time password" and "other one
password" in claim 6 lack antecedent basis. For that reason, we also reject
claim 6 under 35 U.S.C. § 112, second paragraph, for indefiniteness.
DECISION
The Examiner's rejections of claims 1-5 and 7-10 are affirmed.
The Examiner's rejection of claim 6 under 35 U.S.C. § 102(b) as
anticipated by Ganesan is reversed.
We reject claim 6 under 35 U.S.C. § 103(a) as unpatentable over
Ganesan and Lesandro and under 35 U.S.C. § 112 for indefiniteness.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2011). Section 41.50(b) provides that "[a] new ground of
rejection ... shall not be considered final for judicial review."
Section 41. 50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
37 C.F.R. § 41.50(b)
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