Ex Parte TATO et al

Patent Trial and Appeal Board

May 17, 2018

12396297 (P.T.A.B. May. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/396,297 0310212009
65913 7590 05/21/2018
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
FIRST NAMED INVENTOR
Charles TATO
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.
BCM00013US02 6025
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
05/21/2018 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte CHARLES TATO, JOSEPH WALLACE,
GREGORY YOUNGBLOOD, MARK BUER, and REX KIANG
Appeal2017-000624
Application 12/396,297 1
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-10 and 15-24. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify Broadcom Corporation as the real party in interest.
Appeal Br. 3.
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Application 12/396,297
ILLUSTRATIVE CLAIM
1. A method for secure transaction processing in a secure
processor, compnsmg:
receiving a request for payment information associated
with an on-line transaction with an online merchant system;
reading, in a wireless card reader integrated with the
secure processor, data from a payment card issued by a
financial institution;
storing the payment card data in a secure memory within
the secure processor;
sending the data and a credential corresponding to the
payment card to an issuing bank;
receiving a set of transaction identifiers associated with
the payment card from the issuing bank in response to a
validation by the issuing bank of the credential; and
communicating a transaction identifier from the set of
transaction identifiers as the payment information via a secure
communications channel with the online merchant system.
REJECTIONS 2
I. Claims 1-10 and 15-24 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 1-10, 15-19, 22, and 24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ostroff(US 2006/0190412 Al, pub. Aug. 24,
2006) and Gardner (US 2009/0153297 Al, pub. June 18, 2009).
III. Claims 20, 21, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ostroff, Gardner, and Official Notice.
2 In addition to those enumerated herein, the Final Office Action (pages 2-3)
sets forth a rejection of claim 22 under 35 U.S.C. § 112, first paragraph.
This rejection is withdrawn. See Answer 2.
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FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Office Action at pages 4--18 and the Answer at pages 3-13, except as stated
otherwise in the Analysis below. Additional findings of fact may appear in
the Analysis below.
ANALYSIS
Subject-Matter Eligibility
Applying the first step of the methodology delineated in Alice Corp.
Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014), the
rejection states that "[t ]he claims are directed to a series of steps instructing
how to process a transaction, which is an abstract idea." Final Action 4.
Further, under the second Alice step, the claims do not include any
additional elements that amount to significantly more than the identified
abstract idea, because the claims involve only a general purpose computer
performing basic functions of a computer. Id.
Alleging error in the rejection, the Appellants contend that the claims
in the Appeal are not directed to an abstract idea, under the first Alice step,
because the claims require a specific structural framework in order to
operate and "the features of the present claims do not make sense outside the
construct of a physical computer implementation." Appeal Br. 15-16.
Similarly, the Appellants submit that, rather than being directed to an
abstract idea, the present claims - like those in DDR Holdings, LLC v.
Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014)- address a problem
arising in the realm of computer networks. Id. at 16-17.
Yet, the Examiner (Answer 9) aptly refers to Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016), which explains that the
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first step in the Alice inquiry asks whether the focus of the claims is on the
specific asserted improvement in computer capabilities or, instead, "on a
process that qualifies as an 'abstract idea' for which computers are invoked
merely as a tool." Accordingly, the Appellants' assertion that the claims
only make sense in the context of the computer arts is not persuasive of error
in the rejection. See Answer 9. Furthermore, although stated in the context
of the second part of the Alice analysis, the Supreme Court has pointed out
that, with regard to questions of subject-matter eligibility, "[t]he fact that a
computer 'necessarily exist[ s] in the physical, rather than purely conceptual,
realm,' ... is beside the point"; merely requiring implementation with a
computer does not establish subject-matter eligibility. Alice, 134 S. Ct. at
2358-59.
The Appellants also emphasize that the claims do not attempt to
preempt or tie up the use of the abstract idea. Appeal Br. 14, 16. Yet,
"[ w ]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
As to the second Alice step, the Appellants contend that the claimed
subject matter is patent-eligible because it solves problems related to the
transmission of sensitive data over a wireless communications network
(Appeal Br. 18-19) and because it "overrides the routine and conventional
sequence of events performed when processing a transaction with an online
merchant and thus provide significantly more than what was well-
understood, routine and conventional in the field" (id. at 20-21 (citing DDR
Holdings, 773 F.3d at 1258)). "Specifically," the Appellants contend,
"while prior art systems suffered from vulnerabilities and allowed a user's
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sensitive data to be stolen and compromised, the secure processor of the
instant application overrode the conventional processing by never exposing
data to a network in clear text form." Id. at 21. See also id. at 19 (quoting
Spec. i-f 383) ("Specifically, the instant application solved the technological
problems by creating 'a secure processor (e.g., included in a security chip
embedded in a computing device or in an external device) [that] is used as a
reader for credit or debit card data."')
Yet, the Appellants do not show that any claim elements (or
combination thereof) amounts to significantly more than the abstract idea
itself, as Alice requires. See Alice, 134 S. Ct. at 2355. In regard to the
Appellants' focus on the asserted unconventional nature of claimed "secure
processor," the Examiner points out that "[t]he instant claims do not describe
a new wireless card reader, new secure processor, or new physical
combination of the two." Answer 10.
In addition, the Appellants argue that the claim 1 "is also tied to a
particular and innovative machine and thus satisfies the machine-or-
transformation test." Appeal Br. 20.
Although the Supreme Court noted in Bilski v. Kappas, 561 U.S. 593,
604 (2010), that the machine-or-transformation test is a "useful and
important clue" for determining patent eligibility of some claims, the Court,
in Mayo emphasized that satisfying the machine-or-transformation test, by
itself, is not sufficient to establish a claim as patent-eligible. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 88 (2012). In
particular, the machine-or-transformation test does not subvert the Alice
3 Citations to the Specification refer to the published application, US
2009/0222383 Al, pub. Sept. 3, 2009.
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analysis. See DDR Holdings, 773 F.3d at 1256 ("[S]atisfying the machine-
or-transformation test, by itself, is not sufficient to render a claim patent-
eligible, as not all transformations or machine implementations infuse an
otherwise ineligible claim with an 'inventive concept."')
Although the Appellants refer to some distinctions in the claim
language among independent claims 1, 15, 17, 18, and 24 (see Appeal Br.
15, 19), the Appellants do not present any separate arguments based upon
any of the distinctions. Accordingly, in view of the foregoing, we are not
persuaded of error in the rejection of any of independent claims 1, 15, 17,
18, and 24. The Appellants present no separate argument for any of the
dependent claims. Therefore, we sustain the rejection of independent claims
1, 15, 17, 18, and 24, and claims 2-10, 16, and 19-23 depending therefrom,
under 35 U.S.C. § 101.
Obviousness
1. Claims 1-10, 15-17, and 22-24
The Appellants argue that independent claim 1 was rejected
erroneously because the cited Ostroff reference does not teach or suggest the
recited "receiving a set of transaction identifiers associated with the payment
card from the issuing bank in response to a validation by the issuing bank of
the credential." Appeal Br. 22-23. Specifically, the Appellants contend
that, contrary to the rejection, "in Ostroff, the Cybercoupon is generated in
response to a user command rather than in response to a validation by the
issuing bank of a credential, as required by" claim 1. Id. at 23.
However, the Appellants' argument conflates different embodiments
described in Ostroff and their associated "Cybercoupons" and "Cybercodes."
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Thus, the Appeal Brief does not accurately reflect the way that the rejection
characterizes Ostroff s disclosure.
Regarding the identified limitation of claim 1, the Examiner (see Final
Action 5, Answer 11-12) relies upon the operation of Ostroff's
"Cybercodes" (described in Ostroff i-fi-f 121-23) - not the "Cybercoupons"
that the Appellants identify (Appeal Br. 22-23 (citing Ostroffi-fi-125, 26, 75,
79, 86)). According to the Examiner's Answer, Ostroff teaches the
identified limitation of claim 1, because "Ostroff ... discloses receiving a
set of transaction identifiers (list of Cybercodes, see [ 0121-0123]) associated
with the payment card from the issuing bank in response to a validation by
the issuing bank of the credential (transaction approved by card issuer C, see
[0079, 0094, 0098])." Answer 11-12. See also Final Action 5.
Rather than being generated in response to a user command - as the
Appellants contend (see Appeal Br. 22-23), in regard to the identified
Cybercoupons - portions of Ostroff cited in the rejection disclose a list of
Cybercodes generated at the card issuer's location and sent to the user. See
Ostroffi-fi-f 121-23. Therefore, the Appellants do not show that Ostroff fails
to teach or suggest claim 1 's recitation of "receiving a set of transaction
identifiers associated with the payment card from the issuing bank in
response to a validation by the issuing bank of the credential."
Accordingly, the Appellants' argument is not persuasive of error in
the rejection of independent claim 1.
Because the Appellants rely upon the same argument, with regard to
independent claims 15, 17, and 24 (see Appeal Br. 21-23), we are also not
persuaded of error in the rejection of these claims. The Appellants present
no separate argument, as to any of the claims depending from independent
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claims 1, 15, 17, and 24. See id. at 24--25. Therefore, we sustain the
rejections of claims 1-10, 15-17, and 22-24 under 35 U.S.C. § 103(a).
2. Claims 18-21
Independent claim 18 recites, in relevant part, "generating, using a
cryptographic algorithm that combines the payment card data and a time of
the on-line transaction, a one-time passcode in a one-time passcode
generator within the secure processor as an identifier for the online
transaction."
The Appellants contend that claim 18 was rejected erroneously,
because paragraph 79 of Ostroff does not teach or suggest "using a
cryptographic algorithm." Appeal Br. 24. Instead, the Appellants assert that
paragraph 79 refers to generating a Cybercoupon with a card 10 that
contains user program 12. Id.
Yet, the Appellants' argument is not persuasive of error in the
rejection, because Ostroff's paragraph 79 states that user program 12 is "an
Encryption Program." Accordingly, the Appellants do not show that Ostroff
fails to teach or suggest "using a cryptographic algorithm," as recited in
claim 18.
Therefore, we sustain the rejection of claim 18, along with claims 19-
21 depending therefrom, under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-10 and 15-
24 under 35 U.S.C. § 101.
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We AFFIRM the Examiner's decision rejecting claims 1-10 and 15-
24 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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