Ex Parte Ward et al

Patent Trial and Appeal Board

Sep 12, 2014

11875026 (P.T.A.B. Sep. 12, 2014)

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.
11/875,026 10/19/2007 Michael C. Ward P00321-US-UTIL 3633
98665 7590 09/15/2014
Otterstedt, Ellenbogen & Kammer, LLP
P.O Box 381
Cox Cob, CT 06807
EXAMINER
HUANG, TSAN-YU J
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
09/15/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL C. WARD, PATRIK SMETS, DAVID A. ROBERTS,
DUNCAN GARRETT, JOHN BERIC,
and STUART MILLER
____________

Appeal 2012-003204
Application 11/875,026
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1–31. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2012-003204
Application 11/875,026

2
BACKGROUND
Appellants’ invention is directed to an apparatus and method for
electronic payment and/or access control (Spec. 1).
Claim 1 is illustrative:
1. A method of using a device conforming to a payment
standard to control access to at least a first facility, said method
comprising the steps of:
securely establishing a non payment-system key
associated with a first facility identifier, shared between said
device and an operator of said first facility, via a public key
management infrastructure of a payment system operating
according to said payment standard, during a first transaction,
in accordance with said payment standard, between said device
and a first terminal associated with said first facility, said
device having a device memory and at least one device
processor that is coupled to said device memory, said first
terminal having a first terminal memory and at least one first
terminal processor that is coupled to said first terminal memory,
said non payment-system key being securely established in said
device memory in a non-transitory manner, at least a portion of
said public key management infrastructure being stored in said
first terminal memory in a non-transitory manner; and
controlling access to said first facility, via said device,
using said non payment-system key associated with said first
facility identifier, without reference to an issuer of said device
and without use of asymmetric keys of said device, during a
plurality of subsequent transactions, in accordance with said
payment standard, between said device and said first facility;
wherein said public key management infrastructure of
said payment system is designed for authentication of payment
cards to payment terminals without provision for authenticating
said payment terminals to said payment cards.

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The Examiner relies on the following prior art references as evidence
of unpatentability:
Villaret US 2002/0038287 A1 Mar. 28, 2002
Ginter US 2002/0112171 A1 Aug. 15, 2002
Nishimoto US 2004/0052379 A1 Mar. 18, 2004
Levesque US 2004/0059686 A1 Mar. 25, 2004
Raghunath US 2005/0060555 A1 Mar. 17, 2005
Brown US 2005/0244009 A1 Nov. 3, 2005
Kamperman US 2005/0273608 A1 Dec. 8, 2005
Van de Velde US 2007/0012763 A1 Jan. 18, 2007
Hammad US 7,567,920 B2 July 28, 2009
Silbernagl US 7,568,617 B2 Aug. 4, 2009

Appellants appeal the following rejections:1
Claims 1–8, 13, and 15–25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Silbernagl and Raghunath.
Claims 9–11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Silbernagl, Raghunath, and Nishimoto.
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Silbernagl, Raghunath, and Brown.
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Silbernagl, Raghunath, and Kamperman.
Claims 26–30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Silbernagl, Raghunath, and Villaret.
Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Silbernagl, Raghunath, and Van de Velde.

1 The Examiner withdrew a rejection under 35 U.S.C. § 112, second
paragraph. Ans. 29.
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Application 11/875,026

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ISSUES
Did the Examiner err in rejecting claim 1 because Silbernagl only uses
the disclosed card as a source of identity not as a source of authentication?
Did the Examiner err in rejecting claim 1 because Raghunath is not
directed to a public key management infrastructure of a payment system
operating according to a payment standard?
Did the Examiner err in rejecting claim 1 because the Examiner has
failed to state how a skilled artisan would have a reasonable expectation of
success in adapting the door opener scheme of Raghunath, which has no
payment system, to the Silbernagl system and because such a modification
would destroy the operation of Silbernagl?
Did the Examiner err in rejecting claim 31 because Van de Velde does
not disclose a second terminal which uses message authentication
cryptogram employing the symmetric key without the use of conventional
asymmetric cryptography techniques?

FACTUAL FINDINGS
We adopt the Examiner’s findings in regard to the teachings of the
prior art, as these teachings relate to the first rejection as our own. Ans. 6–9.
Additional findings of fact may appear in the Analysis that follows.

ANALYSIS
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the Examiner erred in rejecting claim 1 because
Silbernagl only uses the disclosed card as a source of identity not as a source
of authentication. We agree with the Examiner’s response to this argument
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found on pages 30–31 of the Answer. In this regard, we agree that the
teaching in column 9, lines 37–43 of Silbernagl that the terminal determines
whether the bankcard is valid is a teaching of authentication of the payment
cards as broadly claimed.
We are not persuaded of error on the part of the Examiner in rejecting
claim 1 because Raghunath is not directed to a public key management
infrastructure of a payment system operating according to a payment
standard. This argument is not persuasive because it is directed to the
teachings of Raghunath alone and the rejection is based on the combined
teachings of Raghunath and Silbernagl. We note that nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In the instant
rejection, the Examiner relies on Silbernagl for teaching a payment system
operating according to a payment standard (Ans. 6–7).
We are not persuaded of error on the part of the Examiner in rejecting
claim 1 because the Examiner has failed to state how a skilled artisan would
have a reasonable expectation of success in adapting the door opener scheme
of Raghunath to the Silbernagl system because the Silbernagl system has no
authentication. However, as we found above, Silbernagl does teach
authentication. In our view, a person of ordinary skill in the art would have
been taught by Silbernagl to authenticate payment cards without
authenticating payment terminals. A person of ordinary skill in the art
would have been taught by Raghunath to store a generic key with a device to
gain entry to a facility. The combination of these two known processes is no
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more than the predictable use of prior art processes according to their
established functions.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain this rejection as it is directed to claims 2–5 and
15–24 because the Appellants have not argued the separate patentability of
these clams.
We are not persuaded of error on the part of the Examiner by
Appellants’ arguments of patentability directed to claims 6–8, 13, and 25.
We agree with the Examiner that the recitations in these claims of additional
facilities and terminals are recitations of duplications of elements. It is well
settled that the mere duplication of parts has no patentable significance
unless a new and unexpected result is produced. In re Harza, 274 F.2d 669,
671 (CCPA 1960).
We will also sustain the Examiner’s rejections of claims 9–12, and 14
under 35 U.S.C. § 103(a) because the Appellants rely on the arguments
made in response to the rejection of claim 1 to address these rejections.
We are not persuaded of error on the part of the Examiner in rejecting
claims 26–30 as being unpatentable over Silbernagl in view of Raghunath
and Villaret and of claim 31 as being unpatentable over Silbernagl in view of
Raghunath and Van de Velde because neither Villaret nor Van de Velde
discloses a second terminal which uses message authentication cryptogram
employing the symmetric key without the use of conventional asymmetric
cryptography technique. We agree with the Examiner’s response found on
page 32 of the Answer that Raghunath at paragraphs 23 and 24 teaches
employing a symmetric key, or shared key, without the use of conventional
asymmetric cryptography techniques.
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In view of the foregoing, we will sustain the Examiner’s rejection of
claims 26–31.

DECISION
The decision of the Examiner is affirmed.
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) (2011).

AFFIRMED

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