Ex Parte Ward et al

Patent Trial and Appeal Board

Aug 31, 2018

12833059 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/833,059 07/09/2010
98665 7590 08/31/2018
Otterstedt, Ellenbogen & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807
FIRST NAMED INVENTOR
Michael C. Ward
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.
P00588-US-UTIL 5656
EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
08/31/2018 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, and PAUL VANNESTE
Appeal2017-000625
Application 12/833,059 1
Technology Center 3600
Before HUBERT C. LORIN, ROBERT J. SILVERMAN, and
ALYSSA A. FINAMORE, 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, 3-13, and 15-29. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 The Appellants identify MasterCard International Incorporated as the real
party in interest. Appeal Br. 3.
Appeal2017-000625
Application 12/833,059
ILLUSTRATIVE CLAIM
1. A method comprising the steps of:
obtaining, by a terminal component from a payment
device reader component, at least a first cryptogram and a
second cryptogram;
transmitting, from said terminal component to an issuer
of a payment device presented to said payment device reader
component, through a payment network, said first cryptogram,
said second cryptogram, and extra data, wherein at least said
first cryptogram and said second cryptogram are transmitted in
a first message; and
obtaining, by said terminal, a second message from said
issuer, said second message corresponding to authentication, by
said issuer, of said payment device presented to said payment
device reader component, said authentication being issued upon
a first cryptographic calculation, wherein said first
cryptographic calculation is selected from among a plurality of
cryptographic calculations upon determining that said first
message and said extra data have been obtained by said issuer,
wherein said first cryptographic calculation comprises:
running a first message authentication code calculation
using said extra data;
running a second message authentication code
calculation using said extra data; and
determining said authentication of said payment device
by comparing a truncated portion of an output of each of said
first and second message authentication code calculations to
said first cryptogram and said second cryptogram.
CITED REFERENCES
The Examiner relies upon the following references:
Davis et al. us 5,892,211 Apr. 6, 1999
(hereinafter "Davis")
Vialen et al. US 2005/0033960 Al Feb. 10,2005
(hereinafter "Vialen")
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Appeal2017-000625
Application 12/833,059
Smets et al. US 2006/0022033 Al Feb. 2, 2006
(hereinafter "Smets")
Hill et al. US 2007/0118483 Al May 24, 2007
(hereinafter "Hill")
Rans et al. US 2007 /0278291 Al Dec. 6, 2007
(hereinafter "Rans")
REJECTIONS
I. Claims 1, 3-13, and 15-29 are rejected under 35 U.S.C. § 101
as ineligible subject matter.
II. Claims 1, 8-10, 13, 15, 16, 24, 28, and 29 are rejected under 35
U.S.C. § I03(a) as unpatentable over Smets and Vialen.
III. Claims 3-7 and 17-23 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Smets, Vialen, and Hill.
IV. Claims 11, 12, and 27 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Smets, Vialen, and Rans.
V. Claims 25 and 26 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Smets, Vialen, and Davis.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc.,
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Application 12/833,059
569 U.S. 576, 589 (2013). Of course, "[a]t some level, 'all inventions ...
embody, use, reflect, rest upon, or apply"' these basic tools of scientific and
technological work. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354
(2014) ( citation omitted). Accordingly, ascertaining ineligible subject
matter involves a two-step framework for "distinguish[ing] between patents
that claim the buildin[g] block[ s] of human ingenuity and those that integrate
the building blocks into something more, ... thereby transform[ing] them
into a patent-eligible invention." Id. (internal quotation marks and citations
omitted). The first step determines whether the claim is directed to
judicially excluded subject matter (such as a so-called "abstract idea"); the
second step determines whether there are any "additional elements" recited
in the claim that ( either individually or as an "ordered combination") amount
to "significantly more" than the identified judicially excepted subject matter
itself. Id. at 2355.
According to the rejection, under the first Alice step, "[ c ]laims 1, 3-
13, and 15-29 are directed to the performance and cryptographic calculation
which are mathematical relationships and thus an abstract idea." Final
Action 2. As to the second Alice step, the Examiner states:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because recitation of generic computer structure that serves to
perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
electronic commerce industry. Viewed as a whole, these
additional claim elements do not provide meaningful limitations
to transform the abstract idea into a patent eligible application
of the abstract idea such that the claims amount to significantly
more than the abstract idea itself.
Id. at 2-3.
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Application 12/833,059
Disputing the rejection, the Appellants argue that the claims are not
directed to an abstract idea (see Appeal Br. 9--10) and that, in any event, the
claims contain additional limitations that amount to significantly more than
the identified abstract idea (see id. at 10-11).
With regard to the first step of the Alice framework, "[t]he 'abstract
idea' step of the inquiry calls [for] look[ing] at the 'focus of the claimed
advance over the prior art' to determine if the claim's 'character as a whole'
is directed to excluded subject matter." Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The Examiner determines that the claims "are directed to the
performance and cryptographic calculation which are mathematical
relationships and thus an abstract idea." Final Action 2. Yet, there is
substantially more to the claims than the "cryptographic calculation" and its
"performance." See id. Independent claim 1, for example, requires a "first
cryptogram," a "second cryptogram," "extra data," the transmission of these
items, "running a first message authentication code calculation using said
extra data," "running a second message authentication code calculation
using said extra data," and "comparing a truncated portion of an output of
each of said first and second message authentication code calculations to
said first cryptogram and said second cryptogram." Reducing the claims to
the performance of a cryptographic calculation, alone, threatens to
"describe[ e] the claims at such a high level of abstraction and untethered
from the language of the claims all but ensures that the exceptions to § 101
swallow the rule." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337
(Fed. Cir. 2016). Indeed, determining that a claim is directed to a single
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Application 12/833,059
element recited in the claim is tantamount to the violation of reducing the
Alice step-one inquiry to "simply ask[ing] whether the claims involve a
patent-ineligible concept." Id. at 1335.
Accordingly, we are persuaded that the Examiner erred in determining
that the claims are directed to an abstract idea.
Because the Examiner has not adequately demonstrated that the
claims are directed to an abstract idea, under the first step of the Alice
framework, we do not proceed to the second step. See Enfzsh, 822 F.3d at
1339 (citing Alice, 134 S. Ct. at 2355).
In view of the foregoing analysis, we do not sustain the rejection of
claims 1, 3-13, and 15-29 under 35 U.S.C. § 101.
Obviousness
The Appellants argue that the cited prior art fails to teach or suggest
the following recitation of independent claim 1: "said first cryptographic
calculation is selected from among a plurality of cryptographic calculations
upon determining that said first message and said extra data have been
obtained by said issuer." See Appeal Br. 13-14.
According to the Final Office Action, Figure 5 of the Smets reference
discloses an authorization or approval ( element 110) from the issuer, "which
occurs upon receipt of the first message, is thus selected after an
authorization computation, and must be based upon a calculation." Final
Action 4. Further, in response to an earlier statement from the Appellants,
the Examiner explains that "'any selection of a known cryptographic
calculation' is necessarily from a 'group of known cryptographic
calculations."' Id. at 21.
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Yet, the rejection identifies no disclosure, in the cited references, of
the claimed "plurality of cryptographic calculations," let alone any
"select[ ion]" of the "first cryptographic calculation" from among such
"plurality." The Examiner's interpretation of the claim limitation at issue
would deny any meaning to the identified language of claim 1. To the
contrary, "claims are interpreted with an eye toward giving effect to all
terms in the claim." Bicon, Inc. v. The Straumann Co., 441 F.3d 945, 950
(Fed. Cir. 2006) ( citations omitted).
Accordingly, we are persuaded that independent claim 1 was rejected
erroneously. The same reasoning applies to independent claims 15, 16, and
28, which contain similar limitations. Therefore, the rejections of claims 1,
3-13, and 15-29 under 35 U.S.C. § 103(a) are not sustained.
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 3-13, and
15-29 under 35 U.S.C. § 101.
We REVERSE the Examiner's decision rejecting claims 1, 3-13, and
15-29 under 35 U.S.C. § 103(a).
REVERSED
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