Ex Parte WronskiDownload PDFBoard of Patent Appeals and InterferencesApr 30, 200809995218 (B.P.A.I. Apr. 30, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JOHN S. WRONSKI, Jr. ____________________ Appeal 2008-0349 Application 09/995,218 Technology Center 3600 ____________________ Decided: April 30, 2008 ____________________ Before WILLIAM F. PATE, III, ANTON W. FETTING and STEVEN D.A. McCARTHY, Administrative Patent Judges. PATE, III, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE The Appellant appeals under 35 U.S.C. § 134 (2002) from a Final Rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b) (2002). The Appellant claims a system and method for authorizing purchases to reduce fraudulent transactions by having the account owner provide to the Appeal 2008-0349 Application 09/995,218 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 bank various authorization parameters (such as merchant category, product category, expected time of transaction, etc.) regarding an anticipated purchase. The bank calculates an authorization code based on the selected parameters and provides it to the account owner. During the actual purchase transaction, the merchant provides the account information and the customer supplied authorization code to the bank. The bank calculates a confirmation authorization code and compares the calculated confirmation authorization code to the transmitted authorization code to determine whether the transaction should be authorized. Independent claims 1 and 16 read as follows: 1. A method for authorizing purchases by an owner of an account previously established with a bank, the owner wanting to purchase an item from a merchant, the method comprising the step(s) of: providing a plurality of authorization parameters available for use in calculating an authorization code associated with a transaction to purchase the item; defining a selected subset of the plurality of authorization parameters; establishing respective authorization parameter data for each of the selected authorization parameters; calculating the authorization code corresponding to the established respective authorization parameter data; providing the authorization code to the owner; providing the authorization code to the merchant; receiving the authorization code and transaction data from the merchant at the bank; calculating a confirmation authorization code from the transaction data corresponding to the established respective authorization parameter data; and 2 Appeal 2008-0349 Application 09/995,218 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 comparing the authorization code with the confirmation authorization code to determine whether or not to approve the transaction. 16. A database for processing a transaction, the database comprising: a plurality of owner account information files; a plurality of authorization parameters available for use in calculating an authorization code associated with a transaction to purchase an item; and a plurality of transaction authentication records corresponding to the plurality of owner account information files, respectively; and where each transaction record is representative of a respective transaction and has associated therewith a selected subset of the plurality of authorization parameters, respectively and an authorization code corresponding to the selected respective authorization parameter data, respectively. Independent claim 8 recites a method of operating a transaction processing data center for authorizing purchases including the step of calculating the authorization code corresponding to the received respective authorization parameter data. Independent claim 18 recites a system for authorizing purchases including a means for calculating the authorization code corresponding to the established respective authorization parameter data. The prior art relied upon by the Examiner in rejecting the claims is: Langhans 5,500,513 Mar. 19, 1996 Gephart 6,339,766 Jan. 15, 2002 3 Appeal 2008-0349 Application 09/995,218 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 The Examiner rejected claims 1-24 under 35 U.S.C. § 103(a) as unpatentable over Langhans in view of Gephart. We AFFIRM-IN-PART. ISSUE The sole issue raised in the present appeal is whether the Appellant has shown that the Examiner erred in rejecting claims 1-24 as unpatentable over Langhans in view of Gephart. PRINCIPLES OF LAW “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). The Court noted that “[t]o facilitate review, this analysis should be made explicit.” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. at 1741, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there 4 Appeal 2008-0349 Application 09/995,218 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). However, “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim.” Id. ANALYSIS The Examiner rejected the claims as unpatentable over Langhans and Gephart (Ans. 3). The Examiner asserts that Langhans discloses all of the recited limitations of the rejected claims except that the account disclosed in Langhans is a corporate account instead of an individual account (Ans. 3 and 4). The Examiner cites Gephart for disclosing a limited use account system for an individual account and states that because both Langhans and Gephart provide fraud protection by limiting account use and/or activity based on various criteria, the pending claims are obvious and unpatentable (Ans. 4 and 6). In the Appeal Brief, the Appellant submits arguments directed to all of the rejected claims, as well as specific arguments directed to various individual claims. With respect to all of the rejected claims, the Appellant argues that because in the present invention, the card owner interacts with a bank/credit card agency to obtain an authorization code specific to the anticipated purchase in advance of the purchase, the authorization code is transaction specific and different for each transaction (App. Br. 11 and 12; Reply Br. 3 and 4). The Appellant contends that Langhans merely discloses a unique card number that is permanently encoded on the card and that 5 Appeal 2008-0349 Application 09/995,218 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Langhans does not disclose a system that generates an authorization code that is specific to a transaction (App. Br. 13 and 14). The Appellant further contends that Gephart does not correct this deficiency of Langhans (App. Br. 15; Reply Br. 2). Although not explicitly stated, the underlying basis of the Appellant’s argument is that because the authentication codes are calculated corresponding to the authorization parameter data for each transaction, the resultant calculated authentication codes are different for each transaction (Reply Br. 3 and 4). The Examiner maintains that the claims do not recite that the authorization code is different for each transaction and states that the Appellant is reading limitations into the claims (Ans. 7). While we agree with the Examiner that the claims do not explicitly recite that the authorization code is different for each transaction, we also find that the Examiner’s rejection of independent claims 1, 8 and 18 is deficient because the cited prior art reference does not disclose or suggest “calculating the authorization code” as recited in these claims (Reply Br. 4). In this regard, we note that the Specification clearly teaches calculating an authorization code that is representative of the various selected authorization parameter data, but is not readily derivable by an outsider (Spec. 7 and 8). The Specification further describes an embodiment that utilizes an encryption algorithm and a key in conjunction with the selected authorization parameter data to calculate the authorization code (Spec. 7-9; Fig. 2A). Thus, we construe the limitation “calculating the authorization code” in claim 1 to require a step in which the resultant 6 Appeal 2008-0349 Application 09/995,218 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 authorization code is unique to a transaction and includes information about the authorization parameter data. A series of numbers that merely identify the transaction or the account does not satisfy this limitation. Thus, Langhans does not disclose or suggest the recited calculation step, and the Examiner has not articulated any reason with a rational basis as to why calculation of an authorization code would have been obvious to one of ordinary skill in the art. Gephart, as applied by the Examiner, does not remedy this deficiency. Therefore, in view of the above, the Appellant has shown that the Examiner erred in rejecting claims 1-15 and 18-24 as unpatentable over Langhans in view of Gephart. The Appellant’s specific arguments regarding dependent claims 2-7, 9-15 and 19-24 ultimately depending from claims 1, 8 or 18 are noted, but are moot in view of the above (Ans. 16-18). With respect to independent claim 16, we note that there is no specific recitation of calculating the authorization code in this claim. Claim 16 does recite “a plurality of authorization parameters available for use in calculating an authorization code associated with a transaction to purchase an item.” However, the recitation of “calculating an authorization code” in this limitation is merely a statement of intended use. All that is required to satisfy this limitation is for the authorization parameters to be available for use, not that these parameters be actually used in calculating an authorization code. The various usage restrictions of Langhans or Gephart satisfy this limitation in that such usage restrictions are also available for the recited use. In addition, while claim 16 also recites that each transaction 7 Appeal 2008-0349 Application 09/995,218 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 record has associated therewith, “an authorization code corresponding to the selected respective authorization parameter data,” this limitation is satisfied by the prior art in that account or transaction numbers also correspond to the authorization parameter data by identifying the account or transaction to which the parameter data is associated. Thus, the Appellant has not shown that the Examiner erred in rejecting independent claim 16. Finally, claim 17 depending from claim 16 further recites that the plurality of authorization parameters includes a transaction sequence parameter. We agree with the Appellant that the cited prior art references do not disclose such a feature and that the Examiner has not articulated any reason as to why provision of the recited feature would have been obvious (App. Br. 18). Therefore, the Appellant has shown that the Examiner erred in rejecting dependent claim 17. CONCLUSIONS 1. The Appellant has shown that the Examiner erred in rejecting claims 1-15 and 18-24 as unpatentable over Langhans and Gephart. 2. The Appellant has not shown that the Examiner erred in rejecting independent claim 16 as unpatentable over Langhans and Gephart. 3. The Appellant has shown that the Examiner erred in rejecting dependent claim 17 as unpatentable over Langhans and Gephart. 8 Appeal 2008-0349 Application 09/995,218 1 2 3 4 5 6 7 8 ORDER 1. The Examiner’s rejection of claim 1-15 and 17-24 is REVERSED. 2. The Examiner’s rejection of claim 16 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)(iv) (2007). 9 10 11 12 13 14 15 16 17 18 19 AFFIRMED-IN-PART JRG PITNEY BOWES INC. 35 WATERVIEW DRIVE P.O. BOX 3000 MSC 26-22 SHELTON, CT 06484-8000 9 Copy with citationCopy as parenthetical citation