Lynam, Joe M. et al.

Patent Trials and Appeals Board

Apr 15, 2020

13841318 - (D) (P.T.A.B. Apr. 15, 2020)

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.
13/841,318 03/15/2013 Joe M. Lynam 066531-5009-US 1019
24341 7590 04/15/2020
Morgan, Lewis & Bockius LLP (PA)
1400 Page Mill Road
Palo Alto, CA 94304-1124
EXAMINER
GO, JOHN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
04/15/2020 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):
padocketingdepartment@morganlewis.com
vskliba@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOE M. LYNAM, EVAN B. MEYER,
MARK E. SNYCERSKI, and BRADFORD SINGER

____________

Appeal 2019-000475
Application 13/841,318
Technology Center 3600

____________

Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Appellant’s invention relates “to electronic commerce, and
specifically to a system and method for authenticating a payment transaction

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as PayOne
Corporation. (Appeal Br. 3.)
Appeal 2019-000475
Application 13/841,318

2
initiated by a portable client device connected to a cellular communications
network by corroborating client device specific data.” (Spec. ¶ 2.)
Claims 1, 10, 19, and 20 are the independent claims on appeal.
Claim 1 is illustrative. It recites (some paragraphing added):
1. A method for authenticating a communication initiated on
a mobile client device connected to a cellular communication
network, the method comprising:
at a system having one or more processors and memory
storing one or more programs for execution by the one or more
processors to perform the method:
receiving, from a mobile client device connected to
a cellular communications network, a request to
authenticate a communication initiated on the mobile
client device;
in accordance with a determination that the request
from the mobile client device comprises valid first mobile
client device data including an IP address associated with
the mobile client device, a geographic location of the
mobile client device, and a cellular phone number
associated with the mobile client device:
requesting, from a mobile network operator
associated with the cellular communications
network, an IP address associated with the cellular
phone number;
receiving a response from the mobile
network operator, wherein the response includes the
requested IP address associated with the cellular
phone number;
determining whether the IP address received
from the mobile network operator matches the IP
address received from the mobile client device;
in accordance with a determination that the IP
address received from the mobile network operator
matches the IP address received from the mobile
client device, at least partially authenticating the
communication; and
Appeal 2019-000475
Application 13/841,318

3
in accordance with a determination that the IP
address received from the mobile network operator
does not match the IP address received from the
mobile client device, generating a fraud report that
includes the geographic location of the mobile
client device.

REJECTIONS2
Claims 1, 4–7, 10–13, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable in view of Kapur (US 2010/0057623 A1, pub.
Mar. 4, 2010), Ishidoshiro (US 2004/0076144 A1, pub. Apr. 22, 2004),
Chitlur (US 2009/0093233 A1, pub. Apr. 9, 2009), and Dvir
(US 2007/0056022 A1, pub. Mar. 8, 2007).
Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable in view
of Kapur, Ishidoshiro, Chitlur, Dvir, and Hwang (US 2007/0291741 A1,
pub. Dec. 20, 2007).
Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable in view
of Kapur, Ishidoshiro, Chitlur, Dvir, and Smith (US 2012/0239574 A1, pub.
Sept. 20, 2012).
Claims 8, 9, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Kapur, Ishidoshiro, Chitlur, Dvir, and Warner
(US 2008/0140441 A1, pub. June 12, 2008).
Claims 16 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Kapur, Ishidoshiro, Chitlur, Dvir, and Pharris
(US 2009/0254440 A1, pub. Oct. 8, 2009).

2 The rejection under 35 U.S.C. § 101 was withdrawn. (Answer 3.)
Appeal 2019-000475
Application 13/841,318

4
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable in view
of Kapur, Ishidoshiro, Chitlur, Dvir, and Brody (US 2010/0293065 A1, pub.
Nov. 18, 2010).

ANALYSIS
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, Appellant argues
that “[t]he cited references do not teach a request from a mobile device that
includes ‘[(1)] an IP address associated with the mobile client device, [(2)] a
geographic location of the mobile client device, and [(3)] a cellular phone
number associated with the mobile client device.’” (Appeal Br. 18
(emphasis omitted).)3 Appellant further argues that “Ishidoshiro, Chitlur
and Dvir are not cited for not [sic] do they teach this feature.” (Id.)

3 Claim 10 does not include the recited “cellular phone number.” Thus, with
regard to claim 10, Appellant’s argument is not commensurate with the
scope of the claim and is not persuasive.
Appeal 2019-000475
Application 13/841,318

5
The Examiner finds that Kapur discloses requesting an IP address
from an external system. (Non-Final Action 8 (citing Kapur ¶¶ 58, 62).)
The Examiner also finds that although Kapur does not teach that the
requested IP address is associated with a cellular telephone number,
“Ishidoshiro teaches that it was old and well known in the art . . . that IP
addresses are commonly associated with mobile/cellular phone numbers.”
(Id. at 9 (citing Ishidoshiro ¶¶ 6–7).) And, the Examiner determines that it
would have been obvious “to modify the system of Kapur to incorporate a
mobile phone that includes both a phone number and an IP address as taught
by Ishidoshiro in order to verify that the proper entity is being contacted.”
(Id. at 9–10.)
The Examiner also finds that Chitlur teaches a “system to provide a
user with identification information and GPS location data for a mobile
device (i.e. as a fraud report), in the event that an authentication operation
has failed.” (Id. at 10 (citing Chitlur ¶¶ 24–25).) And the Examiner
determines that it would have been obvious “to modify Kapur to incorporate
the providing an output including identification information (i.e. the phone
number as disclosed by Kapur paragraphs [0056]-[0058], [0062]-[0065], and
[0068]-[0073]) and GPS location for a mobile device as taught by Chitlur.”
(Id.)
The Examiner also finds that Dvir teaches a
system to send a request for an IP address for a device to an IP
authentication server, wherein the IP authentication server
forwards the request to an ISP (i.e. a mobile network operator),
which then responds by indicating that the forwarded IP address
either matches or does not match the IP address stored at the ISP.
Appeal 2019-000475
Application 13/841,318

6

(Id. (citing Dvir ¶¶ 67–69, 73, 80–85, Figs. 1A–1B).) And the Examiner
determines that it would have been obvious “to modify Kapur to incorporate
requesting the IP address data and matching from an ISP (i.e. a mobile
network provider) as taught by Dvir in order to properly authenticate a user.”
(Id. at 11.)
In view of the above discussions of Ishidoshiro, Chitlur, and Dvir by
the Examiner, we do not find persuasive Appellant’s argument that
“Ishidoshiro, Chitlur and Dvir are not cited” in the rejection. (See Appeal
Br. 18.) And because Appellant does not explain why the Examiner’s
findings regarding the teachings of Ishidoshiro, Chitlur and Dvir are in error,
we do not find persuasive Appellant’s argument that “Ishidoshiro, Chitlur
and Dvir . . . do [not] teach this feature.” (See id.)
Appellant further argues that “the Kapur reference itself clarifies in
paragraph 67 that the ‘request’ occurs when a user initiates an online
purchase. Kapur opens the second communication channel to prompt for
additional data after receiving the request, so the additional data retrieved
through the second channel is not part of the ‘request.’” (Reply Br. 7; see
also Appeal Br. 19–20.) We do not find this argument persuasive.
Kapur teaches “[a] system and method for secure payment
transactions.” (Kapur, Abstract.) Kapur teaches an adaptive payment server
to authenticate a payment transaction or otherwise confirm a user’s identity.
“Authentication factors may be authenticated by comparing observed (e.g.,
input) information to expected (e.g., predefined) information.” (Id. ¶ 58.)
Kapur lists a number of possible authentication factors including “Payment
Card Number,” “Mailing Address,” “IP Address,” “Phone Number,”
Appeal 2019-000475
Application 13/841,318

7
“Payment Card PIN,” “GPS Location,” “Voice recording,” and “Transaction
Identifier.” (Id. at Table 1, ¶¶ 60–67; see also Answer 3–4.)
Although the authentication factor of the transaction identifier is
“generated upon receipt of a request for a payment transaction” (id. ¶ 67),
the other identified authentication factors, e.g., IP address, phone number,
and GPS location, are not identified by Kapur as “generated upon receipt of
a request” (see id. ¶¶ 62, 63, 65). For at least this reason, we do not find
Appellant’s argument persuasive.
Moreover, Appellant’s argument requires one to construe the term “a
request” as a single query. (See Appeal Br. 19–20.) Claim 1 recites that the
request has 3 parts, i.e., (1) a request for an IP address, (2) a request for a
geographic location, and (3) a request for a cellular phone number. The
Examiner determines that “[g]iven the broadest reasonable interpretation, ‘a
request’ does not require that the IP address, geographic location, and
cellular phone number be transmitted in a single data packet.” (Answer 4.)
We agree.
Claim 1 recites, in relevant part:
in accordance with a determination that the request from
the mobile client device comprises valid first mobile client
device data including [(1)] an IP address associated with the
mobile client device, [(2)] a geographic location of the mobile
client device, and [(3)] a cellular phone number associated with
the mobile client device:
requesting, from a mobile network operator
associated with the cellular communications network, an
IP address associated with the cellular phone number.

Appellant does not explain why, under a broadest reasonable
interpretation, the 3 parts of the “request” of claim 1 cannot be transmitted
separately, e.g., serially. Nor does Appellant point to language in the
Appeal 2019-000475
Application 13/841,318

8
Specification that compels the claim interpretation proffered by Appellant.
Even if one interprets claim 1 as requiring that the request for parts (1), (2),
and (3) be made before requesting the IP address from the mobile network
operator, Appellant does not persuasively argue why the claim requires the
request to be in the form of a single query. Therefore, we do not find
Appellant’s argument persuasive.
Appellant also argues that “[t]he cited references do not teach
‘requesting, from a mobile network operator associated with the cellular
communications network, an IP address associated with the cellular phone
number,’ as required by the pending claims.” (Appeal Br. 20 (emphasis
omitted).)4 Specifically, Appellant argues that the Non-Final “Office Action
points out that Kapur does not teach or suggest” this limitation and that
“[t]his feature is also not taught by Dvir.” (Id.; see also Reply Br. 7.) We
do not find this argument persuasive.
The Examiner finds:
Dvir teaches that a “service provider forwards, to an IP
authentication service, data indicative of user details along with
detail indicative of ‘candidate’ user IP address . . . .” Dvir further
teaches that “it is possible to query the ISP for the match – i.e. to
query the ISP if the user address assigned by the ISP is associated
with an ISP account that matches the user’s details,” wherein
“the ISP responds to the IP authentication service with data
indicating whether or not the candidate user details/candidate
user IP pair should be authenticated . . . .” Dvir also teaches that
“the term ISP is used in a broad sense, to include . . . for example
cable and/or phone and/or telecommunication companies . . . .”
Hence, Dvir teaches querying (i.e. requesting) an ISP for an IP

4 Again, we note that claim 10 does not include the recited “cellular phone
number.” Thus, with regard to claim 10, Appellant’s argument is not
commensurate with the scope of the claim and is not persuasive.
Appeal 2019-000475
Application 13/841,318

9
address for a user in order to authenticate the user’s IP address,
wherein an “ISP” includes a cable and phone company (i.e. a
mobile network operator).

(Answer 5 (citing Dvir ¶¶ 69, 80, 85).)
We agree with the Examiner that Dvir teaches querying an ISP as to
whether the user’s IP address matches the IP address assigned by the ISP.
(See id.; see also Dvir ¶¶ 83–85.) We also agree with Appellant that Dvir
does not, by itself, teach requesting from the ISP provider/mobile network
operator an IP address associated with the cellular phone number.
However, “one cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). A reference
“must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). In short, obviousness is more than what is specifically
disclosed in the cited references. “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” KSR
Int’l Co., 550 U.S. at 417.
Here, as discussed above, the Examiner relies on the combination of
Kapur, Ishidoshiro, Chitlur and Dvir. In particular, the Examiner relies on
the teaching in Ishidoshiro “that IP addresses are commonly associated with
mobile/cellular phone numbers” (Non-Final Action 9), and that it would
have been obvious “to modify the system of Kapur to incorporate a mobile
phone that includes both a phone number and an IP address . . . as taught by
Ishidoshiro in order to verify that the proper entity is being contacted” (id.
at 9–10).
Appeal 2019-000475
Application 13/841,318

10
Appellant does not argue why the Examiner erred in determining that
this combination, as opposed to the individual prior art references, would
have made the invention of claim 1 obvious to one of ordinary skill in the
art. Accordingly, we sustain the rejection of claim 1. Claims 2–20 are not
separately argued and fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103(a)
are affirmed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–7, 10–
13, 19, 20
103(a) Kapur, Ishidoshiro,
Chitlur, Dvir
1, 4–7, 10–
13, 19, 20

2 103(a) Kapur, Ishidoshiro,
Chitlur, Dvir,
Hwang
2
3 103(a) Kapur, Ishidoshiro,
Chitlur, Dvir,
Smith
3
8, 9, 14, 15 103(a) Kapur, Ishidoshiro,
Chitlur, Dvir,
Warner
8, 9, 14, 15
16, 18 103(a) Kapur, Ishidoshiro,
Chitlur, Dvir,
Pharris
16, 18
17 103(a) Kapur, Ishidoshiro,
Chitlur, Dvir,
Brody
17
Overall
Outcome
1–20

Appeal 2019-000475
Application 13/841,318

11
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).

AFFIRMED