MasterCard International Incorporated

Patent Trials and Appeals Board

Jun 30, 2020

14621123 - (D) (P.T.A.B. Jun. 30, 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.
14/621,123 02/12/2015 Cristian Radu P01729-US-
UTIL (M01.308)
3632
125619 7590 06/30/2020
Mastercard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
ST CYR, DANIEL
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
colabella@bmtpatent.com
martin@bmtpatent.com
szpara@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRISTIAN RADU, JONATHAN JAMES MAIN, and
ERIC G. ALGER
Appeal 2019-002540
Application 14/621,123
Technology Center 2800

Before CATHERINE Q. TIMM, ELIZABETH M. ROESEL, and
MICHAEL G. McMANUS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–11, 13, 14, and 16–20. See Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 Mastercard
International Incorporated. Appeal Br. 2.
Appeal 2019-002540
Application 14/621,123
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CLAIMED SUBJECT MATTER
The claims are directed to a method (see, e.g., claims 2 and 9) and
apparatus (see, e.g., claim 16) for streamlined digital wallet transactions.
Claim 2, reproduced below, is illustrative of the claimed subject matter:
2. A method comprising:
maintaining a digital wallet in a computer, the digital
wallet storing a plurality of payment account entries associated
with a user of the digital wallet, each of said payment account
entries corresponding to a respective payment account that
belongs to said user;
receiving a request for a transaction;
receiving and verifying, by the computer, user
authentication data regarding the user and the requested
transaction;
verifying, by the computer, authentication of a device
used by the user to initiate the transaction, said verifying
authentication of the device including verification of a hash
result calculated over identification data stored in the device,
said identification data including at least one serial number
assigned to a hardware or software component of the device;
and
in response to verifying the user authentication data,
allowing the user to access any one of said payment accounts
without requiring further user authentication.
Appeal Br. 14.
Appeal 2019-002540
Application 14/621,123
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
DiMartino US 8,165,961 B1 Apr. 24, 2012
Griggs US 2014/0114857 A1 Apr. 24, 2014
Bondesen US 2015/0254655 A1 Sept. 10, 2015

REJECTIONS
The Examiner maintains the following rejections:
Claims 2–8 and 16–20 are rejected under 35 U.S.C. § 103 as being
unpatentable over DiMartino in view of Bondesen.2 Final Act. 2.
Claims 9–11, 13, and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over DiMartino in view of Griggs. Final Act. 5.

OPINION
The Rejection of Claims 2–8 and 16–20 as obvious over DiMartino in view
of Bondesen
In arguing against the rejection of claims 2–8 and 16–20 over
DiMartino in view of Bondesen, Appellant focuses on claims 2, 3, 16, and
17. It will suffice for us to discuss claims 2, 16, and 17. The arguments for
claim 3 need not be separately addressed given our disposition of the
rejection of claim 2.
Claim 2
DiMartino discloses a system of completing a payment using an
electronic wallet on a mobile device. DiMartino col. 1, l. 63–col. 2, l. 9. The
Examiner acknowledges that DiMartino fails to disclose the step of verifying

2 The Examiner lists claim 1 as rejected, but claim 1 was canceled.
Appeal 2019-002540
Application 14/621,123
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the authentication of the device as required by claim 2 and turns to Bondesen
to support the conclusion that it would have been obvious to verify the
device as another layer of security. Final Act. 3–4.
Claim 2 requires that verifying authentication of the device include
“verification of a hash result calculated over identification data stored in the
device.” The Examiner turns to paragraph 128 of Bondesen and finds that
Bondesen’s teaching of incorporating a validation of the user’s mobile
device into a unique identity score meets this limitation. Final Act. 4.
Specifically, the Examiner finds that Bondesen’s unique identity score is a
hash result as the unique identity score is a numeric value that uniquely
identifies the mobile device. Id.
Appellant contends that generating an identity score and calculating a
hash result are two distinctly different processes and the former would not
be considered to constitute a species of the latter. Appeal Br. 8.
Appellant has identified a reversible error in the Examiner’s finding.
The question of whether generating an identity score involves calculating a
hash score requires us to consider the broadest reasonable meaning of “hash
result” consistent with the Specification as it would be interpreted by one of
ordinary skill in the art.
Turning to the Specification to discern the meaning of “hash result”
we determine that the Specification equates a hash result with a
cryptographic result. Spec. 15:8–11 (“the user/payment device 212 may
calculate a hash or other cryptographic result over both a device fingerprint
and user authentication data provided by the user”). Thus, we interpret
“calculating a hash result” as using a mathematical function to convert the
device identification data into a new value and thereby encrypt the device
identification data.
Appeal 2019-002540
Application 14/621,123
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The Examiner has not established that Bondesen verifies a hash result
calculated over identification data stored in the device. Although Bondesen
discloses identifying the mobile device using device identification
information, Bondesen does not disclose calculating a cryptographic result,
i.e., using a mathematical function to convert the device identification data
into a new value to encrypt the data. Bondesen ¶ 128.
Bondesen gathers device identification information from the mobile
device to generate the device’s “fingerprint” or unique signature and then
bases the level of user authorization in part on validating this device
information. Bondesen ¶ 128. Bondesen incorporates this verification into a
close network score or into a unique identity score that is combined with the
close network score. Id. Taking the verification of the identity of the device
and adding it to a unique identity score, on its face, is not the same as using
a mathematical function to convert the device identification data into a new
value to encrypt the data.
Because the Examiner fails to further explain how Bondesen’s
disclosure of incorporating the device verification data into the unique
identity score meets the requirement of verifying a hash result calculated
over the device’s stored identification data, we agree with Appellant that the
Examiner has not established that adding the device identification data to a
score is the type of hashing required by claim 2.
For these reasons, we do not sustain the Examiner’s rejection of
claims 2–8.
Appeal 2019-002540
Application 14/621,123
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Claim 16
Claim 16 is directed to an apparatus with a processor, memory, and
program instructions on the processor that perform a digital wallet
transaction. Claim 16 requires a step of verifying authentication of a device
used by the user to initiate the transaction. The verifying step differs from
that of claim 2. In claim 16, the step involves “verifying a result computed
by the device based in part on a challenge issued to the device by the server
computer.” Claim 16 (emphasis added).
According to the Examiner, “[t]he challenge issued by the server is
just [a] basic hand-shake protocol between electronic devices.” Ans. 10. In
other words, in the challenge, the mobile device is requesting access and the
server is asking the mobile device to provide the credential before access is
granted. Id.
Appellant contends that the Examiner has not addressed Appellant’s
argument that the prior art fails to disclose such a challenge. Reply Br. 2.
According to Appellant, “Bondesen has some disclosure relating to device
authentication, but fails to teach or suggest verification of device
authentication that includes verifying a result computed by the device based
in part on a challenge issued to the device by a wallet server.” Appeal Br.
10.
Appellant’s argument does not address the Examiner’s finding that the
challenge issued by the server is just a basic hand-shake protocol between
the electronic devices. In order to carry out authentication, the wallet server
and mobile device must speak to each other. See, e.g., DiMartino col. 5, ll.
11–26. Appellant has not identified a reversible error in the Examiner’s
finding.
We sustain the Examiner’s rejection of claims 16 and 18–20.
Appeal 2019-002540
Application 14/621,123
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Claim 17
Appellant argues claim 17 separately in the grouping with claim 3.
Because we did not sustain the rejection of claim 2, there was no need to
address claim 3. We address claim 17 here.
Claim 17 depends from claim 16 and further requires the processor
have program instructions to “set a consumer authentication status flag to a
‘valid’ state to indicate that the processor has verified the received user
authentication data; wherein the processor does not receive a consumer
authentication status flag value from said device used by the user.”
In the rejection, the Examiner states that “the user information is
required in order for the transaction to proceed, so setting flag or
acknowledgement to indicate the user and/or device has been authenticated
is obtained.” Final Act. 4. In the Answer, the Examiner further explains that
“[i]f a user is authenticated and allowed to gain access to the electronic
wallet, that is an indication of a valid authentication status flag, while a user
who is failed to authenticate and not allowed to gain access, that is an
indication of invalid authentication status.” Ans. 10.
The Examiner does not point to any particular teaching in either
reference to support the findings. We, like Appellant, interpret the
Examiner’s finding as one of inherency, i.e., that granting access inherently
results in setting a consumer authentication status flag to “valid.” Reply Br.
2–3. But, as pointed out by Appellant, “access can be granted without setting
a flag, and a flag can be set without granting access.” Reply Br. 3. Although
it is possible to set a flag to “valid” to indicate that the processor has verified
the received authentication data, it is not necessary. Thus, it is not inherent.
We do not sustain the Examiner’s rejection of claim 17.

Appeal 2019-002540
Application 14/621,123
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The rejection of claims 9–11, 13, and 14 as obvious over DiMartino in view
of Griggs
Claim 9 is an independent claim and requires a server computer
receive and verify authentication data for the requested transaction and, “in
response to verifying the authentication data by the server computer,
triggering by the server computer generation of a cryptogram for the
transaction, said cryptogram generated in accordance with an EMV
(Europay-Mastercard-Visa) standard.” Claims 10, 11, 13, and 14 depend
from claim 9.
The Examiner relies on paragraph 68 of Griggs as teaching the step of
triggering generation of the cryptogram. Final Act. 9–10. As stated by the
Examiner,
Griggs et al[.], in the field of transaction initiation modes
(abstract), teach in response to verifying authentication data,
triggering generation of a cryptogram for the transaction (chip
cryptogram maybe different and can assist in determining
transaction initiation mode, para 0068).
Final Act. 6–7. In the Answer, Examiner further explains that “the device is
asking for access and the server computer is requesting credential
information in order to grant access, which triggers the mobile device to
generate the cryptogram data.” Ans. 10.
Appellant contends that Griggs merely discloses a server that receives
and stores a chip cryptogram and does not teach that the server triggers
generation of the cryptogram. Appeal Br. 9; Reply Br. 2.
We agree with Appellant that paragraph 68 of Griggs teaches
receiving and storing a chip cryptogram and does not disclose triggering the
generation of the cryptogram. Griggs teaches a server 200 that includes an
authentication database 240. Database 240 stores a table of data elements
Appeal 2019-002540
Application 14/621,123
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used to compare against a plurality of transaction specific data elements
received from communication device 110 (e.g., a mobile device). Griggs
¶¶ 29, 68. The values within these data elements may be used to determine
the transaction initiation mode, i.e., the type of transaction occurring
between a consumer and merchant (magnetic stripe read, chip card, secure
mobile near field communication (NFC), etc.). Griggs ¶¶ 46, 68. The chip
cryptogram may be different for the credentials on a chip than for a secure
mobile NFC transaction. Griggs ¶ 68. Thus, the value of the chip cryptogram
may assist in determining the transaction initiation mode. Id.
The Examiner finds that Griggs teaches that the server triggers the
mobile device to generate a cryptogram, but we do not find any disclosure of
such a trigger in paragraph 68. The Examiner states that “the device is
asking for access and the server computer is requesting credential
information in order to grant access, which triggers the mobile device to
generate the cryptogram data.” Ans. 10. But paragraph 68 merely discusses
storing a chip cryptogram in a table on the server. Paragraph 70 discloses
receiving the data elements, which may include the chip cryptogram, from
communication device 110, and comparing them with the stored data
elements, but the Examiner does not rely on paragraph 70 and paragraph 70
does not disclose that the server triggers the mobile device to generate a
cryptogram. Given the lack of explanation by the Examiner, we determine a
preponderance of the evidence on this appeal record supports Appellant’s
argument that Griggs’s server does not trigger generation of the cryptogram
mentioned in paragraph 68 of Griggs.
We do not sustain the rejection of claims 9–11, 13, and 14.
Appeal 2019-002540
Application 14/621,123
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CONCLUSION
The Examiner’s decision to reject claims 16 and 18–20 affirmed, but
the Examiner’s decision to reject claims 2–11, 13, 14, and 17 is reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
2–8, 16–20 103 DiMartino,
Bondesen
16, 18–20 2–8, 17
9–11, 13, 14 103 DiMartino,
Griggs
9–11, 13, 14
Overall
Outcome
16, 18–20 2–11, 13, 14,
17

TIME PERIOD FOR RESPONSE
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) (2018).
AFFIRMED IN PART