Neustar, Inc.

Patent Trials and Appeals Board

Dec 29, 2021

2020005121 (P.T.A.B. Dec. 29, 2021)

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.
14/321,495 07/01/2014 Steven Todd Kirsch 4380.0030002 1514
26111 7590 12/29/2021
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
BAYOU, YONAS A
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
12/29/2021 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):
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN TODD KIRSCH
___________

Appeal 2020–005121
Application 14/321,495
Technology Center 2400

____________

Before CARL W. WHITEHEAD JR., DAVID J. CUTITTA II and
MICHAEL J. ENGLE, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 41–60 under
35 U.S.C. § 134(a). See Appeal Brief 9–15. Claims 41, 48 and 53 are

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed January 21, 2020), the
Reply Brief (filed June 29, 2020), the Final Action (mailed December 20,
2018) and the Answer (mailed April 29, 2020), for the respective details.

2 Appellant refers to “applicant” as defined in 37 C.F.R. 1.42(a). (“The
word ‘applicant’ when used in this title refers to the inventor or all of the
joint inventors, or to the person applying for a patent as provided in
§§ 1.43, 1.45, or 1.46.”). Appellant identifies Neustar, Inc. as the real party
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independent. Claims 1–40 are canceled. See Claims Appendix. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Introduction
According to Appellant:
As many everyday transactions move to an online
environment, a large amount of personal information must be
sent over the Internet. Many experts consider the insecurity of
online identities to be the most important problem to be solved
on the Internet today. Users of social networks, online banking,
e-commerce, online transactions, and/or email are in constant
danger of phishing, malware, and key logging attacks, as well as
massive centralized data breaches that expose users’ passwords
and financial account information.
Specification ¶ 5.
The present invention relates generally to protecting
encrypted data. More specifically, the present invention relates
to methods and systems for using a fully encrypted repository to
store data. Merely by way of example, the invention has been
applied to a method of storing and retrieving encrypted data from
a fully encrypted repository for use in an online transaction. The
methods and techniques can be applied to a variety of
information and retail systems.
Specification ¶ 7.

in interest. Appeal Brief 3.

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Representative Claim3 (disputed limitations emphasized)

41. A method of securely authorizing an electronic
transaction by an identity protection system, the method
comprising:
receiving a proposed transaction involving a user;
accessing a list of devices associated with the user and
identifying a plurality of devices that have been preselected by the
user;
causing presentation of (1) the proposed transaction and (2)
an option to approve or disapprove the proposed transaction to
current users of the plurality of devices, wherein responses to the
presented option, if provided, are transmitted to the identity
protection system by the plurality of devices;
receiving the responses from at least a subset of the plurality
of devices; and
causing completion of the proposed transaction after a
predetermined
amount of time if all of the received responses approve the
proposed transaction.

3 Appellant does not argue independent claims 41, 48 or 53 individually.
See Appeal Brief 10 (“Independent claims 41, 48 and 53 are patentable over
the art of record for at least the following reasons.”). Accordingly, we select
independent claim 41 as representative. See 37 C.F.R. § 41.37(c)(1)(iv)
(“When multiple claims subject to the same ground of rejection are argued
as a group or subgroup by appellant, the Board may select a single claim
from the group or subgroup and may decide the appeal as to the ground of
rejection with respect to the group or subgroup on the basis of the selected
claim alone.”).

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References
Name4 Reference Date
Kim US 2006/0131385 A1 June 22, 2006
Labrou US 2006/0206709 A1 September 14, 2006

Rejection on Appeal
Claims 41–60 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Labrou and Kim. Final Action 3–7.
ANALYSIS
Appellant contends:
the Final Office Action erroneously relies on the premise that
reference Kim discloses the claimed feature “accessing a list of
devices associated with the user and identifying a plurality of
devices that have been preselected by the user,” when in fact this
reference discloses a single phone number of a single mobile device.
Appeal Brief 9.
The Examiner determines, “Labrou does not explicitly disclose accessing
a list of devices associated with the user and identifying a plurality of devices
that have been preselected by the user; causing completion of the proposed
transaction after a predetermined amount of time if all of the received responses
approve the proposed transaction.” Answer 4. The Examiner, relying on Kim to
address Labrou’s noted deficiencies, disagrees with Appellant’s contentions and
submits:
Kim does disclose ‘accessing a list of devices associated with the
user and identifying a plurality of devices that have been preselected
by the user’ (para. 0034 and fig. 2; according to database 123 in
fig. 2, list of devices (can be different phone#) associated with the
user (can be the same account#); see also fig. 1 list of devices 101 -

4 All reference citations are to the first named inventor only.

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1, 2, . . . N; paras. 0045, 0067, the variations and modification such
as ‘list of devices’ is understood and may occur to those skilled in
the art; and fig. 4).
Final Action 2, Answer 8.
Kim’s Figure 1, reproduced below, “shows a block diagram of a system
for performing secure online transactions according to an embodiment of the
present invention.” Kim ¶ 12.

In this system, credit card users 102-1 through 102-N can connect
with an online merchant server 114 via a network 112 using their
user computing devices 110-1 through 110-N . . . The user
computing devices 110 can be any suitable device capable of
establishing communication with the network, including personal
computers, laptop computers, and/or wireless communications
devices (e.g., cellular phones, personal digital assistants (“PDAs”)).
Kim ¶ 22.
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Kim’s Figure 2, reproduced below, “shows a block diagram of a
transaction authorization server coupled to a cardholder information database
according to an embodiment of the present invention.” Kim ¶ 13.

[T]he transaction authorization server 122 is in communication
with the cardholder information database 124 to access account
information required to process transaction requests . . .
Although FIG. 2 shows that the phone number information 272
is stored in the cardholder information database 124 along with
other account information, it will be appreciated that the phone
number information may be stored in another database separate
from the cardholder information database.
Kim ¶ 35.
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Appellant contends:
The Office’s Reliance on Kim for Disclosure of the “Accessing
a List of Devices Associated With the User and Identifying a
Plurality of Devices That Have Been Preselected by the User”
Feature of Independent Claims 41, 48 and 53 is Clearly
Erroneous Since Kim Discloses a Single Phone Number of a
Single Mobile Device.
Appeal Brief 10 (emphasis omitted); see Reply Brief 2.
Appellant argues, “the Office states that Kim discloses a ‘phone
number retrieving program 225 on the server 122 retrieving a phone number
of a mobile device assigned to the requesting account by searching the
cardholder information database 124,” but that “this analysis clearly does not
disclose the recited ‘list of devices,’ since at best the Office’s
characterization of Kim refers to only a single device.” Appeal Brief 12; see
Final Action 4, Answer 4, Kim Figures 1, 2. Appellant further argues:
Moreover, the Office compounds the error by mis-stating the
claim language. The actual claim language is “list of devices
associated with the user,” while the Office instead states “the list
being associated with the entity.” Thus, the Office incorrectly
associates the entity (user) with the list, while the claim language
requires “devices associated with the user.”
Appeal Brief 12 (emphasis added), see Final Action 4, Answer 4.
We find Appellant’s arguments unpersuasive of Examiner error. See
KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“As our precedents
make clear, however, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”). Kim discloses in Figure 1 “credit
card users 102-1 through 102-N can connect with an online merchant server 114
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via a network 112 using their user computing devices 110-1 through 110-N.”
Kim ¶ 22. Furthermore, Kim teaches, “The pending transaction database 123 is
used to maintain records of pending transaction requests, which are waiting for a
reply from cardholders [credit card users].” Kim ¶ 34; see Answer 4; Final
Action 4. As the Examiner finds, different phone numbers corresponding to
different devices may be stored in column 253 of Kim’s pending transaction
database 123 and the different phone numbers may each correspond to a single
user associated with an account number stored in column 252. Answer 8 (citing
Kim Figure 2). Moreover, Appellant’s Figure 15’s flowchart displays a “method
1500 [that] includes providing a processor and receiving a request for a proposed
transaction from an entity (1510)” wherein “[t]he entity can be a user, a
company, a customer, or the like and the request can be received at a transaction
processor such as a financial institution. The method also includes obtaining a
list of devices associated with the entity (1512).” Specification ¶ 515.
Consequently, we discern no meaningful difference between the claimed
associated with the user limitation and the Examiner’s finding that Kim teaches
“the claimed ‘accessing a list of devices, the list being associated with the
entity.’” Answer 4. Accordingly, Appellant’s arguments are not persuasive of
Examiner error.5
We sustain the Examiner’s obviousness rejection of independent claims
41, 48 and 53, as well as, dependent claims 42–47, 49–52 and 53–60 not argued
separately. See Appeal Brief 14–15.

5 Claim 41 further recites, emphasis added, “(2) an option to approve or
disapprove the proposed transaction to current users of the plurality of devices.”
We note, the correlation between a user identifying a plurality of devices and
current users of the plurality of devices may be subject to various interpretations
and therefore the scope of claim 41 may not be determinable.
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DECISION
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
41–60 103 Labrou, Kim 41–60

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED