Visa International Service Association

Patent Trials and Appeals Board

May 3, 2021

2020002553 (P.T.A.B. May. 3, 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. 14/314,742 06/25/2014 Christian Aabye 79900-910935 7064 66945 7590 05/03/2021 Visa / Kilpatrick Townsend & Stockton LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER SAX, TIMOTHY P ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 05/03/2021 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): KTSDocketing2@kilpatrick.foundationip.com ipefiling@kilpatricktownsend.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte CHRISTIAN AABYE and ERIC SCHINDEWOLF ________________ Appeal 2020-002553 Application 14/314,742 Technology Center 3600 ________________ Before MICHAEL R. ZECHER, JASON J. CHUNG, and SCOTT B. HOWARD, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection of claims 1, 5-8, 10, 11, 13, 21, and 25-32.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, Visa International Service Association is the real party in interest. Appeal Br. 3. 2 Claims 2-4, 9, 12, 14-20, and 22-24 were cancelled. Appeal Br. 23, 25. Appeal 2020-002553 Application 14/314,742 2 INVENTION The invention relates to conducting access transactions such as transit transactions. Spec. ¶ 5. Claim 1 is illustrative of the invention and is reproduced below with emphasis denoting some of the limitations being contested: 1. A method comprising: reading, by a gate access device, an account identifier and a cryptogram from a portable consumer device associated with a user that is conducting an access transaction; determining, a transaction amount to be associated with the access transaction; determining, by the gate access device, that the account identifier is not on a black list or on a white list; in response to determining that the account identifier is not on the black list or on the white list, generating, by the gate access device or an access host computer coupled to the gate access device, a first authorization request message comprising the account identifier, the cryptogram, and a first transaction amount data field, the first transaction amount data field indicating that the first authorization request message is for authentication by virtue of being empty or including a value of zero; transmitting, by the gate access device or the access host computer, to a payment processing computer, the first authorization request message; receiving, by the gate access device or the access host computer, from the payment processing computer, a first authorization response message comprising the authentication result, the authentication result including a fraud score; determining, by the gate access device, that the authentication result is positive, the authentication result being positive when the fraud score is less than a threshold value; Appeal 2020-002553 Application 14/314,742 3 in response to determining that the authentication result is positive, actuating, by the gate access device, a gate device such that the user can physically enter a restricted physical area; in response to determining that the authentication result is not positive, preventing actuating the gate device such that the user cannot physically enter a restricted physical area; generating, by the gate access device or the access host computer after actuating the gate device, a second authorization request message comprising the account identifier and a second transaction amount data field, the second transaction amount data field including an amount for the access transaction; transmitting, by the gate access device or the access host computer, to the payment processing computer, the second authorization request message comprising the an account identifier and the transaction amount for the access transaction; and receiving, by the gate access device or the access host computer, from the payment processing computer, a second authorization response message, wherein the second authorization response message indicates that the access transaction is authorized. Appeal Br. 22-23 (Claims Appendix) (emphases added). REJECTIONS3,4 The Examiner rejects claims 1, 5, 8, 10, 11, 13, 21, and 27-32 under 35 U.S.C. § 103 as being unpatentable over the combination of Dixon (US 2008/0179394 A1; published July 31, 2008), Wagner (US 2013/0041823 A1; published Feb. 14, 2013), Cholas (US 2011/0107436 A1; published 3 The Examiner’s rejection under 35 U.S.C. § 101 was withdrawn “due to the updated [O]ffice guidance.” Final Act. 2. 4 The Examiner’s rejection under 35 U.S.C. § 112(a) was withdrawn. Ans. 3. Appeal 2020-002553 Application 14/314,742 4 May 5, 2011), and Hammad (US 2008/0040271 A1; published Feb. 14, 2008). Final Act. 6-18.5 The Examiner rejects claims 6 and 7 under 35 U.S.C. § 103 as being unpatentable over the combination of Dixon, Wagner, Cholas, Hammad, and Ahlstrom (US 2003/0081747 A1; published May 1, 2003). Final Act. 18- 19. The Examiner rejects claims 25 and 26 under 35 U.S.C. § 103 as being unpatentable over the combination of Dixon, Wagner, Cholas, Hammad, and Del Favero (US 8,799,122 B1; filed Mar. 31, 2008). Final Act. 19-20. ANALYSIS I. The Examiner’s Rejection and Appellant’s Arguments The Examiner concludes that the limitation “the first transaction amount data field indicating that the first authorization request message is for authentication” (hereinafter “disputed limitation”) recites non-functional descriptive material and, therefore, is not entitled to patentable weight. Ans. 3-4; Final Act. 7-8. Moreover, the Examiner concludes that the disputed limitation describes the intended use of the first authorization request message and, therefore, is not entitled to patentable weight. Ans. 4. Alternatively, the Examiner finds Dixon teaches the disputed limitation. Final Act. 7 (citing Dixon ¶¶ 31, 42-66, Fig. 4). Appellant argues that the disputed limitation does not recite non- functional descriptive material nor the intended use of the first authorization request message because the term “authentication” gives the disputed 5 All references to the Final Action refer to the Final Action mailed on April 16, 2019. Appeal 2020-002553 Application 14/314,742 5 limitation patentable weight. Appeal Br. 15-17; Reply Br. 3-5.6 Furthermore, Appellant argues the Examiner’s cited portions of Dixon merely teach a server under control of the transit system, but fail to teach the disputed limitation. Appeal Br. 15 (citing Dixon ¶¶ 31, 42-66, Fig. 4). Appellant argues the Examiner fails to provide adequate mapping of Dixon to the disputed limitation. Reply Br. 4; Appeal Br. 16-17. Based on the record, we are persuaded by Appellant’s argument. II. Claim Construction Claim construction is an issue of law that is left for a court or a tribunal. “[W]hen the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent's prosecution history), the judge’s determination will amount solely to a determination of law.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). “[T]he ultimate issue of the proper construction of a claim should be treated as a question of law.” Id. at 838. We construe claim terms according to their broadest reasonable construction in light of the specification of the patent or application in which they appear. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Consistent with the broadest reasonable construction, claim terms are generally given their ordinary and customary meaning, as understood by a person of 6 We determine that Appellant’s argument in the Reply Brief pertaining to intended use is timely because the Examiner makes the intended use conclusion for the first time in the Answer. Compare Ans. 4 (the Examiner concludes that the disputed limitation describes the intended use of the first authorization request message and, therefore, is not entitled to patentable weight), with see Final Act. (lacking any mention of intended use). Appeal 2020-002553 Application 14/314,742 6 ordinary skill in the art, in the context of the entire specification. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In this case, we conclude that the limitation “determining, by the gate access device, that the authentication result is positive” (emphases added) uses the “the first transaction amount data field” contained within “the first authorization request message” from the disputed limitation for “authentication” purposes. Stated another way, “the authentication result” has antecedence to the “authentication” function associated with the “the first transaction amount data field” contained within “the first authorization request message.” We, therefore, agree with Appellant’s argument that the disputed limitation does not recite non-functional descriptive material nor the intended use of “the first transaction amount data field” because this data field contained within “the first authorization request message” is used to determine “the authentication result” in the “determining” step reproduced above. Appeal Br. 15-17; Reply Br. 3-5. Because we conclude that the disputed limitation does not recite non-functional descriptive material nor the intended use of the first authorization request message, we turn to the issue of whether the cited portions of Dixon teach the disputed limitation. III. The Examiner Does Not Explain Adequately How Dixon Teaches the Disputed Limitation The Examiner relies on twenty six paragraphs and one figure to teach the disputed limitation. Final Act. 7 (citing Dixon ¶¶ 31, 42-66, Fig. 4). Within Dixon’s cited twenty six paragraphs and one figure, there appears to be at least six different embodiments. Final Act. 7 (citing Dixon ¶¶ 31, 42- 66, Fig. 4). Although the Examiner appears to rely on Dixon’s embodiment that includes transit central computer 270 to teach other contested limitations Appeal 2020-002553 Application 14/314,742 7 (e.g., “transmitting, by the gate access device or the access host computer, to a payment processing computer, the first authorization message,” “receiving, by the gate access device or the access host computer, from the payment processing computer, a first authorization message response message comprising the authentication result,” etc.), the Examiner does not explain adequately, nor are we able to ascertain, which of Dixon’s embodiments the Examiner relies on to teach the disputed limitation.7 See Ans. 3-5 (lacking a specific mapping or explanation of Dixon to the disputed limitation); Final Act. 7-8 (lacking a specific mapping or explanation of Dixon to the disputed limitation); Reply Br. 4 (Appellant arguing the Examiner fails to provide a specific mapping of Dixon to the disputed limitation); Appeal Br. 15-17 (Appellant arguing the Examiner does not explain adequately how Dixon teaches the disputed limitation and Appellant argues the Examiner’s cited portions of Dixon merely teach a server under control of the transit system, but fail to teach the disputed limitation). 7 Dixon’s paragraph 30 (which was not cited in either the Final Action or Examiner’s Answer) and paragraph 60 appear to be somewhat relevant to the disputed limitation and the remaining limitations that Appellant argues on appeal. Dixon ¶¶ 30, 60. However, the Examiner appears to be relying on a different embodiment (i.e., Dixon’s embodiment from paragraph 49). Ans. 5-6 (in response to Appellant’s arguments in the Appeal Brief that Dixon merely teaches transit central computer 270 maintains a white list and a black list, the Examiner finds that Dixon’s transit central computer 270 teaches the claimed “payment processing computer”). Moreover, the Examiner does not provide a sufficient explanation as to how Dixon’s embodiments in paragraphs 30 and 60 teach the disputed limitation nor are we willing to provide one for the Examiner. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. Appeal 2020-002553 Application 14/314,742 8 Claim 10 recites similar features as claim 1. The Examiner relies on the same findings, conclusions, and evidence to teach all the features of claim 10. See Final Act. 7-12. As applied by the Examiner, Ahlstrom and Del Favero does not cure the deficiencies noted above. Accordingly, for all the reasons we identified above, we do not sustain the Examiner’s obviousness rejection of: (1) independent claims 1 and 10; and (2) dependent claims 5-8, 11, 13, 21, and 25-32 under 35 U.S.C. § 103. CONCLUSION REVERSED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 8, 10, 11, 13, 21, 27-32 103 Dixon, Wagner, Cholas, Hammad 1, 5, 8, 10, 11, 13, 21, 27-32 6, 7 103 Dixon, Wagner, Cholas, Hammad, Ahlstrom 6, 7 25, 26 103 Dixon, Wagner, Cholas, Hammad, Del Favero 25, 26 Overall Outcome 1, 5-8, 10, 11, 13, 21, 25-32