Christian Aabye et al.

Patent Trials and Appeals Board

Sep 30, 2019

12563421 - (D) (P.T.A.B. Sep. 30, 2019)

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.
12/563,421 09/21/2009 Christian Aabye 79900-758391 6368
66945 7590 09/30/2019
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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, HAO NGO,
DAVID WILLIAM WILSON, GUSTAVO MARIATH ZEIDEN,
CHRIS PITCHFORD, and KIUSHAN PIRZADEH
____________________

Appeal 2018-001119
Application 12/563,4211
Technology Center 3600
____________________

Before BARBARA A. BENOIT, JOHN D. HAMANN, and
JOYCE CRAIG, Administrative Patent Judges.

HAMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s non-final rejection of claims 1, 2, 4, 10–12, 15, 17–19, and 27–
38. We have jurisdiction under 35 U.S.C. §§ 6 and 134 because Appellants’
claims for a patent have been twice rejected. Ex parte Lemoine, Appeal No.
94-0216, at 9–10 (BPAI Dec. 27, 1994) (precedential in part).
We reverse.

1 According to Appellants, the real party in interest is Visa International
Service Association. App. Br. 2.
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THE CLAIMED INVENTION
Appellants’ claimed invention relates to processing payment
transactions that are conducted using a mobile device, including updating
transaction data stored on the mobile device via a cellular network. Spec.2
¶ 22. Claim 1 is illustrative of the subject matter of the appeal and is
reproduced below.
1. A mobile device for use in conducting a payment
transaction, comprising:
a processor;
a computer readable memory; and
a set of instructions stored in the computer readable
memory, which when executed by the processor implement a
method comprising:
conducting the payment transaction by communicating
with a point of sale terminal over a first communication channel
using a contactless element in the mobile device, and adjusting
an accumulator stored in the mobile device by an initial
transaction amount of the payment transaction;
receiving an encryption key to be used for encrypting and
decrypting transaction data over a second communication
channel from a mobile gateway associated with an encryption
key server in response to conducting the payment transaction,
the encryption key being generated by the encryption key server
based on a request associated with the payment transaction, the
second communication channel being different than the first
communication channel, and the second communication
channel utilizing a cellular communications network;

2 Our Decision relies upon Appellants’ Appeal Brief (“App. Br.,” filed May
1, 2017), Reply Brief (“Reply Br.,” filed Nov. 13, 2017), and Specification
(“Spec.,” filed Sept. 21, 2009), as well as the Examiner’s Answer (“Ans.,”
mailed Sept. 15, 2017) and the Non-Final Office Action (“Non-Final Act.,”
mailed Dec. 1, 2016).
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receiving encrypted data related to the payment
transaction in response to conducting the payment transaction,
the encrypted data comprising an actual transaction amount at
the mobile device through the second communication channel
after communicating with the point of sale terminal, wherein
the actual transaction amount of the payment transaction is
determined by the point of sale terminal modifying the initial
transaction amount of the payment transaction;
decrypting the encrypted data related to the payment
transaction using the encryption key; and
updating the accumulator stored in the mobile device
using the decrypted data related to the payment transaction, the
decrypted data comprising the actual transaction amount of the
payment transaction such that the accumulator is adjusted by
the difference between the actual transaction amount of the
payment transaction and the initial transaction amount of the
payment transaction.

REJECTIONS ON APPEAL
(1) The Examiner rejected claims 1, 2, 4, 10, 11, 19, and 27–37
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Fisher (US 2007/0156436 A1; published July 5, 2007), Arthur
(US 2008/0208762 A1; published Aug. 28, 2008), Silver (US 7,580,873 B1;
issued Aug. 25, 2009), and Yang (US 2008/0118069 A1; published May 22,
2008). Non-Final Act. 4–14.
(2) The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Fisher, Arthur, Silver, Yang, and
Fougnies (US 2007/0243856 A1; published Oct. 18, 2007). Non-Final Act.
14.
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(3) The Examiner rejected claims 15 and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination3 of Fisher, Arthur,
Silver, Yang, and Li (US 2010/0057620 A1; published Mar. 4, 2010). Non-
Final Act. 15.
(4) The Examiner rejected claims 17 and 38 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Fisher, Arthur,
Silver, Yang, and Drudis (US 2009/0016538 A1; published Jan. 15, 2009).
Non-Final Act. 15–16.

ISSUE
The dispositive issue for this appeal is whether the combination of
Fisher, Arthur, Silver, and Yang teaches or suggests receiving an encryption
key for encrypting and decrypting transaction data over a cellular
communication channel.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner errs. We find Appellants’ arguments discussed
herein4 persuasive.
Appellants argue that the combination of Fisher, Arthur, Silver, and
Yang fails to teach or suggest “receiving an encryption key to be used for

3 In rejecting claims 15 and 18, which depend from independent claim 10,
the Examiner relied on claim 10’s rejection, but omitted listing some of the
references from claim 10’s rejection. Non-Final Act. 15. We treat this as a
harmless, typographical error.
4 Because we agree with at least one of the dispositive arguments advanced
by Appellants, we need not reach the merits of Appellants’ other arguments.
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encrypting and decrypting transaction data over a second communication
channel . . . [which uses] a cellular communications network,” as recited in
independent claims 1 and 10. App. Br. 11–12; Reply Br. 3–4. In particular,
Appellants first argue that “[a]t best, Yang describes a key for connecting to
a first network access device 180 (e.g., an access point).” App. Br. 12
(citing Yang ¶¶ 23, 50–52, Fig. 1).
Second, Appellants argue that although Yang teaches using a cellular
network (e.g., the SMS gateway) for transmitting a key to a first network
device, Yang does not teach that the first network device uses the cellular
network for transmitting transaction data. Id. Lastly, Appellants argue that
“‘to be used for encrypting and decrypting transaction data over a second
communication channel’ utilizing a ‘cellular communications network’ is
not ‘a statement of intended use,’ since the functions of the ‘encryption key’
are positively recited later in the claim” (e.g., “decrypting the encrypted data
related to the payment transaction using the encryption key”). Reply Br. 3;
App. Br. 12 n.1.
The Examiner finds that “the scope of this claim element is merely
‘receiving an encryption key’ and that the intended usage of the key is
beyond the scope of the claim and as such does not have patentable weight.”
Ans. 3 (citation omitted). The Examiner finds that Yang teaches “receiving
an encryption key” via Yang’s teaching that “a key management server
send[s] a key via SMS transmission to a mobile device.” Id. (citing Yang
¶ 22); see also Non-Final Act. 6–7 (citing Yang Abstract, ¶¶ 19–20, 22)
(finding Yang teaches receiving an encryption key).
We agree with Appellants that the Examiner errs. First, we agree with
Appellants that Yang describes a key for connecting to an access point,
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rather than an encryption key for encrypting or decrypting transaction data.
E.g., Yang ¶¶ 19–20. More specifically, Yang discloses that its key is used
by an access point to authenticate a device trying to connect to it. E.g., id.
¶¶ 4–5, 19. Yang makes no mention of encryption. See generally Yang. In
contrast, the claimed “encryption key” is used to decrypt encrypted
transaction data received by a mobile device. See App. Br. 22 (reciting
claim 1); see also Spec. ¶ 56 (describing encryption protocols, such as the
public key infrastructure protocols). Thus, the Examiner errs in finding that
the cited portion of Yang discloses “receiving an encryption key.”
We also agree with Appellants that the Examiner errs in finding that
Yang discloses using its key for encrypting or decrypting transaction data
received over a cellular network. The cited portions of Yang only teach
using a cellular network for providing the key to the first network device.
Yang ¶ 23, Fig. 1. Once a device is connected, the cited portions of Yang do
not teach using the key. Id. at Abstract, ¶¶ 19–20, 22.
Lastly, we agree with Appellants that the Examiner errs in finding
that, other than “receiving an encryption key,” the disputed limitation is an
intended use, which does not have patentable weight. To the contrary, “to
be used for encrypting and decrypting transaction data over a second
communication channel . . . [which uses] a cellular communications
network” is a fundamental characteristic of the claimed invention and relates
to claim 1’s other limitations. See Vizio, Inc. v. Int’l Trade Comm’n, 605
F.3d 1330, 1340 (Fed. Cir. 2010) (“[C]onclud[ing] that . . . ‘for decoding’
. . . is properly construed as a claim limitation, and not merely a statement of
purpose or intended use for the invention, because ‘decoding’ is the essence
or a fundamental characteristic of the claimed invention.”); In re Jasinski,
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508 F. App’x 950, 952 (Fed. Cir. 2013) (finding claim language that
provided criteria to analyze other limitations limiting, rather than an
intended use); App. Br. 22 (claim 1 further reciting “receiving encrypted
data . . . through the second communication channel” and “decrypting the
encrypted data . . . using the encryption key”). Accordingly, we find that the
Examiner errs in finding that the disputed limitation recites an intended use.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 10, as well as claims 2, 4, 11, 19, and 27–37,
which depend from one of these independent claims. We also do not sustain
the Examiner’s rejections of claims 12, 15, 17, 18, and 38, as these claims
depend from independent claim 10, and the additional cited references do
not cure the above deficiencies.

DECISION
We reverse the Examiner’s decision rejecting claims 1, 2, 4, 10–12,
15, 17–19, and 27–38.

REVERSED