Ex Parte BUERDownload PDFPatent Trial and Appeal BoardJul 28, 201613533523 (P.T.A.B. Jul. 28, 2016) Copy Citation 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. 13/533,523 06/26/2012 Mark BUER 2875.1260002 9763 49579 7590 07/29/2016 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER OKEKE, IZUNNA ART UNIT PAPER NUMBER 2497 MAIL DATE DELIVERY MODE 07/29/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARK BUER ____________ Appeal 2014-007764 Application 13/533,523 Technology Center 2400 ____________ Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and KEVIN C. TROCK, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2014-007764 Application 13/533,523 2 STATEMENT OF THE CASE Appellant’s invention is directed to “to information security” (Spec. ¶2). Independent claim 1, reproduced below, is exemplary of the subject matter on appeal. 1. A method for performing multi-factor authentication in a processor using a non-cryptographic capability of a smartcard, the method comprising: simulating a financial payment transaction request with the smartcard to cause the smartcard to generate a transaction code; receiving the transaction code from the smartcard; communicating both first authentication data and second authentication data to a device, wherein the second authentication data is determined based on the transaction code; and receiving authorization to access a service if the first authentication data and the second authentication data are verified by the device. REFERENCES and REJECTIONS The Examiner rejected claims 1–3, 6, 7, 9, 12–16, 18, and 19 under 35 U.S.C. § 102 (b) as anticipated by Yu (US 6,067,621; May 23, 2000) The Examiner rejected claims 4, 5, 10, and 11 under 35 U.S.C. § 103(a) based upon the teachings of Yu and Spitzer (US 2005/0269401 A1; Dec. 8, 2005). The Examiner rejected claims 8 and 17 under 35 U.S.C. § 103(a) based upon the teachings of Yu, Spitzer, and Dobner (US 6,874,084 B1; Mar. 29, 2005). Appeal 2014-007764 Application 13/533,523 3 ANALYSIS Appellant contends the Examiner erred in finding Yu teaches the claimed step of “simulating a financial payment transaction request with the smartcard to cause the smartcard to generate a transaction code” (App. Br. 5–6). Appellant acknowledges Yu uses a random number, security key, and counter value to “generate authentication data in the form of a one-time password,” however, “none of these values, . . ., represent a transaction code that has been generated by simulating a financial payment transaction request as recited in claim 1” (id.). The Examiner finds and we agree, Yu discloses generating a one-time password as authentication data (Ans. 2–3). Appellant relies on paragraph 49 of their Specification for disclosing the limitation “simulating a financial payment transaction” (App. Br. 3). This paragraph describes an example of simulating a financial transaction, with the result being the “use of a one- time password (e.g., a continually changing password),” which Yu teaches. Appellant argues Yu does not disclose simulating a financial transaction by communicating to a smart card that a $0 transaction has been requested (App. Br. 5). However, Appellant has not provided sufficient evidence or reasoning to persuade us the Examiner’s position is incorrect, particularly, as Appellant’s claim is broad and does not recite the argued communicating to a smart card a $0 transaction has been requested limitation. We decline to import elements from the Specification into the claims. In light of the broad terms recited in the claims and the arguments presented, Appellants have failed to clearly distinguish their claimed invention over Yu. Thus, we sustain the Examiner’s rejection of claim 1 and Appeal 2014-007764 Application 13/533,523 4 claims 2, 3, 6, 7, 9, 12–16, 18, and 19, argued therewith (App. Br. 6), as anticipated by Yu. We also sustain the Examiner’s rejection of claims 4, 5, 10, and 11, as being obvious over Yu and Spitzer, as Appellant argues their allowability due to their dependency on claims 1 and 9, and because Spitzer does not cure Yu’s deficiencies (App. Br. 6–7), of which we found there are none. We also sustain the Examiner’s rejection of clams 8 and 17 as being obvious over Yu, Spitzer, and Dobner, as Appellant also argues their allowability due to their dependency on claims 1 and 9 (App. Br. 7). DECISION The Examiner’s decision rejecting claims 1–3, 6, 7, 9, 12–16, 18, and 19 under 35 U.S.C. § 102 (b) over Yu is affirmed. The Examiner’s decision rejecting claims 4, 5, 8, 10, 11, and 17 under 35 U.S.C. § 103(a) over Yu, Spitzer, and Dobner, is affirmed 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)(iv). AFFIRMED Copy with citationCopy as parenthetical citation