Ex Parte Pirzadeh et al

Patent Trial and Appeal Board

Nov 26, 2013

12121611 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KIUSHAN PIRZADEH,
SIMON JOHN HURRY, and
THOMAS MANESSIS
___________

Appeal 2011-010254
Application 12/121,611
Technology Center 3600
____________

Before MEREDITH C. PETRAVICK, NINA L. MEDLOCK, and
THOMAS F. SMEGAL, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010254
Application 12/121,611

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STATEMENT OF THE CASE
Kiushan Pirzadeh et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 2, 4-7, 9, 12, 13, 16, 17, 19-27, and
29-32. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
Claim 1, reproduced below with bracketing matter added, is
illustrative of the subject matter on appeal.
1. A method performed by an issuer or a payment
processing system, and involving a presenter for
completing a transaction, wherein the presenter uses a
network access device, the method comprising:
[1] providing, using a processor, virtual cards to
the presenter, wherein each virtual card relates to an
identity of the presenter and is stored on the network
access device;
[2] receiving, using the processor, authentication
data relating to a selected virtual card;
[3] verifying, using the processor, said
authentication data;
[4] receiving, using the processor, a message
routed by the network access device of the presenter from
a relying party, wherein the message represents a policy

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 13, 2011) and Reply Brief (“Reply Br.,” filed May 23, 2011),
and the Examiner’s Answer (“Ans.,” mailed Mar. 29, 2011).

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Application 12/121,611
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and includes an identifier for the relying party, a
transaction identifier, date and time of the transaction, a
message signature, location of the relying party, type of
currency, and a transaction amount;
[5] verifying, using the processor, the identifier for
the relying party;
[6] verifying, using the processor, customer
account provisions including determining that the
presenter has sufficient funds for the transaction and
determining fraud risk;
[7] generating, using a processor, an authentication
token for the transaction, the authentication token
including an authentication number and a random
security number, the authentication token having a
cryptographic value including data fields enabling
verification that the token was issuer-generated;
[8] sending, using the processor, a transaction
message through the network access device of the
presenter to the relying party, wherein the message
contains transaction information, the transaction
information including a transaction authentication
comprising the authentication token, and data related to
the identity associated with the selected virtual card
including an authentication of the identity of the
presenter, such that the message allows the relying party
to proceed with the transaction including payment and
settlement after receiving the message containing
transaction information, wherein the presenter is a
consumer; and
[9] transferring funds to the relying party, for the
transaction.

Appeal 2011-010254
Application 12/121,611
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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Iwamura
Sarcanin
Gauthier
US 6,453,296 B1
US 6,941,285 B2
US 2007/0055630 A1
Sep.17, 2002
Sep.6, 2005
Mar. 8, 2007

The following rejection is before us for review:
1. Claims 1, 2, 4-7, 92, 12, 13, 16, 17, 19-27, and 29-32 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Sarcanin, Gauthier, and Iwamura.

ISSUE
The issue is whether the Examiner has established that the
combination of Sarcanin, Gauthier, and Iwamura teaches claim 1’s step of
“sending, using the processor, a transaction message through the network
access device of the presenter to the relying party, wherein the message
contains transaction information, the transaction information including a
transaction authentication comprising the authentication token.”

FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

2 We note that claim 9 depends upon cancelled claim 8.
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ANALYSIS
We are persuaded by the Appellants’ argument (App. Br. 11-12;
Reply Br. 2-5) that the Examiner erred in rejecting claim 1 under 35 U.S.C.
§ 103(a) as being unpatentable over Sarcanin, Gauthier, and Iwamura. At
issue is claim 1’s step of “sending, using the processor, a transaction
message through the network access device of the presenter to the relying
party, wherein the message contains transaction information, the transaction
information including a transaction authentication comprising the
authentication token.” The Examiner’s rejection cited Sarcanin at column
21, lines 18-40, column 23, lines 48 to column 24, line 14, and column 5,
lines 5-15 as teaching this limitation. Ans. 6, 12.
We agree with the Appellants that while the cited passages of
Sarcanin teach sending a transaction confirmation message to a relying party
(i.e., merchant), the cited passages do not teach the specifics of the limitation
at issue, particularly, “sending, using the processor, a transaction message
through the network access device of the presenter to the relying party,
wherein the message contains transaction information, the transaction
information including a transaction authentication comprising the
authentication token.” That is, as Appellants point out (App. Br. 11-12;
Reply Br. 3-5), Sarcanin specifically discloses that its transaction
confirmation message “is communicated to the client terminal via the SRP
103 and merchant through a dedicated channel or another form of
messaging” (col. 23:44-47), and thus, fails to disclose sending a transaction
message through the network access device of the presenter to the relying
party, as required by limitation [8] in claim 1. We also note that the
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Examiner’s Answer fails to respond to Appellants’ argument regarding this
particular portion of Sarcanin (see Ans. 16).
Furthermore, to the extent the client device (i.e., network access
device) in Sarcanin connects to the Secure Remote Pointer (SRP) via a
secure connection with a merchant server (col. 21:42-46), it is the external
VirtualSAFE server that provides the authentication processes in Sarcanin
(col. 21:18-40), and subsequently sends the transaction confirmation
message directly to the relying party through a separate dedicated channel
(see col. 23:44-47). Therefore, as the Examiner does not rely upon either of
Gauthier and Iwamura to disclose this limitation, or proffer any other
evidence or rationale to teach the limitation at issue, we find that the
Examiner fails to establish a prima facie showing of obviousness.
Accordingly, the rejection of claim 1 and claims 2, 4-7, 9, 26, and 31,
dependent thereon, under 35 U.S.C. § 103(a) as being unpatentable over
Sarcanin, Gauthier, and Iwamura is reversed.
Independent claims 12, 16, 20, 21, 24, and 25 recite similar limitations
and are rejected using the same rationale (see Ans. 8-9). Accordingly, the
rejection of claims 12, 16, 20, 21, 24, and 25, and claims 13, 17, 19, 22, 23,
27, 29, 30, and 32, dependent thereon, under 35 U.S.C. § 103(a) as being
unpatentable over Sarcanin, Gauthier, and Iwamura is reversed.

DECISION
The decision of the Examiner to reject claims 1, 2, 4-7, 9, 12, 13, 16,
17, 19-27, and 29-32 is reversed.
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REVERSED

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