Clover Network, Inc.

Patent Trials and Appeals Board

Aug 19, 2020

16007945 - (D) (P.T.A.B. Aug. 19, 2020)

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.
16/007,945 06/13/2018 John Daniel Beatty CLVRP018 1049
146691 7590 08/19/2020
Daylight Law, P.C.
626 Jefferson Avenue
Suite 7
Redwood City, CA 94063
EXAMINER
OUSSIR, EL MEHDI
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
08/19/2020 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):
diane@daylightlaw.com
eofficeaction@appcoll.com
eric@daylightlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN DANIEL BEATTY, BRIAN JEREMIAH MURRAY,
NILENDU MISRA, and NICHOLAS POSNER
____________

Appeal 2020-002393
Application 16/007,945
Technology Center 3600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review,2 under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1–15 (Appeal Br. 6–7.)
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. Appellant identifies the Real Party in Interest as Clover
Network, Inc. (See Appeal Br. 3.)
2 We consider the Specification dated November 27, 2018 (“Spec.”), Final
Office Action issued March 21, 2019 (“Final Act.”), the Appeal Brief filed
August 21, 2019 (“Appeal Br.”), the Examiner’s Answer issued December
4, 2019 (“Ans.”), and the Reply Brief filed February 3, 2020 (“Reply Br.”).
Appeal 2020-002393
Application 16/007,945

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INTRODUCTION
Appellant’s Specification provides methods for utilizing and
managing tokens in a payment system. (Spec. ¶ 7.) Point of sale (POS)
systems may obtain a token as a proxy for a payment account number, e.g.,
credit card or debit card number. (Id. ¶ 2.) The token may be stored in a
merchant’s POS system without placing the payment account number at risk
of theft. (See id.) To obtain a token, the POS system sends an encrypted
payment account number to a tokenization service, which decrypts the
account number and returns a token to the POS system. (Id. ¶ 3.) A multi-
pay token is a specific type of token that allows a merchant to retain the
token for future transactions by the same customer, without re-entering
payment account information. (Id. ¶ 6.)
The Specification describes a process of “salting” a token by adding
data to the token before encrypting the token. (Spec. ¶ 11.) The data “salt”
may include meaningful data associated with the token, such as, merchant
identifier, store identifier, or commerce channel, e.g., physical retail, online,
mail order. (Id.) The POS system may include a secure processor for
encrypting the salted token. (Id. ¶¶ 12, 40.) The secure processor may also
map the encrypted salted token to the payment account number and store the
map and encrypted salted token in a memory. (Id.)
Appellant’s claim 1 recites:
A method comprising:
transmitting a tokenization request with an
encrypted payment account number from a point of sale
device to a tokenization service;
receiving a token from the tokenization service in
response to the tokenization request, wherein the token is
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Application 16/007,945

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a tokenized version of the encrypted payment account
number;
salting the token with data to produce a salted
token;
encrypting the salted token using a secure
processor on the point of sale device;
mapping the encrypted salted token to the payment
account number in a map,
wherein the payment account number is mapped
using at least a portion of the payment account number;
and
storing the map and the encrypted salted token in a
memory on the secure processor on the point of sale
device.

(Appeal Br. 26.)
The Examiner rejects the claims as follows3:
Claims
Rejected
35 U.S.C. § Basis Final Office
Action
3 112(a) Written description 5–6
1–15 112(b) Indefinite 6–7
1–3, 5, 6, 10–14 103 McGuire,4 Cronic5 7–13
4, 7, 8, 15 103 McGuire, Cronic, Ivey6 13–16

3 The Examiner withdrew the rejection of claim 3 under 35 U.S.C. § 112(b)
as being indefinite. (Ans. 3.)
4 McGuire et al., U.S. Patent Application Publication 2010/0257612 A1,
published October 7, 2010.
5 Cronic et al., U.S. Patent Application Publication 2013/0191289 A1,
published July 25, 2013.
6 Ivey et al., U.S. Patent Application Publication 2016/0005029 A1,
published January 7, 2016.
Appeal 2020-002393
Application 16/007,945

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Claims
Rejected
35 U.S.C. § Basis Final Office
Action
9 103 McGuire, Cronic, Ivey,
Park7
16–17

ANALYSIS
Claims 1–15 rejected under 35 U.S.C. § 112(b) as indefinite
The Examiner rejects claims 1–15 under 35 U.S.C. § 112(b) as
indefinite. (Ans. 7.) The Examiner finds that the limitation “storing the map
and the encrypted salted token in a memory on the secure processor of the
point of sale device” is indefinite because “[a] processor or secure processor
is different and distinct from a memory.” (Id., emphasis omitted) The
Examiner finds “it is not known whether the map and the encrypted salted
token are stored in the memory or whether they are stored in a memory on a
secure processor.” (Id.)
Appellant argues that the claimed secure processor “refers to a piece
of hardware which includes a secure memory for storing cryptographic keys
and other information in memory.” (Appeal Br. 15.) Appellant argues the
Specification discloses a hardware security module (“HSM”) as an example
of a secure processor. (Id. at 16, citing Spec. ¶ 40.)
We are persuaded by Appellant’s argument because the Specification
describes a secure processor including a memory. For example, the
Specification describes storing encrypted tokens using a secure element on
the POS device. (See Spec. ¶¶ 12, 40.) The secure element may be a secure

7 Park et al., U.S. Patent Application Publication 2016/0253651 A1,
published September 1, 2016.
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Application 16/007,945

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processor, such as an HSM, which includes a memory as explained by
Appellant. (Id. ¶ 40.) A secure processor is not a generic processor distinct
from a memory. Accordingly, we do not sustain the Examiner’s rejection.

Claim 3 rejected under 35 U.S.C. § 112(a) as lacking written description
The Examiner rejects claim 3 under 35 U.S.C. § 112(a) as lacking
written description. (Ans. 3.) The Examiner finds the Specification does not
support the limitation of “restricting the initiation of the second payment on
the second point of sale device: (i) without decrypting the salted encrypted
token; and (ii) based on the data.” (Id. at 5, emphasis omitted) The
Examiner finds that the Specification does not describe how to restrict
initiation of a second payment without decrypting the salted encryption
token, as recited by claim 3, when claim 1 “recites that the entire salted
token is encrypted.” (Id.)
Appellant argues that the Specification describes using a format
preserving algorithm (“FPA”) for obtaining data salt values without
decrypting the “whole encrypted token.” (Appeal Br. 12, citing Spec. ¶ 11.)
For example, the FPA may read values directly by inspecting the salted
encrypted token, or excise and decrypt only a portion of the salted encrypted
token. (Spec. ¶ 11.) The FPA may append the data salt in a format
preserving encrypted (“FPE”) string, so that the data salt can be located
without decrypting the token map. (See id. ¶ 44.) Appellant argues that the
appended data may add values recognized throughout the POS network
(Appeal Br. 12), so that “if the data that restricted use of the token was
accessible via direct analysis of an FPE salted encrypted token, failure at the
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first authorization level would prevent the needless exposure of the token
through decryption for a transaction that was already denied.” (Spec. ¶ 47.)
We are persuaded that the original Specification provides written
description support for claim 3. We begin with the language of the claim.
Contrary to the Examiner’s finding, claim 1 does not appear to recite
encrypting the “entire salted token.” (See Appeal Br. 26.) Accordingly,
claim 3 does not appear to conflict with claim 1.
The Specification describes restricting a second use of a token based
on a previous denial without decrypting the token. (See Spec. ¶ 47.)
Original claim 6 recites a method similar to claim 3, further including the
limitation of evaluating a field of a salted encrypted token without
decrypting the token. (See Specification dated June 13, 2018, Claims App’x.
2.) “The claims as filed are part of the specification, and may provide or
contribute to compliance with § 112.” Hyatt v. Boone, 146 F.3d 1348, 1352
(Fed. Cir. 1998). Although the original Specification does not describe
claim 3 exactly, we find that persons of ordinary skill in the art would
recognize from the disclosure that Appellant invented a process including
restricting the initiation of a second payment without decrypting the salted
encrypted token. See In re Wertheim, 541 F.2d 257, 262 (CCPA 1976).
Accordingly, we do not sustain the Examiner’s rejection.

Claims 1–15 rejected under 35 U.S.C. § 103
The Examiner rejects claims 1–3, 5, 6, and 10–14 under 35 U.S.C.
§ 103 as obvious over McGuire and Cronic. Because the Examiner applies
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the combination of McGuire and Cronic to reject all of the claims, our
analysis of claim 1 applies to all of the claims.
The Examiner finds McGuire teaches tokenizing an encrypted
payment account number and salting the token with data to produce a salted
token. (Final Act. 8, citing McGuire Abstr., ¶¶ 51, 56, 90, Fig. 1.) The
Examiner finds McGuire teaches encrypting the salted token using a secure
processor on the point of sale device and mapping the encrypted salted token
to the payment account number in a map. (Id. at 8–9, citing McGuire Abstr.,
¶¶ 3, 35, 44–45, 56, Fig. 1, 3–5.) The Examiner acknowledges that McGuire
does not explicitly teach storing the map and encrypted salted token in a
memory on a secure processor, but finds that Cronic teaches the missing
limitation. (Id. at 9, citing Cronic ¶¶ 3, 48, 87, 98, 199.)
Appellant argues that McGuire does not teach the limitation of
“mapping the encrypted salted token to the payment account number in a
map, wherein the payment account number is mapped using at least a
portion of the payment account number.” (Reply Br. 5.) Specifically,
Appellant argues that: (1) McGuire does not teach encrypting tokens; (2)
McGuire’s map includes unencrypted tokens; and (3) McGuire’s
transmitting a temporarily encrypted token through a secure socket layer
does not involve mapping an encrypted salted token in map. (See id. at 5–6.)
Appellant argues that McGuire teaches mapping a relationship between an
account number and an unencrypted token. (Appeal Br. 20.)
We are persuaded by Appellant’s argument. McGuire teaches a POS
device (input module 140) that transmits a payment-card number to a
tokenizer, “which returns a token for input module 140 to send to application
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module 150 along with other transaction data.” (McGuire ¶ 51.) McGuire
does not describe the “other transaction data,” nor combining the other
transaction data with the token, i.e., salting the token. (See id.) McGuire
further teaches a look-up table with encrypted payment card numbers
matching corresponding tokens. (See id. ¶¶ 32, 35.) McGuire does not
teach encrypting the tokens nor storing and mapping encrypted tokens. (See
id.) Because McGuire does not appear to teach at least the limitation of
mapping an encrypted salted token to a payment account number in a map,
we do not sustain the Examiner’s rejections.

CONCLUSION
Upon consideration of the record and for the reasons given, we
reverse the Examiner’s rejections.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3 112(a) Written description 3
1–15 112(b) Indefinite 1–15
1–3, 5, 6,
10–14 103 McGuire, Cronic
1–3, 5, 6,
10–14
4, 7, 8, 15 103 McGuire, Cronic, Ivey 4, 7, 8, 15
9 103
McGuire, Cronic, Ivey,
Park 9
Overall
Outcome
1–15

REVERSED