Ex Parte Berstis

Board of Patent Appeals and Interferences

Jun 19, 2009

09466438 (B.P.A.I. Jun. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte VIKTORS BERSTIS 8
____________________ 9
10
Appeal 2009-001835 11
Application 09/466,438 12
Technology Center 3600 13
____________________ 14
15
Decided:1 June 19, 2009 16
____________________ 17
18
Before: TERRY J. OWENS, MURRIEL E. CRAWFORD, and JENNIFER 19
D. BAHR, Administrative Patent Judges. 20
21
CRAWFORD, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL 25
26
STATEMENT OF THE CASE27

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001835
Application 09/466,438

2
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 1
of claims 1 to 6, 8 to 10, 13 to 23, and 25. We have jurisdiction under 35 2
U.S.C. § 6(b) (2002). 3
Appellant invented a method and system for triggering enhanced 4
security verification in response to atypical selections at the service-oriented 5
user interface terminal (Specification 1). 6
Claim 1 under appeal reads as follows: 7
8
1. A method for automatically authorizing a 9
remote point of purchase action at a facility which 10
permits such actions, said method comprising the 11
steps of: 12
storing selections of goods and/or services 13
made by an authorized user during a previous 14
transaction; 15
prompting a user with options for selecting goods 16
and/or services during a current transaction at the 17
facility; 18
comparing the options for goods and/or 19
services selected by the user with the user's 20
prestored selections of goods and/or services; 21
requiring the user to answer a security-22
related question if the options for goods and/or 23
services selected by the user are inconsistent with 24
the user's prestored selections of goods and/or 25
services; and 26
thereafter permitting the current transaction 27
only if the user correctly answers said security-28
related question. 29
30
The Examiner rejected claims 1 to 4, 6, 8, 9, 13 to 17, 18 to 21, 23, 31
and 25 under 35 U.S.C. § 103(a) as being unpatentable over Findley in view 32
of French. 33
Appeal 2009-001835
Application 09/466,438

3
The Examiner rejected claims 5, 10, and 22 under 35 U.S.C. 103(a) as 1
being unpatentable over Findley in view of French and further in view of 2
Penzias. 3
The prior art relied upon by the Examiner in rejecting the claims on 4
appeal is: 5
Penzias US 5,311,594 May 10, 1994 6
Findley US 6,108,642 Aug. 22, 2000 7
French US 6,496,936 B1 Dec. 17, 2002 8
9
ISSUE 10
Has the Appellant shown that the Examiner erred in finding that the 11
prior art teaches or suggests requiring the user to answer correctly, multiple 12
security-related questions if the options for goods and/or services selected by 13
the user are inconsistent with a user’s prestored selection of goods and/or 14
services? 15
16
FINDINGS OF FACT 17
Findley discloses a system which compares the purchase request of a 18
user with the purchase request history of the user based in part on the origin 19
of the request and the card number used in the request (col. 3, ll. 29 to 53). 20
The system uses a logic subsystem to determine the amount of purchases 21
which are allowed during a particular period of time (col. 4, ll. 29 to 31). 22
History factors which include origin history factors and card number history 23
factors are utilized in the determination (col. 4, ll. 1 to 25). The system 24
automatically blocks a purchase if the goods of the current purchase request 25
match the goods of a previous purchase request and the purchase is 26
requested within the set period of time (col. 2, ll. 40 to 42). As such, Findley 27
Appeal 2009-001835
Application 09/466,438

4
blocks purchase requests for goods that are the same or consistent with 1
goods purchased in the past. The goal is to prevent sophisticated remote 2
purchase thieves from stealing a sizable quantity of a particular product (col. 3
4, ll. 53 to 56). 4
French discloses an authentication system which performs a first level 5
of authentication by asking a security question based on a first type of 6
information and based on the results of the first level of authentication 7
determines whether to perform a second level of authentication (col. 2, ll. 15 8
to 20). The first type of information includes name, address, driver’s license 9
or other information that may be commonly carried on the person (col. 3, ll. 10
23 to 26). The first level authentication process compares the degree of 11
match between the first type of information and the known data about the 12
user from other sources (col. 3, ll. 29 to 32). The second level of 13
authentication is in the form of a security question based on a second type of 14
information that includes non-wallet type information from the user. The 15
second level authentication may ask for a lender’s name and the amount of 16
an identified loan and offer a number of choices for each of the lender’s 17
name and the correct payment amount, only one of which is correct (col. 3, 18
ll. 37 to 39; 58 to 61). 19
20
PRINCIPLES OF LAW 21
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the 22
Examiner to establish a factual basis to support the legal conclusion of 23
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so 24
doing, the Examiner must make the factual determinations set forth in 25
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Furthermore, “[‘]there 26
Appeal 2009-001835
Application 09/466,438

5
must be some articulated reasoning with some rational underpinning to 1
support the legal conclusion of obviousness’ . . . . [H]owever, the analysis 2
need not seek out precise teachings directed to the specific subject matter of 3
the challenged claim, for a court can take account of the inferences and 4
creative steps that a person of ordinary skill in the art would employ.” KSR 5
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 6
F.3d 977, 988 (Fed. Cir. 2006)). 7
8
ANALYSIS 9
We will not sustain the rejection of claim 1 under 35 U.S.C. § 103 as 10
being unpatentable over Findley in view of French because neither reference 11
discloses or suggests requiring the user to answer a security-related question 12
if the options for goods and/or services selected by the user are inconsistent 13
with the user’s prestored selections of goods and/or services which is a 14
requirement of claim 1 on appeal. Findley teaches a method that blocks a 15
purchase if the goods and/or services are consistent with prestored selections 16
of goods and/or services. While the Examiner is correct that card numbers 17
and origins that are inconsistent with prestored history factors are detected in 18
the Findley method, such inconsistency is utilized in calculating the amount 19
of purchases allowed during a specific time period rather then to block the 20
purchase or to require a second authentication process. 21
French does require a second authentication process in the form of 22
requiring the user to answer a security-related question in response to 23
inconsistency in the first level authentication, however, the inconsistency is 24
between information given in response to the first security question and 25
known data from other sources. The information includes information such 26
Appeal 2009-001835
Application 09/466,438

6
as name, address and driver’s license number. French does not compare the 1
goods and/or services selected with prestored selections of goods and/or 2
services as required by claim 1. As such we will not sustain this rejection as 3
it is directed to claim 1 and claims 2 to 4, 6, and 8 dependent thereon. 4
Independent claims 9, 14, and 18 also recite that a security question is 5
asked if the option for goods and/or services selected by the current user do 6
not match a user profile, previous selections, and prestored selections of 7
goods and/or services. As such each of these claims requires that a security 8
question be asked based on an inconsistency related to the selected goods 9
and services. Therefore, we will also not sustain the rejection as it is 10
directed to claims 9, 14, and 18 and claims 13, 15 to 17, 19 to 21, 23, and 25 11
dependent thereon. 12
We will also not sustain the rejection of claims 5, 10, and 22 under 35 13
U.S.C. § 103(a) as being unpatentable over Findley in view of French and 14
Penzias because these claims depend from claims 1, 9, and 18 respectively 15
and thus require that a security question be asked if an inconsistency related 16
to goods and/or services selected by the current user is detected. Penzias is 17
not relied on by the Examiner to teach this subject matter and in any case 18
does not cure the deficiency noted above for the combined teachings of 19
Findley and French. 20
21
CONCLUSION OF LAW 22
On the record before us, Appellant has shown that the Examiner erred 23
in rejecting claims 1 to 6, 8 to 10, 13 to 23, and 25. 24
25
Appeal 2009-001835
Application 09/466,438

7
DECISION 1
The Examiner's decision is reversed. 2
3
REVERSED 4
5
6
7
8
9
hh 10
DILLON & YUDELL, LLP 11
8911 N. CAPITAL OF TEXAS HWY. 12
SUITE 2110 13
AUSTIN, TX 78759 14