Ex Parte Butler et al

Patent Trials and Appeals Board

Feb 12, 2019

13434938 - (D) (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/434,938 03/30/2012 David G. Butler
145169 7590 02/14/2019
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP (DXC)
379 Lytton Avenue
Palo Alto, CA 94301
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
36MK-255207 7070
EXAMINER
HALE,TIMB
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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):
svpatents@sheppardmullin.com
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID G. BUTLER, KENNETH K. SMITH,
and ANDREW ALEGRIA
Appeal2017-003430
Application 13/434,93 8
Technology Center 3600
Before JOHN A. EV ANS, LARRY J. HUME, and CATHERINE SHIANG,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of Claims 11 and 15-20. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE. 2
1 Appellants state the real party in interest is Hewlett Packard Enterprise
Development LP. App. Br. 1.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief filed April 5, 2016 ("App. Br."), the Reply Brief
filed December 20, 2016 ("Reply Br."), the Examiner's Answer mailed
October 20, 2016 ("Ans."), the Final Action mailed October 6, 2015 ("Final
Appeal2017-003430
Application 13/434,938
STATEMENT OF THE CASE
The claims relate to an encrypted payment image. See Abstract.
Invention
An understanding of the invention can be derived from a reading of
independent Claim 11, the sole independent claim, which is reproduced
below with some formatting added:
11. A machine-readable non-transitory storage medium of a
mobile computing device comprising instructions executable by
a processor to:
capture, using a camera of the mobile computing device,
an invoice image of a barcode displayed by a retailer and that
encodes information regarding a purchase transaction initiated
by a user of the mobile computing device with the retailer;
decode the information regarding the purchase
transaction from the barcode of the invoice image and display
the information to the user;
in response to receiving confirmation from the user of the
information:
generate a binary version of the invoice image;
encrypt the binary version of the invoice image
with an encryption key comprising payment account
information that identifies a payment account of the user
with which the user is paying for the purchase
transaction, the encryption key known by a payment
processor and unknown by the retailer; and
display the encrypted version of the invoice image
to the retailer, the retailer capturing the encrypted version
2 Act."), and the Specification filed March 30, 2012 ("Spec."), for their
respective details.
2
Appeal2017-003430
Application 13/434,938
to transmit to the payment processor to fulfill payment
for the purchase transaction against the payment account,
wherein the payment for the purchase transaction is fulfilled
without the retailer learning the payment account information.
Labrou
Hammad
Katzin
References and Rejections3
US 2007 /0022058 Al Jan. 25, 2007
US 2012/0209749 Al Aug. 16, 2012
US 2014/0337175 Al Nov. 13, 2014
Claims 11 and 15-20 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable Katzin, Hammad, and Labrou. Final
Act. 4--7.
ANALYSIS
We have reviewed the rejections of Claims 11 and 15-20 in light of
Appellants' arguments the Examiner erred. We consider Appellants'
arguments as they are presented in the Appeal Brief, pages 3-7.
3 The present application was examined under the pre-AIA first to invent
provisions. Final Act. 3.
3
Appeal2017-003430
Application 13/434,938
CLAIMS 11 AND 15-20: OBVIOUSNESS OVERKATZIN, HAMMAD,AND LABROU.
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Appellants' Figure 4 depicts a flowchart of the claimed method.
Beginning at 400, a mobile computing device determines a binary
version of an invoice image. Spec. ,r 37. The mobile computing device may
be a tablet, mobile phone, or music player. Spec. ,r 12. The mobile
computing device may cryptographically sign a binary version of an invoice
image to provide payment information and authentication. Spec. ,r 3 6.
Generate a binary version of the invoice image.
Independent Claim 11 recites, inter alia, "generate a binary version of
the invoice image." The Examiner finds this recitation is taught by Katzin's
disclosures. Final Act. 4 (citing Katzin ,r,r 130-133).
Appellants contend this recitation is not taught by Katzin. App. Br. 5.
Appellants argue the claims require two image captures. In a first image
capture, "an invoice image of a barcode" is "displayed by a retailer." App.
Br. 3. Claim 11 recites instructions to "capture, using a camera of [a] mobile
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Appeal2017-003430
Application 13/434,938
computing device" the invoice image of the barcode. Id. Claim 11 further
recites instructions to:
in response to receiving confirmation from the user of the
information: generate a binary version of the invoice image;
[ and] encrypt the binary version of the invoice image with an
encryption key comprising payment account information that
identifies a payment account of the user with which the user is
paying for the purchase transaction, the encryption key known
by a payment processor and unknown by the retailer.
App. Br. 4. Appellants argue the claims require a second image capture, i.e.,
the retailer is to capture the encrypted version of the binary image. Id.
Appellants contend Katzin teaches a user device captures an image of a
retailer QR code, but Katzin does not teach the user device generates an
encrypted binary version of that image. App. Br. 5 ( citing Katzin ,r,r 130-
133).
The Examiner finds Katzin teaches that a client device may take a
snap shot of a QR code and using a virtual wallet application may decode
the QR code from a product to extract the information embedded in the QR
code. The application may then generate a data structure including the QR-
encoded data. Ans. 4 (citing Katzin ,r 130-133). The Examiner further finds
Hammond teaches generating a binary version of the invoice image because
the data structure, i.e., the QR code, would necessarily be stored in a binary
format. Id. The Examiner thus finds that the Katzin-Hammond combination
reads on the claimed "in response to receiving confirmation from the user,
generate a binary version of the invoice image." The Examiner further finds
"Labrou is also directed to payment processing and provides for processing
of 2-D codes ([0084]) ofLabrou)." Ans 7.
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Appeal2017-003430
Application 13/434,938
Independent Claim 11 recites, inter alia, "encrypt the binary version
of the invoice image with an encryption key comprising payment account
information that identifies a payment account of the user with which the user
is paying for the purchase transaction, the encryption key known by a
payment processor and unknown by the retailer." The Examiner's findings
do not include any indication that the cited art teaches an encryption method
wherein "an encryption key compris[es] payment account information that
identifies a payment account of the user."
Because the cited art does not teach at least one limitation of the
claims, we decline to sustain the rejection of Claims 11 and 15-20.
DECISION
We reverse the rejection of Claims 11 and 15-20 under 35 U.S.C.
§ 103.
REVERSED
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