Ex Parte Carrott et al

Patent Trial and Appeal Board

Apr 28, 2017

10970051 (P.T.A.B. Apr. 28, 2017)

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.
10/970,051 10/21/2004 Richard F. Carrott CAR.5000CONT 5569
60817 7590
Frederick W. Gibb, III, Esq.
GIBB & RILEY, LLC
844 West Street
Suite 100
ANNAPOLIS, MD 21401
05/02/2017 EXAMINER
KIM, STEVEN S
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
support @ gibbiplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD F. CARROTT and HIRSHOL H. PHEIR
Appeal 2015-0059531
Application 10/970,0512
Technology Center 3600
Before MURRIEL E. CRAWFORD, MATTHEW S. MEYERS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35U.S.C. § 134 from a rejection of claims 1,
5—10, 13—18, 21, and 23—30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision considers Appellants’ Appeal Brief (“Br.,” filed Jan. 20,
2015), as well as the Examiner’s Final Office Action (“Final Act.,” mailed
Aug. 21, 2014), Advisory Action (“Adv. Act.,” mailed Oct. 28, 2014), and
Answer (“Ans.,” mailed Mar. 27, 2015).
2 Appellants identify Benedor Corporation as the real party in interest. Br. 3.
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CLAIMED SUBJECT MATTER
The claimed invention “generally relates to a system for providing
security for purchase transactions made over a network and more
particularly to an improved security system that only stores and provides
encrypted information.” Spec. 1:9-11. Claims 1, 10, and 18 are the
independent claims on appeal. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method of securing transactions over a computer
network comprising:
encrypting customer information as a customer code on a
storage device on a customer computer, said customer computer
being connected to said computer network, said customer
information comprising a customer address and a customer credit
card number, said customer information being stored on said
storage device only in encrypted form;
requiring a computer system identifier of said customer
computer, and one of a private key, a password, and a personal
access code of a customer as an entry to said customer computer
to access said customer code on said storage device of said
customer computer;
supplying said customer code to a merchant in a
transaction over said computer network;
forwarding said customer code to a financial institution
over said computer network;
decrypting said customer code at said financial institution;
and
returning an authorization decision from said financial
institution to said merchant over said computer network.
REJECTIONS
Claims 1, 5—10, 13—17, 28, and 29 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
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Claims 1, 5—10, 13—17, 21, 23—26, 28, and 29 are rejected under 35
U.S.C. § 112, second paragraph, as indefinite.3
Claims 1, 5—10, 13—18, 21, and 23—30 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Flitcroft (US 2003/0028481 Al, pub. Feb. 6,
2003), Schenkler (US 6,078,902, iss. June 20, 2000), Shmueli
(US 2002/0143637 Al, pub. Oct. 3, 2002), and Mi (US 6,418,472 Bl, iss.
July 9, 2002).
ANALYSIS
Written Description
The Examiner finds there is no written description support for the
limitation reciting “requiring a computer system identifier of said customer
computer, and one of a private key, a password, and a personal access code
of a customer as an entry to said customer computer to access said customer
code on said storage device of said customer computer” in each of
independent claims 1 and 10. Final Act. 5—7; Adv. Act. 2; Ans. 3.
Appellants argue that the disclosure on page 8, lines 11—17 of the
3 The heading of the rejection omits independent claims 1 and 10 and
dependent claims 5, 8, 9, 13, 17, 28, and 29. Final Act. 8. We consider the
omission of these claims from the heading to be a typographical error
because the body of the rejection discusses independent claims 1 and 10. Id.
Appellants also acknowledge that independent claims 1 and 10 are subject to
this rejection. Br. 9—10. Moreover, the heading of this rejection includes
independent claim 18 and claims 22, 27, and 30 depending therefrom.
Final Act. 8. Claim 22 has been canceled. Amendment filed Oct. 16, 2014.
Further, the Examiner has withdrawn the rejection as to independent
claim 18 (Ans. 5) and claim 27 {id. at 7), and the body of the rejection does
not discuss claim 30. Accordingly, the rejection before us on appeal does
not include these claims.
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Specification provides sufficient support for the disputed limitation. Br. 8—
9. Appellants’ argument is not persuasive.
Although the cited portion of the Specification describes a customer’s
computer system identifier and the customer’s private key are required to
access the customer code, i.e., the encrypted information, we agree with the
Examiner that there is no description of these pieces of information being
required to enter the customer’s computer. Final Act. 7; Adv. Act. 2; Ans. 3.
As such, we sustain the rejection of independent claims 1 and 10 and
dependent claims 5—9, 13—17, 28, and 29 under 35 U.S.C. § 112, first
paragraph.
Indefiniteness
Independent claims 1 and 10 and dependent claims 5, 8, 9, 13, 17, 28, and
29
The Examiner determines the limitation reciting “requiring a
computer system identifier of said customer computer, and one of a private
key, a password, and a personal access code of a customer as an entry to said
customer computer” in each of independent claims 1 and 10 renders the
claims indefinite because it is unclear what claimed elements are required to
enter the customer computer. Final Act. 8; Adv. Act. 2; Ans. 4. Appellants
contend that one of ordinary skill in the art would understand that the
claimed invention requires both a computer system identifier and one of a
customer’s private key, password, and personal access code to enter the
customer computer. Br. 10. We agree with Appellants. The limitation
recites “computer system identifier of said customer computer, and one of a
private key, a password, and a personal access code of a customer” (Br.,
Claims App. (emphasis added)) such that a person of ordinary skill in the art
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would understand that the claimed invention requires both a computer
system identifier and one of a customer’s private key, password, and
personal access code as an entry to a customer’s computer to access the
encrypted information stored there. We, therefore, do not sustain the
Examiner’s rejection of independent claims 1 and 10 and claims 5, 8, 9, 13,
17, 28, and 29 under 35 U.S.C. § 112, second paragraph.
Claims 6, 7, 14—16, and 24—26
The Examiner determines the limitations regarding encrypting “a
plurality of said customer code as customer codes” render these claims
indefinite. Final Act. 8—9; Adv. Act. 2; Ans. 4—5. According to the
Examiner, these limitations are unclear because the customer code is a
product of encrypting customer information, not customer code. Final
Act. 9.
Appellants argue that the claims are definite because they merely
recite a plurality of the customer code previously recited in the respective
independent claim. Br. 10. Appellants’argument is not persuasive.
Each of the independent claims 1,10, and 18 recites encrypting
customer information as a customer code, yet these dependent claims recite
encrypting a plurality of the customer code as customer codes. Br.,
Claims App. Consequently, it is unclear whether the term “customer codes”
refers to a plurality of encrypted customer information or an encrypted
plurality of customer code. As such, we sustain the rejection of claims 6, 7,
14—16, and 24—26 under 35 U.S.C. § 112, second paragraph.
Claim 21
The Examiner determines claim 21 is indefinite because it is unclear
whether the recited financial institution is part of the claimed system. Final
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Act. 10; Ans. 5—6. Appellants contend that the claim is not indefinite
because it explains the actions of others with which the claimed system
operates. Br. 11. We agree with Appellants.
Claim 21 depends from independent claim 18, which is directed to a
system comprising a non-transitory storage device storing instructions
executable by a processor of a customer computer. Br., Claims App. A
person of ordinary skill would appreciate that a financial institution is not
part of a non-transitory storage device having instructions that are
executable by a customer’s computer. Accordingly, we do not sustain the
rejection of claim 21 under 35U.S.C. § 112, second paragraph.
Claim 23
The Examiner determines claim 23 is indefinite because the term
“site” suggests a location or place, which is not commensurate with a system
claim. Final Act. 10; Ans. 7. Appellants argue that a person of ordinary
skill in the art would understand that the term “site” can be a network
location, as described in the Specification.
Like claim 21, claim 23 also depends from independent claim 18,
which, as described above, is directed to a system comprising a non-
transitory storage device. Br., Claims App. Regardless of whether the term
“site” is a physical location or a network location, a person of ordinary skill
in the art would appreciate that the claimed site is not part of a non-
transitory storage device. Accordingly, we do not sustain the rejection of
claim 23 under 35U.S.C. § 112, second paragraph.
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Obviousness
The Examiner relies on the combined teachings of Flitcroft,
Schenkler, Shmueli, and Mi to render obvious the claimed invention. In
particular, the Examiner finds that Flitcroft teaches encrypting customer
information as a customer code on a storage device on a customer computer
(Final Act. 13), and that Mi teaches multi-factor authentication, i.e.,
requiring a password and a computer system identifier, to access encrypted
information (Final Act. 15). Appellants have not persuaded us that the
Examiner erred in determining that the claimed invention set forth in
independent claims 1,10, and 18 would have been obvious. Br. 15—18.
In particular, we disagree with Appellants that Flitcroft teaches away
from encryption systems. Br. 15. Although Appellants are correct that
Flitcroft discloses single use credit cards to prevent fraud, Flitcroft teaches
that these credit card numbers are encrypted. Flitcroft 72, 120;
Final Act. 16; Ans. 8. Given that encryption is part of Flitcroft’s system, we
fail to see how Flitcroft teaches away from using encryption. See In re
Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“A reference may be said to
teach away when a person of ordinary skill, upon reading the reference
would be led in a direction divergent from the path that was taken by the
applicant.”)
We also disagree with Appellants that the Examiner’s proposed
combination would not result in the claimed invention, which requires two
pieces of information, namely a computer system identifier and one of a
customer’s private key, password, and personal access code, to access the
encrypted information, i.e., customer code. Br. 15—18. Specifically,
Appellants contend that a person of ordinary skill would not have been
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motivated to require two pieces of information to access the customer code
on the customer’s computer because Mi uses two-factor validation only to
determine whether a user is accessing a server from an unknown computer.
Id. at 17.
Mi teaches that “[w]hen two factors are required, an unauthorized user
who obtains only an authorized user’s ID/password may be denied access
when trying to establish a connection from a different platform.” Mi 11:16—
19. We agree with the Examiner that a person of ordinary skill in the art
would appreciate Mi’s teaching of two-factor validation would similarly
improve the security of Flitcroft’s system by providing a heightened
requirement for access to the customer code stored on a customer’s
computer. Ans. 9; KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“[I]f a technique has been used to improve one device, and a person of
ordinary' skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.”).
In view of the foregoing, we sustain the rejection of independent
claims 1, 10, and 18 under 35 U.S.C. § 103(a). Appellants do not present
separate argument for dependent claims 5—9, 13—17, 21, and 23—30, and we
sustain rejection claims for the same reasons as the independent
claims.
DECISION
The Examiner’s decision to reject claims 1, 5—10, 13—17, 28, and 29
under 35 U.S.C. § 112, first paragraph, is affirmed.
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The Examiner’s decision to reject claims 1, 5, 8—10, 13, 17, 21, 23,
28, and 29 under 35 U.S.C. § 112, second paragraph, is reversed.
The Examiner decision to reject claims 6, 7, 14—16, and 24—26 under
35 U.S.C. § 112, second paragraph, is affirmed.
The Examiner’s decision to reject claims 1, 5—10, 13—18, 21, and 23—
30 under 35 U.S.C. § 103(a) 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). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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