Ex Parte Hammad

Patent Trial and Appeal Board

Mar 29, 2018

12263982 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/263,982 11103/2008 Ayman Hammad
66945 7590 04/02/2018
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
80083-760262 9275
EXAMINER
NILFOROUSH, MOHAMMAD A
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
ipefiling@kilpatricktownsend.com
EDurrell@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte A YMAN HAMMAD
Appeal2017-000916
Application 12/263,982 1
Technology Center 3600
Before CARL W. WHITEHEAD JR, AMBER L. HAGY and
MICHAEL M. BARRY, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 10-12, 34, 36, 37,
40, 44-47, and 51-58 under 35 U.S.C. § 134(a). Appeal Brief8. We have
jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to a "portable consumer device includes a
secondary PAN associated with a primary PAN, where the secondary PAN
has at least one end portion that is the same as the primary PAN, but has a
middle portion of that is different than the primary PAN." Abstract.
1 Appellant identifies Visa U.S.A. Inc. as the real party in interest. App.
Br. 3.
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Application 12/263,982
Illustrative Claim
10. A portable consumer device comprising:
a body;
a processor; and
a non-transitory computer readable storage medium coupled to the
body and the processor, the computer readable storage medium comprising
code that, when executed by the processor, causes the portable consumer
device to perform operations comprising:
accessing a primary Primary Account Number (PAN);
creating a secondary PAN based upon the primary PAN by changing
at least a middle portion of the primary PAN but not a beginning portion of
the primary PAN;
encrypting at least a portion of the primary PAN using a key to yield
an encrypted primary PAN; and
providing the secondary PAN and the encrypted primary PAN but not
the primary PAN to a merchant device for a payment transaction.
Rejections on Appeal
Claims 10-12, 34, 36, 37, 40, 41, 44-47, and 51-58 stand rejected
under 35 U.S.C. § 101 because the claimed invention is directed to non-
statutory subject matter. Final Action 6-7.
Claims 51-53 and 56-58 stand rejected under 35 U.S.C. § l 12(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. Final Action 7-9.
Claims 10, 11, 34, 36, 37, 40, 41, 44-47, 54, and 55 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Wong (US
Patent 6,592,044 Bl; issued July 15, 2003), Hazel (US Patent Application
Publication 2007 /0276765 Al; published November 29, 2007), and Gray
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Application 12/263,982
(US Patent Application Publication 2006/0186195 Al; published August 24,
2006). Final Action 10-14.
Claim 12 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Wong, Hazel, Gray, and Pavlov (US Patent 4,614,861;
issued September 30, 1986). Final Action 14-15.
Claims 53 and 58 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Wong, Hazel, Gray, and Routhenstein (US Patent
7, 195, 154 B2; issued March 27, 2007). Final Action 15-16.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed November 24, 2015), the Reply Brief
(filed October 17, 2016), the Answer (mailed August 18, 2016), and the
Final Action (mailed May 22, 2015) for the respective details.
35 U.S.C. §101 rejection
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101. 2 In the first step, we determine whether the claims are directed to one
or more judicial exceptions (i.e., law of nature, natural phenomenon, and
abstract ideas) to the four statutory categories of invention (i.e., process,
machine, manufacture, and composition of matter). Id. (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77-78 (2012))
("Mayo"). In the second step, we "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
2 Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
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Application 12/263,982
additional elements 'transform the nature of the claim' into a patent-eligible
application." Id. at 2355 (citing Mayo, 566 U.S. at 79, 78). In other words,
the second step is to "search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Id. (citing Mayo, 566 U.S. at 72-73).
First Step
Appellant contends that claimed invention is not directed to an
abstract idea because there is a "series of operations performed by the
portable consumer device, including accessing a primary PAN, creating a
secondary PAN based on the primary PAN, encrypting the PAN, and
providing both the secondary PAN and the encrypted primary PAN to a
merchant device, is very different from converting binary coded decimal to
pure binary, determining the optimal number of visits by a business
representative to a client, and calculating parameters indicating an abnormal
condition." Appeal Brief 9-10; see Final Action 6-7.
In the instant application, we find the invention is directed to an
abstract idea of "deriving a secondary or substitute account number based on
a primary number and encrypting at least a portion of the primary number,
which only involves performing calculations or manipulations of a set of
digits." Final Action 6-7. The claimed concept "is similar to concepts
relating to performing mathematical calculations, which have been found to
be abstract." Answer 12-13. Although the claims recite use of a processor,
we find the claims differ from the claims in Enfzsh where "the plain focus of
the claims ... [was] on an improvement to computer functionality itself, not
on economic or other tasks for which a computer is used in its ordinary
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capacity." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir.
2016). In contrast, the present claims utilize a processor and a non-
transitory computer readable medium as a tool to access and encrypt account
numbers wherein the function of the processor is not improved.
Accordingly, we find Appellants' arguments unpersuasive and find the
claims are directed to an abstract idea.
Second Step
Appellant argues "the claims are directed to 'significantly more' than
the abstract idea itself and, thus, comply with 35 U.S.C. § 101" because the
additional features 3 amount to more than an abstract idea. Appeal Brief
10-11.
Noting that "the two stages involve overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
3 For example, Appellant contends the steps of "accessing a primary Primary
Account Number (PAN)," "creating a secondary PAN based upon the
primary PAN by changing at least a middle portion of the primary PAN but
not a beginning portion of the primary PAN," "encrypting at least a portion
of the primary PAN using a key to yield an encrypted primary PAN," and
"providing the secondary PAN and the encrypted primary PAN but not the
primary PAN to a merchant device for a payment transaction" all include
additional features that ensure the claims amount to significantly more than
the alleged abstract idea. Appeal Brief 11.
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1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look
to whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery. See
Enfzsh, 822 F.3d at 1336.
Even accepting Appellant's argument that the claimed invention
"appl[ies] any potentially-alleged abstract idea in a very meaningful way
through the[] significant recited features," 4 there is a fundamental difference
between computer functionality improvements, on the one hand, and uses of
existing computers as tools to perform a particular task, on the other.
Indeed, the Federal Circuit applied this distinction in Enfzsh in rejecting a§
101 challenge at the step one stage in the Alice analysis because the claims
at issue focused on a specific type of data structure, i.e., a self-referential
table for a computer database, designed to improve the way a computer
carries out its basic functions of storing and retrieving data, and not on
asserted advances in uses to which existing computer capabilities could be
put. Enfish, 822 F.3d at 1335-36.
We find no parallel here between Appellant's claims and the claims in
Enfzsh (or Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859
(Fed. Cir. 2010) or SiRF Tech., Inc. v. Int'! Trade Comm 'n, 601F.3d1319
(Fed. Cir. 2010)), nor any comparable aspect in Appellant's claims that
4 See footnote 3.
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represents "an improvement to computer functionality." The alleged
advantages that Appellant touts do not concern an improvement to computer
capabilities but instead relate to an alleged improvement in applying
computer-based encryption wherein a computer is used as a tool in its
ordinary capacity to generate account numbers different from the Primary
Account Numbers or otherwise encrypted account numbers. Subsequently,
we sustain the Examiner's 35 U.S.C. § 101 rejection of claims 10-12, 34,
36, 37, 40, 44--47, and 51-58.
35 U.S.C. § 112 rejection
Claims 51, 52, 56 and 57
The Examiner finds: "Although paragraphs 60 and 37 of the
specification describe adjusting the values of the digits in the middle portion
of the PAN so that when a checksum calculation is performed, the checksum
value will be the same as the checksum of the original PAN, the
specification does not describe the specific steps performed by the portable
consumer device or computing device to achieve this result." Answer 18.
Appellant argues the steps of the claims are described in the specification
"explicitly, implicitly or inherently" to reasonably convey to those skilled in
the art that, as of the filing date sought, that Appellant was in possession of
the invention as now claimed. Appeal Brief 15. We find Appellant's
arguments persuasive. Examiner admits that the manipulation or encryption
of the account numbers is supported by the Specification and therefore the
encryption performed on the computing device or portable consumer device
is merely a result of employing the encryption on the device via the
processors, non-transitory computer readable storage mediums, etc. We
reverse the Examiner's 35U.S.C.§112 rejection of claims 51, 52, 56 and 57.
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Application 12/263,982
Claims 53 and 58
The Examiner finds: "[T]he specification does not describe the
manner in which the counter is used to change the middle portion of the
PAN with the same level of detail recited in claims 53 and 58. The
specification does not specifically recite that using the counter to change the
middle portion involves identifying a counter value, changing one or more
digits of the middle portion of the primary PAN based upon the counter
value, and updating the counter value." Answer 19-20. Appellant argues
the steps of the claims are described in the specification "explicitly,
implicitly or inherently" to reasonably convey to those skilled in the art that,
as of the filing date sought, that Appellant was in possession of the invention
as now claimed. Appeal Brief 16. We find Appellant's arguments
persuasive because Appellant cite to portions of both paragraphs 69 and 7 6
that support the claim language. We reverse the Examiner's 35 U.S.C. § 112
rejection of claims 53 and 58.
35 U.S.C. § 103 rejection
Appellant contends the obviousness rejection is improper because
"[t]he proposed combination of Wong, Hazel, and Gray . .. would require
modifications to the downstream entities of the systems of Wong and Hazel
to handle two account numbers instead of one. Such modifications would
render the modified systems of Wong and Hazel unsatisfactory for their
intended purpose of minimizing modifications to existing systems." Appeal
Brief 21. The Examiner finds Wong disclose a body, a processor, and a non-
transitory computer readable storage medium and also discloses utilizing an
algorithm that manipulates or encodes the account number. Answer 10-11.
The Examiner further finds "Wong does not specifically disclose encrypting
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at least a portion of the primary PAN using a key to yield an encrypted
primary PAN and providing the encrypted primary PAN but not the primary
PAN along with the secondary PAN." Answer 11. The Examiner relies
upon Hazel and Gray to address Wong's noted deficiency by finding that
"Hazel discloses encrypting at least a portion of the primary PAN using a
key to yield an encrypted primary PAN and providing the encrypted primary
PAN to a merchant device for a purchase transaction (Hazel i-fi-1 97-98, 100,
105-110, 118)" and "Gray discloses a consumer obtaining an encrypted
primary PAN and a consumer account number, and providing the encrypted
primary PAN but not the primary PAN along with a consumer account
number to a merchant device for a payment transaction (Gray i-fi-123, 32-34,
41)." Answer 12.
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Accordingly,
we do not find Appellant's argument persuasive and agree with the
Examiner's findings. "As our precedents make clear, ... the analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ." KSR Int 'l v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
We sustain the Examiner obviousness rejection of claim 10, as well as
claims 11, 34, 36, 37, 40, 44-47, 54, and 55 not separately argued. See
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Appeal Brief 21.
Appellant argues the obviousness rejections of claims 12, 53, and 58
are erroneous because Pavlov and Routhenstein fail to cure the deficiencies
of the Wong, Hazel and Gray combination. Appeal Brief21-22. We do not
find Appellant's argument persuasive because we did not find the noted
combination deficient. Accordingly, we sustain the Examiner's obviousness
rejections of claim 12, 53, and 58.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 10-12, 34, 36,
37, 40, 41, 44-47, and 51-58 is affirmed.
The Examiner's 35 U.S.C. § 112 rejection of claims 51-53 and 56-58
is reversed.
The Examiner's 35 U.S.C. § 103 rejections of claims 10-12, 34, 36,
37, 40, 41, 44-47, and 51-58 are affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
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