Ex Parte Karaki

Patent Trial and Appeal Board

Oct 30, 2018

14508664 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/508,664 10/07/2014 Mohammad Karaki
30448 7590 11/01/2018
AKERMANLLP
P.O. BOX 3188
WEST PALM BEACH, FL 33402-3188
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.
10505-3 1591
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
ip@akerman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMMAD KARAKI
Appeal2017-007634
Application 14/508,664
Technology Center 3600
Before ERIC B. CHEN, JOSEPH P. LENTIVECH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1, 4--8, 11-14, and 17-20. Claims 2, 3,
9, 10, 15, and 16 are objected to as being dependent upon a rejected base
claim, but would be allowable if rewritten in independent form including all
of the limitations of the base claim and any intervening claims. Final Act. 2.
We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We reverse.
Appeal2017-007634
Application 14/508,664
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention generally relates to a transaction verification
system. Spec. 1. Claim 14, which is illustrative of the claimed invention,
reads as follows:
14. A method, comprising:
storing, by one or more processors, a plurality of
comparison codes at one or more memory units;
receiving, by the one or more processors, an indication that
a card user is attempting to perform a transaction with a payment
card;
following reception of the indication, transmitting, by the
one or more processors, a challenge code for reception by a card
user device, the challenge code configured to interrogate the card
user device for a first verification code;
following transmittal of the challenge code, receiving, by
the one or more processors, the first verification code from the
card user device, wherein the first verification code is selected,
by the card user device, from a plurality of verification codes
stored by the card user device, wherein the first verification code
is selected, by the card user device, according to a predefined
manner;
selecting, by the one or more processors, a first
comparison code from the plurality of comparison codes
according to the predefined manner;
comparing, by the one or more processors, the first
comparison code to the first verification code received from the
card user device; and
following a determination that the first comparison code
matches the first verification code, transmitting, by the one or
more processors, a verification signal configured to indicate that
the transaction has been verified.
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Application 14/508,664
References
The Examiner relies on the following prior art in rejecting the claims:
McKenzie
Kirillin et al.
US 2012/0132706 Al
US 2013/0159195 Al
Rejection1
May 31, 2012
June 20, 2013
Claims 1, 4--8, 11-14, and 17-20 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of McKenzie and Kirillin. Final
Act. 21-26.
ANALYSIS 2
Claim 14
Appellant contends the combination of McKenzie and Kirillin fails to
teach or suggest "wherein the first verification code is selected, by the card
user device, according to a predefined manner" and "selecting, by the one or
more processors, a first comparison code from the plurality of comparison
codes according to the predefined manner," as recited in claim 14. Br. 17-
19. Appellant argues the Examiner "does not provide any argument (let
alone support) for how the proposed combination of McKenzie and Kirillin
1 The rejection of claims 1-20 under 35 U.S.C. § 101 has been withdrawn.
Ans. 4.
2 Claim 3 recites "The transaction verification system of Claim 3 ."
(Emphasis added). In the event of further prosecution, or prior to the
issuance of a Notice for Allowance, the Examiner should consider whether
to reject claim 3 under 35 U.S.C. § 112(d) for failing to contain a reference
to a claim previously set forth and then specify a further limitation of the
subject matter claimed.
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Appeal2017-007634
Application 14/508,664
would somehow result in the alleged 'first verification code' of Kirillin and
the alleged 'first comparison code' of McKenzie being selected in the same
'predefined manner,"' as required by claim 14. Br. 17-18. We agree.
The Examiner finds McKenzie teaches that a bank can send a
customer and a merchant a randomly generated transaction code that can be
displayed on a device of each party and compared by the merchant to
determine whether the bank recognizes the customer and has approved the
transaction. Ans. 6-7 ( citing McKenzie ,r,r 18, 20). The Examiner finds:
This [ teaching of McKenzie is] similar to the Appellant's
specification, which states, "Comparison codes 42 represent any
code that may be compared to a verification code 106 in order to
verify a transaction" (p.7). "For example, merchant verification
device 62 may store and communicate challenge codes 38, store
and select comparison codes 42, and verify the transactions by
comparing comparison codes 42 to verification codes 106. In
such an example, verification entity device 14 may approve the
transaction ( or otherwise allow the transaction to occur) if the
merchant verification device 62 verifies the transaction and
communicates a verification signal ( such as verification signal
194) to the verification entity device 14 (p.25-26). Therefore,
the Examiner is interpreting McKenzie as disclosing, "selecting,
by the one or more processors, a first comparison code from the
plurality of comparison codes according to the predefined
manner."
Ans. 7-8. The Examiner further finds:
Kirillin teaches, "The mobile device 402 includes a
cryptographic engine 414 that contains algorithms and/ or devices
to generate at least two keys, such as a hash code and a
symmetrical key (SYMM). The cryptographic engine 414
comprises a code generator 418 and a key generator 420 to
respectively generate the hash code and the symmetrical key"
(para.58). This is similar to the Appellant's specification, which
states, "Verification codes 106 represent any code that may be
used to identify the card user as the approved user of the payment
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Appeal2017-007634
Application 14/508,664
card" (p.13-14). "[T]he card user device 86 may receive (and
store) the verification management application 46b the first time
it receives the challenge code 3 8 ( or every time it receives the
challenge code 3 8). As another example, verification
management application 46b may be communicated to the card
user device 86 in the same message as a challenge code 38, in a
message prior to the communication of the challenge code 3 8, or
in a message after the communication of the challenge code 38"
(p .13-14). Therefore, the Examiner is interpreting Kirillin as
teaching, "wherein the first verification code is selected, by the
card user device, according to a predefined manner."
Ans. 8-9. We agree with Appellant that the Examiner's findings are
insufficient to show that McKenzie's transaction code (e.g., a comparison
code) and Kirillin's at least two keys (e.g., a first verification code) are
selected according to the same predefined manner, as required by claim 14.
Instead, McKenzie teaches that the transaction code is randomly generated
(McKenzie ,r,r 18, 20) while Kirillin teaches generating the keys by inputting
a symmetrical key and a random number as variables into an algorithm
(Kirillin ,r 58). As such, we are constrained by the record to not sustain the
Examiner's rejection of claim 14; independent claims 1 and 8, which recite
similar limitations, and claims 4--7, 11-13, and 17-20, which depend from
claims 1, 8, and 14.
DECISION
We reverse the Examiner's rejections of claims 1, 4--8, 11-14, and
17-20.
REVERSED
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