Ex Parte Makhotin

Patent Trial and Appeal Board

Oct 31, 2018

12964446 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/964,446 12/09/2010 Oleg Makhotin
66945 7590 11/02/2018
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.
79900-791138 (062310US) 4778
EXAMINER
MCINTYRE, CHARLES AARON
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLEG MAKHOTIN
Appeal2017-005162
Application 12/964,446 1
Technology Center 3600
Before: CARLA M. KRIVAK, JEREMY J. CURCURI, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3-5, 8-10, 12, 14, 18, 20-26, and 28-30. We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse.
1 Appellant identifies Visa International Service Association as the real party
in interest. App. Br. 3.
Appeal2017-005162
Application 12/964,446
BACKGROUND
THE INVENTION
According to Appellant, the invention relates to "A method and a
server computer are provided for authenticating a cardholder account."
Abstract.
Exemplary independent claim 1 is reproduced below.
1. A method for authenticating an account of a consumer,
the method comprising the steps of:
receiving, by a directory server computer, a first
identifier and a cryptogram from an access device, wherein the
first identifier is associated with the account, and wherein the
access device received the first identifier and the cryptogram
from a portable consumer device to initiate a transaction,
wherein the cryptogram was generated by the portable
consumer device for the transaction;
identifying, by the directory server computer, an issuer
computer associated with the account;
forwarding, by the directory server computer, the first
identifier and the cryptogram to the issuer computer for
validation;
receiving, by the directory server computer, a temporary
primary account number (TPAN) from the issuer computer,
wherein the temporary primary account number (TP AN) is
generated by the issuer computer and associated with a
validated form of the first identifier; and
sending, by the directory server computer, the temporary
primary account number (TP AN) to the access device, wherein
the temporary primary account number (TP AN) is subsequently
sent by the access device to the issuer computer via an acquirer
computer and a payment processing server computer for
authorization of the transaction, wherein the issuer computer
validates the temporary primary account number (TP AN),
wherein the transaction is authorized when the temporary
primary account number (TP AN) is validated, and
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Application 12/964,446
wherein the steps in the method are performed in the
order listed above.
REFERENCES AND REJECTION
Claims 1, 3-5, 8-10, 12, 14, 18, 20-26, and 28-30 stand rejected
under 35 U.S.C. § I03(a) as obvious over Gerber (US 2005/0246278 Al),
Maes (US 6,016,476), and Franklin (US 5,883,810). Final Act. 5-11.
DISCUSSION
The Examiner finds Gerber teaches or suggests "receiving, by a
directory server computer[] a first identifier and a cryptogram from an
access device []." Final Act. 5 ( citing Gerber ,r 77). Appellant argues "the
Examiner has not shown that the first identifier and cryptogram are received
by the directory server and forwarded to the issuer by that directory server."
App. Br. 11-12. Indeed, according to Appellant, "[n]one of the messages
associated with paragraph [0077] pass through the directory server 128."
App. Br. 12.
We are persuaded by Appellant's argument. Paragraph 77 of Gerber
refers to communication between a merchant and issuer financial institution
through a payment network. See Gerber ,r,r 7 6-77. The merchant sends an
authorization message along with additional information, including a
cryptogram. Gerber ,r 77. However, Gerber does not indicate in the cited
paragraphs that this cryptogram is sent to or received by a directory server.
Thus, we are inclined to agree with Appellant that the communication
referred to in paragraph 77 does not pass through the directory server.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1. For the same reasons we also do not sustain the
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Appeal2017-005162
Application 12/964,446
Examiner's rejection of independent claims 14, 20, and 21 which include
limitations of commensurate scope and were rejected on the same basis. See
Final Act. 5. The pending dependent claims fall with their respective
independent claims.
DECISION
The Examiner's rejection of claims 1, 3-5, 8-10, 12, 14, 18, 20-26,
and 28-30 is reversed.
REVERSED
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