Ex Parte Mayo et al

Patent Trial and Appeal Board

Jun 10, 2016

13341072 (P.T.A.B. Jun. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/341,072 12/30/2011
20350 7590 06/14/2016
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Richard Mayo
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.
90850-00061 OUSCON-823923 1040
EXAMINER
WALSH, DANIEL I
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
06/14/2016 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
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD MAYO, GLEN SGAMBATI, and
ROBERT PERROTTA1
Appeal2014-009637
Application 13/341,072
Technology Center 2800
Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
BRIAND. RANGE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to an identity verification switch
and associated methods, systems, and machine-readable media. E.g., Spec.
i-f 7; Claims 1, 8, 14, and 25. Claim 1 is reproduced below from page 12
(Claims Appendix) of the Appeal Brief:
1 According to the Appellants, the real party in interest is Early Warning
Services, LLC. App. Br. 3.
Appeal2014-009637
Application 13/341,072
1. A method comprising:
electronically receiving at an identity verification switch system
from an inquirer a request to verify an identity of an individual
initiating a transaction, the request including a plurality of data
elements representing account information for an account
subject to the transaction and identity information for the
individual initiating the transaction;
electronically selecting, with the identity verification switch
system and based on the request, a verifying financial institution
from one or more participating financial institutions;
electronically forwarding the request from the identity
verification switch system to the verifying financial institution,
wherein the verifying financial institution verifies the account
information and the identity information of the request against
stored data of the verifying financial institution;
electronically receiving at the identity verification switch system
from the verifying financial institution an answer including
results of verification for each of the plurality of data elements
of the request, the answer comprising a plurality of data elements
corresponding to the plurality of data elements of the request, the
answer further compnsmg a separate indication for each data
element whether each data element has been verified against the
data electronically stored by the verifying financial institution;
and
electronically returning the answer with the plurality of data
elements from the identity verification switch system to the
inquirer, for the inquirer to assess the individual data elements in
the answer to determine the risk of completing the transaction, to
complete the transaction in response to the determined risk being
accepted by the inquirer, and to cancel the transaction in
response to the determined risk not being accepted by the
mqmrer.
ANALYSIS
Claims 1-25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Sandro (US 7,004,382 B2, issued Feb. 28, 2006) in view of Tidwell et
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Application 13/341,072
al. (US 2005/0125360 Al, published June 9, 2005).2 The Appellants argue
independent claims 1, 8, 14, and 25 as a group. We select claim 1 as
representative of the independent claims, and claims 8, 14, and 25 will stand
or fall with claim 1. The Appellants include a separate section in the Appeal
Brief for "various dependent claims," see App. Br. 10-11, which we also
address below. Dependent claims for which no separate argument is
presented will stand or fall with claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejection. Accordingly, we affirm the rejection for reasons set forth below
and in the Examiner's Answer. See generally Ans. 3-13.
The Examiner finds, inter alia, that Sandro teaches each element of
claim 1 except that, rather than receiving an answer that comprises "a
separate indication for each data element," as recited by claim 1, Sandro
provides an answer that includes "probability [values] ... that are operable
to be used by the teller to determine whether to validate the check." Ans. 5.
The Examiner also finds that Sandro's probability values constitute "more
than just a yes/no answer" as to whether a payment (such as a check) should
be validated, and that Sandro "teaches that risk based modeling, check
authorization systems, signature verifications systems, etc. are known to be
used to determine whether checks are valid/to be cashed." Id. The
Examiner concludes that, "[t]hough Sandro teaches different scoring and not
2 The Examiner also rejects claims 1-25 over Tidwell in view of Sandro;
i.e., the same references in reverse order. The order of the references,
however, is immaterial to the issues before us.
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Appeal2014-009637
Application 13/341,072
how the scoring is broken down (calculations on how it is obtained), it
would have been obvious to one of ordinary skill in the art that calculations
were performed to come up with the percentages .... " Id.
The Examiner finds that Tidwell teaches a verification request that
"includes a plurality of data elements representing account and identity
information and that the answer has corresponding data elements
corresponding to the plurality of data elements of the request ... that are
used to calculate a homogenous overall score." Id. at 5---6. The Examiner
further finds that, "[ w ]hile the individual data elements scores are calculated
... only the final result is communicated to the inquirer." Id. at 6.
The Examiner concludes:
Since the data elements of the request are already processed by
the prior art in determining whether to authorize the transaction
. . . the Examiner maintains that merely displaying the
intermediate calculations (corresponding data elements and their
indications/scores) would involve only routine skill in the art.
One might have been motivated to provide the separate
indications for each elements of the request (as opposed to just a
homogenous score/YES/NO or limited data element indications)
in order to provide more details about the
authentication/authorization process to the requesting party. The
Examiner maintains that merely displaying/communicating
data/information that is already calculated as part of the
authentication process, would have been obvious to one of
ordinary skill in the art to display more detailed information to
the requestor, for example.
Id. at 12.
The Appellants acknowledge that Sandro and Tidwell provide
probabilities or answers that give advice as to whether a transaction should
be permitted. Id. However, because information provided to the requester
in Sandro and Tidwell is essentially a conclusion or recommendation based
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Application 13/341,072
on aggregated data, rather than "a separate indication for each data element"
as recited by claim 1, the Appellants assert that "[ n ]one of the cited
references teach or suggest" that limitation. See id. at 8-10.
We are not persuaded by that argument. "[T]he [obviousness]
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."
See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). Here, as
discussed above, the Examiner makes specific findings as to why it would
have been obvious to provide "a separate indication for each data element"
in view of the teachings of Sandro and Tidwell. The Appellants' argument
does not meaningfully address the Examiner's obviousness rationale and
fails to persuade us of reversible error in the Examiner's rejection of claim 1.
The Appellants purport to argue claims 5-7, 11-13, and 16-18
separately. See App. Br. 10-11. Those claims "recite additional details of
the answer provided by the verifying institution, such as 'positive
indications,' 'negative indications,' and 'cautionary indications."' Id. While
acknowledging that the Examiner relies on Figure 4 of Tidwell for the
disclosure of those features, the Appellants' argument consists of expressing
general disagreement with the Examiner and explaining the purpose of those
indications, without providing any explanation as to why the Examiner's
reliance on Figure 4 is erroneous. Id. at 11. That argument is not
persuasive. See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312,
1320 (Fed. Cir. 2006) ("[M]ere statements of disagreement ... as to the
existence of factual disputes do not amount to a developed argument."); see
also In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("it has long been the
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Application 13/341,072
Board's practice to require an applicant to identify the alleged error in the
examiner's rejections"); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art" is unpersuasive).
Accordingly, we affirm the Examiner's rejection of claims 5-7, 11-13, and
16-18.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 1-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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