Ex Parte Pinizzotto

Board of Patent Appeals and Interferences

Sep 7, 2010

10400102 (B.P.A.I. Sep. 7, 2010)

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.
10/400,102 03/26/2003 John Pinizzotto PENN01 4805
71924 7590 09/08/2010
JOHN PINIZZOTTO
1619 MIDLAND DRIVE
EAST MEADOW, NY 11554
EXAMINER
TROTTER, SCOTT S
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
09/08/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN PINIZZOTTO
____________
Appeal 2009-007989
Application 10/400,1021
Technology Center 3600
____________

Before HUBERT C. LORIN, JEAN R. HOMERE, and BIBHU R.
MOHANTY, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed on March 26, 2003. This application is a continuation in part of
application 09/534,681, filed March 24, 2000. The real party in interest is
John Pinizzotto. (App. Br. 2.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 3, 7, 9 through 13, 15 through
18, and 21 through 24. (App. Br. 2.) Claims 4 through 6, 8, 14, 19, and 20
have been cancelled. (Id.) We have jurisdiction under 35 U.S.C. § 6(b)
(2008).
We affirm.
Appellant’s Invention
Appellant invented a method and system for enabling secure purchase
transactions between numerous customer ordering terminals and merchant
stations. (Spec. 3, para. [008].) According to Appellant, each customer
ordering terminal employs an encryption module which encrypts a
customer’s card or check number, as well as the purchaser identification
code (“PIC”) or signature encoder. (Id.) The encrypted information is
entered into the customer’s personal computer (“PC”), whereby the PC
sends the customer ordering information over the Internet to a processing
center. (Id.)

Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A secured purchase transaction system comprising:

a plurality of customer ordering terminals, each of said
terminals having a purchaser account identification data reader and a
purchaser personal identification data entry means,

an encryption module at each of said customer ordering
terminals to encrypt purchaser account identification data and
purchaser personal identification data to thereby provide encrypted
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personal identification information to a microprocessor disposed at
each of said customer ordering terminals, each said microprocessor
being coupled to an output of a corresponding encryption module to
couple said encrypted personal identification information to the
Internet,

a processing center,

means to transmit customer ordering information including said
encrypted personal identification information, from said
microprocessor over the Internet, to said processing center,

the customer ordering information including a designated
merchant identification,

a decryption module at said processing center, said decryption
module providing the purchaser account identification data and
purchaser personal identification data,

whereby said processing center can confirm payment capability,

said processing center, in response to payment capability
confirmation, generating a first statement to the designated merchant
providing said customer ordering information and to confirm
purchaser payment capability,

a plurality of merchant stations, each of said merchant stations
corresponding to a separate designated merchant, each of said stations
adapted to receive said first statement addressed to the designated
merchant, and

means at said processing center to transmit said first statement
to the designated merchant over the Internet,

said processing center maintaining said purchaser account
identification data and said purchaser personal identification data
private from said designated merchant.

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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Lum US 6,312,175 B1 Nov. 6, 2001
DeLaHuerga US 6,408,330 B1 Jun. 18, 2002
Rosen US 7,028,187 B1 Apr. 11, 2006
(filed Aug. 21, 1998)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1, 2, 9 through 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Rosen and Lum.3
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Rosen, Lum, and Admitted Prior Art.
Claims 3, 7, 10, 15, 18, and 21 through 24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Rosen,
Lum, and Official Notice.

3 In the Final Rejection entered September 27, 2007, the Examiner
incorrectly indicated that dependent claims 15 and 18 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Rosen and
Lum. (Fin. Rej. 3; Supp. App. Br. 10.) Further, the Examiner clarified in the
Answer that dependent claims 15 and 18 only stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Rosen, Lum, and
Official Notice. (Ans. 2-3.) Since Appellant acknowledged the Examiner’s
typographical error on the record before us (Reply Br. 3), we therefore
presume that the Examiner only rejected claims 1, 2, and 9 through 13 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Rosen and
Lum.
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Appellant’s Contentions
Appellant contends that Rosen’s disclosure of money modules held by
corresponding banks that ensure secure monetary exchange has nothing to
do with the claimed invention. (Supp. App. Br. 16.) Further, Appellant
argues that Rosen discloses storing and transferring electronic money,
whereas the claimed invention is directed to a system for securely capturing
purchase document details and associated customer data. (Id.) Additionally,
Appellant alleges that Rosen’s disclosure of establishing communication
among banking modules does not teach authenticating a server while the
customer remains unauthenticated. (Id.) In particular, Appellant contends
that the claimed system obviates the need for connection of the encryption
module to a keyboard, thereby eliminating communication of security-
compromising keystrokes to a central processing unit (“CPU”.) (Id.)
Appellant also argues that Lum discloses a terminal integrated with a
keyboard that is susceptible to attack by fraudsters, hackers, or e-hijackers,
whereas the claimed terminals possess intelligence and capabilities to
encrypt information captured at an individual residence and only transmit
encoded information to the processing center. (Id. at 16-17.) Therefore,
Appellant alleges that Lum’s device cannot be regarded as a secure device
and cannot be readily combined with Rosen’s apparatus. (Id. at 17.)
Appellant also contends that the proffered declarations support the
conclusion that the claimed invention solves a long-felt need in e-commerce
for the enablement of secure transactions at the site of capturing confidential
purchaser information. (Id. at 26-27.)

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Examiner’s Findings and Conclusions
The Examiner finds that the claimed “module” may be construed as
software. (Ans. 18.) In particular, the Examiner finds that since the terminal
microprocessor is coupled to the output of the encryption module, it would
have been obvious to execute the module on the terminal microprocessor.
(Id.) Further, the Examiner finds that Rosen’s disclosure of agents that act
as intermediaries between a customer and merchant teaches a “processing
center” that can function to protect client information from the merchant,
thereby allowing an anonymous purchase. (Id.) Additionally, the Examiner
finds that the combined disclosures of Rosen and Lum disclose prior art
elements that perform their ordinary functions to predictably result in the
claimed invention. (Id. at 18-19.) The Examiner also finds that the claimed
invention does not explicitly recite a limitation pertaining to authenticating a
server while the customer remains authenticated. (Id. at 19.)

II. ISSUE
Has Appellant shown that the Examiner erred in concluding that the
combination of Rosen and Lum renders independent claim 1 unpatentable?
In particular, the issue turns on whether:
(a) the proffered combination teaches “an encryption module at
each of said customer ordering terminals to encrypt purchaser account
identification data and purchaser personal identification data to thereby
provide encrypted personal identification information to a microprocessor
disposed at each of said customer ordering terminals,” as recited in
independent claim 1; and
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(b) Appellant has provided sufficient evidence of secondary
considerations of non-obviousness to rebut the Examiner's prima facie case
of obviousness.

III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.
Rosen
1. Rosen generally relates to a system for facilitating open
electronic commerce and, in particular, utilizing tamper-proof electronic
units, or trusted agents, in conjunction with money modules to create a
secure transaction for the buyer and seller of electronic merchandise and
services. (Abst.; col. 1, ll. 22-27.) Rosen discloses that both the customer
and merchant trusted agents are capable of establishing a first
cryptographically secure session, whereas the money modules are capable of
establishing a second cryptographically session. (Abst.; col. 2, ll. 28-30.)
2. Rosen’s figure 1 depicts trusted agents (2, 4) that are a
combination of hardware and software components. (Col. 4, ll. 13-16.)
Rosen discloses that the trusted agents are tamper-proof and contain secure
protocols which work in conjunction with a money module (6) to
synchronize secure payment to delivery. (Id. at ll. 16-18.)
3. Rosen’s figure 3 depicts that the trusted agent (120) is
embedded in a transaction device (122). (Col. 8, ll. 16-17.) In particular,
Rosen discloses that the transaction device is composed of three major
components: a host processor (124), a trusted agent (120), and a money
module (6). (Id. at ll. 17-20.) Rosen’s figure 3 also depicts the functional
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components of the host processor (124). (Id. at ll. 26-27.) Rosen discloses
that the host processor (124) is capable of providing a communications
function (128). (Id. at ll. 27-30.) In particular, Rosen discloses that the
communications function (128) establishes connection between two
transaction devices (122), or connects a transaction device to a network for
indirect connection to another transaction device or trusted server. (Id. at ll.
36-40.)
4. Rosen discloses that if a purchase is made utilizing a trusted
agent, anonymity can be accomplished if the customer pays with electronic
money at the time of order or receipt of the merchandise. (Col. 7, ll. 21-26.)
Further, Rosen discloses that since the customer has a secure receipt, the
customer can feel secure because it will be difficult to be defrauded. (Id. at
ll. 30-32.)
Lum
5. Lum generally relates to a keyboard input device utilized as a
Point-of-Sale (“POS”) system and, in particular, an integrated keyboard
input device that is combined with input peripheral devices, such as an
optical scanner, to form a single integrated unit. (Abst.; col. 1, ll. 10-16.)

V. ANALYSIS
Claim 1
Independent claim 1 recites, in relevant part, “an encryption module at
each of said customer ordering terminals to encrypt purchaser account
identification data and purchaser personal identification data to thereby
provide encrypted personal identification information to a microprocessor
disposed at each of said customer ordering terminals.”
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We first consider the scope and meaning of the term “an encryption
module,” which must be given the broadest reasonable interpretation
consistent with Appellant’s disclosure, as explained in In re Morris,
127 F.3d 1048 (Fed. Cir. 1997):
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
Id. at 1054. See also Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating that
“claims must be interpreted as broadly as their terms reasonably allow.”)
Appellant’s Specification states that:
security is provided by an arrangement within each customer ordering
encryption terminal 10 such that the personal identification
information is encrypted by an encryption module 22 prior to being
entered into the memory of the personal computer 24.

(Spec. 6, para. [0023].)
Appellant’s Specification further states that:
the encryption module 22 will have to provide pass through
capability for the keyboard input to the PC. In that
embodiment, the encryption module 22 would therefore be
plugged into the keyboard port of the [PC]. It is presently
contemplated that it would be more user friendly to incorporate
the encryption module 22 and card swipe reader 42 in a single
unit so that the user will simply have to unhook the keyboard
from the PC and insert the combined module between [the]
keyboard and PC. The encryption module can also be
incorporated into the keyboard.

(Spec. 10, para. [0038]) (emphasis added.)
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Our reviewing court states, “the ‘ordinary meaning’ of a claim term is
its meaning to the ordinary artisan after reading the entire patent.” Phillips
v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005).
Upon reviewing Appellant’s Specification, we find that the claimed
term “an encryption module” may be broadly, but reasonably construed as
module that is incorporated into a customer ordering terminal or keyboard
that captures and encodes customer information.
As detailed in the Findings of Fact section above, Rosen discloses
tamper-proof electronic units, or trusted agents, that are capable of
establishing a cryptographically secure session when a buyer purchases
merchandise or services from a seller. (FF 1.) In particular, Rosen discloses
that a customer trusted agent amounts to a combination of hardware and
software components that contain secure protocols and, further, works in
conjunction with a money module to synchronize secure payment. (FFs 1 &
2.) Rosen also discloses that the customer trusted agent is embedded in a
transaction device. (FF 3.) Rosen discloses that the transaction device also
contains a host processor which provides a communications function to
connect the transaction device to a network. (Id.) Additionally, Rosen
discloses that a customer trusted agent allows a customer to remain
anonymous when completing a secure purchase transaction. (FF 4.)
We find that Rosen’s disclosure teaches a customer trusted agent
embedded in a transaction device that utilizes secure protocols to establish a
cryptographically secure session, whereby the payment data pertaining to a
customer can remain confidential when the customer purchases goods or
services from a merchant. We also find that Rosen’s disclosure teaches that
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the customer trusted agent works in conjunction with a host processor to
connect to a network (e.g., Internet).
Next, Lum discloses an integrated keyboard input device that includes
input peripheral devices, such as an optical scanner. (FF 5.) We find that
Lum’s disclosure teaches a keyboard integrated with an optical scanner that
inputs or captures data. In summary, we find that an ordinarily skilled
artisan would have readily appreciated integrating Rosen’s customer trusted
agents that utilize secure protocols to establish a cryptographically secure
session, with Lum’s keyboard integrated with an optical scanner, in order to
capture customer payment data, encrypt such data and, provide the
encrypted data to a host processor prior to transmitting such data over a
network. Therefore, consistent with our claim construction above, we find
that the combination of Rosen and Lum teaches the disputed limitation.
Additionally, we are not persuaded by Appellant’s argument that
enclosed declarations support the conclusion that the claimed invention
solves a long-felt need in e-commerce for the enablement of secure
transactions at the site of capturing confidential customer information.
(Supp. App. Br. 26-27.) To establish a long-felt need, three elements must
be proven. First, the need must have been a persistent one that was
recognized by ordinarily skilled artisans. In re Gershon, 372 F.2d 535, 538
(CCPA 1967). Second, the long-felt need must not have been satisfied by
another before Appellant's invention. Newell Cos., Inc., v. Kenney Mfg. Co.,
864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key
element, there was no long-felt need or, indeed, a problem to be solved
….”). Third, the invention must, in fact, satisfy the long-felt need. In re
Cavanaugh, 436 F.2d 491, 496 (CCPA 1971).
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The record before us shows that the prior art devices, at least in part,
satisfy the long-felt need set forth by Appellant in the declarations filed
under 37 C.F.R. § 1.132. In particular, Rosen addresses the problem of
protecting confidential purchaser information by utilizing a customer trusted
agent embedded in a transaction device to establish a secure cryptographic
session with a merchant trusted agent before exchanging a customer’s
payment data. (FFs 1, 3, & 4.) Therefore, we find that Rosen’s prior art
device satisfies, at least in part, the recognized long-felt need in the industry
of enabling secure transactions at customer ordering terminals, or the site of
capturing confidential customer information. Accordingly, based on the
totality of the record before us, we do not find that the evidence provided in
the declarations rebuts the Examiner's prima facie case of obviousness. It
follows that Appellant has not shown that the Examiner erred in concluding
that the combination of Rosen and Lum renders independent claim 1
unpatentable.

Claims 2, 3, 7, 9 through 13, 15 through 18, and 21 through 24
Appellant does not provide separate arguments for patentability with
respect to independent claims 1, 9, 11, and 16, and dependent claims 2, 3, 7,
10, 12, 13, 15, 17, 18, and 21 through 24. (Supp. App. Br. 17-25.)
Therefore, we select independent claim 1 as representative of the cited
claims. Consequently, Appellant has not shown error in the Examiner’s
rejection of independent claims 1, 9, 11, and 16, and dependent claims 2, 3,
7, 10, 12, 13, 15, 17, 18, and 21 through 24, for the reasons set forth in our
discussion of independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

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VI. CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims 1
through 3, 7, 9 through 13, 15 through 18, and 21 through 24 as being
unpatentable under 35 U.S.C. § 103(a).

VII. DECISION
We affirm the Examiner’s decision to reject rejecting claims 1 through
3, 7, 9 through 13, 15 through 18, and 21 through 24.
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

rwk

JOHN PINIZZOTTO
1619 MIDLAND DRIVE
EAST MEADOW, NY 11554