Ex Parte Stolfo

Board of Patent Appeals and Interferences

Nov 30, 2010

09713506 (B.P.A.I. Nov. 30, 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.
09/713,506 11/15/2000 Salvatore J. Stolfo 062105-0023 4711
9629 7590 11/30/2010
MORGAN LEWIS & BOCKIUS LLP
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
11/30/2010 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte SALVATORE J. STOLFO 8
___________ 9
10
Appeal 2009-009580 11
Application 09/713,506 12
Technology Center 3600 13
___________ 14
15
Before HUBERT C. LORIN, ANTON W. FETTING, and 16
JOSEPH A. FISCHETTI, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL1 19

1 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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STATEMENT OF THE CASE2 1

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed April 29, 2008) and the Examiner’s Answer (“Ans.,” mailed
October 7, 2008).
Salvatore J. Stolfo (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1-35, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b) (2002). 5
The Appellant invented a way of securely ordering and re-ordering 6
products over a network without revealing true identities or compromising 7
financial information (Specification 1:Field of the Invention). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. In a communications network-based system, a method for 12
securely processing recurrent consumer transactions 13
comprising: 14
[1] providing merchant-specific proxy financial account 15
information to a user, 16
the proxy financial account information valid for multiple 17
transactions at a single merchant only; 18
[2] maintaining a database 19
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of the merchant-specific proxy financial account 1
information; 2
[3] receiving a request for transaction approval from a 3
merchant, 4
the request including a merchant identifier and a user's 5
proxy financial account information; and 6
[4] querying the database 7
to determine if the proxy financial account information is 8
valid 9
for the merchant seeking transaction approval. 10
The Examiner relies upon the following prior art: 11
Hogan US 2002/0035548 A1 Mar. 21, 2002
Claims 1-35 stand rejected under 35 U.S.C. § 102(e) as anticipated by 12
Hogan. 13
ISSUES 14
The issue of anticipation turns on whether Hogan describes "merchant-15
specific," proxy financial information. 16
FACTS PERTINENT TO THE ISSUES 17
The following enumerated Findings of Fact (FF) are believed to be 18
supported by a preponderance of the evidence. 19
Facts Related to Claim Construction 20
01. The disclosure contains no lexicographic definition of 21
“merchant-specific proxy financial information.” 22
23
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Facts Related to Appellant’s Disclosure 1
02. In a preferred embodiment, the present invention relates to a 2
method for securely processing recurrent consumer transactions in 3
a communications network-based system. Merchant-specific 4
proxy financial account information is provided to a user that is 5
valid for transactions at a single merchant only. Such "merchant 6
specific" proxy financial information only authorizes a single 7
merchant, and no other merchant, to process payments using the 8
"merchant specific" proxy financial information. Specification 9
4:5-10. 10
03. The present invention relates to the use of "one merchant only," 11
or "merchant-specific," proxy financial information, in support of 12
a recurrent consumer transaction. The merchant specific proxy 13
financial information is reusable by a distinct merchant on a 14
recurrent basis, but by no other merchant. Specification 5:20-23. 15
04. In one embodiment, the "merchant specific" proxy financial 16
account information is a proxy credit card account number valid 17
for purchases at a single merchant only. In another embodiment, 18
the proxy financial account information is a proxy billing address 19
and/or a proxy Address Verification System (AVS) string which is 20
valid for transactions at a single merchant only. Specification 21
6:16-23. 22
23
24
25
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Facts Related to the Prior Art 1
Hogan 2
05. Hogan is directed to conducting secure financial transactions 3
over a communications network and more particularly to a method 4
and system for transmitting payments securely over a computer 5
network, such as the Internet, and for transmitting sensitive 6
information securely over public communication channels. Hogan 7
¶ 0001. 8
06. Hogan assigns a "pseudo" account number to a customer and 9
cryptographically links it to a consumer's payment account 10
number. The pseudo account number appears to be an actual 11
payment account number to a merchant. Hogan’s pseudo account 12
number is used by the customer instead of the real account number 13
for all of his or her on-line financial transactions. Hogan ¶ 0006. 14
07. Once a secure payment application (SPA) has been installed on 15
a cardholder's computer, the cardholder preferably uses the SPA 16
for all Internet payments and the SPA provides the cardholder's 17
pseudo account number for all Internet transactions. Hogan ¶ 18
0050. 19
20
ANALYSIS 21
We commend the Appellant for the succinct and targeted reasoning 22
provided. We agree with the Appellant that as the rejection is under 23
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anticipation, and Hogan does not describe “merchant-specific proxy 1
financial information,” the Examiner failed to present a prima facie case. 2
Although there is no lexicographic definition for this phrase (FF 01), the 3
Specification unambiguously requires that such information is for one 4
merchant only and is unusable by any other merchant. FF 03. The 5
embodiments presented in the Specification are consistent with this 6
requirement. FF 02 and 04. 7
The Examiner found that Hogan’s pseudo-account numbers described 8
such merchant-specific proxy financial information. Ans. 3 and 5. Hogan’s 9
pseudo account number is used by the customer instead of the real account 10
number for all of his or her on-line financial transactions. FF 06 and 07. If 11
Hogan’s pseudo account number is used by the customer instead of the real 12
account number for all of his or her on-line financial transactions, then the 13
pseudo account number is used by more than one merchant. The Examiner 14
did not make any findings otherwise, but instead did not respond to this 15
directly. We must agree the Examiner failed to present a prima facie case of 16
novelty. 17
CONCLUSIONS OF LAW 18
Rejecting claims 1-35 under 35 U.S.C. § 102(e) as anticipated by Hogan 19
is in error. 20
DECISION 21
To summarize, our decision is as follows. 22
• The rejection of claims 1-35 under 35 U.S.C. § 102(e) as anticipated 23
by Hogan is not sustained. 24
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1
REVERSED 2
3
4
5
mev 6
7
Address 8
MORGAN LEWIS & BOCKIUS LLP 9
1111 PENNSYLVANIA AVENUE NW 10
WASHINGTON DC 20004 11