Ex Parte Williams

Patent Trial and Appeal Board

Nov 28, 2018

10654733 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/654,733 09/04/2003
58467 7590 11/30/2018
MHKKG/Oracle (Sun)
P.O. BOX 398
AUSTIN, TX 78767
FIRST NAMED INVENTOR
Emrys J. Williams
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.
5681-20500 7364
EXAMINER
AGWUMEZIE, CHINEDU CHARLES
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
patent_docketing@intprop.com
ptomhkkg@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte EMRYS J. WILLIAMS
Appeal2017-007824
Application 10/654, 733
Technology Center 3600
Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and
NABEEL U. KHAN, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 6-10, 14, 15, and 40-49. Appellant has cancelled claims 3-5,
11-13, 24, 25, 32, and 38; and claims 16-23, 26-31, 33-37, and 39 have
been withdrawn from consideration. App. Br. 20-22. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellant indicates the real party in interest is Oracle America, Inc., a
wholly owned subsidiary of Oracle International Corporation. App. Br. 2.
Appeal2017-007824
Application 10/654,733
Illustrative Claim
Illustrative claim 1 under appeal read as follows ( emphasis,
formatting, and bracketed material added):
1. An apparatus for use in transactions, comprising:
[A.] non-volatile memory that simultaneously stores a set of multiple
identifiers associated with a same customer account, wherein
said multiple identifiers are also known to an agency providing
said customer account to a customer,
[B.] a processor configured to select,for each of a plurality of
transactions across a plurality of merchants and involving the
same customer account, a respective identifier from said
simultaneously-stored set of multiple identifiers, the respective
selected identifier for use with the respective transaction,
wherein the processor is configured to select, for each of the
plurality of transactions, said respective identifier from said
simultaneously-stored set of multiple identifiers such that
[i.] different ones of the of the simultaneously-stored set of
multiple identifiers are selected/or at least some of the
plurality of transactions and
[ii.] at least some identifiers of the simultaneously-stored set of
multiple identifiers are selected for more than one of
the plurality of transactions and for more than one of
the plurality of merchants, and
[C.] a communications facility configured to communicate with
respective terminals of the plurality of merchants, wherein the
communications facility is configured to transmit, for each of
the plurality of transactions, the respective selected identifier to
the respective terminal through the communications facility.
2
Appeal2017-007824
Application 10/654,733
Flitcroft et al.
Palomo et al.
Hasumi et al.
Pitroda
References2
US 6,636,833 B 1 Oct. 21, 2003
US 2003/0120527 Al June 26, 2003
US 2004/0059682 Al Mar. 25, 2004
US 2005/0247777 Al Nov. 10, 2005
Rejections3
A.
The Examiner rejected claims 1, 2, 7, 9, 10, 14, 15, 40, 43, 44, and
47--49 under 35 U.S.C. § 103 as being unpatentable over the combination of
Flitcroft and Hasumi. Final Act. 4--8.
For this rejection, Appellant presents arguments for claims 1 and 14.
App. Br. 7-11 and 13-14. Appellant argues claims 9 and 15 by reference to
the arguments for claim 1. App. Br. 11-13. Appellant argues claims 48 and
49 by reference to the arguments for claim 14. App. Br. 14. Appellant does
not present separate arguments for claims 2, 7, 9, 10, 15, 40, 43, 44, and 47-
49. Except for our ultimate decision, we do not address claims 2, 7, 9, 10,
15, 40, 43, 44, and 47--49 further herein.
2 All citations herein to these references are by reference to the first named
inventor only.
3 All citations herein to the "Final Action" are to a Final Action mailed on
June 23, 2016.
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Application 10/654,733
B.
The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Flitcroft, Hasumi, and Palomo. Final
Act. 8-9.
Appellant's Appeal Brief does not present arguments for claim 6.
See 37 C.F.R. § 4I.37(c)(l)(iv) (2017)("Except as provided for in§§ 41.41,
41.47 and 41.52, any arguments or authorities not included in the appeal
brief will be refused consideration by the Board for purposes of the present
appeal."). Thus, the rejection of claim 6 turns on our decision as to claim 1.
Except for our ultimate decision, we do not discuss the § 103 rejection of
claim 6 further herein.
C.
The Examiner rejects claims 8, 41, 42, 45, and 46 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Flitcroft, Hasumi,
and Pitroda. Final Act. 9-13.
For this rejection, Appellant presents arguments for claim 8, and
Appellant argues claims 41, 42, 45, and 46 as a group. App. Br. 14--17. We
select claim 41 as representative for claims 42, 45, and 46. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2017). Except for our ultimate decision, we do not discuss
this rejection of claims 42, 45, and 46 further herein.
Issue on Appeal
Did the Examiner err in rejecting claims 1, 8, 14, and 41 as being
obvious?
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Application 10/654,733
ANALYSIS 4
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We disagree with Appellant. We
concur with the conclusions reached by the Examiner. We highlight the
following points.
A. Claim 1
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
In particular, altering Flitcroft to use the same number for each
of the plurality of transactions and for more than one of the
plurality of merchants and involving the same customer account
would change the principal of operation of Flitcroft. But, the
claimed combination cannot change the principle of operation of
the primary reference or render the reference inoperable for its
intended purpose .... [T]he whole point ofFlitcroft's technology
is to prevent the same credit card number from being used by
more than one entity (thereby avoiding fraud associated with
skimming).
App. Br. 8 ( emphasis omitted).
[I]nstead of a processor that is configured to select an identifier
from a simultaneously-stored set of multiple identifiers, Flitcroft
describes that the user makes the selection.
In the Response to Arguments on p. 3 of the 2016-06-23
Final Office Action, the Office responds by citing to In re
Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958),
where the court held that broadly providing an automatic or
mechanical means to replace a manual activity which
accomplished the same result is not sufficient to distinguish over
the prior art.
But, Flitcroft does not teach or suggest Appellant['s]
particular type of selection and therefore, Appellant[' s] claim
4 All Manual of Patent Examining Procedure (MPEP) citations herein are to
MPEP Rev. 08.2017, January 2018.
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Application 10/654,733
describes more than merely automating a manual activity that
accomplished the same result. Appellant['s] claim describes that
the processor achieves a different result from that in Flitcroft.
Instead of merely automating the selection of a new number with
or without additional constraints, Appellant[' s] claim describes a
particular type of selection not taught or suggested in Flitcroft.
In particular, Appellant[' s] claim describes a selection of an
identifier for each of a plurality of transactions across a plurality
of merchants and involving the same customer account such that
different ones of the of the simultaneously-stored set of multiple
identifiers are selected for at least some of the plurality of
transactions and at least some identifiers of the simultaneously-
stored set of multiple identifiers are selected for more than one
of the plurality of transactions and for more than one of the
plurality of merchants.).
App. Br. 10-11 (emphasis omitted).
We are not persuaded by Appellant's argument. Appellant is simply
mistaken as Flitcroft does explicitly disclose optionally selecting among
single use numbers, multiple use numbers, or a standard credit card number.
The first thing that the credit card provider should do is to
generate a list of additional credit card numbers, whether they be
single use or multiple use, and allocate additional credit numbers
to a master credit card as a further credit card number for
optional use instead of the master credit card number.
Flitcroft, Col. 11, line 66, through Col. 12, line 4 (emphasis added).
B. Claim 14
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 14 under 35 U.S.C. § 103(a).
Flitcroft describes a card that is valid for a predetermined number
of payments for a transaction with a single merchant irrespective
of any period of time, to say nothing of in order to prevent rapid
read-out of the identifiers.
App. Br. 13 (emphasis omitted).
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Application 10/654,733
The Examiner presents the following response to Appellant's above
argument.
Flitcroft does teach or suggest the claimed limitation "limiting
the number of transaction performed during a given period of
time in order to prevent rapid read-out of the identifiers[.]" For
example Flitcroft at col. col. 7, lines 55-col. 8, line 10 describes
limiting the multi-use number to certain number of transactions
for a particular period. Similarly, a time restriction could be put
on such a credit card number in that it would be deactivated if it
was used with frequency above ( or below) a given threshold, for
example, more than once a week. From the above it is clear that
Flitcroft does teach or describe "limiting the number of
transaction performed during a given period of time [. ]" However
the purpose of limiting the card for example in order to "prevent
rapid readout of the identifiers" is an intended use limitation that
does not further limit the claimed invention.
Ans. 13-14.
We are not persuaded by Appellant's argument. Rather, we agree
with the Examiner's reasoning and adopt it as our own.
C. Claim 8
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 8 under 35 U.S.C. § 103(a).
Pitroda is generally directed to a universal electronic transaction
card that acts in place of a number of different cards and par.
[0014] in particular describes that the card includes means for
selectively providing power to a display, a processor and
communication means. Such selectivity is used for shutting the
power down for the display when no input has been detected, for
example. But, Appellant['s] attorney has reviewed the reference
and shutting the power down for the display when no input has
been detected clearly does not correspond to first and second
power circuits that are activated by said first and second class of
terminals respectively, wherein activation of said second power
circuit does not allow account information to be entered or
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Application 10/654,733
updated in at least certain portions of said non-volatile memory,
as recited in claim 8.
App. Br. 14--15 (emphasis omitted).
The Examiner presents the following response to Appellant's above
argument.
Examiner respectfully disagrees and submits that shutting the
power down when no input is detected certainly will prevent
account information from being entered or updated and for this
reason the claim rejection should be sustained.
Ans. 14.
We are not persuaded by Appellant's argument. We conclude
Appellant's elimination of a function (i.e., "not allow" a known entry and
update to occur) is merely a variation on the well-known "Omission of an
Element and Its Function Is Obvious if the Function of the Element Is Not
Desired" discussed at MPEP § 2144.04 II.A. (Emphasis omitted). We agree
with the Examiner's determination that such a change would have been
obvious at the time the invention was made.
D. Claim 41
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 41 under 35 U.S.C. § 103(a).
Appellant[' s] attorney has reviewed the cited portions of
[Flitcroft and Pitroda] and has been unable to determine where
any combination of the cited references teaches or suggests
[ transmitting] the encrypted digitally signed transaction record to
the terminal through the communications facility without
providing information that identifies said customer to the
terminal while allowing the terminal to read the selected
identifier, as recited in Appellant[' s] claim 41.
App. Br. 15-16 (Appellant's emphasis omitted; Panel emphasis added).
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Application 10/654,733
We are not persuaded by Appellant's argument. Our review of
Flitcroft and Pitroda finds the following:
In combination with standard encryption systems, this allows a
means to securely store credit cards and transmit them over
insecure systems with confidence.
Once the appropriate password is entered into the
software, the next available single use number is decrypted and
either displayed, allowing the customer to use it in any form of
trade that can achieved by quoting credit card information, or
directly transmitted via the software to the merchant. Once
used, the single use number is removed from the stored list. The
date of access, the number accessed and any additional available
transaction details are then stored in a secure fashion and
digitally signed to allow for verification in the case of a disputed
transaction.
Flitcroft, Col. 20, line 62, through Col. 21, line 8 ( emphasis added). We
conclude that Flitcroft renders obvious transmitting an encrypted digitally
signed transaction record to a terminal through a communications facility
while identi(ying a customer to the terminal and while allowing the terminal
to read the selected identifier.
The remaining issue before us is whether it would have been obvious
to eliminate the function of identifying a customer to the terminal. As
above, we conclude Appellant's elimination of a function is merely a
variation on the well-known "Omission of an Element and Its Function Is
Obvious if the Function of the Element Is Not Desired." MPEP § 2144.04
II.A. Again, we agree with the Examiner's determination that such a change
would have been obvious at the time the invention was made.
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Application 10/654,733
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 2, 6-10, 14, 15,
and 40-49 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1, 2, 6-10, 14, 15, and 40-49 are not patentable.
DECISION
The Examiner's rejections of claims 1, 2, 6-10, 14, 15, and 40-49 are
affirmed. 5
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
5 Should there be further prosecution, the Examiner may wish to consider
whether the claims comply under 35 U.S.C. § 112, first paragraph with
the written description requirement. We are unable to find written
description support in the application as filed for "a processor configured to
select" as required by above portion B.ii of claim 1 (nor similar limitations
in claims 9 and 15). Appellant cites to page 2, lines 4--11, of the
Specification for support. App. Br. 4. However, we do not find such
support therein. Appellant does describe using a single identifier for more
than one of a plurality of transactions and for more than one of a plurality of
merchants. However, such a single identifier is merely an "[ e ]xisting card
number" that "is used for all transactions." Spec. 16. We are unable to find
written description support for the claimed "processor configured to select"
between Appellant's disclosed "unique" identifiers (Spec. 10) and an
existing repeatedly used card number (Spec. 16).
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