First Data Corporation

Patent Trials and Appeals Board

Jul 2, 2020

2019001868 (P.T.A.B. Jul. 2, 2020)

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.
14/309,397 06/19/2014 Craig A. Tieken 87188-793967 4884
20350 7590 07/02/2020
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte CRAIG A. TIEKEN and DAVID LOW
________________

Appeal 2019-001868
Application 14/309,397
Technology Center 3600
________________

Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
SCOTT RAEVSKY, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 23, 27–29, 37–39, 41, and 42. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as First Data
Corporation, of Greenwood Village, Colorado. Appeal Br. 3.
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Summary of the disclosure
Appellant’s claimed subject matter relates to providing secure
transactions through the use of a generated token that is linked with a
financial account identifier at a payment processor server. This allows the
token to be transmitted to a recipient system or device that had stored the
financial account identifier, but that replaces the stored financial account
identifier with the token. Abstract.
Exemplary claim (key limitations emphasized)
23. A method for providing secure transactions, the method
comprising:
receiving, at a merchant computer system, an identifier of a
financial account from a remote communications device, the
merchant computer system comprising a first computer having
a first memory, a first network interface, and a first processor;
creating, at the merchant computer system, a customer identifier
linking a customer to a merchant, the customer identifier
associated with the identifier of the financial account;
providing the customer identifier and the identifier of the
financial account to a payment processor system, the payment
processor system comprising a second computer having a
second memory, a second network interface, and a second
processor;
storing, at the first memory of the merchant computer system,
the identifier of the financial account;
initiating, by the merchant computer system, a transaction using
the customer identifier;
transmitting, by the merchant computer system, the customer
identifier to the payment processor system, thereby enabling a
copy of the identifier of the payment account stored at the
payment processor system to be retrieved for transmission to a
financial institution;
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receiving, at the merchant computer system, authorization and a
token associated with the customer identifier and the identifier
of the financial account from the payment processing system,
wherein the token comprises a random number and is generated
by the payment processing system; and
replacing, at the first memory of the merchant computer
system, the stored identifier of the financial account with the
token to limit the use of the identifier of the financial account
for enhanced security.
The Examiner’s rejections and cited references
The Examiner rejects claims 23, 27–29, 37–39, 41, and 42 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act.
8–16.
The Examiner rejects claims 23, 27–29, 37–39, 41, and 42 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 17–21.
The Examiner rejects claims 37–39, 41, and 42 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the inventors regard as the
invention. Final Act. 21–23.
The Examiner rejects claims 23, 27–29, 37–39, 41, and 42 under 35
U.S.C. § 103(a) as being unpatentable over Giordano et al. (US 2002/
0152123 A1; published Oct. 17, 2002) (“Giordano”), Sahasranaman et al.
(US 8,549,279 B1; issued Oct. 1, 2013) (“Sahasranaman”), and Kendrick et
al. (US 2009/0240620 A1; published Sept. 24, 2009) (“Kendrick”). Final
Act. 23–27.
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35 U.S.C. § 101
Principles of law
To constitute patent-eligible subject matter, an invention must be a
“new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in 35 U.S.C. § 101, including: (1) laws of nature; (2) natural phenomena;
and (3) abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). The U.S. Supreme Court has set forth a framework for
distinguishing patents with claims directed to these implicit exceptions
“from those that claim patent-eligible applications of those concepts.” Id. at
217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66 (2012)). The evaluation follows a two-part analysis: (1) determine
whether the claim is directed to a patent-ineligible concept, e.g., an abstract
idea; and (2) if so, then determine whether any element, or combination of
elements, in the claim is sufficient to ensure that the claim amounts to
significantly more than the patent-ineligible concept itself. See id. at 217–18.
Last year, the U.S. Patent and Trademark Office (USPTO) published
guidance on the application of the two-part analysis. USPTO, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7,
2019) (“2019 Revised Guidance”); see also USPTO, October 2019 Update:
Subject Matter Eligibility, available at https://www.uspto.gov/sites/default/
files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
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of organizing human activity such as a fundamental economic
practice, or mental processes) (see 2019 Revised Guidance, 84
Fed. Reg. at 54 (step 2A, prong one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Step 2A, prong one
The Examiner determines that the operations of claim 23 “are merely
the way in which the settlement of the transaction takes place.” Final Act. 10
(citing, Alice, 573 U.S. 208); see also Adv. Act. 2 (June 12, 2018). In other
words, the Examiner determines that claim 23 recites certain methods of
organizing human activity in the form of a fundamental economic principle
or practice. See Final Act. 10; Adv. Act. 2; 2019 Revised Guidance, 84 Fed.
Reg. at 52.
The Examiner’s determination is supported by the claim 23 recitations
of “receiving . . . an identifier of a financial account,” “creating a customer
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identifier . . . associated with the identifier of the financial account,” “storing
. . . the identifier of the financial account,” “initiating . . . a transaction using
the customer identifier,” “receiving . . . authorization and a token associated
with the customer identifier and the identifier of the financial account,” and
“replacing . . . the stored identifier of the financial account with the token to
limit the use of the identifier of the financial account for enhanced security.”
That is, claim 23 recites not just receiving and using a financial account
identifier, but also storing the financial account identifier until a token
associated with the financial account identifier (and a customer identifier) to
replace the financial account identifier is received. The token can still be
used for purposes related to the transaction, such as “initiating . . . a
transaction adjustment, a transaction refund, or a transaction settlement.”
Appeal Br. 20 (dependent claim 27) (emphasis added). Thus, these
recitations support the Examiner’s determination that that the operations of
claim 23 represent steps for settlement of a transaction. See Final Act. 10.
The recited steps prevent fraud by replacing the sensitive financial
account identifier with a token that, even if stolen, “may not be used to
initiate a financial transaction.” Spec. ¶ 11. Appellant argues “‘data security’
has not been identified by a court as an abstract idea.” Reply Br. 3. But
preventing fraud is a fundamental economic principle or practice. Bozeman
Fin. LLC v. Fed. Reserve Bank of Atlanta, 955 F.3d 971, 976 (Fed. Cir.
2020); cf. also Subject Matter Eligibility Examples: Business Methods,
USPTO, *9, available at https://www.uspto.gov/sites/default/files/
documents/101_examples_1to36.pdf (Dec. 2016) (“PEG Examples”) (“a
method of fraud prevention . . . is a fundamental business practice and is
similar to ideas found abstract by the courts”).
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Appellant argues claim 23 “recites features that firmly root the
claimed invention in computer technology, and thereby remove it from the
realm of abstract ideas.” Appeal Br. 7. That is, Appellant argues “[t]he
claimed recitations cannot be performed by a general purpose computer, nor
can these features by performed by the human mind.” Id. But the claimed
invention does not relate to practices that are only made possible by use of
computer technologies. Cf. DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257–58 (Fed. Cir. 2014) (a patent-eligible claim related to
preventing a website visitor from being “transported” to a third party website
when clicking on an advertisement, a problem with no pre-Internet analog).
Rather, using tokens (e.g., truncated bank card numbers such as those long
commonly found on receipts) and replacing data (e.g., using an eraser or
scribbling out information and adding new information to replace the
redacted data) are practices that do not require computer technology. In any
event, Appellant’s arguments that claim 23 is “not directed to a fundamental
economic practice” (Appeal Br. 8) does not persuasively address our
determination that claim 23 at least recites certain methods of organizing
human activity in the form of a fundamental economic practice or principle.
For these reasons, we determine that claim 23 recites an abstract idea
in the form of certain methods of organizing human activity (a fundamental
economic principle or practice).
Step 2A, prong two
Appellant argues that claim 23 is not directed to an abstract idea
because it is limited to specific embodiments “for replacing financial
account identifiers with tokens, and do[es] not preempt any conventional
methods of performing such functions, which use different processes to
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provide distinct results.” Appeal Br. 8 (citing McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)); see also id. at 10 (“the
step of replacing the stored identifier of the financial account with the token
. . . confines the claim to a particular application . . . and does not run the
risk of monopolizing the alleged abstract idea”); Reply Br. 2 (“[t]he claims
do not broadly recite tokenization alone, but utilize tokenization in a
particular arrangement that provides greater security benefits than
tokenization on its own”).
Appellant’s arguments are unpersuasive because the use of a token to
replace a financial account identifier is insufficient to integrate the
underlying abstract idea into a practical application. See 2019 Revised
Guidance, 84 Fed. Reg. at 55. An additional element may integrate an
abstract idea into a practical application if it “reflects an improvement in the
functioning of a computer, or an improvement to other technology or
technical field.” Id. But the claimed token does not reflect such an
improvement. Instead, claim 23 merely invokes “computers in the collection
and arrangement of data” (Smart Sys. Innovations, LLC v. Chicago Transit
Auth., 873 F.3d 1364, 1373) in “the formation of financial transactions” (id.
at 1372).
Appellant argues claim 23 improves “the field of data security”
(Appeal Br. 9; Reply Br. 3) and that “there has not been a single showing
that ‘replacing the stored identifier of the financial account with the token to
limit the use of the identifier of the financial account for enhanced security’
is a well-known, routine or conventional element” (Appeal Br. 10). The
Examiner determines, however, that “both providing data security and the
operation of replacing one set of data with another set of data for the
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purposes of maintaining imposed security requirements . . . are themselves
abstract ideas [that] cannot form the basis for establishing that the claims
contain significantly more than the abstract idea.” Ans. 8.
Appellant’s arguments are unpersuasive because, as the Examiner
correctly notes, these recitations do not represent additional elements, but
are instead part of the underlying abstract idea of claim 23. Moreover, the
claimed use of a token, like the use of a hash identifier, does not provide an
inventive concept. See, e.g., Smart Sys. Innovations, LLC v. Chicago Transit
Auth., 873 F.3d at 1369, 1374 (use of a hash identifier based on bankcard
data did not provide an inventive concept).
Appellant further argues claim 23 recites a device that is similar to
subject matter found eligible in the non-precedential, pre-2019 Revised
Guidance Board opinion Ex parte Ravenel, No. 2016-003604, available at
https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=
fd2016003604-03-30-2016-1 (PTAB 2016). See Appeal Br. 11–13; Reply
Br. 3–4. Although Ravenel’s holding is not binding on this panel, we have
reviewed the opinion and compared the claims. We agree with the Examiner
that “Ravenel is not even applicable to” claim 23. Ans. 16. In particular, the
representative claim in Ravenel was a “system for managing display content
in a plurality of quick service restaurant (QSR) environments” (Ravenel, No.
2016-003604, at *2) that recited specific “system device and[/]or modules
. . . configured to cause the recited function” (id. at *6). In Ravenel, the
panel held that “[w]hen the disclosed structure is a computer programmed to
carry out an algorithm, ‘the disclosed structure is not the general purpose
computer, but rather the special purpose computer programmed to perform
the disclosed algorithm.’” Id. (citing WMS Gaming, Inc. v. International
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Game Technology, 184 F.3d at 1349 (citing In re Alappat, 33 F.3d 1526,
1545 (Fed. Cir. 1994) (en banc))). Here, in contrast, exemplary claim 23 (a
“method for providing secure transactions”) fails to recite specific devices or
modules. Because we do not agree that Ravenel is pertinent, we find
Appellant’s arguments based on Ravenel unavailing.
Appellant further argues there are “vast similarities” between
exemplary claim 23 and “Claim 2 in Example 35 of the Subject Matter
Eligibility Examples issued by the USPTO.” Appeal Br. 13 (citing PEG
Examples, at *7–10). We agree with the Examiner, however, that not only is
the cited example “merely for illustrative purposes” (i.e., is not binding on
this panel), but the cited example fails to show that Appellant’s claim 23 has
additional elements that are significantly more than the underlying abstract
idea. See Ans. 16–17.
In particular, “the claimed combination of additional elements [of
example 35, claim 2,] presents a specific, discrete implementation of the
abstract idea.” PEG Examples, at *10 (citing BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). That is,
the steps of example 35, claim 2, “do not represent merely gathering data for
comparison or security purposes, but instead set up a sequence of events that
address unique problems associated with bank cards and ATMs (e.g., the use
of stolen or ‘skimmed’ bank cards and/or customer information to perform
unauthorized transactions).” Id.
Example 35, claim 2, in fact, recites a number of specific interactions
as part of the claimed “method of conducting a secure automated teller
transaction,” including “obtaining customer-specific information from a
bank card,” transmitting a random code “to a mobile communication device
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that is registered to the customer associated with the bank card,” “reading,
by the automated teller machine, an image [that includes encrypted code
data] from the customer’s mobile communication device,” and “analyzing
the decrypted code data . . . and the generated code to determine” if they
match. PEG Examples, at *7–8.
In contrast, claim 23 fails to recite such specific interactions. Even the
receipt of a financial account identifier does not require use of a bank card.
See Spec. ¶ 8 (noting a customer may initiate a transaction through “a card
not present (CNP) data entry”). Thus, claim 23 does not, for example,
“address unique problems associated with bank cards and ATMs.” PEG
Examples, at *10. Therefore, we are unpersuaded that example 35, claim 2,
supports Appellant’s contention that claim 23 includes additional elements
that integrate the underlying abstract idea of claim 23 into a patent-eligible
practical application.
Claim 23 also fails to include additional elements that, for example,
implement the underlying abstract idea with “a particular machine or
manufacture that is integral to the campaign,” that effect “a transportation or
reduction of a particular article to a different state or thing,” or that apply or
use the underlying abstract idea “in some other meaningful way beyond
generally linking the use of the [abstract idea] to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.” See 2019 Revised Guidance, 84 Fed.
Reg. at 55.
We further note that Appellant’s arguments, as they pertain
specifically to preemption, are unpersuasive because “[w]hile preemption
may signal patent ineligible subject matter, the absence of complete
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preemption does not demonstrate patent eligibility,” as “questions on
preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(internal quotation marks and citation omitted). No additional determination
regarding preemption is necessary here because the two-part analysis (i.e.,
steps 2A (prongs one and two) and 2B, discussed below) shows that claim
23 is directed to patent-ineligible subject matter.
For these reasons, we determine claim 23 does not include additional
recitations that integrate the underlying abstract idea—certain methods of
organizing human activity (a fundamental economic principle or practice)—
into a practical application. Therefore, claim 23 is directed to an abstract
idea.
Step 2B
Having determined that claim 23 is directed to an abstract idea, we
now consider the additional elements of claim 23 individually and in
combination to ascertain whether they provide an inventive concept such
that claim 23 amounts to significantly more than the underlying abstract
idea. See 2019 Revised Guidance, 84 Fed. Reg. at 56.
We are unable to ascertain any additional elements, individually and
as an ordered combination, that reveal an inventive concept that makes claim
23 patent-eligible. Recitations such as “a merchant computer system
comprising a first computer having a first memory, a first network interface,
and a first processor,” which the Specification discloses as broadly
encompassing a number of well-understood, routine, and conventional
computer technologies, fail to make claim 23 more than the underlying
abstract idea. See, e.g., Spec. Fig. 2, ¶¶ 17, 43–54.
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Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 23, and claims 27–29, 37–39, 41, 42, which Appellant does not argue
separately. Appeal Br. 15.
35 U.S.C. § 112, FIRST PARAGRAPH
Claims 23 and 27–29
In rejecting claim 23 as lacking sufficient written description support,
the Examiner finds that although the written description discloses a
merchant system performing the step of “providing the customer identifier
and the identifier of the financial account to a payment processor system,”
the claim “does not limit the performing of [this recited step] to a merchant
system.” Final Act. 19; see also Adv. Act. 6 (June 12, 2018). The Examiner
correctly notes Appellant did not separately argue against this basis for
rejecting claim 23. Ans. 21.
Appellant, for the first time in the Reply Brief, argues the disputed
recitation is not “broader in scope than the teachings of the disclosure”
because the Specification “clearly supports the recitation that the merchant
provides both the customer identifier and the identifier of the financial
account to the payment processor system.” Reply Br. 6 (citing Spec. ¶ 70).
This argument is not only untimely (see 37 C.F.R. § 41.41(b)(2) (2018)), it
is also not responsive to the rejection.
The Examiner acknowledges that the Specification discloses a
merchant system performing the disputed step. See Final Act. 19. The issue
the Examiner raises is that unlike the receiving, creating, storing, initiating,
transmitting, and receiving steps, which all are performed by or affect the
claimed merchant computer system, the providing step is not limited to
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being performed by or affecting the claimed merchant computer system.
And thus, as the Examiner correctly notes, under the broadest reasonable
interpretation, claim 23 encompasses embodiments where an entity other
than the merchant system performs the providing step. See Final Act. 19.
The Examiner concludes that because the Specification only supports the
merchant (or service provider) performing the providing step, the
Specification fails to provide sufficient written description support for claim
23. See id. Appellant’s conclusion is reasonable because claims that are
broader in scope than the supporting disclosure because they omit an
essential element of the invention do not comply with the written description
requirement. See Gentry Gallery, Inc. v. Berkline Corp., 134. F.3d 1473,
1480 (Fed. Cir. 1998).
Because Appellant’s untimely arguments fails to address the basis for
the Examiner’s rejection, which we find reasonable, we sustain the
Examiner’s 35 U.S.C. § 112, first paragraph, rejection of claim 23, and
claims 27–29, which depend therefrom.
Claims 37–39, 41, and 42
In rejecting claim 23 as failing to be supported by sufficient written
description support in the Specification, the Examiner also finds that claim
23 (which we address above based on alternative reasoning set forth in the
Examiner’s rejection)—by reciting steps that includes both storing a
financial account identifier (at least until it is replaced by a token) and
providing a customer identifier and financial account identifier to a payment
processing system—mixes embodiments discloses in Figures 3 and 4 of the
Specification. See Final Act. 17–18. The Examiner rejects claim 37 for
similar reasons. Id. at 17.
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Although Appellant notes that in describing Figure 4, the
Specification discloses “some or all of the steps or aspects of method 300
of FIG 3” (Appeal Br. 15 (citing Spec. ¶ 69)), the Examiner finds “the
written disclosure actually teaches away from the claim” because a merchant
that “actually stores the account identifier for an indefinite period of time . . .
would be running afoul of” Payment Card Industry Data Security Standards
(PCI DSS) “and would be required to ‘spend millions of dollars’ . . . to
initially meet the security requirements prescribed” (Final Act. 18–19 (citing
Spec. ¶¶ 4, 22); see also Ans. 17–20).
Appellant contends the Examiner erred because “[n]ot only is the
disclosure of replacement of the identifier with the token indicative that the
identifier was stored in a temporary fashion, but such processes eliminate the
need for the merchant to continue storing the identifier, and thus, can
maintain compliance with PCI DSS.” Appeal Br. 15; Reply Br. 6. Although
we cannot ascertain whether the merchant system of claim 37 would need to
comply with PCI DSS, we agree with Appellant that the Specification
provides sufficient written description support for the disputed limitations.
As Appellant persuasively argues (Appeal Br. 15), the Specification
explicitly discloses that the method depicted in Figure 4 “may utilize some
or all of the steps or aspects of method 300 of FIG. 3” (Spec. ¶ 69).
Moreover, even if implementing the merchant system of claim 37 would
require extensive PCI DSS compliance costs—contrary to Appellant’s
expressed interpretation of the applicability of PCI DSS (Appeal Br. 15;
Reply Br. 6)—this would merely show that Appellant had possession of an
embodiment of the claimed invention that that would require costs Appellant
erroneously believed would not be incurred. Claim 37 does not have any
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recitations that preclude embodiments that require PCI DSS compliance.
Therefore, whether such costs would or would not be incurred is irrelevant
to the question of whether the Specification “reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010).
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of claim 37, and claims 38, 39, 41, and 42, which the
Examiner rejects as depending therefrom. Final Act. 21.
35 U.S.C. § 112, SECOND PARAGRAPH
In rejecting claim 37 as being indefinite, the Examiner notes that the
claim recites both “provid[ing] the customer identifier and the identifier of
the financial account to a payment processor system” (emphasis added) and
“transmit[ting] the customer identifier to a payment processor system”
(emphasis added) and concludes that “[a]s the claim previously recited a
payment processor system it is unclear as to whether this is the same
payment processor system or a different payment processor system given the
indefinite article ‘a’ used.” Final Act. 22–23; Ans. 22. Appellant does not
dispute the Examiner’s analysis (Reply Br. 7), and we, therefore, summarily
affirm the Examiner’s 35 U.S.C. § 112, second paragraph, rejection of claim
37, and claims 38, 39, 41, and 42, which depend therefrom.
35 U.S.C. § 103(A)
In rejecting claim 23 as obvious, the Examiner finds that
“Sahasranaman teaches replacing the identifier of the financial account with
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the token to limit the use of the identifier of the financial account for
enhanced security.” Final Act. 25 (citing Sahasranaman col. 2, ll. 4–18, col.
3, ll. 4–22, col. 6, ll. 49–63, col. 7, ll. 38–50, col. 11, ll. 44–51, and col. 11, l.
60–col. 12, l. 4); see also Ans. 23–24 (further citing Sahasranaman Fig. 2,
col. 9, ll. 13–17, col. 11, ll. 52–59, col. 16, ll. 28–45, col. 20, ll. 5–17).
Appellant contends the Examiner erred because Sahasranaman fails to
teach or suggest “that a merchant system’s previously stored version of the
character string is actually replaced by a token.” Appeal Br. 17 (emphasis
added). Appellant argues that Sahasranaman teaches, for example, keeping
“both the token and the identifier of the financial account (credit card
number).” Id. (emphasis added) (citing Sahasranaman col. 8, ll. 32–38); see
also id. (further citing Sahasranaman col. 7, ll. 16–24). Appellant further
argues that “[e]ven when Sahasranaman discloses that the character string
and token are stored on different devices, the reference performs both of
these storage actions using the gatekeeper module, and thus a single entity is
storing both pieces of data, rather than replacing an identifier with a token as
presently claimed.” Id. at 18 (emphasis added). Appellant also argues that
evidence cited by the Examiner regarding a batching module fails to teach or
suggest “that the new credit card number is replaced by the token, but rather
that the token is stored instead of the new credit card number.” Reply Br. 7
(emphases added).
Appellant’s arguments are persuasive because none of the portions of
Sahasranaman teach or suggest replacing a stored financial account
identifier with a token. For example, Sahasranaman teaches “accessing the
character string . . . by using the unique token associated with the character
string and transmitting the character string.” Sahasranaman col. 2, ll. 16–18;
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see also id. col. 3, ll. 16–19. That is, Sahasranaman teaches or suggests using
the unique token to look up (use to access) a character string (i.e., a financial
account identifier) rather than replacing the character string (thus meaning it
could not longer be accessed using the unique token).
Sahasranaman further teaches “associat[ing] [a] random number with
the encrypted credit card number.” Id. col. 6, ll. 61–63 (emphasis added); see
also id. col. 11, l. 44–col. 12, l. 4, col. 20, ll. 5–17. Merely associating a
financial account identifier (e.g., an encrypted credit card number) with a
random number does not replace the financial account identifier. Even if an
encrypted financial account identifier falls within a reasonably broad
interpretation of the claimed token, the Examiner does not show that
Sahasranaman teaches or suggest storing an unencrypted financial account
identifier and replacing it with an encrypted financial account identifier.
Sahasranaman further teaches or suggests storing a sub-string of a
character string (i.e., a financial account identifier) in separate storage from
a token. Id. col. 7, ll. 38–46. But storing a financial account identifier in
separate storage from a token necessarily means that the financial account
identifier is not replaced by the token.
Sahasranaman further teaches use of a unique token associated with a
credit card number instead of the actual credit card number to facilitate
transactions. See id. col. 16, ll. 28–45. But the Examiner does not show that
using a token instead of a financial account identifier (e.g., a credit card
number) teaches or suggests replacing a stored financial account identifier.
See Ans. 24.
The Examiner does not rely on Giordano or Kendrick to cure the
noted deficiency of Sahasranaman. See Final Act. 24–26; Ans. 23–24.
Appeal 2019-001868
Application 14/309,397

19

Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 23, and claims 27–29, 37–39, 41, and 42, which contain similar
recitations.
In the event of further prosecution, we recommend the Examiner
ascertain whether and to what extent the secure payment card transactions
teachings of Oder et al. (US 7,770,789 B2; issued Aug 10, 2010) (“Oder”)—
which include, for example, “stor[ing] false data 504 in place of the payment
data” (Oder col. 18, ll. 15–16)—teach or suggest the recitations of the
claimed invention.
Appeal 2019-001868
Application 14/309,397

20

CONCLUSION
Claims
Rejected
35
U.S.C. §
References/
Basis Affirmed Reversed
23, 27–29,
37–39, 41, 42
101 Eligibility 23, 27–29,
37–39, 41, 42

23, 27–29,
37–39, 41, 42
112 ¶ 1 Written
Description
23, 27–29 37–39, 41, 42
37–39, 41, 42 112 ¶ 2 Definiteness 37–39, 41, 42
23, 27–29,
37–39, 41, 42
103(a) Giordano,
Sahasranaman,
Kendrick
23, 27–29,
37–39, 41, 42
Overall
Outcome
23, 27–29,
37–39, 41, 42

TIME PERIOD FOR RESPONSE
No time period for taking subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED