GIESECKE & DEVRIENT GMBH

Patent Trials and Appeals Board

Sep 30, 2020

15120887 - (D) (P.T.A.B. Sep. 30, 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.
15/120,887 08/23/2016 Michael BALDISCHWEILER 19838.295 5939
22913 7590 09/30/2020
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
JONES, COURTNEY PATRICE
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/30/2020 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL BALDISCHWEILER,
CLAUS DIETZE, and MARTIN AUER

Appeal 2020-001868
Application 15/120,887
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, ULRIKE W. JENKS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected claims 14–26 under 35 U.S.C. § 103 as
obvious. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject the claims. We have jurisdiction for the appeal
under 35 U.S.C. § 6(b).
We REVERSE.

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
Giesecke+Devrient Mobile Security Gmbh. Appeal Br. 2.
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STATEMENT OF THE CASE
The Examiner rejected claims 14–26 in the Final Office Action
(“Final Act.”) as follows:
1. Claim 14–18, 20, 24, and 26 under 35 U.S.C. § 103 as obvious in
view of Esplin et al., (US 2007/0194113 A1, published Aug. 23, 2007),
(“Esplin”) and Grigg et al., (US 2015/0227726 A1, published Aug. 13,
2015) (“Grigg”). Final Act. 9.
2. Claim 19 and 22 under 35 U.S.C. § 103 as obvious in view of
Esplin, Griggs, and Boubion et al., (US 2007/0223685 A1, published Sept.
27, 2007), (“Boubion”). Final Act. 16.
3. Claim 21 under 35 U.S.C. § 103 as obvious in view of Esplin,
Grigg, and Huang et al., (US 2014/0244456 A1, published Aug. 28, 2014),
(“Huang”). Final Act. 18.
4. Claims 23 and 25 under 35 U.S.C. § 103 as obvious in view of
Esplin, Grigg, and Su et al., (US 2015/0095228 A1, published Apr. 2, 2015),
(“Su”). Final Act. 19.
Claim 14, the only independent claim on appeal, is reproduced below,
and annotated with bracketed numbers for reference to the claim limitations:
14. A method for authorizing a transaction, the method
comprising:
[1] reading out a first code generated by a system for the
transaction, by a first reader of a first mobile device, with the
first code having been encrypted,
[2] reading out a second code, which is dedicated to the
system and has at least one information item for decrypting the
first code, the second code being read out by a second reader of
the first mobile device,
[3] generating a first signature confirming the transaction
by way of the system from the previously decrypted first code,
[4] transmitting the first signature to the system, and
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[5] transmitting the first signature and a second signature
identifying the system to a service facility in order to authorize
the transaction.

REJECTION BASED ON ESPLIN AND GRIGG
The Specification describes the claimed method of authorizing a
transaction as an improvement that “solves the known problems from the
prior art and is further adapted for increasing the security in performing a
mobile transaction” on a point-of-sale system, such as at a supermarket or
gas station. Spec. ¶¶ 7, 8, 10, 21.
In the first step [1] of the claim, “a first code generated by a system
for the transaction” is read by a first reader of a first mobile device. The
code is defined in the Specification as “any kind of machine-readable code,
in particular a QR code (Quick Response code), a code capable of being read
out by means of a near-field communication interface (NFC according to
ISO 14443), a 2D bar code, etc.” Spec. ¶ 3. The code contains information
about the “transaction” to be carried out, such as the payment information
involved in a transaction between a buyer and a seller. Spec. ¶¶ 6, 11, 12 (“A
‘transaction’ as intended by the present invention is for example the
performance of a payment with the first mobile device on the system. The
payment can be debited to the account of the owner of the mobile device by
bank transfer or be effected as a credit-card transaction.”). The first code can
be displayed on a display device of the system, such as on a display of a
point-of-sale system at a grocery store; the mobile device is enabled to read
the code displayed on the point-of-sale system. Spec. ¶ 30. The first code is
required by the claim to be encrypted.
A “second code” is read by the mobile device in the second step [2] of
the claim, using a second reader. The second code “is dedicated to the
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system and has at least one information item for decrypting the first code.”
The Specification explains that the second code can be a static code on an
NFC sticker, displayed on the point-of-sale device, which contains the
information for decrypting the code. Spec ¶ 32. When the second code is on
the point-of-sale device, the mobile device has to be in the vicinity of the
point-of-sale device to decode the first code, providing additional security
for the transaction. Spec. ¶ 16. The Specification explains that “[w]ithout the
second code 29 it is not possible to utilize the first code 28, since only the
second code contains an information item for decrypting the first code 28.”
Spec ¶ 32.
A signature is generated by the device confirming the transaction in
step [3] of the claim and the signature is transmitted to the system (such as
the point-of-sale device) in step [4]. The Specification discloses that the
signature “might incorporate for example at least one element of the
following list: account data, bank, age, photo, signature, telephone number,
marital status, etc.” that allows the point-of-sale device to authenticate the
user. Spec. ¶ 34. In the last step [5] of the claim, “the first signature and a
second signature identifying the system” are transmitted “to a service facility
in order to authorize the transaction.” “The service facility may be for
example a financial institution, in particular a credit-card company.” Spec. ¶
36.
The Examiner found that Esplin describes a first code for a transaction
as recited in step [1] of claim 14, but not using a second code to decrypt the
first code. Final Act. 9–10. To meet this deficiency, the Examiner further
cited Grigg. The Examiner explained:
Grigg from same or similar field of endeavor teaches reading out
a first code generated by a system for the transaction, by a first
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read-out device of a first mobile device (Paragraph 0065 teaches
a device may comprise a camera (i.e., first read-out device) and
be configured to sense (i.e., read) an image (i.e., first code)), with
the first code having been encrypted (Paragraph 0065 teaches the
image contains an embedded (i.e., encrypted) message), reading
out a second code which is dedicated to the system and has at
least one information item for decrypting the first code, the
second code being read out by a second read-out device of the
first mobile device (Paragraphs 0031 and 0065 teach a mobile
device could comprise a camera and an NFC reader device (i.e.,
second read-out device), and the device could be configured to
sense (i.e., read) an image containing an embedded message
using the camera and a signal (i.e., second code used for
decrypting the first code) emitted from a fob (i.e., dedicated to
system) using the NFC reader to obtain a credential to grant
access to transfer funds between account, or pay a bill).
Final Act. 11 (emphasis omitted).
The Examiner identified paragraph 65 of Grigg as describing steps [1]
and [2] of claim 14 in which a mobile device reads a first encrypted code
and a second code for decrypting the first code. Paragraph 65 is copied
below:
For example, a bank application may contain the functionality to
view a bank statement, transfer funds between accounts, and pay
a bill. A mobile device could comprise a camera and an NFC
reader. The device could further be configured to sense an image
containing an embedded message using the camera and a signal
emitted from a fob using the NFC reader. The device could be
configured to require a credential be obtained and authorized by
sensing the image with the embedded message prior to granting
access to view the bank statement. The device could be further
be configured to require a credential to be obtained and
authorized by sensing the message emitted from the fob prior to
granting access to transfer funds between accounts, or pay a bill.
Grigg ¶ 65.
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In paragraph 65 reproduced above, Grigg describes a mobile device
for viewing a bank statement. Grigg teaches that the device has (1) a camera
for reading an image containing an embedded message and (2) an NFC
reader for reading a signal from a fob. The image in the embedded message
is used in Grigg as a credential to authorize access to view a bank statement
(“configured to require a credential be obtained and authorized by sensing
the image with the embedded message prior to granting access to view the
bank statement”). The signal from the fob is also used as a credential, but as
a credential to transfer funds or pay a bill. While the image is characterized
by Grigg as “an embedded message,” there is no description in this
paragraph that the message is encrypted as the claim requires the first code
to be (step [1]), let alone that a second code is used to decrypt it (step [2]).
Grigg also teaches that the “first credential may be obtained by
decoding the image of indicia, thereby resulting in a first credential,” but
Grigg does not disclose that the decoding is accomplished by reading a
second code dedicated to the system as required in the second step of claim
14. Griggs ¶ 54.
Paragraph 31 of Grigg cited by the Examiner describes authentication,
but not using a second code in the authentication process.
Grigg also describes encrypting the credential using a shared
encryption key between an “apparatus” and a remote server, and then
sending the encrypted credential to the remote server. Griggs ¶ 53.
However, there is no disclosure of how the remote server decrypts the
credential, nor of using a second code to do so as required by step [2] of
rejected claim 14.
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An examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011). The Examiner did not meet the burden of establishing that steps [1]
and [2] of claim 14, as discussed above, are rendered obvious by Esplin and
Grigg. For the foregoing reasons, the rejection of claim 14 is reversed.
Dependent claims 15–18, 20, 24, and 26 contain all the steps of claim 14 are
reversed for the same reasons.
The additional references cited in the rejections of the remaining
dependent claims are not described by the Examiner as meeting steps [1] and
[2] of claim 14. Rejections 2–4 of claims 19, 21–23, and 25 are therefore
reversed.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s) Affirmed Reversed
14–18, 20,
24, 26
103 Esplin, Griggs 14–18, 20,
24, 26
19, 22 103 Esplin, Griggs 19, 22
21 103 Esplin, Griggs 21
23, 25 103 Esplin, Griggs 23, 25
Overall
Outcome
14–26

REVERSED