HUXHAM, Horatio Nelson. et al.

Patent Trials and Appeals Board

Jan 16, 2020

14781538 - (D) (P.T.A.B. Jan. 16, 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.
14/781,538 09/30/2015 Horatio Nelson HUXHAM 079900-0956760
(481US01)
1079
66945 7590 01/16/2020
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
01/16/2020 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 HORATIO NELSON HUXHAM and ALAN JOSEPH O’REGAN
Appeal 2019-001401
Application 14/781,538
Technology Center 3600
Before LINZY T. McCARTNEY, SCOTT E. BAIN, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
final rejection of claims 11, 13–19, and 26–34. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies the real party in interest as Visa International Service
Association. Appeal Brief 3, filed June 25, 2018 (“Appeal Br.”).
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BACKGROUND
This patent application concerns “conducting transactions, such as
financial transactions, using a mobile device.” Specification ¶ 2, filed
September 30, 2015 (“Spec.”). Claim 11, the sole independent claim,
illustrates the claimed subject matter:
11. A system for conducting a transaction based on account
credentials associated with a consumer, the system comprising:
a mobile device of the consumer having an associated
alias, the mobile device comprising:
a secure store integrated circuit including a first
cryptoprocessor coupled to a first secure memory storing:
a mobile-based credential, the mobile-based
credential being a decryption key corresponding to
encrypted account credentials stored at a remotely
accessible server as a server-based credential; and
a first set of instructions, which when executed by
the first cryptoprocessor, causes the secure store integrated
circuit to release the mobile-based credential in response
to receiving a correct passcode associated with the mobile-
based credential;
a secure accessing integrated circuit including a second
cryptoprocessor coupled to a second secure memory storing a
second set of instructions, which when executed by the second
cryptoprocessor, causes the secure accessing integrated circuit
to:
receive a request for the mobile-based credential
from the remotely accessible server, the request being
generated by the remotely accessible server in response to
receiving the alias associated with the consumer from a
merchant terminal;
prompt for entry of a passcode associated with the
mobile-based credential;
receive the passcode associated with the mobile-
based credential;
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transmit the passcode to the secure store integrated
circuit;
access the mobile-based credential from the secure
store integrated circuit in response to the secure store
integrated circuit verifying the passcode is correct; and
transmit the mobile-based credential to the remotely
accessible server, the mobile-based credential being the
decryption key decrypting the server-based credential
stored at the remotely accessible server to obtain the
account credentials for completing the transaction.
Appeal Br. 17–18.
REJECTIONS2
Claims 35 U.S.C. § References
11, 13–19, 26–32 112(a)

11, 13–19, 26–34 112(b)

11, 13–19, 27–32 103 McMillen,3 Algazi,4 Clark5
26 103 McMillen, Algazi, Clark, Janke6
33, 34 103 McMillen, Algazi, Clark, Nagai7
DISCUSSION
Section 112(a) Rejection
Claim 11 recites a “mobile device comprising” both “a first
cryptoprocessor” and “a second cryptoprocessor.” Appeal Br. 17. The

2 In the Final Office Action, the Examiner rejected the pending claims under
§ 101. Final Office Action 4–6, mailed January 24, 2018 (“Final Act.”). The
Examiner withdrew this rejection in the Examiner’s Answer. Examiner’s
Answer 3, mailed October 1, 2018 (“Ans.”).
3 McMillen et al. (US 2012/0284195 A1; November 8, 2012).
4 Algazi et al. (US 7,039,813 B2; May 2, 2006).
5 Clark (US 2004/0020984 A1; February 5, 2004).
6 Janke et al. (US 2007/0277070 A1; November 29, 2007).
7 Nagai et al. (US 4,783,783; November 8, 1988).
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Examiner found that the recited mobile device lacks adequate written
description support and therefore rejected independent claim 11 and
dependent claims 13–19 and 26–32 under § 112(a) as failing to comply with
the written description requirement. See Final Act. 6–7.
Appellant contends that the Examiner erred because Figure 6 and
paragraphs 11, 137, 138, and 141 of the written description provide the
necessary support for this element. See Appeal Br. 11.
We agree with Appellant. The written description discloses a mobile
device that includes a cryptographic module. See, e.g., Spec. ¶ 11. The
written description explains that the cryptographic module includes a secure
accessing element (SAE) and a secure store element (SSE) that each have a
cryptoprocessor. See, e.g., Spec. ¶¶ 71, 137–138, 141. And Figure 6 shows a
cryptographic module with its SAE and SSE and their associated
cryptoprocessors. See Spec. Fig 6, items 602, 604, 618, 620. We thus agree
with Appellant that the written description provides adequate support for the
recited “mobile device comprising” both “a first cryptoprocessor” and “a
second cryptoprocessor.” We therefore do not sustain the Examiner’s
rejection of claims 11, 13–19, and 26–32 under § 112(a).
Section 112(b) Rejection
Claim 11 recites “corresponding to encrypted account credentials
stored at a remotely accessible server,” “in response to receiving the alias
associated with the consumer from a merchant terminal,” and “transmit . . .
decrypting the server-based credential stored at the remotely accessible
server to obtain the account credentials for completing the transaction.”
Appeal Br. 17, 18. The Examiner determined that these limitations make it
“unclear whether the claim is [drawn] to a mobile device or combination
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mobile device, requestor device[,] and remote accessible server” and
concluded that “[t]he scope of the claims is, therefore, rendered unclear.”
Final Act. 8. The Examiner therefore rejected independent claim 11 and
dependent claims 13–19 and 26–34 under § 112(b) as indefinite. See Final
Act. 8.
Appellant contends that the Examiner erred because the “remotely
accessible server” and “merchant terminal” recited in the identified
limitations “are used to define the environment in which the mobile device
operates and how the mobile device interacts with these devices in that
environment” and “[t]he Federal Circuit has stated that ‘there is nothing
wrong with defining . . . a device in terms of the environment in which it is
to be used.’” Appeal Br. 12 (quoting Moore U.S.A., Inc. v. Standard Register
Co., 229 F.3d 1091, 1111 (Fed. Cir. 2000)).
We agree with Appellant. On its face, claim 11 is drawn to “[a]
system for conducting a transaction based on account credentials associated
with a consumer” that includes “a mobile device of the consumer having an
associated alias.” Appeal Br. 17. The limitations identified by the Examiner
recite components other than the mobile device, but reciting additional
components alone does not make it unclear what claim 11 is drawn to, and
the Examiner has not adequately explained why the identified limitations
make claim 11 unclear. As argued by Appellant, these limitations, in
combination with the other limitations recited in claim 11, define the
environment in which the recited mobile device acts. We therefore do not
sustain this rejection.
Claim 11 also recites “the request being generated by the remotely
accessible server in response to receiving the alias associated with the
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consumer from a merchant terminal.” Appeal Br. 17. Dependent claim 17
recites “wherein the account credentials are obtained by decrypting,” and
dependent claim 30 recites “wherein the alias is variable over time.” Appeal
Br. 19, 20. The Examiner determined that these limitations are “hybrid”
limitations that improperly recite both an apparatus and steps for using the
apparatus. See Final Act. 8–9 (citing In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011)). As a result, the Examiner
rejected independent claim 11 and dependent claims 13–19 and 26–34 under
§ 112(b) as indefinite for this additional reason. See Final Act. 8–9.
Appellant argues that claim 11 recites functional limitations
“describing the environment in which a device is used” and therefore “is not
indefinite.” Appeal Br. 13. Appellant also contends that claims 11, 17, and
30 are distinguishable from the indefinite claims in In re Katz because those
claims required user action and claims 11, 17, and 30 do not. See Appeal Br.
13–14.
We agree with Appellant. The language identified by the Examiner
defines data related to the system; the language does not recite steps for
using the system itself. For example, claim 11 recites “[a] system” that
includes “a mobile device” with “a secure accessing integrated circuit” that
“receive[s] a request . . . , the request being generated by the remotely
accessible server in response to receiving the alias associated with the
consumer from a merchant terminal.” See Appeal Br. 17. The “request being
generated by the remotely accessible server in response to receiving the alias
associated with the consumer from a merchant terminal” language that the
Examiner determined is a hybrid limitation does not recite a step for using
the system or an act that the system must take but instead defines a request
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that the system receives. The limitations recited in claims 17 and 30
similarly define data related to the system. See Appeal Br. 17, 19, 20. These
claims are also distinguishable from the claims in the In re Katz decision
relied on by the Examiner. Unlike the claims here, the claims in In re Katz
recited user acts that created confusion about when infringement occurred.
See In re Katz, 639 F.3d at 1318. We therefore do not sustain this rejection.
Section 103 Rejection
As noted above, claim 11 recites a “mobile device comprising” both
“a first cryptoprocessor” and “a second cryptoprocessor.” Appeal Br. 17.
Because the Examiner found that this element lacks written description
support, the Examiner interpreted this element to include a single
cryptoprocessor. See Final Act. 7, 10–11. Based on this interpretation, the
Examiner found a combination of McMillen, Algazi, and Clark teaches or
suggests the recited mobile computing device. See Final Act. 10–11.
Appellant argues that claim 11 recites a mobile device that has two
cryptoprocessors and the Examiner has not cited “any prior art showing the
dual cryptoprocessor architecture as claimed.” Appeal Br. 14.
We agree with Appellant. Claim 11 explicitly recites a “mobile device
comprising” both “a first cryptoprocessor” and “a second cryptoprocessor,”
Appeal Br. 17, and the Examiner’s erroneous finding that the recited mobile
device lacks written description support does not provide a basis for
interpreting the mobile device to include only one cryptoprocessor. In any
case, examiners generally must address all the limitations recited in a claim
when determining whether the claim would have been obvious, including
limitations that may lack written description support. See Ex Parte Grasselli,
231 U.S.P.Q. (BNA) 393, 394 (June 30, 1983), aff’d mem., 738 F.2d 453
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(Fed. Cir. 1984) (“All of these limitations of the claims must be considered
regardless of whether or not they were supported by the specification as
filed.”); Manual of Patent Examining Procedure § 2143.03 (II) (“When
evaluating claims for obviousness under 35 U.S.C. 103, all the limitations of
the claims must be considered and given weight, including limitations which
do not find support in the specification as originally filed.”). The Examiner
did not address whether the cited art teaches or suggests a mobile device that
includes two cryptoprocessors as required by claim 11. See Final Act. 7, 10–
11. We therefore do not sustain the Examiner’s rejection of claim 11 and its
dependent claims under § 103.
CONCLUSION
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
11, 13–19,
26–32 112(a)
11, 13–19, 26–32
11, 13–19,
26–34 112(b)
11, 13–19, 26–34
11, 13–19,
27–32 103
McMillen, Algazi,
Clark
11, 13–19,
27–32
26 103 McMillen, Algazi, Clark, Janke 26
33, 34 103 McMillen, Algazi, Clark, Nagai 33, 34
Overall
Outcome
11, 13–19,
26–34

REVERSED