MASTERCARD INTERNATIONAL INCORPORATED

Patent Trials and Appeals Board

Apr 29, 2020

14176867 - (D) (P.T.A.B. Apr. 29, 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.
14/176,867 02/10/2014 William GILES 37537.0033U1- 4996
126944 7590 04/29/2020
MasterCard
c/o Ballard Spahr LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309
EXAMINER
KLOBERG, PAUL R
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
04/29/2020 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):
uspatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM GILES

Appeal 2019-005718
Application 14/176,867
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
ULRIKE W. JENKS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 103 as obvious.
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s
decision to reject the claims.1 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 Mastercard International, Inc., as the real
party in interest. Appeal Br. 1.
Appeal 2019-005718
Application 14/176,867

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STATEMENT OF THE CASE
Claims 1–20 are rejected by the Examiner under 35 U.S.C. § 103 as
obvious in view of Wadia (US 8,836,473 B2, issued Sep. 16, 2014)
(“Wadia”), Varghese et al. (US 7,908,645 B2, issued Mar. 15, 2011)
(“Varghese”), and Newman et al. (US 8,550,339 B1, issue Oct. 8, 2013)
(“Newman”). Non-final Act. 8.
Claims 1, 8, and 15 are independent claims. Appellant relied on the
same arguments for all three independent claims. Appeal Br. 17. We select
claim 1 as representative (claim annotated with bracketed numbering):
1. A method comprising:
[1] receiving, with a network interface, from a mobile
device, a request to authenticate a financial transaction
associated with an issuer financial institution, wherein the
request comprises a Primary Account Number associated with a
user of the mobile device and a transaction amount;
[2] determining, with a processor, a financial transaction
security level based at least in part on the transaction amount;
[3] generating, with the processor, based on the financial
transaction security level, a biometric sequence comprising a
sequence of numbers, wherein each unique number of the
sequence of numbers corresponds to a unique piece of
biometric information, wherein each unique piece of biometric
information comprises a different fingerprint of the user;
[4] transmitting, with the network interface, the biometric
sequence to the mobile device;
[5] receiving, with the network interface, from the mobile
device, biometric information from the user, wherein the
biometric information is captured by a biometric sensor of the
mobile device;
[6] determining, with the processor, that the biometric
information received from the user matches the biometric
sequence; and
[7] transmitting, with the network interface, an
authentication message to the issuer financial institution when
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the biometric information received from the user matches the
biometric sequence, wherein the financial transaction is
authenticated upon receipt of the authentication message by the
issuer financial institution.

DISCUSSION
The Examiner found that Wadia discloses steps [1] and [4]–[7] of
claim 1, including disclosing using a sequence of fingerprints as a biometric
(step [3]; col. 5, ll. 25–46). Non-Final Act. 8–9. The Examiner stated that
Wadia does not disclose the details of the security level based on the
transaction amount as recited in step [2], but found that Varghese discloses
this step in the same context of financial interactions, making it obvious to
apply it to Wadia. Id. at 11. The Examiner found that Varghese, like Wadia,
discloses fingerprints as a biometric for authenticating financial transactions.
Id. The Examiner further cites Newman for describing using a sequence of
numbered fingerprints for authentication as in step [3] of the claim. Id. at
12–13. The Examiner reasoned it would have been obvious to a person of
ordinary skill in the art at the time of the invention “to have modified the
combined disclosures of Wadia and Varghese to incorporate the teachings of
Newman which provides more specific detail with regard to using a
sequence of fingerprints to create a more difficult circumstance to
fraudulently circumvent a variety of security safeguards and gain system
access.” Id. at 13–14.
Appellant argues that Newman does not describe step [3] of claim 1 of
“generating, with the processor, based on the financial transaction security
level, a biometric sequence comprising a sequence of numbers, wherein each
unique number of the sequence of numbers corresponds to a unique piece of
biometric information, wherein each unique piece of biometric information
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comprises a different fingerprint of the user.” Appeal Br. 15 (quoting from
claim 1). Appellant contends:
Newman briefly discusses mobile devices being used to capture
a sequence of fingerprints (see id at 2:59-67), it does not teach
generating a sequence of numbers that each correspond to a
different fingerprint of a user. Moreover, the reference is devoid
of any teaching that the sequence of user fingerprints is based
on a security level of the associated transaction. As a result, the
sequence of user fingerprints generated using the teachings of
Newman could not be based on the security level of the
associated transaction.
Appeal Br. 15 (emphasis omitted).
Appellant’s argument does not persuasively demonstrate an error in
the Examiner’s rejection. The claim recites “a biometric sequence
comprising a sequence of numbers,” where each biometric information of
the sequence “comprises a different fingerprint of the user.” The
Specification discloses that the numeric sequence of fingerprints in some
embodiments is created by a random sequence generator “with each numeric
digit corresponding to fingers 1–10 of the customer.” Spec. ¶ 96. Thus, we
interpret the recited “sequence of numbers” to mean numbering the
fingerprints of fingers 1–10 in a sequence.
Wadia discloses using a sequence of fingerprints:
A fingerprint sequence used by a user to select his PIN may
include fingers from a single hand. An exemplary fingerprint
sequence may include: 1st finger, 3rd finger, 4th finger, thumb.
Alternatively, a fingerprint sequence may combine different
fingers from the right (“R”) and left (“L”) hands. An exemplary
fingerprint sequence combining different fingers from the right
and left hands may include: 1st finger of L hand, 1st finger of R
hand, 3rd finger of L hand and 1st finger of L hand.
Wadia, col. 5, ll. 39–46
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Newman also discloses a numbered sequence of fingerprints.
Specifically Newman discloses:
Systems and methods according to the invention
preferably provide a sequence of fingerprints for authentication
instead of a single finger or thumb print. The sequence of
fingerprints may be selected by a user or system defined.
For example, the following sequence may be defined by
a user and required for authentication: 1st finger, 3rd finger, 4th
finger, thumb.
A fingerprint sequence may have a variable length and
may include sequential repetitions of the same finger. For
example, sequence of fingerprints may be: 1st finger, 1st finger,
3rd finger, 1st finger.
Newman, col. 2, ll. 27–37.
Thus, each of these publications clearly meet the claim limitation of
[3] “a biometric sequence comprising a sequence of numbers, wherein each
unique number of the sequence of numbers corresponds to a unique piece of
biometric information, wherein each unique piece of biometric information
comprises a different fingerprint of the user.” Newman discloses the
sequence can be system defined, meeting the claim limitation of
“generating” the sequences “with the processor” a recited in step [3] of the
claim.
Step [3] further requires that the sequence is “based on the financial
transaction security level.” While Newman does not disclose making the
sequence dependent on the security level, the purpose of Newman’s
sequence is to enhance security so that “access to a secure system or facility
will be protected by a sequence of fingerprints that is more secure than
access protected by a single fingerprint.” Newman, col. 2, ll. 24–26. Thus,
the idea of using fingerprints when more security is desired is specifically
described or suggested by Newman. Therefore, we do not agree that
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Newman is “devoid” of a teaching that is relevant to using fingerprints based
on security level. Appeal Br. 15.
Varghese explicitly discloses determining security level based on the
financial transaction:
Authentication interface selection criteria can be determined in
accordance with the evaluated risk scores and any risk alerts.
The selection criteria will then call for an interface with a
security that is commensurate the risk of fraud. Also, the risk
information can also be provided to the service provider system
or application which can then perform, e.g., more thorough
checking of authentication data or requesting the authentication
services of this invention to re-authenticate the user or request.
This can involve, e.g., seeking responses to details
authentication questions, or obtaining biometric identification
information (e.g., fingerprints, retinal scans, or the like), or
obtaining voice prints, or the like.
Varghese, col. 11, ll. 34–46.
For example, a rule may specify that where there is receipt of a
request from a user device for a transfer of an amount of money
over a certain threshold and where the device resides in a
location, determined by geolocation information, known for an
larger than normal volume of fraudulent activity, the action to
be taken is to present a predetermined higher security user
interface to the user in order to provide more security against a
possible fraudulent transaction.
Varghese, col. 27, ll. 54–62.
The Examiner relied on Varghese for teaching the disputed limitation,
not Newman as asserted by Appellant. Non-Final Act. 10. Thus, we find
Appellant’s argument that Newman is deficient unavailing.
Appellant also argues that modifying Varghese with Newman to meet
the limitation of step [3] “lacks a rational underpinning and amounts to an
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impermissible use of hindsight reconstruction and ex post facto reasoning.”
Appeal Br. 17.
This argument is not persuasive. The Examiner provided detailed
reasoning for combining each of the cited publications. Non-Final Act. 11,
13–14. Appellant did not identify a deficiency in this reasoning and we find
none.
A Reply Brief was filed July 22, 2019. In it, it appears that Appellant
repeats the same arguments in the Appeal Brief. “Any argument raised in the
reply brief which was not raised in the appeal brief, or is not responsive to
an argument raised in the examiner's answer, including any designated new
ground of rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.” 37 C.F.R. § 41.41(b)(2).
Appellant did not explain how the arguments in the Reply Brief are
responsive to arguments made by the Examiner in the Answer.

Summary
For the foregoing reasons, we affirm the obviousness rejection of
claim 1 under § 103. Appellant made the same argument for independent
claims 8 and 15. These claims therefore fall with claims 1. Appeal Br. 11.
Separate arguments for dependent claims 2–7, 9–14, and 16–20 were not
made; these claims fall with claim 1, 8, and 15. 37 C.F.R. § 41.37(c)(1)(iv).

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 103 Wadia, Varghese,
Newman
1–20

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

AFFIRMED