PayWithMyBank, Inc.

Patent Trials and Appeals Board

Mar 24, 2020

14341776 - (D) (P.T.A.B. Mar. 24, 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.
14/341,776 07/26/2014 Ezio Anselmo MAZARIM FERNANDES PW-140103 2212
23662 7590 03/24/2020
ROBERT M. MCDERMOTT, ESQ.
1824 FEDERAL FARM ROAD
MONTROSS, VA 22520
EXAMINER
GETACHEW, WODAJO
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/24/2020 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):
claudia@artlover.com
patents@lawyer.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ENZIO ANSELMO MAZARIM FERNANDES

Appeal 2019-004538
Application 14/341,776
Technology Center 3600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 112(a) as lacking
a written description, under 35 U.S.C. § 112(b) as indefinite, under
35 U.S.C. § 102 as anticipated, and 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 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
PayWithMyBank, Inc. Appeal Br. 2.
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STATEMENT OF THE CASE
The claims stand rejected by the Examiner as follows:
Claims 33–35 under 35 U.S.C. § 112(a) as failing to comply with the
written description requirement. Final Act. 8.
Claims 33–35 under 35 U.S.C. § 112(b) as indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor regards as the invention. Final Act. 10.
Claims 33–35 under 35 U.S.C. § 102(a)(1) as anticipated by
Shablygin et al. (US 2013/0145173 A1, published Jun. 6, 2013)
(“Shablygin”). Final Act. 11.
Claims 33–35 under 35 U.S.C. § 103 as obvious in view of Shablygin,
Kargman et al. (US 2008/0208697 A1, published Aug. 28, 2008)
(“Kargman”), and Csoka (US2008/0109279 A1, published May 8, 2008)
(“Csoka”). Ans. 13.
Claim 33, the only independent on review, is reproduced below
(bracketed numbering added for reference to the limitations in the claim):
33. A non-transitory computer-readable medium that includes a
program that, when executed by a processor system, causes the
processor system to:
during a first time interval:
[1] receive sensitive information from a merchant
system;
[2] encrypt the sensitive information to form
encrypted sensitive information;
[3] use the sensitive information to provide an
authentication of a purchaser’s authorization to transfer
the amount corresponding to the purchaser payment from
an account associated with the purchaser to an account
associated with the merchant system;
[4] partition the encrypted sensitive information
into a first encryption part and a second encryption part;
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[5] create a token that identifies at least the first
encryption part;
[6] store the first encryption part and a copy of the
token;
[7] communicate the token, the second encryption
part, and the authentication to the merchant system; and
[8] delete the second encryption part from the
payment system; and
during a second time interval:
[9] receive the authorization, the token and the
second encryption part from the merchant system;
[10] use the token to obtain the first encryption
part;
[11] combine the first and second encryption parts
to restore the encrypted sensitive information;
[12] decrypt the encrypted sensitive information to
restore the sensitive information; and
[13] use the sensitive information to effect the
transfer of the authorized payment from the account
associated with the purchaser to the account associated
with the merchant system.

WRITTEN DESCRIPTION REJECTION
The Examiner rejected claim 33 as failing to comply with the written
description requirement, citing limitations [3], [7], [8], and [13] of the claim
as a lacking a description in the Specification as originally filed. Final Act.
8, 9.
In responding to the rejection, Appellant did not identify support for
the disputed limitations in the Specification. Instead, Appellant argues “that
credit card payment processes and bank account transfer processes have
been established for well over fifty years, and need not be detailed in a
specification written in 2014” and the skilled worker “would know how to
store and delete information from a system.” Appeal Br. 12.
We address each limitation separately.
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Limitation [3] uses “the sensitive information to provide an
authentication of a purchaser’s authorization to transfer the amount
corresponding to the purchaser payment from an account associated with the
purchaser to an account associated with the merchant system.” The recited
step of “authentication” does not appear in Figure 2 of the Specification,
which illustrates an embodiment of the invention that includes steps of the
claimed subject matter. Spec. ¶¶ 26, 31–40. The only reference to
authentication in the Specification is a discussion of the recommendation not
to store authentication data subsequent to authorization. Spec. ¶ 7. The
issue is not whether the authentication step [3] is well-known, as asserted by
Appellant, but rather whether the step is adequately described in the
Specification to demonstrate that the inventor had possession of it in the
claimed process. The Specification, as originally filed, must “convey[] with
reasonable clarity to those skilled in the art that, as of the filing date sought,
[that the inventor] was in possession of the invention.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). “One shows that one
is ‘in possession’ of the invention by describing the invention, with all its
claimed limitations.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572
(Fed. Cir. 1997). A description that merely renders the invention obvious
does not satisfy the requirement. Id. at 1571–72. In this case, Appellant did
not establish that one of ordinary skill in the art, upon reading the
Specification would have understood it to describe the authentication step
[3] of claim 33.
Appellant’s argument addresses the obviousness of the step, but not
how the step is described in Specification. “[I]t is the specification itself that
must demonstrate possession. And while the description requirement does
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not demand any particular form of disclosure, . . . or that the specification
recite the claimed invention in haec verba, a description that merely renders
the invention obvious does not satisfy the requirement.” Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir.
2010). We thus agree with the Examiner that Specification does not
describe this step nor how it is implemented.
Limitation [7] recites “communicate the token, the second encryption
part, and the authentication to the merchant system.” Figure 2 of the
Specification shows the TransactionID, Token, and Encrypted Piece2
communicated to the Merchant (110, 140, 232). Thus, the Specification
describes communication of the token and second encryption part to the
merchant, but not the “authentication” as required by the claim. Appellant
did not guide us to where in the Specification this limitation is described.
We thus agree with the Examiner that Specification does not describe this
step nor how it is implemented.
Limitation [8] recites “delete the second encryption part from the
payment system.” Appellant did not identify where in the Specification this
step is described. Figure 2 of the Specification does not show it. As
explained above, Appellant’s only argument is that payment processes were
well known at the time of the invention, but Appellant did not identify where
in the Specification the disputed limitation is described. Appeal Br. 12.
Limitation [13] recites “use the sensitive information to effect the
transfer of the authorized payment from the account associated with the
purchaser to the account associated with the merchant system.” The
Specification describes payment authorization as the last step when the
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transaction is finalized. Spec. 15, 18, 25. Thus, we find this limitation
described in the Specification.
The Examiner rejected the claims as lacking a written description,
stating that the claim recited “functional language but does not describe how
the function is performed” and referenced Manual of Patent Examining
Procedure (“MPEP”) § 2161.01 (Ninth Ed., Rev. Jan. 2018 [R-08.2017]).
MPEP § 2161.01 states:
When examining computer-implemented functional
claims, examiners should determine whether the specification
discloses the computer and the algorithm (e.g., the necessary
steps and/or flowcharts) that perform the claimed function in
sufficient detail such that one of ordinary skill in the art can
reasonably conclude that the inventor invented the claimed
subject matter. Specifically, if one skilled in the art would know
how to program the disclosed computer to perform the
necessary steps described in the specification to achieve the
claimed function and the inventor was in possession of that
knowledge, the written description requirement would be
satisfied. Hayes, 982 F.2d at 1534. If the specification does not
provide a disclosure of the computer and algorithm in sufficient
detail to demonstrate to one of ordinary skill in the art that the
inventor possessed the invention including how to program the
disclosed computer to perform the claimed function, a rejection
under 35 U.S.C. 112, first paragraph for lack of written
description should be made.
Appellant did not identify where in the Specification limitations [3],
[7], and [8] are described, let alone the description of them in sufficient
detail of how they are performed. Appellant’s argument that such steps are
well-established and enabled (Appeal Br. 11–12), does not adequately
address the basis of the rejection.
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For the foregoing reason, the rejection of claim 33, and dependent
claims 34 and 35 which incorporate all the limitations of claim 33, is
affirmed.
INDEFINITENESS REJECTION
The Examiner rejected claims 33–35 under § 112(b) because the
claims recited “the amount,” “the purchaser payment,” and “the payment
system” which lack antecedent basis for each of the terms. Final Act. 10.
As explained in MPEP § 2173.05(e):
The lack of clarity could arise where a claim refers to “said
lever” or “the lever,” where the claim contains no earlier
recitation or limitation of a lever and where it would be unclear
as to what element the limitation was making reference . . .
Obviously, however, the failure to provide explicit antecedent
basis for terms does not always render a claim indefinite. If the
scope of a claim would be reasonably ascertainable by those
skilled in the art, then the claim is not indefinite.
In this case, there is no earlier recitation of amount, purchaser
payment, or payment system. However, the term “the amount” is
specifically defined in the claims as “the amount corresponding to the
purchaser payment from an account associated with the purchaser to an
account associated with the merchant system.” Thus, we find this term to be
definite because it is defined in the claim. The term “the purchaser
payment” is also definite because, in view of its definition in the claim, the
skilled worker would understand that it is “the payment” from the recited
“account.”
In step [8], the second encrypted part is deleted from “the payment
system.” We agree with the Examiner that “payment system” has no
antecedent basis and is indefinite. The term is not defined in the claim. The
recitation of “the payment system” implies there is “a payment system”
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previously recited in the claim, but there is not. It is unclear whether “the
payment system” is a part of “the merchant system” recited in the claim, or
“a processor system” that is not necessarily part of the merchant system.
The Examiner also found that the claim is indefinite because it “is
attempting to claim both an apparatus and the method steps of using the
apparatus.” Final Act. 11. We do not agree. The claim is a “non-transitory
computer-readable medium” which is a “manufacture,” one of the categories
of inventions recited in 35 U.S.C. § 101. The manufacture comprises the
program, which is recorded on the medium. However, the presence of the
program on the “non-transitory computer-readable medium” does not make
the claim indefinite because the medium’s purpose is to carry an executable
program and it does not change the nature of the manufacture because of
what is recorded on it.
For the foregoing reasons, we affirm the rejection of claim 33 because
the recitation of “the payment system” lacks antecedent basis and is
therefore indefinite. Dependent claims 34 and 35 incorporate all the
limitations of claim 33 and fall with claim 33 for the same reason.

ANTICIPATION REJECTION
The Examiner rejected claims 33–35 as anticipated by Shablygin.
The Examiner did not give any weight to the executable program included
on the recited “computer-readable medium.” Final Act. 12. This
determination is improper because the programmable instructions have a
functional relationship with the computer. See MPEP 2111.05.III (“a claim
to computer-readable medium programmed with attribute data objects that
perform the function of facilitating retrieval, addition, and removal of
information in the intended computer system, establishes a functional
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relationship such that the claimed attribute data objects are given patentable
weight.”). The anticipation rejection of claims 33–35 is therefore reversed.

OBVIOUSNESS BASED ON SHABYLGIN, KARGMAN, AND CSOKA
The Examiner found that Shablygin describes steps [1]–[6] and [10]–
[12] of claim 33. Final Act. 13–14.2 The Examiner further found that
Kargman describes [7] “communicate the token, the second encryption part”
and [8] “delete the second encryption part from the payment system”, and
[9] “receive the authorization, . . . and the second encryption part from the
merchant system.” Final Act. 14–15. The Examiner found that Csoka
describes step [13] of the claim. Final Act. 15.
In finding the claims obvious in view of Shablygin and Kargman, the
Examiner explained:
it would have been obvious to one of ordinary skill in the art to
substitute the data container identifier (token), the data
container message sent to the merchant (Pars. 71, 195) and the
delete operation request that the system destroy a data container
(Par. 162) of Shablygin in view of Kargman in order to allow
the merchant to retrieve customer profile using the token and
make updates to the customer profile when completing
transaction and store the updated profile securely (Shablygin,
Par. 214) and to avoid compromising of the entire database
impossible (Kargman, Par. 83). (“Express suggestion to
substitute one equivalent technique for another need not be
present to reader such substitution obvious”; In re Fout, 213
USPQ 532 (CCPA 1982), In re Siebentritt, 152 USPQ 618

2 We note that certain of these steps are admitted to be prior art by Appellant
as summarized in Figure 1 of the Specification, which when compared to
Figure 2, shows the admitted differences between the disclosed invention
and the prior art. It is not clear on the record before us whether the
Examiner considered the admitted prior art of Figure 1 when making the
rejection.
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(CCPA 1967); Ex Parte Smith, 83 USPQ2d 1509 (Bd. Pat. App.
& Int. 2007); KSR International Co. v. Teleflex Inc., 82
USPQ2d 1385 (U.S. 2007)).
Final Act. 15 (underlining added).
The Examiner’s reason to combine Shablygin and Kargman is not
supported by a preponderance of the evidence. The “data container
identifier” described in Shablygin is generated from keys provided by the
user and the service provider. As explained in Shablygin:
The data container 10 stores a data that a particular service
provider is allowed to access, use and/or modify with the
permission of the user. The data container 10 can be analogized
to a virtual safe deposit box, where two keys are needed to open
the virtual safe deposit box, with one key 22 belonging to the
service provider and the other key 28 belonging to the user. To
open the virtual safe deposit box (e.g., to access the data in the
data container 10), both the user 26 and the service provider 20
must provide their keys 28 and 22 which, when combined,
generate a unique data container identifier 14 that enables
access to the data stored in the data container 10. As such,
because keys are needed from both the service provider 20 and
the user 26 to determine the location of the data, access to the
data stored in the data container 10 is restricted to the
authorized user/service provider pair. Requiring keys from both
the service provider 20 and the user 26 additionally can
provide the advantage of providing a system in which the
storage provider 20 has no access to data except when the
authenticated user 26 is present.
Shablygin ¶ 71 (emphasis added).
Shablygin, as explained in paragraph 71, combines keys from the
service provider and the user to generate a “unique data container identifier”
that is used to open the data container that contains the sensitive and
encrypted data that the user seeks to protect (Shablygin ¶ ¶ 58, 61). The
purpose of the data container identifier is to block access to the data when
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the authenticated user is not present. Id. at ¶ 71; ¶ 81 (“Since the A&DDS
[authentication and dispersed data storage] system cannot create this
encryption key without the presence of the authenticated user and of the
authenticated service provider, during the absence of either party the stored
data cannot be decrypted.”) As discussed by Appellant (Appeal Br. 18–19),
there would be no reason to communicate the data container identifier to the
service provider (referred to as the “merchant” by the Examiner) because
that would defeat the purpose of Shablygin which requires the presence of
both the user and the service provider to ensure that the service provider
does not have lone access to the data. The Examiner’s reasoning that it
would have been obvious to send the data container identifier to the
merchant as a “token . . . in order to allow the merchant to retrieve customer
profile using the token and make updates to the customer profile” would
allow the merchant to have sole control of the user’s sensitive information
which is opposite to Shablygin’s goal of protecting the user information
from unilateral access by the service provider. Compare step [7] of claim 1:
“communicate the token, the second encryption part, and the authentication
to the merchant system.”
Step [7] of claim 1 also requires that “the second encryption part” is
sent to the merchant. The Examiner’s determination that substituting the data
container identifier for the token in Kargman as an “equivalent technique” is
also not supported by a preponderance of the evidence. Kargman, as found
by the Examiner, splits the credit card information into two pieces, and
sends one piece to the merchant. Kargman ¶ 51. Shablygin’s data container
identifier does not contain encrypted data, itself. Therefore, sending the data
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container identifier to the merchant is not the same as or equivalent to
sending encrypted data to the merchant.
Accordingly, for the foregoing reasons, the rejection of claim 33 as
obvious in view of Shablygin, Kargman, and Csoka is reversed. Dependent
claims 34 and 35 incorporate all the limitations of claim 33 and are therefore
reversed for the same reasons.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
33–35 112(a) Written description 33–35
33–35 112(b) Indefiniteness 33–35
33–35 102(a)(1) Shablygin 33–35
33–35 103 Shablygin,
Kargman, Csoka
33–35
Overall
Outcome
33–35

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