Visa International Service Association

Patent Trials and Appeals Board

Jul 1, 2020

14719014 - (D) (P.T.A.B. Jul. 1, 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.
14/719,014 05/21/2015 Erick Wong 79900-940985(964US02) 5963
66945 7590 07/01/2020
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
CASTILHO, EDUARDO D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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 ERICK WONG, CHRISTIAN AABYE,
CHRISTIAN FLURSCHEIM, and CHRISTOPHER JONES
Appeal 2019-006926
Application 14/719,014
Technology Center 3600
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
TAWEN CHANG, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 22–25, 27–30, 33–41. We have
jurisdiction 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 Visa
International Service Association. Appeal Br. 3.
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BACKGROUND
Communication devices have been “used as payment instruments to
conduct contactless transactions.” Spec. ¶ 2. According to the
Specification,
[t]o . . . securely store account information on a portable
communication device, a secure element such as subscriber
identity module (SIM) card, specialized integrated chip
embedded into the portable communication device, or
specialized component provided as aftermarket solution[,] is
used. . . . A secure element is considered secure because
account information is stored in tamper-resistant hardware,
which protects the account information from malware or viruses
that may have infected the operating system or an application
running on the portable communication device.
Id.
The Specification states that, however, “incorporating a secure
element adds to the . . . cost of the portable communication device.” Spec.
¶ 3. In addition, a secure element is typically not under the control of a
financial institution; thus, to provision it with account credentials and
payment functionalities, the issuer and/or payment processor may have to go
through a “cumbersome and complex process” to establish “commercial
agreements and technical connectivity” with the party controlling the secure
element (e.g., the mobile network operator (MNO)). Id.
The Specification notes that, “[t]o further complicate the security
issue, in some scenarios, obtaining authorization of a transaction from an
issuer at the time of a transaction may be impractical,” for instance because
“a transit gate terminal may lack constant network connectivity.” Spec. ¶ 5.
The Specification states that, “[i]n such scenarios, credentials used to
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quickly provide patrons with access [to goods or services] may require
additional safeguards if they are not stored in a secure element.” Id.
Further according to the Specification, “[e]mbodiments of the
invention address the problem of security concerns with conducting
transactions with a communication device that does not have or does not rely
on a secure element.” Spec. ¶ 6.

CLAIMED SUBJECT MATTER
The claims are directed to a method for enhancing security of a
communication device when conducting a transaction offline using the
communication device. Claim 1, the only independent claim, is illustrative:
1. A method for enhancing security of a
communication device when conducting a transaction offline
using the communication device, the method comprising:
receiving, from a remote computer by an application
installed on the communication device, a limited-use key
(LUK) that is associated with a first set of one or more limited-
use thresholds that limits usage of the LUK, and a signature key
that is associated with a second set of one or more limited-use
thresholds that limits usage of the signature key, wherein the
first set of one or more limited-use thresholds includes a first
limited-use threshold that is different than a second limited-use
threshold included in the second set of one or more limited-use
thresholds;
receiving, from an access device, terminal transaction
data associated with the transaction involving a good or a
service;
generating, by the application of the communication
device:
a transaction cryptogram using the LUK as an
encryption key to encrypt at least a plurality of data
elements from the terminal transaction data; and
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a signature using at least a part of the terminal
transaction data and the signature key;
sending, to the access device, a certificate authority
public key index, an issuer public key certificate, and a
communication device public key certificate, wherein the
certificate authority public key index identifies a certificate
authority public key that authenticates the issuer public key
certificate, the issuer public key certificate includes an issuer
public key that authenticates the communication device public
key certificate, and the communication device public key
certificate includes a communication device public key that
authenticates the signature; and
sending, to the access device, the transaction cryptogram
and the signature, the access device authenticating the
application of the communication device without requiring
network connectivity by verifying the signature using the
communication2 device public key, granting access to the good
or service after authenticating the application of the
communication device and prior to verification of the
transaction cryptogram, and obtaining authorization for the
transaction from an issuer by verifying the transaction
cryptogram with the issuer after access to the good or service
has been granted.
Appeal Br. 29 (Claims App.).

REJECTION(S)
A. Claims 1, 3, 4, 22–25, 27–30, and 33–41 are rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.
Ans. 5.

2 The Examiner notes that claim 1 in fact recites “verifying the signature
using the communicating device public key.” Ans. 47–48.
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B. Claims 1, 3, 4, 22–25, 27–30, and 33–41 are rejected under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite.
C. Claims 1, 3, 4, 22, 23, 25, 27–29, and 33–41 are rejected under 35
U.S.C. § 103 as being unpatentable over Saxena,3 Smets,4 and Radu.5
Ans. 13.
D. Claim 24 is rejected under 35 U.S.C. § 103 as being unpatentable over
Saxena, Smets, Radu, and Verhoorn.6 Ans. 24.
E. Claim 30 is rejected under 35 U.S.C. § 103 as being unpatentable over
Saxena, Smets, Radu, and Ginter.7 Ans. 25.

OPINION
A. Rejection under 35 U.S.C. § 101 (claims 1, 3, 4, 22–25, 27–30, and
33–41)
1. Issue
The Examiner asserts that “[t]he claims recite local processing of
payments for goods and services,” which is “within the certain methods of
organizing human activity grouping of abstract ideas.” Ans. 6. More
particularly, the Examiner asserts that the claims “recite functions that can
be performed by an individual receiving and processing documents, which is
a commercial interaction; and/or an individual granting access to a good or a

3 Saxena et al., US 2012/0254041 A1, published Oct. 4, 2012.
4 Smets et al., US 2014/0263625 A1, published Sept. 18, 2014.
5 Christian Radu, IMPLEMENTING ELECTRONIC CARD PAYMENT SYSTEMS
(2002).
6 Verhoorn et al., US 6,725,371 B1, issued Apr. 20, 2004.
7 Ginter et al., US 5,892,900, issued Apr. 6, 1999.
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service upon presentation of a valid token and/or ID, which is a fundamental
economic practice.” Id.
The Examiner asserts that the abstract ideas in the claims are not
“integrated into a practical application because . . . the additional element(s)
of the claim(s) . . . merely uses a computer as a tool to perform the abstract
idea,” which “requires no more than a computer performing functions that
correspond to acts required to carry out the abstract idea.” Ans. 6–7. The
Examiner asserts that the additional elements do not “involve improvements
to the functioning of a computer[] or . . . any other technology,” “apply the
abstract idea with, or by use of, a particular machine,” “effect a
transformation or reduction of a particular article to a different state or
thing,” or “apply or use the 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[s] as a whole [are] more than
a drafting effort designed to monopolize the exception.” Id. at 7.
Finally, the Examiner asserts that “[t]he claims do not include
additional elements that are sufficient to amount to significantly more” than
the recited abstract idea, because “the additional elements of using a
communication device to perform the steps amounts to no more than using a
computer or processor to automate and/or implement the abstract idea of
local processing of payments for goods or services.” Ans. 8.
Appellant contends that the “characterization of the claims as being
directed to fundamental economic practices and certain methods of
organizing human activities overgeneralizes and oversimplifies the claims.”
Appeal Br. 11. Appellant further contends that the claims “provide the
technical improvements of enhancing the security of the communication
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device while reducing the processing time” and “should also be patent
eligible under the USPTO’s 2019 Guidance for integrating any alleged
judicial exception in to a practical application.” Id. at 12, 15–16.
2. Analysis
In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012), the Supreme Court set forth a general framework for
analyzing patent-eligibility questions under 35 U.S.C. § 101. As explained
by our reviewing court in Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371 (Fed. Cir. 2015):
In Mayo . . . , the Supreme Court set forth a framework for
distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts. First, we determine
whether the claims at issue are directed to a patent-ineligible
concept. . . . If the answer is yes, then we next consider the
elements of each claim both individually and “as an ordered
combination” to determine whether additional elements
“transform the nature of the claim” into a patent-eligible
application. . . . The Supreme Court has described the second
step of this analysis as a search for an “inventive concept”—
i.e., an element or combination of elements that is “sufficient to
ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.”
Id. at 1375.
On January 7, 2019, the Director of the USPTO issued the “2019
Revised Patent Subject Matter Eligibility Guidance” (“Revised Guidance”),
which provides further details regarding how the Patent Office analyzes
patent-eligibility questions under 35 U.S.C. § 101. 84 Fed. Reg. 50–57 (Jan.
7, 2019). Under Step 2A of the Revised Guidance, the first step of the Mayo
test, namely whether a claim is “directed to” a patent-ineligible concept, is
“a two-pronged inquiry.” Id. at 54. In prong one, we evaluate whether the
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claim recites a judicial exception, such as laws of nature, natural
phenomena, or abstract ideas. Id. If the claim recites a judicial exception,
the claim is further analyzed under prong two, which requires “evaluat[ion
of] whether the claim recites additional elements that integrate the exception
into a practical application of that exception.” Id. The Revised Guidance
explains that, “[i]f the recited exception is integrated into a practical
application of the exception, then the claim is eligible at Prong Two of . . .
Step 2A [of the Revised Guidance].” Id.
Analyzing this case under the Mayo framework as articulated by the
Supreme Court and as further elucidated in Ariosa and the Revised
Guidance, we agree with Appellant that the Examiner has not established a
prima facie case that the claims are patent-ineligible as being directed to a
judicial exception to patent-eligible subject matter, because the claims recite
additional elements that integrate any judicial exception into a practical
application of that exception.

Revised Guidance Step 2A, Prong 1
Following the Revised Guidance, we first consider whether the claims
recite a judicial exception. The Revised Guidance identifies three groupings
of subject matter in the abstract idea exception, including “[c]ertain methods
of organizing human activity,” such as “fundamental economic principles or
practices (including hedging, insurance, mitigating risk)” and “commercial
or legal interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations).” 84 Fed. Reg. at 52 (emphasis added).
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Claim 1, the only independent claim, recites “receiving, from an
access device, terminal transaction data associated with the transaction
involving a good or service,” “granting access to . . . good or service after
authenticating . . . the communication device,” and “obtaining authorization
for the transaction from an issuer.” Appeal Br. 29 (Claims App.). In the
context of the claims, transactions involving a good or service are sales.
See, e.g., Spec. 1:13–16 (describing point-of-sale (POS) terminal as an
example of an access device). Thus, these steps relate to sales activities,
which as discussed above are “commercial or legal interactions” that fall
within “[c]ertain methods of organizing human activity” grouping of the
abstract idea exception. Accordingly, we conclude that the claims recite
abstract ideas.
We note that the Examiner appears to assert that the entirety of the
claims recites an abstract idea. For example, the Examiner asserts that “[t]he
claims recite local processing of payments for goods or services, which is an
abstract idea.” Ans. 6. More specifically, the Examiner asserts that claim
limitations relating to “receiving . . . key . . . and a signature key . . . ”;
“receiving . . . data”; “generating . . . cryptogram and a signature”; “sending
. . . certificate . . . ”; and “sending . . . cryptogram and the signature” all
recite “methods of organizing human activity” because “they recite functions
that can be performed by an individual receiving and processing documents,
which is a commercial interaction; and/or an individual granting access to a
good or a service upon presentation of a valid token and/or ID, which is a
fundamental economic practice.” Id.
To the extent this is the Examiner’s position, we are not persuaded.
While certain limitations in the claims – e.g., “granting access to . . . good or
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service after authenticating . . . the communication device” – may be
equivalent to “granting access to a good or a service upon presentation of a
valid token and/or ID,” which we agree to be a fundamental economic
practice and/or an abstract method of organizing human activity, the claims
recite additional limitations as discussed below.
As an initial matter, the fact that a claim recites functions that can be
performed by an individual engaging in a commercial interaction does not
indicate that these functions themselves are commercial interactions and thus
abstract ideas. Furthermore, we are not persuaded by the Examiner’s
conclusory statement that the recited limitations can be performed by an
individual receiving and processing documents. For example, it is unclear
how and in what circumstance such an individual would “generat[e] . . . a
transaction cryptogram using the LUK as an encryption key to encrypt at
least a plurality of data elements from the terminal transaction data” that can
then be “verif[ied] . . . with the issuer after access to the good or service has
been granted.”
In response to Appellant’s arguments, the Examiner asserts that, when
properly construed under the broadest reasonable interpretation standard, the
only claim language carrying patentable weight are the steps of:
(a) “receiving, from a remote computer by an application installed on the
communication device, a limited-use key (LUK)”; (b) “receiving, from an
access device, terminal transaction data”; (c) “generating, by the application
of the communication device: a transaction cryptogram using the LUK as an
encryption key” and “a signature using at least a part of the terminal
transaction data and the signature key”; (d) “sending, to the access device, a
certificate authority public key index, an issuer public key certificate, and a
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communication device public key certificate”; and (e) “sending, to the
access device, the transaction cryptogram and the signature.” Ans. 34–35.
We are not persuaded. Assuming for the sake of argument that the
only limitations having patentable weight are those recited by the Examiner,
the Examiner still has not persuasively shown that all of these limitations
recite a “commercial interaction” or a “fundamental economic practice,” for
the reasons discussed above.
Neither do we agree with the Examiner’s claim construction. The
Examiner asserts that claim language relating to usage limits of the limited
use key or signature and/or relating to the functions of the public key index
and the various public keys and certificates are “nonfunctional descriptive
material” rather than “positively recited method steps” and thus carry no
patentable weight. Ans. 29–30, 32–33. The Examiner similarly asserts that,
in the “sending” step of claim 1, claim elements that “recit[e] what the
receiving device and other recited (or unrecited) entities perform” “carr[y]
no patentable weight as [they] merely represent[] the intended use of the step
of ‘sending’.” Id. at 33–34. The Examiner asserts that Appellant attempts to
import limitations from the Specification into the claims. Id. at 38.
We are not persuaded. Under the nonfunctional descriptive material
doctrine, descriptive material that does not “functionally affect” the claimed
system or process need not be given patentable weight. See Ex parte Nehls,
88 USPQ2d 1883, 1887–93 (BPAI 2008) (precedential). In Nehls, for
example, the Board found that the particular sequence of nucleic acid recited
in a system for identifying commercially important human nucleic acid
fragments are nonfunctional descriptive material because “[t]here is no
evidence that [the recited nucleic acid sequence(s)] affect the process of
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comparing a target sequence to a database by changing the efficiency or
accuracy or any other characteristic of the comparison.” Id. at 1890.
In contrast, in this case the claim elements cited by the Examiner as
“descriptive” material does functionally affect the claimed process. For
example, the Specification states that “[a] ‘limited-use threshold’ may refer
to a condition that limits the usage of a piece of information,” which “may
become invalid and may no longer be used” when “the limited-use threshold
is exceeded or exhausted,” i.e., when “the underlying condition is met.”
Spec. ¶ 42. The claim recites the use of the limited-use key and the
signature keys to generate, respectively, a transaction cryptogram and a
signature using at least part of the transaction data, which are subsequently
used to authenticate the communication device and obtain authorization for
the transaction from an issuer. Depending on whether the keys are
associated with limited-use thresholds and whether such thresholds have
been exhausted, the keys may be unable to perform the functions of
authenticating the communication device and/or obtaining authorization for
the transaction from an issuer.
Likewise, the claim elements that require the certificate authority
public key index and the various public key certificate(s) and public key(s)
to identify and/or authenticate other public key(s) and/or certificate(s) and
the signature functionally affect the claimed process, because they allow the
access device to verify the signature and authenticate the communication
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device and subsequently to grant access to a good or service without
verifying the transaction cryptogram.8
The Examiner asserts that, under the broadest reasonable
interpretation of the claims, the claim allows for unrecited entities (rather
than the communication device) to perform the steps of “receiv[ing]
‘terminal transaction data’ and send[ing] ‘a key index, and two certificates’
and ‘the cryptogram and the signature’.” Ans. 32. The Examiner asserts
that this, “per se, is a good indication that an abstract idea is present in the
claims as these steps are not even required to be performed by the recited
‘machine.’” Id.
We are not persuaded. The Examiner cites to no authority, and we are
aware of none, that a method is directed to an abstract idea merely because it
does not explicitly recite the entity performing each of the recited steps.

Revised Guidance Step 2A, Prong 2

8 The Examiner also asserts that, even if weight were to be given to the
claim elements relating to limited usage key and signature, “it would provide
a ‘loose’ relationship between the usage and sets of thresholds and another
‘loose’ relationship between the sets of thresholds and keys themselves as
the claim does not recite in which manner these elements are ‘associated’
one to another.” Ans. 29. The Examiner asserts that “the claims . . . do not
limit the keys . . . to ‘have different usage limits’” but only require “two
keys that are each ‘associated’ with some set of other data and this set of
other data has some sub-data that is different from the sub-data included in
the set of other data ‘associated’ with the other key.” Id. at 30–31.
Assuming the Examiner’s interpretation of these limitations is correct (i.e.,
that the limited-use key and signature key need not have different usage
limits), the Examiner does not explain how such a construction renders these
claim limitations abstract ideas.
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As discussed above, although claim 1 recites an abstract idea, it would
still be patent-eligible if “the claim as a whole integrates the recited judicial
exception into a practical application of the exception.” 84 Fed. Reg. at
53. The analysis of whether the claim integrates the judicial exception into
a practical application includes “[i]dentifying . . . additional elements recited
in the claim beyond the judicial exception(s)” and “evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application.” Id. at 54–55.
“A claim that integrates a judicial exception into a practical
application will apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception.” 84 Fed. Reg. at 53.
An additional element may integrate an exception into a practical application
if, for example, it “reflects an improvement in the functioning of a computer,
or an improvement to other technology or technical field.” Id. at 55. In
contrast, “[a]n additional element . . . [that] merely includes instructions to
implement an abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea” indicates that “a judicial exception has not
been integrated into a practical application.” Id.
Here, in addition to the steps that recite sales activities, claim 1 also
recites (1) the communication device (a) “receiving[] from a remote
computer . . . a limited-use key (LUK) . . . and a signature key” and
(b) “generating . . . a transaction cryptogram using LUK as an encryption
key” and “a signature using at least part of the terminal transaction data and
the signature key”; (2) “sending, to the access device, a certificate authority
public key index, an issuer public key certificate, and a communication
device public key certificate,” which respectively authenticates the issuer
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public key certificate, the communication device public key certificate, and
the signature; (3) “sending . . . the transaction cryptogram and the signature”
to the access device; and (4) the access device (a) “authenticating . . . the
communication device . . . by verifying the signature using the
communication device public key” and (b) “verifying the transaction
cryptogram with the issuer after access to the good or service has been
granted.” Appeal Br. 29 (Claims App.).
The Specification states the methods of the invention “enhance the
security of a portable communication device when conducting transactions”
without requiring “the use of a secure element to safeguard account
credentials,” because they “provision a portable communication device with
limited-use account parameters that have a limited usage or lifespan” and
replenish the device with new limited-use account parameters when prior
parameters are exhausted. Spec. ¶ 7. Thus, “account credentials stored on a
portable communication device [without a security element] becomes only a
limited security risk, because stolen limited-use account parameters can at
most be used for only a small number of transactions or limited monetary
amount.” Id. ¶ 25.
The Specification explains that, as compared to secure element
implements, the approach of the invention “reduces the technical and
commercial complexities for issuers and/or payment processors, because
issuers and/or payment processors can provision account credentials and
payment functionalities to a mobile application on a portable communication
device without having to obtain access to a secure element through a mobile
network operator.” Spec. ¶ 23.
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The Specification further states that the methods of the invention
“include a signature key that is used to generate a signature to perform
offline data authentication” and that such offline data authentication “can be
useful in environments in which network connectivity is limited[] or in
which there is insufficient time to obtain transaction authorization from an
issuer,” including by “reduc[ing] the processing time at [a] transit gate to
allow more passengers to go through the transit gate in a given time frame.”
Spec. ¶ 58.
In short, the Specification describes the method of the claims as an
improvement in the performance of electronic transactions, in that the
additional elements of the claimed method recited above allow
communication devices to perform such transactions with enhanced security
and offline authentication, without requiring the use of a secure element. As
applied to transactions using a communication device, therefore, the method
of the claims represents an improvement to a technical field, and claim
elements that reflect such an improvement indicate that recited judicial
exception(s) have been integrated into a practical application.
In response to Appellant’s arguments, the Examiner asserts that
“Appellant’s overgeneralization of the analysis, without specifically
identifying which claim elements would transform the patent-ineligible
concept into a [patent]-eligible application, is improper.” Ans. 40. The
Examiner asserts that the claims do not integrate the judicial exception into a
practical application because “the additional elements of the claims, such as
a communication device performing the steps of receiving and generating[,]
merely use[] a computer as a tool to perform the abstract idea,” while “[t]he
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remaining steps are not even required to be performed by the
‘communication device.’” Id.
We are not persuaded. As discussed above, the Examiner does not
persuasively explain how limitations such as “generating . . . a transaction
cryptogram using the LUK as an encryption key” is an abstract idea as
described in the Revised Guidance. Moreover, as further noted above, we
find that the Examiner’s § 101 analysis is based on erroneous claim
construction. Thus, we do not agree that the additional elements of the claim
“merely use[] a computer as a tool to perform [an] abstract idea.” Likewise,
as also discussed above, we are not aware of any authority, and none are
cited by the Examiner, that suggests a claimed step is necessarily an abstract
idea if not explicitly described as being performed by a single recited
machine.
The Examiner asserts that “[n]othing in the claim language would lead
one of ordinary skill to convey that an enhancement in security is being
provided” and that Appellant is inconsistent in arguing that “the claims both
‘enhance the security’ and ‘reduces the technical complexities’ (i.e., by not
requiring a tamper-proof hardware[)].” Ans. 36–37. The Examiner asserts
that “the data contents recited by the claims has no impact whatsoever in the
security of the device,” that “Appellant falls short of asserting that the
solution provided by the claims enhances security when compared to
conventional ways (i.e. a [‘]secure element’),” and that “the gain in security,
from the communications device perspective, is [non-]existent” because
“storing a key outside of the confines of a secure element per se is less
secure than storing the same key inside the secure element, regardless of the
key contents.” Id. Finally, the Examiner asserts that any “reduc[tion of]
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processing time by deferring verification of the transaction cryptogram
without sacrificing security” is an “intended result . . . far outside the scope
of the claim” and that “[t]he gain obtained by a device outside of the scope
of the claim shouldn’t impact . . . the analysis of the subject matter of the
claims at issue.” Ans. 39.
We are not persuaded. While not dispositive, and without construing
the preamble as limiting, we note that the preamble of claim 1 recites “[a]
method for enhancing security of a communication device when conducting
a transaction offline using the communication device.” Appeal Br. 29
(Claims App.).
Moreover, while the element(s) that confer the improvement must be
in the claims, we do not agree that the claims must recite what the
improvement is. As an example, our reviewing court found in Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) that claims to a self-
referential table for a computer database are directed to an improvement of
an existing technology, based on the specification’s teachings that, as
compared to traditional databases, the claimed invention “does not require a
programmer to preconfigure a structure to which a user must adapt data
entry” and “achieves other benefits . . . such as increased flexibility, faster
search times, and smaller memory requirements.” Id. at 1337. Finally, we
note that a “reduc[tion of] processing time . . . without sacrificing security”
is, in fact, an improvement to a method of “conducting a transaction . . .
using [a] communication device” rather than “[a] gain obtained by a device
outside of the scope of the claim,” as the Examiner asserts.
Nor are we persuaded by the Examiner’s conclusory statements that
the invention of the claims do not in fact provide an improvement over
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conventional technology. A claimed invention may be directed to an
improvement over conventional technology in one aspect, even if it is not
superior to conventional technology in all aspects. For this reason, we also
see no inconsistency in Appellant simultaneously arguing that the claims
both reduce technical complexity (by reducing the need for a “secure
element”) and enhance security (by using limited-use keys and signature
keys associated with limited-use thresholds).
Accordingly, we conclude that the claims are patent eligible and
reverse the Examiner’s rejection of the claims under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.

B. Indefiniteness rejection (claims 1, 3, 4, 22–25, 27–30, and 33–41)
1. Issue
Claim 1 recites among other things:
generating, by the application of the communication device:
a transaction cryptogram using the LUK as an encryption
key to encrypt at least a plurality of data elements from the
terminal transaction data; and
a signature using at least a part of the terminal
transaction data and the signature key;
. . .
sending, to the access device, the transaction cryptogram and
the signature, the access device authenticating the application of the
communication device without requiring network connectivity by
verifying the signature using the communication device public key,
granting access to the good or service after authenticating the
application of the communication device and prior to verification of
the transaction cryptogram, and obtaining authorization for the
transaction from an issuer by verifying the transaction cryptogram
with the issuer after access to the good or service has been granted.
Appeal Br. 29 (Claims App.) (emphasis added).
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The Examiner asserts that “it is unclear whether ‘and a signature
. . . ’” in the claim limitation, “generating . . . a transaction cryptogram . . .
and a signature” refers to “the step of ‘generating’ . . . or . . . the intended
use of the encryption key.” Ans. 11–12.
The Examiner also asserts that, since network connectivity is not
required, the step of “sending . . . the transaction cryptogram and the
signature” is unclear. Ans. 10. The Examiner asserts that “[c]laim 1 . . .
attempts to limit the step of ‘sending, to the access device, the transaction
cryptogram and the signature’ by actions performed by the receiving
device,” but “the scope of claim is unclear” because the Specification states
that “the steps performed by the access device are not part of the claimed
steps performed by the communication device.” Ans. 10–11.
The Examiner further asserts that “it is unclear whether the steps of
‘granting . . . and obtaining” recited in claim 1 are performed by the
communications device or the access device and that “it is unclear which
entity or entities performs the ‘verifying the transaction cryptogram with the
issuer’ (i.e. communications device, access device, issuer or a combination
of these entities).” Ans. 12.
Appellant contends that “the claim language reasonably defines the
metes and bounds of the claims.” Appeal Br. 19.
The issue with respect to this rejection is whether a preponderance of
evidence supports the Examiner’s conclusion that the claims are indefinite.
2. Analysis
We agree with Appellant that the Examiner has not established a
prima facie case that the claims are indefinite.
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As to the Examiner’s assertion that, since network connectivity is not
required, the step of “sending . . . the transaction cryptogram and the
signature” to the access device is unclear, Ans. 10, we note that the claim
requires the access device to authenticate the application of the
communication device without requiring network connectivity, but does not
require that the transaction cryptogram and the signature to be sent without
requiring network connectivity.
In response to Appellant’s similar argument that the claim does not
require that “the access device receives the transaction cryptogram and
signature without requiring network connectivity,” Appeal Br. 16, the
Examiner states that “Examiner agrees that the claims do not require the
‘receiving’ step, and for this specific reason the claims do not require the
access device to be in possession of the data sent by the required method
step of sending” and that “[t]his remark by Appellant further illustrates the
claim scope issue identified by the subsequent rejection as discussed below.”
Ans. 43–44.
We are not persuaded. The Examiner’s response does not address
Appellant’s point that, given the claim does not recite that the transaction
cryptogram and signature be sent to the access device without requiring
network connectivity, there is no inconsistency in the claim both requiring
the cryptogram and signature to be sent to the access device and that the
access device authenticates the application of the communication device
without requiring network connectivity. As to the Examiner’s point, we note
that the claim requires a step of “sending, to the access device, the
transaction cryptogram and the signature” and a step in which “the access
device authenticat[e] the application of the communication device without
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requiring network connectivity by verifying the signature using the
communication device public key.” Thus, the access device needs to at least
be in possession of the signature to the extent of being able to verify it using
the communication device public key.
We also note that, assuming that the claim requires the transaction
cryptogram and signature to be sent without requiring network connectivity,
a skilled artisan would understand that this may be accomplished through the
use of other contact or contactless mode of operation that do not require
network connectivity. Spec. 8:25–9:4 (explaining that “[a]n access device
may use any suitable contact or contactless mode of operation to send or
receive data from, or associated with, a portable communication device,”
including using optical scanners, bar code readers, or magnetic strip readers
interact with a portable communication device).
The Examiner acknowledges Appellant’s argument that “the
‘connectivity’ necessary for the sending steps” is different than the recited
“network connectivity.” Ans. 41. The Examiner asserts, however, that
Appellant’s argument is problematic because (1) according to Appellant’s
interpretation, the claims are attempting to improperly “limit the step of
‘sending,’ by an undisclosed device/entity by reciting structural limitations
of the receiving device (network characteristics of the access device)”; and
(2) it is unclear by the claim language “which entity does not ‘require’
network connectivity, the undisclosed sending device, the receiving (access)
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device, or both,” and further unclear whether “without requiring network
connectivity” refers to structural elements or actions. Id. at 42.9
We are not persuaded. We agree with Appellant that the language of
the claim makes it clear that “without requiring network connectivity” refers
to the step of “authenticating the application of the communication device
. . . by verifying the signature suing the communication device public key.”
Reply Br. 11–12.
As to the Examiner’s assertion that the scope of the claims are unclear
because claim 1 “attempts to limit the step of ‘sending, to the access device,
the transaction cryptogram and the signature’ by actions performed by the
receiving device,” even though such actions are not “part of the claimed

9 Appellant contends that, even if the transaction cryptogram and signature
must be sent to the access device without requiring network connectivity,
such a limitation can be satisfied by sending the cryptogam and signature
“using a local communication technology” such as “NFC, Bluetooth, etc.”
because such local communication channel does not require the access
device to have network connectivity to access networks 192 and 194.
Appeal Br. 17. The Examiner asserts that a skilled artisan would understand
that “a ‘local communication technology’ also provides ‘network
connectivity’ between two devices,” because “[i]t is well known in the art
that the minimal configuration of a client/server network or architecture has
a server component and a client component requiring ‘network connectivity’
between them.” Ans. 43. We acknowledge the Examiner’s apparent
position that the term “network” itself may be indefinite. However, and
without determining whether the term is in fact indefinite, we find that, to
the extent the Examiner’s rejection is based on the position that the term
“network” itself is indefinite because it could be understood to include or
exclude connections through technologies such as, e.g., Bluetooth or near
field communication, the Examiner has not established a prima facie case of
indefiniteness because the Examiner has not attempted to construe the term
in light of the Specification.
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steps performed by the communication device,” Ans. 10–11, we are
unpersuaded. The Examiner cites no authority, and we are aware of none,
that a method claim may only recite steps performed by a single component.
The Examiner asserts in response to Appellant’s arguments that,
[f]rom an infringement perspective, one of ordinary skill in the
art would not be able to reasonably convey where infringement
of the “sending” step occurs: at the sending step? at the
authenticating step? at the undisclosed sending device? at the
(receiving) access device? at the nonrequired interaction
between devices? The claim further recites “verifying with . . .
with [sic] the issuer . . .”. [D]oes the issuer further modifies the
method step of sending or not? Can the issuer infringe on the
claimed sending step?
Ans. 44.
We are not persuaded. The limitation of “sending, to the access
device, the transaction cryptogram and the signature” is met when the
sending device sends the recited data to the access device, i.e., at the sending
step, regardless of whether or not an accused method also meets the
authenticating and verifying steps. The mere fact that different steps of a
method claim are accomplished by different devices do not render the claim
indefinite.
We are likewise unpersuaded by the Examiner’s assertion that “it is
unclear whether ‘and a signature . . . ’” in the claim limitation, “generating
. . . a transaction cryptogram . . . and a signature,” refers to “the step of
‘generating’ . . . or . . . the intended use of the encryption key.” Ans. 11–12.
We agree with Appellant that the grammar, formatting, and punctuation of
the claim make clear that the signature is generated by the application of the
communication device, rather than being encrypted by the LUK encryption
key. Appeal Br. 18. Furthermore, “during examination proceedings, claims
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are given their broadest reasonable interpretation consistent with the
specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). The
Examiner has not persuasively explained how the alternative construction of
the claim the Examiner offers – interpreting “signature” as an “intended
result” of the encryption key (i.e., requiring the use of the limited use key as
an encryption key to encrypt a signature) – is consistent with the
Specification.
The Examiner asserts that “[w]hile the formatting presented by
Appellant in the claim at issue would lead one of ordinary skill in the art that
the generating step comprises both a cryptogram and a signature, there is no
guarantee that this formatting is going to be preserved through future rounds
of prosecution and an eventual allowance,” and is further “unpersuaded that
the indentations and punctuations . . . are sufficient to resolve the clarity
issue presented by the claim language.” Ans. 46.
We are not persuaded. As Appellant notes, the Examiner appears to
concede that the claim as currently drafted and formatted is definite, because
“the formatting . . . in the claim at issue would lead one of ordinary skill in
the art [to understand] that the generating step comprises both a cryptogram
and a signature.” Appeal Br. 15; Ans. 46. Rejections should be based on the
claim as it exists, not as it may be amended. Neither has Examiner cited any
authority – and we are unaware of any – that formatting and punctuation of a
claim should not be considered in an indefiniteness rejection.
The Examiner further asserts that “the contents of the Specification
cannot resolve the issue that the claim language does not particularly points
out and distinctly claims the subject matter which Appellant regards as his
invention.” Ans. 46–47. We are not persuaded. As discussed above, during
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prosecution a claim is construed under the broadest reasonable interpretation
consistent with the specification. Thus, although care must be taken not to
import limitations into the claim, the specification nevertheless has a role in
evaluating whether a claim is indefinite.
The Examiner next asserts that it is unclear which device (the
communications device, the access device, the issuer, and/or a combination)
is performing the steps of “granting access to the good or service” and
“obtaining authorization for the transaction from an issuer by verifying the
transaction cryptogram with the issuer” recited in claim 1. Ans. 12. The
Examiner also asserts that it is unclear whether “the ‘sending’ step,
performed by an undisclosed device, [is] being modified by the language
‘verifying’ . . . i.e. [whether] the undisclosed device that performs the
sending [is] the same as the device that performs ‘verifying’ or [if] verifying
is performed by some other entity/device.” Ans. 48–49.
We agree with Appellant that the language of the claim, when read in
light of the Specification, makes it clear that it is the access device that
“authenticat[es] the application of the communication device . . . , grant[s]
access to the good or service after authenticating . . . , and obtain[s]
authorization for the transaction from an issuer.” Appeal Br. 18.
In response to Appellant’s arguments, the Examiner agrees that
“which entity is performing which function goes to the breadth of the claim
rather than indefiniteness,” but asserts that
the step of “sending”, the steps of “granting” and “obtaining”
need to be at least identified as being performed by the same
(undisclosed) entity that performs the “sending” step or by any
other recited or unrecited entity/device, as this significantly
impacts in the construction of the claimed step of “sending”,
performed broadly by an undisclosed device or entity (i.e. are
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the steps of sending, granting, and obtaining being performed
by the same undisclosed device or not?). By opting to leave
these functions disconnected from the sending step, as
presented, one of ordinary skill in the art would not be able to
reasonably convey what specifically the “sending” step
comprises.
Ans. 47–48.10
We are not persuaded. We find that, under the broadest reasonable
interpretation standard consistent with the specification, a skilled artisan
would understand that the granting and obtaining steps are performed by the
access device.11
C. Obviousness rejections (claims 1, 3, 4, 22–25, 27–30, and 33–41)
1. Issue
The same issue is dispositive for all of the obviousness rejections; we
therefore consider them together. The Examiner finds that the combination

10 The Examiner notes that claim 1 recites “verifying the signature using the
communicating device public key” and that “communicating device” lacks
antecedent basis. Ans. 47–48. However, the Examiner does not appear to
have based any rejection on such lack; thus, we do not address this issue in
our opinion.
11 Appellant argues that “which entity is performing which function goes to
the breadth of the claim rather than indefiniteness.” Appeal Br. 18. We do
not agree with this argument to the extent the claim may be interpreted to
either (1) require the access device to perform the steps of granting and
obtaining or (2) allow any device to perform the steps of granting and
obtaining, the claim may be invalid. Ex parte Miyazaki, 2008 WL 5105055,
at *5 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.”).
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of Saxena and Smets discloses many of the limitations of claim 1, but does
not disclose, among other things:
[receiving a] limited-use key (LUK) . . . associated with a first
set of one or more limited-use thresholds that limits usage of
the LUK[, and] a signature key that is associated with a second
set of one or more limited-use thresholds that limits usage of
the signature key, wherein the first set of one or more limited-
use thresholds includes a first limited-use threshold that is
different than a second limited-use threshold included in the
second set of one or more limited-use thresholds.
Ans. 16.
However, the Examiner finds that Radu discloses a method of
implementing an electronic card payment system comprising a limited-use
key associated with a first set of limited-use threshold(s) that limits the use
of the key and a signature key associated with a second set of limited-use
threshold(s) that limits the usage of the key, wherein at least one of the first
limited-use threshold(s) is different than one of the second limited-use
threshold(s). Ans. 17. The Examiner concludes that it would have been
obvious to a skilled artisan to “incorporate the offline combined dynamic
data authentication/Application cryptogram as disclosed by Radu in the
method of [Saxena and Smets], the motivation being to enable anyone with
an authentic copy of the ICC public key, especially the terminal at the point
of service, to verify the application cryptogram.” Id. at 18.
Appellant contends that, because Radu’s ICC private key, which the
Examiner cites as the limited-use key, and its private signing key, which the
Examiner cites as the signature key, refer to the same key, Radu (and
therefore the cited combination of prior art) does not teach a method
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comprising “receiving both: (1) a LUK; and (2) a signature key,” as recited
in the first step of claim 1. Appeal Br. 19.
Appellant further contends that,
even if one is to assume that the ICC private key and the private
signing key KScard are referring to different keys, the
combination of Radu and the other cited references does not
describe a communication device as receiving both the ICC
private key and KScard, and using the ICC private key and KScard
to generate a transaction cryptogram and a signature,
respectively, for the same transaction. Moreover, nothing in
Radu indicates that the ICC private key has a limited-use
threshold that is different than a limited-use threshold of the
private signing key KScard. As such, even under the unfounded
assumption that the ICC private key and KScard are different
keys, Radu still fails to teach the attributes and functions of the
LUK and signature key as claimed.
Id. at 20.
Finally, Appellant contends that the cited prior art combination does
not teach the limitation of “the access device . . . obtaining authorization for
the transaction from an issuer by verifying the transaction cryptogram with
the issuer after access to the good or service has been granted,” because “the
cryptogram being generated [in Radu] is the digital signature, and there is no
separate and distinct transaction cryptogram being sent to the access device
in addition to the signature.” Appeal Br. 20–21. Similarly, Appellant
contends that Radu does not describe a scenario where the communication
device generates both: (1) “a signature . . . locally verified by the access
device to grant access . . . ; and (2) a transaction cryptogram . . . verified
with an issuer after access . . . has been granted.” Id. at 21.
The issue with respect to the obviousness rejections is whether a
preponderance of the evidence of record supports the Examiner’s conclusion
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that claim 1, the only independent claim, is obvious over the combination of
Saxena, Smets, and Radu.
2. Analysis
We agree with Appellant that the Examiner has not established a
prima facie case that claim 1 is obvious over Saxena, Smets, and Radu, at
least because the Examiner has not established a prima facie case that the
cited combination of prior art suggests both a limited-use key and a
signature key, associated with, respectively, a first and second set of one or
more limited-use thresholds, wherein the first set includes a first limited-use
threshold that is different than a second limited-use threshold included in the
second set, as required by the first step of claim 1.
The Examiner appears to point to private key 527 and shared secret
525 in Saxena as the limited-use key. Ans. 13, 52. However, while Saxena
teaches the use of a one-time credit card number, which is associated with a
limited-use threshold, the passages in Saxena cited by the Examiner does not
suggest that private key 527 and shared secret 525 are associated with a
limited-use threshold (i.e., a condition that limits their usage).
For example, with respect to the shared secret 525, the passage of
Saxena cited by the Examiner states only that:
[t]he one-time credit card number application 515 can
implement a shared secret 525, which is available at both the
issuer device 520 and the customer device 510. In practice, the
shared secret 525 can be embedded into the application 515 to
avoid the customer tampering with it. Thus, the application
515 can be a personalized software program for a specific
individual (e.g., the customer) that has a shared secret 525
between the issuer and the respective individual. The shared
secret can be embedded into the application 515 (e.g., in the
form of executables). . . .
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. . .
The shared secret 525 stored at the issuer device 520 can
be associated with an identity of the customer or customer
device 510 so that it can be retrieved for use during purchase
transactions involving the customer or customer device 510.
Saxena ¶¶ 90–92.
With respect to private key 527, the passage of Saxena cited by the
Examiner states only that, “[t]o support . . . digital signature technologies,”
“public key/private key cryptographic techniques can be implemented”
wherein “the customer device 510 has access to a private key 527 (e.g.,
stored on the customer device 510), and a public key 577 of the customer is
published (e.g., made available to others, including the issuer).” Saxena
¶ 91.
In response to Appellant’s arguments, the Examiner first asserts that,
under the broadest reasonable interpretation of the claims, “[t]he description
of the keys or the loose ‘association’ to some other data does not further
limit the keys in any manner,” and the rejection is proper because “[t]he
combination of references recites receiving two keys (LUK and signature
key).” Ans. 51.
We are not persuaded. In general, “every limitation positively recited
in a claim must be given effect.” In re Wilder, 429 F.2d 447, 450 (CCPA
1970). The Examiner has not provided any persuasive reason – e.g., that the
claim elements are merely the intended use or result of other positively
recited limitations – why limitations relating to the limited use threshold
should be given no patentable weight.
The Examiner next asserts, in response to Appellant’s argument that
Radu does not disclose both a LUK and a signature key as recited in the
claim, that LUK is anticipated by Saxena, including by disclosures in
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Saxena’s paragraph 52, while the signature key is disclosed by Radu. Ans.
50–51.
We are not persuaded. As discussed above, the passages of Saxena
initially cited by the Examiner does not teach that either shared secret 525 or
private key 527 meets the limitation of a limited-use key that is associated
with a first set of one or more limited-use thresholds that limits usage of the
LUK. Neither do we find Saxena’s paragraph 52 to disclose such a key. In
particular, paragraph 52 states:
Credit card security codes can be generated according to issuer
convention, such as encrypting card information (e.g., credit
card number, expiration date, and service code) with an
encryption key. The expiration date can be set for the current
month or some other date. Alternatively, a special card security
code or codes can be used for one-time credit card numbers.
Saxena ¶ 52.
We agree that the credit card security codes may be associated with
one or more limited-use thresholds, e.g., an expiration date and/or the
number of times the code may be used (for codes used for one-time credit
card numbers). However, the Examiner does not persuasively explain how
such codes are used as a key (e.g., to encrypt at least a plurality of data
elements from the terminal transaction data to generate a transaction
cryptogram, as required later in claim 1). To the extent the Examiner is
relying on the “encryption key” mentioned in paragraph 52 of Saxena as the
LUK recited in claim 1, the Examiner has not persuasively explained how
such encryption key encrypt “at least a plurality of data elements from the
terminal transaction data” to generate a transaction cryptogram, as recited in
claim 1.
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The Examiner further asserts that, in addition to Saxena, Radu also
discloses “characteristics of the LUK similar to the language describing the
data” and discloses receiving a distinct LUK. Ans. 50, 52.
We are not persuaded. The Examiner appears to cite the integrated
circuit card (ICC) private key disclosed in Radu as the “limited-used key
(LUK) . . . associated with a first set of one or more limited-use thresholds
that limits usage of the LUK” and the “private signing key” as the signature
key. Ans. 17, 52. However, Radu describes the ICC private key as being
used to “produce a signature s on the terminal dynamic data and other data
from the ICC” and further teaches that, when the ICC private key computes
an application cryptogram as a digital signature, “the dynamic authentication
of the card is performed with a digital signature-based [dynamic data
authentication (DDA)],” discussed in Section D.7.2 of Appendix D. Radu
167, Fig. 6.6, 212. Section D.7.2 of Appendix D then discusses using a
private signing key to compute a dynamic authenticator as a digital
signature. Id. at 396.
Thus, the ICC private key and the private signing key appear to refer
to the same key. In appropriate circumstances, a single element in the
reference could suggest two elements recited in a claim. Cf. Powell v. Home
Depot U.S.A., Inc., 663 F.3d 1221, 1231 (Fed. Cir. 2011) (finding claim
reciting “cutting box interior in fluid communication with dust collection
structure for collecting dust” to be infringed by accused product in which the
rear portion of the cutting box serves to collect sawdust and woodchips). In
this case, however, claim 1 also recites that the set of one or more limited-
use thresholds that limits usage of LUK includes a first limited-use threshold
that is different than a second limited-use threshold included in the second
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set of threshold that limits usage of the signature key. The Examiner
appears to cite to the same limited-use threshold – i.e., public key certificate
expiration date – for both the ICC private key and the private signing key.
Ans. 23, 52. Thus, the Examiner has not persuasively shown that the ICC
private key and the private signing key in Radu are two separate keys
having, respectively, a first and second set of one or more limited-use
thresholds that limits their usage, “wherein the first set of one or more
limited-use thresholds includes a first limited-use threshold that is different
than a second limited-use threshold included in the second set of one or
more limited-use thresholds.”
We note that the Examiner asserts that the claims “do not limit the
keys themselves to ‘have different usage limits.’” Ans. 50. In contrast,
Appellant contends that “the claim language . . . requires the two sets [of
limited-use thresholds] to have at least one limited-use threshold that is
different.” Reply Br. 16. We are not persuaded that either position is
entirely correct. The claim requires that “the first set of one or more limited-
use thresholds includes a first limited-use threshold that is different than a
second limited-use threshold included in the second set of one or more
limited-use thresholds.” Where the two sets each include multiple limited-
use thresholds, the sets arguably meet the claim limitation even if they have
the same thresholds (e.g., A, B, and C), because the first set includes a first
limited-use threshold (i.e., A) that is different than a second limited-use
threshold included in the second set (i.e., B or C). We need not decide this
claim construction issue, however, because where the sets only contain one
limited-use threshold (e.g., the public certificate expiration date), as they do
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in the Examiner’s rejection, they must contain different limited-use
thresholds in order to meet the claim limitation.
Accordingly, we reverse the Examiner’s rejection of independent
claim 1 as obvious over the combination of Saxena, Smets, and Radu. We
likewise reverse the rejection of claims 3, 4, 22, 23, 25, 27–29, and 33–41,
which depend directly or indirectly from claim 1, for the same reasons
discussed with respect to claim 1. In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988) (“Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonobvious.”). Examiner
rejects claim 24 and 30 over the combination of Saxena, Smets, Radu, and,
respectively, Verhoorn and Ginter. The Examiner appears to cite Verhoorn
and Ginter only for the additional dependent claim limitations. Accordingly,
we also reverse the rejections of claims 24 and 30 for the same reasons as
discussed with respect to claim 1.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 3, 4, 22–25,
27–30, 33–41
101 Eligibility

1, 3, 4, 22–25,
27–30, 33–41
1, 3, 4, 22–25,
27–30, 33–41
112(b) or 112
(pre-AIA),
second
paragraph
Indefiniteness 1, 3, 4, 22–25,
27–30, 33–41
1, 3, 4, 22, 23,
25, 27–29,
33–41
103 Saxena,
Smets, Radu

1, 3, 4, 22, 23,
25, 27–29,
33–41
24 103 Saxena,
Smets, Radu,
24
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Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
Verhoorn
30 103 Saxena,
Smets, Radu,
Ginter
30
Overall
Outcome

1, 3, 4, 22–25,
27–30, 33–41

REVERSED