Visa International Service Association

Patent Trials and Appeals Board

Jul 27, 2020

13752271 - (D) (P.T.A.B. Jul. 27, 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.
13/752,271 01/28/2013 Michael F. Buhrmann 079900-1003465 9962
66945 7590 07/27/2020
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
ANSARI, AZAM A
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
07/27/2020 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 MICHAEL F. BUHRMANN, CHARLES L. DENNIS,
and JEFFREY BRENNAN1
_____________

Appeal 2020-001504
Application 13/752,271
Technology Center 3600
______________

Before JOHN A. EVANS, LARRY J. HUME, and CARL L. SILVERMAN,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). The Appeal Brief identifies Visa International Service
Association, as the real party in interest. Appeal Br. 2.
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Application 13/752,271

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STATEMENT OF THE CASE2
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Claims 1, 3, 4, 12–14, 16–28, 31, 32, 35, and
36, all claims on appeal. Final Act. 1. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The claimed invention is directed to a system and method for
authenticating entities or individuals engaging in automated or electronic
transactions. See Abstract. Claims 1 and 14 are independent. Claim 1,
reproduced below, is illustrative of the invention.
1. A method, comprising the steps of:
a) electronically accessing, by a processing device, over a
network, mobile subscriber data comprising a geographic
location for a wireless device, and being associated with a user,
and data from multiple financial institutions for multiple
accounts of the user, the multiple accounts comprising at least
one electronic account;
b) determining, by the processing device, a risk score, the
risk score being based on the accessed mobile subscriber data

2 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
July 24, 2019, the Reply Brief (“Reply Br.”) filed December 19, 2019, the
Final Office Action (“Final Act.”) mailed January 24, 2019, the Examiner’s
Answer mailed October 21, 2019, and the Specification (“Spec.”) filed
January 28, 2013, claiming benefit of US 61/591,232 filed Jan. 26, 2012.
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associated with the user and the accessed data from the multiple
financial institutions for the multiple accounts of the user;
c) transmitting, by the processing device, the risk score to
the wireless device, wherein the wireless device compares said
risk score against a threshold, wherein
if said risk score is determined to be below said threshold,
allowing a mobile wallet application on the wireless device to be
accessed, and
if said risk score is determined to be above said threshold,
then denying a capability of the mobile wallet application to be
accessed; and
d) repeating steps a)-c) continuously without interaction of
the user with the wireless device.

PRIOR ART
Name Reference Date
Varghese US 7,908,645 B2 Mar. 15, 2011
Taveau US 2012/0123841 A1 Dec. 19, 2011
Brudnicki US 2014/0040139 A1 Dec. 19, 2011

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REJECTIONS3 AT ISSUE4
1. Claims 1, 3, 4, 12–14, 16–28, 31, 32, 35, and 36 stand rejected under
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with
the written description requirement. Final Act. 3–4.
2. Claims 1, 3, 4, 12–14, 16–28, 31, 32, 35, and 36 stand rejected under
35 U.S.C. § 103 as unpatentable over Taveau, Varghese, and
Brudnicki. Final Act. 6–23.
ANALYSIS
We have reviewed the rejections of Claims 1, 3, 4, 12–14, 16–28, 31,
32, 35, and 36 in light of Appellant’s arguments that the Examiner erred. We
have considered in this Decision only those arguments Appellant actually
raised in the Briefs. Any other arguments which Appellant could have made
but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis. We consider
Appellant’s arguments as they are presented in the Appeal Brief and the Reply
Brief.
CLAIMS 1, 3, 4, 12–14, 16–28, 31, 32, 35, AND 36: WRITTEN DESCRIPTION
Independent Claims 1 and 14 recite, inter alia: “determining, by the
processing device, a risk score.” The Examiner finds “[n]either the

3 The present application is being examined under the pre-AIA first to invent
provisions. Final Act. 2.
4 The Examiner has withdrawn the rejection of Claim 36 under 35 U.S.C.
§ 112 (4th paragraph). Ans. 3.
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specification nor the drawings disclose in detail the specific steps or
algorithm needed to perform the operation [determination of risk score].”
Final Act. 3.
Appellant argues a fraud risk score can be determined by:
“weighting” various inputs. Appeal Br. 5 (citing Spec. ¶¶ 56, 89).
Appellant further argues Identity Risk Logic Resources may use
“one or more previously calculated fraud risk scores stored in
the exemplary Wireless Device ID Database and weighting
factors designating the importance of each of the information
elements that may be defined in the Identity Risk Configuration
data to generate a current fraud risk score for the entity,
individual or data subject.”

Id. (quoting Spec. ¶ 78).
The Examiner finds in order for Appellant’s Specification to provide
written description for “determining a risk score,” Appellant’s Specification
needs to clearly outline the type of inputs involved, how the input data is
manipulated, and the output (i.e., risk score) derived. Ans. 5. The Examiner
finds the Specification is inadequate because the “disclosure merely uses
exemplary language to describe the type of inputs that may be involved and
does not provide a clear, explicit definition of the type of inputs used to
determine a risk score.” Id. Moreover, the Examiner finds the Specification
fails to disclose a specific mathematical operation. Id. The Examiner
further finds Appellant fails to disclose how a risk score is calculated ab
initio, but rather, discloses that once a risk factor is calculated, a new risk
score may be calculated by application of “weighting factors.” Id.
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Appellant contends the Examiner’s application of LizardTech5 is
improper because in order “to establish that the claims do not satisfy the
written description requirement, the Examiner must first articulate why the
full scope of the claims requires ‘undue experimentation’ to practice.”
Reply Br. 3.
“The test for the sufficiency of the written description ‘is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d
671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). The written description
requirement is not met if the specification merely describes a “desired
result.” Ariad, 598 F.3d at 1349. The claims recite, inter alia, “determining,
by the processing device, a risk score” which is a computer-implemented
functional claim. For computer-implemented functional claims, the
determination of the sufficiency of the disclosure will require an inquiry into
the sufficiency of both the disclosed hardware and the disclosed software
(i.e., “how [the claimed function] is achieved.” USPTO, Examining
Computer-Implemented Functional Claim Limitations for Compliance With
35 U.S.C. § 112, 84(4) Fed. Reg. 57, 61 (Jan. 7, 2019) (quoting Vasudevan,
782 F.3d at 683). The key question is “whether the specification discloses
the computer and the algorithm(s) that achieve the claimed function in

5 LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed.
Cir. 2005).
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sufficient detail that one of ordinary skill in the art can reasonably conclude
that the inventor possessed the claimed subject matter at the time of filing.”
84 Fed. Reg. at 61.
Appellant argues a person skilled in the art could write the necessary
software. Appeal Br. 6 (“It is submitted that the specification provides
sufficient description and guidance for one of ordinary skill in the art to
create a risk score.”) (emphasis added); Reply Br. 3 (“Appellant has already
explained why the calculation of a risk score would not require undue
experimentation by a person of skill in the art at the time of the present
invention.”). However, “[i]t is not enough that one skilled in the art could
theoretically write a program to achieve the claimed function, rather the
specification itself must explain how the claimed function is achieved to
demonstrate that the applicant had possession of it.” 84 Fed. Reg. at 62
(citing Vasudevan, 782 F.3d at 682–83).
In view of the foregoing, we find Claims 1, 3, 4, 12–14, 16–28, 31,
32, 35, and 36 lacking written description support under 35 U.S.C. § 112
(first paragraph).
CLAIMS 1, 3, 4, 12–14, 16–28, 31, 32, 35, AND 36:
OBVIOUSNESS OVER TAVEAU, VARGHESE, AND BRUDNICKI.
Transmitting a risk score to a wireless device.
Independent Claim 1 recites, inter alia, “transmitting, by the
processing device, the risk score to the wireless device.” Independent Claim
14 contains commensurate limitations.
The Examiner finds Taveau teaches this limitation. Final Act. 7
(quoting Taveau ¶ 75) (“While the main risk profile may be stored in the
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cloud, a subset version could be stored on the mobile device with a specific
set of parameters, especially for ‘offline’ transactions using a stored value.”).
The Examiner finds Varghese teaches, but without explicitly disclosing, the
claimed limitation. The Examiner finds Appellant’s Specification discloses
that the risk score may be stored in a Wireless Device Identity database
which may be accessible by the user’s wireless device. Final Act 8 (citing
Spec. ¶ 38). Varghese discloses:
The combined input information along with the current device
identifying information is transmitted to the OCR where it is
used to update the historical risk database. The combined input
information is also evaluated by the flagging rules engine 1210
applies rules definitions 1220 in order to maintain lists that
identify devices and their associated fraud risk based on
historical information and optionally targeted to one or more
specific user devices.
Id. (quoting Varghese, col. 32, ll. 53–60). The Examiner finds that in view
of Appellant’s disclosure, this disclosure of Varghese also teaches the
claimed limitation. Id.
With respect to Taveau, Appellant contends “Taveau . . . only
describes a user risk profile that may be stored on a mobile device and says
nothing about the transmission of a risk score to a wireless device by a
processing device.” Appeal Br. 8.
The Examiner finds, as Appellant admits, Taveau teaches a “user risk
profile” may be stored on a user device. Ans. 8. The Examiner finds
Varghese was cited to teach a numerical value representing the risk is
transmitted. Id.
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Appellant’s Reply refers to the Appeal Brief to argue the Examiner
errs with respect to the “transmitting” limitation, but focusses on a
“continuously” limitation, to be discussed below. See Reply Br. 4.
The Examiner makes a finding based on the combination of Taveau
and Varghese, whereas Appellant argues the references individually. “[O]ne
cannot show non-obviousness by attacking references individually where . . .
the rejections are based on combinations of references.” In re Keller, 642
F.2d 413, 426 (CCPA 1981); see also In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Moreover, we note Varghese discloses: “any
technique that allows a remote application to store and retrieve persistent
data on a user device can be used.” Varghese, col. 25, ll. 22–24. Appellant
has not persuaded us the Examiner errs with respect to the “transmitting”
limitation.
Continuously without interaction of the user.
Independent Claim 1 recites, inter alia, “repeating steps a)-c)
continuously without interaction of the user.” The Examiner finds Varghese
teaches updating profile histories. Final Act. 9.
Having argued “[a]gain, there is no transmission of a risk score from a
server to a wireless device,” Appellant concludes, therefore, “there is clearly
no disclosure of using a continuously transmitted risk score.” Appeal Br. 8;
see Appeal Br. 9–10. Appellant’s Reply merely argues “the Examiner has
still not explained where the ‘continuous’ transmission of risk scores is in
the cited prior art.” Reply Br. 4 (emphasis omitted). We note Varghese
discloses:
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Another such technique is known as “flash cookies.”
Graphical software applications and/or plug-ins from
Macromedia, and generally identified by the trade name
“Flash,” are currently resident on many user devices. This
software can create local shared objects, known as flash
cookies,” for maintaining locally persistent data on a user’s
device akin to the standard “cookies” stored by web browsers.
Flash cookies can be stored locally on a flash plug-in user’s
device, are updatable, and have the advantage not being as
easily removed from the user’s device as are standard cookies.
Varghese, col. 25, ll. 33–43. Appellant discloses that a “benefit of an
embodiment of the invention is its ability to continuously update the fraud
risk score based on changing inputs.” Spec. ¶ 116. We take Appellant’s
disclosure to mean that where an input changes, a risk score may be re-
calculated, and a value on the user’s device may be updated which is
substantially the teaching of Varghese, supra. Appellant has not persuaded
us the Examiner errs with respect to the “continuously” limitation.
CLAIM 21
Claim 21, dependent from Claim 1, recites the “method of claim 1
wherein the processing device runs a neural network that is used to
determine the risk score.”
The Examiner finds Taveau discloses a “smart wallet” which teaches
the claimed “neural network.” Final Act 16.
Appellant argues:
As is well understood in the art, a “neural network” is a specific
type of machine learning algorithm that mimics the function of
the human brain. This is not disclosed in paragraph [0079] or
any other paragraph in Taveau[.]
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Appeal Br. 10.
The Examiner refers to paragraphs 74 and 79 of Taveau to teach the
claimed “neural network.” Ans. 10.
We find no disclosure in Taveau that relates to a neural network. We
are persuaded of error with respect to Claim 21.
CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 4, 12–
14, 16–28,
31, 32, 35,
36
112(1st ¶) Written
Description
1, 3, 4, 12–
14, 16–28,
31, 32, 35,
36

1, 3, 4, 12–
14, 16–28,
31, 32, 35,
36
103 Taveau, Varghese,
Brudnicki
1, 3, 4, 12–
14, 16–20,
22–28, 31,
32, 35, 36
21
Overall
Outcome
1, 3, 4, 12–
14, 16–28,
31, 32, 35,
36

TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 41.50(f).
AFFIRMED