Ex Parte Evans

Patent Trials and Appeals Board

Jun 12, 2019

13185198 - (D) (P.T.A.B. Jun. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/185,198 07/18/2011 Graham Evans
66945 7590 06/14/2019
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
79900-073510US-799738 1858
EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/14/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GRAHAM EV ANS
Appeal2018-004234
Application 13/185,198 1
Technology Center 3600
Before JAMES B. ARPIN, NABEEL U. KHAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 4--18, and 21-29. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellant identifies Visa International Service Association as the real party
in interest. App. Br. 3.
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Application 13/185,198
BACKGROUND
THE INVENTION
Appellant describes the invention as follows:
Embodiments of the invention are directed to
programming a payment device that can be in the same form
factor as a typical credit or debit card and which can be
programmed and reprogrammed with various payment profiles.
The payment device is interfaced with a mobile device, such as
through insertion into a module capable of holding the payment
device within proximity to a main housing of the mobile device.
The payment device can include both a magnetic stripe and an
IC chip which is capable of near field communication. In
embodiments of the invention, the mobile device, such as a
cellular phone, includes a memory element. The memory
element securely stores payment profiles of financial accounts
which are commonly found on credit, debit, gift, transit and
loyalty cards. When a payment profile stored in the memory
element of the mobile phone is selected, the mobile phone writes
the profile onto the payment device. The payment device can
then be utilized to communicate payment profile information to
a payment device reader during contact or contactless
transaction.
Abstract.
Exemplary independent claim 1 is reproduced below.
1. A mobile device capable of programming a portable
payment device associated with the mobile device, the mobile
device comprising:
a processor;
a memory element configured to store an encrypted
payment profile that is inaccessible to a user of the mobile
device, wherein the encrypted payment profile includes a
payment account;
a display configured to display a payment profile identifier
of the encrypted payment profile to the user of the mobile device,
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wherein the payment profile identifier includes an identifier of
the payment account included in the encrypted payment profile;
an input element configured to select the encrypted
payment profile through selection of the identifier;
a communication interface configured to receive a
decryption key from the payment device, wherein the mobile
device is configured to decrypt the selected encrypted payment
profile using the decryption key received from the portable
payment device; and
an output element configured to write a decrypted
payment profile onto the portable payment device,
wherein the memory element, the display, the input
element, the communication interface, and the output element are
each operatively coupled to the processor.
App. Br. 18 (Claims App.).
REFERENCES AND REJECTIONS
1. Claim 28 stands rejected under 35 U.S.C. § 112 as indefinite.
Final Act. 3.
2. Claims 1, 4, 7-11, and 28 stand rejected under 35 U.S.C.
§ I03(a) over Spodak (US 2011/0218911 Al, Sept. 8, 2011), Sivaram (US
8,107,927 B2, Jan. 31, 2012), and Klein (US 5,872,850, Feb. 16, 1999).
Final Act. 4--9.
3. Claim 5 stands rejected under 35 U.S.C. § I03(a) over Spodak,
Sivaram, Klein, and Lai (US 7,341,182 B2, Mar. 11, 2008). Final Act. 12-
13.
4. Claim 6 stands rejected under 35 U.S.C. § I03(a) over Spodak,
Sivaram, Klein, and Kumar (US 2010/0088188, Al, Apr. 8, 2010). Final
Act. 36.
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5. Claims 12, 14, and 29 stand rejected under 35 U.S.C. § I03(a)
over VanDeburg (US 2008/0017704 Al, Jan. 24, 2008), Klein, and Sivaram.
Final Act. 10.
6. Claim 13 stands rejected under 35 U.S.C. § I03(a) over
VanDeburg, Klein, Sivaram, and Gauthier (US 2007/0055630 Al, Mar. 8,
2007). Final Act. 13-14.
7. Claims 15, 16, and 24 stand rejected under 35 U.S.C. § I03(a)
over VanDeburg, Klein, Sivaram, and Ward (US 2012/0011070 Al, Jan. 12,
2012). Final Act. 14--15.
8. Claims 17 and 18 stand rejected under 35 U.S.C. § I03(a) over
VanDeburg, Klein, Sivaram, and Wallerstein (US 5,585,787, Dec. 17, 1996).
Final Act. 15-16.
9. Claims 21 and 22 stand rejected under 35 U.S.C. § I03(a) over
Spodak, Sivaram, Klein, and Al-Herz (US 2008/0243703 Al, Oct. 2, 2008).
Final Act. 16-17.
10. Claim 23 stands rejected under 35 U.S.C. § I03(a) over
Spodak, Klein, Sivaram, and Wallerstein. Final Act. 17.
11. Claim 25 stands rejected under 35 U.S.C. § 103(a) over
Spodak, Klein, Sivaram, and Granucci (US 2009/0078777 Al, Mar. 26,
2009). Final Act. 18.
12. Claim 26 stands rejected under 35 U.S.C. § I03(a) over
Spodak, Klein, Sivaram, and Jain (US 2006/0071065 Al, Apr. 6, 2006).
Final Act. 18-19.
13. Claim 27 stands rejected under 35 U.S.C. § I03(a) over
Spodak, Klein, Sivaram, Jain, and Loh (US 2009/0143104 Al, June 4,
2009). Final Act. 19-20.
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DISCUSSION
REJECTION UNDER 35 U.S.C. § 112
Claim 28 recites "[a] system comprising: the mobile device of claim
1, and the portable payment device, wherein the portable device is a
payment card." The Examiner finds that it is unclear "whether 'the portable
payment device' is the 'portable payment device' of Claim 1" and whether
"the 'portable device' is the same entity as the 'portable payment device."'
Final Act. 3 (emphasis added). For the purposes of applying the prior art,
the Examiner interprets "portable device" as "the portable payment device"
of claim 1. Id. Appellant does not dispute the Examiner's rejection and
agrees that the claim should be amended consistent with the Examiner's
interpretation. App. Br. 8.
Because Appellant does not dispute the rejection, we summarily
affirm the Examiner's rejection of claim 28 under 25 U.S.C. § 112 as
indefinite.
REJECTIONUNDER35 U.S.C. § 103
Claim 1
Appellant argues "Spodak, Sivaram and/or Klein fail to disclose or
suggest at least 'a communication interface configured to receive a
decryption key from the payment device, wherein the mobile device is
configured to decrypt the selected encrypted payment profile using the
decryption key received from the portable payment device', as recited in
independent claim 1." App. Br. 9-10.
The Examiner relies on the combination of Spodak and Klein as
teaching the disputed limitation. Final Act. 5 (citing Spodak ,r,r 22, 23;
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Klein 32: 17-20, 55-59). For example, the Examiner finds Spodak teaches
"a communication interface configured to receive a decryption key from the
payment device" by disclosing a short range transceiver. Id. at 5 ( citing
Spodak ,r 22-23). The Examiner finds that the short range transceiver is
configured to receive '[a]ny required data,"' (Ans. 4 ( citing Spodak ,r,r 46,
22)) and that this data "can include 'encryption technologies public key,
private key, and other known and standard methods of radio protection"' (id.
( citing Spodak ,r 41)). Thus, because one of skill in the art "would know
that a decryption key is an encryption tool," the Examiner finds Spodak's
short range transceiver teaches the claimed "communication interface
configured to receive a decryption key from the payment device." Id.
The Examiner further finds Klein teaches "a device is configured to
decrypt the selected encrypted payment profile using the decryption key
received from a payment device." Final Act. 5 (citing Klein 32: 17-20, 55-
59). Thus, the Examiner finds the combination of Spodak and Klein would
teach the recited mobile device with "a communication interface configured
to receive a decryption key from the payment device, wherein the mobile
device is configured to decrypt the selected encrypted payment profile using
the decryption key received from the portable payment device," as recited in
claim 1.
Appellant argues that, although Spodak discloses a short range
transceiver of mobile device 100, "Spodak is entirely silent as to the ability
of mobile device 100 to receive a decryption key from universal card 100
.... " App. Br. 10. According to Appellant, references in Spodak to the
mobile device being able to receive "[a]ny required data" does not "include
a decryption key from a payment device." Reply Br. 2.
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We are unpersuaded by Appellant's arguments. We agree with the
Examiner that Spodak' s "short range transceiver" is a "communication
interface" as the claim recites. Spodak' s short range transceiver
communicates with a universal card which, we agree, corresponds to the
claimed "portable payment device." Spodak ,r 46 ("the mobile device 100
communicates with the universal card 110 via a short range communications
link 120 to program the universal card 110 for emulation of traditional
cards"). Spodak teaches that the short range communications interface may
be subject to eavesdropping and, thus, can be protected by data encryption
technologies such as public and private keys. Spodak ,r 41. We agree with
the Examiner that these keys teach or suggest the recited "decryption key."
Ans. 4. Thus, we agree with the Examiner's finding that Spodak's short
range transceiver is "configured to receive a decryption key from the
payment device," as recited by claim 1.
Appellant's argument that Spodak's disclosure of using encryption
technologies, such as public and private keys, is just a "general use"
discussion is not persuasive. Spodak makes clear that short range
communication interface 120 is configured to make use of these encryption
technologies (Spodak ,r 41) and also makes clear that the same
communications interface 120 is used to communicate with the universal
card (id. ,r 46). Thus, one of ordinary skill in the art would understand that
Spodak's short range communication interface is configured to receive a
decryption key from a payment device.
Appellant next argues that, although Klein discloses receiving a
decryption key from either a user or from a central server, neither the user
nor server can be "considered [] a portable payment device." App. Br. 10.
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This argument is unpersuasive, because it attacks Klein individually
rather than addressing the Examiner's rejection as a whole. The Examiner
does not rely on incorporation of Klein's server into Spodak. Rather, the
Examiner relies on the combination of certain functionality taught by
Klein's server for sending a decryption key with the teachings of Spodak' s
universal card. Ans. 6-7.
Appellant contends that the combination of Spodak and Klein would
also not teach the disputed limitation because "the Examiner provides no
logical reasoning or motivation as to how or why one skilled in the art would
replace the central server 70 of Klein with the portable payment device of
Spodak." App. Br. 11. According to Appellant, "[n]o mention is made in
Spodak of how or why replacing a server with a portable payment device
would prevent 'eavesdropping or other intrusive information breaches."
App. Br. 11; see also Reply Br. 4 ("While the Examiner suggests that the
motivation is to provide an added layer of security, this does not explain
why the person of skill in the art would replace the universal card of Spodak
with the functionality of the server computer in Klein.").
As explained above, the Examiner does not replace Spodak's
universal card with Klein's server. Ans. 6-7. Instead, the Examiner
modifies Spodak's universal card by adding to it certain functionality of
Klein's server i.e., that of transmitting a decryption key to a node. Thus, the
Examiner finds, in light of Klein's teaching, that Spodak's mobile device
would be modified to receive a decryption key from Spodak's universal
card. Id. The Examiner provides a reason for such a combination, namely
that it would help prevent eavesdropping or other intrusive information
breaches. Final Act. 6 ( citing Spodak ,r 41 ). This motivation stems from the
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prior art itself (Spodak ,r 41) and not from impermissible hindsight.
Therefore, we find no error in the Examiner's articulated reason to combine
Spodak and Klein.
Accordingly, we sustain the Examiner's rejection of independent
claim 1.
Claim 12
Appellant's arguments for claim 12 are similar to those made with
respect to claim 1. For example, Appellant argues that Klein does not
disclose receiving a decryption key from a portable payment device. Rather,
Appellant argues, Klein discloses receiving a decryption key either from a
user or from a central server. App. Br. 12-13.
Appellant also argues that "the Examiner provides no reasoning or
motivation as to how or why one skilled in the art would replace the central
server 70 of Klein with the electronic wallet 100 of VanDeburg." Id. at 13.
Appellant argues "[l]imiting the central server 70 of Klein to local
communication, as in the electronic wallet 100 of VanDeburg, would render
the central server 70 of Klein inoperable for its intended purpose" because
Klein's central server "must be connected to [a] wide-area network." Id.
We are unpersuaded by Appellant's arguments. The Examiner relies
on the combination of VanDeburg and Klein to teach receiving a decryption
key from a portable payment device. Thus, Appellant's arguments against
Klein alone are unpersuasive, as they were before with respect to claim 1.
Further, Appellant's argument against the combination of VanDeburg and
Klein is also unpersuasive because it misunderstands the Examiner's
combination. Contrary to Appellant's argument, the Examiner's
combination does not "replace the central server 70 of Klein with the
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electronic wallet 100 of VanDeburg." App. Br. 13. Rather, as before, the
Examiner modifies VanDeburg' s electronic wallet to add functionality
taught by Klein's server, namely that of receiving a decryption key from a
payment device. Ans. 9-10.
Accordingly, we sustain the Examiner's rejection of claim 12.
Claim 4
Claim 4 depends from claim 1 and recites "a module coupled to a
main housing of the mobile device, wherein the module is configured to
receive the portable payment device." The Examiner finds Sivaram teaches
this limitation. Final Act. 7 ( citing Sivaram 2: 19-21 ).
Appellant argues that the cited portion of Sivaram discloses a smart
card inserted into the mobile device. According to Appellant, "the smart
card 116 is inserted directly into the mobile device 104, and not into ~
module coupled to the housing of the mobile device, as is claimed." App.
Br. 14--15. Appellant also argues Sivaram's smart card is not a portable
payment device because it is used to store and transfer a user's identity,
rather than being related to payment. Id. at 14.
We are unpersuaded by Appellant's arguments. Sivaram discloses a
"mobile device 104 may include a socket or other interface to enable a user
to install a smart card 116 in the mobile device 104." Sivaram, 4:26-28.
We agree with the Examiner that a slot that interfaces with and receives a
smart card teaches or suggests a module coupled to the housing of a mobile
device for receiving a portable payment device. Appellant's argument that
Sivaram's smart card does not teach a portable payment device, attacks
Sivaram individually and does not address the Examiner's findings as a
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whole, which rely additionally on Spodak as teaching a portable payment
device. Final Act. 4, 6.
Accordingly, we sustain the Examiner's rejection of claim 4.
Claim 16
Claim 16 depends from claims 12 and 15 and recites "wherein
verifying [the portable payment device is associated with the mobile device]
includes passing a cryptogram stored on the portable payment device to the
mobile device." The Examiner finds Ward teaches verifying a portable
payment device is associated with a mobile device by passing a cryptogram
stored on the portable payment device to the mobile device. Final Act. 14--
15 (citing Ward ,r,r 33, 48); Ans. 12 (citing Ward ,r 90).
Appellant argues the cryptograms in Ward "are sent to the issuer 1020
to authenticate the card 112 and hence the transaction," but not "as part of
verifying that the card 112 is associated with the reader 132." App. Br. 15-
16.
We are persuaded by Appellant's arguments. Ward discloses the use
of cryptograms to verify a contactless card. Ward ,r,r 48-53. Ward's
contactless card provides a card reader with two cryptograms which are
ultimately sent to the issuer of the card, which then carries out verification to
authenticate the card. Id. ,r 49. We do not discern from this disclosure,
however, that this authentication includes a verification that the contactless
card is associated with a mobile device. Instead, the verification and
authentication described in Ward relate to authorizing the card to make
payments. Ward ,r,r 3, 4, 48-53, 62 ("The CVC3 cryptogram is used by the
issuer 2010 to authenticate the card and hence the transaction.").
Accordingly, we do not sustain the Examiner's rejection of claim 16.
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Claim 17
Claim 1 7 depends from claim 12 and recites "wherein the decrypted
payment profile stored on the portable payment device decays over a
predetermined time period." The Examiner finds Wallerstein teaches a
payment profile stored on a portable payment device decaying over a
predetermined time period. Final Act. 15 (citing Wallerstein, 6:56-63).
Appellant argues "Wallerstein merely discloses the deletion of data
stored on a magnetic strip. Wallerstein is silent as to the decay of data
stored on a portable payment device over a time period." App. Br. 16.
We are unpersuaded by Appellant's argument. Wallerstein discloses
that after a predetermined period of time, for example five minutes, the
magnetic field will stop being generated which then decodes or erases the
magnetic strip. Wallerstein, 6:56-65. Under a broad, but reasonable,
interpretation of the claim, we agree with the Examiner that this erasure after
a predetermined time period teaches the decaying of the payment profile
over a predetermined period of time. Further, the claim does not require the
decay to occur over any specific predetermined time period. Thus, even if
Wallerstein deletes stored information, that deletion occurs over some finite,
non-instantaneous time period and, thus, would teach the claim limitation.
Accordingly, we sustain the Examiner's rejection of claim 17.
Claim 24
Claim 24 depends from claim 15 and recites "wherein if2 the portable
payment device is not associated with the mobile device, the method further
2 Claim 24 is written in conditional form, requiring "initiating a lock mode
that prevents the decrypted payment profile from being written onto the
portable payment device" only "if the portable payment device is not
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comprises: initiating a lock mode that prevents the decrypted payment
profile from being written onto the portable payment device." The
Examiner finds VanDeburg teaches this limitation. Final Act. 15 ( citing
VanDeBurg ,r 15).
Appellant argues "VanDeburg renders the electronic wallet incapable
of reading and transmitting account information," but does not disclose
"rendering the electronic wallet incapable of being written with account
information." App. Br. 17.
We are unpersuaded by Appellant's argument. V anDeburg discloses
that "[t]o protect the account information from such fraudulent activity, the
switch 110 prevents communication with a radio frequency-enabled
communication device unless the switch 110 is switched to the 'ON'
position." VanDeburg ,r 29. By preventing communication with a radio
frequency enabled communication device, VanDeburg would "prevent[] [the
decrypted] payment profile from being written onto the portable payment
device." Ans. 13. This is so, even if VanDeburg's intention is to prevent the
electronic wallet from communicating account information, rather than
preventing a profile from being written onto the electronic wallet. In other
words, by disabling communication, VanDeburg prevents account
information from being transmitted from the electronic wallet, and also
prevents a profile from being written onto the electronic wallet.
associated with the mobile device." Under the broadest reasonable
interpretation, such an element does not limit the claim. Ex Parte
Schulhauser, Appeal 2013-007847, (PTAB Apr. 28, 2016) (precedential).
Nevertheless, because we agree with the Examiner's finding the limitation is
taught or suggested by VanDeburg, we do not base our decision on such an
interpretation of the claim.
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Accordingly, we sustain the Examiner's rejection of claim 24.
Conclusion
For the aforementioned reasons, we sustain the Examiner's rejection
of independent claims 1, 12 and dependent claims 4, 17, and 24 under
35 U.S.C. § 103(a). We do not sustain the Examiner's rejection of claim 16
under 35 U.S.C. § 103(a). Appellants do not present separate arguments for
patentability of any of the remaining pending claims, and, thus, we sustain
the rejection of these claims.
DECISION
The Examiner's decision to reject claim 28 under 35 U.S.C. § 112 is
affirmed.
The Examiner's decision to reject claims 1, 4--15, 17, 18, and 21-29
under 35 U.S.C. § 103(a) is affirmed.
The Examiner's decision to reject claim 16 under 35 U.S.C. § 103(a)
is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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