Ex Parte Kelley et al

Patent Trial and Appeal Board

Nov 28, 2012

10905716 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/905,716 01/18/2005 Edward E. Kelley FIS920040207US1 2716
46136 7590 11/28/2012
WHITHAM, CURTIS,CHRISTOFFERSON & COOK, P.C. (IBM)
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
MAI, THIEN T
ART UNIT PAPER NUMBER
2887
MAIL DATE DELIVERY MODE
11/28/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte EDWARD E. KELLEY and FRANCO MOTIKA
_____________

Appeal 2010-005305
Application 10/905,716
Technology Center 2800
______________

Before, MAHSHID D. SAADAT, DEBRA K. STEPHENS, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-21.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method for regulating privileges of a
secure credit card by the holder and for a user by creating a profile for the
user and a PIN associated with the profile. Spec. 3-4. Claim 1 is
representative of the invention and is reproduced below:
1. A method of regulating privileges permitted using a
secure credit card which is activated for a given transaction by
input of a personal identification number (PIN) to said secure
credit card, said method comprising steps of:
providing a first PIN, wherein said first PIN is for a user;
providing a second PIN, wherein said second PIN is for
identifying a holder of said secure credit card;
associating a profile corresponding to said first PIN, said
profile including restrictions on said privileges during use of
said secure credit card in addition to a transaction limit; and
accessing said profile when said secure credit card is
activated for a transaction using said first PIN.

REFERENCES
Dethloff US 4,837,422 June 6, 1989

Fletcher US 2006/0076400 A1 Apr. 13, 2006
(filed Oct. 7, 2004)

REJECTIONS AT ISSUE
Claims 1-21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dethloff and Fletcher. Ans. 3-7.

1 Claims 22-30 were previously cancelled.
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ISSUES
Did the Examiner err in finding that the combination of Dethloff and
Fletcher teaches or suggests:
(a) A secure credit card that is activated for a given transaction, as
required by claim 1?
(b) Accessing a profile when the secure credit card is activated for a
transaction using a user PIN, as required by claim 1?
(c) Accessing a user profile responsive to a profile name, as required by
claim 5?
(d) Accessing a user profile responsive to said PIN of said user, as
required by claim 6?
(e) Comparing a first information value in said user profile with
transaction information, as required by claim 7?
(f) A first information value is a transaction amount limit, as required by
claim 8?
(g) A comparison step is performed internally of said secure credit card,
as required by claim 9?
(h) Comparing a second information value in said user profile with
transaction information, as required by claim 12?
(i) Comparing said second information value is performed internally of
said secure credit card, as required by claim 14?
Did the Examiner err in finding it obvious to combine Dethloff and
Fletcher?

ANALYSIS
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Claims 1-4
Appellants select claim 1 as representative of the group comprising
claims 1-4 and make several arguments with respect to claim 1. App. Br.
12-19. First, Appellants argue that the references do not teach or suggest
activating a secure credit card for a given transaction, as required by the
preamble in claim 1. App. Br. 14-15; Reply Br. 2. We disagree since the
Examiner finds that Dethloff teaches a PIN is input into the card through
programming by the cardholder and once a sub-user inputs the PIN, the card
is activated to enable a sub-user to perform a transaction designating a third
person to perform one or more particular transactions. Ans. 7. Second,
Appellants argue that the references do not teach accessing a profile when
the secure credit card is activated using a user’s PIN. App. Br. 15. Again,
we disagree. As correctly found by the Examiner, Dethloff teaches
authorizing a user of the card by checking a PIN prior to a transaction. Ans.
7. In order to accomplish this task, the system checks the user’s profile
associated with the PIN to make sure the user is authorized for the particular
transaction. Ans. 7. Appellants have not persuaded us the Examiner erred
in the interpretation of transaction (see Ans. 7; Reply Br. 1-2)
Appellants argue that the combination of Dethloff with Fletcher
would not have been obvious to one skilled in the art because Fletcher
teaches away from Dethloff’s deficiencies and the combination would alter
the basic principle of operation of Fletcher. App. Br. 16-17; Reply Br. 3.
We disagree. The Examiner’s position is not based on combining every
aspect of Fletcher with Dethloff. Instead, the Examiner is simply relying on
Fletcher to show that it was known in the art to put restrictions, including
merchant restrictions, on an account. Ans. 8. As such, the combination of
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Fletcher with Dethloff is nothing more than a combination of familiar
elements according to known methods that yield predictable results. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
For the reasons stated supra, we sustain the Examiner’s rejection of
claims 1-4.
Claim 5
Claim 5 requires accessing a user profile using a profile name. The
Examiner finds that a PIN can function as a profile name since Appellants’
Specification does not specifically define the term “profile name.” Ans. 8-9.
Appellants argue that the Examiner erred because using a PIN as the profile
name would nullify “the important security function of providing for the
user PIN to be known only to the user.” App. Br. 20; see also Reply Br. 4.
While Appellants would generally be correct in their assertion with regard to
the security feature, Appellants’ argument is not commensurate in scope
with the claim. Claim 5 does not require the PIN to be known solely to the
user and not the owner of the card. Therefore, since we agree with the
Examiner (Ans. 4-5 and 8-9) that a user’s PIN is broadly, but reasonably,
interpreted as a profile name, we sustain the Examiner’s rejection of claim 5.
Claim 6
Claim 6 requires accessing the user profile that corresponds to the
user’s PIN. Appellants argue that the references do not teach accessing a
profile based on a PIN, but rather only accesses the terms of use, the amount
available, and the amount of transactions. App. Br. 21-22; Reply Br. 5. The
Examiner interprets “a user profile” as information that includes an amount
limit and the terms and conditions of a user. Ans. 9. We find the
Examiner’s interpretation to be reasonable and consistent with the claim
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language and Appellants’ Specification. Thus, we do not find Appellants’
arguments to be persuasive and we sustain the Examiner’s rejection of claim
6.
Claims 7, 10, and 11
Appellants argue that the references do not teach the limitations of
claims 7, 10, and 11 because an available balance is not a “transaction
limit.” App. Br. 22; Reply Br. 6. We do not find Appellants’ argument
commensurate with the scope of any of the claims as none of the claims
recite the term “transaction limit” but rather recite “transaction information.”
We, therefore, agree with the Examiner’s finding and reasoning that an
available balance is the same as transaction information. Ans. 9. Thus, we
sustain the Examiner’s rejection of claims 7, 10, and 11.
Claim 8
Appellants argue that the references do not teach a transaction amount
limit as required by claim 8 since a total amount is not a transaction amount
limit. App. Br. 23; Reply Br. 6. However, we agree with the Examiner’s
finding that the transaction amount limit is equal to the balance on the card.
Ans. 9. Thus, we sustain the Examiner’s rejection of claim 8.
Claim 9
Appellants argue that the references do not teach the comparison step
being performed internally of the secure credit card as required by claim 9
because the computation is made in the card reader. App. Br. 23; Reply Br.
6-7. We agree with the Examiner that Dethloff teaches this limitation since
the available balance on the card is internal to the card itself. Ans. 9; see
also Dethloff, col. 13, ll. 3-21. Thus, the internal card balance will
determine whether the transaction is authorized. Ans. 9; see also Dethloff,
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col. 11, ll. 10-12. As a result, we sustain the Examiner’s rejection of claim
9.
Claims 12, 13, 15, and 16
Appellants argue that the references do not teach the limitations of
claims 12, 13, 15, and 16 because only one comparison is made in Dethloff,
not multiple. App. Br. 24; Reply Br. 7. However, the Examiner finds, and
we agree, that Dethloff teaches comparing whether funds are available (Ans.
9) and Fletcher teaches a merchant restriction value. Ans. 10. Thus, we also
agree with the Examiner that it would have been obvious to first check
whether there were available funds and thereafter check to make sure the
transaction limit did not exceed a merchant restriction value. Ans. 10. As a
result, we sustain the Examiner’s rejection of claims 12, 13, 15, and 16.
Claim 14
Appellants make a similar argument for claim 14 as with claim 9.
App. Br. 24-25; Reply Br. 7-8. As indicated above with respect to claim 9,
since Dethloff teaches an available card balance that is internal to the card,
we agree with the Examiner that it would have been obvious to have a
second value internal to the card as well. As such, we sustain the
Examiner’s rejection of claim 14.
Claims 17- 21
Appellants make the same arguments with respect to claims 17-21 as
with one of claims 6, 7, 8, 12, and 13. App. Br. 25-27; Reply Br. 8-9.
Therefore, we sustain the Examiner’s rejection of claims 17-21 for the same
reasons as indicated supra with respect to claims 6, 7, 8, 12, and 13.
CONCLUSION
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The Examiner did not err in finding that the combination of Dethloff and
Fletcher teaches or suggests all the disputed claim limitations.

SUMMARY
The Examiner’s decision to reject claims 1-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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