Ex Parte Kranzley

Patent Trials and Appeals BoardJun 19, 2019

12598717 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/598,717 09/09/2010 Arthur D. Kranzley 125665 7590 06/21/2019 Baker Botts LLP 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. 070457.2631 2778 EXAMINER 30 Rockefeller Plaza OYEBISI, moo New York, NY 10112 ART UNIT PAPER NUMBER 3697 NOTIFICATION DATE DELIVERY MODE 06/21/2019 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): nycdocket@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARTHUR D. KRANZLEY Appeal 2018-001456 1 Application 12/598,7172 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and MATTHEWS. MEYERS, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL 1 Our decision references Appellant's Appeal Brief ("App. Br.," filed June 12, 2017) and Reply Brief ("Reply Br.," filed November 22, 2017), and the Examiner's Answer ("Ans.," mailed October 26, 2017) and Final Office Action ("Final Act.," mailed March 15, 2017). 2 Appellant identifies MasterCard International Incorporated as the real party in interest. App. Br. 4. Appeal 2018-001456 Application 12/598,717 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 41-49, 51-54, 57-70, 72, and 76-81.3 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. CLAIMED INVENTION Appellant's claimed invention relates to a "method and system for controlling risk using static payment data and an intelligent payment device" (Spec. Title). Claims 41, 61, 63, and 81 are the independent claims on appeal. Claim 41, reproduced below, is illustrative of the claimed subject matter: 41. A method of conducting a payment transaction between a merchant and a holder of a payment token, compnsmg: receiving by an intelligent point-of-interaction device at the merchant magnetic stripe data from a magnetic stripe on the payment token; determining by the intelligent point of interaction device that the payment token is associated with a payment device configured to generate dynamic data that can be used to authenticate the payment device, based at least in part on said magnetic stripe data, wherein the determining by the intelligent point of interaction device that the payment token is associated with a payment device configured to generate dynamic data that can be used to authenticate the payment device comprises transmitting from the intelligent point of interaction device a message to the payment device, producing by a data processor contained in the payment device a response based at least in part 3 Claims 1-40, 50, 71, and 73 are canceled. Claims 55, 56, 74, and 75 are not rejected. See Final Act. 2. As such, these claims are not before us on appeal. 2 Appeal 2018-001456 Application 12/598,717 on the dynamic data, and transmitting the response from the payment device to the intelligent point of interaction device; and determining by the intelligent point of interaction device that the payment transaction must be conducted using the payment device based at least in part on the determining by the intelligent point of interaction device that the payment token is associated with the payment device, wherein the determining by the intelligent point of interaction device that the payment transaction must be conducted using the payment device comprises performing a risk analysis. REJECTION Claims 41-49, 51-54, 57-70, 72, and 76-81 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Dua (US 2006/0165060 Al, pub. July 27, 2006) and Williams (US 2005/0149430 Al, pub. July 7, 2005). ANALYSIS Appellant argues claims 41-49, 51-54, 57-70, 72, and 76-81 as a group (App. Br. 13-19). We select independent claim 41 as representative. The remaining claims stand or fall with claim 41. See 37 C.F.R. Â§41.37( C )(1 )(iv). In rejecting claim 41 under 35 U.S.C. Â§ 103, the Examiner found that Dua discloses substantially all of the limitations of claim 41 but the Examiner acknowledged that Dua does not disclose the claimed risk analysis, i.e., "wherein the determining by the intelligent point of interaction device that the payment transaction must be conducted using the payment device comprises performing a risk analysis" (Final Act. 6-7). And the Examiner cited Williams to cure the deficiency of Dua (id. at 7 ( citing Williams ,i,i 51, 54, 62)). 3 Appeal 2018-001456 Application 12/598,717 Appellant argues that Williams does not disclose a risk analysis, as called for in claim 41, because the risk assessment in Williams occurs at a central authorizing host, whereas the claimed risk analysis occurs at the merchant, and represents a distributed risk analysis system as opposed to the centralized risk assessment described by Williams (App. Br. 41; see also Reply Br. 4-5). Appellant's argument is not persuasive at least because it is not commensurate with the scope of the claim. As the Examiner observes, claim 41 does not require that the risk analysis is performed solely by the intelligent point of interaction device, without the involvement of any other components (Ans. 2). Thus, nothing in claim 41 precludes a method wherein the intelligent point of interaction device contacts a "central authorizing host," such as authorizing host 108 of Williams, to request that a risk analysis be performed, and then determines, based on the results of the risk analysis, whether the payment transaction must be conducted using the payment device. Indeed, the Specification expressly provides that "[t]he merchant, the payment token issuer, or any appropriate third party may perform the risk analysis" (Spec. 15) ( emphasis added). The Examiner, in our view, thus, reasonably broadly construed claim 41 as encompassing a risk analysis performed by a third party at the request of the intelligent point of interaction device (merchant device). Appellant notes that "Williams describes a GPS system that uses geographic location such that '[i]n some circumstances, the location may be such that the risk will be so high for a particular transaction that the proffered payment may be declined"' (App. Br. 41 (quoting Final Act. 7)). And Appellant asserts, "[i]t follows that modifying Dua in view of Williams would render the claimed method inoperable for its intended purpose" (id.). 4 Appeal 2018-001456 Application 12/598,717 But, Appellant offers no persuasive argument or technical reasoning to explain in what way the Examiner's proposed modification renders "the claimed method inoperable for its intended purpose." Dua discloses a "system and methodology for conducting financial and other transactions using a wireless device" (Dua Abstract). Dua' s system includes a wireless device and Wireless Credential Manager (WCM) 110, each connected to the Internet via computer networks 800 in communication with the Internet and a Point-of-sale (POS) terminal 860 (see id. Fig. 38). Dua discloses that the POS terminal communicates an authorization request to a central host and waits for an authorization approval (id. ,-i 417). The authorization request is routed through various systems to a card management system, and an authorization approval is sent back to the POS terminal (id.). Williams discloses an authorizing host 108 that communicates with a transaction device, performs a risk analysis, and returns approval or decline decisions to the transaction device (Williams ,-J 31 ). We fail to see how, and Appellant has not explained how, modifying Dua' s system to communicate with authorizing host 108 of Williams would render Dua (or Williams) inoperable for its intended purpose. Appellant further argues that "Dua at para. [0406] describes 'over-the- air PIN verification for electronic credentials issued using WCM,' but at least fails to disclose or suggest" the claimed risk analysis (App. Br. 41 ). Yet, as discussed above, the Examiner relies on Williams, not Dua, as disclosing this limitation (Final Act. 7; see also Ans. 3). In view of the foregoing, we sustain the Examiner's rejection of claim 41 under 35 U.S.C. Â§ 103(a). We also sustain the Examiner's 5 Appeal 2018-001456 Application 12/598,717 rejection of claims 42-49, 51-54, 57-70, 72, and 76-81, which fall with claim 41. DECISION The Examiner's rejection of claims 41-49, 51-54, 57-70, 72, and 76- 81 under 35 U.S.C. Â§ 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l .136(a)(l )(iv). AFFIRMED 6