Ex Parte Weller et al

Patent Trial and Appeal BoardMay 22, 2017

12419115 (P.T.A.B. May. 22, 2017)

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. 12/419,115 04/06/2009 Kevin D. Weller 79900-793739 (080840US) 9931 66945 7590 05/24/2017 KILPATRICK TOWNSEND & STOCKTON LLP/VISA Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER HALE, TIM B ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 05/24/2017 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 EDurrell @ kilpatrickto wnsend .com KT S Docketing2 @ kilpatrick. foundationip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEVIN D. WELLER, STEPHEN W. RYAN, PETER R. HILL, THOMAS J. MANESSIS, TONY D. LEWIS, BENEDICTO H. DOMINGUEZ, PETER BRAY, JAMES DONALD RENO, LIANE REDFORD, PHILIPE LEVY, and TRUDY HILL Appeal 2015-001391 Application 12/419,1151 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 9—14 and 24—34. Claims 15—23 are canceled. Appeal Br. 27 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 The Appellants identify Visa International Service Association as the real party in interest. Appeal Br. 3. Appeal 2015-001391 Application 12/419,115 ILLUSTRATIVE CLAIM 9. A method of authenticating a cardholder during an online transaction for a requesting party, said method comprising: receiving, at a trusted party access control server, a cardholder authentication request originating from a merchant computer said cardholder authentication request including a cardholder account identifier and being routed to the trusted party access control server from the merchant computer via the cardholder computer; sending a chip authentication request from said trusted party access control server to said cardholder computer in response to receipt of the cardholder authentication request at the trusted party access control server; receiving a chip authentication response from said cardholder computer at said access control server that includes a cryptogram and a cardholder authentication password, said cryptogram being generated by a chip card and application in communication with said cardholder computer; generating a second cryptogram at said access control server and comparing said second cryptogram to said cryptogram; determining, by said access control server, that said cardholder authentication password matches a stored password that corresponds to said cardholder account identifier based on a first comparison; determining that said cryptograms match based on a second comparison; and responsive to the first and second comparisons, sending, via said cardholder computer, a cardholder authentication response from said trusted party access control server to said merchant computer indicating that said chip card and said cardholder authentication password are authentic, whereby said access control server authenticates said cardholder for said requesting party during said online transaction. 2 Appeal 2015-001391 Application 12/419,115 REJECTIONS I. Claims 31—34 are rejected under 35 U.S.C. § 101 as ineligible subject matter. II. Claims 31—34 are rejected under 35 U.S.C. § 102(b) as anticipated by Kravitz (US 6,029,150, iss. Feb. 22, 2000). III. Claims 9—13, 24, 25, and 31—34 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kravitz and Linehan (US 6,327,578 Bl, iss. Dec. 4, 2001). IV. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kravitz, Linehan, and Sjoblom (US 7,254,561, iss. Aug. 7, 2007) V. Claims 26—30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kravitz, Linehan, and Sullivan (US 5,351,296, iss. Sept. 27, 1994). FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS Rejection I The Appellants do not address Rejection I. Accordingly, we sustain the Examiner’s rejection of claims 31—34 under 35 U.S.C. § 101. Rejection II Independent claim 31 recites, in part: An access control server comprising a processor and a computer readable medium coupled to the processor, the computer readable medium comprising code, executable by the processor for implementing a method comprising .... 3 Appeal 2015-001391 Application 12/419,115 On account of the quoted language, the Examiner maintains that the recitations of claim 31 constitute non-functional descriptive material, except for the feature of “[a]n access control server comprising a computer readable medium coupled to the processor, the computer readable medium comprising code,” which is taught by Kravitz. See Answer 4—5. According to the Examiner, the remainder of claim 31 recites aspects of the claimed “code,” which is stored on a hardware device, but “is never positively claimed as being executed by the processor” — instead, the claim language says merely that the “code” is “executable by the processor.” Id. The Appellants argue that the recitations of claim 31 have patentable weight, because they provide a functional relationship between the “code” embodied in a “computer readable medium” and the computer hardware that implements the steps of a method. Appeal Br. 10—11 (citing MPEP § 2111.05(111) (“Functional and Nonfunctional Descriptive Material”; “Machine-Readable Media”)). Further, the Appellants argue that such recitations are not met by Kravitz. Id. at 11—12; Reply Br. 2—3. We agree with the Appellants that the recitations of claim 31 have patentable weight. The claim purports to cover a machine (including “code”) that is capable of performing a particular method. The “code” controls the implementation of the identified method, by the claimed computer hardware. This is the precise issue addressed in MPEP § 2111.05(111) and In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994), which is discussed therein, explaining that computer code is accorded patentable weight in such circumstances. Accordingly, the Examiner erred in ascribing no patentable weight to the recitations of claim 31. 4 Appeal 2015-001391 Application 12/419,115 Having taken the position that the bulk of claim 31 (including the entire body of the claim) has no patentable weight, the Examiner did not address whether the purportedly anticipatory reference (Kravitz) meets any of those limitations. See Final Action 12; Answer 5. However, for the reasons addressed in the discussion of a limitation of claim 9, in the following section (regarding the rejection under 35 U.S.C. § 103(a)) — a limitation that is repeated verbatim in claim 31 — we find that Kravitz lacks the limitation. Accordingly, the Appellants’ arguments are persuasive of error, such that the rejection of claim 31 — as well as claims 32—34 depending therefrom — under 35 U.S.C. § 102(b) is not sustained. Rejections III—V Claim 9 includes the following limitation: [Rjeceiving a chip authentication response from said cardholder computer at said access control server that includes a cryptogram and a cardholder authentication password, said cryptogram being generated by a chip card and application in communication with said cardholder computer. The Examiner maintains that this limitation of claim 9 does not have patentable weight: [T]he type of data being collected by the system is non functional as it does not alter how the machine functions. Since “from said cardholder computer at said access control server that includes a cryptogram and a cardholder authentication password” and “being generated by a chip card and application in communication with said card holder computer” merely describe the data (the chip authentication response message), Examiner has not accorded the limitations patentable weight. From where the response is received, what the response contains, and where the cryptogram was generated do not affect the functioning of the claim as a whole. Furthermore, “being generated” is not positively recited. 5 Appeal 2015-001391 Application 12/419,115 Final Action 6. See also Answer 7. With regard to the prior art, the Examiner takes the position that each of the two references relied upon — Kravitz (Fig. 2, col. 22,1. 50-col. 23, 1. 52, col. 25,1. 30-col. 29,1. 17) and Linehan (Fig. 2A; col. 5,1. 50-col. 6,1. 4, col. 12,11. 23—34) — by itself teaches the identified limitation. Final Action 6—7, 13, 15; Answer 10-12. The Appellants contend that the entire limitation bears patentable weight, arguing that the Examiner has presented no rationale to the contrary and that the claimed features “particularly point out and distinctly claim the invention.” Appeal Br. 17. As to the cited references, the Appellants argue that Kravitz does not teach “receiving a chip authentication response” that is “from said cardholder computer” and includes a “cryptogram” and a “cardholder authentication password,” with the “cryptogram being generated by a chip card and application in communication with said cardholder computer.” Appeal Br. 14—15, 20-21. Further, the Appellants argue that Linehan does not teach a “chip authentication response” that includes a “cryptogram” and a “cardholder authentication password,” as claimed. Id. at 14—15, 21—22; Reply Br. 5—6. It is not clear which claimed features carry no patentable weight, in the Examiner’s view. In any event, the recited “chip card,” “cryptogram,” and “password” play functional roles in the operation of the claimed message and thus bear patentable weight. By contrast, the data content (i.e., the particular password and cryptogram employed) associated with these claim terms are not even identified in the claim language. 6 Appeal 2015-001391 Application 12/419,115 Thus, the rejection cannot be sustained, because Kravitz does not teach the claimed “chip card” and Linehan does not teach the claimed “response . . . that includes a cryptogram and a cardholder authentication password.” In comparing the claim to the cited references, the Examiner relies on Kravitz’s computer as meeting the claimed features of the “chip card.” Answer 11 (“[Ujnder broadest reasonable interpretation, the computer can be equated to the chip, chip card or chip card.”) Yet, the Appellants argue persuasively that a person of ordinary skill in the art would not have equated the claimed “chip card” with a generic computer. Reply Br. 5. Further, because claim 9 recites that the “cryptogram” is “generated by a chip card and application in communication with said cardholder computer” (emphasis added), the Examiner’s interpretation would render the claimed “computer” superfluous (the “chip card” being the computer, in the Examiner’s view). See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[CJlaims are interpreted with an eye toward giving effect to all terms in the claim”); In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”) Therefore, Kravitz lacks the claimed “chip card.” With regard to Linehan, the Examiner finds that the reference teaches the “response . . . that includes a cryptogram and a cardholder authentication password” because the consumer’s computer sends a message including identity and authentication information (such as a user ID and password) to an issuer gateway and also teaches that the consumer device can use smart 7 Appeal 2015-001391 Application 12/419,115 card symmetric or asymmetric key authentication. Answer 10—11 (citing Linehan Fig. 2A, col. 5,1. 50-col. 6,1. 4, col. 12,11. 23—34). The Appellants’ argument to the contrary is persuasive. Even accepting the Examiner’s view that Linehan’s disclosure of symmetric or asymmetric key authentication amounts to the claimed implementation of a “cryptogram” (see Answer 10—11 (citing Linehan col. 12,11. 23—34)), the identified portion of Linehan shows such technique as an alternative to a password, rather than using both of them in the same response, as claimed. See Appeal Br. 21—22. Accordingly, the rejection of independent claim 9 — and claims 10- 14 and 24—30 depending therefrom — under 35 U.S.C. § 103(a) is not sustained (the additional references relied upon for claims 14 and 26—30 not curing the shortcoming discussed above). For the same or similar reasons, the rejection of independent claim 31, which also includes the limitation discussed above (“receiving a chip authentication response”) — and claims 32—34 depending therefrom — under 35 U.S.C. § 103(a) is not sustained. DECISION We AFFIRM the Examiner’s decision rejecting claims 31—34 under 35 U.S.C. § 101. We REVERSE the Examiner’s decision rejecting claims 31—34 under 35 U.S.C. § 102(b). We REVERSE the Examiner’s decision rejecting claims 9—14 and 24—34 under 35 U.S.C. § 103(a). 8 Appeal 2015-001391 Application 12/419,115 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 9