Gilbarco Inc.

Patent Trials and Appeals Board

Feb 18, 2022

2021005041 (P.T.A.B. Feb. 18, 2022)

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. 16/158,433 10/12/2018 Philip A. Robertson 19860/09135-CON2 7420 27530 7590 02/18/2022 Nelson Mullins Riley & Scarborough LLP IP Department One Wells Fargo Center, Suite 2300 301 South College Street Charlotte, NC 28202 EXAMINER NGUY, CHI D ART UNIT PAPER NUMBER 2435 NOTIFICATION DATE DELIVERY MODE 02/18/2022 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): ip@nelsonmullins.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PHILIP A. ROBERTSON, RODGER K. WILLIAMS, and TIMOTHY M. WESTON Appeal 2021-005041 Application 16/158,4331 Technology Center 2400 Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and JOYCE CRAIG, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 An oral hearing was held February 2, 2022. A transcript will be made of Record in due course. 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Gilbarco Inc. Appeal Br. 1. Appeal 2021-005041 Application 16/158,433 2 CLAIMED SUBJECT MATTER The claims are directed to a system and method for selective encryption of input data during a retail transaction. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A fuel dispenser, comprising: a user interface comprising a display and one or more data entry point devices configured to receive information from a user; and a control system that executes an application comprising content to be presented on the display, said control system configured to: determine whether content to be presented on the display of the fuel dispenser requests confidential information by evaluating the application during execution thereof; authenticate the content to be presented on the display during execution of the application but before being displayed by comparing indicia associated with the content to a secure copy of the indicia; present the content on the display if the content is authenticated; and if the content requests confidential information, encrypt data received from one or more data entry point devices for transmission to a location separate from the fuel dispenser. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Carloganu US 6,226,749 B1 May 1, 2001 Coppola US 6,360,138 B1 Mar. 19, 2002 Finley US 6,442,448 B1 Aug. 27, 2002 McIntyre US 6,630,928 B1 Oct. 7, 2003 Appeal 2021-005041 Application 16/158,433 3 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1-7 103(a) Finley, Carloganu 1-7 103(a) McIntyre, Coppola, Finley OPINION 1. Claims 1-7 rejected as being unpatentable over Finley in view of Carloganu Appellant argues inter alia that the combination of Finley and Carloganu do not teach or suggest the limitations of determine whether content to be presented on the display of the fuel dispenser requests confidential information by evaluating the application during execution thereof; authenticate the content to be presented on the display during execution of the application but before being displayed by comparing indicia associated with the content to a secure copy of the indicia; present the content on the display if the content is authenticated; as recited in independent claim 1. See Appeal Br. 7-8. Appellant argues that the disputed claim limitations specifically require authentication of “‘content to be presented on the display’ by evaluation of ‘the application during execution.’” Appeal Br. 7. Appellant explains that if the content is authenticated, it is presented on the display. Id. Appellant argues that this is entirely different from Finley. Id. Finley states: Appeal 2021-005041 Application 16/158,433 4 If the previous requirements are met, a digital signature is stamped on the approved application. Applications approved by a company are marked with a signature based on the application file and a private key. The operating system on the DC checks executable and library files transferred to it for a valid signature using a public key. Those without a valid signature will be rejected and not stored or executed on the DC. Appeal Br. 7-8 (citing Finley col. 20, ll. 11-18). Appellant argues that Finley expressly teaches that only signed applications are allowed to be stored on the DC and only signed applications will execute. Appeal Br. 8. Nothing in Finley teaches or suggests that the PIN entry mode is determined by evaluation of the application “during execution thereof” as claim 1 requires. Id. The Examiner finds that Finley teaches a fuel dispensing system comprising at least a processor or Site Manager (i.e., SM) and a Dispenser Controller (i.e., DC), part of the SM that operates the fuel dispensers and other peripherals under control of the Point-of-Sale Terminal (i.e., POS). Ans. 4. The Examiner finds that Finley teaches that the Site Manager and/or Dispenser Controller executes application modules, which correspond to claimed “an application,” to perform functions of the fuel dispensers and additional consumer functions through a state interpretation software engine which map each of the states to appropriate commands, and Finley further teaches that the additional consumer functions are the user interface software applications, which corresponds to the claimed “content to be presented on the display,” that display information allowing consumer interaction such as a key pad. Ans. 4 (citing col. 5, ll. 10-25, col. 6, ll. 6-38, col. 14, ll. 34-46, col. 17, ll. 47-58, col. 19, l. 59-col. 20, l. 10). Appeal 2021-005041 Application 16/158,433 5 The Examiner further finds that in the state that a user PIN must be input, this state would be mapped to a command which is part of the application modules running on the Dispenser Controller to execute a user interface application or content for a key pad, and based on this command, a PIN entry mode is entered. Ans. 4 (citing Finley col. 17, lines 30-59). The Examiner concludes that Finley at least teaches the claimed “determine whether content to be presented on the display of the fuel dispenser requests confidential information by evaluating the application during execution thereof.” Ans. 4-5. The Examiner further finds that Finley teaches the DC implements security measures to ensure the applications that execute upon it are authentic by using a digital signature, especially, those applications that receive PIN input. Ans. 5. The Examiner finds that those applications without a valid signature will not be executed on the DC. Id. (citing Finley col. 19, l. 59-col. 20, l.18). The Examiner finds that when the application modules or the claimed “application” running on the DC executes the user interface applications for displaying a PIN key pad or content as needed would authenticate the digital signature on the user interface applications during executing the application modules, and allow a PIN key pad to be displayed when the digital signature is valid. Ans. 5. Appellant in its Reply argues that independent claim 1 requires: “authenticate the content to be presented on the display during execution of the application but before being displayed by comparing indicia associated with the content to a secure copy of the indicia.” Reply Br. 4. Appellant argues that, the claim specifically requires authentication of “content to be presented on the display” by evaluation of the application Appeal 2021-005041 Application 16/158,433 6 “during execution of the application.” Id. The claim also requires that the application comprise “the content to be presented.” Id. Appellant argues that the Examiner’s finding in the Answer admits that “applications without a valid signature will not be executed.” Reply Br. 4. Appellant argues that “[a]n unauthenticated application that does not execute simply cannot satisfy claim language requiring authentication during execution of the application.” Id. We agree with Appellant’s argument that Finley expressly teaches that only signed applications are allowed to be stored on the DC and only signed applications will execute. See Appeal Br. 8; Reply Br. 4. We also agree with Appellant that nothing in Finley teaches or suggests that the PIN entry mode is determined by evaluation of the application “during execution thereof” as claim 1 requires. Id. We further note that the cited portion by the Examiner regarding the PIN entry mode describing a “touch screen” indicates that the “touch screen” is displayed for PIN entry or calibration, and thus, could not possibly meet the requirement of “authenticate the content to be presented on the display during execution of the application” because the PIN content is already displayed. See Finley col. 17, ll. 30-59 (emphasis added). We are constrained from the record before us to reverse the Examiner’s rejection of claims 1-7 as being unpatentable over Finley in view of Carloganu. 2. Claims 1-7 rejected as being unpatentable over McIntyre, Coppola, in view of Finley Appellant argues that he Examiner relies on Coppola for teaching the disputed limitation of “authenticate the content to be presented on the Appeal 2021-005041 Application 16/158,433 7 display during execution of the application but before being displayed,” but Coppola teaches that the HTML pages are “previously downloaded and authenticated.” Appeal Br. 10, 11 (citing Coppola col. 11, ll. 35-37). The Examiner finds that Coppola teaches that protection is provided by incorporating an encrypted digital signature to all downloadable software or HTML pages and authenticating the software and/or HTML pages. Ans. 7. Appellant argues that Coppola merely teaches authentication of the content before execution. Appeal Br. 10-11; Reply Br. 7. Appellant argues that nothing in this reference teaches or suggests “authenticate the content to be presented on the display during execution of the application but before being displayed,” as required in claim 1. We are persuaded by Appellant’s argument. Accordingly, we are constrained from the record before us to reverse the Examiner’s rejection of claims 1-7 rejected as being unpatentable over McIntyre, Coppola, in view of Finley. CONCLUSION The Examiner’s rejections of claims 1-7 are REVERSED. Appeal 2021-005041 Application 16/158,433 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-7 103(a) Finley, Carloganu 1-7 1-7 103(a) McIntyre, Coppola, Finley 1-7 Overall Outcome 1-7 REVERSED