THE TORONTO DOMINION BANKDownload PDFPatent Trials and Appeals BoardMar 8, 20212020005791 (P.T.A.B. Mar. 8, 2021) Copy Citation 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. 14/446,227 07/29/2014 Dino D'Agostino G4144-00229 1123 39290 7590 03/08/2021 Duane Morris LLP - Washington, D.C. 505 9th Street N.W. Suite 1000 Washington, DC 20004 EXAMINER GETACHEW, WODAJO ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 03/08/2021 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): DC_IPDocketing@duanemorris.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DINO D’AGOSTINO and PAUL MON-WAH CHAN ____________ Appeal 2020-005791 Application 14/446,227 Technology Center 3600 ____________ Before ANTON W. FETTING, MICHAEL C. ASTORINO, and JAMES P. CALVE, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Dino D’Agostino and Paul Mon-Wah Chan (Appellant2) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1–11, the only claims 1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal Br.,” filed February 7, 2020) and Reply Brief (“Reply Br.,” filed August 3, 2020), and the Examiner’s Answer (“Ans.,” mailed June 3, 2020), and Final Action (“Final Act.,” mailed August 16, 2019). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Toronto- Dominion Bank (Appeal Br. 3). Appeal 2020-005791 Application 14/446,227 2 pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM IN PART. The Appellant invented a way of processing electronic payments at a payment terminal. Specification para. 2. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A method of cloud-based electronic payment processing, the method comprising: [1] a payment processing server generating an asymmetric cryptographic key pair, over one secure communications channel providing a mobile device with a credential comprising one cryptographic key of the cryptographic key pair, generating a unique single-use payment number, uniquely associating the cryptographic key pair and the single-use payment number with a financial account by saving another cryptographic key of the cryptographic key pair in a pending transaction database uniquely in association with the single- use payment number and the financial account; [2] the payment processing server encrypting the single-use payment number with the another cryptographic key; [3] the mobile device (i) receiving from a payment terminal a card number request requesting a card number from the mobile device, (ii) establishing with the payment processing server another secure communications channel distinct from the one secure communications channel, Appeal 2020-005791 Application 14/446,227 3 (iii) receiving the encrypted single-use payment number from the payment processing server over the another secure communications channel, (iv) generating a decrypted single-use payment number by decrypting the encrypted single-use payment number with the one cryptographic key, and (v) transmitting the decrypted single-use payment number to the payment terminal in response to the card number request; [4] the payment processing server receiving from the payment terminal a payment completion request requesting completion of a financial transaction, the payment completion request including the decrypted single-use payment number and a transaction amount; [5] the payment processing server identifying the financial account associated with the decrypted single-use payment number by querying the pending transaction database with the decrypted single-use payment number, and [6] the payment processing server effecting completion of the financial transaction by one of transferring funds from, and obtaining authorization for a charge to, the identified financial account in an amount equal to the transaction amount. The Examiner relies upon the following prior art: Name Reference Date Filipi-Martin US 2002/0112168 A1 Aug. 15, 2002 Flitcroft US 2003/0028481 A1 Feb. 6, 2003 Rajarethnam US 2013/0282590 A1 Oct. 24, 2013 Appeal 2020-005791 Application 14/446,227 4 Claim 9 stands rejected under 35 U.S.C. § 101 as directed to an ineligible non-statutory ephemeral embodiment. Claims 1–11 stand rejected under 35 U.S.C. § 112(a) as lacking a supporting written description within the original disclosure. Claims 2, 3, and 5–11 stand rejected under 35 U.S.C. § 112(b) as failing to particularly point out and distinctly claim the invention.3 Claims 1, 2, 4–6, and 8–11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Flitcroft and Rajarethnam. Claims 3 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Flitcroft, Rajarethnam, and Filipi-Martin. ISSUES The issues of eligible subject matter turn primarily on whether the claims encompass statutorily non-eligible embodiments. The issues of written description matter turn primarily on whether there is adequate support for the claims. The issues of indefiniteness matter turn primarily on whether one of ordinary skill can determine the scope of the claims. The issues of obviousness turn primarily on whether the art describes the claim limitations. 3 Claims 1 and 4 were included in the rejection (Final Action 21), but were subsequently withdrawn from the rejection (Answer 3). Claims 1 and 4 were not included in the Final Action rejection analysis. The withdrawal thus appears to be correcting a typographic error in the Final Action. Appeal 2020-005791 Application 14/446,227 5 FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Flitcroft 01. Flitcroft is directed to a credit card system and method offering reduced potential of credit card number misuse. Flitcroft para. 3. 02. Flitcroft describes “a financial transaction system capable of using at least one limited use credit card number, which is limited in use by a party other than a limited use credit card number issuer and which is associated the master account number of a customer.” This proceeds by sending to a user from a limited use credit card number issuer a limited use credit card number; communicating with a limited use card number card issuer to establish limitations on the use of the limited use credit card number by a third party before it can be used in a transaction by said user; and authorizing transactions which meet said established limitations and denying other transactions by comparing at a central location the attempted use to the established limitations on use. Flitcroft para. 24. Rajarethnam 03. Rajarethnam is directed to facilitating electronic payments in offline disconnected transactions using a visual code. Rajarethnam para. 2. Appeal 2020-005791 Application 14/446,227 6 ANALYSIS Claim 9 rejected under 35 U.S.C. § 101 as directed to an ineligible non- statutory ephemeral embodiment This rejection is based on determining that ephemeral transitory media is within the claim scope. We are persuaded by Appellant’s arguments that claim 9 excludes such transitory media. Appeal Br. 37–39; Reply Br. 16. Claims 1–11 rejected under 35 U.S.C. § 112(a) as lacking a supporting written description within the original disclosure We are persuaded by Appellant’s argument that [s]ince the Final Office Action failed to make any reference to the understanding of the person of ordinary skill in the art, . . . Appellant submitted that the Final Office Action had not articulated the rational basis required to substantiate the rejection of the pending claims under 35 U.S.C. § 112(a). See id., pp. 29- 32. Reply Br. 15 (emphasis omitted). The Examiner appears to determine lack of support for the limitation “effecting4 completion of the financial transaction.” Ans. 10. But effecting (as in causing) financial transaction completion is so fundamental and conventional a commercial practice that one of ordinary skill would immediately appreciate the scope of what this encompasses, and so that Appellant had shown possession. Claims 2, 3, and 5–11 rejected under 35 U.S.C. § 112(b) as failing to particularly point out and distinctly claim the invention 4 The Examiner appears to misspell “effecting” as “affecting” in determining the word’s breadth. Ans. 10. Appeal 2020-005791 Application 14/446,227 7 The Examiner determines that the limitations “after confirming non- expiry of the life-time period,” “after locating the associated financial account number,” “the associated financial account number ...,” “... transferring funds from...the identified financial account in an amount equal to the transaction amount,” “the payment terminal being configured to ...” and “the payment processing server being configured to ...” are ambiguous. Final Act. 19–20 (emphasis omitted). We are not persuaded by Appellant’s argument that the claims are not ambiguous. Appeal Br. 33–37. The Appellant argues the Examiner does not follow procedure and that the Specification can resolve such ambiguity. The Examiner provides sufficient analysis to support the determination, which we adopt. Final Act. 19–20; Ans. 11–21. We do not import limitations from the Specification into the claims. Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The limitations at issue render the claim scope ambiguous, and claims are often broader in scope than the Specification descriptions. This is not a case where the Specification resolves the meaning of some esoteric claim term. Appellant does not rebut the Examiner’s determinations from the Answer in the Reply Brief. Again, claims 1 and 4 are no longer within the scope of this rejection. See Footnote 3 above. Appeal 2020-005791 Application 14/446,227 8 Claims 1, 2, 4–6, and 8–11 rejected under 35 U.S.C. § 103(a) as unpatentable over Flitcroft and Rajarethnam We are persuaded by Appellant’s argument as to limitation 3 that Flitcroft discloses that, in the embodiment described at paras. [0125] and [0140], and depicted in Fig. 5 thereof, the card issuing organization transmits the encrypted limited use card number to the user’s electronic device, and the device user enters the private password into the device software to thereby decrypt the encrypted limited use card number. Although Flitcroft, at para. [0125], states that the software stored on the user electronic device can perform “secure communication between software package and card issuing organization or agreed agent for downloading additional limited use numbers” (emphasis added), Flitcroft, at paras. [0125] and [0140], does not disclose or suggest that the private password is downloaded to the user’s electronic device via “secure communication” established with the device and a server. Reply Br. 5 (emphasis omitted). The Examiner asserts that, but does not explain how, Flitcroft describes this limitation. As Appellant contends, this is in error. The Examiner cites primarily Flitcroft paragraphs 230–243 and 313–319. Final Act. 21–22. These paragraphs do not describe limitation 3 of claim 1, particularly as to “establishing with the payment processing server another secure communications channel distinct from the one secure communications channel.” Claims 3 and 7 rejected under 35 U.S.C. § 103(a) as unpatentable over Flitcroft, Rajarethnam, and Filipi-Martin These claims depend from those in the previous rejection. Appeal 2020-005791 Application 14/446,227 9 CONCLUSIONS OF LAW The rejection of claim 9 under 35 U.S.C. § 101 as directed to an ineligible non-statutory ephemeral embodiment is improper. The rejection of claims 1–11 under 35 U.S.C. § 112(a) as lacking a supporting written description within the original disclosure is improper. The rejection of claims 2, 3, and 5–11 under 35 U.S.C. § 112(b) as failing to particularly point out and distinctly claim the invention is proper. The rejection of claims 1, 2, 4–6, and 8–11 under 35 U.S.C. § 103(a) as unpatentable over Flitcroft and Rajarethnam is improper. The rejection of claims 3 and 7 under 35 U.S.C. § 103(a) as unpatentable over Flitcroft, Rajarethnam, and Filipi-Martin is improper. CONCLUSION The rejection of claims 2, 3, and 5–11 is affirmed. The rejection of claims 1 and 4 is reversed. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9 101 Eligibility 9 1–11 112(a) Written Description 1–11 2, 3, 5–11 112(b) Indefiniteness 2, 3, 5–11 1, 2, 4–6, 8– 11 103 Flitcroft, Rajarethnam 1, 2, 4–6, 8– 11 3, 7 103 Flitcroft, Rajarethnam, Filipi-Martin 3, 7 Overall Outcome 2, 3, 5–11 1, 4 Appeal 2020-005791 Application 14/446,227 10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED IN PART Copy with citationCopy as parenthetical citation