THE TORONTO DOMINION BANK

Patent Trials and Appeals Board

Mar 8, 2021

2020005791 (P.T.A.B. Mar. 8, 2021)

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).

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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,
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(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
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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.
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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.

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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.
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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.
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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.
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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

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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