Ex parte Radu

• Decision Date: 01 July 2020
• Docket Number: Appeal 2020-001837,467,Application 14/636
• Parties: Ex parte CRISTIAN RADU, MEHDI COLLINGE, and JOHN GAITANOS Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte CRISTIAN RADU, MEHDI COLLINGE, and JOHN GAITANOS Technology Center 3600

Appeal 2020-001837

Application 14/636, 467^[1]

United States Patent and Trademark Office, Patent Trial and Appeal Board

July 1, 2020

FILING DATE: 03/03/2015

Before JOSEPH L. DIXON, DAVID M. KOHUT, and JON M. JURGOVAN, Administrative Patent Judges.

DECISION ON APPEAL

JURGOVAN, Administrative Patent Judge.

Appellant seeks review under 35 U.S.C. § 134(a) from a Non-Final Rejection of claims 1, 8, and 25-28, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.^[2]

CLAIMED INVENTION

The claims are directed to a mobile computing device and method "allowing [the] mobile device to operate as a payment device securely without a requirement for secure hardware." (Spec. 1:9-12.) A processor of the mobile computing device is programmed with a mobile transaction application, a memory of the mobile computing device comprises a local database to hold data items for use by the mobile transaction application, and the mobile transaction application "is adapted to encrypt data items for storage in the local database [] and to decrypt data items stored in the local database [] using white-box cryptographic techniques." (Abstract.)

Independent claims 1 and 25, reproduced below, are illustrative of the claimed subject matter:

1. A mobile computing device configured for performing payment transactions, the mobile computing device comprising

a processor; and

a memory associated with the processor

the memory storing a local database, the local database including a plurality of entries, each of said entries including: (a) an index, (b) an application sequence counter value; and (c) an encrypted parameter

the memory storing program instructions, the processor controlled by the program instructions to perform functions as follows

retrieving the index and the application sequence counter value from one of the entries contained in the local database;

deriving an entry-specific key K_i based on (i) a system key K_SYS, (ii) the retrieved index, and (iii) the retrieved sequence counter value; said system key K_SYS having been included in embedded form in said program instructions; and January 10, 2020.

using the derived entry-specific key Ki to decrypt the encrypted parameter included in said one of the entries contained in the local database;

the memory further storing a mobile transaction application, the processor controlled by the mobile transaction application such that the mobile computing device performs a payment transaction using the decrypted parameter.

25. A method of performing payment transactions, the method comprising:

storing a local database in a memory in a mobile computing device, the local database including a plurality of entries, each of said entries including: (a) an index, (b) an application sequence counter value; and (c) an encrypted parameter;

retrieving the index and the application sequence counter value from one of the entries contained in the local database;

deriving an entry-specific key K_i based on (i) a system key K_SYS, (ii) the retrieved index, and (iii) the retrieved sequence counter value; said system key K_SYS having been included in embedded form in program instructions stored in the mobile computing device;

using the derived entry-specific key Ki to decrypt the encrypted parameter included in said one of the entries contained in the local database; and

performing a payment transaction with the mobile computing device using the decrypted parameter.

(Appeal Br. 18-19 (Claims App.).)

REFERENCES

The prior art relied upon by the Examiner is:

Name	Reference	Date
Cooper	US 5, 563, 946	October 8, 1996
Ginter	US 5, 892, 900	April 6, 1999
Flitcroft	US 2003/0028481 A1	February 6, 2003
Pourfallah	US 2012/0253852 A1	October 4, 2012

REJECTIONS

Claims 1, 8, and 25-28 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. (Non-Final Act. 8-10.)

Claims 1, 8, and 25-28 stand rejected under 35 U.S.C. § 112(b) as being indefinite. (Non-Final Act. 10-12.)

Claims 1, 8, and 25-28 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. (Non-Final Act. 4-7.)

Claims 1 and 8 stand rejected under 35 U.S.C. § 102(a)(1)/(a)(2) as anticipated by Cooper. (Non-Final Act. 13-14.)

Claims 1, 25, and 28 stand rejected under 35 U.S.C. § 103 based on Cooper and Flitcroft. (Non-Final Act. 15-17.)

Claims 8 and 26 stand rejected under 35 U.S.C. § 103 based on Cooper, Flitcroft, and Ginter. (Non-Final Act. 17.)

Claim 27 stands rejected under 35 U.S.C. § 103 based on Cooper, Flitcroft, and Pourfallah. (Non-Final Act. 18.)

ANALYSIS

§ 112(a) Written Description Rejections

The written description "must 'clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.'" Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1345, 1351 (Fed. Cir. 2010) (en banc) (citation omitted). The test is whether the disclosure "conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id.

Moreover, the Federal Circuit also stated that the written description clause of section 112 has been construed to mandate that the specification satisfy two closely related requirements-it must describe the manner and process of making and using the invention so as to enable a person of skill in the art to make and use the full scope of the invention without undue experimentation and "it must describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed." LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1344-45 (Fed. Cir. 2005) (while the inventor had the intent to cover generic methods with his patent, he did not disclose enough in the specification to enable one skilled in the art to make and use the generic invention and thus did not show possession of the generic claims). The Federal Circuit has explained that:

The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language.

In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted). In cases where functional claim language recites merely a desired result, the claim "may do so without describing species that achieve that result[, b]ut the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result . . . by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus." Ariad Pharms., 598 F.3d at 1349.

The Examiner rejected independent claims 1 and 25 as failing to comply with the written description requirement because the Specification lacks sufficient written description for particular limitations recited in these claims. (Non-Final Act. 8-9; Ans. 7-9.) Specifically, with respect to claim 1, the Examiner asserts:

[T]he claim[] recite[s] ". . . processor controlled by the program instructions . . .", and ". . . processor controlled by the mobile transaction application . . ." without clearly defining how the "controlled . . ." is performed. An algorithm or steps/procedure taken to perform the function "controlled" must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.

(Non-Final Act. 8-9; see also Ans. 7-8.) And, with respect to claim 25, the Examiner asserts:

[T]he claim recites "storing . . .", "retrieving . . .", "deriving . . .", "using . . .", and "performing . . ." However, the claim limitations are silent to what component(s) perform the "storing . . .", "retrieving . . .", "deriving . . .", "using . . .", and "performing . . ." Therefore, the claim limitations are broader than the Specification.

(Non-Final Act. 9 (citing LizardTech Inc., 424 F.3d at 1344-45); see also Ans. 9.)

We agree with the Examiner. Both claims 1 and 25 recite "retrieving the index and the application sequence counter value from one of the entries contained in the local database," "deriving an entry-specific key Ki based on (i) a system key KSYS, (ii) the retrieved index, and (iii) the retrieved sequence counter value; said system key K_SYS having been included in embedded form in said program instruction," and "using the derived entry-specific key K_i to decrypt the encrypted parameter included in said one of the entries contained in the local database." (See Appeal Br. 18-19 (claims 1 and 25).) Thus, claims 1 and 25 recite functional language specifying a desired result (generation of a decrypted parameter). However, Appellant's Specification does not sufficiently describe how the retrieving, deriving, and decrypting are performed. For example, page 7, line 31 to page 8, line 2, page 8, lines 8-23, page 16, lines 3-22, page 17, lines 2-16, and Figure 9 in the Specification (cited by Appellant as support, see Appeal Br. 11 and Reply Br. 2) restate functions/steps recited in the claims and provide generic descriptions for key derivation and parameter decryption, but do not describe with sufficient detail the algorithms or operations that perform the claimed retrieving, deriving, and using/decrypting steps...