Covered Business Method Review
`United States Patent No. 8,036,988
`
`
`Patent No. 8,036,988
`Application No. 12/902,399
`Filed: October 23, 2010
`Issued: October 11, 2011
`Title: System and Method for Performing Secure Credit Card Transactions
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`––––––––––
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`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW
`UNDER 35 U.S.C. § 321, 37 C.F.R. § 42.304
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
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`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
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`v.
`
`JOHN D’AGOSTINO
`Patent Owner
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`––––––––––
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`

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`Covered Business Method Review
`United States Patent No. 8,036,988
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` TABLE OF CONTENTS
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`LIST OF EXHIBITS……………………………………………………………....iv
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`I.
`
`II.
`
`INTRODUCTION........................................................................................1
`
`PETITIONER HAS STANDING ................................................................2
`
`A.
`
`B.
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`The ‘988 Patent is a Covered Business Method Patent ...............................2
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`Petitioner is a Real Party in Interest Sued for Infringement........................5
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`
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`III.
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`C. Related Matters ............................................................................................5
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`OVERVIEW OF SPECIFIC GROUNDS FOR WHICH IT IS MORE
`LIKELY THAN NOT THAT THE CHALLENGED CLAIMS (1-38) OF
`THE ‘988 PATENT ARE UNPATENTABLE............................................6
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`IV.
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`BACKGROUND INFORMATION FOR THE ‘988 PATENT ..................7
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`A. Overview of the ‘988 Patent ........................................................................7
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`B.
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`The ‘988 Patent Prosecution History ...........................................................8
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`C.
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`V.
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`The ‘988 Patent Ex Parte Reexamination File History ...............................9
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`DETAILED EXPLANATION OF REASONS FOR RELIEF SHOWING
`IT IS MORE LIKELY THAN NOT THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE...........................................................10
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`A.
`
`The Challenged Claims are Invalid under §§ 102, 103 and/or 112...........11
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`1. Claim Construction.................................................................................11
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`2. Ground 1: Claims 1-10, 15-25, 27-33, & 35-38 are Anticipated Under
`35 U.S.C. § 102 by Cohen ......................................................................14
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`3. Ground 2: Claims 11-14, 26 & 34 are Obvious Under 35 U.S.C. § 103
`by Cohen in View of Musmanno............................................................39
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`4. Ground 3: Claims 1-10, 15-25, 27-33, & 35-38 are Anticipated Under
`35 U.S.C. § 102 by Flitcroft ...................................................................44
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`Covered Business Method Review
`United States Patent No. 8,036,988
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`5. Ground 4: Claims 11-14, 26 & 34 are Obvious Under 35 U.S.C. § 103
`by Flitcroft in View of Musmanno .........................................................72
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`6. Ground 5: Claims 1-20, 22, and 31-38 are Indefinite Under 35 U.S.C. §
`112...........................................................................................................76
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`CONCLUSION ..........................................................................................79
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`VI.
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`Covered Business Method Review
`United States Patent No. 8,036,988
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`PETITIONER’S LIST OF EXHIBITS
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`Exhibit 1001 – U.S. Patent No. 8,036,988
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`Exhibit 1002 – File History for U.S. Patent No. 8,036,988
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`Exhibit 1003 – File History for U.S. Reexamination No. 90/012,517
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`Exhibit 1004 – U.S. Patent No. 6,422,462 (“Cohen”)
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`Exhibit 1005 – U.S. Patent No. 6,636,833 (“Flitcroft”)
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`Exhibit 1006 – U.S. Patent No. 5,826,243 (“Musmanno”)
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`Exhibit 1007 – Complaint in D’Agostino v. MasterCard, Inc. et al. (13-cv-0738)
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`Exhibit 1008 – Declaration of Jack D. Grimes, Ph.D.
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`Exhibit 1009 – Excerpts from Random House Webster’s Unabridged Dictionary,
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`Second Edition
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`Exhibit 1010 – U.S. Patent No. 6,064,987 (“Walker”)
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`Exhibit 1011 – U.S. Patent No. 5,283,829 (“Anderson”)
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`Exhibit 1012 – ISO 8583 Financial Transaction Card Originated Messages –
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`Interchange Message Specifications (1992) (“ISO 8583”)
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`Covered Business Method Review
`United States Patent No. 8,036,988
`Pursuant to 35 U.S.C. § 321 and 37 C.F.R. § 42.304, MasterCard
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`International Incorporated (“Petitioner” and real party in interest), hereby petitions
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`for review under the transitional program for covered business method patents of
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`claims 1-38 (all claims) of U.S. Pat. No. 8,036,988 (“the ‘988 Patent”), issued to
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`John D’Agostino (“D’Agostino”). An Ex Parte Reexamination of the ‘988 Patent
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`was filed on September 12, 2012, and is currently pending under Control No.
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`90/012,517. Petitioner hereby asserts it is more likely than not that at least one of
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`the challenged claims is unpatentable and respectfully requests review of, and
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`judgment against, Claims 1-38 as unpatentable under §§ 102, 103, and/or 112.
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`I.
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`INTRODUCTION
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`The ‘988 Patent attempts to claim the use of a transaction code – in lieu of a
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`credit card number – for making secure transactions that are limited to a specific
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`merchant or group of merchants. This was a practice that was common in the
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`credit card industry before the priority date of the ‘988 Patent. During prosecution,
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`the ‘988 Patent issued only after the Applicant attempted to distinguish the claims
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`over the prior art on the basis of the following limitation:
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`defining at least one payment category to include at least limiting a
`number of transactions to one or more merchants, said one or more
`merchants limitation being included in said payment category prior to
`any particular merchant being identified as one of said one or more
`merchants
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`United States Patent No. 8,036,988
`However, this limitation does not in fact distinguish the claims of the ‘988
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`patent from the prior art. The prior art already disclosed the use of credit card
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`transactions that were limited to a particular type of merchant (such as clothing
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`stores). As the Director of the Central Reexamination Unit stated in a decision
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`granting the Petition for Ex Parte Reexamination of the ‘988 Patent: “the payment
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`category would limit the number of merchants – to, for example, only clothing
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`stores. At the same time, limiting to ‘clothing stores’ does not identify any one
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`particular merchant.” See Exh. 1003, ‘988 Patent Reexamination History, 6/7/13
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`CRU Decision at 5. In other words, the Applicant had claimed nothing more than
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`a feature that was inherently disclosed in the prior art.
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`Accordingly, at least for the same reasons adopted by the Director of the
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`Central Reexamination Unit and explained in detail below, the prior art invalidates
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`the ‘988 Patent.
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`II.
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`PETITIONER HAS STANDING
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`A.
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`The ‘988 Patent is a Covered Business Method Patent
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`The ‘988 Patent is a “covered business method patent” under § 18(d)(1) of
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`the Leahy-Smith America Invents Act, Pub. L. 112-29 (“AIA”) and § 42.301.
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`More specifically, the term “covered business method patent” means “a patent that
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`claims a method or corresponding apparatus for performing data processing or
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`other operations used in the practice, administration, or management of a financial
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`Covered Business Method Review
`United States Patent No. 8,036,988
`product or service, except that the term does not include patents for technological
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`inventions.” See AIA § 18(d)(1); 37 C.F.R. § 42.301(a); see also 77 Fed. Reg.
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`48733, 48735 (Aug. 14, 2012). The legislative history explains that the definition
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`of covered business method patent was drafted to encompass patents “claiming
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`activities that are financial in nature, incidental to a financial activity or
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`complementary to a financial activity.” See 77 Fed. Reg. 48735 (Aug. 14, 2012).
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`
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`Here, the ‘988 Patent claims a method for data processing and other
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`operations used in the practice, administration, and management of a financial
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`product and service, and more particularly to a method for performing secure credit
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`card purchases. The claimed method involves the creation and use of a transaction
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`code wherein a customer does not need to reveal their credit card number to a
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`merchant in order to make a purchase. Thus, the ‘988 Patent claims an activity that
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`is entirely financial in nature, and involves the operations of a financial product
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`and service, consequently qualifying it as a “covered business method patent.”
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`Moreover, the ‘988 patent is not directed to a “technological invention.” A
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`“technological invention” claims “subject matter as a whole [that] recites a
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`technological feature that is novel and unobvious over the prior art; and solves a
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`technical problem using a technical solution.” § 42.301(b).1 This is not the case
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`1 See, e.g., 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012) (“Mere recitation of
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`known technologies, such as computer hardware, communication or computer
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`here. The ‘988 Patent’s claims are directed to performing ordinary credit card
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`transactions using conventional security techniques, i.e., the use of a transaction
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`code. See Exh. 1001 at Abstract. The claimed method does not contain any novel
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`and unobvious technological feature: it merely claims the creation of a transaction
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`code and the communication of the transaction code to the account holder and
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`merchant to facilitate the secure credit card transaction. See Exh. 1001 at 4:8-29.
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`In fact, this basic use of a transaction code to facilitate secure credit card
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`transactions was well-known in the industry before the filing date of the ‘988
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`Patent, see, e.g., U.S. Patent No. 6,422,462 to Cohen; U.S. Patent No. 6,636,833 to
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`Flitcroft et al. The claims of the ‘988 Patent recite no particular hardware,
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`arrangement of hardware, or software to implement the system. See CBM2012-
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`00001, Decision Instituting CBM Review, Paper No. 36, at 27 (January 9, 2013)
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`(holding that the claims were not directed to a technological invention because “no
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`specific, unconventional software, computer equipment, tools or processing
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`capabilities are required” by the claims). In addition, the subject matter as a whole
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`networks, software, memory, computer-readable storage medium, . . . display
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`devices or databases, or . . . an ATM or point of sale device,” or reciting “use of
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`known prior art technology to accomplish a process or method, even if that process
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`or method is novel and non-obvious” will “not typically render a patent a
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`technological invention.”).
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`United States Patent No. 8,036,988
`solves no “technical problem,” and instead is directed to a method of carrying out a
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`financial transaction.
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`In addition, the ‘988 Patent is classified into Class 705. As the legislative
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`history of the AIA reveals, this classification raises a presumption that the ‘988
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`Patent is a covered business method patent. 157 Cong. Rec. S1368, S1379 (daily
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`ed. March 8, 2011)(Statement of Sen. Kyl). Finally, as noted below, the ‘988
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`Patent has been asserted against MasterCard’s inControl offering, which is a
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`financial service. See Exh. 1007, Complaint at ¶ 19-22. This alone should suffice
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`to make the patent eligible for covered business method review. 157 Cong. Rec.
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`S1364, S1365 (daily ed. March 8, 2011)(daily ed. Statement of Sen. Schumer)(“if a
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`patent holder alleges that a financial product or service infringes its patent, that
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`patent shall be deemed to cover a financial product or service”); see also 157
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`Cong. Rec. S5432 (daily ed. Sept. 8, 2011).
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`Accordingly, the ‘988 Patent qualifies for covered business method review.
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`B.
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`Petitioner is a Real Party in Interest Sued for Infringement
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`The ‘988 Patent was asserted against Petitioner in Case No. 1:13-cv-00738,
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`John D’Agostino v. MasterCard, Inc. et al, pending in the U.S. District Court for
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`the District of Delaware. See Exh. 1007, Complaint.
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`C. Related Matters
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`In addition to the above referenced Case No. 1:13-cv-00738, pending in the
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`Covered Business Method Review
`United States Patent No. 8,036,988
`U.S. District Court for the District of Delaware, there is a pending reexamination
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`for the ‘988 Patent in Reexamination No. 90/0123,517, filed September 12, 2012,
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`in the United States Patent and Trademark Office. See Exh. 1003 – File History
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`for Reexamination No. 90/012,517. Petitioner is also filing, concurrent with this
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`Petition, an additional Petition seeking review of the related U.S. Patent No.
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`7,840,486, to which the ‘988 Patent claims priority as a continuation.
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`III. OVERVIEW OF SPECIFIC GROUNDS FOR WHICH IT IS MORE
`LIKELY THAN NOT THAT THE CHALLENGED CLAIMS (1-38)
`OF THE ‘988 PATENT ARE UNPATENTABLE
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`Pursuant to § 42.208 (and § 42.300), Petitioner asserts that every one of the
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`challenged claims 1-38 of the ‘988 Patent is unpatentable as invalid under §§ 102,
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`103 and/or 112. The accompanying Exhibit List lists all prior art references relied
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`upon in the Petition for the asserted grounds of invalidity under §§ 102, 103 and/or
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`112. Petitioner specifically requests cancellation of the challenged claims on the
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`following statutory grounds:
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`− GROUND 1. Claims 1-10, 15-25, 27-33, & 35-38 are Unpatentable under 35
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`USC § 102 as Anticipated by Cohen
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`− GROUND 2. Claims 11-14, 26, & 34 are Unpatentable under 35 USC § 103 as
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`Obvious over Cohen in view of Musmanno
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`− GROUND 3. Claims 1-10, 15-25, 27-33, & 35-38 are Unpatentable under 35
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`USC § 102 as Anticipated by Flitcroft
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`United States Patent No. 8,036,988
`− GROUND 4. Claims 11-14, 26, & 34 are Unpatentable under 35 USC § 103 as
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`Obvious over Flitcroft in view of Musmanno
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`− GROUND 5. Claims 1-20, 22, & 31-38 are Unpatentable under 35 USC § 112
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`Section V lists each ground upon which it is more likely than not that the
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`challenged claims are unpatentable as anticipated under §§ 102, 103 and/or 112,
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`and renders a detailed explanation therefor. Grounds 3 and 4 are being presented
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`in the event the Board does not accept Petitioner’s construction of “generating
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`[a/said] transaction code” and adopts a broader, albeit in Petitioner’s view a faulty,
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`alternative construction, both discussed below.
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`IV. BACKGROUND INFORMATION FOR THE ‘988 PATENT
`A. Overview of the ‘988 Patent
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`The ‘988 Patent is directed to a secure method for performing credit card
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`purchases, wherein a customer submits a transaction code, rather than an entire
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`credit card number to a merchant when making a purchase. Generally, the
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`customer contacts an authorizing entity, such as a credit card company or issuing
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`bank, and requests a transaction code. Seemingly, the transaction code can be
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`limited to purchases within a payment category, such as within a specific period of
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`time, within a maximum dollar limit, with a specific number of merchants, or with
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`a specific merchant. The customer can then use the transaction code to make a
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`purchase at a merchant or online.
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`The ‘988 Patent Prosecution History
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`B.
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`The claims of the ‘988 Patent issued after only one non-final rejection
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`during prosecution. The Examiner rejected the claims in the non-final office action
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`under § 103(a) as unpatentable over U.S. Patent No. 6,000,832 (“Franklin”) in
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`view of U.S. Patent Publication No. 2001/0011249 (“Yanagihara”). See Exh.
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`1002, ‘988 Patent File History, 1/14/11 Office Action, at 4.
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`In response to the non-final office action, the Applicant argued that
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`independent claim 1 was directed to a method of performing a secure credit card
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`purchase and includes the step of “defining at least one payment category to
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`include at least limiting a number of transactions to one or more merchants, said
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`one or more merchants limitation being included in said payment category prior to
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`any particular merchant being identified as one of said one or more merchants.”
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`See Exh. 1002, ‘988 Patent File History, 3/21/11 Response to Office Action, at 13
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`(emphasis in original). More specifically, the Applicant argued that the claimed
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`method “does not identify a merchant prior to the generation of the transaction
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`code.” Id (emphasis added). The Applicant provided similar arguments for the
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`other pending independent claims. Id, at 14-15.
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`The Examiner allowed the pending claims noting that he found the
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`Applicant’s arguments persuasive. More specifically, the Examiner stated in the
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`reasons for allowance the “uniquely patentable feature” of:
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`defining at least one payment category to include at least limiting a
`number of transactions to one or more merchants, said one or more
`merchants limitation being included in said payment category prior to
`any particular merchant being identified as one of said one or more
`merchants
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`See Exh. 1002, ‘988 Patent File History, 4/29/11 Notice of Allowance. The
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`application subsequently issued as the ‘988 Patent.
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`C.
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`The ‘988 Patent Ex Parte Reexamination File History
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`On September 12, 2012, the Petitioner filed a Request for Ex Parte
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`Reexamination of the ‘988 Patent, and after an initial decision denying the request,
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`on January 7, 2013, the Petitioner filed a Petition for Review under 37 C.F.R. §
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`1.181. On June 7, 2013, the Director of the Central Reexamination Unit granted
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`the Petition for Review and granted the Request for Ex Parte Reexamination of the
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`‘988 Patent. In the decision granting the petition, the Director stated: “in Cohen
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`one can limit the transaction only to a particular type of merchant, such as
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`computer stores” and further noted that the “card can be limited to use at certain
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`types of stores, such as clothing stores.”
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` See Exh. 1003, ‘988 Patent
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`Reexamination History, 6/7/13 CRU Decision, at 5. “At the same time, limiting to
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`‘clothing stores’ does not identify any one particular merchant.” Id. The director
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`concluded that “[a]ccordingly, it would appear that Cohen does include ‘defining a
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`payment category to include at least limiting a number of transactions to one or
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`United States Patent No. 8,036,988
`more merchants, said one or more merchants limitation being included in said
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`payment category prior to any particular merchant being identified as one of said
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`one or more merchants’ as claimed.” Id. Furthermore, the director noted that
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`“[t]his is the material which was deemed missing during the original prosecution.”
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`Id, at 5.
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`To further explain the reasoning for why Cohen discloses this element, the
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`Director noted that:
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`Cohen does not necessarily limit transactions to any specific merchant
`or particular store – if Cohen provides a limit of ‘clothing stores’ then
`there is necessarily a limit on number of stores, as not all stores are
`clothing stores. At the same time there is no limit or specific
`identification of any specific store. Cohen therefore limits a number of
`transactions to one or more merchants, those of a specific industry,
`while not identifying [any] particular merchant. Limiting by industry
`does not necessarily identify a particular merchant. Id. at 6.
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`In other words, the Director found that Cohen inherently discloses the exact
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`limitation that the Applicant relied on to distinguish the claims from the prior art.
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`In the Office Action subsequently issued in the Ex Parte Reexamination, the
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`Examiner agreed with the Director, rejecting all the claims of the ‘988 Patent. See
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`Exh. 1003, ‘988 Patent Reexamination History, 9/11/13 Office Action, at 4-5, 13-
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`14, and 18-19.
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`V. DETAILED EXPLANATION OF REASONS FOR RELIEF
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`United States Patent No. 8,036,988
`SHOWING IT IS MORE LIKELY THAN NOT THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE
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`Pursuant to §§ 42.22 and 42.304(b), a full statement of the reasons for the
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`relief requested, with a detailed explanation of the evidence, including material
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`facts, and the governing law, rules and precedent is provided below.
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`A.
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`The Challenged Claims are Invalid under §§ 102, 103 and/or 112
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`The following discussion details, in Sections V.A.2-V.A.6, each ground for
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`which it is more likely than not that each challenged claim is invalid based on the
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`prior art identified above as either anticipated under § 102, obvious under § 103, or
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`indefinite under § 112 (or a combination, where applicable). Section V.A.1 lists
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`and explains the bases for Petitioner’s relevant claim constructions for the
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`challenged claims.
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`1.
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`Claim Construction
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`Pursuant to § 42.300(b), and solely for purposes of this review, Petitioner
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`construes the claim language such that claim terms are given their broadest
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`reasonable interpretation. For terms not specifically listed and construed below,
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`and in the absence, to date, of detailed arguments from D’Agostino indicating a
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`need for construction or a disagreement regarding the meaning of the vast majority
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`of terms, Petitioner interprets them for purposes of this review in accordance with
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`their plain and ordinary meaning under the required broadest reasonable
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`interpretation. Because this standard is different from the standard used in U.S.
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`District Court litigation, see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
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`1364, 1369 (Fed. Cir. 2004); see also MPEP § 2111, Petitioner expressly reserves
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`the right to argue in litigation a different claim construction for any term in the
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`‘988 Patent as appropriate to that proceeding.
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`• “generating [a/said] transaction code”: For review purposes, this term
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`means “creating a code usable as a substitute for a credit card number in a purchase
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`transaction, the number pre-coded to be indicative of a specific credit card
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`account.” (Exh. 1001, ‘988 Patent at Abstract; 3:48-53; 6:24-43; 7:1-6; see Exh.
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`1008, Grimes Dec. at ¶ 20).2
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`• “defining at least one payment category”: For review purposes, this
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`term means “specifying the type of limitation (or limitations) that are available to
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`be applied to a transaction code in order to limit its use.” (Exh. 1001, ‘988 Patent
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`at 3:5-8; 3:53-4:7; 4:25-29; 7:7-13; 7:61-8:48; see Exh. 1008, Grimes Dec. at ¶ 21).
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`2 In the event the Board does not accept Petitioner’s construction of “generating
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`[a/said] transaction code,” but concludes instead that this term means “creating a
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`code usable as a substitute for a credit card number in a purchase transaction”
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`(without the clause “the number pre-coded to be indicative of a specific credit card
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`account”) (“Alternative Construction”) then Petitioner presents Grounds 3 and 4
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`below.
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`• “particular merchant”: For review purposes, this term means “a
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`specific merchant with whom a customer can engage in the purchase transaction.”
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`(Exh. 1001, ‘988 Patent at 4:5-7; 4:13-18; 4:49-54; see Exh. 1008, Grimes Dec. at
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`¶ 22).
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`• “verifying that said defined purchase parameters are within said
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`designated payment category”: For review purposes,
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`this
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`term means
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`“ascertaining that any limitation associated with the designated payment category
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`is satisfied.” (Exh. 1001, ‘988 Patent at 4:13-18; 7:13-29; see Exh. 1008, Grimes
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`Dec. at ¶ 23).
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`• “[limiting/limits] … to one or more merchants”: This term is indefinite
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`under 35 U.S.C. § 112. See Section V.A.6. Alternatively, however, to the extent
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`construction is possible, and for review and argument purposes, Petitioner’s best
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`understanding is that this term may mean “limiting … to a number of merchants,
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`from one merchant up to any plurality of merchants.” (Exh. 1001, ‘988 Patent at
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`8:18-24; see Exh. 1008, Grimes Dec. at ¶ 24).
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`• “a number of transactions”: This term is indefinite under 35 U.S.C. §
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`112. See Section V.A.6. Alternatively, however, to the extent construction is
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`possible, and for review and argument purposes, Petitioner’s best understanding is
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`that this term may mean “any number of transactions, including zero transactions,
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`one transaction, or any plurality of transactions.” (Exh. 1001, ‘988 Patent at 8:27-
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`34; see Exh. 1008, Grimes Dec. at ¶ 25).
`
`2. Ground 1: Claims 1-10, 15-25, 27-33, & 35-38 are
`Anticipated Under 35 U.S.C. § 102 by Cohen
`(i) Overview of Cohen
`
`U.S. Patent No. 6,422,462 to Cohen (Exh. 1004, “Cohen”) claims priority to
`
`U.S. Provisional Application No. 60/079,8843, which was filed on March 30, 1998.
`
`Accordingly, Cohen is prior art under at least 35 U.S.C. § 102(e), and thus
`
`Petitioner contends satisfies AIA § 18(a)(1)(C).4 Cohen teaches customized,
`
`limited use card numbers for use in purchase transactions over a credit card
`
`network. Cohen at 2:32-43.
`
`Cohen discloses an account holder contacting their credit card company,
`
`verifying their identity, and then being provided with a transaction code number to
`
`be used for a single or limited range of transactions. Id. at 3:41-48; 13:8-14. The
`
`
`3 U.S. Provisional Application No. 60/079,884 supports the subject matter relied
`
`upon in Cohen in compliance with 35 U.S.C. 112, first paragraph.
`
`4 This Board has previously instituted a Covered Business Method Patent Review
`
`on the basis of prior art under 35 U.S.C. § 102(e). See CBM 2013-00008, Decision
`
`Instituting CBM Review, Paper No. 20, at 20-21, 35 (June 24, 2013) (holding that
`
`the CBM petition was granted on the basis of prior art that included U.S. Pat. No.
`
`5,940,812 to Tengel, a 102(e) prior art reference).
`
`
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`- 14 -
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`

`
`Covered Business Method Review
`United States Patent No. 8,036,988
`account holder can indicate in advance the limitations applicable to the transaction
`
`code number. Id. at 3:49-52. Once the account holder has received the number,
`
`they can communicate the number to a merchant like it was a regular credit card
`
`number, which the merchant can use to obtain authorization for the purchase
`
`transaction with the credit card company. Id. at 5:35-39. The credit card company
`
`can authorize the use of the customized number, or deny it if it is used for anything
`
`other than the single or customized use indicated by the account holder. Id. at
`
`5:44-49.
`
`Examples of the customized uses for which a disposable or customized
`
`number can be indicated may include a time limit, Id. at 6:7, specific merchant or
`
`industry, Id. at 8:2-14, a specific merchant or merchants, Id. at 8:33-34, purchase
`
`amount, Id. at 8:44, etc. These various customized uses can also be used in
`
`combination, such as a customized number to be used on specific dates, for
`
`specific amounts, etc. and those limits are recorded by the credit card company and
`
`associated with the customized number for verification when payment transactions
`
`occurs, Id. at 10:24-35.
`
`(ii)
`
`Independent Claim 1
`
`Claim
`1. A method of
`performing secure
`credit card purchases,
`said method
`comprising:
`
`Cohen
`Cohen discloses “provid[ing] improved credit cards and
`methods for credit card transactions ... provid[ing]
`methods and apparatus for secure transmission of credit
`card information.” (Cohen at 1:48-62) (emphasis added).
`
`
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`- 15 -
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`

`
`a) contacting a
`custodial authorizing
`entity having custodial
`responsibility of
`account parameters of
`a customer's account
`that is used to make
`credit card purchases;
`b) supplying said
`custodial authorizing
`entity with at least
`account identification
`data of said customer's
`account;
`c) defining at least one
`payment category to
`include at least
`limiting a number of
`transactions to one or
`more merchants,
`
`said one or more
`merchants limitation
`being included in said
`payment category
`prior to any particular
`merchant being
`identified as one of
`said one or more
`
`Covered Business Method Review
`United States Patent No. 8,036,988
`Cohen discloses that a user can contact the custodial
`authorizing entity: “a user dials into her credit card
`company...” (Cohen at 3:42-44).
`
`Cohen discloses that a user can provide the custodial
`authorizing entity with her account identification data:
`“a user dials into her credit card company...and after
`providing the ordinary credit card number and
`verification data...” (Cohen at 3:42-45).
`
`Assuming this phrase is not insolubly ambiguous, Cohen
`specifies various possible payment categories: “The card
`can also be customized for only particular uses or
`groups of uses.” (Cohen at 7:66-67).
`Cohen discloses a payment category that limits a
`number of transactions to one or more merchants: “А
`customized credit card could be issued to the user which
`is only valid for use for that particular type of charge
`(computer hardware or software stores)…The card could
`even [be] customized for use in a particular store itself
`or a particular chain of stores (such as a particular
`restaurant, or a particular chain of restaurants).” (Cohen
`at 8:25-35) (emphasis added). “The card could be valid
`only for purchase…in a certain store, or group of stores
`or types of stores (e.g. clothing stores)” (Cohen at 8:43-
`46) (emphasis added). See Exh. 1008, Grimes Dec. at ¶
`32.
`Assuming this phrase is not insolubly ambiguous, Cohen
`specifies a type of limitation where the transaction code
`is limited to a particular “group” or “type” of stores,
`rather than a particular store, before the code is used to
`make a purchase (i.e., before the particular merchant is
`identified): “The card could even [be] customized for
`use in…a particular chain of stores (such as…a
`particular chain of restaurants).” (Cohen at 8:25-35)
`
`
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`- 16 -
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`

`
`merchants;
`
`d) designating said
`payment category;
`
`e) generating a
`transaction code by a
`processing computer
`of said custodial
`authorizing entity,
`
`said transaction code
`reflecting at least the
`limits of said
`designated payment
`category to make a
`purchase within said
`designated payment
`
`Covered Business Method Review
`United States Patent No. 8,036,988
`(emphasis added). “The card could be valid only for
`purchase [to a] group of stores or types of stores (e.g.
`clothing stores)” (Cohen at 8:43-46) (emphasis added).
`Therefore, the transaction code is limited to one or more
`merchants before any particular merchant is identified.
`See Exh. 1008, Grimes Dec. at ¶ 33.
`Cohen discloses a user designating the payment
`category by specifying the type(s) of limitation to apply:
`“a user can indicate in advance of purchase...what the
`single use or the customized credit card number is to be
`used for.” (Cohen at 3:49-52).
`Cohen discloses that the credit card company generates
`transaction codes: “These credit cards or credit card
`numbers are generated...”; “a user dials into her credit
`card company before making a transaction, and...is
`provided with a disposable or customized number.”
`(Cohen at 2:35-36, 3:41-45). “[A] software program can
`be provided to customize and/or activate the card.”
`(Cohen at 12:51-52). See Exh. 1008, Grimes Dec. at ¶
`42.
`Cohen also discloses that the transaction code may be
`indicative of a specific credit card account: “[T]he
`customized or the disposable number is the user’s
`regular credit card number with a series of digits or
`alphanumeric characters either inserted therein, or
`tacked on at the end. This embodiment allows each
`customized or disposable card to be easily noted by the
`user to be a mere extension of his or her regular
`number.” (Cohen at 3:28-33). Alternatively, Cohen
`discloses that the credit card company associates the
`code with the user’s account number during processing.
`(Cohen at 3:42-46).
`Cohen discloses transaction codes that reflect limitations
`on use to purchases within various payment categories:
`“А customized credit card could be issued to the user
`which is only valid for use for that particular type of
`charge…such that if t