Apple Inc.Download PDFPatent Trials and Appeals BoardMar 8, 20212020000266 (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. 14/869,831 09/29/2015 Marcel VAN OS P26049US1/77770000402101 5111 150004 7590 03/08/2021 DENTONS US LLP - Apple 4655 Executive Dr Suite 700 San Diego, CA 92121 EXAMINER SMITH, SLADE E ART UNIT PAPER NUMBER 3696 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): dentons_PAIR@firsttofile.com patent.docket@dentons.com patents.us@dentons.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARCEL VAN OS, GEORGE R. DICKER, CHRISTOPHER D. ADAMS, and GLEN W. STEELE Appeal 2020-000266 Application 14/869,831 Technology Center 3600 Before MAHSHID D. SAADAT, ALLEN R. MACDONALD, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is a decision on Appellant’s Request for Rehearing.1 Appellant’s Request for Rehearing (Req. Reh’g, filed December 31, 2020) is filed under 37 C.F.R. § 41.52(a)(1) requesting that we reconsider our Decision of November 2, 2020, wherein we affirmed the Examiner’s rejections of claims 1, 3, 5, 7–16, 18–25, and 27–32 and reversed the rejection of claims 6, 17, and 26 under 35 U.S.C. § 103. Appellant requests rehearing of the rejections of the affirmed claims. We have reconsidered our Decision in light of 1 “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1) (2018). Appeal 2020-000266 Application 14/869,831 2 Appellant’s comments in the request, and have found no errors. We, therefore, decline to change the Decision. Appellant’s request is denied. ANALYSIS Claim 1 recites, in relevant part, “unlocking the device without enabling the device to participate in payment transactions.” We determined Mardikar discloses this as follows: The flow diagram depicted in Figure 4 and described at paragraphs 53–57 of Mardikar directly contradicts Appellant’s argument [that Mardikar does not teach or suggest “unlocking the device without enabling the device to participate in payment transactions”]. In this process, the phone is opened before the “Make Payment” button is selected. Mardiker ¶ 54 (“the user, in the role of a purchaser, may, at S404, first activate the phone 300, e.g., by opening it . . . the user may then select a ‘Make Payment’ button on the phone 300”). That is, prior to selection of the “Make Payment” button, the phone is unlocked without being enabled to participate in payment transactions. Decision 4–5. Appeal 2020-000266 Application 14/869,831 3 Figure 4 of Mardikar is reproduced below: Figure 4 of Mardikar depicts a flow diagram of an exemplary method for making a biometrically authenticated NFC based payment at a POS. Mardikar discloses the following: In an example purchase transaction at a POS 110, such as illustrated in FIG. [4], the user, in the role of a purchaser, may, at S404, first activate the phone 300, e.g., by opening it. At S406, the user may then select a “Make Payment” button on the phone Appeal 2020-000266 Application 14/869,831 4 300. Selecting the Make Payment button invokes a suitable payment application program 310 in the Application SE 306 of the phone 300 that is adapted to, among other things, read a biometric trait of the user, e.g., the user’s thumb-print and request verification of it by the Payment/Wallet SE 304. [0055] At S408, the user-purchaser then swipes his or her thumb on the biometric trait input device 302 of the phone 3 02, and at S410, this biometric trait input is fed directly to the Payment/Wallet SE 304 of the phone 300 via a “tunnel” circuitry 312. Optionally, the thumb swipe may also be operable to unlock the phone for use. Mardikar ¶¶ 54–55 (emphasis added). Upon request for rehearing, Appellant contends as follows: The Board misapprehended the Mardikar reference when relying on Mardikar at FIG. 4 and paragraphs [0053]-[0057] as disclosing “unlocking the device without enabling the device to participate in payment transactions,” as required by independent claim 1. The Board’s misapprehension is based on its mistaken belief that activating the phone is synonymous with unlocking the phone. Based on this mistaken belief, the Board concluded that the phone of Mardikar would necessarily have been be unlocked but not authorized for a payment after step S404, “Activate Phone,” but prior to the selection of the biometric input received at step S408, “Input Biometric Identifier to Phone” of Mardikar. Appellant has shown that Mardikar and the proposed combination fails to disclose this technique and fails to disclose “unlocking the device without enabling the device to participate in payment transactions,” as recited in claim 1. In view of this misapprehension and the arguments presented in the Appeal Brief and the Reply Brief, a rehearing should be granted and the rejection of the claims should be reversed. Req. for Reh’g 13–14. Appellant’s Request for Rehearing raises the issue of whether Mardikar’s “Activating Phone” at step S404 means that the phone is unlocked. We understand Appellant to argue that, because Mardikar Appeal 2020-000266 Application 14/869,831 5 discloses that the biometric thumb swipe is optionally “operable to unlock the phone for use,” the phone is not otherwise usable after step S404, because the phone is not yet unlocked until the option to use the thumb swipe to unlock it is performed. Req. for Reh’g 7–14. Appellant contends that, because Mardikar describes the phone as being merely activated at step S404, it is not unlocked until step S408, where the option of unlocking it using the thumb swipe is discussed. Id. at 10 (“Mardikar is explicit that phone is opened before the phone is unlocked.”). For the following reasons, we are persuaded Mardikar’s device is unlocked in Figure 4 prior to step S408. We have reviewed Appellant’s request for rehearing. We accept Appellant’s explanation that the claimed biometric either unlocks the phone for use without enabling it to participate in a payment transaction or unlocks it while simultaneously allowing the device to participate in payment transactions. We find Mardikar discloses the same thing. It is undisputed that Mardikar’s biometric authenticator enables the device to participate in payment transactions. Mardikar ¶ 55. It is also undisputed that the biometric authenticator is more broadly usable for unlocking the phone. Id. (“Optionally, the thumb swipe may also be operable to unlock the phone for use.”). Appellant mistakenly, in our view, understands Mardikar to disclose that, unless the biometric thumb swipe unlocks the phone at step S408, it is not otherwise unlocked when it is, for example, “first activate[d] . . . e.g., by opening it.” We find that Appellant argues for an unwarranted, narrower construction of what “unlock” means. Appeal 2020-000266 Application 14/869,831 6 Appellant’s Specification, in discussing unlocking, incorporates by reference its ’849 Patent,2 which provides an explicit construction for unlock. The ’849 patent discusses “unlocked” as follows: In the user-interface lock state (hereinafter the “lock state”), the device 100 is powered on and operational but ignores most, if not all, user input. That is, the device 100 takes no action in response to user input and/or the device 100 is prevented from performing a predefined set of operations in response to the user input. The ’849 Patent, 7:57–62 (emphasis added). Based on the foregoing, we construe “locked” broadly but consistent with Appellant’s Specification to mean that the device “takes no action in response to user input.” Id. Thus, consistent with Appellant’s Specification, we construe unlocked to mean the device is capable of taking action in response to user input. Id. Turning to Mardikar, we find, consistent with Appellant’s disclosure discussed above, that the phone described at paragraphs 53–57 is unlocked when it is activated at step S404 because at that point, the phone responds to the user input at step S406 when the user selects the “Make Payment” button. Mardikar Fig. 4 ¶¶ 53–57. If the device were locked, as Appellant contends, then the device would not respond to that user input. Id. Because the device responds, it is unlocked, but the payment functionality is unavailable until the thumb swipe is received at step S408. This meets the claim 1 limitation “unlocking the device without enabling the device to participate in payment transactions.” That the thumb swipe is optionally available for use in unlocking the phone is an alternative to unlocking (i.e., 2 “Unlocking a Device by Performing Gestures on an Unlock Image,” filed December 23, 2005, U.S. Pat. No. 7,657,849 B2. Appeal 2020-000266 Application 14/869,831 7 activating) the phone at step S404 by, for example, opening it. Mardikar ¶¶ 54–55 (“[T]he user, in the role of a purchaser, may, at S404, first activate the phone 300, e.g., by opening it.” “At S408, the user-purchaser then swipes his or her thumb on the biometric trait input device 302 of the phone 302, . . . . Optionally, the thumb swipe may also be operable to unlock the phone for use.”). Accordingly, we deny Appellant’s request for rehearing because we are not persuaded of anything our Decision misapprehended or overlooked. DECISION Based on the record before us, we deny Appellant’s Request for Rehearing. Appellant has not persuasively identified any points the Board misapprehended or overlooked. The Request for Rehearing is denied. Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 3, 5, 7– 11, 13–16, 18–22, 24, 25, 27–31 103 Mardikar, Ghassabian 1, 3, 5, 7– 11, 13–16, 18–22, 24, 25, 27–31 12, 23, 32 103 Mardikar, Ghassabian, Levovitz 12, 23, 32 Overall Outcome 1, 3, 5, 7– 16, 18–25, 27–32 Appeal 2020-000266 Application 14/869,831 8 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5–11, 13–22, 24– 31 103 Mardikar, Ghassabian 1, 3, 5, 7– 11, 13–16, 18–22, 24, 25, 27–31 6, 17, 26 12, 23, 32 103 Mardikar, Ghassabian, Levovitz 12, 23, 32 Overall Outcome: 1, 3, 5, 7– 16, 18–25, 27–32 6, 17, 26 TIME PERIOD FOR RESPONSE 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). DENIED Copy with citationCopy as parenthetical citation