Apple Inc.

Patent Trials and Appeals Board

Mar 8, 2021

2020000266 (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.
14/869,831 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
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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
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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
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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
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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