APPLE INC

Patent Trials and Appeals Board

Feb 11, 2021

2020001101 (P.T.A.B. Feb. 11, 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.
14/775,349 09/11/2015 Zachary Margadoudakis 102267-
P18270US1-0866672
9779
65656 7590 02/11/2021
Apple / Kilpatrick Townsend & Stockton LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
IMMANUEL, ISIDORA I
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
02/11/2021 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZACHARY MARGADOUDAKIS

____________

Appeal 2020-001101
Application 14/775,349
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, JAMES W. DEJMEK, and
JASON M. REPKO, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 22–45. Claims 1–21 are canceled. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest
is the assignee of record, Apple Inc. See Appeal Br. 3.

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STATEMENT OF THE CASE
Appellant’s claimed invention relates to “wearable electronic devices
and in particular to a wearable device that can facilitate access to another
(host) device.” Spec. ¶ 1.
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:

22. A method of managing user account data performed
by a wearable device, the method comprising:

[L1] establishing, by the wearable device, a verified
communication session with a host device, the verified
communication session being established while the wearable
device is being worn and while the host device is within a
threshold distance of the wearable device;

receiving, by the wearable device, user account data from
the host device during the verified communication session;

storing, by the wearable device, the received user account
data in a storage medium of the wearable device;

providing, by the wearable device, a subset of the stored
user account data to a checkpoint terminal; and

[L2] in the event that the wearable device ceases to be
worn, deleting, by the wearable device, the stored user account
data from the storage medium.

Appeal Br. 27, claim 1, Claims Appendix (Disputed limitations L1
and L2 emphasized).

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Evidence Relied Upon by the Examiner

Name Reference Date
Flitcroft et al.
(“Flitcroft”)
US 2003/0028481 A1 Feb. 6, 2003
Kita US 6,703,918 B1 Mar. 9, 2004
Ramachandran et al.
(“Ramachandran”)
US 7,946,477 B1 May 24, 2011
Baldwin et al.
(“Baldwin”)
US 9,129,273 B2 Sept. 8, 2015

Rejections A and B2
Rejection Claims Rejected 35 U.S.C.
§
Reference(s)/Basis
A 22–25, 27, 30–33,
35, 38–41, 43–45
103(a)

Flitcroft, Kita,
Ramachandran
B 26, 28, 29, 34, 36,
37, 42
103(a)

Flitcroft, Kita,
Ramachandran, Baldwin

Grouping of Claims
Based upon Appellant’s arguments, and our discretion under
37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of Rejection A of grouped
independent claims 22, 32, and 39 on the basis of representative claim 22.
Based upon Appellant’s arguments, we also consider paired dependent
claims (25 and 41), (27 and 43), and (31 and 45) as separately argued
groups. We address Rejection B of claims 26, 28, 29, 34, 36, 37, and 42,
infra. To the extent that Appellant has not advanced separate, substantive

2 The Examine withdrew the rejection under 35 U.S.C. § 101 in the Answer
(3). Therefore, this rejection is not before us on appeal.
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arguments for particular claims, or other issues, the doctrine of forfeiture
applies.3 See 37 C.F.R. § 41.37(c)(1)(iv).
ANALYSIS
In reaching this Decision, we consider all evidence presented and all
arguments actually made by Appellant. We have reviewed Appellant’s
arguments in the Appeal and Reply Briefs, the Examiner’s rejections in the
Final Office Action, and the Examiner’s responses in the Answer to
Appellant’s arguments. We highlight and address specific findings and
arguments for emphasis as follows.

Group A as Argued by Appellant
Rejection A of Representative Claim 22 under 35 U.S.C. § 103(a)
Under pre-AIA 35 U.S.C. § 103(a), we focus our analysis on the
following argued limitations L1 and L2, regarding the rejection of
representative independent claim 22:

3 See In re Google Technology Holdings LLC, 2020 WL 6685948, slip op.
at * 3 (Fed. Cir. 2020):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993).[] “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464
(1938)) (additional citations omitted). The two scenarios can
have different consequences for challenges raised on appeal, id.
at 733–34, and for that reason, it is worth attending to which label
is the right one in a particular case.
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Issue: Did the Examiner err by finding that Flitcroft, Kita,
Ramachandran collectively, teach or suggest the disputed limitations L1 and
L2:
[L1] establishing, by the wearable device, a verified
communication session with a host device, the verified
communication session being established while the wearable
device is being worn and while the host device is within a
threshold distance of the wearable device;

[L2] in the event that the wearable device ceases to be
worn, deleting, by the wearable device, the stored user account
data from the storage medium[,]
within the meaning of independent claim 22? 4 (emphasis added).

Claim 22, Limitation L1
Appellant disputes the Examiner’s findings regarding limitation L1.
See Appeal Br. 20–21. Appellant contends that neither Flitcroft, Kita, nor
Ramachandran teach or suggest “‘establishing ... a verified communication
session with a host,’ much less doing so ‘while the wearable device is being
worn and while the host device is within a threshold distance of the wearable
device.’” Appeal Br. 21. Appellant urges that “[e]ven if the credit card and
ATM communicate in Ramachandran, there is no suggestion of ‘a verified
communication session’ or a wearable device being worn.” Id.
At the outset, we find Appellant is arguing the references separately,
because the Examiner relies upon Kita (col. 6, ll. 33–37) for teaching a

4 Throughout this opinion, we give the contested claim limitations the
broadest reasonable interpretation (BRI) consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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wearable device being worn. We find Kita’s Figures 1 and 2 depict the
device described in column 6 (line 32) as “Portable information equipment
1” that “comprises a watch case 2 and wristbands 3 and 4 coupled to the
both end portions of the watch case 2, respectively.” Kita, col. 4, 24–26.
Moreover, Kita’s Figure 4 expressly depicts the watch (“Portable
information equipment 1”) being worn on a person’s wrist. See In re
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)) (“The test for obviousness is what the combined
teachings of the references would have suggested to those having ordinary
skill in the art.”).
Claim Construction
We next consider the claim construction under BRI of the disputed
claim terms “verified communication session” and “host.” We turn to the
Specification for context, and find the Specification provides a non-limiting,
exemplary description for the claim term “host:”
Certain embodiments of the present invention relate to wearable
electronic devices that can be connected (e.g., via wireless
pairing) with another device (referred to herein as a “host
device”), such as a smart phone, other mobile phone, tablet
computer, media player, laptop computer, or the like. When
paired, the wearable device can provide access to various
functionalities of the host device.
Spec. ¶ 5 (emphasis added).
Thus, a host can be “another device.” Id.

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Regarding the claim term “verified communication session,” we find
essentially a description of a Bluetooth-paired session between a wearable
device and a host device:
In response to the sign-in event, wearable device 100 and host
device 102 can establish a verified communication session,
which can include establishing a session key (e.g., a
cryptographic key). Once established, the verified session can
continue until either the user removes the wearable device or the
devices stop communicating, fix instance due to the devices
moving out of communication range (e.g., more than roughly 10
meters apart in the case of Bluetooth).
Spec. ¶ 141 (emphasis added).

After attacking each of Flitcroft, Kita, and Ramachandran in isolation
(Appeal Br. 20–21), Appellant concludes that “none of the cited references
actually describes ‘establishing a verified session.’” Appeal Br. 21.
We disagree, because Flitcroft expressly teaches the “use of
Bluetooth-enabled smart card readers communicating with POS (point of
sale) terminals.” Flitcroft ¶ 315. As discussed above, Appellant’s
Specification (¶ 141) describes an example of “a verified session” (claim 22)
as being a Bluetooth-paired session between a wearable device and a host
device. And paragraph five of Appellant’s Specification broadly describes a
“host device” as simply “another device.” Because “applicants may amend
claims to narrow their scope, a broad construction during prosecution creates
no unfairness to the applicant or patentee.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
As discussed above, the Examiner relies upon Kita for teaching the
wearable watch device (e.g. “portable equipment 1” as depicted in Figure 4
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and described in column 6, lines 44–60, as “portable equipment 1”). See
Final Act. 9. The Examiner relies upon Ramachandran for teaching the
recited “threshold distance.” Final Act. 9 (citing Ramachandran for RFID
tag, non-contact proximity at “column 6, line 41-58, column 9, line 56-64,
column 10, line 19-33, 67, column 11, line 1-5, [and] column 14, line 45-
58”). Given the evidence cited by the Examiner, and in accordance with our
claim construction above, we are not persuaded of error regarding the
Examiner’s underlying factual findings that support the ultimate legal
conclusion of obviousness.

Temporal Limitations of Claim 22
Appellant additionally contends the recited temporal restraints of
claim 22 are not taught or suggested by the collective teachings of Flitcroft,
Kita, and Ramachandran: “the Examiner is ignoring that Appellant’s verified
session is limited to being established both ‘while the wearable device is
being worn and while the host device is within a threshold distance of the
wearable device.’” Appeal Br. 21 (emphasis added).
As noted above, Kita’s Figure 4 expressly depicts a watch (“Portable
information equipment 1”) being worn on a person’s wrist. Although the
Examiner relies on Ramachandran’s RFID tag (e.g., col. 6, ll. 45–58), for
teaching or suggesting the claimed “threshold distance” we find Flitcroft’s
teaching of a Bluetooth-paired session in paragraph 315 cumulatively
teaches or suggests the claim 22 limitation of the host device being “within a
threshold distance of the wearable device.”
Regarding the temporal “while” limitations recited in claim 22, we
find the Examiner’s proffered combination of familiar elements would have
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merely produced a predictable result. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 401 (2007) (“[A] combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”).
For these reasons, and given our claim construction above, on this
record we are not persuaded the Examiner erred in finding that disputed
limitation L1 of representative independent claim 22 is taught or suggested
by the collective teachings of Flitcroft, Kita, and Ramachandran.

Claim 22, Limitation L2
[L2] in the event that the wearable device ceases to be
worn, deleting, by the wearable device, the stored user account
data from the storage medium.

Appellant disputes the Examiner’s findings (Final Act. 9) regarding
conditional limitation L2. See Appeal Br. 22–23. Appellant contends that
Kita’s description at column 6, lines 33–37 of deleting authentication data
does not teach limitation L2 because authentication data is not the same as
the “stored user account data” recited in claim 22.
However, our review of Appellant’s entire specification (including
particularly paragraph 12) and of all claims 22–45 does not find a definition
for “user account data” (claim 22) that limits such user account data to any
particular type of data. See ICON, 496 F.3d at 1379.
Moreover, under the broadest reasonable interpretation of claim 22,
we conclude the conditional L2 method step (“in the event that the wearable
device ceases to be worn . . . deleting stored user account data”) is not
positively recited as actually occurring. (emphasis added). See Ex parte
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Schulhauser, Appeal No. 2013-007847, 2016 WL 6277792, at *9 (PTAB,
Apr. 28, 2016) (precedential) (holding “[t]he Examiner did not need to
present evidence of the obviousness of the remaining method steps of
claim 1 that are not required to be performed under a broadest reasonable
interpretation of the claim.”); see also Ex parte Katz, Appeal No. 2010-
006083, 2011 WL 514314, at *4–5 (BPAI Jan. 27, 2011).5
Regarding the collective teachings of Flitcroft, Kita, and
Ramachandran, we emphasize that “‘the question under 35 USC 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (emphasis
added); see also MPEP § 2123.
Moreover, Appellant does not point to any evidence of record that
shows combining the respective teachings of Flitcroft, Kita, and
Ramachandran in the manner found by the Examiner (Final Act. 8–9) would
have been “uniquely challenging or difficult for one of ordinary skill in the
art” or would have “represented an unobvious step over the prior art.”

5 See also e.g., Applera Corp. v. Illumina, Inc., 375 F. App’x 12, 21 (Fed.
Cir. 2010) (unpublished) (affirming a district court’s interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cybersettle, Inc. v. Nat’l Arbitration
Forum, Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007) (unpublished) (“It is of
course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.”).
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Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
On this record, we find the Examiner (Final Act. 8–9) has provided a
sufficient “rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
Therefore, based upon a preponderance of the evidence, we are not
persuaded the Examiner erred in finding that disputed limitations L1 and L2
of representative independent claim 22 are taught or suggested by the
collective teachings of Flitcroft, Kita, and Ramachandran. Nor are we
persuaded the Examiner erred by improperly combining the Flitcroft, Kita,
and Ramachandran references.
Accordingly, we sustain the Examiner’s Rejection A of representative
independent claim 22, and grouped independent claims 32 and 39, also
rejected under Rejection A, and not argued separately. See 37 C.F.R.
§ 41.37(c)(1)(iv)(2017).

Rejection A of Dependent Claims 23, 24, 30, 33, 35, 38, 40, and 44
Appellant advances no separate, substantive arguments for dependent
claims 23, 24, 30, 33, 35, 38, 40, and 44 that were also rejected by the
Examiner under Rejection A. Arguments not made are forfeited. See
37 C.F.R. § 41.37(c)(1)(iv).

Appellant’s Argued Group B (claims 25 and 41) under Rejection A
Representative dependent claim 25 recites: “The method of claim 22
wherein establishing the verified communication session comprises
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establishing a session key and wherein the user account data is received in
an encrypted form, the method further comprising: decrypting, by the
wearable device, the received user account data using the session key.”
Appellant urges that “none of Flitcroft, Kita, and Ramachandran,
alone or in combination, disclose or suggest ‘establishing a session key’ and
‘decrypting ... the received user account data using the session key.’” Appeal
Br. 24.
However, we find no express limiting definition for the claim term
“session key” recited within the claims, or described within the
Specification. Turning to the Specification for context, we find a non-
limiting, exemplary description: e.g., “[t]he host device can provide the
account data in an encrypted form (e.g., using a session key that is specific to
the verified communication session).” Spec. ¶ 12 (emphasis added).
In the Reply Brief (8), Appellant contends:
While Flitcroft describes a private key, the private key is clearly
different from a “session key.” First, a private key requires use
of a public key, which is neither required in Appellant’s claims
nor used with a “session key.” Second, Appellant's “session key”
is claimed as being part of “establishing the verified session,”
which is clearly different from Flitcroft’s “password” that is used
to acquire a new limited use credit card number, even if that key
is used for only a single use. Thus, Appellant submits that the
cited combination fails to disclose, teach, or suggest
“establishing a session key” and “decrypting ... the received user
account data using the session key.”

But as noted above, we find no limiting definition for “session key”
within the claims or in the Specification. To the extent that Flitcroft’s
private key may arguendo (without deciding) perform a different function
than the claimed “session key,” we nevertheless find that Flitcroft’s
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disclosure of the use of Bluetooth (paragraph 315) inherently incorporates a
session key (i.e., a “SK” (session key)) to facilitate communications between
Bluetooth master and slave devices, as is known in the art), this teaching
being cumulative to the Examiner’s findings regarding Flitcroft’s private
key. See PAR Pharm., Inc. v TWI Pharms., Inc., 773 F.3d 1186, 1194–95
(Fed Cir. 2014) (“inherency may supply a missing claim limitation in an
obviousness analysis.”).
The Examiner also identifies various teachings of decrypting data in
Flitcroft, e.g., at paragraphs 136–138, 140, 151, and 153. See Final Act. 10.
As noted above, a “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 401.
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded the Examiner erred. Accordingly, we
sustain the Examiner’s obviousness rejection of representative claim 25.
Grouped claim 41 (not argued separately) falls with claim 25. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Appellant’s Argued Group C (claims 27 and 43) under Rejection A
Representative dependent claim 27 recites: “The method of claim 26
wherein the checkpoint terminal comprises a point-of-sale terminal and the
account data comprises account identifying information that is usable by the
point-of-sale terminal to perform a purchase transaction with a payment
processor.”
Appellant urges that “none of Flitcroft, Kita, and Ramachandran,
alone or in combination, discloses or suggests that ‘the checkpoint terminal
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comprises a point-of-sale terminal and the account data comprises account
identifying information that is usable by the point-of-sale terminal to
perform a purchase transaction with a payment processor.’” Appeal Br. 24.
In particular, Appellant asserts that “Flitcroft fails to disclose a point-
of-sale terminal that can use ‘account identifying information to perform a
purchase transaction with a payment process.’ The mere recitation of a POS
terminal is not sufficient as a teaching of Appellant's noted claim elements.”
Appeal Br. 25.
We disagree. As acknowledged by Appellant, Flitcroft teaches that
“Bluetooth-enabled smart card readers communicat[e] with POS (point of
sale) terminals.” Appeal Br. 25 (citing Flitcroft ¶ 315). We do not see how
a POS terminal could complete an electronic purchase transaction with
electronic payments without using some form of “account identifying
information,” as recited in claim 27. See PAR Pharm., 773 F.3d at 1194–95
(“inherency may supply a missing claim limitation in an obviousness
analysis.”). See also e.g., Flitcroft at paragraph 128: expressly describing
the “[u]se of digital signature verification to verify both parties of a credit
card transaction (i.e. merchant and cardholder).” As noted above, a
“combination of familiar elements according to known methods is likely to
be obvious when it does no more than yield predictable results.” KSR, 550
U.S. at 401.
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded the Examiner erred. Accordingly, we
sustain the Examiner’s rejection of representative claim 27. Grouped claim
43 (not argued separately) falls with claim 27. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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Appellant’s Argued Group D (claims 31 and 45) under Rejection A
Representative dependent claim 31 recites:

The method of claim 22 further comprising:

receiving, by the wearable device, a user request to load account
data onto the wearable device; and

transmitting, by the wearable device, a request for user account
data to the host device in response to the user request, wherein
the wearable device transmits the request during the verified
communication session.

Appellant urges that “none of Flitcroft, Kita, and Ramachandran,
alone or in combination, discloses or suggests ‘receiving ... a user request to
load account data onto the wearable device,’ and ‘transmitting ... a request
for user account data to the host device in response to the user request ...
[and] during the verified communication session.’” Appeal Br. 25. In
particular, Appellant asserts that “Flitcroft is silent with respect to ‘receiving
... a user request to load account data on the wearable device,’ as recited in
claim 31.” Id.
The Examiner disagrees with Appellant, and further explains the basis
for the rejection, finding that “Flitcroft teaches a user’s request, Flitcroft
(¶ 75), ‘the processing then advances to step 204, where it is determined
whether a customer requests or an event triggers a request for additional
limited use cards or card numbers.’” Ans. 11.
Buttressing the Examiner’s findings, we note that Kita at column 8,
lines 4–9, describes a user using the portable information equipment (e.g., a
smartwatch, see Fig. 4) to retrieve balance information (i.e., corresponding
to “user account data” as claimed).
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Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded the Examiner erred. Accordingly, we
sustain the Examiner’s rejection of representative claim 31. Grouped claim
45 (not argued separately) falls with claim 31. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Rejection B of the Remaining Dependent Claims
Appellant advances no separate arguments for the remaining
dependent claims 26, 28, 29, 34, 36, 37, and 42 that were rejected by the
Examiner under Rejection B. Arguments not made are forfeited. See
37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION

The Examiner did not err in rejecting claims 22–45 as being obvious
under pre-AIA 35 U.S.C. § 103(a), over the cited combinations of
references.

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DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
22–25, 27,
30–33, 35,
38–41,
43–45
103(a)

Flitcroft, Kita,
Ramachandran
22–25, 27,
30–33, 35,
38–41,
43–45

26, 28, 29,
34, 36, 37,
42
103(a)

Flitcroft, Kita,
Ramachandran,
Baldwin
26, 28, 29,
34, 36, 37,
42

Overall
Outcome
22–45

FINALITY AND 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)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED