Apple Inc.

Patent Trials and Appeals Board

Dec 16, 2020

2019004138 (P.T.A.B. Dec. 16, 2020)

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.
14/022,104 09/09/2013 Thomas Alsina P19886US1 4619
62579 7590 12/16/2020
APPLE INC./BROWNSTEIN
c/o Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street
Suite 2200
Denver, CO 80202
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
12/16/2020 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):
patentdocket@bhfs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS ALSINA, DALLAS B. DE ATLEY,
AUGUSTIN J. FARRUGIA, BYRON B. HAN, SEAN B. KELLY,
CRAIG A. MARCINIAK, MAXIM KHUTORNENKO, and
RAYMOND N. WALSH
Appeal 2019-004138
Application 14/022,104
Technology Center 3600
Before JEFFREY S. SMITH, MIRIAM L. QUINN, and AMBER L. HAGY,
Administrative Patent Judges.
QUINN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 5–7, 9, 13, 14, 20, and 21. See Final
Act. 1. 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. Appellant identifies the real party in interest as Apple Inc.
Appeal Br. 3.
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Application 14/022,104
2
CLAIMED SUBJECT MATTER
The claims are directed to use of a biometric image in online
commerce. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
receiving, from an online store over a wireless network,
by a secure processing system of an electronic device, an online
account token associated with an account on an online store;
storing the online account token in a non-persistent
memory of the secure processing system such that the online
account token is not persistently stored on the electronic device;
receiving, from the online store over the wireless
network, by the secure processing system of the electronic
device, user identifier data associated with the account on the
online store;
storing the user identifier data in a persistent memory of
the secure processing system;
receiving a biometric image obtained by a biometric
sensing device of the electronic device into the secure
processing system;
determining, by the secure processing system, if the
biometric image matches a reference biometric image stored by
the secure processing system; and
if the biometric image matches the reference biometric
image:
countersigning, by a secure processing device of
the secure processing system, the online account token
stored in the non-persistent memory with the user
identifier data stored in the persistent memory, the
countersigned online account token indicating that a
purchase at the online store may be completed; and
transmitting the countersigned online account
token to the online store.
Appeal Br. (Claim App. i).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wheeler US 2007/0088950 A1 Apr. 19, 2007
Buer US 2007/0118891 A1 May 24, 2007
Song US 2013/0332575 A1 Dec. 12, 2013

REJECTION
The pending appeal concerns a single rejection as follows (Final Act.
4−9):
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1, 5–7, 9, 13, 14, 20, 21 103 Buer, Song, Wheeler

OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv) (2017). For instance, Appellant presents arguments
focused solely on the language of claim 1. Appeal Br. 6−10. Therefore, we
decide the entire appeal based on the arguments presented with respect to
claim 1. Id.; In re Kaslow, 707 F.2d 1366, 1376 (Fed. Cir. 1983) (“Since the
claims are not separately argued, they all stand or fall together.”).
All of Appellant’s arguments fall under two categories. The first
category is arguments addressing the limitation concerning “countersigning”
the online account token. The second category is arguments addressing the
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limitations concerning “storing” of the online account token and user
identifier data. We address each in turn.
The “Countersigning” Limitation
Claim 1 recites that “if the biometric image matches the reference
biometric image” then the method proceeds to “countersigning, by a secure
processing device of the secure processing system, the online account token
stored in the non-persistent memory with the user identifier data stored in
the persistent memory, the countersigned online account token indicating
that a purchase at the online store may be completed,” hereinafter the
“countersigning” limitation. The method also proceeds to transmit the
“countersigned online account token to the online store.” The Examiner has
provided a broadest reasonable interpretation of the term “countersigning” to
mean “a sign given in reply to another where in this particular case the sign
is in the form of unspecified user identifier data.” Ans. 6. The Examiner
explains that the
sign is given in response to the receiving of the online account
token and where the secure processing system will only provide
a response in the event that there is a matching of a received
biometric image against a reference biometric image that is
stored combined with the receiving of the online account token.
Id. The Examiner also points out that the “countersigning” limitation is
conditional on a match between the reference biometric image and the
biometric image. Id. at 6−7. Therefore, the Examiner reasons that the
“countersigning,” under the broadest reasonable interpretation, will not be
performed. Id. at 7 (citing Ex parte Schulhauser, Appeal No. 2013-007847
(PTAB April 28, 2016) (precedential)).
Appellant argues that none of the cited references teach or suggest
“countersigning an online account token with user identifier data.” Appeal
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5
Br. 7. Appellant does not expressly challenge the Examiner’s proffered
construction of “countersigning,” and, instead, argues that under the
Examiner’s interpretation of the term, Buer does not teach the
“countersigning” limitation. Reply Br. 3−4. Finally, Appellant contends
that the Examiner’s reliance on Wheeler for the “countersigning” limitation
fails to clearly state with particularity how Wheeler teaches “countersigning
with user identifier data.” Appeal Br. 9−10.
We determine that the Examiner is correct in that the “countersigning”
limitation is entirely conditional on the occurrence of a biometric image
match. Under Schulhauser, the broadest reasonable interpretation of the
claim encompasses the instance in which the method ends when the method
determines if the biometric image matches the reference biometric image
stored by the secure processing system. See Schulhauser, at 8. The
remaining steps need not be reached because the claim as written covers at
least two methods, one in which the biometric image matches the reference
biometric image, and one in which there is no match. See id. Therefore, the
claims may be shown to be obvious over the combination of Buer, Wheeler,
and Song with no need to show performance of the “countersigning”
limitation, regardless of how that term is construed. All of Appellant’s
arguments concerning the “countersigning” limitation are unpersuasive of
error, therefore, because its performance is not required under the broadest
reasonable interpretation of the claim.2 Consequently, we do not address

2 See also, e.g., Applera Corp. v. Illumina, Inc., 375 Fed. 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 Fed. App’x. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is
of course true that method steps may be contingent. If the condition for
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(1) whether the Examiner’s interpretation of “countersigning” is reasonable
in scope, and (2) Appellant’s arguments that no cited reference, either alone
or in combination, teaches the “countersigning” limitation.

The “Storing” Limitations
Claim 1 recites two limitations concerning storing of data. The first is
“storing the online account token in a non-persistent memory of the secure
processing system.” The second is “storing the user identifier data in a
persistent memory of the secure processing system.” The Examiner relies
on Buer and Song for these limitations. The Examiner finds that the
combination of Buer and Song “are sufficient to teach an online account
token being stored in non-persistent memory and the user identifier being
stored in persistent memory.” Final Act. 6 (citation omitted) (citing Song
¶ 40; Buer ¶¶ 32, 33, 36, 69, 72).
Appellant argues that Buer does not teach or suggest non-persistent
memory storage of the recited “online account token.” Appeal Br. 8.
According to Appellant, Buer’s disclosure of a memory that may include
RAM as one of several types of memory that may be used to store Buer’s
authentication data (read here “online account token” per the Examiner’s
rejection (Ans. 3)) does not teach that Buer would store that authentication
data in RAM, while storing the alleged “user identifier data” in a persistent
memory. Id. Rather, Appellant argues, Buer contemplates that the
authentication data stored in the universal token would be persistent because
Buer would continue to use that data in subsequent authentication

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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operations. Id. (citing Buer, Abstr.). Appellant also argues that Song does
not cure the deficiencies in Buer because Song’s non-persistent memory
stores access tokens, which are not further “countersigned” with any data.
Id. at 8.
We are not persuaded by Appellant’s arguments. The Examiner relies
on Song’s teaching of storing the access token in volatile memory in
combination with the teachings of Buer’s authentication data. Ans. 12−13.
Song is not being relied on for the “countersigning” limitation, meaning that
the Examiner has not equated Song’s access token to the recited “online
account token.” Rather, Buer supplies the teachings of an “online account
token,” while Song provides the teaching of storing access tokens in non-
volatile memory. Therefore, Appellant’s argument is unpersuasive as it does
not address the proper combination of teachings.
Furthermore, we agree with the Examiner’s findings that Buer’s
disclosure of memory in paragraph 36 would be understood by a person of
ordinary skill in the art as describing a collection of memory devices, and
not a “single” memory device. Ans. 12. This is a finding that Appellant
does not challenge. Therefore, we determine that the combination of
teachings shows that a person of ordinary skill in the art would have
understood Buer to teach a memory that may include several types of
memory, one of which would be RAM, and that Song’s teachings of storing
access tokens in volatile memory suggests that portions of Buer’s
authentication data may be stored in RAM, while other portions may be
stored in persistent memory. The Examiner’s reasons to combine these
teachings at page 7 of the Final Office Action are not challenged.
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CONCLUSION
We have determined that all of Appellant’s arguments are
unpersuasive of error in the rejection of claim 1, on the basis of Schulhauser
and as explained above with regard to the “storing” limitations. Because
Appellant does not argue any other pending claim separately, all rejected
claims fall together. Therefore, the Examiner’s rejection is AFFIRMED.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5–7, 9,
13–14, 20,
21
103 Buer, Song,
Wheeler
1, 5–7, 9,
13–14, 20,
21

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).
AFFIRMED