Apple Inc.

Patent Trials and Appeals Board

Feb 11, 2022

2021003039 (P.T.A.B. Feb. 11, 2022)

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. 15/415,679 01/25/2017 George R. Dicker 122202-6629 (P28979US1) 3283 142248 7590 02/11/2022 Morgan, Lewis & Bockius LLP (Apple) 600 Anton Boulevard Suite 1800 Costa Mesa, CA 92626 EXAMINER REAGAN, JAMES A ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 02/11/2022 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): OCIPDocketing@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GEORGE R. DICKER and NICHOLAS J. SHEARER __________________ Appeal 2021-003039 Application 15/415,679 Technology Center 3600 ____________________ Before MICHAEL C. ASTORINO, JAMES P. CALVE, and BRUCE T. WIEDER, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision of the Examiner to reject claims 1-20 and 42-56, which are all the pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Apple Inc as the real party in interest. See Appeal Br. 3. 2 Claims 21-41 are cancelled. See Appeal Br. 24 (Claims App.). Appeal 2021-003039 Application 15/415,679 2 CLAIMED SUBJECT MATTER The claims relate to conducting financial transactions with a client’s electronic device and non-native credentials of another electronic device that is a “host” of the payment credentials. See Spec. ¶¶ 2-5, 24-28, Figs. 1, 1A. Claims 1, 42, and 54 are independent. Representative claim 1 recites a method as follows: 1. A method comprising: at a host electronic device: receiving, from a client electronic device that is associated with a same user account as the host electronic device, payment request data corresponding to a financial transaction between the client electronic device and a merchant subsystem, the payment request data comprising: merchant subsystem identifier information that identifies the merchant subsystem; and host credential application identifier information that identifies a host credential application provisioned on a secure element of the host electronic device; generating, on the secure element using the host credential application identified by the received payment request data, first data that comprises host payment credential data; generating, on the secure element, second data by encrypting the first data and the merchant subsystem identifier information of the received payment request data with a first key; transmitting, to a commercial entity subsystem, the second data; receiving third data that comprises the first data encrypted with a second key that is associated with the merchant subsystem identifier information; and transmitting the received third data to fund at least a portion of the financial transaction between the client electronic device and the merchant subsystem. Appeal Br. 21 (Claims App.). Appeal 2021-003039 Application 15/415,679 3 REJECTION Claims 1-20 and 42-56 are rejected under 35 U.S.C. § 103 as unpatentable over Sahota,3 Nix,4 and Bacastow.5 ANALYSIS The Examiner cites Sahota to teach features of independent claims 1, 42, and 54, substantially as recited, including a host electronic device that generates first data on a secure element using a host credential application, encrypts the first data to generate second data, transmits the second data to a commercial entity subsystem, and receives and transmits third data to fund a financial transaction. Final Act. 5-7, 16. The Examiner relies on Nix to teach an identifier (module identity 110 that acts as a basic identifier) and Bacastow to teach receiving from a client electronic device payment request data corresponding to a financial transaction between the client electronic device and a merchant subsystem where the payment request data comprises host credential application identifier information that identifies a host credential application provisioned on a secure element of the host electronic device as claimed. Id. at 5-7. Appellant asserts that Sahota does not teach a “secure element” as recited in each of claims 1, 42, and 54. Appeal Br. 13; Reply Br. 6. In response, the Examiner explains that Sahota teaches holograms, overlays, watermarks, a dCVV, and encryption keys that are security items associated with transaction cards and that correspond to the claimed secure element. Ans. 6. 3 US 8,423,415 B2, issued April 16, 2013. 4 US 9,276,740 B2, issued March 1, 2016. 5 US 2013/0282567 A1, published October 24, 2013. Appeal 2021-003039 Application 15/415,679 4 The claims recite “a host credential application provisioned on a secure element of the host electronic device” (claim 1), a host electronic device comprising “a secure element and a host credential application provisioned on the secure element” (claim 42), and “a host electronic device comprising a secure element and a host credential application provisioned on the secure element” (claim 54). See Appeal Br. 21, 24, 26-27. As indicated by these limitations, the secure element is part of the host electronic device, and a payment credential application is provisioned on the secure element. According to the Specification, host electronic device 100 includes a near field communication component 120 that has a secure element 145 that is configured to provide a tamper-resistant platform (e.g., as a single-chip or multiple-chip secure microcontroller) to securely host a payment application that is used to fund a financial transaction. See Spec. ¶ 29. Sahota teaches to use holograms, special over-layers, and watermarks on transaction cards to reduce fraud and counterfeiting. Sahota, 1:23-27 (cited in Ans. 5). Sahota also teaches the use of a dCVV (card verification value) to prevent fraudulent transactions and for authentication. Id. at 4:5- 15 (cited in Ans. 5), 5:10-11. Sahota further teaches the use of encryption keys. Id. at 5:39-48 (cited in Ans. 5). Treating Sahota’s security features as a secure element is inconsistent with the claims and Specification, which require the secure element to be part of the host electronic device. See Spec. ¶ 29. Sahota’s security items are part of a transaction card used with an electronic device. They are not part of an electronic device. Nor is a host credential application provisioned on the security items as claimed. The Specification distinguishes payment cards/applications from the host electronic device. See Spec. ¶ 32, Fig. 2. Appeal 2021-003039 Application 15/415,679 5 Nor has the Examiner explained sufficiently how Bacastow teaches or suggests a host electronic device that receives from a client electronic device payment request data corresponding to a transaction between the client electronic device and a merchant subsystem where the payment request data comprises host credential application identifier information that identifies the host credential application provisioned on the secure element of the host electronic device as recited in each of claims 1, 42, and 54. See Appeal Br. 21, 24-25, 25 (Claims App.). The Examiner is correct that Bacastow’s mobile platform computer 120 communicates with mobile device 115. See Ans. 3-4. However, even if we treat mobile platform computer 120 as a client electronic device, there is no cited teaching in Bacastow that mobile platform computer 120 sends payment request data for a transaction to mobile device 115 or information sent by mobile platform computer 120 to mobile device 115 includes host credential application identifier information of a host credential application that is used to complete a financial transaction as claimed. Instead, mobile platform computer 120 transmits a “prompt” to a user of mobile handset 115 to enroll at the funding agency’s website 110 to conduct remittance transactions. See Bacastow ¶ 25, Fig. 1. Nor is it apparent how remittance transaction steps and credentials sent in Figures 3, 4, 6A, and 7 of Bacastow relate to mobile platform computer 120 sending payment request data to mobile handset 115. See Ans. 4-5. Even if some data transmissions are between mobile platform computer 120 and mobile handset 115, it is not apparent that they provide payment request data and/or host credential application identifiers to mobile handset 115 to be used for processing a payment transaction as claimed. Appeal 2021-003039 Application 15/415,679 6 Thus, we do not sustain the rejection of claims 1-20 and 42-56. DECISION In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1-20, 42-56 103 Sahota, Nix, Bacastow 1-20, 42-56 REVERSED