Ex Parte Blythe

Patent Trial and Appeal Board

Jan 15, 2016

11965946 (P.T.A.B. Jan. 15, 2016)

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.
11/965,946 12/28/2007 Simon Blythe 1788-19 4328
71973 7590 01/15/2016
HOFFMANN & BARON, LLP
6900 JERICHO TURNPIKE
SYOSSET, NY 11791
EXAMINER
BERONA, KIMBERLY SUE
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
01/15/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte SIMON BLYTHE
___________

Appeal 2013–004574
Application 11/965,946
Technology Center 3600
___________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Simon Blythe (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1, 3–7, 9–15, 25, and 26, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed August 9, 2012) and the Examiner’s Answer (“Ans.,” mailed
November 8, 2012), and Final Rejection (“Final Rej.,” mailed February 7,
2012).
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The Appellant invented a way of detecting unauthorized modifications to
financial terminals. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method of detecting an unauthorized modification of a
financial terminal comprising:
[1] providing a detection device
being preloaded with a stored electromagnetic profile,
said stored electromagnetic profile corresponding to an
uncompromised state of the financial terminal;
[2] receiving,
with the detection device,
an electromagnetic profile
emitted from the financial terminal,
said received electromagnetic profile including radio
wave activity if present;
and,
[3] calculating,
with the detection device,
a correlation coefficient
based on said stored electromagnetic profile and said
received electromagnetic profile
to determine,
with the detection device,
whether an unauthorized modification has been made to
the financial terminal.
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The Examiner relies upon the following prior art:
Preikschat US 4,768,034 Aug. 30, 1988
Peterson US 2005/0078093 A1 Apr. 14, 2005
Ross US 2006/0169764 A1 Aug. 3, 2006
Block US 7,093,749 B1 Aug. 22, 2006
Yuzik US 7,403,115 B2 July 22, 2008
Yajima US 2008/0305771 A1 Dec. 11, 2008
Breed US 7,663,502 B2 Feb. 16, 2010
Austin UK 2270182 A Mar. 2, 1994
Claims 1, 3–7, 9–15, 25, and 26 stand rejected under 35 U.S.C. § 112,
first paragraph, as lacking a supporting written description within the
original disclosure.
Claims 1, 3–7, 9–15, 25, and 26 stand rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
invention.2
Claims 1, 7, 13, 15, 25, and 26 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Block, Yuzik, and Peterson.
Claims 1, 7, 13, 15, 25, and 26 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Block, Yuzik, and Breed.
Claims 3, 4, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Block, Yuzik, Peterson, and Ross.

2 The Examiner’s Answer is ambiguous as to whether this rejection remains.
Although the Answer at one place indicates the rejection is withdrawn
(Ans. 108) the Answer also states the rejection remains in place (Ans. 3
and 6). We treat the rejection as still being applied.
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Claims 3, 4, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Block, Yuzik, Breed, and Ross.
Claims 5 and 11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Block, Yuzik, Peterson, and Austin.
Claims 5 and 11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Block, Yuzik, Breed, and Austin.
Claims 6 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Block, Yuzik, Peterson, and Yajima.
Claims 6 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Block, Yuzik, Breed, and Yajima.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Block, Yuzik, Peterson, and Preikschat.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Block, Yuzik, Breed, and Preikschat.
ISSUES
The issues of written description and definiteness turn primarily on
whether the limitation of receiving an electromagnetic profile emitted from
the financial terminal, including radio wave activity if present is both
supported by the Specification and definite in scope. The issues of
obviousness turn primarily on whether infrared radiation is in the
electromagnetic spectrum.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of “emit.”
02. The ordinary meaning of emit is to send something into the air.3
Facts Related to Appellant’s Disclosure
03. Thus, all electronic equipment ha[s] a corresponding
electromagnetic fingerprint. However, if the terminal is modified
in some way, such as by adding a skimmer (which extracts
sensitive information during a transaction), an enhanced definition
monitor (ECTV), or a radio transmitter (such as a Bluetooth,
global system for mobile communication (GSM), or WiFi
transmitter) to the terminal to broadcast transactional data to a
remote receiver in the vicinity, the terminal will have a different
electromagnetic fingerprint than an unmodified terminal. The
device formed in accordance with the present invention is
preferably a portable compact detection device or sniffer that can
be pre-loaded with known electromagnetic fingerprints of original,
unmodified equipment and can then be used to very quickly scan
the financial terminal at the point-of-sale or transaction to see if

3 The American Heritage Dictionary of the English Language, Fifth Edition
2015, https://www.ahdictionary.com/word/search.html?q=emit
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the fingerprint of the terminal is substantially different from its
expected electromagnetic profile. Spec. para. 24.
Facts Related to the Prior Art
Block
04. Block is directed to automated banking machines. Block 1:17.
05. Block facilitates the detection of fraudulent activity and reduces
the risk of unauthorized access. Block 3:44–58.
06. Block’s ATM is provided with radiation sensing devices. The
controller is programmed to sense changes in the magnitude of
radiation sensed by the one or more radiation sensing devices.
The installation of an unauthorized card reading device in
proximity to the card reading slot generally produces a change in
the magnitude of the radiation sensed by the radiation sensing
devices. The exemplary controller is programmed to recognize
such changes and to take appropriate action in response thereto so
as to reduce the possibility of fraud. Block 6:5–16.
07. Block’s housing includes radiation emitting devices that emit
visible radiation or nonvisible radiation such as infrared radiation4,
which can be used for sensing the presence of unauthorized card
reading devices adjacent to the card slot. Block’s radiation
sensing devices are positioned to detect changes in the radiation
reflected from the radiation emitting devices. The controller

4 electromagnetic radiation having a wavelength in the range from
75 × 10−6 cm to 100,000 × 10−6 cm (0.000075–0.1 cm).
http://encyclopedia2.thefreedictionary.com/infrared+radiation
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compares one or more values corresponding to the magnitude of
reflected radiation sensed by one or more of the radiation sensing
devices, to one or more stored values and to make a determination
whether the comparison is such that there is a probable
unauthorized card reading device installed on the fascia of the
machine. Block’s controller may be execute fuzzy logic
programming for purposes of determining whether the nature of
the change in reflected radiation is such that there has been an
unauthorized device installed and whether appropriate personnel
should be notified. Block 26:17–52.
08. Block describes how the installation of an unauthorized card
reading device changes the amount of radiation from emitting
devices and that is reflected to the sensors. Depending on the
nature of the device and its structure, the amount of reflected
radiation may increase or decrease. However, a detectable change
will often occur in the magnitude of sensed radiation between a
present transaction and a prior transaction which was conducted
prior to an unauthorized card reading device being installed.
Block 27:3–12.
Yuzik
09. Yuzik is directed to surveillance of suspects of automated banking
machine (ABM) fraud. Yuzik 1:7–9.
10. Yuzik describes an illustrative detector for detecting the presence
of an unauthorized foreign device. The detector may be
configured and calibrated to detect a steady state electromagnetic
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field “signature” generated in the vicinity of bank card slot and
may then be configured to detect changes in the electromagnetic
field when a foreign device with components capable of disturbing
the electromagnetic field is placed in the vicinity of bank card slot.
For example, skimmers capable of reading the magnetic stripe on
bank card and placed near bank card slot will normally include
circuitry and/or components that will sufficiently disturb the
electromagnetic field to be detected by detector. By way of
example, the detector may be an electromagnetic field based
skimmer detector manufactured by Wincor Nixdorf of Paderborn,
Germany. Yuzik 6:2–19.
Peterson
11. Peterson is directed to touch input devices. Peterson para. 1.
12. Peterson describes developing signal profiles that characterize
intended or unintended signal data in terms of one or more of the
features of a signal as a function of time. A correlation can be
performed on the features of the candidate signal and that of the
signal profile to generate a correlation coefficient. The calculated
correlation coefficient can be compared to a threshold (e.g., 80%)
to discriminate between intended and unintended signal causes.
Peterson para. 57.
Breed
13. Breed is directed to controlling systems in an asset. Breed 8:6–8.
14. Breed describes detecting by pulse modulating either a carrier
wave or sending pure pulses of electromagnetic radiation to the
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reflection surfaces and comparing the returned signal with the
transmitted signal through a correlation analysis. Breed 443:21–
32.
ANALYSIS
Claims 1, 3–7, 9–15, 25, and 26 rejected under 35 U.S.C. § 112, first
paragraph, as lacking a supporting written description within the original
disclosure
We are persuaded by the Appellant’s argument that the Specification
paragraph 24 supports the limitation “including radio wave activity if
present.” Br. 4. The Examiner found that the “if present” this limitation
suggests that what is received in limitation [2] may not be made up of
electromagnetic radiation. This is an inaccurate reading of the limitation
because it is the “activity” rather than the electromagnetic radiation per se
that may not be present. This is supported by Specification paragraph 24
describing sniffer or the like activity that may or may not be present.
Claims 1, 3–7, 9–15, 25, and 26 rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention
We are persuaded by the Appellant’s argument that Specification
paragraph 24 clarifies that radio–wave activity may or may not be present,
depending on whether something is occurring that affects (e.g. modulates)
the emitted profile. Br. 5. Again, it is the activity rather than the emitted
electromagnetic (radiation) profile that may or may not be present. The
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claimed use of the word emit requires that the electromagnetic profile be
radiated.
Claims 1, 7, 13, 15, 25, and 26 rejected under 35 U.S.C. § 103(a) as
unpatentable over Block, Yuzik, and (Peterson or Breed)
The Examiner applied Block for its description of a detection device
preloaded with a stored electromagnetic profile of an uncompromised state
of a financial terminal, receiving an electromagnetic profile of an
uncompromised state of the financial terminal and determining from some
algorithm comparing the emitted and stored profiles whether an
unauthorized modification has been made. Block actually describes such
unauthorized modification arising from an unauthorized card reading device,
similar to the types of unauthorized use described in Appellant’s
Specification. See FF 04–08. The Examiner applied Yuzik to show that
such stored and emitted profiles may be in the form of a steady state and
subsequent actual electromagnetic field “signature” and that the fraudulent
activity may arise from circuitry creating radio waves, and Peterson and
Breed to show computing a coefficient for statistical comparison purposes as
would be appropriate in Block’s comparison.
We are not persuaded by the Appellant’s argument that “the Examiner
asserted that ‘nonvisible radiation’ in Block ‘obviously includes radio
frequency radiation’. However, Block requires reflectable radiation. Radio-
waves are not reflectable radiation. Block relies on reflection of radiation to
indicate tampering. Radio-waves are not useable for this purpose.” Br. 5.
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As the Examiner found (Ans. 111), infra-red is part of the
electromagnetic spectrum and electromagnetic waves are reflectable
depending on wavelength and medium. Satellite dishes are common
examples of radio wave reflection immediately apparent to any lay person
let alone one of ordinary skill. Further what is recited as being emitted is an
electromagnetic profile rather than radio waves. The only recitation of radio
waves in the claims modifies activity, as we found supra in the rejections
under 35 U.S.C. § 112. This may be no more than modulation of the emitted
electromagnetic profile. More critical still, the claim makes no recitation of
reflection or non-reflection of radio waves. Also, as the Examiner found,
Block refers to generic radiation sensing rather than only to infra-red
radiation specifically. Infra-red is described as one embodiment. Thus, the
full scope described by Block encompasses the portion of the
electromagnetic spectrum conventionally referred to as ordinary radio
waves.
We are not persuaded by the Appellant’s argument that “any
hypothetical combination of Block and Yuzik would utilize a radio listening
device which requires a person to actually hear radio activity for detecting.
This is a different approach from that provided by the subject invention.”
App. Br. 7.
First, the Examiner did not find it was predictable to bodily incorporate
Yuzik wholesale into Block. “The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference. . . . Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d 413, 425, (CCPA 1981). See also In re
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Sneed, 710 F.2d 1544, 1550, (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”); and In re Nievelt, 482 F.2d 965, (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
Second, as the Examiner found, Block describes automatically
performing the detection. Ans. 112–115. Third, nothing in the claim
excludes a person from actually hearing radio activity for detecting as well.
Although Appellant nominally also argues the reliance upon Breed (Br.
7), these arguments only contend that these references do not ameliorate the
above contentions. None of the remaining rejections are separately argued.
CONCLUSIONS OF LAW
The rejection of claims 1, 3–7, 9–15, 25, and 26 under 35 U.S.C. § 112,
first paragraph, as lacking a supporting written description within the
original disclosure is improper.
The rejection of claims 1, 3–7, 9–15, 25, and 26 under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
invention is improper.
The rejection of claims 1, 7, 13, 15, 25, and 26 under 35 U.S.C. § 103(a)
as unpatentable over Block, Yuzik, and Peterson is proper.
The rejection of claims 1, 7, 13, 15, 25, and 26 under 35 U.S.C. § 103(a)
as unpatentable over Block, Yuzik, and Breed is proper.
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The rejection of claims 3, 4, 9, and 10 under 35 U.S.C. § 103(a) as
unpatentable over Block, Yuzik, Peterson, and Ross is proper.
The rejection of claims 3, 4, 9, and 10 under 35 U.S.C. § 103(a) as
unpatentable over Block, Yuzik, Breed, and Ross is proper.
The rejection of claims 5 and 11 under 35 U.S.C. § 103(a) as
unpatentable over Block, Yuzik, Peterson, and Austin is proper.
The rejection of claims 5 and 11 under 35 U.S.C. § 103(a) as
unpatentable over Block, Yuzik, Breed, and Austin is proper.
The rejection of claims 6 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Block, Yuzik, Peterson, and Yajima is proper.
The rejection of claims 6 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Block, Yuzik, Breed, and Yajima is proper.
The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over
Block, Yuzik, Peterson, and Preikschat is proper.
The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over
Block, Yuzik, Breed, and Preikschat is proper.
DECISION
The rejection of claims 1, 3–7, 9–15, 25, and 26 is affirmed.
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) (2011).

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AFFIRMED

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