Ex Parte Candelore et al

Patent Trial and Appeal Board

Nov 30, 2018

14493825 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/493,825 09/23/2014
36738 7590
ROGITZ & AS SOCIA TES
4420 Hotel Circle Court
SUITE 230
SAN DIEGO, CA 92108
11/08/2018
FIRST NAMED INVENTOR
Brant Candelore
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
201405318.01 6878
EXAMINER
ST CYR, DANIEL
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
11/08/2018 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRANT CANDELORE,
STEVEN MARTIN RICHMAN, and FREDERICK J. ZUSTAK
Appeal2017-009525 1
Application 14/493,825
Technology Center 2800
Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH,
and LILAN REN, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge SMITH.
Opinion dissenting filed by Administrative Patent Judge HANLON.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from a non-final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6.
1 Appellant is the Applicant, Sony Corporation, which is also identified as
the real party in interest. (App. Br. 2).
Appeal2017-009525
Application 14/493,825
Appellant's invention is generally directed to "an apparatus [that]
includes at least one processor and at least one computer readable storage
medium [that] includes instructions which when executed by the processor
configure the processor to receive a near field communication (NFC)
interrogation signal (NFCIS) from a point of sale (POS) assembly." (Spec.
2.) Claim 1 illustrates the subject matter on appeal and is reproduced below:
1. Apparatus comprising:
at least one computer memory that is not a transitory signal and
that comprises instructions
executable by at least one processor to:
receive a near field communication (NFC) interrogation signal
(NFCIS) from a point of sale (POS) assembly;
responsive to receiving the NFCIS, send a wireless message to
an authorization device indicating receipt of the NFCIS; and
respond to the NFCIS.
The Examiner maintains the following rejection from the Non-Final
Office Action for our review:
Claims 1-20 rejected under 35 U.S.C. § I02(a)(l) as anticipated by
Jain (US 2009/0065571 Al, pub. Mar. 12, 2009).
OPINION
The Examiner rejected claims 1-20 as anticipated by Jain. Appellant
addresses several of the appealed claims under separate headings. We will
address the claims as argued by Appellant. Any claim not separately argued
will stand or fall with its respective independent claim. (See generally App.
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Br.)
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejection for the reasons set forth in the Answer to the Appeal Brief and
Non-Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments for emphasis as
follows.
The proper test of a publication as a § 102(b) bar is "whether one
skilled in the art to which the invention pertains could take the description of
the invention in the printed publication and combine it with his own
knowledge of the particular art and from this combination be put in
possession of the invention on which a patent is sought." In re Elsner, 381
F.3d 1125, 1128 (Fed. Cir. 2004) (citing In re LeGrice, 301 F.2d 929, 936
(CCPA 1962)). In particular, in view of the publication, one must be able to
make the claimed invention without undue experimentation. Elsner, 3 81
F.3d at 1128.
Claim 1
Appellant argues the portions of Jain cited by the Examiner failed to
"say anything about either an 'inquiry' as alleged or an 'interrogation' as
claimed." (App. Br. 7). Appellant in the Reply Brief contends an
interrogation signal in the context of the claimed invention is "an initial
signal" that powers up an e-card to begin communication, typically by
providing identifying information to an interrogator. (Reply Br. 2).
Appellant's arguments are not persuasive of reversible error. In the
context of the claimed invention, the Specification does not indicate that the
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Application 14/493,825
interrogation signal is required to "power[] up" an e-card. According to the
Specification, the apparatus includes "at least one processor and at least one
computer readable storage medium [that] includes instructions which when
executed by the processor configure the processor to receive a near field
communication (NFC) interrogation signal (NFCIS) from a point of sale
(POS) assembly." (Spec. 2).
Appellant argues that paragraphs 23 and 24 of Jain describe the
transaction card initiating a transaction with the POS in response to a request
from the POS but never disclose that the transaction card sends a message to
the mobile device. (App. Br. 10).
We agree with the Examiner. Claim 1 specifies "responsive to
receiving the NFCIS, send a wireless message to an authorization device
indicating receipt of the NFCIS." Jain discloses the POS terminal
communicates with thee-card i.e., providing an interrogation signal,
requesting authorization for a transaction with the e-card and requests the
mobile device to authorize the transaction, such occurrence meets the
claimed invention. (Jain ,r,r 21-22). Jain specifically states:
In another example, the mobile device 110 may comprise a
smartphone that includes an input device, such as a keypad,
touch screen, mouse, or other device that can accept
information, and an output device that conveys information
associated with a transaction with the offline store 102,
including digital data, visual information, or GUI 111.
Appellant argues that paragraph 46 of Jain does not teach or suggest
sending a signal from the smartcard to another device indicating receipt of
the interrogation signal as required by claim 1. (App. Br. 13-14).
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Appellant's arguments regarding paragraph 46 lack persuasive merit.
Jain's paragraph 46 describes an alternative embodiment that does not
detract from the teachings relied upon by the Examiner.
Claim 2
Appellant argues Jain's paragraph 40 does not describe the claim
limitation requiring the message from the e-card to the authorization device
[to] include a transaction amount. (App. Br. 14). This argument lacks
persuasive merit. The claimed invention is directed to an apparatus.
Appellant is attempting to base patentability on the subject matter which
does not form part of the apparatus, Catalina Marketing Int'!., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002), or the function
or result of that structure. In re Danly, 263 F .2d 844, 848 (CCP A 1959); In
re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948). Language in an
apparatus claim directed to the function, operation, intent-of-use, and
materials upon which these apparatus components work that does not
structurally limit the apparatus components or patentably differentiate the
claimed apparatus from an otherwise identical prior art apparatus will not
support patentability. See, e.g., In re Rishoi, 197 F.2d 342, 344--45 (CCPA
1952); In re Otto, 312 F.2d 937,940 (CCPA 1963); In re Ludtke, 441 F.2d
660, 663---64 (CCPA 1971); In re Yanush, 477 F.2d 958,959 (CCPA 1973).
The message provided to the authorization device is variable and is not a
structural item of the apparatus.
Claims 4 and 11
Appellant argues Jain ,r 26 does not provide an indication of an
interrogation signal or that the transaction card responds to the interrogation
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signal only upon receipt of an authorization signal from an authorization
device.
We adopt the Examiner's response to Appellant's argument. (Answer
6-7). Appellant is reminded that a reference is available for all that it
teaches. As discussed above, Jain teaches mobile devices that have input and
output means. Without an initial interrogation signal, the user of the mobile
device would not have a notification that input such as a pin number was
required.
Claims 8 and 12
Appellant argues Jain's paragraph 23 "says nothing about low-energy
Bluetooth." App. Br. 15.
We adopt the Examiner's response to Appellant's argument. (Answer
7). It is not been disputed the Jain describes the suitability of utilizing
Bluetooth for communication. Appellant has not explained why the
disclosure of Bluetooth is patentably distinct from low-energy Bluetooth.
Claim 9
Appellant reiterates the argument presented when addressing claim 1,
that Jain does not teach or suggest automatically reporting by an e-card the
interrogation signal to a consumer electronic device. (App. Br. 15).
Appellant's arguments are not persuasive for the reasons set forth
above and presented by the Examiner. (Ans. 7-8).
Claim 14
Appellant argues Jain fails to describe that the user interface is
presented in response to receiving an interrogation notification from an e-
card. (App. Br. 16).
Appellant's arguments are not persuasive for the reasons set forth
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above and presented by the Examiner. (Ans. 9). As discussed above, Jain
describes actions required by the user, to be inputted by a mobile device,
based on notification received from the POS. ( Jain ,r,r 22-23).
Claims 15, 17, and 18
Appellant's arguments (App. Br. 16-17) are not persuasive for the
reasons set forth above and presented by the Examiner. (Ans. 9-10). As
discussed above, Jain describes actions required by the user, to be inputted
by a mobile device, based on notification received from the POS. (Jain
,r,r 22-23).
Accordingly, we affirm the Examiner's 35 U.S.C. § 102(a)(l)
rejection of claims 1-20 for the reasons given above and presented by the
Examiner.
DECISION
The Examiner's prior art rejection of claims 1-20 under 35 U.S.C.
§ 102(a)(l) is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRANT CANDELORE,
STEVEN MARTIN RICHMAN, and FREDERICK J. ZUSTAK
Appeal2017-009525
Application 14/493,825
Technology Center 2800
Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH,
and LILAN REN, Administrative Patent Judges.
Opinion dissenting filed by Administrative Patent Judge HANLON.
I respectfully dissent from the majority opinion affirming the
Examiner's decision to reject claims 1-20 under 35 U.S.C. § 102(a)(l) as
anticipated by Jain.
"To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Moreover,
the [prior art] reference must clearly and unequivocally disclose
the claimed [invention] or direct those skilled in the art to the
[invention] without any need for picking, choosing, and
combining various disclosures . . . . Such picking and choosing
may be entirely proper in the making of a 103, obviousness
rejection, where the applicant must be afforded an opportunity
to rebut with objective evidence any inference of
obviousness ... , but it has no place in the making of a 102,
anticipation rejection.
Appeal2017-009525
Application 14/493,825
In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972).
A. Claims 1-13
The apparatus recited in claim 1 comprises, inter alia, a computer
memory comprising instructions executable by a processor to:
receive a near field communication (NFC) interrogation signal
(NFCIS) from a point of sale (POS) assembly;
responsive to receiving the NFCIS, send a wireless message to
an authorization device indicating receipt of the NFCIS, and
respond to the NFCIS.
App. Br. 18 ( emphasis added).
The claimed processor may be contained inane-card. See App. Br. 7
(labelling claim 1 "e-card claim"). The claimed authorization device may
be a smart phone. See Spec. 24--25 ( disclosing that e-card 50 receives an
interrogation such as an NFC interrogation signal from a kiosk and thee-
card, in tum, sends a notification to consumer electronics ( CE) device 12
that it has been interrogated); Spec. 8 (disclosing that CE device 12 is a
mobile computing device such as a smart phone).
Similarly, claim 9 recites a method comprising the steps of (1)
receiving, at an e-card, a transaction interrogation from a POS apparatus and
(2) automatically reporting, by thee-card, the interrogation to a CE device
associated with the e-card. App. Br. 9 ( emphasis added).
Relying on paragraphs 21-26 of Jain, the Examiner finds that Jain's
card 112, in response to receiving a NFCIS from a POS assembly, sends a
wireless message to an authorization device 110 (i.e., a mobile device)
indicating receipt of the NFCIS, as claimed. Final Act. 2; Ans. 2.
The Appellants argue that paragraphs 21-26 of Jain do not disclose an
"interrogation" as claimed. App. Br. 7. The Appellants argue that
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paragraph 46 of Jain "explicitly mentions an interrogation signal, meaning
Jain contemplated such signals, but never ties that signal to the combination
claimed." App. Br. 7.
To address the Appellants' argument, it is necessary to interpret the
term "interrogation signal." The terms "interrogation" or "interrogation
signal" do not appear in paragraphs 21-26 of Jain, and the Examiner does
not offer an interpretation of "interrogation" or "interrogation signal" in the
rejection on appeal. See Final Act. 2; see also App. Br. 14 ("no claim
construction of 'NFCIS' has been made of record to explain what other
signal in Jain allegedly satisfies the claim language"); see also App. Br. 5---6.
Nonetheless, the Examiner provides the following definition of
"interrogation signal" in the Answer:
An interrogation signal for computing devices is to transmit a
signal for setting off an appropriate response. For instance, if
the POS terminal communicates with the e-card requesting
authorization for a transaction which the e-card requests the
mobile device to authorize the transaction, such occurrence
meets the claim's language "interrogation signal"
receiving/notifying.
Ans. 5 ( emphasis added).
In response, the Appellants argue:
The problem with the definition proffered in the Answer
is that it has been entirely made up without any support to cover
any signal that 'sets off an appropriate response'. As a practical
matter, the definition covers every electronic signal imaginable,
since every signal "sets off' some kind of response at a
receiver.
Reply Br. 2.
The Appellants argue that "both the instant specification (bottom of
page 11) and Jain (paragraph 46) understand that an interrogation signal in
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the context of e-cards is an initial signal, because it powers up the circuitry
of thee-card." Reply Br. 2.
The Appellants disclose:
In some embodiments, the bank card 50 includes a first
electronic circuit that is configured to respond to interrogation
signals from the kiosk 52 by using the signals to momentarily
power or excite the circuit 58 [in bank card 50] to emit a short
range NFC signal from an NFC element 60, such as an RFID
tag.
Spec. 11, 11. 21-24 ( emphasis added); see also Appellants' Fig. 1 ( showing
circuit 58 in bank card 50).
Similarly, Jain discloses that "contactless smart card 214 operates
independent of an internal power supply and captures energy from incident
radio-frequency interrogation signals to power the embedded electronics."
Jain ,r 46 (italics added).
Based on the foregoing, a preponderance of the evidence supports the
Appellants' interpretation of "interrogation signal." Therefore, I interpret
"interrogation signal" and "interrogation" recited in the claims on appeal as
a signal that powers or excites electronics contained in an e-card. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (during examination, "the
PTO applies to the verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification").
In the rejection on appeal, the Examiner relies on paragraph 23 and 25
and Figure 2 of Jain to support a finding that card 112 "receive[s] a near
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field communication (NFC) interrogation signal (NFCIS) from a point of
sale (POS) assembly." Final Act. 2; Ans. 2.
As explained above, the term "interrogation signal," however, does
not appear in those portions of Jain. Nonetheless, the Examiner finds that
Jain teaches that the transaction card "wirelessly receives [a] request from
[a] POS device to execute a transaction." Ans. 5 (citing Jain ,r 23). In that
regard, the Examiner finds that "[i]t is clear that the POS terminal sends
signals to the e-card to set off appropriate responses, such as requesting PIN
or other forms of authorizations." Ans. 5 (emphasis added). The Examiner,
however, does not find that the signals sent by the POS assembly are
"interrogation signals" as that term is used in the claims on appeal (i.e.,
signals that power or excite electronics contained in the transaction card).
Moreover, even if the Examiner's definition of "interrogation signal"
were adopted, claim 1 also recites that "responsive to receiving the NFCIS,
[the processor in thee-card] send[s] a wireless message to an authorization
device indicating receipt of the NFCIS."2 App. Br. 18 (emphasis added).
Similarly, claim 9 recites "automatically reporting, by the e-card, the
interrogation to a consumer electronics (CE) device associated with thee-
card." App. Br. 19 (emphasis added).
The Appellants argue that the Examiner reversibly erred in finding
that Jain teaches that thee-card, responsive to receiving a NFCIS from a
POS assembly, sends a wireless message to an authorization device
indicating receipt of the NFCIS as claimed. App. Br. 7.
2 See Reply Br. 3 (arguing that "even under the unduly broad and legally
unsupportable definition of 'interrogation signal['] proffered in the Answer,
Jain fails to teach the claimed 'in response to' link").
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In the rejection on appeal, the Examiner finds that "the transaction
card communicates inquiry information to authorization [device] 110."
Final Act. 2, Ans. 2 (citing Jain ,r,r 21-26); see also Jain ,r 21 (disclosing that
mobile device 110, such as a smart phone, is capable of communicating
information with transaction card 112). The Examiner, however, does not
identify any specific disclosure in Jain paragraphs 21-26 disclosing that the
transaction card communicates with the mobile device in response to
receiving a NFC interrogation signal and sends a message to the mobile
device indicating receipt of the NFCIS, as claimed.
In the Answer, the Examiner finds:
[Jain] teaches that the transaction card may execute the
following: wirelessly receives request from POS device to
execute a transaction and/ or to provide a response, present and
receive information (e.g., PIN request, PIN) from the user GUI
111 (from the mobile device), execute authentication based on
information received from the GUI 111, generate and/or present
alert to the user through the GUI 111, generate and/ or transmit
wireless message alert to the financial institution, etc.
Ans. 5 (citing Jain ,r 23, 11. 20+) (emphasis omitted).
That portion of Jain, however, does not disclose that the transaction
card, in response to receiving the NFCIS, sends a wireless message to
mobile device 110 indicating receipt of the NFCIS, as claimed. See App. Br.
10 ("paragraph 23 does not teach anything about the mobile device receiving
or a transaction card sending to the mobile device a wireless message
indicating receipt of an interrogation signal"). Rather, the disclosure of Jain
relied on by the Examiner lists individual operations of the transaction card
and does not describe any interaction or connection between the individual
operations. See Jain ,r 23 ( disclosing that "[i]n some implementations, the
transaction card 112 may execute one or more of the following"). To the
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extent that the disclosure in Jain paragraph 23 supports a conclusion of
obviousness, that issue is not before the Board on appeal.
The Examiner also finds:
[Jain] discloses that e-card (transaction card) may execute a
transaction with the POS terminal without the aspect of the
transaction being executed by the mobile terminal (see par.
0023, lines 3-6), this is clearly an indication that the mobile
terminal normally authorizes the transactions. This is an
indication that when the POS terminal communicates with the
e-card regarding transactions, thee-card notifies the mobile
terminal to authorize the transactions. For example, if a
transaction between the POS and e-card requires a PIN, thee-
card must communicate with the mobile device so that the PIN
is entered via the graphical interface.
Ans. 5 ( original emphasis omitted).
Jain discloses:
The transaction card 112 can include any software,
hardware, and/or firmware configured to wirelessly execute
transactions with the POS device 114. For example, the
transaction card 112 may execute a contactless transaction with
the POS device 114 independent of the mobile device 110a. In
other words, the transaction card 112 may wirelessly execute
transactions without aspects of the transaction being executed
by the mobile device 110.
Jain ,r 23 (italics added).
The portion of Jain relied on by the Examiner does not expressly
disclose that "when the POS terminal communicates with the e-card
regarding transactions, thee-card notifies the mobile terminal to authorize
the transactions" as found by the Examiner. See Ans. 5. Rather, Jain
discloses that the transaction card may execute a transaction with the POS
device independent of the mobile device. Jain ,r 23.
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The Examiner appears to rely on the word "may" as evidence that Jain
inherently discloses the opposite of what is expressly disclosed. The term
"may," however, is "used to indicate possibility or probability."
http://www.merriam-webster.com, Definition of "may" (last visited October
28, 2018). That is, Jain discloses that one possible use of transaction card
112 is to execute a contactless transaction with the POS device independent
of the mobile device. Jain ,r 23.
Based on the foregoing, a preponderance of the evidence does not
support the Examiner's finding that Jain's transaction card receives a NFC
interrogation signal from the POS assembly, and in response to receiving
that signal, sends a message indicating receipt of the interrogation signal, or
reports the interrogation, to mobile device 110. Thus, for the reasons set
forth above, I would not sustain the anticipation rejection of claims 1-13.
B. Claims 14--20
Claim 14 reads as follows:
14. Non-transitory computer readable storage medium
(NTCRSM) including instructions executable by a processor to
configure the processor to:
present on a display at least one user interface (UI) in
response to receiving an interrogation notification from an
electronic transaction card ( e-card);
present on the display at least one user input prompt.
App. Br. 20-21 ( emphasis added).
The Examiner finds that "in addition to limitations discussed above,
the user authorization device 110 (i.e. cell phone, PDA, etc.) includes
display through user interface 111 for receiving PIN (see par. 0023)." Final
Act. 4; Ans. 4.
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The Appellants argue that "the rejection plainly fails to allege where
Jain teaches the UI of Claim 14, in which the UI is presented in response to
receiving an interrogation notification from an electronic transaction card ( e-
card). App. Br. 16.
In response, the Examiner finds:
The prior art teaches that the transaction card may execute the
following: wirelessly receives request from POS device to
execute a transaction and/ or to provide a response, present and
receive information (e.g., PIN request, PIN) from the user GUI
111 (from the mobile device/CE), execute authentication based
on information received from the GUI 111, generate and/or
present alert to the user through the GUI 111, generate and/ or
transmit wireless message alert to the financial institution, etc.
(See par. 23, line 20+). It is clear that the prior art teaches
presenting and receiving information from user through the
GUI 111.
Ans. 8-9 (italics added).
The Appellants argue that the Examiner's findings "fail[] to address
what is claimed, which is that a UI is presented on a display responsive to
something (not addressed in the Answer) and not just responsive to
anything, but to a specific signal - an interrogation notification from an e-
card (also not addressed)." Reply Br. 5.
The Appellants' argument is supported by the record. Notably, the
disclosure of Jain relied on by the Examiner, lists individual operations of
the transaction card and does not describe any interaction or connection
between the individual operations. See Jain ,r 23 (disclosing that "[i]n some
implementations, the transaction card 112 may execute one or more of the
following").
For the reasons set forth above, I would not sustain the anticipation
rejection of claims 14--20. To the extent that the disclosure in Jain
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paragraph 23 supports a conclusion of obviousness, that issue is not before
the Board on appeal.
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