Ex Parte Fisher et alDownload PDFPatent Trial and Appeal BoardJun 20, 201613441717 (P.T.A.B. Jun. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/441,717 12120 7590 Michelle Fisher 2930 Domingo Ave Suite 123 Berkeley, CA 94705 FILING DATE FIRST NAMED INVENTOR 04/06/2012 Michelle Fisher 06/22/2016 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. 379842-991151 1084 EXAMINER KELLEY, STEVEN SHAUN ART UNIT PAPER NUMBER 2646 NOTIFICATION DATE DELIVERY MODE 06/22/2016 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): mfisher@blazemobile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHELLE FISHER and RA THIN GURA Appeal 2015-001181 Application 13/441,717 Technology Center 2600 Before JASON V. MORGAN, ADAM J. PYONIN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITT A, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-18. Claims 19-23 are cancelled. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We AFFIRM. 1 1 Throughout this Opinion, we refer to: (1) Appellants' Specification filed Apr. 6, 2012 ("Spec."); (2) the Final Office Action ("Final Act.") mailed Feb. 22, 2013; (3) the Appeal Brief ("Appeal Br.") filed March 14, 2014; (4) the Examiner's Answer ("Ans.") mailed Aug. 15, 2014; and (5) the Reply Brief ("Reply Br.") filed Oct. 15, 2014. Appeal 2015-001181 Application 13/441,717 Appellants' application relates to a method and system for scheduling a banking transaction using a mobile communication device. Abstract. Claims 1, 11, and 18 are independent claims. Claim 1 is representative and is reproduced below with disputed limitations emphasized: 1. A method for scheduling a banking transaction using a mobile communication device, the method comprising: providing a mobile communications device with a visual display, a processor, a first communication channel which supports voice and data interactions at a transceiver at the handheld mobile device using at least one of GSM and CDMA, and a secure element embedded within the mobile communications device that runs a client application; executing an application at the mobile communications device to create a task to perform a banking transaction while the mobile communication device has no network connectivity; automatically connecting to an available network upon identifj;ing available network connectivity, wherein the connection to the available network is established using the transceiver of the mobile communication device; uploading the task to a remote server; refreshing the status of the task and displaying the new status of the task in the application executed by the mobile communications device after the remote server has received the task; executing, in response to a near field communication interaction of the hand-held mobile device with a Point-Of-Sale terminal that is physically remote from the mobile communications device using a second communication channel capable of supporting near field communications, a payment application, stored in memory of the secure element with payment credentials associated with the payment account and the payment credentials are transferred to the Point of Sale Terminal for the banking transaction by the execution of the 2 Appeal 2015-001181 Application 13/441,717 payment application, by a processor of the secure element to pay for the banking transaction; sending, using a wireless transceiver of the secure element, the transaction data including the payment credentials associated with the executed payment application through a second communication channel to the Point-Of- Sale terminal, the second communication channel being different from a first communication channel through which the mobile communication device communicates voice data, the payment application executed in response to a near field communication interaction from the Point-Of-Sale terminal; and receiving purchase information from the Point-Of-Sale terminal. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal: Rosenberg US 7,110,792 B2 Sept. 19, 2006 H'11n11".l TN ')(\(\h/(\'JQ7(\(\L1_ A 1 nPf' ') 1 ')(\(\h _I._ ""-"1_ U-U, '--' u "'-'VVV/ V"'-'V I vv-r .L -'.__I_ _L./V\o./e "'-'_I_' "'-'VVV Adams et al. (hereinafter US 2007/0152035 Al July 5, 2007 "Adams") Calvet et al. (hereinafter US 2008/0051142 Al Feb.28,2008 "Calv et") De lean US 2008/0177668 Al July 24, 2008 REJECTIONS Claims 1-18 are rejected under 35 U.S.C. § 112, first paragraph. Claims 1-18 are rejected under 35 U.S.C. § 112, second paragraph. Claims 1-9, 11-13, and 15-18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Delean in view of either one of Cal vet or Rosenberg and further in view of Fuqua. 3 Appeal 2015-001181 Application 13/441,717 Claims 10 and 14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Delean in view of either one of Cal vet or Rosenberg and further in view of Fuqua and Adams. Our review in this appeal is limited only to the above rejections and the issues raised by Appellants. We have not considered other possible issues that have not been raised by Appellants or the Examiner and which are, therefore, not before us. See 37 C.F.R. § 41.37(c)(l)(iv) (2013). ISSUES 1. Did the Examiner err in finding the limitation "payment credentials are transferred to the Point of Sale Terminal for the banking transaction by the execution of the payment application, by a processor of the secure element to pay for the banking transaction," as recited in claim 1 lacks enablement and is indefinite under 35 U.S.C. § 112, first and second paragraphs, respectively? 2. Did the Examiner err in finding that the combination of Delean in view of either one of Cal vet or Rosenberg and further in view of Fuqua teaches or suggests: executing an application at the mobile communications device to create a task to perform a banking transaction while the mobile communication device has no network connectivity; automatically connecting to an available network upon identifying available network connectivity, wherein the connection to the available network is established using the transceiver of the mobile communication device; uploading the task to a remote server; [and] refreshing the status of the task and displaying the new status of the task in the application executed by the mobile 4 Appeal 2015-001181 Application 13/441,717 communications device after the remote server has received the task, as recited in claim 1? 3. Did the Examiner err in finding that the combination of Delean in view of either one of Cal vet or Rosenberg and further in view of Fuqua teaches or suggests "executing, in response to a near field communication interaction of the hand-held mobile device with a Point-Of-Sale terminal," as recited in claim 1? 4. Did the Examiner err in finding that the combination of Delean in view of either one of Cal vet or Rosenberg, Fuqua, and further in view of Adams teaches or suggests all the features of dependent claims 10 and 14? DISCUSSION Rejection of Claims 1-18 Under 35 USC§ 112,firstparagraph "[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without 'undue experimentation."' Genentech, Inc. v. Novo NordiskAIS, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). In determining whether any given disclosure requires undue experimentation to practice the claimed subject matter, the Examiner should consider, inter alia, the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of one of ordinary skill in the art, the predictability or unpredictability of the art, and the breadth of the claims (collectively 5 Appeal 2015-001181 Application 13/441,717 known as the "Wands factors"). In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The Examiner's rejection, as set forth in the Final Office Action from which this appeal is taken, states: The independent claims currently recite "executing an application at the mobile communications device to create a task to perform a banking transaction and subsequently assigning the task a status of pending while the mobile communication device has no network connectivity" and then subsequently recite "transferring payment credentials associated with the payment account and the payment credentials are transferred to the Point of Sale Terminal for the banking transaction". The specification as originally filed supports creating banking transactions such as transfer of funds, bill payments, etc. while the device has no network connectivity (see claim 2 and section [0111] of the Published application 2008/0052233), but the specification does not support creating and executing a POS task while there is no network connectivity. In other words, the current claims erroneously combine two distinct embodiments, one related to "banking transactions" and another related to "POS transactions", where there is no support for this combination of embodiments. Final Act. 2. Appellants contend US Patent Application Serial No. 11/933,367, from which the above case claims priority (published as US 2008/0052233), "specifically discloses the combination of banking transactions and POS transactions in paragraphs 0124 and 0125." App. Br. 4. Appellants also argue the "payment of any transaction especially banking transactions can be processed at a POS device" and, therefore, the enablement rejection is improper. Reply Br. 2 (citing Appellants' discussion of providing various banking and money management services at paragraphs 4 7----63 of US 2008/0052233). 6 Appeal 2015-001181 Application 13/441,717 The Examiner's rejection rationale includes the finding that the independent claims currently recite "executing an application at the mobile communications device to create a task to perform a banking transaction and subsequently assigning the task a status of pending." Final Act. 2. The rejection rationale, however, fails to acknowledge that Appellants cancelled the limitation "subsequently assigning the task a status of pending" in the Amendment filed November 30, 2012. Therefore, it is uncertain whether the Examiner took into account cancellation of this limitation when performing the enablement analysis of claim 1, as the claim recites "no network connectivity" only with respect to the initial "banking transaction" limitation, and not the "Point-Of-Sale terminal" limitation. We thus agree with Appellants that the claims, as currently written, do not lack enablement. See App. Br. 4. Further, the Examiner does not provide findings or explanation showing that one of ordinary skill in the art would have to engage in undue experimentation to practice the claimed invention. The Examiner does not explicitly address any of the Wands factors or otherwise make findings that specifically pertain to undue experimentation. The Examiner's finding that Appellants' Specification lacks specific examples of banking transactions that use POS terminals (Final Act. 11-12; Ans. 3) is thus unpersuasive because it does not address whether undue experimentation would have been needed to practice the claimed invention. Accordingly, on this record the Examiner has not carried the burden to establish that one of ordinary skill in the art armed with the disclosures set forth in the subject Specification and given the state of the prior art would not have been enabled to practice the method of independent claim 1 without undue experimentation. 7 Appeal 2015-001181 Application 13/441,717 We, therefore, reverse the Examiner's 35 U.S.C. § 112, first paragraph, rejection of claim 1, and claims 2-18 for the same reasons. Rejection of Claims 1-18 Under 35 USC§ 112, second paragraph The Examiner rejects claims 1-18 as indefinite under 35 U.S.C. § 112, second paragraph for the same rationale used in the rejection under 35 U.S.C. § 112, first paragraph. That is, the Examiner finds "the current claims appear to combine two distinct embodiments, one related to banking transactions and another related to POS transactions, [and thus] the scope of the claims is unclear as a 'banking transaction' (as defined in the [S]pecification) is not a POS transaction." Final Act. 3. We hold the Examiner does not present adequate findings from Appellants' disclosure that limit banking transactions to the specific examples provided or that indicate only "POS transactions" such as digital coupons, tickets, and payments use the POS terminals while banking transaction do not. Therefore, the Examiner has not carried the burden to establish claims 1-18 as indefinite and we reverse the rejections of claims 1- 18 under 35 U.S.C. § 112, second paragraph. Rejection of Claims 1-9, 11-13, and 15-18 Under 35 USC§ 103(a) After review of Appellants' arguments and the Examiner's findings and reasoning, we determine that Appellants have not identified reversible error in the Examiner's rejection of claim 1. Accordingly, we affirm the rejection for reasons set forth by the Examiner in the Final Office Action and the Answer. See Final Act. 5-8; Ans. 4--8. We add the following for emphasis and completeness. 8 Appeal 2015-001181 Application 13/441,717 In rejecting claim 1, the Examiner finds Delean teaches or suggests: executing an application at the mobile communications device to create a task to perform a banking transaction while the mobile communication device has no network connectivity; automatically connecting to an available network upon identifying available network connectivity, wherein the connection to the available network is established using the transceiver of the mobile communication device; uploading the task to a remote server; [and] refreshing the status of the task and displaying the new status of the task in the application executed by the mobile communications device after the remote server has received the task. Final Act. 4--5 (citing Delean, Figs. 1, 2, 5, 6; i-fi-137, 38, 50, 51). The Examiner also relies upon either of Cal vet and Rosenberg to teach or suggest "mobile communication devices which allow secure elements to be attached to the mobile device in order to perform transactions" and Fuqua to teach or suggest "conducting a POS transaction in an offline manner."2 Final Act. 5-7. Appellants contend that the limitations quoted above are not found in any of Cal vet, Rosenberg, Delean, and Fuqua. Appeal Br. 4. Appellants' arguments regarding Cal vet, Rosenberg, and Fuqua are not persuasive because the Examiner relies upon Delean to teach or suggest the disputed claim elements and thus the arguments are unresponsive to the rejection. 2 We note claim 1 does not recite "conducting a POS transaction in an offline manner, as discussed above with respect to the 35 U.S.C. § 112 rejections. 9 Appeal 2015-001181 Application 13/441,717 In arguing the disputed limitations over Delean, Appellants contend that in contrast with the disputed claim elements, "Delean teaches that the mobile device schedules a banking transaction and then transfers it to the merchant payment device ('Point-Of Sale' or 'POS ')to perform handshaking" and "[a ]fterwards the payment application stored on the mobile device is launched and used to schedule the transaction." Appeal Br. 5. Appellants further argue the disputed limitations of claim 1 do not recite "the secure element coupled to the mobile device is used to pay for the banking transaction using a different application stored in the secure element that is executed by the secure element processor which is triggered by a near field communication induction by the POS terminal." Id. We find neither of these arguments to be persuasive because the arguments are not commensurate with the scope of claim 1. Appellants also provide a chart listing five features and including details arguing how these five features are performed differently by the invention and Delean. Appeal Br. 5---6. The Examiner finds, however, and we agree, that "the last four [sic] of the five features listed in the left column of the chart do not relate to features which the Examiner sets forth as being taught by Delean." Ans. 4. For example, the Examiner notes that "the listed features in the chart of 'Authentication with POS ', 'Paying for the transaction', and 'Near Field Communication (NFC) Interaction', are features either not specifically claimed or are shown in the secondary references" rather than by Delean. Ans. 4 (citing chart at Appeal Br. 5---6). The Examiner also finds that the first listed feature in the chart, "Scheduling Task" is neither a specifically claimed feature nor does Appellants' chart provide details contrasting 10 Appeal 2015-001181 Application 13/441,717 Delean but rather the chart is left empty of content. Ans. 4 (citing chart at Appeal Br. 5). Thus, Appellants' arguments are unresponsive to the rejection. The Examiner finds Calvet and Rosenberg teach mobile communication devices which allow secure elements to be attached to the mobile device in order to perform transactions. Final Act. 5. With respect to Calvet, Appellants contend the Examiner erred because Calvet requires that a secure element must be combined with a SIM card and because only GSM mobile devices have SIM cards, Calvet's disclosure only works with GSM mobile devices. Reply Br. 7. Appellants contend that in contrast, the secure element of claimed embodiments of the present invention works with both GSM and CDMA mobile devices. Id. Appellants' arguments are unpersuasive because claim 1 fails to specifically recite that the claimed secure element "works with both GSM and CDMA mobile devices" but instead recites "the hand-held mobile device using at least one of GSM and CDMA" (emphasis added). See Appeal Br. 14 (Claims Appendix). The arguments are, therefore, not commensurate with the scope of claim 1. Moreover, Appellants fail to demonstrate that Rosenberg, which is also relied upon by the Examiner to teach a mobile communication device that allows secure elements, uses a SIM card or is limited to GSM signaling or otherwise fails to teach or suggest the disputed limitations. Appellants further argue: Additionally, Calvert [sic] is also distinguished from claimed embodiments of the present invention in that Calvert [sic] discloses that the POS simply reads the ID on the RFID tag ("secure element") as recited in paragraph [0078] of Calvert 11 Appeal 2015-001181 Application 13/441,717 [sic]. Furthermore, after the ID is transmitted to the POS, the user enters a PIN at the mobile device in order to complete the transaction using presumably payment credentials stored at the server. Reply Br. 7. Appellants appear to argue that Cal vet does not suggest the claimed secure element because Calvet's POS "simply reads the ID on the RFID tag." Id. This argument is unpersuasive because Appellants fail to specifically rebut the Examiner's finding that Calvet's RFID tags reasonably teach or suggest near-field communication as recited in claim 1. See Final Act. 5---6; Ans. 8. Appellants' argument regarding entering a PIN at the mobile device are not commensurate with the scope of claim 1 and are, therefore, also not persuasive. Appellants further argue "Rosenberg does not appear to ever expressly disclose near field communication as a specific communication protocol. In fact; Rosenberg's specification does not appear to even contain the term near field communication." Reply Br. 7. Appellants, however, fail to sufficiently distinguish the Examiner's finding that Rosenberg's discussion of a "Speedpass smartcard" suggests near-field communications and thus the arguments are not persuasive. Ans. 7-8. For example, Appellants argue that in the cited Speedpass smartcard "information is only transferred in one direction." Reply Br. 9. This argument, however, is not commensurate with the scope of claim 1 because claim 1 does not specifically recite transferring data in more than one direction. To the contrary, claim 1 recites "the payment credentials are transferred to the Point of Sale Terminal for the banking transaction by the execution of the payment application" and "sending, using a wireless 12 Appeal 2015-001181 Application 13/441,717 transceiver of the secure element, the transaction data including the payment credentials associated with the executed payment application through a second communication channel to the Point-Of- Sale terminal" thus suggesting transfer of data in one direction rather than in more than one direction. Moreover, the Examiner alternatively relies upon Calvet to teach or suggest near-field communications. Ans. 8. Appellants note that Calvet discusses RFID tags and readers (Reply Br. 9), but Appellants fail to persuasively distinguish Calvet from the "near field communication interaction" of claim 1. Ans. 8. Therefore, Appellants' arguments are unpersuasive. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 1. We also sustain the Examiner's 35 U.S.C. § 103(a) rejection of claims 11 and 18, which Appellants argue are patentable for similarly unpersuasive reasons. App. Br. 4. Appellants do not make any other substantive argument regarding the rejection of dependent claims 2-9, 12, 13, and 15-17. Id. Therefore, we likewise sustain the rejections of these dependent claims under 35 U.S.C. § 103(a). Rejection of Claims 10 and 14 Under 35 US.C. § 103(a) Appellants contend "Adams fails to disclose the claim elements missing from Delean, Calvert [sic], Rosenberg[,] and Fuqua." Appeal Br. 13. The Examiner finds Appellants' arguments unpersuasive stating: Bullet points 1-2 and 4-5 do not address the Adams reference. Bullet point "3" states "Adams fails to disclose the claim elements missing from Delean, Calvert [sic], Rosenberg and 13 Appeal 2015-001181 Application 13/441,717 Fuqua". As this statement does not specifically address how the features of claims 10 and 14 are not shown by Adams as set forth in the Final Rejection, the Examiner maintains the rejection of these claims as set forth in the Final Rejection. Ans. 8-9. We agree with the Examiner's findings that Appellants' arguments fail to specifically address how Adams fails to teach or suggest the features of claims 10 and 14 and we, therefore, affirm the rejections of claims 10 and 14 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner's decision rejecting claims 1-18 under 35 U.S.C. § 103(a). We reverse the Examiner's decision rejecting claims 1-18 under 35 U.S.C. § 112, first paragraph. We reverse the Examiner's decision rejecting claims 1-18 under 35 U.S.C. § 112, second paragraph. 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. § 41.50(±). AFFIRMED 14 Copy with citationCopy as parenthetical citation