Ex Parte Goodman

Patent Trial and Appeal Board

Sep 29, 2016

13092632 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/092,632 04/22/2011
98665 7590 09/30/2016
Otterstedt, Ellenbogen & Kammer, LLP
P.O Box 381
Cox Cob, CT 06807
FIRST NAMED INVENTOR
Daniel J. Goodman
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.
P00664-US-UTIL 6966
EXAMINER
WYCHE, MYRON
ART UNIT PAPER NUMBER
2644
MAILDATE DELIVERY MODE
09/30/2016 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 DANIEL J. GOODMAN
Appeal2015-006054
Application 13/092,632
Technology Center 2600
Before JASON V. MORGAN, JEREMY J. CURCURI, and
JOHN F. HORVATH, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-8, 10-17, and 19-30. Final Act. 1. Claims 9
and 18 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1-3, 5, 6, 22, and 27-30 are rejected under 35 U.S.C. § 103(a)
as obvious over Foster (US 2012/0191977 Al; publ. July 26, 2012),
Ramachandran (US 2010/0191650 Al; publ. July 29, 2010), and Jacobson
(US 2003/0004876 Al; publ. Jan. 2, 2003). Final Act. 4--12.
Claim 4 is rejected under 35 U.S.C. § 103(a) as obvious over Foster,
Ramachandran, Jacobson, and Terry (US 2012/0021810 Al; publ. Jan. 26,
2012). Final Act. 12-13.
Appeal2015-006054
Application 13/092,632
Claim 7 is rejected under 35 U.S.C. § 103(a) as obvious over Foster,
Ramachandran, Jacobson, and Woronec (US 2010/0155470 Al; publ. June
24, 2010). Final Act. 13-14.
Claims 8, 10-16, and 23-26 are rejected under 35 U.S.C. § 103(a) as
obvious over Foster, Jacobson, and Vega (US 2007 /0027804 Al; publ. Feb.
1, 2007). Final Act. 14--20.
Claims 17 and 19-21 are rejected under 35 U.S.C. § 103(a) as obvious
over Foster, Jacobson, Vega, and Mullen (US 2009/0159707 Al; publ. June
25, 2009). Final Act. 20-23.
We affirm. We designate the affirmance of claim 30 as a new ground
of rejection under 37 C.F.R. § 41.50(b).
STATEMENT OF THE CASE
Appellant's invention relates to an "apparatus and methods for
electronic payment." Spec. 1 :6. Claim 1 is illustrative and reproduced
below, with the disputed limitation emphasized:
1. A method comprising:
opening an application on a mobile phone to display one
or more payment card options on the mobile phone;
selecting payment card data from a database within the
mobile phone including data relating to one or more payment
cards;
causing the selected payment card data to be programmed
onto a magnetic stripe located on a tab;
moving the tab from a storage position on the mobile
phone to a use position;
swiping the tab through a magnetic card reader, causing
the magnetic stripe to be read; and
returning the tab to the storage position on the mobile
phone, the returning causing a clearing of the payment card data
programmed onto the magnetic stripe.
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ANALYSIS
THE OBVIOUSNESS REJECTION OF CLAIMS 1-3, 5, 6, 22, AND 27-30 OVER
FOSTER,RAMACHANDRAN,ANDJACOBSON
Claims 1-3, 5, 6, 22, and 27-29
The Examiner finds Foster, Ramachandran, and Jacobson teach all
limitations of claim 1. Final Act. 4---6; see also Ans. 2-5.
The Examiner finds Foster teaches the recited (claim 1)
opening an application on a mobile phone to display one
or more payment card options on the mobile phone;
selecting payment card data from a database within the
mobile phone including data relating to one or more payment
cards;
causing the selected payment card data to be programmed
onto a magnetic stripe located on a tab[.]
Final Act. 4--5. The Examiner finds Ramachandran teaches the recited
(claim l) "causing a clearing of the payment card data programmed onto the
magnetic stripe." Final Act. 5---6. The Examiner reasons:
It is respectfully submitted that it would have been obvious to
one of ordinary skill in the art to perform the erasing function
disclosed by Ramachandran as a card is passed manually through
during return of a storage position. It is respectfully submitted
that it would have been obvious to one of ordinary skill in the art
at the time of the invention to combine Foster et al. with
Ramachandran in order to ... give a single card the ability to be
used as a substitute for any one of a plurality of credit, debit, or
other cards ....
Final Act. 5 (citing Ramachandran i-f 12).
The Examiner finds Jacobson teaches the recited (claim 1) "moving
the tab from a storage position on the mobile phone to a use position;
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swiping the tab through a magnetic card reader, causing the magnetic stripe
to be read; and returning the tab to the storage position on the mobile
phone." Final Act. 5---6. The Examiner reasons:
It is respectfully submitted that it would have been obvious to
one of ordinary skill in the art at the time of the invention to
further modify the combi[n]ation of Foster et al. and
Ramachandran with the invention of Jacobson in order to provide
a universal/generic credit card (e.g., see Jacobson @ [0021]:
"The user then directs the electronic wallet to write the
uploaded digital data on the magnetic stripe and the card
micro-module of the generic multi-media card, via the
magnetic reader/writer and smart card reader/writer,
respectively").
Final Act. 6.
Appellant presents the following principal arguments:
1. "[T]he rejection lacks an articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." App.
Br. 12.
Stated simply, Ramachandran merely teaches that a "portable
terminal 14 further includes a slot 32. Slot 32 extends through
the body of the terminal and is sized to enable multifunction card
12 to be passed therethrough" (see paragraph [0069]). Nothing
in the cited references suggests how such a slot integrated into
the device of Jacobson such that a mobile terminal could be
arranged to accomplish the claimed limitation.
App. Br. 13. "Appellant cannot reasonably determine which features of
Foster, Ramachandran and/or Jacobson are believed to correspond with
which feature recited in the claims[.]" App. Br. 13; see also Reply Br. 13-
14.
11. Foster, Ramachandran, and Jacobson do not teach the disputed
limitation. App. Br. 14. "Stated simply, Ramachandran's process of passing
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the multifunction card through the portable terminal is entirely manual.
There is no teaching or suggestion of a condition causing an automatic
erasure of the multifunction card." App. Br. 14; see also Reply Br. 15.
We do not see any error in the Examiner's findings. Nor do we see
any error in the Examiner's conclusion of obviousness.
Contrary to Appellant's argument (i), the Examiner provides an
articulated reasoning with a rational underpinning to support the legal
conclusion of obviousness. See Final Act. 5---6. We agree with and adopt the
Examiner's reasoning as our own. Further, the Examiner does not integrate
a slot from Ramachandran into Jacobson's device. Nor does the Examiner
rely on the specific structures in Ramachandran; rather, the Examiner finds
Ramachandran teaches the recited (claim 1) "causing a clearing of the
payment card data programmed onto the magnetic stripe." Final Act. 5---6;
see also Ramachandran i-f 35 ("The portable terminal further preferably
includes a magnetic stripe erasing device") and i-f 72 ("It should be
understood however that in other embodiments other methods may be
provided for reading, writing and erasing magnetic stripe data.")
Additionally, regarding Appellant's argument that Appellant cannot
reasonably determine which features of the prior art are relied upon by the
Examiner, in the Final Office Action, the Examiner reasonably identifies the
teachings within Foster, Ramachandran, and Jacobson that are relied upon.
See Final Act. 4---6.
Regarding Appellant's argument (ii),
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
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references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
Here, the Examiner finds Ramachandran teaches the recited (claim 1)
"causing a clearing of the payment card data programmed onto the magnetic
stripe." Final Act. 5---6 (citing Ramachandran i-fi-135, 72). The Examiner
finds Jacobson teaches the recited (claim 1) "moving the tab from a storage
position on the mobile phone to a use position; swiping the tab through a
magnetic card reader, causing the magnetic stripe to be read; and returning
the tab to the storage position on the mobile phone." Final Act. 5---6 (citing
Jacobson i-fi-1254--255). We agree with and adopt these findings as our own.
When Jacobson's teaching of returning the tab to the storage position is
combined with Ramachandran' s teaching of causing a clearing of the
payment card data, modifying Jacobson to have the returning the tab to the
storage position cause the clearing of the payment card data; particularly in
light of Ramachandran's (i-f 72) teaching that other methods may be provided
for erasing magnetic stripe data, would have been a predictable use of prior
art elements according to their established functions-an obvious
improvement. As the U.S. Supreme Court has explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability. For the same reason, if a technique has been used
to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual
application is beyond his or her skill. Sakraida [ v. Ag Pro, Inc.,
425 U.S. 273 (1976)] and Anderson's-Black Rock[, Inc. v.
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Pavement Salvage Co., 396 U.S. 57 (1969)] are illustrative-a
court must ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
We, therefore, sustain the Examiner's rejection of claim 1, as well as
claims 2, 3, 5, 6, 22, and 27-29, which are not separately argued with
particularity.
Claim 30
Claim 30 recites: "The method of Claim 1, wherein the step of
clearing the payment card data programmed onto the magnetic stripe is
cause by a combination of returning the tab to the storage position and one
of an exit from the application on the mobile phone and determining a time
out."
The Examiner finds Foster, Ramachandran, and Jacobson teach all
limitations of claim 30. Final Act. 11-12; see also Ans. 5---6. The Examiner
finds Ramachandran teaches the recited (claim 30) "one of an exit from the
application on the mobile phone and determining a time out." Final Act. 11
(citing Ramachandran i-f 35). The Examiner finds Jacobson teaches the
recited (claim 30) "returning the tab to the storage position." Final Act. 11-
12 (citing Jacobson i-f 255).
Appellant presents the following principal argument:
"[T]he Ramachandran reference is completely silent on conditions
which cause a clearing process." App. Br. 15; see also Reply Br. 16.
We affirm the Examiner's decision to reject claim 30, and designate
our affirmance a new ground of rejection based on Foster, Ramachandran,
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Jacobson, and Official Notice. Because we designate our affirmance as a
new ground of rejection, we make findings for the subject matter recited in
claim 30.
We find Jacobson (i-f 255) teaches "returning the tab to the storage
position." See Jacobson i1255 ("The user can return credit card 1126 to the
retracted position (FIGS. 24A and 24C), by pushing credit card 1126 in
direction 1154").
We take Official Notice that performing an action in response to "one
of an exit from the application on the mobile phone and determining a time
out" was common knowledge in the electronic payment art at the time of
Appellant's invention. For example, it was common knowledge that when
buying tickets from a ticket vendor on-line, the transaction had to be
completed within a given period of time. If the transaction was not
completed within that period of time, the pending transaction was aborted,
and any payment information pertaining to the pending transaction was
discarded by the vendor.
When Jacobson's teaching of returning the tab to the storage position
is combined with the Official Notice teaching of performing an action in
response to "one of an exit from the application on the mobile phone and
determining a time out," and Ramachandran's teaching of causing a clearing
of the payment card data, modifying Jacobson to have the returning of the
tab to the storage position and one of an exit from the application on the
mobile phone and determining a time out cause the clearing of the payment
card data would have been a predictable use of prior art elements according
to their established functions - an obvious improvement - particularly in
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light of Ramachandran's (if 72) teaching that different methods may be
provided for erasing magnetic stripe data. See KSR, 550 U.S. at 417.
We, therefore, affirm the Examiner's decision to rejection claim 30,
and denominate our affirmance as a new ground of rejection based on
Foster, Ramachandran, Jacobson, and Official Notice.
THE OBVIOUSNESS REJECTION OF CLAIM 4 OVER FOSTER, RAMACHANDRAN,
JACOBSON, AND TERRY
The Examiner finds Foster, Ramachandran, Jacobson, and Terry teach
all limitations of claim 4. Final Act. 12-13; see also Ans. 6.
Appellant does not argue claim 4 with particularity. See App. Br. 15;
see also Reply Br. 17.
We, therefore, sustain the Examiner's rejection of claim 4.
THE OBVIOUSNESS REJECTION OF CLAIM 7 OVER FOSTER, RAMACHANDRAN,
JACOBSON, AND WORONEC
The Examiner finds Foster, Ramachandran, Jacobson, and Woronec
teach all limitations of claim 7. Final Act. 13-14; see also Ans. 6.
Appellant does not argue claim 7 with particularity. See App. Br. 15;
see also Reply Br. 17.
We, therefore, sustain the Examiner's rejection of claim 7.
THE OBVIOUSNESS REJECTION OF CLAIMS 8, 10-16, AND 23-26 OVER FOSTER,
JACOBSON, AND VEGA
The Examiner finds Foster, Jacobson, and Vega teach all limitations
of claim 8. Final Act. 14--16.
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The Examiner finds Jacobson teaches the recited (claim 8) (disputed
limitations emphasized):
wherein the housing comprises a first housing portion and
a second housing portion, the tab being attached to the first
housing portion in a fixed position thereto, the second housing
portion being movable with respect to the tab and the first
housing portion, the programmable magnetic stripe being
retracted within the housing when the second housing portion is
in a first position and exposed when the second housing portion
is in a second position.
Final Act. 15 (citing Jacobson i-fi-1220, 222, 223). Appellant's drawings
illustrate these features in Figure 4 (first housing portion 506A, second
housing portion 506B, and tab 504).
Appellant presents the following principal argument:
Jacobson in particular teaches a user extending the credit card
734 by rotating credit card holder 736 in direction 758, sliding
credit card 734 out of credit card holder 736 and retracting
antenna 732 (FIGS. 17B and 17C) (see paragraph [0222]). The
sliding credit card of Jacobson has no fixed position relative to a
housing of the mobile terminal. The credit card is not "attached
to the first housing portion in a fixed position thereto" as claimed
in Claim 8.
App. Br. 17.
In response, the Examiner finds:
[T]he credit card 734 and credit card holder 736 are the claimed
"tab" and are in fixed position relative to the hinge 738. The
hinge 738 is the claimed "first housing portion" and the mobile
terminal 730 is the claimed "second housing portion," which is
claimed as: "being movable with respect to the tab and first
housing portion." Thus, it is respectfully submitted that Jacobson
discloses: "a tab attached to the first housing in a fixed position
thereto."
Ans. 7.
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In the Reply Brie±: Appellant argues Jacobson's "tab" is not fixed
relative to hinge 738. Reply Br. 19.
We do not see any error in the Examiner's findings. Nor do we see
any error in the Examiner's conclusion of obviousness.
We agree with and adopt as our own the Examiner's findings (Final
Act. 15, Ans. 7) that Jacobson teaches the disputed limitations.
Jacobson teaches the tab (Jacobson's credit card 734 and card holder
736) being attached to the first housing portion (Jacobson's hinge 738) in a
fixed position thereto, the second housing portion (Jacobson's mobile
terminal 730) being movable with respect to the tab and the first housing
portion. See Jacobson Figs. 17 A---C.
Contrary to Appellant's principal argument in the Appeal Brief and
further argument in the Reply Brief, the recited tab is mapped to Jacobson's
credit card 734 and card holder 736, and Jacobson's card holder 736 is in a
fixed position with respect to hinge 738 (hinge 738 includes two parts which
move with respect to each other, one of those parts is fixed to card holder
736 and the other is fixed to mobile terminal 730).
We, therefore, sustain the Examiner's rejection of claim 8, as well as
claims 10-16 and 23-26, which are not separately argued with particularity.
THE OBVIOUSNESS REJECTION OF CLAIMS 17 AND 19-21 OVER FOSTER,
JACOBSON, VEGA, AND MULLEN
The Examiner finds Foster, Jacobson, Vega, and Mullen teach all
limitations of claim 17. Final Act. 21-23. The Examiner finds Mullen
teaches the recited: "a magnetic stripe encoder disposed within the housing
and along the slot, wherein a movement of the tab from the retracted
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Application 13/092,632
position to the exposed position moves the tab including the programmable
magnetic stripe past the magnetic stripe encoder." Final Act. 22 (citing
Mullen Abstract, i-f 140).
The Examiner reasons:
[I]t would have been obvious to one of ordinary skill in the art at
the time of the invention to further modify the combination of
Foster et al., Jacobson and Vega to include the invention of
Mullen et al. in order to communicate a form of payment via a
magnetic emulator or encoder.
Final Act. 22-23 (citing Mullen i-f 21 ).
Appellant presents the following principal argument:
[T]he rejection lacks a rationale basis showing how the magnetic
encoder of Mullen could be implemented in a housing, or how
such a magnetic encoder could be disposed such that "a
movement of the tab from the retracted position to the exposed
position moves the tab including the programmable magnetic
stripe past the magnetic stripe encoder" as claimed in Claim 17.
The rejection merely refers to individual components without
any rational underpinning to support the legal conclusion of
obviousness of the claimed device configuration.
App. Br. 17; see also Reply Br. 20-21.
We do not see any error in the Examiner's findings. Nor do we see
any error in the Examiner's conclusion of obviousness.
Contrary to Appellant's argument, the Examiner provides an
articulated reasoning with a rational underpinning to support the legal
conclusion of obviousness. See Final Act. 22-23. We agree with and adopt
the Examiner's reasoning as our own. Further, when Mullen's teaching of a
magnetic stripe encoder is combined with the teachings of Foster, Jacobson,
and Vega, disposing the encoder within the housing and modifying Jacobson
to have movement of the tab from the retracted position to the exposed
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position move the programmable magnetic stripe past the magnetic stripe
encoder would have been a predictable use of prior art elements according to
their established functions-an obvious improvement-particularly in light
of Mullen's (i-f 140) teaching that "[p]ersons skilled in the art will appreciate
that data may be transferred, such as gift card and/or pre-paid card data, to a
card in a variety of ways". See KSR, 550 U.S. at 417.
We, therefore, sustain the Examiner's rejection of claim 17, as well as
claims 19-21, which are not separately argued with particularity.
DECISION
The Examiner's decision rejecting claims 1-8, 10-17, and 19-30 is
affirmed.
We designate the affirmance as involving a new ground of rejection
under 37 C.F.R. § 41.50(b), for claim 30, to give Appellant a fair
opportunity to respond to the thrust of the rejection as explained in this
decision.
Rule 37 C.F.R. § 41.50(b) states that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
exammer ....
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(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record ....
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 )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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