Ex Parte Johnson et al

Patent Trial and Appeal Board

Dec 12, 2012

11641556 (P.T.A.B. Dec. 12, 2012)

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.
11/641,556 12/19/2006 William S. Johnson JR. 1615/6/2 8019
25297 7590 12/13/2012
JENKINS, WILSON, TAYLOR & HUNT, P. A.
3100 Tower Blvd.
Suite 1200
DURHAM, NC 27707
EXAMINER
VO, TUYEN KIM
ART UNIT PAPER NUMBER
2887
MAIL DATE DELIVERY MODE
12/13/2012 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 WILLIAM S. JOHNSON, JR. and MING-LI LIU
____________

Appeal 2010-006632
Application 11/641,556
Technology Center 2800
____________

Before ALLEN R. MacDONALD, JASON V. MORGAN, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-44. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and
enter a new ground of rejection for claim 1 pursuant to our authority under
37 C.F.R. § 41.50(b).

Appeal 2010-006632
Application 11/641,556

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STATEMENT OF THE CASE
Introduction
According to Appellants, their invention “relates to acquiring payment
device data from smart payment devices for effecting wireless payment
transactions.” Spec. 1, ll. 11-12. In particular, the invention relates to
“assembling standardized payment device data on a smart payment device
for sending to a wireless payment reader to effect a wireless payment
transaction.” Spec. 1, ll. 14-16. Claim 1 is illustrative of the invention:
1. A method of acquiring payment device data for a
wireless payment transaction, the method comprising:
(a) receiving, by a wireless smart payment device, a
request from a wireless payment reader for standardized
payment device data for effecting a wireless payment;
(b) assembling, by the wireless smart payment device,
payment device data elements into the standardized payment
device data, wherein the standardized payment device data
includes a personal account number and at least one other data
element; and
(c) sending, by the wireless smart payment device, to the
wireless payment reader, the standardized payment device data.
Rejections on Appeal
The Examiner rejected claims 1-5, 7-9, 11-16, 18-20, 22, 23, 25, 26,
28-34, 36-38, and 40-44 under 35 U.S.C. § 102(b) as anticipated by Guthery
(US 6,824,064 B2; issued Nov. 30, 2004, filed Dec. 6, 2000).
The Examiner rejected claims 6, 10, 17, 21, 24, 27, 35, and 39 under
35 U.S.C. § 103(a) as being unpatentable over Guthery and Berardi (US
2004/0118930 A1; published June 24, 2004, filed June 30, 2003).
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Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting
independent claims 1 and 30 under 35 U.S.C. § 102(b) because Guthery
does not disclose “assembling, by a wireless smart payment device,
payment device data elements into standardized payment device data.”
App. Br. 11-16.
2. Appellants contend that the Examiner erred in rejecting
independent claims 11, 19, and 25 because Guthery fails to disclose similar
limitations requiring assembly by a wireless smart payment device of
payment device data elements into standardized payment device data.
App. Br. 21-23, 26-28, 30-32.
3. Appellants contend that the Examiner erred in rejecting
dependent claims 2-5, 7-9, 12-16, 18, 20, 22, 23, 26, 28, 29, 31-34, 36-38,
and 40-44 under 35 U.S.C. § 102(b) for the same reasons set forth above
with respect to the independent claims. Appellants further contend that
Guthery fails to teach many of the additional limitations recited in these
dependent claims. App. Br. 16-20, 23-26, 28-30, 33-36.
4. Appellants contend that the Examiner erred in rejecting claims
6, 10, 17, 21, 24, 27, 35, and 39 under 35 U.S.C. § 103(a) because the
combination of Guthery and Berardi fails to teach or suggest assembling
payment device data elements into standardized payment data by a wireless
smart payment device. App. Br. 36-41.
Issues on Appeal
1. Did the Examiner err in rejecting claims 1 and 30 under 35
U.S.C. § 102(b) because Guthery fails to teach assembling, by a smart
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payment device, payment device data elements into standardized payment
device data?
2. Did the Examiner err in rejecting claims 6, 10, 17, 21, 24, 27,
35, and 39 under 35 U.S.C. § 103(a) because the combination of Guthery
and Berardi fails to teach assembling, by a smart payment device, payment
device data elements into standardized payment device data?

ANALYSIS
We agree with Appellants’ contention regarding independent claims 1
and 30. We find no evidence in the record that Guthery teaches
“assembling, by a wireless smart payment device, payment device data
elements into standardized payment device data.” The portions of Guthery
relied on by the Examiner describe a smart card that may contain user-
specific information such as an account number and that communicates with
a host reader. Ans. 3, 13; Guthery, col. 6, ll. 35-46; col. 7, ll. 5-32. Guthery
does not, however, disclose assembling an account number with at least one
other payment device data element into standardized payment device data on
the smart card, as required by the claim language. The only assembly
described in Guthery involves assembling packets received by the smart
card from the host into a request to send message for processing by the
smart card, Guthery, col. 13, ll.15-52, which is not assembly of payment
device data elements into standardized payment device data.
Because Guthery fails to disclose “assembling, by a wireless smart
payment device, payment device data elements into standardized payment
device data,” we reverse the Examiner’s rejection of independent claims 1
and 30 under 35 U.S.C. § 102(b). We also reverse the Examiner’s § 102(b)
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rejection of independent claims 11, 19, and 25, which contain similar
limitations, as well as the Examiner’s § 102(b) rejection of dependent claims
2-5, 7-9, 12-16, 18, 20, 22, 23, 26, 28, 29, 31-34, 36-38, and 40-44. We do
not reach Appellants’ arguments directed to additional limitations in these
claims.
We also agree with Appellants’ contentions regarding the Examiner’s
rejection of claims 6, 10, 17, 21, 24, 27, 35, and 39 under 35 U.S.C. § 103(a)
over Guthery and Berardi. Like Guthery, Berardi fails to disclose assembly
of payment device data elements at a wireless smart payment device. In
fact, the Examiner does not rely on Berardi for this teaching, citing Berardi
instead for other limitations. Ans. 11-12. Berardi thus does not bridge the
gap between Guthery and the independent claims. Therefore, we reverse the
Examiner’s § 103(a) rejection of claims 6, 10, 17, 21, 24, 27, 35, and 39.
NEW GROUND OF REJECTION
We now provide evidence that teaches the disputed limitations of
claim 1. Sahota (US 7,761,374 B2; issued July 20, 2010, filed Aug. 18,
2003) teaches a method of acquiring standardized payment device data for a
wireless payment transaction. Sahota, col. 2, ll. 38-43; col. 2, l. 66-col. 3,
l.2. Specifically, Sahota teaches a wireless smart payment device that
assembles payment device data elements into standardized payment device
data (e.g., Track 1 or Track 2 data, col. 2, ll. 42-43), which includes a
personal account number and at least one other data element (expiration date
and service code), and sends the standardized payment device data to a
wireless payment reader (a point of sale terminal), as recited in claim 1:
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FIG. 4 depicts an exemplary record format for
transmitting payment data . . . from the payment device to the
point of sale terminal. The record format of FIG. 4 is created
by concatenating a primary account number 401 for the
payment service, with an expiration date 402, and a service
code 403.
Sahota, col. 6, ll. 58-63. Thus, Sahota teaches steps (b) and (c) of claim 1.
Appellants’ admitted prior art teaches step (a) of claim 1—receiving at a
wireless smart payment device a request from a wireless payment reader for
standardized payment device data for effecting a wireless transaction. Spec.
2, ll. 12-13, ll. 20-30. Thus, Sahota and Appellants’ admitted prior art
together teach all the limitations of claim 1, and we conclude that claim 1
would have been obvious over the combination of Sahota and Appellants’
admitted prior art. We designate this as a new ground of rejection of claim 1
under 35 U.S.C. § 103(a).
The Patent Trial and Appeal Board is a review body rather than a
place of initial examination. We have made a rejection of claim 1 pursuant
to our discretionary authority under 37 C.F.R. § 41.50(b). However, we
have not reviewed the remaining claims to the extent necessary to determine
whether these claims are unpatentable under 35 U.S.C. § 103(a). We leave it
to the Examiner to evaluate the patentability of the remaining claims and
determine the appropriateness of any further rejections. See MPEP 1213.02.
CONCLUSION
Appellants have established that the Examiner erred in rejecting
claims 1-5, 7-9, 11-16, 18-20, 22, 23, 25, 26, 28-34, 36-38, and 40-44 under
35 U.S.C. § 102(b) as anticipated by Guthery and claims 6, 10, 17, 21, 24,
27, 35, and 39 as being unpatentable under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejections of claims 1-44 are reversed.
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
for claim 1 under 35 U.S.C. § 103(a).
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.”
37 C.F.R. § 41.50(b) also provides that the 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 proceeding
will be remanded to the examiner . . . .
(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)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

ELD