Ex Parte Kelley et alDownload PDFPatent Trial and Appeal BoardApr 30, 201411462814 (P.T.A.B. Apr. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/462,814 08/07/2006 Edward E. Kelley 49703.319 5936 116452 7590 04/30/2014 Haynes & Boone, LLP 2323 Victory Ave., Suite 700 Dallas, TX 75219 EXAMINER MAI, THIEN T ART UNIT PAPER NUMBER 2887 MAIL DATE DELIVERY MODE 04/30/2014 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 EDWARD E. KELLY and FRANCO MOTIKA __________ Appeal 2012-005554 Application 11/462,814 Technology Center 2800 ____________ Before CHUNG K. PAK, PETER F. KRATZ, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1 and 11-21. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants’ invention is said to be directed to smart cards and more particularly to alternative uses of highly secure credit/identification cards Appeal 2012-005554 Application 11/462,814 2 and, more particularly, to providing such functions through near field communications infrastructures (Spec. 1:5-10). Claims 1 and 11 are illustrative: 1. Apparatus comprising, in combination: a near field communication device for transmitting information by inductive electromagnetic coupling over a range of ten centimeters at a radio frequency and having automatic peer-to-peer network setup without requiring establishment of device configuration when engaged and selectively operable in an active or passive mode, said near field communication device including storage means for storing information to be returned upon interrogation thereof; means for generating identification information for storage in said storage means or transmission by said near field communication device upon activation of said apparatus, and means for nulling a portion of said storage means containing said identification information upon expiration of a selected period of time subsequent to said activation of said apparatus. 11. A method of communicating secure transaction information, said method comprising steps of engaging a near field communication device for transmitting information by inductive electromagnetic coupling over a range of ten centimeters at a radio frequency and automatic peer-to-peer network setup without requiring establishment of device configuration and selectively operable in an active or passive mode in a secure transaction card, upon engagement of said near field communication device, generating secure transaction information, storing said secure transaction information in a memory of said near field communication device for transmission by said near field communication device, and nulling a portion of said memory upon transmission of said secure transaction information or upon expiration of a selected period of time subsequent to said engagement of said near field communication device. Appeal 2012-005554 Application 11/462,814 3 Appellants appeal the following rejection: Claims 1 and 11-21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kelley (US 2003/0085286 A1, published May 8, 2003) in view of Kimura (US 2002/0129250 A1, published Sep. 12, 2002) and Ryan (US 2005/0109841 A1, published May 26, 2005)1. ISSUE Did the Examiner reversibly err in failing to address specifically the means-plus function claim language “means for nulling a portion of [the] storage means” in light of Appellants’ argument that the combined teachings of Kelley, Ryan and Kimura fails to teach a near field communication (NFC) device structured with “means for nulling” as required by the claims? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES The Examiner’s findings and conclusions regarding Kelley, Kimura and Ryan are located on pages 4-6 of the Answer. The Examiner finds that Kelley teaches all the limitations of claim 1 except for the “means for nulling” and the communication device being a “near field” device having the functions recited in claim 1 (Ans. 4-5). The Examiner finds that Kimura 1 The Examiner refers to Takayama US 7,346,061 B2 on pages 4 and 6 of the Answer. Because Takayama is not listed in the statement of rejection, we will not consider the Examiner’s findings with regard to Takayama in rendering our decision regarding the propriety of the §103 rejection. In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) (“Where a reference is relied on to support a rejection, whether or not in a ‘minor capacity,’ there would appear to be no excuse for not positively including the reference in the statement of the rejection.”). Appeal 2012-005554 Application 11/462,814 4 teaches a means for nulling and concludes that it would have been obvious to incorporate the teachings of Kimura in the device of Kelley to avoid fraudulent stealing of the code for financial gains (Ans. 5). The Examiner finds that Ryan teaches a near field standard that includes the functions recited in claim 1. The Examiner concludes that it would have been obvious to incorporate the teachings of Ryan with Kelley’s device “to allow the card to communicate with other products including readers within the standard specifications, thereby benefiting the communication characteristics from the near field communication specification and reducing the product cost for the consumer” (Ans. 6). Appellants argue that “the transient memory of Kimura is not taught or suggested to be the memory of an NFC device and the nulling of a portion of the memory of an NFC at any time, including the circumstances taught by Kimura. . . .” is not suggested for an NFC device by Kimura (Reply Br. 7). Appellants contend that Kimura does not teach or suggest a nulling of a portion of the memory included in an NFC device (App. Br. 23). The preponderance of the evidence favors Appellants’ argument of nonobviousness. Claim 1 invokes 35 U.S.C. § 112, 6th paragraph with, inter alia, its recitation of “means for nulling.” Appellants’ mapping of the claims included in their Brief cites to Figure 1B, reference numbers 115, 195, page 15 , lines 3-12, page 21, and page 22 lines 5-32 and lines 28-32 (App. Br. 10). Our review of these disclosures reveals that Appellants’ NFC device is structured with switches 195a and 195b that permit the NFC device 115 to store and null information. The Examiner cites to Kimura as teaching a means for nulling a portion of storage means containing identification information comprising a Appeal 2012-005554 Application 11/462,814 5 random number mixed with card identification information upon expiration of a selected period of time subsequent to said activation of said apparatus (Ans. 5). However, the Examiner does not explain how Kimura’s nulling device is structured as required by the claimed “means for nulling.” The Examiner has not provided any meaningful claim construction of the term means for nulling as is required under § 112, sixth paragraph. In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (“The plain and unambiguous meaning of paragraph six is that one construing means-plus- function language in a claim must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure. Paragraph six does not state or even suggest that the PTO is exempt from this mandate . . . .”). As the Examiner has failed to show that Kelley’s and Ryan’s NFC device as modified by Kimura’s teaching would have the structure required by the “means for nulling” recited in the claims, we cannot sustain the Examiner’s § 103 rejection of the apparatus claims 1 and 21. Regarding independent method claim 11, the Examiner fails to provide any separate analysis of the method claims in the rejection (Ans. 4- 6). Instead the Examiner relies on the faulty analysis of apparatus claim 1. Id. As no analysis has been provided by the Examiner and the method claims require a step of nulling, it appears that the method claims suffer a similar deficiency as the apparatus claims. Accordingly, we reverse the Examiner’s § 103 rejection of method claims 11-20. Appeal 2012-005554 Application 11/462,814 6 DECISION The Examiner’s decision is reversed. ORDER REVERSED kmm Copy with citationCopy as parenthetical citation