Ex Parte Kendrick et alDownload PDFPatent Trial and Appeal BoardDec 2, 201311943477 (P.T.A.B. Dec. 2, 2013) 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. 11/943,477 11/20/2007 Jeff P. Kendrick PROP 0101 PUS 3555 22045 7590 12/02/2013 BROOKS KUSHMAN P.C. 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 EXAMINER HEWITT II, CALVIN L ART UNIT PAPER NUMBER 3685 MAIL DATE DELIVERY MODE 12/02/2013 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 JEFF P. KENDRICK, DARREL GRANT WELLING and BRYCE WELDON THACKER ____________ Appeal 2011-012207 Application 11/943,477 Technology Center 3600 ____________ Before ANTON W. FETTING, BIBHU R. MOHANTY, and HYUN J. JUNG, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. Appeal 2011-012207 Application 11/943,477 2 DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-5 and 11-19 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We AFFIRM-IN-PART. THE INVENTION The Appellants’ claimed invention is directed to payment capture for financial transactions (Spec. [0002]). Claim 1, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 1. A method for a merchant to perform a financial transaction using a secure device, the method comprising: [1] capturing payment device information with a secure device configured to securely store the payment device information; [2] storing, by the secure device, the payment device information in an encrypted format while the secure device does not have an active connection to a client device; [3] establishing a connection between the secure device and the client device; [4] using a client application on the client device to retrieve the stored payment device information from the secure device such that the retrieved payment device information is not required to be displayed; [5] submitting, by the client device, a payment authorization request to a payment authorization service, the payment authorization request including at least some of the retrieved payment device information; Appeal 2011-012207 Application 11/943,477 3 [6] receiving, by the client device, status from the payment authorization service that the payment authorization request is approved or declined; and [7] deleting the stored payment device information from the secure device. THE REJECTIONS The following rejections are before us for review: 1. Claims 1-5 and 16-19 are rejected under 35 U.S.C. § 112, second paragraph. 2. Claims 1-4, 11-13, and 15-19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mueller (US 2008/0189214 A1, pub. Aug. 7, 2008) and Peart (US 7,542,942 B2, pub. Jun. 2, 2009). 3. Claims 5 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mueller, Peart, and Talluri (US 2004/0153481 A1, pub. Aug. 5, 2004) and Beenau (US 7,303,120 B2, iss. Dec. 4, 2007). FINDINGS OF FACT We find the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence1. ANALYSIS Rejection under 35 U.S.C. § 112, second paragraph The Examiner has determined that in claim 1 the phrase “‘using a client application on the client device to retrieve the stored payment device 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2011-012207 Application 11/943,477 4 information’” is indefinite because the phrase “‘to retrieve’” is an intended action to be performed but not yet performed and because it is unclear where the step was acted upon (Final Rej. 3-4). In contrast, the Appellants argue that the rejection is improper (App. Br. 3). We agree with the Appellants. Here, it is clear that the step of retrieving is performed in the method, and this rejection of claim 1 and its dependent claims is not sustained. The Examiner has also determined that in claim 16 that the phrase “‘generating, by a client device, a payment authorization request using stored payment device information retrieved from a secure device’” is indefinite because it is unclear whether the information is stored on the client device or the secure device (Final Rej. 4). We agree with the Appellants’ argument in the Brief at page 4 that it is clear that the cited information is stored on the “secure device.” Accordingly, the rejection of claim 16 and its dependent claims is not sustained. Rejection under 35 U.S.C. § 103(a) The Appellants argue that the rejection of claim 1 is improper because the cited prior art fails to disclose elements of claim limitations [1] and [2] (App. Br. 4-6, Reply Br. 2). In contrast, the Examiner has determined that the rejection of record is proper (Ans. 6-7, 11-13). We agree with the Appellants. Claim limitations [1] and [2] require: [1] capturing payment device information with a secure device configured to securely store the payment device information; [and] [2] storing, by the secure device, the payment device information in an encrypted format while the secure device does not have an active connection to a client device. (Claim 1, emphasis added). Appeal 2011-012207 Application 11/943,477 5 Claim limitation [1] thus requires in part capturing information with a secure device configured to securely store the information. Claim limitation [2] requires in part that the storing by the secure device of the encrypted information takes place while the secure device does not have an active connection to a client device. (Emphasis added.) With regard to claim limitation [1], Mueller at paragraph [0192] discloses a data capture device 113 that encrypts data and also states that data storage 164 can maintain or store other data as may be desired. Here, Mueller’s disclosure of data “capture” shows at least some temporary storage of data. Regardless, it has been suggested in Mueller that such storage may be done for data as desired and this claim limitation is met by the prior art. With regard to claim limitation [2], the Examiner has cited to Mueller at paragraphs [0101]-[0114], [0121], [0192] and [0535] as disclosing that the storing takes place “while the secure device does not have an active connection to a client device” (Ans. 6, 11). However, these portions fail to make such a disclosure. The Appellants’ Specification provides support for the claim limitation [2] at paragraphs [0050] and [0051]. Further, Mueller at paragraph [0091] states that the data capture device is in communicative contact with terminal 104 which is the opposite of what has been claimed in claim limitation [2]. For these reasons the rejection of claim 1 and its dependent claims is not sustained. The Appellants have not provided explicit arguments for claims 11 and 16 beyond what was argued for claim 1 (App. Br. 6). Claims 11 and 16 however do not include the limitation that storing takes place “while the secure device does not have an active connection to a client device” (see Appeal 2011-012207 Application 11/943,477 6 App. Br., Claims Appendix). As discussed above, Mueller at paragraph [0192] does disclose and suggest information storage as claimed so claims 11 and 16 are not patentable in this regard. The Appellants have also argued that the combination with Peart is improper because the encrypted information is inaccessible so there would be no need to delete it (App. Br. 6). We disagree as deleting encrypted information can prevent a third party from obtaining and decrypting it. For these reasons the rejection of claims 11 and 16 and their dependent claims is sustained. CONCLUSIONS OF LAW We conclude that the Appellants have shown that the Examiner erred in rejecting: claims 1-5 and 16-19 under 35 U.S.C. § 112, second paragraph; claims 1-4 under 35 U.S.C. § 103(a) as unpatentable over Mueller and Peart; and claim 5 under 35 U.S.C. § 103(a) as unpatentable over Mueller, Peart, Talluri, and Beenau. We conclude that the Appellants have not shown that the Examiner erred in rejecting: claims 11-13 and 15-19 under 35 U.S.C. § 103(a) as unpatentable over Mueller and Peart; and claim 14 under 35 U.S.C. § 103(a) as unpatentable over Mueller, Peart, Talluri, and Beenau. Appeal 2011-012207 Application 11/943,477 7 DECISION The Examiner’s rejection of claims 1-5 is reversed. The Examiner’s rejection of claims 11-19 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART rvb Copy with citationCopy as parenthetical citation