Ex Parte Teuwen et al

Patent Trials and Appeals Board

May 11, 2018

13720848 - (D) (P.T.A.B. May. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131720,848 12/19/2012
65913 7590 05/15/2018
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
FIRST NAMED INVENTOR
Philippe Teuwen
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.
81531914US01 6721
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
05/15/2018 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE TEUWEN and CEDRIC COLNOT
Appeal2017-002404
Application 13/720,848
Technology Center 3600
Before LARRY J. HUME, CATHERINE SHIANG, and
NORMAN H. BEAMER, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-20, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal2017-002404
Application 13/720,848
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to digital
wallet devices for virtual wallets. See generally Spec. 1. Claim 1 is
exemplary:
1. A digital wallet device comprising:
a wireless communications unit;
a secure element including a cryptographic core,
electrically coupled to the wireless communications unit, the
secure element configured to communicate with an external
mobile device via the wireless communications unit and
securely pair with the external mobile device such that the
secure element is able to store and synchronize a subset of a
virtual wallet stored in a cloud using the external mobile device
that is configured to communicate with the cloud; wherein the
secure element is configured to communicate with a transaction
terminal to perform a transaction.
Reference and Rejection
Claims 1-20 are rejected under pre-AIA 35 U.S.C. § 102(e) as being
anticipated by Rao (US 2014/0006277 Al; published Jan. 2, 2014).
ANALYSIS
Anticipation
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
argument that the Examiner erred in finding the cited portions of Rao
disclose "a secure element including a cryptographic core ... wherein the
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Appeal2017-002404
Application 13/720,848
secure element is configured to communicate with a transaction terminal," as
recited in independent claim 1. 1 See App. Br. 6-7; Reply Br. 2.
In the Final Action, the Examiner cites Rao' s paragraphs 93, 101, and
169--1 71 for the entire claim 1 and finds the "virtual wallet is stored in a
cloud server and the mobile device communicates with the cloud," but does
not specifically map the disputed limitations. Final Act. 5.
In response to Appellants' argument that the Examiner has not
adequately mapped the disputed limitations (Appeal Br. 6-7), the Examiner
cites Rao's paragraphs 101, 103, 135, and 172, and asserts "Rao is ...
similar to the Appellant's Specification." Ans. 4--7. 2 However, "similarity"
is not the standard for anticipation; the Examiner still does not provide any
mapping for the disputed limitations, and does not adequately explain how
and why Rao discloses the disputed limitations.
Further, we have reviewed the cited Rao portions, and they do not
disclose "a secure element including a cryptographic core ... wherein the
secure element is configured to communicate with a transaction terminal," as
required by claim 1. Absent further explanation from the Examiner, we do
not see how the cited Rao portions disclose the disputed claim limitations.
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
2 The Examiner also asserts the cited Rao excerpts are "similar to" a
definition of a cryptographic key. See Ans. 6-7. As pointed out by
Appellants (Reply Br. 2), the Examiner's definition is unhelpful because it is
for a "cryptographic key"-not the claimed "cryptographic core" (emphases
added). We also agree with Appellants that one skilled in the art would
readily understand the meaning of the claimed "cryptographic core." See
Reply Br. 2.
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Appeal2017-002404
Application 13/720,848
Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we are constrained by the
record to reverse the Examiner's rejection of claim 1.
Independent claim 20 recites a claim limitation that is substantively
similar to the disputed limitation of claim 1. See claim 20. Therefore, for
similar reasons, we reverse the Examiner's rejection of independent
claim 20.
We also reverse the Examiner's anticipation rejection of
corresponding dependent claims 2-19.
DECISION
We reverse the Examiner's decision rejecting claims 1-20.
REVERSED
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