Fisher, MichelleDownload PDFPatent Trials and Appeals BoardMay 4, 202014253607 - (D) (P.T.A.B. May. 4, 2020) Copy Citation 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. 14/253,607 04/15/2014 Michelle Fisher BLZMP004C51 1402 12120 7590 05/04/2020 Michelle Fisher 2930 Domingo Ave Suite 123 Berkeley, CA 94705 EXAMINER GOYEA, OLUSEGUN ART UNIT PAPER NUMBER 3687 NOTIFICATION DATE DELIVERY MODE 05/04/2020 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): mfisher@blazemobile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHELLE FISHER ___________ Appeal 2019-001705 Application 14/253,607 Technology Center 3600 ____________ Before CARL W. WHITEHEAD JR., JOHN F. HORVATH and SCOTT RAEVSKY, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 is appealing the final rejection of claims 1, 6, 11, 16, 20– 33, 35, 36, 40, 41, 44, 45, 49, 50, and 52–632 under 35 U.S.C. § 134(a). Final Action 2. Claims 2–5, 7–10, 12–15, 17–19, 34, 37–39, 42, 43, 46–48, and 51 are cancelled. Final Action 3. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Michelle Fisher as the real party in interest. Appeal Brief 2. 2 Claims Appendix lists 63 claims. See Claims Appendix 8. The Examiner and Appellant acknowledge only 62 claims. See Appeal Brief 8; Answer 4. Claim 63 is dependent upon independent claim 11. We address claim 63 with claim 11. Appeal 2019-001705 Application 14/253,607 2 We affirm. Introduction According to Appellant, the invention is directed to “a method and system for conducting an online payment transaction through a point of sale device.” Specification ¶ 4. Representative Claim 1. A method for processing a transaction, comprising: sending a list of products from a remote management server to a non-browser based application generated screen for display on a mobile device using the non-browser based application generated screen, wherein the non-browser based application generated screen is generated by a non-browser based application which is a mobile operating system based application with a graphical user interface that is preinstalled or downloaded and installed on the mobile device, wherein the non-browser based application only generates a non- browser based application generated screen, the non-browser based application generated screen corresponding to a specific screen or area of the non-browser based application, the mobile device including a mobile device display, a mobile device processor, a mobile device wireless radio transceiver that supports voice and data interactions through a first wireless communication channel device using at least one of GSM and CDMA, and a mobile device wireless fidelity (Wi- Fi) transceiver; receiving, at the remote management server, an identification of one or more products selected from the list of products from the non- browser based application generated screen, wherein the non-browser based application generated screen receives the identification of one or more products selected from the list of products through user input via the mobile device display of the mobile device; receiving, at the remote management server, a transaction purchase request from the non-browser based application generated screen, wherein the non-browser based application generated screen receives the transaction purchase request through the user input via the mobile device display of the mobile device; Appeal 2019-001705 Application 14/253,607 3 receiving, at the remote management server, user input login information including an identification code associated with the user from the non-browser based application generated screen, wherein the non-browser based application generated screen receives the user input login information via a mobile device display of the mobile device; upon receipt of the user input login information, authenticating, at the remote management server, a user associated with the user input login information; receiving, at the remote management server, a transaction verification from a transaction server which processes the transaction using a payment method that corresponds to the identification code associated with the user, wherein the transaction verification indicates that the transaction has processed; and downloads, the one or more products from the remote management server, to the mobile device. References Name3 Reference Date Gobburu US 2002/0060246 A1 May 23, 2002 Clisham US 2004/0168052 A1 August 26, 2004 Gautier US 2005/0021478 A1 January 27, 2005 Hayashi US 2006/0095339 A1 May 4, 2006 Ruano US 2006/0224470 A1 October 5, 2006 Rackley III US 2008/0010191 A1 January 10, 2008 Bemmel US 2008/0046366 A1 February 21, 2008 Rejections on Appeal Claims 41, 50, 54 and 60 stand rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Final Action 3–7. 3 All reference citations are to the first named inventor only. Appeal 2019-001705 Application 14/253,607 4 Claims 1, 6, 11, 16, 20–33, 35, 36, 40, 41, 44, 45, 49, 50 and 52–63 stand rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Final Action 7. Claims 1, 6, 11, 16, 20–22, 25–28, 30, 31, 35, 36, 40, 41, 44, 45, 49, 50, 52, 55–58, 61 and 63 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Rackley and Clisham. Final Action 8–16; Answer 3–12. Claim 23 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Rackley, Clisham, and Hayashi. Final Action 16–17; Answer 12. Claims 24 and 29 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Rackley, Clisham, and Bemmel. Final Action 17– 18; Answer 12–13. Claims 32 and 33 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Rackley, Clisham, and Ruano. Final Action 18–19; Answer 13–14. Claims 53 and 59 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Rackley, Clisham, and Gobburu. Final Action 19– 20; Answer 14–15. Claims 54 and 60 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Rackley, Clisham, and Gautier. Final Action 20– 21; Answer 15–16. Appeal 2019-001705 Application 14/253,607 5 ANALYSIS Rather than reiterate Appellant’s arguments and the Examiner’s determinations, we refer to the Appeal Briefs (filed May 17, 2018 and October 11, 20184), the Reply Brief (filed December 21, 2018), the Final Action (mailed December 11, 2017) and the Answer (mailed November 7, 2018), for the respective details. 35 U.S.C. § 112(a), (b) rejections The Examiner states, “Every ground of rejection set forth in the Office action dated 12/11/2017 from which the appeal is taken is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading ‘WITHDRAWN REJECTIONS.’” Answer 3. The Examiner did not indicate in the Answer that the 35 U.S.C. §§ 112(a)–(b) rejections recited in the Final Action mailed December 11, 2017 were withdrawn. See Answer 3; Final Action 3–7. Appellant proffered no arguments addressing the 35 U.S.C. §§ 112(a)–(b) rejections in the Appeal Brief. See Appeal Brief 8. We summarily affirm the Examiner’s 35 U.S.C. §§ 112(a)–(b) rejections of claims 1, 6, 11, 16, 20–33, 35, 36, 40, 41, 44, 45, 49, 50, and 52–63. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”); Hyatt v. 4 Appeal Brief filed October 11, 2018 only contains a copy of the Claims Appendix. Accordingly, we refer to the Appeal Brief filed May 17, 2018 for Appellant’s arguments. We refer to the Appeal Brief filed October 11, 2018 for the claims. Appeal 2019-001705 Application 14/253,607 6 Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived). 35 U.S.C. § 103(a) rejections Appellant contends the “combination of Rackley and [Clisham] would teach away from Rackley and require an impermissible redesign of Rackley.” Appeal Brief 9. We do not find Appellant’s arguments persuasive because Appellant does not indicate where either Rackley or Clisham encourages Rackley “Not to authenticate the user,” “Not [to] authenticate the mobile device using the telephone number or encrypted messages,” “Not [to] process the transaction before receiving the transaction purchase request,” or “Not to send a payment confirmation to the MFTS [mobile financial transaction system]” as Appellant contends. Appeal Brief 9. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citations and internal quotation marks omitted). See also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely disclosing more than one alternative does not teach away from any of these alternatives if the disclosure does not criticize, discredit, or otherwise discourage the alternatives). Appellant argues that Rackley discloses that “[a]fter the local user authentication, the mobile wallet sends signed encrypted messages to the MFTS (Examiner alleges is ‘remote management server’) to authenticate the Appeal 2019-001705 Application 14/253,607 7 device per paragraph 260.” Appeal Brief 13. Appellant contends that the claimed invention “teaches the opposite in that the user is authenticated at the server which recite in part, ‘upon receipt of the user input login information, authenticating at the remote management server a user of the mobile device associated with the user input login information prior to conducting the mobile banking transaction.” Appeal Brief 13. Appellant argues, “Rackley’s invention is different from an engineering, security, and reliability perspective. Because the PIN is stored on the mobile device, it is not as secure or reliable.” Appeal Brief 14. We do not find Appellant’s arguments persuasive because Rackley discloses: [A] unique digital key is issued to each client (mobile device) for use in digitally signing all communications to the MFTS server. This strongly authenticates the mobile client to the server and dissuades attempts to impersonate or spoof the mobile client. It will be appreciated that such a methodology affords stronger security than online banking sites that require only a username and password for access, which are much easier to compromise than digital keys. Rackley ¶ 260 (emphasis added); see Answer 18. Accordingly, Rackley discloses where and how the user is authenticated at the server. Moreover, we agree with the Examiner that “Rackley teaches or at least suggest[s] both user and user device (mobile device) authentication” and that “authentication can be placed at any location,” including at the server. Answer 18. Further, claim 1 does not preclude the pin from being stored on the mobile device. Rackley also requires authorization before conducting a mobile banking transaction, “[i]n response to entry of a valid login or PIN, screen 1306 is displayed on the mobile device. This screen 1306 preferably comprises a menu of available Appeal 2019-001705 Application 14/253,607 8 options of the Mobile Wallet application according to an exemplary aspect of the invention.” Rackley ¶ 328; see Answer 18–19; see also Rackley ¶ 327. Appellant argues: [I]n another embodiment, while Rackley teaches that the a user is authenticated by the MFTS (Examiner alleges is “remote management server”), Rackley positively recites that in order to provide “a quick response” the MFTS (Examiner alleges is “remote management server”) retrieves the balance of bills and payment sources (Examiner alleges is “processing the transaction”) BEFORE the user selects the “Next” button (Examiner alleges is “transaction purchase request”) in paragraph 342 . . . . In contrast, Applicant teaches that the transaction is processed AFTER the user sends a transaction purchase request as reflected in amended independent claims recite in part[:] receiving, at the remote management server, a transaction purchase request from the non-browser based application generated screen [. . .] receiving, at the remote management server, a transaction verification from a transaction server which processes the transaction using a payment method that corresponds to the identification code associated with the user. Appeal Brief 14–15. We do not find Appellant’s argument persuasive because Rackley discloses “after the user enters a valid password or PIN, the login is validated by the MFTS system 18” and [a]t this point, the MFTS can start to gather information for the user prior to the selection of any Mobile Wallet options.” Rackley ¶ 342 (Emphasis added). The information can be gathered by the MFTS prior to the selection of a Mobile Wallet option by Appeal 2019-001705 Application 14/253,607 9 the user but the transaction is not processed until after the user selects a Mobile Wallet option. See Rackley ¶ 342. Appellant further argues: However, since [Clisham] positively recites that the transactions is processed AFTER the client sends a buy request (Examiner alleges is “transaction purchase request”) in paragraph 103 and Figure 13 relied upon by the Examiner, the combination of Rackley and [Clisham] would require an impermissible redesign of Rackley to not process the transaction until after receiving the buy request. Appeal Brief 16. We do not find Appellant’s argument persuasive because there is no evidence in either Rackley and/or Clisham that such a modification to Rackley would be impermissible or discouraged. See In re Kahn, 441 F.3d at 990 (“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”). Appellant states, “[the] [i]ndependent claims recite in part, ‘receiving, at the remote management server, a transaction verification from a transaction server which processes the transaction using a payment method that corresponds to the identification code associated with the user, wherein the transaction verification indicates that the transaction has processed.’” Appeal Brief 18–19. The Examiner finds Rackley teaches the disputed transaction verification limitation of the independent claims. See Final Action 10 (citing Rackley ¶¶ 124, 244, 246, 362, 366–368). Appellant argues that because Clisham discloses “[t]he server 504, in response to the buy request 530, will transmit a success message 535 including a session ID Appeal 2019-001705 Application 14/253,607 10 or a failure message 535 if there is an error,” “the combination of Rackley and [Clisham] would require an impermissible redesign of Rackley to not send the payment confirmation message (Examiner alleges is ‘transaction verification’) from the financial institution (Examiner alleges is ‘transaction server’) to the MFTS (Examiner alleges is ‘remote management server’.” Appeal Brief 20 (citing Clisham ¶ 103). Again, we do not find Appellant’s argument persuasive because there is no evidence in either Rackley and/or Clisham that such a modification to Rackley would be impermissible or discouraged. See Kahn, 441 F.3d at 990. Appellant further argues the Rackley/Clisham combination fails to disclose “[r]eceiving shopping list before user authentication Claim element.” Appeal Brief 22 (emphasis omitted); see Claim 1 (“sending a list of products from a remote management server to a non-browser based application generated screen for display on a mobile device using the non- browser based application generated screen”). The Examiner finds Clisham discloses, “sending a list of products from a remote management server to a non-browser based application generated screen for display on a mobile device using the non-browser based application generated screen; [See paragraphs 0043, 0046, 0093, 0094, 0100-0102].” Final Action 11; see Appeal Brief 23. Appellant contends the “sending a list of products” claim limitation in conjunction with the following limitations “teach[] that the user is authenticated[,] not the mobile device”: receiving, at the remote management server, user input login information including an identification code associated with the user from the non-browser based application generated screen, wherein the non-browser based application generated screen receives the user input login information via a mobile device display of the mobile device; Appeal 2019-001705 Application 14/253,607 11 upon receipt of the user input login information, authenticating, at the remote management server, a user associated with the user input login information. Appeal Brief 24. Appellant conjectures: Clisham’s design is different from a security, scalability, performance and cost perspective. For example, [i]f the device (allegedly ‘mobile device’) is lost/stolen, anyone can order products, since there is no user authentication and the device authentication simply consists of transmitting an IP and MAC address in the clear, unencrypted to the server. Thus, making it less secure. Appeal Brief 24–25. However, Appellant admits: Rackley teaches that the mobile device is authenticated by either encrypting the MPI (Examiner alleges is “transaction purchase request”) with the mobile telephone number or with a digital key that is used to sign all communication between the mobile device and the server. In the latter case Rackley positively recites that this “strongly authenticates the mobile client to the server and dissuades attempts to impersonate or spoof the mobile client . . .[”] and that “such a methodology affords stronger security than online banking sites that require only a username and password for access, which are much easier to compromise than digital keys” in paragraph 260 . . . relied upon by the Examiner. Appeal Brief 25; see Advisory Action mailed March 12, 2018. The Examiner finds Rackley discloses: Once the device is ready for use, a user can access the features/functionalities of the mobile wallet application upon user authentication using a PIN or password. Paragraphs 0326, 0327 and 0342. The digital certificate/key stored on the mobile device is used as additional security measure to Appeal 2019-001705 Application 14/253,607 12 authenticate/verify the mobile device used to send messages (including user PIN) to the MFTS. Paragraphs 0260 and 0266. Final Action 21. Appellant contends, [i]n contrast, Clisham teaches simply sending in the clear without any encryption the MAC address and IP address to the server to authenticate the client device which make’s Clisham’s invention prone to MAC and IP spoofing described above, particularly since multiple client devices can use the system as [Clisham] teaches in paragraph 113. Appeal Brief 24. Appellant concludes, “Rackley and [Clisham]’s authentication are NOT only not analogous, but the combination of Rackley and [Clisham] would require an impermissible redesign of Rackley to not authenticate the user nor to encrypt all communication between the mobile device and server or encrypt the MPI which includes the mobile telephone number.” Appeal Brief 28. We do not find Appellant’s arguments persuasive because there is no evidence in either Rackley and/or Clisham that such a modification to Rackley would be impermissible or discouraged. See Kahn, 441 F.3d at 990; see also In re Fulton, 391 F.3d at 1201 (noting that merely disclosing more than one alternative does not teach away from any of these alternatives if the disclosure does not criticize, discredit, or otherwise discourage the alternatives). Also, we note: The 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 references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Appeal 2019-001705 Application 14/253,607 13 In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, Appellant does not point to any evidence of record that the combination would be “uniquely challenging or difficult for one of ordinary skill in the art” or “represent[] an unobvious step over the prior art.” Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007)). The Examiner’s findings are reasonable because the skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” because the skilled artisan is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21. We also do not find Rackley and Clisham non-analogous as Appellant’s argue. See Appeal Brief 28; see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”). We find both Rackley and Clisham involve communicating electronic content over a wireless network from a content source to a user’s device. See Rackley’s Abstract; see also Clisham’s Abstract. Accordingly, we sustain the Examiner’s obviousness rejection of independent claims 1, 11, and 20, argued together. See Appeal Brief 30. We also sustain the Examiner’s obviousness rejections of claims 6, 16, 21–33, 35, 36, 40, 41, 44, 45, 49, 50, and 52–63, not argued separately. See Appeal Brief 30 (“all depend, directly or indirectly from Claim 1.”). Appeal 2019-001705 Application 14/253,607 14 CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 41, 50, 54, 60 112 Written Description 41, 50, 54, 60 1, 6, 11, 16, 20–33, 35, 36, 40, 41, 44, 45, 49, 50, 52–62 112 Indefiniteness 1, 6, 11, 16, 20–33, 35, 36, 40, 41, 44, 45, 49, 50, 52–63 1, 6, 11, 16, 20–22, 25– 28, 30, 31, 35, 36, 40, 41, 44, 45, 49, 50, 52, 55–58, 61– 63 103 Rackley, Clisham 1, 6, 11, 16, 20–22, 25–28, 30, 31, 35, 36, 40, 41, 44, 45, 49, 50, 52, 55–58, 61–63 23 103 Rackley, Hayashi 23 24, 29 103 Rackley, Clisham, Bemmel 24, 29 32, 33 103 Rackley, Clisham, Ruano 32, 33 53, 59 103 Rackley, Clisham, Gobburu 53, 59 54, 60 103 Rackley, Clisham, Gautier 54, 60 Overall Outcome 1, 6, 11, 16, 20–33, 35, 36, 40, 41, 44, 45, 49, 50, 52–63 Appeal 2019-001705 Application 14/253,607 15 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation