Mark Butsch et al.

Patent Trials and Appeals Board

May 4, 2020

2019006862 (P.T.A.B. May. 4, 2020)

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.
14/861,000 09/22/2015 Mark Butsch 23693-30376 7835
38642 7590 05/04/2020
WILEY HORTON
215 SOUTH MONROE STREET
2ND FLOOR
TALLAHASSEE, FL 32301
EXAMINER
MUTSCHLER, JOSEPH M
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
05/04/2020 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 MARK BUTSCH, JON HOFFMAN, and STEPHEN POLLOCK
Appeal 2019-006862
Application 14/861,000
Technology Center 3600

Before JAMES R. HUGHES, LINZY T. McCARTNEY, and
JASON J. CHUNG, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
final rejection of claims 1, 4, 6, 7, 10, 11, 14, 16, 17, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the real party in interest as Syn-Tech Systems, Inc.
Appeal Brief 1, filed March 25, 2019 (Appeal Br.).
Appeal 2019-006862
Application 14/861,000

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BACKGROUND
This patent application concerns “a system allowing a user to
automate payment for a dispensing operation with a hand-held
communication device such as a smart phone.” Specification 2, filed
September 22, 2015. Claim 1 illustrates the claimed subject matter:
1. A fuel payment system for allowing a user to use a fuel
dispenser, comprising:
a. a fuel dispenser;
b. a pump control module configured to monitor an
amount of fuel dispensed by said fuel dispenser and control
dispensing of said fuel by said fuel dispenser;
c. a remote server configured to receive and process
payment transactions;
d. a graphic containing a machine readable code, said
graphic located proximate said fuel dispenser;
e. wherein said pump control module includes a
limited-range radio frequency transceiver;
f. said pump control module configured to operate in
a non-discoverable mode, wherein said pump control module
will only provide communication access to said pump control
module in response to a defined sequence transmitted by a
portable electronic device to said transceiver in said pump
control module;
g said portable electronic device, including
i. a processor,
ii. a memory associated with said processor,
iii. a camera, and
iv. a radio frequency transceiver;
h. a software application running on said processor in
said portable electronic device;
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i. said software application configured to store
payment information for said user in said memory associated
with said processor;
j. said camera being configured to capture said
readable code in said graphic on said dispenser;
k. said software application configured to take said
captured image of said machine readable code and determine
therefrom said defined sequence to be used to contact said
limited-range radio frequency transceiver in said pump control
module, wherein said defined sequence is required to establish
communication between said portable electronic device and said
pump control module;
l. said defined sequence only being available within
said portable electronic device following said capture of said
readable code in said graphic, with said defined sequence not
being stored in memory in said portable electronic device
following a completion of said dispensing of said fuel;
m. said software application configured to use said
transceiver in said portable electronic device to transmit said
defined sequence to said transceiver in said pump control module
to establish a communication link with said transceiver in said
pump control module, and thereafter transmit said payment
information over said communication link to said pump control
module;
n. said pump control module being configured to
transmit said payment information to said remote server;
o. said remote server being configured to receive said
payment information from said pump control module and use
said payment information to process a payment transaction for
said user; and
p. said payment information not being stored by said
remote server after completion of said payment transaction for
said user.
Appeal Br. 22–24.
Appeal 2019-006862
Application 14/861,000

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REJECTIONS2
Claims 35 U.S.C. § Reference(s) 
1, 11 103 Payne,3 Shalunov,4 Wu,5
Barillaud6
4, 14 103 Payne, Shalunov, Wu, Barillaud,
Official Notice
6, 16 103 Payne, Shalunov, Wu, Barillaud,
Bonk7
10, 20 103 Payne, Shalunov, Wu, Barillaud,
Official Notice, Williams8
7, 17 103 Payne, Shalunov, Wu, Barillaud,
Williams
DISCUSSION
We have reviewed the Examiner’s rejections and Appellant’s
arguments, and Appellant has not persuaded us that the Examiner erred. As
consistent with the discussion below, we adopt the Examiner’s reasoning,
findings, and conclusions on pages 2–16 of the Final Office Action mailed

2 The Office has revised its guidance for evaluating subject matter eligibility
under 35 U.S.C. § 101. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).
If prosecution continues, we leave it to the Examiner to determine whether
the claim passes muster under § 101 in accordance with the Revised
Guidance or is instead directed to, for example, certain methods of
organizing human activity such as commercial interactions. Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure § 1213.02.
3 Payne et al. (US 2008/0308628 A1; December 18, 2008).
4 Shalunov et al. (US 2013/0091288 A1; April 11, 2013).
5 Wu et al. (US 2016/0277506 A1; September 22, 2016).
6 Barillaud et al. (US 9,280,771 B2; March 8, 2016).
7 Bonk et al. (US 2015/0032558 A1; January 29, 2015).
8 Williams et al. (US 2015/0106196 A1; April 16, 2015).
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July 23, 2018 (Final Act.), and pages 3–7 of the Examiner’s Answer mailed
May 14, 2019 (Ans.).
Appellant states “that the argument listed as [S]ection VI(A) . . . is the
only argument that needs to be considered to resolve this appeal” and thus
“the Board need only consider the question of whether claim 1 and claim 11
are rendered obvious by the combination of Payne, Shalunov, Wu[,] and
Barillaud.” Appeal Br. 12. Appellant argues claims 1 and 11 together, so as
permitted by 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal for this
ground of rejection based on claim 1.
Appellant asserts that “[t]he primary factual question is whether
Payne discloses the limitation of a remote server not storing any payment
information,” that is, limitation p. Appeal Br. 11. Appellant contends that
“[t]he cited section of Payne actually says nothing about whether the remote
server stores payment information.” Appeal Br. 15. But the Examiner found
that Barillaud teaches limitation p, not Payne.9 See Final Act. 10. We thus
find unpersuasive Appellant’s argument that Payne does not teach this
subject matter.
Appellant then states that “[t]he secondary factual question is whether
Shalunov discloses the limitation of using a captured image to permit
communication of Bluetooth devices operating a non-discoverable mode,”
which presumably refers to limitations f and k. Appeal Br. 11; see also
Appeal Br. 20–21. Appellant asserts that Shalunov discloses a system in

9 Appellant does not appear to dispute this finding about Barillaud. See
Appeal Br. 20 (“Barillaud is cited as disclosing a remote payment system
when – following the transaction – none of the user’s information is stored
on the server. . . . There is no dispute regarding the fact that Barillaud
discloses this one element[].”).
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which “Bluetooth devices . . . provide their MAC addresses to [a] beacon”
and then “request[] . . . MAC addresses from the beacon” when the devices
need to communicate with other Bluetooth devices. Appeal Br. 17–18.
According to Appellant, Shalunov also discloses that instead of using a
beacon to obtain MAC addresses, a “first device asks [a] second device for
all [the] MAC addresses the second device is aware of.” Appeal Br. 18.
Appellant contends that these approaches “defeat[] the security advantages
of operating in non-discoverable mode.” Appeal Br. 18.
We find these arguments unpersuasive. The Examiner did not find
that Shalunov discloses limitations f and k as suggested by Appellant.
Instead, the Examiner concluded that these limitations would have been
obvious given the combined teachings of Payne and Shalunov. See Final
Act. 4–9. Payne discloses a “retail fueling environment” in which a customer
uses her cellular phone to take a picture of a mobile code on the front of a
fuel dispenser. See, e.g., Payne ¶¶ 10–11, 81–82, Fig. 3. The phone extracts
identifiers for the fuel dispenser and the retail fueling environment from the
picture of the mobile code and then, in some embodiments, uses Bluetooth
to communicate with a control system of the fuel dispenser to initiate a
transaction. See, e.g., Payne ¶¶ 10–11, 66–67, 97–98, Fig. 6; see also Appeal
Br. 14 (stating that Payne’s “application passes along information derived
from the graphical image to . . . a controller within [the] dispenser”); Reply
Brief 1, filed August 13, 2019 (Reply Br.) (stating that Payne’s “smartphone
then passes the dispenser’s identity on to a controller on the dispenser
itself”). The Examiner found that this retail fueling environment teaches a
“pump control module” and a “software application configured to take said
captured image of said machine readable code and determine therefrom said
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defined sequence to be used to contact said limited-range frequency
transceiver in said pump control module” as recited in limitations f and k but
does not teach the rest of these limitations. See Final Act. 4–7.
As for Shalunov, the Examiner found that Shalunov teaches allowing
communication between Bluetooth devices in non-discoverable mode using
a MAC address as a “defined sequence” in order to skip the first two steps of
the pairing process. See Final Act. 7–8; see also Shalunov ¶ 26 (“[T]he
initiating device transmits a request to the target device using the target
devices’ [sic] MAC address. The target device that receives a request with
its MAC address would respond to the request, even if it is not in a
discoverable mode.” (emphases added)). The Examiner concluded that it
would have been obvious to incorporate these teachings into Payne to arrive
at limitations f and k because doing so would “enhance security” and
involve “the simple substitution of one known element for another
producing a predictable result.” See Final Act. 8–9.
Notably, the Examiner did not modify Payne to include Shalunov’s
method of using a beacon or device-to-device communication to supply
MAC addresses. See Final Act. 4–9. So even if this method “defeats the
security advantages of operating in non-discoverable mode” as asserted by
Appellant, Appellant has not shown that the Examiner’s combination of
Payne and Shalunov would suffer from this drawback.10 And as discussed
above, the Examiner did not find that Shalunov alone “discloses the
limitation of using a captured image to permit communication of Bluetooth

10 In any case, Shalunov suggests that operating a Bluetooth device in non-
discoverable mode would still have security advantages. See, e.g., Shalunov
¶ 13.
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devices operating a non-discoverable mode” as indicated by Appellant.
Appellant therefore has not persuaded us that the Examiner erred.
For much the same reason, we find unpersuasive Appellant’s
contention in the Reply Brief that “Shalunov defeats [the] security scheme”
recited in limitations f and j–l. Reply Br. 2. This contention rests on
Appellant’s assertions about Shalunov’s method of using a beacon or
device-to-device communication to provide MAC addresses, see Reply Br.
2–3, but as noted above, the Examiner’s combination does not incorporate
this aspect of Shalunov into Payne’s system. Because Appellant’s argument
that “combining Shalunov with Payne makes no sense because Shalunov
teaches a system to defeat security by voluntarily recording and
disseminating the defined sequence” also relies on these assertions, Reply
Br. 2–3, we find this argument unpersuasive as well.
Finally, Appellant asserts that “[a] third factual question is whether
Wu discloses the limitation of permitting communication directly between
smart phones.” Appeal Br. 11; see also Appeal Br. 19 (asserting that Wu
“does not actually appear to permit communication directly between the
smartphones”). Appellant has not identified a claim limitation that requires
permitting direct communication between smart phones. The Examiner
found that Wu teaches the subject matter recited in limitation l, see Final
Act. 9–10, and Appellant has provided no persuasive evidence or reasoning
that shows that the Examiner erred in this respect. We thus find this
argument unpersuasive.
CONCLUSION
We have considered Appellant’s remaining arguments and find them
inadequately presented, unpersuasive, or both. For at least the above reasons,
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Application 14/861,000

9
Appellant has not persuaded us that the Examiner erroneously rejected claim
1 under § 103. We therefore sustain this rejection. The following table
summarizes our decision for claims 1, 4, 6, 7, 10, 11, 14, 16, 17, and 20, the
claims before us on appeal:

Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 11 103 Payne, Shalunov, Wu, Barillaud 1, 11
4, 14 103
Payne, Shalunov, Wu,
Barillaud, Official
Notice
4, 14
6, 16 103 Payne, Shalunov, Wu, Barillaud, Bonk 6, 16
10, 20 103
Payne, Shalunov, Wu,
Barillaud, Official
Notice, Williams
10, 20
7, 17 103 Payne, Shalunov, Wu, Barillaud, Williams 7, 17
Overall
Outcome
1, 4, 6, 7,
10, 11, 16,
17, 20

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED