MasterCard International Incorporated

Patent Trials and Appeals Board

Apr 15, 2021

2020006498 (P.T.A.B. Apr. 15, 2021)

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.
15/334,735 10/26/2016 Ian David Alan Maddocks P02942-US-
UTIL (M01.421)
3946
125619 7590 04/15/2021
Mastercard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
KUO, CHENYUH
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
04/15/2021 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):
colabella@bmtpatent.com
martin@bmtpatent.com
szpara@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IAN DAVID ALAN MADDOCKS,
SIMON PHILLIPS, DUNCAN GARRETT, and
JAMES JOHN ANDERSON
____________

Appeal 2020-006498
Application 15/334,735
Technology Center 3600
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE1
Ian David Alan Maddocks, Simon Phillips, Duncan Garrett, and
James John Anderson (Appellant2) seek review under 35 U.S.C. § 134(a) of
a final rejection of claims 1, 2, 4–11, 17, 18, 20, and 21, the only claims

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed June 12, 2020) and Reply Brief (“Reply Br.,” filed September 17,
2020), and the Examiner’s Answer (“Ans.,” mailed July 31, 2020), and Final
Action (“Final Act.,” mailed January 31, 2020).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Mastercard International Incorporated (Appeal Br. 2).

Appeal 2020-006498
Application 15/334,735

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pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
The Appellant invented a payment-enabled mobile device that may
detect that it is near a transit system terminal. Specification 3:15–17.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method of operating a payment-enabled mobile device, the
method comprising:
[1] receiving a polling signal or signals by the mobile device;
[2] detecting,
by the mobile device, via said receiving of the
polling signal or signals,
that the mobile device is in proximity to a non-retail
contactless transaction terminal;
[3] in response to the detected proximity of the non-retail
contactless transaction terminal,
bypassing a user verification feature of an application
program in the mobile device while operating the
application program
by performing a transaction with the non-retail contactless
transaction terminal.
The Examiner relies upon the following prior art:
Name Reference Date
Smets US 7,717,346 B2 May 18, 2010
Wilhelm US 2008/0156873 A1 July 3, 2008
Phillips US 2014/0209673 A1 July 31, 2014
EMVCo, EMV Contactless Communication Protocol Specification
Book D, EMV Contactless Specifications for Payment Systems, v. 2.6,
March 2016
Appeal 2020-006498
Application 15/334,735

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ISO/IEC, Identification cards - Contactless integrated circuit(s) cards -
Proximity cards-Part 3: Initialization and anticollision, ISO/IEC 14443-
3, First Ed., February 1, 2001.

Claims 5, 6, 7, and 21 stand rejected under 35 U.S.C. § 112(a) as
lacking a supporting written description within the original disclosure.
Claims 2, 8, and 9 stand rejected under 35 U.S.C. § 112(b) as failing
to particularly point out and distinctly claim the invention.
Claims 1, 2, 8, 9, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Wilhelm and Phillips.
Claims 4 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilhelm, Phillips, and Smets.
Claims 5–7 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilhelm, Phillips, Smets, EMVCo, and ISO/IEC.
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilhelm, Phillips, and EMVCo.
ISSUES
The issues of written description matter turn primarily on whether the
recitation of polling cycles was adequately supported by industry standards
known to those of ordinary skill.
The issues of indefiniteness matter turn primarily on whether the
claim scope is discernable to one of ordinary skill.
The issues of obviousness turn primarily on whether the applied art
adequately describes the claim limitations.
Appeal 2020-006498
Application 15/334,735

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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Wilhelm
01.Wilhelm is directed to automatic fare collection (AFC) systems
and methods for transit systems. Wilhelm para. 18.
02. Wilhelm describes an AFC system based on the use of RFID-
enabled contactless payment cards issued by commercial card
issuers. The AFC system includes RFID-enabled card readers
disposed at entrances to the transit system pay areas and a transit
payment platform. The RFID-enabled card readers may be
interfaced with a terminal or station controller. The AFC system
further includes a transit payment platform or application designed
to conduct transaction payment authorization, clearing and
settlement processes over electronic networks common in the
payment-by-card industry. A customer desiring to gain access to
gated pay areas of the transit system presents his or her contactless
payment card to be read by the RFID-enabled card reader for fare
payment. The card reader/terminal controller evaluates the read
contactless payment card data against a list of hot cards and
accordingly grants or denies the customer access to gated pay
areas of the transit system. A card transaction record is prepared
and communicated to the transit payment platform for payment
authorization, clearing and settlement. For single fare rides, the
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Application 15/334,735

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transaction payments are charged to the customer’s card account
with the card issuer. Wilhelm para. 19.
Phillips
03.Phillips is directed to interacting with a contactless-payment-
enabled mobile telephone, with particular emphasis on enhancing
speed and convenience of purchase transactions using such a
mobile telephone. Phillips para. 7.
04. Phillips describes an electronic wallet function in a mobile
device that is opened by having the mobile device read a message
from a passive RFID tag. The customer may tap the mobile
device on the RFID tag, so that the mobile device reads the RFID
tag. In response to the message received by the mobile device
from the RFID tag, the mobile device opens an electronic wallet
function, thereby allowing the user to select a particular payment
card account number for the present transaction, and to enter
his/her PIN. All this may occur before the user arrives at the POS
terminal. That is, the RFID tag may be located upstream along the
queue for the checkout counter. In this way, once the user arrives
at the POS terminal, he/she has already selected the account and
entered his/her PIN and only needs to tap the mobile device on the
contactless reader at the POS terminal in order to consummate the
transaction. Phillips para. 17.
05. Phillips describes a mobile telephone/contactless payment device
with a payment circuit. The payment circuit allows the mobile
telephone to serve as a contactless payment device and allows the
mobile telephone to read RFID tags. Phillips para. 31.
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06. Phillips describes the payment circuit as having an RF reader
coupled to an antenna and control circuit. The RF reader is under
control by the control circuit 502 and operates in accordance with
conventional principles. The RF reader operates in accordance
with a conventional standard for short distance RF
communication, such as the NFC standard. Phillips para. 35.
ANALYSIS
Claims 5, 6, 7, and 21 rejected under 35 U.S.C. § 112(a) as lacking a
supporting written description within the original disclosure
The Examiner rejects the claims based on recitations concerning
polling cycles for electronic payment applications that are not explicitly
described in the Specification. Final Act. 8–9. We are persuaded by
Appellant’s argument that one of ordinary skill understood that such polling
cycles were well understood and documented by industry standards. Appeal
Br. 6–7.
Claims 2, 8, and 9 rejected under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the invention
As to claim 2, Examiner rejects the claim based on determining that
“[i]t is unclear whether the claim scope encompasses only the mobile
device and the processor, or whether it encompasses the non-retail
contactless transaction terminal as well.” Final Act. 10. We are persuaded
by Appellant’s argument that the “claim merely further defines the
‘detecting’ and ‘performing a transaction’ functions of claim 1, by
specifying the type of non-retail contactless transaction terminal with which
the mobile device is interacting.” Appeal Br. 7.
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As to claims 8 and 9, Examiner rejects the claims based on
determining that “[i]t is unclear whether the claim scope encompasses
only the mobile device or whether it encompasses a transit system as
well.” Final Act. 11. We are persuaded by Appellant’s argument that
“[c]laim 8 further defines the transaction recited in claims 1/2, and as such
does not cause any doubt as to the scope of the claims.” Appeal Br. 7.
Claims 1, 2, 8, 9, 17, and 18 rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilhelm and Phillips
We are not persuaded by Appellant’s argument that “the transaction
taught by Phillips is a ‘two tap’ transaction with user verification action by
the user occurring after the first tap and before the second tap. Phillips’s
transaction process incorporates user verification, and does not bypass user
verification as specified in claim 1.” Appeal Br. 9. See FF 04. Appellant
conflates the overall system Phillips describes with the actual claim 1
recitation.
The limitation at issue is “in response to the detected proximity of the
non-retail contactless transaction terminal, bypassing a user verification
feature of an application program in the mobile device while operating the
application program by performing a transaction with the non-retail
contactless transaction terminal.” The recited triggers are “the detected
proximity of the non-retail contactless transaction terminal” and “performing
a transaction with the non-retail contactless transaction terminal.” These
two must trigger “bypassing a user verification feature of an application
program in the mobile device while operating the application program.”
Phillips detects such proximity twice, as Appellant admits. The claim
does not exclude anything corresponding to the initial detection in Phillips.
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As claim 1 recites the transition phrase “comprising,” this allows Phillips’s
second detection that satisfies the remainder of the claim to remain within
the scope of claim 1. On the second detection in Phillips, when a transaction
is performed, the step of requesting a PIN that was executed in the earlier
detection is now bypassed. Notably, claim 1 does not require this bypass on
every detection, just on some detection that is part of a transaction operation.
Claims 4 and 20 rejected under 35 U.S.C. § 103(a) as unpatentable over
Wilhelm, Phillips, and Smets
These claims depend from claims 1 and 17, and are not argued
separately.
Claims 5–7 and 21 rejected under 35 U.S.C. § 103(a) as unpatentable over
Wilhelm, Phillips, Smets, EMVCo, and ISO/IEC
As to claim 5, we are not persuaded by Appellant’s argument that
ISO/IEC does not describe two wake up signals. Appeal Br. 9–10. As
Examiner answers, the claims and Specification “[do not] require that EMV
type B polling signals necessarily be defined as Wake Up Type B polling
signals.” Ans. 9.
As to claim 7, we are persuaded by Appellant’s argument that
ISO/IEC does not describe the Type B polling signal having the AF/value
that is not “00” immediately preceding the EMV Type B polling signal
having the AF/ value “00” in a polling cycle. Appeal Br. 10. Examiner only
determines that this may be possible, not that this is described. Ans. 10–11.
Claims 10 and 11 rejected under 35 U.S.C. § 103(a) as unpatentable over
Wilhelm, Phillips, and EMVCo
These claims depend from claim 1, and are not argued separately.
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CONCLUSIONS OF LAW
The rejection of claims 5, 6, 7, and 21 under 35 U.S.C. § 112(a) as
lacking a supporting written description within the original disclosure is
improper.
The rejection of claims 2, 8, and 9 under 35 U.S.C. § 112(b) as failing
to particularly point out and distinctly claim the invention is improper.
The rejection of claims 1, 2, 8, 9, 17, and 18 under 35 U.S.C. § 103(a)
as unpatentable over Wilhelm and Phillips is proper.
The rejection of claims 4 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Wilhelm, Phillips, and Smets is proper.
The rejection of claims 5, 6, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Wilhelm, Phillips, Smets, EMVCo, and ISO/IEC is
proper.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over Wilhelm, Phillips, Smets, EMVCo, and ISO/IEC is improper.
The rejection of claims 10 and 11 under 35 U.S.C. § 103(a) as
unpatentable over Wilhelm, Phillips, and EMVCo is proper.

Appeal 2020-006498
Application 15/334,735

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CONCLUSION
The rejection of claims 1, 2, 4–6, 8–11, 17, 18, 20, and 21 is affirmed.
The rejection of claim 7 is reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
5, 6, 7, 21 112(a) Written
Description
5, 6, 7, 21
2, 8, 9 112(b) Indefiniteness 2, 8, 9
1, 2, 8, 9, 17,
18
103 Wilhelm, Phillips 1, 2, 8, 9, 17,
18

4, 20 103 Wilhelm, Phillips,
Smets
4, 20
5–7, 21 103 Wilhelm, Phillips,
Smets, EMVCo,
ISO/IEC
5, 6, 21 7
10, 11 103 Wilhelm, Phillips,
EMVCo
10, 11
Overall Outcome 1, 2, 4–6, 8–
11, 17, 18, 20,
21
7

No time 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) (2011).

AFFIRMED–IN–PART