Michelle Fisher

Patent Trials and Appeals Board

Jan 7, 2021

2019005639 (P.T.A.B. Jan. 7, 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.
14/576,454 12/19/2014 Michelle Fisher BLZMP0011C1 5198
12120 7590 01/07/2021
Michelle Fisher
2930 Domingo Ave
Suite 123
Berkeley, CA 94705
EXAMINER
KELLEY, STEVEN SHAUN
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
01/07/2021 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):
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 2019-005639
Application 14/576,454
Technology Center 2600

Before MARC S. HOFF, STEVEN M. AMUNDSON, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9–16, and 18–32. Appeal Br.
41–47 (Claims App.). Claims 8 and 17 have been cancelled. Id. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 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 Michelle
Fisher. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed invention generally relates to conducting a near field
communication (“NFC”) transaction using a server. Appeal Br. 2.
Appellant states that certain prior implementations are typically tied to a
specific platform, for example, the use of NFC codes are only usable with
NFC readers. Spec. ¶ 2. Further, conventional wireless mobile devices
generally have a very limited ability to be used in transactions. Id.
Independent claim 1 is illustrative:
1. A method for conducting a Near Field Communication
(NFC) transaction, the method comprising:
maintaining, at a server, a payment method;
receiving at the server, an identification code associated with a
user from an NFC terminal over a second communication
channel that is different than a first communication channel,
wherein the identification code associated with the user is
received from a secure element memory via a secure element
transceiver using a secure element application in response to a
near field communication inductive signal by the NFC terminal
when the secure element is in close proximity to the NFC
terminal which causes a secure element processor to execute the
secure element application configured to use an NFC protocol
and transmit the identification code associated with the user to
the NFC terminal memory over the first communication
channel configured to use the NFC protocol, wherein the
identification code associated with the user is maintained in the
secure element memory, the secure element memory, the secure
element processor, and the secure element transceiver are
included in a secure element that is permanently embedded
within the body of a mobile device, the mobile device
comprising a mobile device processor, a mobile device
memory that stores a non-browser based application with a
graphical user interface, and a mobile device wireless
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transceiver configured to use at least one of GSM, CDMA, or
WIFI;
processing the NFC transaction at the server using the payment
method that corresponds to the identification code of the user
from the NFC terminal and
after the NFC transaction has been processed by the server,
sending from the server a digital artifact to the non-browser
based application running on the mobile device.

REFERENCES
Name Reference Date
Rosenberg US 2004/0235450 A1 Nov. 25, 2004
Ohara US 2004/0267667 A1 Dec. 30, 2004
Park US 2005/0143051 A1 June 30, 2005
Fernandes et al.
(Fernandes)
US 2006/0000900 A1 Jan. 5, 2005
Yeager US 2007/0075133 A1 Apr. 5, 2007
Nystrom et al.
(Nystrom)
US 2009/0075592 A1 Mar. 19, 2009

REJECTIONS2
Claim 20 is rejected under 35 U.S.C. § 101 as failing to fall within
one of the four statutory categories of subject matter. Final Act. 2.
Claims 1–7, 9–16, and 18–32 are rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of either Rosenberg or Yeager in view
of Nystrom and Ohara. Id.

2 The Examiner has maintained all rejections made in the Final Action.
Ans. 3.
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Claims 27 and 32 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of either Rosenberg or Yeager in view of
Nystrom and Ohara, further in view of Fernandes. Id. at 9.

OPINION
1. Statutory Subject Matter
The Examiner rejects claim 20 as being outside of the four
permissible categories of subject matter because the claimed “computer
readable medium” may be a transitory signal. Final Act. 2. The Federal
Circuit has found instructive an example in the MPEP stating, “a claim to a
computer readable medium that can be a compact disc or a carrier wave
covers a non-statutory embodiment and therefore should be rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.” Mentor
Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1294–1295 (Fed. Cir.
2017) (finding the challenged claims lacking patentable subject matter where
there are multiple covered embodiments, and not all covered embodiments
are patent eligible).
Appellant does not respond to this ground of rejection. See Appeal
Br. 4 (stating only that the rejection under 35 U.S.C. § 103(a) is to be
reviewed on appeal). Appellants have the burden on appeal to the Board to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985–86 (Fed. Cir. 2006). Arguments not presented in the Appeal Brief “will
be refused consideration by the Board” (i.e., are waived). 37 C.F.R.
§ 41.37(c)(1)(iv). Accordingly, we sustain the Examiner’s rejection of claim
20 under 35 U.S.C. § 101.
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2. Obviousness
We have reviewed the Examiner’s obviousness rejections (Final Act.
2–10, Ans. 3–6) in light of Appellant’s contentions that the Examiner has
erred (Appeal Br. 4–40, Reply Br. 3–35). We are not persuaded by
Appellant’s contention of Examiner error in rejecting claims 1–7, 9–16, and
18–32 under 35 U.S.C. § 103(a). Appellant argues claims 2–7, 9–16, and
18–32 for no other reasons than those argued against claim 1. Appeal Br.
40. Consequently, we begin with the arguments against claim 1.
a) “maintaining, at a server, a payment method”
The first issue raised by Appellant is whether the applied combination
of references teaches “maintaining, at a server, a payment method.” Appeal
Br. 9.
The Examiner finds the phrase “a method of payment” to be the “type
of account” associated with the user and/or associated with the user’s
number transmitted during the NFC transmission. Ans. 3. The Examiner
finds both Rosenberg and Yeager to teach this limitation, as discussed in
turn below.
i. Rosenberg
With respect to Rosenberg, the Examiner cites to Rosenberg’s servers
450, 470 that perform transaction processing. Final Act. 4 (citing Rosenberg
¶¶ 44, 52, 69–72). The Examiner finds Rosenberg to teach that the types of
accounts stored at the user’s financial server 470 are “credit,” “debit,” or
“cash,” and that these three types of accounts teach the claimed payment
methods. Ans. 3.
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Appellant first argues that Rosenberg teaches storing payment
information on a smartlink module and not on a server as claimed. Appeal
Br. 5. Appellant argues that Rosenberg transmits payment information from
a smartlink module to a POS terminal. Id. at 10 (citing Rosenberg ¶ 52).
Appellant contends that this argument is corroborated a prior Board
decision, dated 11/1/16, that cites to the same section of Rosenberg (¶ 52),
the prior decision stating, “the Examiner finds, and we agree, Figure 5 of
Rosenberg is directed to a method of transmitting payment information from
a smartlink module to a POS terminal.”3 Appellant further argues that
although “Rosenberg positively recites that the credit[,] debit, or cash card
are stored at the Buyer/User’s financial institution,” the Examiner instead
finds the claimed server to be met by Rosenberg’s “Sellers financial
institution [which] processes the transaction using [the payment method]
stored in the smartlink module.” Id. at 4.
We are not persuaded by this argument, because the fact that
Rosenberg describes payment information being transmitted between
smartlink and POS terminal does not show that Rosenberg’s server does not
also maintain that information. The Examiner finds that Rosenberg’s server
maintains that information because it stores specific types of the user’s
financial accounts. Ans. 3. With respect to which financial institution’s
server is being relied upon, the Examiner is relying on Rosenberg’s server
470 as the server that maintains the payment method. Id. Rosenberg’s

3 Appellant appears to be quoting from page 6 of the 11/1/16 Board decision
in U.S. Application number 12/592,581, identified as a related appeal.
Appeal Br. 2.
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server 470 is the “user’s financial institution server.” Rosenberg ¶ 59;
Fig. 4. Thus, the Examiner maps the claimed “server” to the “user’s
financial institution server.” Appellant appears to agree, stating, “Rosenberg
positively recites that the credit[,] debit, or cash card are stored at the
Buyer/User’s financial institution.” Reply Br. 4. Thus, we are not
persuaded that the Examiner errs by finding Rosenberg to maintain account
information at a server.
Appellant next argues that Rosenberg describes the identification code
stored in the smartlink module as being the identifying information of the
mobile device, and that this “identification code does not correspond to a
payment method or to being used in the NFC payment transaction to process
a payment using a payment method that corresponds to the identification
code of a user.” Appeal Br. 10 (citing Rosenberg ¶ 54) (emphasis omitted).
We are not persuaded by this argument. The Examiner finds
Rosenberg to teach the identification code as a credit card number or
account number associated with the user, being transmitted from the POS
terminal to the user’s financial server. Appeal Br. 5 (citing inter
alia Rosenberg ¶ 52), 11. We agree, because this is consistent with
Rosenberg’s description of the smartlink module that includes not only
unique identification of the smartlink module, but also, “possibly, the user’s
financial transaction information, e.g., a bank account number or credit card
number of the user.” Rosenberg ¶¶ 51–52. Appellant’s argument that
Rosenberg describes the identification code as the mobile device
information, while true, is not persuasive because the identification code is
described as also including the payment method information. Accordingly,
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we are not persuaded by Appellant’s arguments that the Examiner erred in
finding Rosenberg to teach or suggest “maintaining, at a server, a payment
method” as recited in claim 1.
ii. Yeager
With respect to Yeager, the Examiner finds Yeager’s account number,
transmitted in the NFC transaction, to correspond to a specific type account
that is stored on the server 320 of Yeager. Ans. 4 (citing Yeager ¶¶ 31–36);
Final Act. 4 (citing Yeager Fig. 6, ¶¶ 31, 36).
Appellant argues that Yeager’s credentials, “defined as ‘bank or credit
card information’” (which the Examiner finds to teach payment method), are
stored on the adapter, [and then] transferred to the server. Appeal Br. 13–14
(citing Yeager ¶ 22). Appellant further argues that Yeager’s public key is
used to decrypt the bank or credit card information, but is not, itself, that
information. Id. at 14–17; Reply Br. 15–22. Appellant further argues that
Yeager recites other information, not including bank or credit card
information, as the only information stored at server 320. Appeal Br. 17–19
(citing Yeager ¶ 31). Appellant argues that, like Rosenberg, the Examiner
maps the claimed server to a user’s financial institution. Reply Br. 9.
We are not persuaded by this argument. The Examiner states that
Yeager stores payment methods both on the server and on the smart adapter.
Final Act. 4, 11. Therefore, Appellant’s argument that Yeager stores
payment methods on the smart adapter is not persuasive to show that Yeager
does not also store payment methods on the server. We are not persuaded
that the Examiner errs in finding Yeager to recite bank or credit card
information being stored at server 320, because Yeager states that server 320
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includes a database that may include an account number. Yeager ¶ 31
(“information about user account 62, such as . . . account number 626, or
public account key”). Yeager’s Figure 6 shows server 320 containing
customer account information such as user name, password, public account
key, and secret key. Figure 6 further illustrates that the customer account
information travels in both directions between server 320 and host
350/adapter 100. Thus, Yeager supports the Examiner’s finding that Yeager
describes an account number stored on both server and host/adapter.
Accordingly, we are not persuaded by Appellant’s argument that Yeager
fails to teach or suggest the claimed “maintaining, at a server, a payment
method.”
iii. Additional Arguments
Appellant argues that Nystrom does not recite the credit card
information being stored at the server because it stores it at the smart
module. Appeal Br. 12. However, the Examiner relies on Rosenberg and
Yeager for these teachings, not Nystrom. Because we have found
Rosenberg or Yeager to teach this limitation, we are not persuaded of error
in the Examiner’s rejection by argument that Nystrom fails to teach this
limitation. See supra at 7–8.
Appellant argues that dependent claims “affirm the Applicant’s
invention,” quoting limitations of various dependent claims. Appeal Br. 11,
19. However, Appellant does not explain how the recitations of the
dependent claims support Appellant’s assertions of error in the Examiner’s
rejection. Consequently, we are not persuaded by Appellant’s argument.
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Appellant further argues that the Examiner errs in stating that
“Rosenberg and Yeager would not properly operate if the servers did not
store a ‘payment method’ associated with the user.” Appeal Br. 19
(emphasis omitted). Appellant asserts that such servers would operate
properly, based on what one having ordinary skill in the art would know. Id.
at 20. We are not persuaded by this for two reasons. First, Appellant has
not provided such a factual assertion in affidavit or declaration form, as
required by USPTO regulations. 37 C.F.R. § 1.132. Second, even if this
was shown to be true, and the Rosenberg and Yeager did not possess such an
inherent property, we have agreed the Examiner has shown explicit teaching
in Rosenberg and Yeager of the claimed maintaining, at a server, a payment
method. Supra at 9.
b) “receiving at the server, an identification code associated
with a user from an NFC terminal over a second
communication channel that is different than a first
communication channel claim element” and “processing the
NFC transaction at the server using the payment method
that corresponds to the identification code of the user from
the NFC terminal”
Appellant argues that neither Rosenberg nor Yeager teaches the
above-identified limitations (hereinafter, the “receiving” and “processing”
limitations). Appeal Br. 20–24.
i. Rosenberg
The Examiner finds Rosenberg to teach the “receiving” limitation by
“transmitting an identifier from the secure element to the POS and then to
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the servers (450, 470) for transaction processing and see section [0072],
which teaches displaying the SMS receipt.” Final Act. 4. The Examiner
further states that the credit card or account number is such an identifier
transmitted to the user’s financial server. Ans. 4. The Examiner further
explains that the identifier is transmitted from the smartlink device to the
POS device via the first NFC channel, wherein the first channel is the NFC
channel from the smartlink device to the POS channel, and then the
identifier is subsequently transmitted to the user’s financial server via the
wired Internet connection, which forms the second channel. Id.
Appellant argues that claim 1 requires an identification code, not a
payment method, to be transmitted. Appeal Br. 19–22. Appellant argues
that Rosenberg recites an identification code of a mobile device being stored
in the smartlink module that is used to authenticate the mobile device. Id. at
25–26. Appellant further argues that Rosenberg’s identification code “does
not correspond to a payment method much less used in the NFC payment
transaction to process a payment using a payment method that corresponds
to the identification code of a user.” Id. at 26 (emphasis omitted). Appellant
further argues that Rosenberg stores a bank account or credit card number in
the smartlink module, which is read by the POS terminal and transmitted to
the seller’s financial institution for processing. Id. Appellant further argues
that Rosenberg does not teach the claimed “processing” for the same
reasons. Id. at 25–30.
Appellant further argues,
Rosenberg’s sellers financial institution (Examiner alleges is
“server”) is programmed to receive a credit card number or
bank account number from the smart link module (Examiner
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alleges is “secure element”) via the POS and process the
transaction using a credit card or bank account number, But, the
users financial institution server is not programmed to process a
transaction much less receive an identification code from the
smartlink module (Examiner alleges is “secure element” via the
POS terminal).
Reply Br. 14 (emphasis omitted).
Appellant argues in the Reply Brief that Rosenberg’s seller’s financial
institution receives the identification code having a corresponding payment
method, but that the claim requires “the server” to perform the receiving and
processing. Reply Br. 13–14. Appellant argues that the Examiner has
mapped “the server” to the user’s financial institution, not the seller’s
financial institution, and that the user’s financial institution does not receive
or process the transaction. Id.
In summary, Appellant argues that the identification code
corresponding to a payment method in Rosenberg is sent to the seller’s
financial institution, not the user’s financial institution. Appellant argues
that the Examiner has mapped the claimed “the server” in claim 1 to the
user’s financial institution, and, therefore, Rosenberg does not teach an
identification code corresponding to a payment being received “at the
server” as claimed.
We are not persuaded by Appellant’s arguments. The Examiner
points to the receipt, by the user’s financial institution, of the user’s account
or credit card number (an identification code associate with a user) via the
POS device and ultimately through wired Internet connection. Ans. 4 (citing
Rosenberg ¶¶ 52, 69–72, 87, 93, 102, 105, 108). We determine that this
finding is supported by Rosenberg at the cited sections. Rosenberg
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describes “both the seller’s and the user’s financial institutions are
contacted,” piggy-backing the smartlink device-initiated signal to the user’s
financial institution on the signal to the seller’s financial institution.
Rosenberg ¶ 102. The signal sent by the smartlink device includes “the
credit card number and associated transaction information.” Rosenberg
¶ 87. The transaction may be performed by the “financial institution or
credit card company or some other third party,” and “whoever is doing the
transaction in the back end, and/or the seller, has the ability to send a
confirmation message . . . in the form of a digital receipt.” Id. ¶ 93. The
user’s financial institution may perform the transaction of receiving the
request to transfer money to the payee’s institution, transferring funds to the
payee’s financial institution, and signaling that the transaction has been
successful. Id. ¶ 108. Thus, Rosenberg supports the Examiner’s finding of
the user’s financial institution (“the server”) receiving a credit card number
“an identification code”) from the POS (“the NFC”) through a signal (“a
second communication channel) piggybacked on the signal from the NFC to
the seller’s financial institution (“that is different from the first
communication channel”), where the user’s financial institution (“the
server”) receives the request, approves it, transfers funds, and signals a
successful transaction (“processes the NFC transaction”). Accordingly, we
are not persuaded by Appellant’s argument.
ii. Yeager
The Examiner finds Yeager to teach the “receiving” limitation by
“Fig. 6 which explicitly shows the server 320, which stores the account
information etc., and see section [0036], which teaches displaying a
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transaction receipt and see section [0031], which transmits the account
number.” Final Act. 4.
Appellant does not specifically traverse the Examiner’s findings
concerning Yeager and the claimed “receiving” limitation. Appellant has
the burden on appeal to the Board to demonstrate error in the Examiner’s
position. Kahn, 441 F.3d at 985–86. Arguments not presented in the Appeal
Brief “will be refused consideration by the Board” (i.e., are waived). 37
C.F.R. § 41.37(c)(1)(iv). In the Reply Brief, Appellant points to the
arguments made in the Appeal Brief at pages 13–19. Reply Br. 16. These
arguments addressed whether Yeager taught or suggested the claimed
“payment method,” and we have addressed them, infra at 8–9. To the extent
that Appellant mentioned a lack of the “receiving” or “processing”
limitations in Yeager, Appellant merely stated the claim limitations and
alleged that Yeager did not teach those, but did not provide any reasoning
separate from the argument that no payment method was taught. Appeal Br.
13–19; see 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.”). Alternately, to the extent that Appellant
provides additional arguments in the Reply Brief concerning the “receiving”
limitation that were not raised in the Appeal Brief (Reply Br. 16–22), these
arguments are not responsive to the Examiner’s statement in the Answer
(“Appellant provides no arguments”) (Ans. 5), and no good cause has been
alleged or shown. Accordingly, these arguments are not considered.
37 C.F.R. § 41.41(b)(2). Accordingly, we are not persuaded of error in the
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Examiner’s finding that Yeager teaches or suggests the “receiving”
limitation.
With respect to the “processing” limitation, the Examiner finds this
limitation to be taught by Yeager’s server debiting the account for the
amount of the transaction. Ans. 5 (citing Yeager ¶¶ 31–36).
Appellant argues that Yeager does not teach the claimed “processing”
limitation, because Yeager’s host (mobile device) performs the transaction,
and not the server as claimed. Appeal Br. 32–33. Appellant further argues
that claim 1 requires the same server that maintains the payment method,
e.g., Yeager’s server 320, to process the NFC transaction. Reply Br. 24–29.
Appellant further argues that Yeager describes an embodiment where
transactions are sent to servers 840–842 and 850, but not to server 320 that
the Examiner relied upon in the rejection. Id. at 33–34. Appellant further
argues that the transactions sent to the servers 840–842 and 850 occur over
the internet and not through a NFC terminal as recited in claim 1. Id. at
33–35.
We are not persuaded of error. We agree that the Examiner’s finding
is supported by Yeager. In particular, the cited section of Yeager describes
Figure 9, and steps 902–920, as a transaction routine cycle involving various
associated servers such as bank account server 750. Yeager ¶¶ 34, 36.
Yeager describes the transaction routine cycle beginning at step 902 and
ending at step 920. Id. In step 916, the transaction amount is deducted by
the user account. Id. Although Appellant argues Yeager shows that this is
done by the third-party server, not the user’s financial server, Yeager only
describes steps 908–912, not step 914, as being performed by the third-party
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server. Yeager Fig. 9, ¶ 36. Appellant does not persuasively explain why
the updating of the user’s financial account by the transaction amount is
done by a third-party server rather than by the user’s financial account (e.g.,
bank) server. Consequently, Yeager supports the Examiner’s finding that
the user’s account server processes the transaction.
Further, we are not persuaded that the Examiner errs because the
processing transactions occur over the Internet and not via the NFC terminal.
Claim 1 requires “processing the NFC transaction at the server” where the
payment method “corresponds to” the code from the NFC terminal. Claim 1
requires that the transaction occurs via the NFC, but that the processing
occurs at the server. Consequently, we are not persuaded by Appellant’s
argument.
iii. Additional Arguments
Appellant argues that Nystrom does not teach the “receiving”
limitation. Appeal Br. 22–23. However, the Examiner relies on Rosenberg
and Yeager for these teachings, not Nystrom. Ans. 5. Because we have
found Rosenberg or Yeager to teach this limitation, we are not persuaded of
error in the Examiner’s rejection by argument that Nystrom fails to teach
this limitation. See supra at 10–11.
Appellant argues against the combination of Rosenberg, Nystrom, and
Yeager, that a combination of all three references would constitute an
impermissible redesign, and render Rosenberg and Nystrom unsatisfactory
for their intended purposes. Appeal Br. 23–24. However, the Examiner
does not propose a combination of Rosenberg with Yeager, instead finding
the claims obvious “over either one of Rosenberg or Yeager” in view of
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Nystrom and Ohara. Final Act. 2. Because Appellant argues against a
combination that is not applied in the Examiner’s rejections, we are not
persuaded of error.
Appellant further argues that Rosenberg appears to disclose only a
single channel, sending a receipt (the alleged “digital artifact”) by SMS, and
therefore does not teach that the receipt is sent over the same channel as the
information provided by the seller’s device to the seller’s financial
institution server. Appeal Br. at 14-15. However, claim 1 does not specify
that the digital artifact must be sent by any particular channel. Accordingly,
Appellant’s argument is not commensurate with the scope of claim 1, and is
not persuasive.
Appellant further argues differences in the way the NFC transaction is
processed; in Rosenberg, the bank account or credit card number is stored on
the mobile device and is not as secure if the mobile device is lost or
compromised, or its transmission is compromised, and requires updating and
thereby becomes more costly to maintain. Appeal Br. 29–30. However,
claim 1 does not require any limitations corresponding to these alleged
differences, i.e., security of stored or transmitted data, or avoidance of
updating or cost of maintenance. Accordingly, Appellant’s argument is not
commensurate with the scope of claim 1, and is not persuasive.
Appellant argues that dependent claims “affirm the Applicant’s
invention,” quoting limitations of various dependent claims. Appeal Br. 31.
However, Appellant does not explain how the recitations of the dependent
claims support Appellant’s assertions of error in the Examiner’s rejection.
Consequently, we are not persuaded by Appellant’s argument.
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c) “sending from the server a digital artifact to the non-
browser based application running on the mobile device.
The Examiner finds this limitation to be taught by a combination of
Ohara with Nystrom and either Rosenberg or Yeager. Specifically, the
Examiner finds Rosenberg to teach displaying a transaction receipt, e.g., the
claimed digital artifact, received by SMS (“Short Message Service”). Final
Act. 4; Ans. 6. The Examiner finds Yeager to teach displaying a transaction
receipt. Final Act 4. The Examiner finds both Yeager and Rosenberg to
teach or suggest such display being by a non-browser application, because
neither describes the display being by a browser application. Id. Further,
the Examiner finds Ohara to teach a non-browser based application, in the
form of a Java or graphical use interface, that displays financial transactions.
Final Act 5. The Examiner finds the limitation taught by combining Ohara’s
non-browser based transaction application with the system of either Yeager
or Rosenberg to display to the user the receipt of a transaction. Id.
Appellant argues that Ohara, although describing an application on a
mobile phone that displays a transaction result, does not describe that a host
computer sends the transaction result to the mobile phone. Appeal Br.
35–37. Appellant further argues that Rosenberg’s SMS/Text messaging is
not the same as a non-browser based application with a graphical user
interface. Id. at 37–38. Appellant further argues that combination of Ohara
with either Rosenberg or Yeager would require an impermissible redesign of
Rosenberg or Yeager. Id. at 38–40.
We are not persuaded by Appellant’s argument. The test for
obviousness is “not whether the features of a secondary reference may be
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bodily incorporated into the structure of the primary reference,” but instead
“what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981). We have reviewed Appellant’s specific assertions that the
combination of Rosenberg and Ohara would require Rosenberg “not send
the receipt via SMS” and “not have the user’s financial institution server
(Examiner alleges is ‘server’) send the SMS, but for the POS terminal to
send the SMS.” Appeal Br. 39. Appellant argues similar impermissible
redesign for the Yeager in its combination with Ohara. Id.
Furthermore, the Examiner applies Ohara simply to show a GUI
(“graphical user interface”) that may be associated with a transaction
application. Final Act. 4–5. Appellant has not shown that the Examiner’s
combination would require any redesign other than that the display of the
transaction on the mobile phone would (either alternately or additionally) be
by a graphical user interface associated with a transaction non-browser-
based application. Accordingly, we are not persuaded that the combination
of either Rosenberg and Ohara or Yeager and Ohara would not have
suggested the claimed limitation to one having ordinary skill in the art at the
time the invention was made.
d) Claims 2–7, 9–16, 18–20, 23–26, and 28–31
Appellant does not separately argue claims 2–7, 9–16, 18–20, 23–26,
and 28–31 (Appeal Br. 40), which were rejected under the same grounds;
accordingly, these claims fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues against the rejections of claims 21, 22, 27, and 32, which
were rejected on the base combinations of either Rosenberg or Yeager with
Appeal 2019-005639
Application 14/576,454

20
Nystrom and Ohara, additionally with either Park or Fernandes, solely on the
same arguments presented against claim 1. Appeal Br. 40. For the same
reasons as discussed above, we are not persuaded by those arguments, and
we sustain the Examiner’s rejections of claims 21, 22, 27, and 32.

CONCLUSION
For the above-described reasons, we sustain the Examiner’s rejections
of claims 1–7, 9–16, and 18–32 as being obvious over the applied references
under 35 U.S.C. § 103(a), and sustain the Examiner’s rejection of claim 20
as failing to claim within a permissible category of invention under
35 U.S.C. § 101.
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)(iv). See
37 C.F.R. § 41.50(f).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Grounds Affirmed Reversed
20 101 Subject matter
eligibility
20
1–7, 9–
16, 18–
20, 23–
26, 28–31
103(a) Rosenberg or Yeager
Nystrom, Ohara
1–7, 9–16,
18–20, 23–
26, 28–31

21, 22 Rosenberg or Yeager
Nystrom, Ohara,
Park
21, 22
Appeal 2019-005639
Application 14/576,454

21
Claims
Rejected
35 U.S.C. § References/Grounds Affirmed Reversed
27, 32 103(a) Rosenberg or Yeager
Nystrom, Ohara,
Fernandes
27, 32
Overall
Outcome
1–7, 9–16,
18–32

AFFIRMED