Michelle FisherDownload PDFPatent Trials and Appeals BoardMay 26, 20212019005789 (P.T.A.B. May. 26, 2021) 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. 13/594,049 08/24/2012 Michelle Fisher BLAZ-P0001 1620 12120 7590 05/26/2021 Michelle Fisher 2930 Domingo Ave Suite 123 Berkeley, CA 94705 EXAMINER KELLEY, STEVEN SHAUN ART UNIT PAPER NUMBER 2646 NOTIFICATION DATE DELIVERY MODE 05/26/2021 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 FISCHER Appeal 2019-005789 Application 13/594,049 Technology Center 2600 Before ERIC B. CHEN, CARL L. SILVERMAN, and MICHAEL J. ENGLE, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Final Rejection of claims 1, 8, 11, 18, 21–36, 39, and 40, which constitute all pending claims. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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 is Blaze Mobile, Inc. Appeal Br. 1. Appeal 2019-005789 Application 13/594,049 2 STATEMENT OF THE CASE The invention relates to conducting a Near Field Communication (NFC) transaction using an NFC protocol and a mobile wireless device. Abstr.; Spec.2 ¶¶ 2, 19–21, 52–55; Figs. 1, 2, 6A–6D. Claim 1, reproduced below, is representative3 of the claimed subject matter (emphases added): 1. A method for processing a Near Field Communication (NFC) transaction using a mobile device, the method comprising: detecting an inductive near field communication trigger from an NFC terminal when the mobile device is in close proximity to the NFC terminal which is configured for[4] to use a near field communications protocol, wherein the near field communication trigger is detected by an NFC transceiver associated with a secure element permanently embedded within the body of the mobile device, wherein, the mobile device comprises a mobile device display, a mobile device processor, a mobile device wireless interface that supports at least one of CDMA, GSM and wireless fidelity (Wi-Fi), and a mobile device memory which stores a non-browser based application, wherein the non-browser based application is a mobile operating system platform based mobile application with a graphical user interface that is preinstalled or downloaded and installed on the mobile device. executing a payment application stored in a secure element memory, wherein the payment application is executed by a secure element processor in response to the near field communication trigger by the NFC terminal, the secure element memory and secure element processor included in the secure element, wherein the payment application is configured to use the NFC protocol; 2 Specification, filed 8/24/2012 (“Spec.”). 3 Appellant’s arguments are directed toward independent claim 1. See Appeal Br. 8–11. We select claim 1 as representative and the remaining other claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). 4 The word “for” appears to be an extra word. Appeal 2019-005789 Application 13/594,049 3 transmitting, using the payment application, an identification code associated with a user from the secure element memory over a first communication channel to the NFC terminal, wherein the identification code associated with the user is transmitted over a second communication channel that is different than the first communication channel to a server for processing the NFC transaction using a payment method corresponding to the identification code associated with the user, wherein the payment method is maintained at the server, wherein the first communication channel is configured to use the NFC protocol; after the NFC transaction has been processed, receiving over the second communication channel, a digital artifact at the non-browser based application on the mobile device from the server; and displaying the digital artifact in the non-browser based application on the mobile device. Appeal Br. 13 (Claim Appendix). REFERENCES Prior art relied upon by the Examiner: Name Reference Date Rosenberg US 2004/0235450 Al Nov. 25, 2004 Ohara US 2004/0267667 A1 Dec. 30, 2004 Fernandes US 2006/0000900 A1 Jan. 5, 2006 Yeager US 2010/0148928 A1 June 17, 2010 REJECTION Claims 1, 8, 11, 18, 21–36, 39, and 40 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rosenberg or Fernandez in view of Ohara and further in view of Yeager. Final Act. 2–10. ANALYSIS Appellant argues the Examiner errs in finding the combination of references teaches two limitations of independent claim 1. Appeal Br. 8–11. Appeal 2019-005789 Application 13/594,049 4 In particular, Appellant argues the Examiner’s combination of the references does not teach the following claim 1 limitations: (1) “identification code associated with the user is transmitted . . . to a server for processing the NFC transaction using a payment method corresponding to the identification code associated with the user, wherein the payment method is maintained at the server” and (2) “after the NFC transaction has been processed, receiving over the second communication, a digital artifact.” Id. (also referred to as “disputed limitations (1) and (2)”; emphasis added). Additional arguments presented by Appellant are discussed in the analysis below. In the Final Action, the Examiner finds Rosenberg or Fernandes each teaches disputed limitation (1). Final Act. 4–7 (citing Rosenberg ¶¶ 60–70; Fernandes ¶ 74). The Examiner finds Rosenberg or Fernandez teach disputed limitation (2). Id. at 5 (citing Rosenberg ¶ 72; Fernandes ¶ 49). In particular, the Examiner finds Rosenberg and Fernandes teach receiving a receipt (“digital artifact”). Id. Appellant argues, inter alia, the Examiner errs in finding Rosenberg or Fernandes teaches disputed limitation (2) because neither reference teaches or suggests that the same channel is used to send an “identification code associated with the user” to a server and to receive a “digital artifact” by the mobile device. Appeal Br. 10–11. Regarding Rosenberg, Appellant argues In Rosenberg, “the user places the mobile communication device 100 near the seller’s smartcard reader 4110 [sic: 410].” Rosenberg ¶ 68. “[T]he seller’s smartcard reader 410 receives information transmitted from the user’s smart link module 100.” Id. ¶ 69. “[T]he seller’s device 410 provides that information to the seller’s financial institution server 450” and “transaction Appeal 2019-005789 Application 13/594,049 5 processing begins.” Id. ¶ 70. Either the seller’s financial institution server 450 or the buyer’s financial institution server 470 then “provides an electronic receipt to the user’s mobile communication device 110. The receipt is preferably provided in the form of a digital communication (e.g., SMS) that is stored in the mobile communication device 110.” Id. ¶ 72. Rosenberg does not suggest that this receipt is sent over the same channel as the information provided by the seller’s device 410 to the seller’s financial institution server 450. To the contrary, Rosenberg suggests that the receipt be sent by SMS, which is not used to provide the information from the seller’s device 410 to the seller’s financial institution server 450. See id. ¶ 69–72 and fig. 4. Id. at 10–11. Regarding Fernandes, Appellant argues Fernandes describes an “adapter 35” that “attaches into the Merchant’s magnetic stripe card acceptance system 20.” Fernandes ¶ 38. The adapter 35 may include “integration of a cellular transceiver device.” Id. ¶ 48. “The integrated wireless network data transceiver . . . enables Merchant data sharing and transaction digital receipt generation.” Id. ¶ 49. This reference to “digital receipt generation” is the only mention of a receipt in Fernandes. Fernandes gives no details about the channel that may be used to transmit the receipt, and does not suggest that the receipt may be transmitted using the same channel over which an “identification code associated with the user” is transmitted to a server, as claimed. Id. at 11. In the Answer, regarding disputed limitation 2, the Examiner finds, [a]s described in the Final Office Action, section [0072] of Rosenberg teaches receiving the SMS ‘digital receipt’ via the second cellular channel and as described above, regarding the description of Figure 9, sections [0101] and [0108] of Rosenberg explicitly teach that in response to the user’s financial server processing the transaction, an SMS receipt is transmitted to the smartlink device. Appeal 2019-005789 Application 13/594,049 6 Ans. 4. Therefore, the Examiner sets forth that the communications to and from the smartlink device 900 from and to the user’s financial server 470 are via the second cellular channel. Id. at 4. In the Reply Brief, Appellant presents many5 arguments. Reply Br. 1–29. Regarding disputed limitation (2), Appellant argues the Examiner errs in relying on “Rosenberg explicitly teach[ing] that in response to the user’s financial server processing the transaction, an SMS receipt is transmitted to the smart/ink device” because those skilled in the art know that SMS/text messaging is not the same as a non-browser based application with a graphical user interface. Id. at 25–26. Appellant proceeds to dictionary definitions of “text messaging” and “graphical user interface” to support its argument that SMS is not the same as a non-browser based application with a graphical user interface and simple substitution does not apply. Id. Appellant also refers to the Specification and other claims to support its argument. Id. at 26–28. Claim 1 is directed to a Near Field Communication (NFC) transaction. In claim 1, first and second communication channels are recited in the transmitting limitation which includes transmitting an identification code associated with the user over a first communication channel to an NFC terminal and the identification code is also transmitted over a second communication channel different from the first channel to a server for 5 37 C.F.R. § 41.41(b)(2). Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown. Good cause has not been shown here. Appeal 2019-005789 Application 13/594,049 7 processing the NFC transaction. The disputed limitation (2) requires receiving a digital artifact over the second communication channel after the NFC transaction has been processed. On the record before us, we are persuaded by Appellant’s arguments regarding disputed limitation (2) because the Examiner provides insufficient evidence to support the finding that Rosenberg or Fernandes teaches performing the disputed limitation. Appellant’s arguments are reasonable and are not fully addressed by the Examiner. Appeal Br. 10–11 (citing Rosenberg ¶¶ 68, 69, 70, 72, Fig. 4; Fernandes ¶¶ 38, 48, 49). In particular, the Answer’s reference to and reliance on the findings of the Final Action are not supported. The Answer states: As described in the Final Office Action, section [0072] of Rosenberg teaches receiving the SMS “digital receipt” via the second cellular channel and as described above, regarding the description of Figure 9, sections [0101] and [0108] of Rosenberg explicitly teach that in response to the user’s financial server processing the transaction, an SMS receipt is transmitted to the smartlink device. Therefore, the Examiner sets forth that the communications to and from the smartlink device 900 (from and to) the user’s financial server 470 are via the second cellular channel. Ans. 4. Contrary to the Examiner’s statement in the Answer, the Final Action does not state that Rosenberg teaches receiving the receipt “via the second cellular channel.” The Final Action first addresses claim 1 without addressing the first and second communication channels. See Final Act. 1– 5. Then, the Final Action refers to “previous amendments to claim 1,” reciting wherein the payment application uses the NFC protocol, and this includes the “first and second communication channels.” Id. at 6–7. Appeal 2019-005789 Application 13/594,049 8 However, disputed limitation (2) is not addressed as the Final Action does not address the limitation “after the NFC transaction has been processed, receiving over the second communication channel, a digital artifact at the non-browser based application on the mobile device from the server.” Id. (emphasis added). Therefore, the Examiner’s reliance in the Answer on findings in the Final Action do not sufficiently support the Examiner’s finding that Rosenberg teaches receiving the SMS receipt via the second channel, and the Examiner’s finding that the communications to and from the smartlink device 900 from and to the user’s financial server 470 are via the second cellular channel. Rosenberg teaches providing an electronic receipt (“digital artifact”) from the buyer’s and/or seller’s financial institution server. See Rosenberg ¶ 72. Rosenberg teaches that the receipt is preferably6 in the form of a digital communication, e.g., SMS. Id. Rosenberg additionally teaches the receipt can be provided via email. Id. However, the Examiner does not sufficiently identify any teaching or suggestion in Rosenberg in which the receipt is provided via the second channel (i.e., the same channel that the identification code is sent on). Thus, based on the record before us, Rosenberg neither teaches nor excludes the use of the second channel for the receipt. However, the Examiner provides insufficient support for why one of ordinary skill in the art would have selected the use of the second communication channel for the receipt. 6 The Reply Brief’s focus on SMS not being “a non-browser based application with a graphical user interface” is not persuasive. See Reply Br. 25–27; Rosenberg ¶ 72. Appeal 2019-005789 Application 13/594,049 9 Fernandes’ adaptor enables sharing of receipts but the Examiner provides no explanation of where Fernandes teaches or suggests first and second channels in which a receipt is provided via the second channel (i.e., the same channel that the identification code is sent on). Accordingly, the Examiner does not provide prima facie support for the rejection. “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Therefore, on the record before us, we are constrained to conclude the Examiner errs in rejecting representative claim 1, independent claim 11, and dependent claims 8, 18, 21–36, 39, and 40 as obvious. CONCLUSION The Examiner’s rejection of claims 1, 8, 11, 18, 21–36, 39, and 40 under 35 U.S.C. § 103(a) as being unpatentable over Rosenberg or Fernandez in view of Ohara and further in view of Yeager is reversed. Because our decision with regard to the disputed limitations is dispositive of the rejections made, we do not address additional arguments raised by Appellant. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 8, 11, 18, 21–36, 39, 40 103(a) Rosenberg or Fernandez, Ohara, Yeager 1, 8, 11, 18, 21–36, 39, 40 REVERSED Copy with citationCopy as parenthetical citation