Michelle Fisher

Patent Trials and Appeals Board

May 26, 2021

2019005789 (P.T.A.B. May. 26, 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.
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.
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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.
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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.
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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
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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.
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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.
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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.
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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.
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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