NXP B.V.

Patent Trials and Appeals Board

Oct 6, 2021

2021001579 (P.T.A.B. Oct. 6, 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.
13/632,907 10/01/2012 Cedric Colnot 81524742US01 9168
65913 7590 10/06/2021
Intellectual Property and Licensing
NXP B.V.
350 HOLGER WAY
SAN JOSE, CA 95134
EXAMINER
LEFFALL-ALLEN, NAKIA
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
10/06/2021 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CEDRIC COLNOT
____________________

Appeal 2021-001579
Application 13/632,907
Technology Center 3600
____________________

Before, DAVID M. KOHUT, JOHN P. PINKERTON, and
BETH Z. SHAW, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20, which are all of the claims pending in the
application. 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 NXP B.V.,
which is a wholly owned subsidiary of NXP Semiconductors N.V. Appeal
Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant describes the disclosed and claimed invention as follows:
In accordance with the invention, in order to validate a
transaction on a mobile handset, PC, tablet or similar device, a
user closes the loop between a non-secure display controlled by
a host processor and a secure keypad controlled by a secure
processor such as a master secure element or trusted execution
environment. The user validates the transaction by entering on
the secure keypad the data shown on the non-secure display. The
transaction is validated because the user only enters the data that
the user agrees to and only the user is able to enter the data.

Abstract.2
Claims 1 and 7 are independent. Claim 1 is representative of the
subject matter on appeal and is reproduced below:
1. A method of validating a transaction using both a secure
input and a non-secure output comprising:

(a) storing secret data in the secure processor;

(b) sending first data from a host processor to a secure
processor;

(c) sending a validation request from the secure
processor to the host processor in response to receipt of the first
data by the secure processor;

2 Our Decision refers to the Final Office Action mailed April 20, 2020
(“Final Act.”), Appellant’s Appeal Brief filed July 14, 2020 (“Appeal Br.”)
and Reply Brief filed December 22, 2020 (“Reply”), the Examiner’s Answer
mailed October 29, 2020 (“Ans.”), and the original Specification filed
October 1, 2012 (“Spec.”).

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(d) sending second data from the host processor to the
non-secure output;

(e) accepting a user input of both the second data and
authenticating secret data into the secure input;

(f) sending both the accepted second data and the
accepted authenticating secret data from the secure input to the
secure processor; and

(g) validating the transaction, in the secure processor,
when the first data and the accepted second data are equivalent
and the accepted authenticating secret data match the stored
secret data.

Appeal Br. 21 (Claims App.).
Rejections on Appeal3
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more. Final Act. 6–9.
Claim 3 stands rejected under pre-AIA 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
Final Act. 9–10.

3 The Examiner withdrew the rejection of claims 1, 7, 12, and 17 under 35
U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement. Ans. 9.
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ANALYSIS
I. SECTION 101 REJECTION
A. Applicable Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Com’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Id. at 217. If so, we then examine “the
elements of [the] claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we
examine the claim for an “inventive concept,” “an element or combination
of elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id. at
217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73).
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B. USPTO Section 101 Guidance
In January 2019, the Patent Office issued guidance about this
framework.4 Under the Revised Guidance, to decide whether a claim is
directed to an abstract idea, we evaluate whether the claim (1) recites one of
the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails
to integrate the recited abstract idea into a practical application (“Prong
Two”). See Revised Guidance, 84 Fed. Reg. at 51, 54. If the claim is
directed to an abstract idea, as noted above, we then determine whether the
claim has an inventive concept. The Revised Guidance explains that when
making this determination, we should consider whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality.” Id. at 56.
With these principles in mind, we first analyze whether claim 15 is
directed to an abstract idea.

4 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4)
Fed. Reg. 50–57 (Jan. 7, 2019) (“Revised Guidance”); see also USPTO,
October 2019 Patent Eligibility Guidance Update (Oct. 17, 2019) (“Oct.
2019 Update”), https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf.
5 Appellant argues claims 1–20 as a group focusing on claim 1. See Appeal
Br. 10–16. Given our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we
decide the § 101 rejection of the pending claims based on representative
claim 1.
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1. Abstract Idea
a. USPTO Step 2A, Prong One
Beginning with step 2A, prong one, of the Revised Guidance,6 we
determine “whether the claims at issue are directed to one of those
patent-ineligible concepts,” including the abstract ideas enumerated in the
Revised Guidance. Alice, 573 U.S. at 217.
The Revised Guidance extracts and synthesizes key concepts
identified by the courts as abstract ideas to explain that the
abstract idea exception includes the following groupings of
subject matter, when recited as such in a claim limitation(s) (that
is, when recited on their own or per se): (a) Mathematical
concepts—mathematical relationships, mathematical formulas
or equations, mathematical calculations; (b) Certain methods of
organizing human activity—fundamental economic principles or
practices (including hedging, insurance, mitigating risk);
commercial or legal interactions (including agreements in the
form of contracts; legal obligations; advertising, marketing or
sales activities or behaviors; business relations); managing
personal behavior or relationships or interactions between people
(including social activities, teaching, and following rules or
instructions); and (c) Mental processes—concepts performed in
the human mind (including an observation, evaluation,
judgment, opinion).
Revised Guidance, 84 Fed. Reg. at 52.
For our prong one analysis, we set aside, for consideration below, the
technological elements recited in claim 1: “secure input and a non-secure
output,” “host processor,” and “secure processor.” Thus, claim 1 recites the
following:

6 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by 35
U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this appeal.
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[a] method for validating a transaction . . . comprising: (a)
storing secret data . . . ; (b) sending first data . . . ; (c) sending a
validation request . . . in response to receipt of the first data . . . ;
(d) sending second data . . . ; (e) accepting a user input of both
the second data and authenticating secret data . . . ; (f) sending
both the accepted second data and the accepted authenticating
secret data . . . ; and (g) validating the transaction . . . when the
first data and the accepted second data are equivalent and the
accepted authenticating secret data match the stored secret data.”
“Storing” step (a), “sending” steps (b), (c), (d), and (f), and
“accepting” step (e) are common examples of inconsequential, data
gathering steps the courts have determined are insufficient to render an
otherwise ineligible claim patent-eligible. See MPEP § 2106.05(g); Revised
Guidance, 84 Fed. Reg. at 55 n.31; see also, e.g., Bancorp Servs, L.L.C. v.
Sun Life Assur. Co. of Can., 771 F. Supp. 2d 1054, 1066 (E.D. Mo. 2011),
aff’d, 687 F.3d at 1266 (explaining that “storing, retrieving, and providing
data . . . are inconsequential data gathering and insignificant post solution
activity”); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d
1364, 1372 (Fed. Cir. 2017) (determining that “claims directed to the
collection, storage, and recognition of data” were abstract).
“Validating” step (g), in which two pairs of data are compared to
determine their equivalency, is an evaluation, analysis, or judgment step that
may be performed in the human mind or with pen and paper.
Thus, claim 1’s steps (a)–(g) recite concepts relating to a method of
organizing human activity, such as commercial interactions (including sales
activities and business relations), and mental processes, concepts performed
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in the human mind (including an evaluation, judgment, opinion). See
Revised Guidance, 84 Fed. Reg. at 52. This is consistent with the
Examiner’s characterization of claim 1 as reciting the abstract concept of
‘“[c]ertain methods of organizing human activity,’ such as commercial or
legal interactions.” Final Act. 7; Ans. 6.
To the extent claim 1 recites more than one abstract idea, we note that
merely combining several abstract ideas does not render the combination
any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322,
1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea
. . . does not render the claim non-abstract.”); see also FairWarning IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) (determining the
pending claims were directed to a combination of abstract ideas).
In view of the foregoing, Appellant’s arguments for step 2A,
prong one, are not persuasive. See Appeal Br. 10–13; Reply 2–3. In
particular, we are not persuaded by Appellant’s argument that the Examiner
mischaracterizes the claims as directed to “authorizing a financial
transaction” for the purpose of suggesting they fall within the “certain
methods of organizing human activity” category. Appeal Br. 10–11; Reply
2. As discussed above, the Examiner finds that claim 1 falls in that category
because is it directed to “commercial or legal interactions,” and not because
it is specifically directed to a “financial transaction.” Ans. 6. Then,
consistent with Appellant’s argument, the Examiner describes claim 1 as a
“process of validating a transaction.” Id.
We are also not persuaded by Appellant’s argument that the Examiner
did not follow the proper prong one analysis by not considering the claim as
a whole. As the Revised Guidance states, the examiner is to first identify the
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specific limitations in the claim under examination that the examiner
believes recite an abstract idea. See Revised Guidance, 84 Fed. Reg. at 54.
If the identified limitations fall within the subject matter groupings of
abstract ideas, the examiner “should evaluate whether the claim as a whole
integrates the recited judicial exception into a practical application of the
exception.” Id. This is the procedure followed by the Examiner here. See
Final Act. 7–9; Ans. 5–7.
We do not, however, agree with the Examiner’s finding that “sending
a validation request . . . in response to the receipt of the first data . . .” is
optional language that does not limit the claim. Ans. 6. As Appellant
argues, and we agree, “sending a validation request” is performed by the
secure processor when it receives the first data from the host processor, and
“the action taken [by the secure processor] in response to such reception is
not optional.” Reply 3. Although we give full effect to “validating” step
(g), as discussed supra, the validating step falls within the mental processes
grouping of abstract ideas.
Accordingly, consistent with our Office Guidance and case law, we
determine that claim 1 recites abstract ideas in the method of organizing
human activity and mental processes groupings. See Revised Guidance, 84
Fed. Reg. at 52.
b. USPTO Step 2A, Prong Two
Because we determine that claim 1 recites an abstract idea, we turn to
prong two of step 2A of the Alice analysis and consider whether claim 1
integrates this abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether there are
any additional elements beyond the abstract idea that, individually or in
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combination, “integrate the [abstract idea] into a practical application, using
one or more of the considerations laid out by the Supreme Court and the
Federal Circuit.”7 Revised Guidance, 84 Fed. Reg. at 54–55.
The Examiner finds that the abstract idea is not integrated into a
practical application because the additional elements of claim 1, such as the
“secure processor” and “host processor,” “merely serves as tools to perform
the abstract idea and/or generally link the use of a judicial exception to a
particular technological environment.” Final Act. 8; Ans. 6–7.
Appellant argues that the claims are directed to a practical application
because they “relate to a specific method for authorizing a secure transaction
in a system having a non-secure domain that includes a host processor and a
secure domain that includes a secure processor.” Appeal Br. 13–14.
According to Appellant, the claim limitations “remedy an issue found in
prior art devices that causes those devices to be exposed to security risks,
such as tampering, along with a high complexity of their architecture.” Id. at
14. Appellant also argues that the claims “are directed to a specific solution
to this specific problem,” and “provide an improvement over existing
technology.” Id.
Appellant’s arguments for step 2A, prong two, are not persuasive. As
an initial matter, we agree with the Examiner that claim 1’s additional
elements, “secure input and a non-secure output,” “host processor,” and
“secure processor,” “merely serve as tools to perform the abstract idea

7 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of the Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under Step 1 of Alice (Step 2A, Prong Two, of the Revised
Guidance). See Revised Guidance, 84 Fed. Reg. at 54–55.
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and/or generally link the use of a judicial exception to a particular
technological environment.” Claim 1, and the Specification, recite the use
of computer elements and components at a broad, generic level as tools for
facilitating the validation of a transaction, without any improvement to
computing or software functionality itself. See, e.g., Spec. ¶¶ 13–15, 24–25.
In other words, the claims are focused not on an improvement to computers
or software itself, but on the use of computers and software as tools to
execute the judicial exception. See, e.g., Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
We are not persuaded by Appellant’s arguments that (1) the claims
recite “a specific method” for authorizing a secure transaction, (2) the claims
are directed to “a specific solution” to the security risks resented in prior art
devices, and (3) the claims “provide an improvement over existing
technology.” See Appeal Br. 13–14. Although claim 1 recites specific
steps, these pertain to the recited abstract idea, not any additional or
improved technological element. Narrowing the recited abstract idea or
limiting it to a particular field of use in this way does not change our overall
understanding of the claims and, thus, does not render the claims
non-abstract. See Revised Guidance, 84 Fed. Reg. at 55, id. n.32; see also,
e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(determining that even though “some of the eleven steps were not previously
employed in this art,” that was “not enough—standing alone—to confer
patent eligibility upon the claims at issue.”). Nor is the fact that data is
being operated on and manipulated in a particular way evidence of a
technological advance. Rather, this merely reflects the manipulation or
reorganization of data, which fails to transform an otherwise
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patent-ineligible concept into an eligible one. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011).
In summary, claim 1 does not recite a technological improvement to
computers, software, processors, or input and output devices. Rather, “it is
clear, from the claims themselves and the specification, that these limitations
require no improved computer resources [Appellant] claims to have
invented, just already available computers, with their already available basic
functions, to use as tools in executing the claimed process.” SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1169–70 (Fed. Cir. 2018).8 Indeed, the
Specification describes the invention at a high level using no more than
general-purpose computing elements for performing generic computing
functions. See, e.g., Spec. ¶¶ 13–15, 24–25. Nor does Appellant identify
any persuasive evidence that claim 1 requires any specialized computer
hardware or other inventive technological components, such as a particular
machine, for performing the claimed invention.
Accordingly, consistent with the Examiner’s findings, and in view of
Appellant’s disclosure, we determine that claim 1 does not integrate the
judicial exception into a practical application, and thus is directed to the
judicial exception itself. In particular, we determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;

8 See also Revised Guidance, 84 Fed. Reg. at 55 (explaining that courts have
identified “merely us[ing] a computer as a tool to perform an abstract idea”
as an example of when a judicial exception may not have been integrated
into a practical application); Affinity Labs of Tex., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1262 (Fed. Cir. 2016) (“In this case, the claims are directed
not to an improvement in cellular telephones but simply to the use of cellular
telephones as tools in the aid of a process focused on an abstract idea. That
is not enough to constitute patentable subject matter.”).
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(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP § 2106.05(a)–(c), (e)–(h).
c. USPTO Step 2B — Inventive Concept
Finally, we consider whether claim 1 has an inventive concept, that is,
whether any additional claim elements “‘transform the nature of the claim’
into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 78, 79). This requires us to evaluate whether the additional
claim elements add “a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field” or
“simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
The Examiner finds claim 1’s additional elements of a secure
processor and host processor are not sufficient to amount to significantly
more than the judicial exception because these elements amount to “no more
than using a computer or processor to automate and/or implement the
abstract idea.” Ans. 7.
Appellant argues the rejection fails for lack of proper support because
the Examiner failed to provide factual support, as required by the Office’s
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Berkheimer memorandum,9 that the additional claim elements are well
understood, routine, and conventional. Appeal Br. 15–16; Reply 3.
Appellant’s argument does not persuade us the Examiner erred. First,
Appellant’s Berkheimer argument is unavailing because Appellant has not
established that the instant patent eligibility inquiry contains an underlying
issue of fact. The court in Berkheimer held, among other things, that
“[w]hen there is no genuine issue of material fact regarding whether the
claim element or claimed combination is well-understood, routine, [and]
conventional to a skilled artisan in the relevant field, this issue can be
decided on summary judgment as a matter of law.” Berkheimer v. HP Inc.,
881 F.3d 1360, 1368 (Fed. Cir. 2018) (emphasis added). Here, although
Appellant asserts that certain elements have not been shown as well-
understood, routine, and conventional, Appellant does not adequately
explain why these elements are not well-understood, routine, and
conventional, nor does Appellant identify any passages from the
Specification that support its argument. See Appeal Br. 15–16; Reply Br. 3.
Second, the Examiner’s finding is amply supported by the
Specification, which indisputably shows the additional elements of claim 1
were well-understood, routine, and conventional activities at the time of
filing because they are described in a general manner without additional
details that would distinguish them from conventional components. See,
e.g., Spec. ¶¶ 13–15, 24–25. And, as discussed above, we have determined

9 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.), USPTO 3 (2018) (“Berkheimer Memo”)).
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that claim 1 does not recite a technological improvement to the functioning
of computers or computer components.
In view of the foregoing, considering claim 1 as a whole, we
determine that the additional claim elements do not provide “a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field.” Revised Guidance, 84 Fed. Reg.
at 56. Rather, these elements do no more than “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Id. Accordingly, we
determine that claim 1 does not have an inventive concept.
d. Conclusion
For the reasons stated above, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 101. For those same reasons, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of independent claim 7, which
recites similar limitations and was not argued separately with particularity.
We likewise sustain the Examiner’s rejection under 35 U.S.C. § 101 of
dependent claims 2–6 and 8–20, which merely narrow the recited abstract
idea and were not argued separately with particularity.
II. REJECTION UNDER § 112, FIRST PARAGRAPH
Claim 3 depends from claim 1 and further recites, “wherein the secure
input is a physical keyboard.” Appeal Br. 21 (Claim App.). The Examiner
rejects claim 3 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement because Appellant’s Specification
“does not detail the term keyboard.” Final Act. 10; Ans. 8. The Examiner
also finds that the Specification “details the use of a ‘keypad’ versus a
keyboard.” Ans. 8–9.
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Appellant argues that the term “physical keyboard” is described
throughout the originally-filed application. Appeal Br. 19. Appellant asserts
that, for example, paragraphs 22–23, and Figures 3C and 3D, “describe
embodiments in which a keypad mask layer is used with a touchscreen
display to project a predefined keypad layout on the display.” Id. Appellant
also asserts that a person of ordinary skill in the art of mobile platforms
would have understand that through the use of the term “keypad,” as
provided in paragraphs 22 and 23, and illustrated in Figures 3C and 3D,
Appellant had possession of the “physical keyboard” of claim 3. Reply 4.
The test for compliance with the written description requirement
under 35 U.S.C. § 112, first paragraph, is “whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). “[T]he disclosure as originally filed does not have to
provide in haec verba support for the claimed subject matter at issue.”
Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000).
Nevertheless, the disclosure must “clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed.” Ariad, 598
F.3d at 1351 (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63
(Fed. Cir. 1991)).
We are persuaded by Appellant’s argument that the Examiner erred.
Consistent with Appellant’s argument, in describing Figure 3C, paragraph
22 of the Specification states that “[k]eypad mask layer 356 projects
predefined keypad layout 310 onto touch screen 135” and that “[k]eypad
mask 356 cannot be altered by host processor 115 as it is physically
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integrated into display 130.” Spec. ¶ 22. Although this description refers to
a “physical keypad,” we agree with Appellant that a person of ordinary skill
in the art would have reasonably considered the predefined keypad layout on
touch screen 135 as the “physical keyboard.” Reply 4.
We also note that paragraph 17 of the Specification describes an
embodiment of the invention in which a transaction is validated by a user
with a device having a “physical keypad,” rather than a touch screen keypad.
In that regard, paragraph 17 describes such devices as “mobile handsets,
PCs, tablets and similar devices where keypad 110 is physical (i.e. keypad
110 is not a touch screen keypad on non-secure display 130).” Spec. ¶ 17.
Based on these disclosures of a “physical keypad,” we find the
Specification provides adequate written description support for claim 3’s
“physical keyboard” limitation.10 Although the Specification uses the term
“keypad” instead of “keyboard,” the written description requirement does
not demand “any particular form of disclosure . . . or that the specification
recite the claimed invention in haec verba.” Ariad Pharms., 598 F.3d at
1352 (citation omitted). Thus, we also find that the Specification reasonably
conveys to those skilled in the art that the inventor had possession of the
subject matter of claim 3 as of the filing date. Id. at 1351.

10 The written description requirement of § 112, first paragraph, is a
question of fact. Ralston Purina Co. v. Far–Mar–Co, Inc., 772 F.2d 1570,
1575 (Fed. Cir. 1985). Thus, “determining whether a patent complies with
the written description requirement will necessarily vary depending on the
context.” Ariad, 598 F.3d at 1352 (citing Capon v. Eshhar, 418 F.3d 1349,
1357–58 (Fed. Cir. 2005)).
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III. CONCLUSION
We affirm the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 101.
We reverse the Examiner’s rejection of claim 3 under 35 U.S.C.
§ 112, first paragraph.
IV. SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
3 112 3
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No 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).