Raj Rao

Patent Trials and Appeals Board

Sep 23, 2019

14664390 - (D) (P.T.A.B. Sep. 23, 2019)

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.
14/664,390 03/20/2015 RAJ RAO MR4313-3/CIP 1371
4586 7590 09/23/2019
ROSENBERG, KLEIN & LEE
3458 ELLICOTT CENTER DRIVE-SUITE 101
ELLICOTT CITY, MD 21043
EXAMINER
KIM, STEVEN S
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/23/2019 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):
ptoactions@rklpatlaw.com
ptoactions@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAJ RAO
____________________

Appeal 2017-011563
Application 14/664,390
Technology Center 3600
____________________

Before ERIC S. FRAHM, CARL L. SILVERMAN, and
MICHAEL J. ENGLE, Administrative Patent Judges.

ENGLE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1 and 2. Claims 3–20 have been withdrawn. We have jurisdiction
over the rejected claims under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Technology
The application relates to “a smart electronic wallet” that is “able to
capture account numbers and other information encoded on . . . credit cards
. . . and instead provide a single-reconfigurable transaction card in their
place to dramatically reduce the number of cards” that “a consumer is
obliged to carry.” Spec. 1.
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Rejected Claims
Claims 1 and 2 are reproduced below with certain limitations at issue
emphasized (italics for indefiniteness, underlining for obviousness, and bold
for written description):
1. A system for establishing an interactive community of wallet
device holders linked by a communication network, the system
comprising:
a system controller; and
a plurality of wallet devices, each of the wallet devices
being selectively linked to one another and to the system
controller, each wallet device including:
a portable wallet body defining at least one
compartment,
at least one proxy card removably stored within said
portable wallet body, said proxy card being electronically
reconfigurable to selectively emulate a magnetic data
encoding of at least one of a plurality of predetermined
account bearing transaction cards, and
a transaction card interface unit disposed within
said wallet body, said transaction card interface unit
including:
a user interface portion,
a card encoding portion actuated responsive
to said user interface portion to selectively encode
onto said proxy card account data corresponding to
at least one of the predetermined account-bearing
transaction cards, said proxy card being thereby
readable as a substitute therefor,
a network interface unit, and
a processor coupled to said user interface
portion and said network interface unit,
wherein said transaction card interface unit of each wallet
device is actuable to selectively access a plurality of community
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interfaces through the user interface portion, each community
interface being configured for one of a plurality of predetermined
interactive contexts between wallet device holders or between a
wallet device holder and the system controller.
2. The system of claim 1, further comprising a profile processor
selectively linked to one or more of the plurality of wallet
devices and providing a plurality of wallet device holder
profiles, each profile containing information of a wallet device
holder.
Rejections
Claims 1 and 2 stand rejected under 35 U.S.C. § 112(a) for lack of
written description. Final Act. 8.
Claims 1 and 2 stand rejected under 35 U.S.C. § 112(b) as indefinite.
Final Act. 9.
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as obvious over
US 2011/0047074 A1 (“Cai”; Feb. 24, 2011) and US 6,595,342 B1
(“Maritzen”; July 22, 2003). Final Act. 14.
ISSUES
1. Did the Examiner err in finding the following terms lacked
written description:
a. “said proxy card being electronically reconfigurable to
selectively emulate a magnetic data encoding of at least one of a
plurality of predetermined account bearing transaction cards,” as
recited in claim 1, and
b. “a profile processor selectively linked to one or more of
the plurality of wallet devices and providing a plurality of wallet
device holder profiles,” as recited in claim 2?
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2. Did the Examiner err in concluding that the following terms
rendered the claims indefinite:
a. “system controller,” “emulate,” and “configured for one
of a plurality of predetermined interactive contexts between wallet
device holders or between a wallet device holder and the system
controller,” as recited in claim 1, and
b. “a profile processor selectively linked to one or more of
the plurality of wallet devices and providing a plurality of wallet
device holder profiles,” as recited in claim 2?
3. Did the Examiner err in finding Maritzen teaches or suggests “a
plurality of wallet devices, each of the wallet devices being selectively
linked to one another” and “said transaction card interface unit of each
wallet device is actuable to selectively access a plurality of community
interfaces through the user interface portion,” as recited in claim 1?
4. Is the Examiner’s withdrawal of claims 3–18 after Appellant’s
restriction election appealable or only petitionable?
ANALYSIS
Written Description
A) Claim 1
Claim 1 recites “said proxy card being electronically reconfigurable to
selectively emulate a magnetic data encoding of at least one of a plurality of
predetermined account bearing transaction cards.”
The Examiner finds that the “Merriam-Webster dictionary defines the
term [‘]encode[’] as a transitive verb to describe ‘1 a: to convert (something,
such as a body of information) from one system of communication into
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another; especially: to convert (a message) into code.’” Ans. 3. Based on
this definition, the Examiner determines “there simply is no support in the
Specification that discloses magnetic data converting at least one of a
plurality of predetermined account bearing transaction cards into a code.”
Id. Thus, the Examiner interprets “encoding” as a verb whose subject is “a
magnetic data.”
However, we agree with Appellant “that ‘encoding’ is a noun, not a
verb.” Reply Br. 2. More specifically, “encoding” here is used as a gerund.
Thus, the phrase means “an encoding of magnetic data” and the rest of the
limitation explains that the proxy card emulates that encoding. Appellant
analogizes “a magnetic data encoding” to the phrase “an office building,”
which normally means (A) a structure that is an office rather than (B) an
office (subject) that is doing the action of building (verb) or (C) “a process
of building an office.” See id.
Here, in this context, the proxy card emulates an encoding, such as an
encoding of a credit card. The Specification describes in detail how a
“reconfigurable transaction card employing the passive magnetic tape may
be selectively re-encoded . . . to match the encodings copied from a
traditional single-use transaction card belonging to the card-holder.” Spec.
25 (emphasis added). “In this manner, the smart wallet may be employed to
copy magstripe contents from, for example: the cardholder’s VISA,
MASTERCARD, AMERICAN EXPRESS, DISCOVERY, library card,
BEST BUY gift certificate, gym pass, and the like” and “encode the contents
of the selected transaction card onto the magnetic strip of the reconfigurable
transaction card” such that the “reconfigurable transaction card may then be
swiped through a reader and be indistinguishable from the single-use
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transaction card.” Id. Thus, the Specification adequately supports a proxy
card being electronically reconfigurable to selectively emulate an encoding
(specifically, a magnetic data encoding) of at least one of a plurality of
predetermined account bearing transaction cards (e.g., a credit card).
Accordingly, we do not sustain the Examiner’s rejection of claim 1
under § 112(a).
B) Claim 2
Claim 2 recites “a profile processor selectively linked to one or more
of the plurality of wallet devices and providing a plurality of wallet device
holder profiles.”
We agree with the Examiner that Appellant fails to show how this
limitation is adequately supported by the Specification. Ans. 4. Appellant
points to pages 58, 67, 70, and 71 of the Specification as well as Figures 22
and 23B, all of which mention a “profile” but none of which expressly
disclose a “processor,” let alone a “profile processor” that is both
“selectively linked” and “providing . . . profiles.” App. Br. 16. Similarly,
Appellant points to the first full paragraph on page 88 of the Specification.
Id. The cited text is the last paragraph before the claims and says that
“[t]hese and related algorithms, and other necessary instructions, may be . . .
executed using one or more processors.” Spec. 88. Yet Appellant fails to
explain how this is sufficient to disclose “a profile processor” that is both
“selectively linked” and “providing . . . profiles.”
For written description, “the test for sufficiency 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 Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
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(Fed. Cir. 2010) (en banc). “[T]he hallmark of written description is
disclosure.” Id. “And while the description requirement does not demand
any particular form of disclosure, or that the specification recite the claimed
invention in haec verba, a description that merely renders the invention
obvious does not satisfy the requirement.” Id. at 1352 (citation omitted).
Thus, “[i]t is not sufficient for purposes of the written description
requirement of § 112 that the disclosure, when combined with knowledge in
the art, would lead one to speculate as to modifications that the inventor
might have envisioned, but failed to disclose.” Lockwood v. Am. Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Here, although the Specification
separately discloses a “profile” and a “processor,” Appellant fails to identify
any part of the Specification that discloses “a profile processor” that is both
“selectively linked” and “providing . . . profiles,” as required by claim 2.
Accordingly, we sustain the Examiner’s rejection of claim 2 under
§ 112(a).
Indefiniteness
A) “system controller” (claim 1) and “profile processor” (claim 2)
Claim 1 recites “a system controller” and claim 2 recites “a profile
processor.”
The Examiner concludes that “the detailed specification along with
the drawing[s] do not specifically disclose a system controller and profile
processor” so therefore “the metes and boundary of the claim is unclear.”
Ans. 5. For example, the claimed “system controller” could “be a
component of [the] retail website, a component of [the] desktop
computer/laptop, a component of [the] wireless communication mobile
device, or a component of the smart wallet.” Id.
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We agree with Appellant, however, that “breadth is not
indefiniteness.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331,
1341 (Fed. Cir. 2005) (quotation omitted); see also App. Br. 17–18. To the
extent the Examiner states that the Specification fails to disclose these
limitations, that is a question of written description under § 112(a), not
indefiniteness under § 112(b).
B) “emulate” and “contexts” (claim 1)
Appellant next disputes the Examiner’s definitions for two terms:
“emulate” and “context.”
First, claim 1 recites “said proxy card being electronically
reconfigurable to selectively emulate a magnetic data encoding of at least
one of a plurality of predetermined account bearing transaction cards.”
The Examiner sets forth a dictionary definition that “defines [the]
term ‘emulate’ as ‘1 a: to strive to equal or excel’.” Final Act. 12.
Appellant argues that “this definition is not the one commonly
understood in the fields of networking and computing” and instead the same
dictionary “also provides a second definition, ‘imitate,’ which reflects the
common meaning in applicable fields.” App. Br. 19.
Second, claim 1 further recites “each community interface being
configured for one of a plurality of predetermined interactive contexts
between wallet device holders or between a wallet device holder and the
system controller.”
The Examiner asks, “What exactly is ‘interactive contexts’ between
wallet device holders . . . , especially when the specification does not
describe [the] term ‘interactive contexts’.” Final Act. 12. The Examiner
then sets forth a dictionary definition that “defines [the] term ‘context’ as
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‘1: the parts of a discourse that surround a word or passage and can throw
light on its meaning’.” Id.
Similar to “emulate,” Appellant argues “the selected definition is one
that applies to the field of human language analysis” and does not apply “to
the fields of networking and computing.” App. Br. 20. Appellant further
notes that the same dictionary and unspecified other sources “recognize an
equally valid and more plainly applicable definition: ‘the interrelated
conditions in which something exists or occurs’.” Id.
“While the Board must give the terms their broadest reasonable
construction, the construction cannot be divorced from the specification and
the record evidence.” In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011).
“Construing individual words of a claim without considering the context in
which those words appear is simply not ‘reasonable.’” Trivascular, Inc. v.
Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
Here, we agree with Appellant that the Examiner’s selection of the
first dictionary definitions for “emulate” and “context” does not sufficiently
consider the Specification, including the claims. The terms “emulate” and
“context” have longstanding meanings in computing. See, e.g., Reply Br. 3
(citing a 1988 magazine asking, “Can a Commodore 64 emulate MS-
DOS?”). We further agree with Appellant that the use of these terms in their
ordinary computing sense do not render claim 1 indefinite.
C) “configured for” (claim 1)
Claim 1 recites “each community interface being configured for one
of a plurality of predetermined interactive contexts between wallet device
holders or between a wallet device holder and the system controller.”
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The Examiner determines that this limitation “merely describes a
desired result[] . . . rather than how . . . each community interface is
configured to result in such desired result.” Ans. 7. However, we agree
with Appellant that “the phrase ‘configured for’ denotes an actual state of
configuration that fundamentally ties the ‘predetermined interactive contexts
between [components]’ to the . . . characteristics of the community
interfaces.” App. Br. 21. As discussed above, breadth is not indefiniteness.
Thus, the recitation “configured to,” although broad, does not render claim 1
indefinite.
D) “selectively linked” (claim 2)
Claim 2 recites “a profile processor selectively linked to one or more
of the plurality of wallet devices.”
The Examiner determines that this limitation renders claim 2
indefinite because it inserts a method step (i.e., “a user selectively linking”)
into a system claim. Ans. 7–8. However, we agree with Appellant that “the
claim recites a selectively-enabled linkage between the profile processor and
at least one of the wallet devices” and “not . . . a recitation of any method
operation.” App. Br. 22.
Accordingly, we do not sustain the Examiner’s rejection of claims 1
and 2 under § 112(b).
Obviousness
A) “said transaction card interface unit of each wallet device is
actuable to selectively access a plurality of community interfaces
through the user interface portion” (claim 1)
Claim 1 recites “said transaction card interface unit of each wallet
device is actuable to selectively access a plurality of community interfaces
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through the user interface portion.” Claim 1 further recites that “each wallet
device including . . . a transaction card interface unit . . . including . . . a user
interface portion.” Thus, the claimed “transaction card interface unit” and
“user interface portion” must both be part of the wallet device.
Appellant argues that the relied-upon portions of Maritzen “employ a
web browser on a personal computer, separate from any wallet device.”
App. Br. 24. However, we agree with the Examiner that Maritzen “discloses
accessing of the community interface . . . using the wallet device . . . by
tapping on the on-screen icon displayed on the transaction device, e.g. wallet
device.” Ans. 9 (citing Maritzen 28:14–25). “For example, if the
transaction device is used to trigger shopping activity, the user may tap on
an on-screen icon being displayed by the transaction device, e.g., digital
wallet . . . .” Maritzen 28:21–24 (emphasis added). Thus, Maritzen teaches
or suggests this limitation.
B) “a plurality of wallet devices, each of the wallet devices being
selectively linked to one another” (claim 1)
Claim 1 recites “a plurality of wallet devices, each of the wallet
devices being selectively linked to one another.”
The Examiner determines that “the claimed limitation of ‘wherein
said transaction card interface unit of each wallet device is actuable to
selectively access a plurality of community interfaces through the user
interface portion’ necessarily reads on the each of the wallet devices being
selectively linked to one another.” Ans. 8 (emphasis added). “By
interacting with the issuing facility, [Maritzen’s] wallet device(s) registered
to the issuing facility is necessarily linked to one another.” Id. at 9
(emphasis added).
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The Federal Circuit has held that “[a] party must . . . meet a high
standard in order to rely on inherency to establish the existence of a claim
limitation in the prior art in an obviousness analysis—the limitation at issue
necessarily must be present, or the natural result of the combination of
elements explicitly disclosed by the prior art.” PAR Pharm., Inc. v. TWi
Pharms., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” Id. at 1195 (emphasis added, quotation omitted).
Here, we agree with Appellant that Maritzen’s disclosure of multiple
wallet devices linked to a central issuing facility does not necessarily
disclose a plurality of wallet devices “being selectively linked to one
another.” Reply Br. 4–5. In the same way, absent further evidence, two
users checking their bank accounts on a bank’s website does not necessarily
mean that those two users are “selectively linked” to each other.
Accordingly, we do not sustain the Examiner’s rejection under § 103
of claim 1 and dependent claim 2.
Withdrawal of Claims 3–18 After Restriction Election
On June 10, 2015, the Examiner mailed a restriction requirement
stating that claims 1–20 were directed to twelve different species, which the
Examiner labeled Species A through L. However, the Examiner did not
identify which claims fell under each species.
On August 10, 2015, Appellant submitted a response in which
Appellant “elects Species D,” stating that Appellant “further believes that
Claims 1-18 read on Species D.” Resp. to Restriction Requirement 2 (Aug.
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10, 2015). Appellant also “requested that Claims 19-20 be withdrawn from
consideration.” Id.
On October 19, 2015, the Examiner mailed a non-final office action
stating that “[i]n regards to the applicant’s assertion that Claims 1-18 read on
Species D, the examiner respectfully disagree[s]” because “claims 3-4 are
directed to . . . Species E, claims 5-6 are directed to . . . Species F, claims 7-
10 are directed to . . . Species G, claims 11-14 are directed to . . . Species H,
claims 15-17 are directed to . . . Species I, while claim 18 is directed to . . .
Species J.” Non-Final Act. 3 (Oct. 19, 2015). “As such, claims 3-20 are
withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being
drawn to a nonelected group(s).” Id.
On March 21, 2016, Appellant submitted an amendment noting that
“the original Restriction Requirement of June 10, 2015 did not state that the
Examiner believed Species D to only encompass Claims 1 and 2” and that
having now had the Examiner identify those claims, “Applicant still elects
Species D, but with traverse as to which claims are excluded from Species D
[i.e., claims 3–18].” Amendment 15–16 (Mar. 21, 2016). Appellant then
provided arguments in support of traversing the restriction for claims 3–18.
Id. at 16.
On November 22, 2016, the Examiner mailed a final office action in
which the Examiner stated that “[t]he applicant is reminded that it is the
responsibility of the examiner in withdrawing claims not the applicant”;
reiterated that “claims 3-18 are not member[s] of Species D”; and addressed
Appellant’s arguments. Final Act. 2–3 (Nov. 22, 2016). The Examiner
therefore maintained the Examiner’s withdrawal of claims 3–18. Id.
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The present appeal is from that office action dated November 22,
2016.
Appellant argues that claims 3–18 “all elaborate on a disclosed
element of Species D, and should be included in said species” and “should
be therefore restored from withdrawal and considered on the merits.” App.
Br. 25, 26. Appellant further argues that “the withdrawal without election”
is “a question of claim interpretation,” which “is an appropriate subject for
appeal.” Reply Br. 5.
We agree with the Examiner, however, that this “restriction matter is
not a matter of appeal” but “rather is a matter of petition.” Ans. 10. By
statute, “[a]n applicant for a patent, any of whose claims has been twice
rejected, may appeal from the decision of the primary examiner to the Patent
Trial and Appeal Board.” 35 U.S.C. § 134(a) (emphasis added). Here,
however, claims 3–18 are withdrawn, not rejected. See Final Act. 1 (Nov.
22, 2016); Non-Final Act. 3 (Oct. 19, 2015). Such matters are petitionable,
not appealable. See, e.g., MPEP § 1002.02(c) (listing “[p]etitions from a
final decision of examiner requiring restriction in patent applications under
37 CFR 1.144 and MPEP § 818.01(c)” as being “[d]ecided by the
Technology Center Directors”).
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DECISION
For the reasons above, we hold as follows:
Basis Claims Rejected Affirmed Reversed
§ 112(a)
1, 2
2 1
§ 112(b) 1, 2
§ 103 1, 2
Overall 2 1

No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART