Sony Corporation

Patent Trials and Appeals Board

Apr 1, 2020

14515811 - (D) (P.T.A.B. Apr. 1, 2020)

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.
14/515,811 10/16/2014 Victor BOIVIE 1358-584 / PS14 1264US2 1784
54414 7590 04/01/2020
MYERS BIGEL, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
KERITSIS, DENNIS G
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
04/01/2020 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):
uspto@myersbigel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VICTOR BOIVIE
____________

Appeal 2019-004765
Application 14/515,811
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., JAMES B. ARPIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–10. Non-Final Act. 2.2 Claims 11–22 are canceled.
Id. We have jurisdiction under 35 U.S.C. § 6(b).

1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real parties-in-interest as Sony Mobile
Communications Inc. and Sony Corporation. Appeal Br. 2.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
November 29, 2018) and Reply Brief (“Reply Br.,” filed May 23, 2019); the
Non-Final Office Action (“Non-Final Act.,” mailed October 11, 2018) and
the Examiner’s Answer (“Ans.,” mailed April 11, 2019); and the originally-
filed Specification (“Spec.,” filed October 16, 2014). Rather than repeat the
Examiner’s findings and determinations and Appellant’s contentions in their
entirety, we refer to these documents.
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We affirm-in-part, and we enter a new ground of rejection with
respect to claims 3 and 9 under 35 U.S.C. § 112(b).
STATEMENT OF THE CASE
Appellant’s claimed mobile terminals “relate[] to wireless
communication user equipment and, more particularly, to mobile phones and
related electronic accessories such as smart watches and other user wearable
accessories.” Spec. ¶ 2. In particular, such mobile terminals facilitate the
completion of financial transactions without requiring a near field
communication (NFC) circuit to be placed adjacent to an NFC reader of a
retail point-of-sale terminal. Id. ¶¶ 3–8.
As noted above, claims 1–10 stand rejected. Claim 1 is the sole
independent claim. Appeal Br. 46 (Claims App.). Claims 2–10 depend
directly or indirectly from claim 1. Id. at 46–49.
Claim 1, reproduced below with disputed limitations emphasized, is
illustrative.
1. A mobile terminal comprising:
a processor configured to execute an application in a memory to
generate transaction data;
a NFC circuit configured to:
receive the transaction data responsive to the
processor executing the application; and
encrypt the transaction data to output NFC
encrypted transaction data;
a wireless network circuit configured to:
establish a wireless network link with an accessory
device, wherein the accessory device is separate from the
mobile terminal;
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encrypt the NFC encrypted transaction data to
output combined wireless network+NFC encrypted
transaction data; and
transmit the combined wireless network+NFC
encrypted transaction data through the wireless network
link to the accessory device for relay to another NFC
enabled communication device.
Id. at 46 (emphases added).
REFERENCES AND REJECTIONS
The Examiner relies upon the following references in rejecting the
claims:
Name3 Number Publ’d/Issued Filed
Pritchett US 8,139,768 B2 Mar. 20, 2012 Jan. 19, 2006
Smith US 9,281,871 B1 Mar. 8, 2016 Aug. 27, 2012
Saito US 2002/0025042 A1 Feb. 28, 2002 Aug. 23, 2001
Ito US 2002/0151276 A1 Oct. 17, 2002 Feb. 15, 2002
Maeda US 2004/0005052 A1 Jan. 8, 2004 June 27, 2003
Haddick US 2013/0127980 A1 May 23, 2013 Sept. 26, 2012
Purves US 2015/0073907 A1 Mar. 12, 2015 June 16, 2014
In addition, the Examiner relies on allegedly Admitted Prior Art (APA).
Non-Final Act. 4–5 (quoting Amdt., 16 (Jan. 22, 2018), in which Appellant
acknowledges, “[p]rocessors controlling the enabling and disabling of
circuits is well understood by a person of ordinary skill in the art.”
(Examiner’s emphasis)).
Claims 1–10 stand rejected under 35 U.S.C. § 112(a) as lacking
adequate written description, and claims 1–10 stand rejected under 35

3 All reference citations are to the first named inventor only.
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U.S.C. § 112(b) as indefinite. Id. at 10–18. Claims 1–10 also stand rejected
under 35 U.S.C. § 102(a)(1) as anticipated by Smith. Id. at 18–19. Further,
claims 1–4, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as obvious over
the combined teachings of Smith, Maeda, Haddick, and Purves (id. at 20–
26); claim 5 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combined teachings of Smith, Maeda, Haddick, Purves, and Pritchett (id. at
26–27); claim 6 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combined teachings of Smith, Maeda, Haddick, Purves, and Ito (id. at 27–
28); claim 9 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combined teachings of Smith, Maeda, Haddick, Purves, and APA (id. at 28–
29); and claim 10 stands rejected under 35 U.S.C. § 103(a) as obvious over
the combined teachings of Smith, Maeda, Haddick, Purves, and Saito (id. at
29–31).4
In addition, the Examiner objects to particular claim language as
either functional or as statements of intended use. Id. at 3–4. Although the
Examiner considers this language for some of the rejections (see id. at 20–
30), the Examiner gives this language no patentable weight for others (see
id. at 18–19, 31; Ans. 16). Although objections are not generally appealable,
because these objections go to the merits of the anticipation and obviousness
rejections, we address them in this decision. See MPEP § 706.01.
We review the objections and appealed rejections of the pending
claims for error based upon the issues identified by Appellant, and in light of
the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d

4 The Examiner rejected claims 1–10 under 35 U.S.C. § 101 as directed to
patent ineligible subject matter, without significantly more (Non-Final
Act. 7–9); but the Examiner withdrew that rejection (Ans. 3).
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1072, 1075 (BPAI 2010) (precedential). Arguments not made are waived.
See 37 C.F.R. § 41.37(c)(1)(iv). Unless otherwise indicated, we adopt the
Examiner’s findings in the Non-Final Office Action and the Answer with
respect to the affirmed rejections as our own and add any additional findings
of fact for emphasis. We address the objections and rejections below.
ANALYSIS
A. Improper Objections to Functional Language
Claim 1 recites a mobile terminal comprising four components: a
processor, a memory, an NFC circuit, and a wireless network circuit.
Appeal Br. 46 (Claims App.). Id. The Examiner objects to Appellant’s use
of the phrase “configured to” followed by a verb, such as “execute,”
“receive,” “encrypt,” “transmit,” or “command,” in claim 1. Non-Final
Act. 5–6. The Examiner objects to similar language in the dependent claims.
Id. The Examiner explains that the claims are not rejected as indefinite
because of the functional language, but, instead, “the Examiner is arguing
that the claim limitations not be given patentable weight for the purposes of
differentiating an apparatus claim from the prior art.” Ans. 3 (citing MPEP
§ 2114(IV)); see Non-Final Act. 6 (citing MPEP § 2114(II)).
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). In particular,
MPEP § 2114(IV) states, “computer-implemented functional claim
limitations may narrow the functionality of the device, by limiting the
specific structure capable of performing the recited function.” See Appeal
Br. 5 (emphasis added; citing MPEP § 2173.05(g)); see also Zeroclick, LLC
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v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) (“That processor is in
turn ‘configured to receive from the screen information regarding locations
touched by the user’s finger.’ Given that ‘[t]he basic concept behind both of
the patents-in-suit is relatively simple,’ a person of ordinary skill in the art
could reasonably discern from the claim language that the words ‘program,’
as used in claims 2 and 52 of the ’691 patent, and ‘user interface code,’ as
used in claim 19 of the ’443 patent, are used not as generic terms or black
box recitations of structure or abstractions, but rather as specific references
to conventional graphical user interface programs or code, existing in prior
art at the time of the inventions.” (emphasis added)); Typhoon Touch Techs.,
Inc. v. Dell, Inc., 659 F.3d 1376, 1380–81 (Fed. Cir. 2011) (“In
[Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d
1367 (Fed. Cir. 2008)], this court recognized that apparatus claims may
appropriately use functional language. However, the court did not deal with
the situation in which an apparatus does not perform the function stated in
the claim unless the apparatus is specifically so programmed or
configured. . . . The district court, in reviewing the specification, held that
the ‘memory for storing’ clause requires that the memory is actually
programmed or configured to store the data collection application.”
(emphasis added)).
The Specification explains:
The NFC circuit is configured to receive the transaction data
responsive to the processor executing the payment application,
and encrypt the transaction data to output NFC encrypted
transaction data. The wireless network circuit is configured to
establish a wireless network link with an accessory device that is
separate from the mobile terminal, encrypt the NFC encrypted
transaction data to output combined wireless network+NFC
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encrypted transaction data, and transmit the combined wireless
network+NFC encrypted transaction data through the Bluetooth
link to the accessory device for relay to a financial transaction
terminal.
Spec. ¶ 4 (emphases added); see, e.g., id. ¶¶ 5 (“In a further embodiment, the
wireless network circuit includes a Bluetooth circuit that is configured to
establish a Bluetooth link with the accessory device, encrypt the NFC
encrypted transaction data to output combined Bluetooth+NFC encrypted
transaction data, and transmit the combined Bluetooth+NFC encrypted
transaction data through the Bluetooth link to the accessory device for relay
to the financial transaction terminal.” (emphasis added)), 38 (“The processor
300 is configured to execute computer program code, such as the payment
application 312, in the memory 310, described below as a non-transitory
computer readable medium, to perform at least some of the operations and
methods described herein as being performed by a mobile terminal.”
(emphasis added)). In particular, the Specification explains, “[i]t is
understood that a block of the block diagrams and/or flowchart illustrations,
and combinations of blocks in the block diagrams and/or flowchart
illustrations, can be implemented by computer program instructions that are
performed by one or more computer circuits.” Id. ¶ 55; see Reply Br. 4–5
(quoting Spec. ¶ 58). Thus, we understand that the functions of the mobile
terminal describe capabilities of the recited structural components, and, on
this record,, the Examiner must give those functional recitations patentable
weight.
B. Improper Objections to Alleged Statements of Intended Use
The Examiner finds that language, such as “to generate,” “to output,”
“for relay,” and “to proxy communications,” are statements of intended use
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and are not entitled to patentable weight. Non-Final Act. 6–7 (citing MPEP
§ 2114(II)); see Ans. 4. Nevertheless, statements of intended use may be
entitled to patentable weight. See In re Pearson, 494 F.2d 1399, 1403
(CCPA 1974) (“We do not mean to imply that terms which recite the
intended use or a property of a composition can never be used to distinguish
a new from an old composition.”).
Appellant contends these limitations further define the functions of
the recited structural components. In particular,
Appellant respectfully submits that the present
specification supports an interpretation where the phrase
“configured to” denotes an actual state of configuration that
fundamentally ties, for example, “generate”, “output” to the
physical characteristics of the feature preceding the phrase
“configured to”. As a result, the disputed claim language
reaches well beyond merely describing an intended use since the
claims actively recite an actual state of configuration.
Appeal Br. 6 (emphasis added; underlining omitted).
For example, claim 1 recites, “a processor configured to execute an
application in a memory to generate transaction data.” Appeal Br. 46
(Claims App.). We interpret this language to mean that the processor is
configured to execute an application and thereby to generate transaction
data. E.g., Spec. ¶ 4 (“The processor executes a payment application in a
memory to generate transaction data relating to a financial transaction.”
(emphasis added)). Thus, both the execution of the application and the
generation of the data are functions of which the processor is capable. See
Matthews Int’l Corp. v. Vandor Corp., 725 F. App’x 1002, 1003 (Fed. Cir.
2018) (“That structural terms are sometimes defined—through claim
construction—by the functions they are designed to perform does not
somehow convert those structural terms into ‘an intended use’ stripped of
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any patentable weight.”); see also Ex parte Papalia, Appeal No. 2007-
004163, 2008 WL 4451370, at *3 (BPAI Jan. 30, 2008) (“In addition,
claim 1 further recites ‘after the remote means for actuating the power
machines transmits an actuation signal to the power machines, the control
circuitry evaluates local data stored therein prior to actuating the power
machines.’ The later limitation is not an intended use of the system but
rather a recitation of specific functionality contained within the control
circuitry of the power machines. Accordingly, this limitation should be
given patentable weight, at least to the extent that the proposed combination
is capable of performing the subject function. See In re Schreiber, 128 F.3d
1473, 1479 (Fed. Cir. 1997).”) (Non-precedential) (emphases added).
Therefore, on this record, we determine that the statements, to which the
Examiner objects, are not merely statements of intended use, but, instead,
are recitations of specific functionality of the recited components. On this
record, the Examiner must give patentable weight to these limitations.
C. Adequate Written Description
The Examiner finds that the Specification fails to provide an adequate
written description for the mobile terminal, as recited in claims 1–10. Non-
Final Act. 10–13. Section 112(a) provides:
The specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same . . . .
(Emphasis added.) As our reviewing court has explained,
[t]he “written description” requirement implements the principle
that a patent must describe the technology that is sought to be
patented; the requirement serves both to satisfy the inventor’s
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obligation to disclose the technologic knowledge upon which the
patent is based, and to demonstrate that the patentee was in
possession of the invention that is claimed.
Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005) (emphasis added).
For the reasons given below, we do not sustain the Examiner’s rejection.
1. Claim 1
The Examiner finds that the Specification fails to disclose outputting
“NFC encrypted transaction data” and “combined wireless network+NFC
encrypted transaction data,” as recited in claim 1. Non-Final Act. 10. In
particular, the Examiner finds “[Paragraphs 33–34 of the Specification] and
corresponding Fig. 2A Items 210 and 212 disclose the operations of
‘encrypting’ but fail to disclose in detail what NFC encrypted and combined
wireless+NFC encrypt are.” Id. (citing MPEP § 2161.01). The Examiner
finds that these terms are not defined in a recognized dictionary of computer
terms, i.e., the Microsoft Computer Dictionary (5th ed. 2002), and the
Specification fails to provide “[t]he algorithm or steps/procedure taken to
perform the function . . . with sufficient detail so that one of ordinary skill in
the art would understand how the inventor intended the function to be
performed.” Ans. 5 (underlining omitted).
In addition, the Examiner asserts the Specification fails to disclose
“what applicant considers ‘a wireless network circuit.’ For example
paragraph 0015 [of the Specification], discloses ‘The wireless network
circuit may include a Bluetooth circuit . . . .’ without describing the wireless
network circuit. Also, the ‘wireless network circuit’ is not a term of art.”
Non-Final Act. 10–11.
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Nevertheless, Appellant contends that a person of ordinary skill in the
relevant art would have understood these terms. See Reply Br. 8. Moreover,
in a communication from the European Patent Office (EPO), which was
disclosed to the Office on February 1, 2018, the EPO found:
The usage of NFC to encrypt the transaction data to output NFC
encrypted transaction data is well-known in order to improve
security (see e.g. 05 page 4 first paragraph which discloses that
NFC uses AES-128 bit data encryption in mobile payment
transactions). Other documents may also be provided if such
feature is further contested.
Communication pursuant to Article 94(3) EPC corresponding to European
Patent Application No. 15713583.1, Sheet 4, Para. 4.1.6 (Jan. 26, 2018)
(emphasis added). Thus, we are persuaded that a person of ordinary skill in
the relevant art would have understood NFC encryption and how to
accomplish it sufficiently from Appellant’s description. Further, the EPO
found that “the wireless network circuit comprises a Bluetooth circuit are
well-known [to] the person skilled in the art, being an engineer in the field
of electronic payment devices.” Id. at Sheet 4, Para. 4.2.1 (emphasis added);
see id. at Sheet 4, Para. 4.4. (“Moreover, both NFC and Bluetooth are known
to provide encryption. Hence, it a normal design procedure to encrypt the
data using NFC and also Bluetooth in order to improve security.” (citation
omitted)).
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In addition, Figure 4 of the present application is reproduced below.

Figure 4 is a block diagram of the processor, the NFC circuit, and the
Bluetooth circuit of the mobile terminal. Spec. ¶ 5.5 Figure 4 clearly depicts
the claimed double encryption, that is, wireless network circuit encryption,
e.g., Bluetooth circuit 320 encryption by encryptor 422, of transaction data
that has been NFC encrypted by encryptor 432 of NFC circuit 330. See id.
¶¶ 41–43. In particular, Figure 4 depicts an arrow representing the NFC
encrypted transaction data connecting encryptor 432 with encryptor 422.
See In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (The content of the
drawings also may be considered in determining compliance with the written

5 The Specification includes certain repetitions in its paragraph numbering.
Here, we cite to the paragraph 5 on page 2 of the Specification, rather than
on page 5.
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description requirement.); see also MPEP § 2163(II.A.3). (“An applicant
may show possession of an invention by disclosure of drawings . . . that are
sufficiently detailed to show that applicant was in possession of the claimed
invention as a whole.”). Figure 2A of the present application and the
Specification’s disclosure with respect to Figure 2A provide further support
for the functions recited in claim 1. Spec. ¶¶ 32–34.
With respect to the wireless network circuit, the Specification
discloses that:
The wireless network circuit is configured to establish a wireless
network link with an accessory device that is separate from the
mobile terminal, encrypt the NFC encrypted transaction data to
output combined wireless network+NFC encrypted transaction
data, and transmit the combined wireless network+NFC
encrypted transaction data through the Bluetooth link to the
accessory device for relay to a financial transaction terminal.
In a further embodiment, the wireless network circuit
includes a Bluetooth circuit that is configured to establish a
Bluetooth link with the accessory device, encrypt the NFC
encrypted transaction data to output combined Bluetooth+NFC
encrypted transaction data, and transmit the combined
Bluetooth+NFC encrypted transaction data through the
Bluetooth link to the accessory device for relay to the financial
transaction terminal.
Spec. ¶¶ 4–5;6 id. at 16 (original claim 1 reciting “a wireless network link”
and “the Bluetooth link” (emphases added)). Thus, we are persuaded the
wireless network circuit is adequately described by the functions that it
performs, regardless whether the wireless network circuit includes a
Bluetooth circuit or whether the wireless network link includes a Bluetooth
link.

6 See supra note 5.
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Because the specification is written for a person of ordinary skill in
the relevant art, to satisfy the written description requirement, the
specification needs to provide sufficient disclosure to convince a person of
ordinary skill in the relevant art that Appellant possessed the invention.
LizardTech Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir.
2005); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). We are
persuaded that, given the EPO’s undisputed findings and the depictions of
Figures 2A and 4 and the Specification’s disclosure with respect to Figures
2A and 4, a person of ordinary skill in the relevant art would have
understood that Appellant was in possession of the mobile terminal, as
recited in claim 1. See Appeal Br. 18–21. We do not sustain the Examiner’s
rejection of claim 1 for lack of written description.
2. Claim 5
Claim 5 recites that, in the device of claim 4, “when the application is
executed by the processor, the processor is further configured to command
the accessory device to not perform NFC encryption of the first data.”
Appeal Br. 47 (Claims App.) (emphasis added). Paragraph 45 of the
Specification discloses language substantially similar to the claim, namely,
“[t]he processor 300 may be further configured by execution of the payment
application 312 to command the accessory device 170 to not perform NFC
encryption of data received . . . .” Spec. ¶ 45. Despite this disclosure, the
Examiner finds that this limitation lacks adequate written description
because “[t]he specification fails to disclose the corresponding algorithm to
perform . . . the operation of ‘commanding.’” Non-Final Act. 11.
Appellant contends that a person of ordinary skill in the relevant art
would have understood the communication of instructions between the
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mobile terminal and a separate accessory device. Appeal Br. 21; see Spec.
¶¶ 27–28. Further, Appellant contends that a person of ordinary skill in the
relevant art would have understood that a mobile terminal may command the
accessory device to alter its functionality, i.e., to not perform a function of
which it is capable. Appeal Br. 21; see Spec., Figs. 5, 6, ¶¶ 8,7 45–46.
The level of detail required to satisfy the written
description requirement varies depending on the nature and
scope of the claims and on the complexity and predictability of
the relevant technology. . . . The critical inquiry 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.
MPEP § 2161.01. Here, the Examiner does not persuade us that a particular
algorithm must be disclosed, so that a person of ordinary skill in the relevant
art would have understood how the mobile terminal may instruct the
accessory device not to perform a function of which the accessory device is
capable. We do not sustain the Examiner’s rejection of claim 5 for lack of
written description.
3. Claims 7–9
Claim 7 recites, in the device of claim 6, “the NFC circuit is further
configured to: . . . transmit the NFC output signal via an NFC antenna
through a NFC link while the Bluetooth output signal is being transmitted by
the Bluetooth circuit through the Bluetooth link to the accessory device.”
Appeal Br. 48 (Claims App.). The Examiner notes, however, the
Specification provides that “[t]he NFC circuit 330 may output the digital

7 See supra note 5. Here, we cite to the paragraph 8 on page 2 of the
Specification, rather than on page 8.
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serial stream through a testing interface configured for enabling testing or
verification . . . ,” and claim 7 does not recite a “testing interface.” Non-
Final Act. 11 (quoting Spec. ¶ 50 (emphasis added)). The Examiner finds,
“as the specification discloses the additional devices of the accessory device
and the point of sale terminal, the claim is broader than the specification
because the specification only provides support for sending ‘The NFC
output signal’ to a testing interface.” Id. at 11–12.
Initially, we note that the Specification does not require transmission
“through a testing interface.” Spec. ¶ 50. Further, the Examiner improperly
imports a limitation associated with a specific embodiment from the
Specification into claim 7 in order to support this rejection. See MPEP
§ 2111.01(II). We do not sustain the Examiner’s rejection of claim 7 for
lack of written description. See Reply Br. 12.
The Examiner uses this “same line of reasoning” to reject claims 8
and 9. Non-Final Act. 12 (citing Spec. ¶ 50). For the reasons given above,
we find the Examiner’s reasoning unpersuasive and do not sustain the
Examiner’s similar rejection of claims 8 and 9.
4. Claim 8
In addition to rejecting claim 8 based on the “same line of reasoning”
as claim 7, the Examiner rejects claim 8 as lacking adequate written
description for other reasons. Claim 8 recites, in the device of claim 1, “the
wireless network circuit comprises a Bluetooth circuit, and wherein: the
NFC circuit is further configured to output the NFC encrypted transaction
data as a digital serial stream to the Bluetooth circuit.” Appeal Br. 48
(Claims App.). The Examiner also finds that the Specification describes the
NFC circuit as a component of the accessory device. Non-Final Act. 12
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(citing Spec. ¶ 22). Therefore, the Examiner finds that this claim recites new
matter.
Referring to Figure 4, reproduced above, the application clearly
discloses that the NFC circuit and the Bluetooth circuit may be components
of the mobile terminal. The accessory device also may include a NFC
circuit and a Bluetooth circuit. Spec., Figs. 5, 6, ¶ 22. Moreover, the
Specification provides express support for this limitation of claim 8. Id.
¶ 11. Consequently, the Examiner does not persuade us that claim 8 lacks
adequate written description for this limitation, and we do not sustain this
rejection.
5. Claim 10
Claim 10 recites that, in the device of claim 1,
the wireless network circuit comprises a Bluetooth circuit
configured to:
receive encrypted transaction response data via the Bluetooth
link from the accessory device that is encrypted by a second NFC
circuit of the another NFC enabled communication device with a
NFC encryption and is further encrypted by a Bluetooth circuit
of the accessory device with a Bluetooth encryption; and
decrypt the encrypted transaction response data to remove
the Bluetooth encryption while leaving the NFC encryption to
output NFC encrypted transaction response data; and
wherein the first NFC circuit is further configured to:
decrypt the NFC encrypted transaction response data to
remove the NFC encryption to generate transaction response
data; and
output the transaction response data for use by the
application.
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Appeal Br. 48–49 (Claims App.) (emphases added). The Examiner finds
that the Specification fails to provide sufficient detail of the specific
operation for NFC and Bluetooth encryption and decryption. Non-Final
Act. 11, 12–13.
Appellant contends, “Bluetooth encryption/decryption and NFC
encryption/decryption would be well known to a person of ordinary skill in
cryptography, Bluetooth, and/or NFC such that the steps recited by Claim 10
would be clearly understood.” Appeal Br. 24; see Reply Br. 18. Further,
Appellant contends the Specification provides adequate written description
of the recited NFC and Bluetooth encryption and decryption. Appeal Br. 24
(citing Spec., Figs. 2A, 2B, ¶¶ 45, 49). In view of our discussion of NFC
and Bluetooth encryption with respect to claim 1, the EPO’s undisputed
findings, and the cited portions of the Specification with respect to both
claims 1 and 10, the Examiner does not persuade us that claim 10 lacks
adequate written description, and we do not sustain this rejection.
For the reasons given above, we reverse the Examiner’s rejection of
claims 1–10 under 35 U.S.C. § 112(a) as lacking adequate written
description.
D. Definiteness
The Examiner rejects claims 1–10 as indefinite (1) as unclear in
scope, (2) as reciting hybrid claims, and/or (3) as reciting terms lacking
proper antecedent basis. Non-Final Act. 13–18. 35 U.S.C. § 112(b)
provides “[t]he specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the
inventor or a joint inventor regards as the invention.” “A decision on
whether a claim is indefinite under 35 U.S.C. 112(b) . . . requires a
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determination of whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” MPEP
§ 2173.02.
In the Answer, the Examiner refers to the indefiniteness rejections that
“the Examiner maintains” or are “maintained.” E.g., Ans. 8 (referring to the
indefiniteness rejection of claims 2 and 3). Further, the Examiner expressly
withdraws the rejection of claims 7 and 8 for lack of antecedent basis. Id.
at 11. Although the Examiner included a “Withdrawn Rejections” section in
the Answer (id. at 3), the Examiner failed to list all of the withdrawn
rejections in that section (see id. at 11). Consequently, despite some
uncertainty created by the Examiner’s identification of maintained and
withdrawn rejections, we treat the indefiniteness rejections raised in the
Non-Final Office Action, but not maintained in the Answer, as withdrawn.
For the reasons given below, we do not sustain the Examiner’s
indefiniteness rejection of claims 1–3 and 8–10.
1. Alleged Lack of Clarity
a. Claims 1, 3, 4, and 10
The Examiner finds claim 1 is unclear as to whether the accessory
device is claimed in combination with the mobile device. Non-Final Act.
13–14; Ans. 8–9. Although claim 1 makes reference to an accessory device,
claim 1 recites expressly that it is directed to “[a] mobile terminal” and
makes clear “the accessory device is separate from the mobile terminal.”
Appeal Br. 46 (Claims App.) (emphasis added). The claim language
governs, and, although the mobile terminal may command actions of or
communicate with the accessory device that does not alter the definite
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recitation that the accessory device is separate from the mobile terminal.
Appeal Br. 25–26, 30–32; Reply Br. 15, 17–18. Further, the Specification
clearly describes the relationship between the mobile terminal and the
accessory device. See, e.g., Spec., Figs. 2A, 2B, ¶¶ 4–8.
We are persuaded that a person of ordinary skill in the relevant art
would understand what is claimed when claim 1 is read in light of the
Specification. Consequently, we do not sustain this rejection of claim 1.
As with claim 1, the Examiner maintains the rejection of claims 3, 4,
and 10 as not clearly claiming only the mobile terminal, and relies on similar
reasoning to reject those claims. Ans. 8–9. For the reasons given above
with respect to claim 1, we find the Examiner’s reasoning unpersuasive and
do not sustain this basis for rejecting of claims 3, 4, and 10.
b. Claim 2
Claim 2 recites, in the device of claim 1,
a Bluetooth link [of a Bluetooth circuit is] configured to:
establish the Bluetooth link to the accessory device;
encrypt the NFC encrypted transaction data to output
combined Bluetooth+NFC encrypted transaction data; and
transmit the combined Bluetooth+NFC encrypted
transaction data through the Bluetooth link to the accessory
device for relay to the another NFC enabled communication
device.
Appeal Br. 46 (Claims App.) (emphasis added). The Examiner finds, “[i]t is
unclear whether the NFC encrypted transaction data is being encrypted a
second time because claim 1 recited that the NFC encrypted has already
been encrypted.” Non-Final Act. 14; see Ans. 8.
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We understand the Examiner’s confusion to arise from Appellant’s
unnecessary repetition of the “establish,” “encrypt,” and “transmit”
functions from claim 1 in claim 2. Based on the Specification (e.g., Spec.,
Figs. 3, 4, ¶¶ 38–45) and Appellant’s contentions (Appeal Br. 28; Reply
Br. 16–17), we understand that the difference between claim 1 and claim 2 is
that, in claim 2, “the wireless network link comprises a Bluetooth link, and
. . . the wireless network circuit comprises a Bluetooth circuit.” Appeal
Br. 46 (Claims App.); see Spec. ¶ 31 (“However, instead of sending the NFC
encrypted transaction data through the internal NFC circuit directly to an
NFC circuit of the [point-of-sale (POS)] terminal 110, it instead further
encrypts the NFC encrypted transaction data using an internal Bluetooth
circuit and then communicates the combined Bluetooth and NFC encrypted
transaction data (also referred to as ‘Bluetooth+NFC encrypted transaction
data’) through the Bluetooth link 162 to the accessory device 170.”). Thus,
Appellant’s effort to clarify that the “establish,” “encrypt,” and “transmit”
functions of claim 1 are performed by the Bluetooth link of a Bluetooth
circuit, may have created confusion.
Although we recognize the source of the Examiner’s confusion, we
are not persuaded that a person of ordinary skill in the relevant art would fail
to understand what is claimed when claim 2 is read in light of the
Specification. Consequently, on this record, we do not sustain this
rejection.8

8 Although we do not sustain the Examiner’s indefiniteness rejection of
claim 2, when prosecution resumes, Appellant should consider amending
claim 2 to clarify further its meaning.
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c. Claim 10
The Examiner finds claim 10 indefinite both because, like claim 1, it
allegedly is unclear whether claim 1 is directed to a mobile terminal and an
accessory device and because of its specific recitations regarding
“encrypting.” We addressed the first of these reasons above. Regarding the
second reason, claim 10 recites, in the device of claim 1,
the wireless network circuit comprises a Bluetooth circuit
configured to:
receive encrypted transaction response data via the
Bluetooth link from the accessory device that is encrypted by a
second NFC circuit of the another NFC enabled communication
device with a NFC encryption and is further encrypted by a
Bluetooth circuit of the accessory device with a Bluetooth
encryption; and
decrypt the encrypted transaction response data to remove
the Bluetooth encryption while leaving the NFC encryption to
output NFC encrypted transaction response data.
Appeal Br. 48–49 (Claims App.). The Examiner finds, “[t]he limitation
recites two ‘encrypt[ing]’ operations: a) performed by a second NFC circuit,
and b) performed by a Bluetooth circuit. Therefore, the ‘encrypted’
transaction response data may refer to either one of the two ‘encrypting’
operations.” Non-Final Act. 16; see Ans. 9. We disagree.
As Appellant contends, when considered in its entirety, claim 10
clearly recites that “encrypted transaction response data” is twice encrypted:
first, NFC encryption is performed “by a second NFC circuit of the another
NFC enabled communication device,” and, second, Bluetooth encryption is
performed “by a Bluetooth circuit of the accessory device.” Appeal Br. 31–
32; Reply Br. 18; see Spec., Fig. 2B (steps 236 and 240). Further, once the
“encrypted transaction response data” is decrypted to remove the Bluetooth
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encryption, the claim refers to this partially-decrypted transaction response
data as “NFC encrypted transaction response data” because only NFC
encryption remains. Appeal Br. 49 (Claims App.). The final portion of
claim 10 recites that the NFC circuit of the mobile terminal is configured to
“decrypt the NFC encrypted transaction response data to remove the NFC
encryption to generate transaction response data.” Id.; see Spec., Fig. 2B
(step 246).
Considering claim 10 in its entirety and in view of the Specification’s
disclosure, we are not persuaded that a person of ordinary skill in the
relevant art would fail to understand what is claimed in claim 10.
Consequently, on this record, we do not sustain this rejection.
2. Alleged Hybrid Claims
In IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed.
Cir. 2005), the Federal Circuit held that a claim reciting both a system and
the method for using the system, i.e., a hybrid claim, is indefinite, because it
does not apprise a person of ordinary skill in the relevant art of its scope. Id.
at 1384. In IPXL, the court determined it was unclear whether infringement
of the claim occurred when one created the system or whether infringement
occurred when a user actually used the system. Id. The Examiner rejects
claims 1–10 under 35 U.S.C. § 112(b) as allegedly reciting hybrid claims.
See Non-Final Act. 17. In particular, the Examiner finds claims 1 and 4
recite hybrid claims. Ans. 9–10. The Examiner concludes, “[c]laims 2-10
and 5 are rejected as each depends on claims 1 and 4, respectively.” Non-
Final Act. 17.
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a. Claims 1–3 and 6–10
Claim 1 recites “a wireless network circuit configured to: . . . transmit
the combined wireless network+NFC encrypted transaction data through the
wireless network link to the accessory device for relay to another NFC
enabled communication device.” Appeal Br. 46 (Claims App.) (emphasis
added). The Examiner finds that the word “enabled” indicates that the
action of enabling is being performed, which would make it a process step
within a machine claim. Ans. 10.
Appellant contends that
based on the Specification of the present application, a person of
ordinary skill in the art would understand that the recited “NFC
enabled communication device” is a terminology for a
communication device that has NFC functionality [and] does not
necessary imply the action of “enabling” being performed, as
alleged by the Office Action.
Appeal Br. 32; see Reply Br. 19. We agree with Appellant.
Claim 1 is not invalid as indefinite, because we are persuaded the
“enabled” limitation reflects a capability of another communication device,
rather than the activities of a user. See UltimatePointer, L.L.C. v. Nintendo
Co., 816 F.3d 816, 827 (Fed. Cir. 2016) (“Unlike IPXL and similar cases, the
claims at issue here make clear that the ‘generating data’ limitation reflects
the capability of that structure rather than the activities of the user.”).
Consequently, we do not sustain this rejection with respect to claim 1 or
dependent claims 2, 3, and 6–10.
b. Claim 4
Claim 4 recites, in the device of claim 3,
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when the application is executed by the processor, the processor
is further configured to command the accessory device to
forward a first data received via the Bluetooth link from the
mobile terminal to the another NFC enabled communication
device via a NFC link between the accessory device and the
another NFC enabled communication device, and to forward a
second data received via the NFC link from the another NFC
enabled communication device to the mobile terminal via the
Bluetooth link.
Appeal Br. 47 (Claims App.) (emphasis added). The Examiner asserts,
“[h]ybrid claim rejections are rejection[s] not based on ‘what’ but based on
‘when.’ Therefore, the public is not sufficiently placed on notice because
one skilled in the art would not know when infringement would occur.”
Ans. 10 (citing UltimatePointer, 816 F.3d at 822 (“The court therefore
determined that it was unclear whether the system claims were infringed
when the apparatus was created, or when the apparatus was put to the
specified use.”)). Thus, the Examiner rejects claim 4, as well as claim 5 that
depends therefrom.
Appellant contends, however, that claim 4 does not attempt to claim
both a machine and a process, but, instead, claims a machine with particular
capabilities. Reply Br. 19; see Appeal Br. 33. We disagree.
Claim 4 recites that “when the application is executed by the
processor,” the processor is configured to command the accessory device to
forward the first and second data. Appeal Br. 47 (Claims App.) (emphasis
added). Thus, if there were a machine that would satisfy all of the
limitations of claim 4 if the application was executed, that same machine
arguably would not meet the “when” clause if the application were never
executed (“when the application is executed . . . , the processor is . . .
configured”). Therefore, we are persuaded infringement of claim 4 depends
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upon actual use of such a machine, not merely its capabilities. Claim 5
recites a similar “when” clause with the same problem. In IPXL, our
reviewing court held claims indefinite when it was unclear whether
infringement occurred when the machine was made or when it was used.
IPXL, 430 F.3d at 1384; see In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011). We are persuaded that the
language of claims 4 and 5 creates the same confusion. Consequently, we
sustain the rejection of these claims.
On this record, we are not persuaded that the Examiner shows claims
1–3 and 6–10 are hybrid claims, but we are persuaded the Examiner shows
claims 4 and 5 are hybrid claims. Consequently, on this record, we sustain
this rejection of claims 4 and 5, but do not sustain this rejection of claims 1–
3 and 6–10.
3. Lack of Antecedent Basis
The Examiner rejects claim 6 as reciting “the combined
Bluetooth+NFC encrypted transaction data” and rejected claims 7 and 8 as
reciting “the Bluetooth circuit,” without proper antecedent basis. Non-Final
Act. 18. Appellant proposed an amendment to claim 6 to overcome the
antecedent basis rejection and requested that the Examiner hold that
antecedent basis rejection in abeyance pending the outcome of this appeal.
Appeal Br. 34. Further, Appellant contends that the Examiner overlooked
the recitation of “a Bluetooth circuit” in each of claims 7 and 8. Id.
The Examiner withdrew the antecedent basis rejection of claims 7
and 8, but declined to hold the rejection of claim 6 in abeyance. Ans. 11; see
Reply Br. 20 (requesting that we consider the proposed amendment to
claim 6 and hold the rejection of claim 6 in abeyance). Appellant may not
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reserve arguments for some later time. Arguments not made are considered
waived. See 37 C.F.R. § 41.37(c)(1)(iv). Consequently, we sustain this
rejection of claim 6, as well as claim 7 that depends from claim 6. Appeal
Br. 48 (Claims App.).
For the reasons given above, we sustain the indefiniteness rejection of
claims 4–7, but do not sustain the indefiniteness rejection of claims 1–3 and
8–10.
E. Failure to Show Anticipation by Smith
The Examiner rejects claims 1–10 as anticipated by Smith. Non-Final
Act. 18–19. In particular, the Examiner finds that Smith discloses a mobile
terminal comprising a processor, an NFC circuit, and a wireless network
circuit. Id. at 18. The Examiner finds that the functional limitations
ascribed to these components in the pending claims are not entitled to
patentable weight. Id. at 18–19; see id. at 5–7. Therefore, the Examiner
finds Smith’s disclosure of the recited components of the mobile terminal is
sufficient to show anticipation of claims 1–10. Id. at 19; see Ans. 11–12.
Appellant contends that the Examiner erred by giving the functional
claim language no patentable weight. Appeal Br. 34; see Reply Br. 20–21.
For the reasons given above in Sections A and B of this decision, we agree
with Appellant. Consequently, we do not sustain the anticipation rejection
of claims 1–10.
F. Obviousness Over Smith, Maeda, Haddick, and Purves, Alone or in
Combination with Other References or Art
1. Claim 1
As noted above, the Examiner rejects independent claim 1 as obvious
over the combined teachings of Smith, Maeda, Haddick, and Purves. Non-
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Final Act. 20–22. In particular, the Examiner finds that Smith does not
teach or suggest an NFC circuit configured to “encrypt the transaction data
to output NFC encrypted transaction data” or a wireless network circuit
configured to “encrypt the NFC encrypted transaction data to output
combined wireless network+NFC encrypted transaction data.”9 Id.
Nevertheless, the Examiner finds that Maeda teaches or suggests these
limitations (id. at 21 (citing Maeda ¶¶ 14, 38, 194, 222)) and that a person of
ordinary skill in the relevant art would have had reason to combine the
teachings of Smith and Maeda (id. (citing Maeda ¶ 4)). Further, the
Examiner finds that the remaining limitations, not taught or suggested by
Smith and Maeda, are taught or suggested by Haddick or Purves. Id. at 21–
22. Moreover, a person of ordinary skill in the relevant art would have had
reason to combine the teachings of these four references to achieve the
mobile terminal, as recited in claim 1. See id. at 22.
Appellant contends the Examiner erred in rejecting this claim for two
reasons: first, Maeda does not teach or suggest the limitations missing from
Smith, and, second, the Examiner fails to provide an adequate reason for
combining the teachings of Smith, Maeda, Haddick, and Purves. Appeal
Br. 34–39; see Reply Br. 22–24. For the reasons given below, we disagree.
First, Appellant contends that “Maeda fails to disclose or suggest
‘encrypt the transaction data to output NFC encrypted transaction data; . . .

9 Although the Examiner finds that the functional limitations of the pending
claims are given no patentable weight in the anticipation rejection, the
Examiner finds that the combination of Smith, Maeda, Haddick, and Purves
teach or suggest all of the functional limitations and alleged statements of
intended use recited in claims 1, 2, and 4–9 (though not claims 3 and 10).
See Non-Final Act. 31 (discussing claim 10); Ans. 16 (discussing claim 3).
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encrypt the NFC encrypted transaction data to output combined wireless
network+NFC encrypted transaction data,’ as recited by Claim 1.” Appeal
Br. 37. Maeda’s Figure 37, including our annotations, is reproduced below.

Figure 37 depicts a terminal device comprising a main body portion and an
auxiliary portion including first and second encryption circuits, respectively.
Maeda ¶¶ 38, 318. In particular, Maeda discloses:
In the battery charger 673, the key generation unit 676
generates the key K2 for encryption and the encryption circuit
631 encrypts the memory code Co read out from the memory 601
on the basis of the key K2 and transmits the encrypted memory
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code to the main body portion 671 as a memory code Co#. In
the main body portion 671, the key generation unit 633 generates
the key Kl for encryption and the encryption circuit 631 encrypts
the identification code Cd generated by the code generation unit
400on the basis of the key Kl and transmits the encrypted
identification code to the communication circuit 405a as an
identification code Cd#. The encryption circuit 631 in the main
body portion 671 also encrypts the memory code Co# transmitted
from the battery charger 673 on the basis of the key Kl and
transmits the encrypted memory code to the communication
circuit 405a as a memory code Co##. The memory code Co## is
doubly encrypted on the basis of the two keys Kl and K2.
Id. ¶ 318. Despite teaching double encryption, Appellant contends that
Maeda fails to teach or suggest encryption by an NFC circuit or encryption
of transaction data. Appeal Br. 37–38 (“In other words, the operations of
Maeda regarding the memory code do not operate on transaction data related
to a transaction that are received by the NFC circuit.”). Nevertheless, the
Examiner relies on Smith, not Maeda, to teach or suggest the NFC circuit
(Non-Final Act. 20 (citing Smith, Fig. 5 (“NFC controller 516”), 16:13–49))
and relies on Purves, not Maeda, to teach or suggest the transaction data (id.
at 22 (citing Purves, Figs. 2B and 2E (“Transaction Authorization Request
237a”), 4I, ¶¶ 148, 153, 155)).
Appellant improperly challenges Maeda’s teachings individually,
instead of as part of the combination of references relied upon by the
Examiner. Ans. 12–13 (citing In re Merck & Co., 800 F.2d 1091 (Fed. Cir.
1986); In re Keller, 642 F.2d 413 (CCPA 1981)). We are persuaded that the
Examiner shows Maeda teaches or suggests the limitations of claim 1 for
which the Examiner applies it in the asserted combination of references.
Second, Appellant contends the Examiner fails to show that a person
of ordinary skill in the relevant art would have had reason to combine the
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teachings of Smith, Maeda, Haddick, and Purves. Appeal Br. 38–39. In
particular, Appellant contends, “it would not be obvious to a person of
ordinary skill in the art to include the NFC circuit of Haddick in the battery
charger of Maeda.” Id. at 38. However, the Examiner is not physically
combining the components of Haddick and Maeda; instead, the Examiner is
combining their teachings. Non-Final Act. 21–22.
As noted above, the Examiner relies on Smith, not Haddick, to teach
or suggest the NFC circuit, and Maeda to teach double encryption. See Non-
Final Act. 20–21. The Examiner relies on Haddick to teach the execution of
communication with another NFC enabled communication device. Id. at 21
(citing Haddick ¶¶ 1286–89, 1292). We are persuaded that these references,
in combination, teach or suggest the identified limitations of claim 1 and a
person of ordinary skill in the art would have had reason to combine their
teachings. Ans. 13–14.
Appellant further contends, “a person of ordinary skill in the art would
not be motivated to replace the memory code Co that identifies the cellular
phone in the battery charger of Maeda with the generated payment data of
Purves.” Appeal Br. 38. Again, the Examiner is not physically combining
the components of Maeda and Purves; instead, the Examiner is combining
their teachings. Non-Final Act. 22.
As noted above, the Examiner relies on Smith to teach or suggest the
NFC circuit, and Maeda to teach double encryption. See Non-Final Act. 20–
21. The Examiner relies on Purves to teach that transaction data may be
transmitted by the NFC and wireless network (e.g., Bluetooth) circuits
taught or suggested by Smith. Id. at 22; see Purves, Fig. 40A (“Transaction
authorization input (e.g., NFC, Bluetooth, etc.) 4114”), ¶¶ 346, 366. We are
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persuaded that these references, in combination, teach or suggest the
identified limitations of claim 1 and a person of ordinary skill in the art
would have had reason to combine their teaching. Ans. 14–15.
For the reasons given above, we are not persuaded that the Examiner
erred in finding that Smith, Maeda, Haddick, and Purves teach or suggest all
of the limitations of claim 1 and that a person of ordinary skill in the relevant
art would have had reason to combine the teachings of these references in
the manner proposed by the Examiner. Consequently, we sustain the
obviousness rejection of claim 1. Because Appellant does not challenge the
obviousness rejections of claims 2, 4, 8, and 9 apart from its challenge to
claim 1, we also sustain the rejections of those claims.
2. Claim 3
Claim 3 recites, in the device of claim 1, “when the application is
executed by the processor, the processor is further configured to command
the accessory device to proxy communications between the mobile terminal
and the another NFC enabled communication device.” Appeal Br. 46–47
(Claims App.). The Examiner finds that Haddick teaches the limitations of
this claim not taught or suggested by Smith and Maeda. Non-Final Act. 23–
24 (citing Haddick ¶¶ 1286–89, 1292). In particular, the Examiner finds that
the function “to proxy” is merely an intended use and is given no patentable
weight and construes claim 3 without including the verb “to proxy.”
Ans. 16.
We are persuaded that the Examiner erred giving the alleged
statement of intended use language no patentable weight. Reply Br. 24–25;
see Spec. ¶¶ 6, 16, 30, 32. For the reasons given above in Section B of this
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decision, we agree with Appellant. Consequently, we do not sustain the
obviousness rejection of claim 3.
3. Claim 5
Claim 5 recites, in the device of claims 1, 3, and 4, “when the
application is executed by the processor, the processor is further configured
to command the accessory device to not perform NFC encryption of the first
data received via the Bluetooth link from the mobile terminal before
transmission via the NFC link to the another NFC enabled communication
device.” Appeal Br. 47 (Claims App.) (emphasis added). The Examiner
finds that Pritchett teaches or suggests not performing the NFC encryption.
Non-Final Act. 26–27; Ans. 16.
Pritchett’s Figure 1 is reproduced below.

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Figure 1 depicts “an illustration of an exemplary environment that includes a
tuner device that encrypts media content using counter mode encryption, and
a controller that decrypts and consumes the media content.” Pritchett, 2:24–
27. In particular, the Examiner finds controller 112 instructs tuner device
114 that some content need not be encrypted. Non-Final Act. 26 (citing
Pritchett, 3:53–57, 6:7–13).
Appellant contends Pritchett fails to teach or suggest commanding a
device separate from the mobile terminal not to encrypt information received
from the mobile terminal before sending it to another device. Appeal Br. 42;
Reply Br. 25–26. We agree.
The command provided by Pritchett’s controller 112 to tuner
device 114 instructs how tuner device 114 is to provide data to controller
112. See Pritchett, Fig. 1. This does not teach the additional limitation of
claim 5. We are persuaded that the Examiner erred in finding that Pritchett
teaches or suggests the additional limitation of claim 5, and we do not
sustain this rejection.
4. Claim 6
Claim 6 recites, in the device of claim 1, the wireless network circuit
“convert[s] the combined Bluetooth+NFC encrypted transaction data to a
Bluetooth analog signal; modulat[es] the Bluetooth analog signal with a
Bluetooth carrier signal to generate a Bluetooth output signal; and
transmit[s] the Bluetooth output signal via a Bluetooth antenna through the
Bluetooth link to the accessory device.” Appeal Br. 47 (Claims App.). The
Examiner finds Ito teaches or suggests this limitation. Non-Final Act. 28
(citing Ito ¶ 39). In particular, Ito discloses:
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The transmitting/receiving unit 52 serves to transmit and
receive, for example, a signal in the 2.4 GHz band in accordance
with the Bluetooth system. One end of the transmitting/receiving
unit 52 is connected to the antenna 51 and the other end is
connected to the controller 53. The transmitting/receiving unit
52 inputs and outputs data to and from the antenna 51 and the
controller 53. When transmitting data from the antenna 51, the
transmitting/receiving unit 52 converts digital data input from
the controller 53 into analog data, and performs primary
modulation thereon in accordance with a sequence of 0s and 1s
of the digital data. . . . Further, upon input of a signal of analog
data that is received by the antenna 51, the transmitting/receiving
unit 52 converts the analog data into digital data by performing
processes opposite to those described above, and outputs the data
to the controller 53.
Ito ¶ 39 (emphases added).
Appellant contends, “Ito generally describes digital to analog
conversion. However, Ito is silent regarding converting encrypted data to a
Bluetooth analog signal.” Appeal Br. 43; see Reply Br. 26. Nevertheless,
Ito clearly describes conversion to and transmission of an analog Bluetooth
signal, and the Examiner relies on Smith, not Ito, to teach the encryption of
the data for transmission in a Bluetooth signal. Ans. 17.
For the reasons given above, we are not persuaded that the Examiner
erred in finding that Smith, Maeda, Haddick, Purves, and Ito teach or
suggest all of the limitations of claim 6 and that a person of ordinary skill in
the relevant art would have had reason to combine the teachings of these
references in the manner proposed by the Examiner. Therefore, we sustain
the obviousness rejection of claim 6.
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5. Claim 7
We summarily reverse the Examiner’s rejection of claim 7 over the
combined teachings of Smith, Maeda, Haddick, and Purves. As noted
above, claim 7 depends from claim 6, and, as discussed above, the Examiner
rejects claim 6 over the combined teachings of Smith, Maeda, Haddick,
Purves, and Ito. Non-Final Act. 27–28. Consequently, the Examiner’s
rejection of claim 6, which relies on Ito, and of claim 7, which omits Ito
despite claim 7’s dependence from claim 6, are inconsistent; and, on this
record, we cannot sustain the obviousness rejection of claim 7.
6. Claim 10
Claim 10 recites, in the device of claim 1, wireless network circuit
comprises
a Bluetooth circuit configured to:
receive encrypted transaction response data via the
Bluetooth link from the accessory device that is encrypted by a
second NFC circuit of the another NFC enabled communication
device with a NFC encryption and is further encrypted by a
Bluetooth circuit of the accessory device with a Bluetooth
encryption.
Appeal Br. 48 (Claims App.) (emphasis added); see Non-Final Act. 31. The
Examiner acknowledges that this limitation “is not expressly taught by
Smith, Maeda, Haddick, Purves, and Saito,” but finds that “the language will
not be given patentable weight as it recites not positively recited language.”
Non-Final Act. 31.
We are persuaded that the Examiner erred giving this limitation no
patentable weight. See Reply Br. 26–27. For the reasons given above in
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Sections A and B of this decision, we agree with Appellant. Consequently,
we do not sustain the obviousness rejection of claim 10.
NEW GROUND OF REJECTION OF CLAIMS 3 AND 9 UNDER
37 C.F.R. § 41.50(B)
We make the following new ground of rejection:
• Claims 3 and 9 are rejected under 35 U.S.C. § 112(b) as indefinite.
In the Non-Final Office Action, the Examiner found that claims 4 and
5 recite hybrid claims and rejected claims 4 and 5 under 35 U.S.C. § 112(b)
as indefinite. We sustained the Examiner’s rejection of claims 4 and 5 on
that basis. We note that, like claims 4 and 5, claim 3 recites “when the
application is executed by the processor, the processor is further configured”
to do an action. Appeal Br. 47 (Claims App.) (emphasis added). Similarly,
claim 9 recites that “the NFC circuit is disabled . . . while the processor is
executing the application.” Id. at 48 (emphasis added). The Examiner,
however, does not address whether claim 3 or 9 is a hybrid claim for this
reason. Non-Final Act. 17; Ans. 9–10.
As we found with respect to claims 4 and 5, if there were a machine
that would satisfy all of the limitations of claims 3 and 9 if the application
was executed, that same machine arguably would not meet the “when” or
“while” clauses if the application were never executed (claim 3: “when the
application is executed . . . , the processor is . . . configured” or claim 9:
“while the processor is executing the application” (emphases added)).
Therefore, on this record, claims 3 and 9 create uncertainty about whether a
machine infringes merely from its capabilities or rather from its use.
As noted above, in IPXL, our reviewing court held claims indefinite
when it was unclear whether infringement occurred when the machine was
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made or when it was used. IPXL, 430 F.3d at 1384; see Katz Interactive
Call Processing, 639 F.3d at 1318. We are persuaded that the language of
claims 3 and 9 creates the same confusion. Consequently, we are persuaded
claims 3 and 9 are indefinite for the same reasons as claims 4 and 5,
discussed above.
DECISIONS
1. The Examiner erred in rejecting claims 1–10 under 35 U.S.C. § 112(a)
as lacking adequate written description.
2. The Examiner erred in rejecting claims 1–3 and 8–10 under 35 U.S.C.
§ 112(b) as indefinite, but did not err in rejecting claims 4–7 under 35
U.S.C. § 112(b) as indefinite.
3. The Examiner erred in rejecting claims 1–10 under 35 U.S.C.
§ 102(a)(1) as anticipated by Smith.
4. The Examiner erred in rejecting claims 3 and 7 under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Smith, Maeda,
Haddick, and Purves, but did not err in rejecting claims 1, 2, 4, and 8
under 35 U.S.C. § 103(a) as obvious over the combined teachings of
Smith, Maeda, Haddick, and Purves
5. The Examiner erred in rejecting claim 5 under 35 U.S.C. § 103(a) as
obvious over the combined teachings of Smith, Maeda, Haddick,
Purves, and Pritchett.
6. The Examiner did not err in rejecting claim 6 under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Smith, Maeda,
Haddick, Purves, and Ito.
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7. The Examiner did not err in rejecting claim 9 under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Smith, Maeda,
Haddick, Purves, and APA.
8. The Examiner erred in rejecting claim 10 under 35 U.S.C. § 103(a) as
obvious over the combined teachings of Smith, Maeda, Haddick,
Purves, and Saito.
9. We enter a new ground rejecting claims 3 and 9 under 35 U.S.C. §
112(b) as indefinite.
10. Thus, on this record, claim 10 is not unpatentable.
CONCLUSION
Because we affirm at least one rejection of each of claims 1, 2, and 4–
9, we affirm the Examiner’s decision rejecting those claims. For the reasons
given above, on this record, we reverse the Examiner’s decision rejecting
claims 3 and 10. We also enter a new ground rejecting claims 3 and 9.

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In summary:
Claims
Rejected
35
U.S.C. §
Basis/Reference(s) Affirmed Reversed New
Ground
1–10 112(a) Written Description

1–10
1–10 112(b) Indefiniteness 4–7 1–3, 8–10
1–10 102(a)(1) Smith 1–10
1–4, 7, 8 103 Smith, Maeda, Haddick,
Purves
1, 2, 4, 8 3, 7
5 103 Smith, Maeda, Haddick,
Purves, Pritchett
5
6 103 Smith, Maeda, Haddick,
Purves, Ito
6
9 103 Smith, Maeda, Haddick,
Purves, APA
9
10 103 Smith, Maeda, Haddick,
Purves, Saito
10
3, 9 112(b) Indefiniteness 3, 9
Overall
Outcome
1, 2, 4–9 3, 10 3, 9
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. . . .
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(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01. 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).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)