SSenStone Inc.

Patent Trials and Appeals Board

Nov 24, 2021

2022000002 (P.T.A.B. Nov. 24, 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.
16/056,812 08/07/2018 Chang Hun YOO 600600-000055 3672
78198 7590 11/24/2021
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
EXAMINER
IDIAKE, VINCENT I
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
11/24/2021 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):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHANG HUN YOO
____________

Appeal 2022-000002
Application 16/056,8121
Technology Center 3600
____________

Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1–3, 6–9, and 16.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as SSenStone
Inc. (Appeal Br. 2.)
2 Claims 17 and 18, although listed in the Claims Appendix to the Appeal
Brief, were cancelled. (See Appeal Br. 18; see also Non-Final Action 2.)
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2
CLAIMED SUBJECT MATTER
Appellant’s invention relates “to a system for payment based on a
store’s intranet, a mobile terminal including a payment function based on the
store’s intranet, a method for providing a payment service based on the
store’s intranet, and a program for performing the same.” (Spec. ¶ 2.)
Claim 1 is the sole independent claim on appeal. It recites:
1. A method for providing a payment service based on a
store’s intranet, the method comprising:
receiving, by a store client including a processor and
memory, from a user client including a processor and memory, a
request for a store payment page;
providing, by the store client, data of the store payment
page to the user client through the store’s intranet;
setting, by the user client that is connected with the store’s
intranet but is blocked from the Internet, a unit count at a time
interval;
generating, by the user client that is connected with the
store’s intranet but is blocked from the Internet, through a virtual
code generation function stored in the user client, a virtual code
that is matched in each unit account to a card number that is
assigned to a card by a card issuer and includes information
capable of searching a financial institution server or a virtual
token verification server corresponding to the card number;
changing, by the user client that is connected with the
store’s intranet but is blocked from the Internet, the unit count
over the time interval;
inputting, to the store client, through the store payment
page, the virtual code and order information; and
transmitting, by the store client that is connected with the
store’s intranet and is also connected with the Internet, the virtual
code and the order information to a payment service server over
the Internet.
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REJECTIONS
Claims 1–3 and 6–9 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.3
Claims 1 and 16 are rejected under 35 U.S.C. § 103 as unpatentable in
view of Huang (US 9,864,994 B2, iss. Jan. 9, 2018) and Matthews
(US 2018/0130053 A1, pub. May 10, 2018).
Claims 2, 3, and 6–8 are rejected under 35 U.S.C. § 103 as
unpatentable in view of Huang, Matthews, and Foster (US 8,600,892 B2, iss.
Dec. 3, 2013).4
Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable in view of
Huang, Matthews, and Labrou (US 2005/0027543 A1, pub. Feb. 3, 2005).

ANALYSIS
The new matter rejection
With regard to the limitation “the user client that is connected with the
store’s intranet but is blocked from the internet,” the Examiner finds that
“[t]he Specification describes the user client being ‘blocked’ ([Spec.] ¶¶ 48,
55) from or ‘not connected’ ([Spec.] ¶ 81) to the internet, and not a process
for blocking or disconnecting a user client from the internet. The
Applicant’s Specification does not disclose how the disconnecting the

3 We note that claim 16 depends from claim 1. In view of our decision in
this case, we treat the omission of claim 16 from this rejection as harmless
error.
4 We treat the Examiner’s reference to “[c]laims 2-8 are rejected under 35
U.S.C. 103” as a harmless typographical error in view of the cancellation of
claims 4 and 5. (See Non-Final Action 9.) We treat the Examiner’s
references to “Forster,” rather than Foster, as harmless typographical error.
(See, e.g., id. at 9–11.)
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4
internet is performed.” (Non-Final Action 6.) Therefore, the Examiner
determines that “this limitation is new matter as the specification does not
provide support for ‘disconnecting the user client from an Internet.’” (Id.)
Specifically, the Examiner determines that Appellant’s Figure 1 and
paragraph 48 of the Specification “do[] not disclose how the blocking of the
internet is possible while the store client is connected to the intranet without
showing the structure or process of blocking the internet.” (Answer 4.)
Appellant argues that
paragraph [0048] of the specification states that, “when the user
client 200 is connected to the intranet, access to the Internet may
be blocked.” FIG. 1 of the drawings also shows the user client
200 that is positioned in the broken-lined box of “Intranet.” In
FIG. 1, the user client 200 is not in the broken-lined box of
“Extranet” (i.e., Internet). As such, the Present Application
provides reasonable clarity that Appellant was in possession of
the user client that is connected with the store’s intranet but is
blocked from the Internet, as claimed.
(Appeal Br. 7.) Additionally, “Appellant submits that how to block a client
device from the internet is . . . well known in the art need not be described in
detail in the specification.” (Id. (citing https://stackoverflow.com/questions/
10959979/disable-block-internet-access-from-android-phone5).)
If . . . the specification contains a description of the claimed
invention, albeit not in ipsis verbis (in the identical words), then
the examiner or Board, in order to meet the burden of proof, must
provide reasons why one of ordinary skill in the art would not
consider the description sufficient. Once the examiner or Board
carries the burden of making out a prima facie case of
unpatentability, “the burden of coming forward with evidence or
argument shifts to the applicant.” To overcome a prima facie

5 This URL was earlier cited by Appellant on page 7 of the Amendment filed
January 29, 2021. The associated article is titled “Disable/Block Internet
Access from Android Phone.”
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case, an applicant must show that the invention as claimed is
adequately described to one skilled in the art. “After evidence or
argument is submitted by the applicant in response, patentability
is determined on the totality of the record, by a preponderance of
the evidence with due consideration to persuasiveness of
argument.”
In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (citations omitted). “[T]he
applicant must . . . convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the
invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed.
Cir. 1991).
As an initial matter, we note that claim 1 does not recite
“disconnecting a user client from the internet.” (See Non-Final Action 6.)
Rather, claim 1 recites setting/generating/changing “by the user client that is
connected with the store’s intranet but is blocked from the internet.”
Therefore, we do not agree with the Examiner that lack of disclosure in the
Specification of a disconnecting limitation, not in the claim, constitutes new
matter. Additionally, the Specification discloses that
[a]s a user client 200 scans and connects a wireless
communication signal for a store’s intranet, the store client may
establish a connection with the user client 200. Since the intranet
is able to receive information from the store client and transmit
information to the store client and is unable to use the Internet,
when the user client 200 is connected to the intranet, access to
the Internet may be blocked.
(Spec. ¶ 48.) Thus, the Specification discloses a user client connected to the
intranet but that may be blocked from the Internet. For this reason also, we
disagree with the Examiner that the limitation “the user client that is
connected with the store’s intranet but is blocked from the internet” is new
matter.
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Additionally, neither the Non-Final Action nor the Answer discuss the
article “Disable/Block Internet Access from Android Phone” cited by
Appellant. Therefore, it is not clear whether the Examiner’s rejection for
failure to comply with the written description requirement of § 112(a) was
made on the totality of the record. See In re Alton, 76 F.3d at 1175. We
decline to make a determination, in the first instance, as to whether the
Specification meets all of the requirements of § 112(a). We will reverse the
new matter rejection of claim 1 and of dependent claims 2, 3, 6–9, and 16.6

The § 103 rejections
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)). “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational

6 The Examiner states that “[d]ependent [c]laims 2-9 are also rejected since
they depend on claim 1.” (Non-Final Action 6 (emphasis omitted).)
However, as noted supra, claims 4 and 5 were cancelled, and claim 16 also
depends from claim 1. We treat the Examiner’s reference the “[c]laims 2-9”
as harmless, inadvertent error.
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underpinning to support the legal conclusion of obviousness.” Id. at 418
(brackets in original) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
The Examiner finds that Huang discloses all of the limitations of
claim 1 except that “Huang does not explicitly disclose: ‘user client is
blocked from the Internet’; [and] ‘wherein the online transaction form is
order information.’” (Non-Final Action 8.) The Examiner finds that
Matthews discloses:
“user client is blocked from the Internet” (¶¶ [0023],
[0040]-[0043]); “wherein the online transaction form is order
information” (¶¶ [0024]-[0025], [0035]-[0036]).
Therefore, it would have been obvious to one of ordinary
skill in the art to incorporate the transaction information
enhancement as disclosed by Matthews (¶¶ [0024]-[0025],
[0035]-[0036]), in the transaction request of Huang (col 2
lines 52-61, col 14 lines 51-64), in order to improve the ease and
convenience of electronic payment transactions.
(Id.)
Appellant argues that “claim 1 explicitly recites that each operation of
setting the unit count, generating the virtual code, and changing the unit
count is performed by the user client that is connected with the store’s
intranet but is blocked from the Internet but the cited references are silent
with respect to those features.” (Appeal Br. 11.) Specifically, Appellant
argues that “the disabled state of Matthews is a state to restrict certain user
inputs. The disabled state of Matthews is not related to control [of] network
connections.” (Reply Br. 4.)
Huang discloses devices, systems, and methods relating to “a
magnetic stripe storage and transmission device . . . for use in conjunction
with a mobile wallet application and platform to capture, store and transmit
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magnetic stripe card data to merchants’ conventional point of sale (POS)
terminals.” (Huang, col. 2, ll. 29–34.)
Matthews discloses a “computer system, computer program product,
and method [that] includes detecting a request for sensitive information to be
input by a user, determining that a network is a non-secure network, [and]
disabling a sensitive user information input function to prevent the user from
entering sensitive information over the unsecure network.” (Matthews,
Abstract.) Specifically, Matthews discloses a method that,
[i]n response to the determining that the network 108 is not
secure, step 203 disables the computer functionality for inputting
sensitive information . . . . Step 204 generates for display a
unique identifier 165, such as a QR code, on the computer 111a
for scanning by the user . . . . which the user may scan,
photograph or otherwise capture for switching to a secure
network (e.g. 4G/LTE or cellular network, secure wi-fi network,
etc.) to initiate an automatic processing function.
(Id. ¶ 40.)
In other words, Matthews teaches disabling user input upon detection
of a non-secure network. But rather than disabling user input, claim 1
recites setting/generating/changing data “by the user client that is connected
with the store’s intranet but is blocked from the Internet.” That is, the user
client is blocked from the Internet.
The Examiner does not sufficiently explain why one would have been
motivated to modify Huang in view of Matthews such that, e.g., the setting
of a unit count at a time interval is not by a user client that disables the
functionality for inputting sensitive information when a non-secure network
(i.e., Internet) is detected, but rather is by a user client that is connected with
the store’s intranet but is blocked from the Internet. See KSR Int’l Co., 550
U.S. at 418.
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Therefore, we will reverse the rejection of claim 1 and dependent
claim 16. The Examiner does not rely on the additionally cited art to cure
this deficiency. Therefore, we will also reverse the rejections of dependent
claims 2, 3, and 6–9.

CONCLUSION
The Examiner’s rejection of claims 1–3 and 6–9 under 35 U.S.C.
§ 112(a) is reversed.
The Examiner’s rejections of claims 1–3, 6–9, and 16 under 35 U.S.C.
§ 103 are reversed.
Specifically:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6–9 112(a) Written Description 1–3, 6–9
1, 16 103 Huang, Matthews 1, 16
2, 3, 6–8 103 Huang, Matthews,
Foster
2, 3, 6–8
9 103 Huang, Matthews,
Labrou
9
Overall
Outcome
1–3, 6–9,
16

REVERSED