VeriFone, Inc.

Patent Trials and Appeals Board

Jun 23, 2021

2020001532 (P.T.A.B. Jun. 23, 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.
15/900,317 02/20/2018 John Henry Barrowman 054060.001196 7891
175224 7590 06/23/2021
VeriFone/ Greenberg Traurig
77 West Wacker Drive, Suite 3100
Chicago, IL 60601
EXAMINER
ONYEKABA, AMY
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
06/23/2021 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):
GTIPMAIL@gtlaw.com
cadanoc@gtlaw.com
clairt@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN HENRY BARROWMAN, DOUG LEIGH MANCHESTER,
and WILLIAM MARTIN JOHANSEN JR.

____________

Appeal 2020-001532
Application 15/900,317
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, ADAM J. PYONIN, and
GARTH D. BAER, Administrative Patent Judges.

BAER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 31–45, which are all pending claims.1 Appeal
Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Verifone, Inc. as the real party in interest. Appeal Br. 1.
Appeal 2020-001532
Application 15/900,317

2
BACKGROUND
A. The Invention
Appellant’s invention is directed to a “data entry device” including a
housing, and “OFN [Optical Finger Navigation] circuitry mounted inside the
housing, being operative for sensing tampering with the device and
providing a tamper indication output to the tamper detection circuitry.”
Spec. ¶ 7. Claims 31 and 37 are independent. Claim 31 is representative
and reproduced below:
31. A device, comprising:
a device housing defining an enclosed space;
a light source disposed in the device housing operative to
illuminate the enclosed space;
an optical sensor disposed in the device housing and
operative to sense a first level of light within the device housing
at a first time and a second level of light within the device
housing at a second time; and
anti-tampering detection circuitry operative to detect a
tampering event based on a difference between the first level of
light and the second level of light.

Appeal Br. 13 (Claims App.).

B. The Rejections on Appeal
The Examiner rejects claims 31–45 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 6,
Ans. 3.

Appeal 2020-001532
Application 15/900,317

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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
A. Written Description Rejection of Claim 31
Appellant argues that the disclosure establishes that “background
noise may be used as a thumbprint, captured upon manufacture of the device
at the factory, employed for verification, typically each time that the device
is booted up”, and
once this thumbprint is captured upon manufacture, it is
compared to the background noise sensed upon bootup. If the
sensed background noise does not differ from the thumbprint,
the device has not been tampered with. If it does differ,
however, there may be a tamper event.

Reply Br. 4 (citing Spec. ¶ 80) (emphasis omitted). Appellant contends that
the disclosure accompanying Figures 2A–2E, in which Figure 2E “describes
[a] removal of [a] key that allows a flood of light into the housing[,]”
illustrates that “one of ordinary in the art would understand that Figure 2A
and Figure 2E represent different levels of light taken at two different
times.” Reply Br. 6 (emphasis in original).
Appellant further argues that in Figures 6A–6B (in which Figure 6B
illustrates placement of probe 634 inserted into data entry device 600 as
illustrated by Figure 6A) and in Figures 7A–7B (in which Figure 7B
illustrates removal of key 708 from data entry device 700 as illustrated by
Figure 7A), each figure set represents an example in which the OFN (Optical
Finger Navigation) module includes an “optical sensor” that detects
tampering. See Reply Br. 7–9; see also Spec. ¶¶ 67–69.
Appeal 2020-001532
Application 15/900,317

4
We are not persuaded by Appellant’s arguments. The Examiner finds
that the claims “fail[] to comply with the written description requirement” in
part because the independent claims recite “a first level of light received
from within the device housing at a first time” and “a second level of light
received from within the device housing a second time” for which the
Specification is “silent.” Final Act. 6 (emphasis omitted). Particularly, the
Examiner finds that when viewing Appellant’s figures,
a person of ordinary skill in the art would not readily determine
how a level of light is determined, obtained and/or measured
with respect to a point in time as applicant points out by just
looking at these figures; at best a person can only see two pixels
(as mentioned in Applicant[’]s disclosure []; Fig[ures] 2a–2d
represent[] a pixel grid, with block representing a single pixel
or an X by Y array of pixels [] disappearing from the grid.

Ans. 5 (citing Spec. ¶ 45). The Examiner finds that “it [is] unclear how the
claim has been drafted based on levels of light with respect to time when
tampering is solely based on determination of appearance and disappearance
of pixels and/or markings.” Ans. 6 (citing Spec. ¶¶ 81–89).
We agree with the Examiner’s findings quoted above. Original claims
may fail to satisfy the written description requirement when the invention is
claimed and described in functional language but the Specification does not
sufficiently identify how the invention achieves the claimed function. Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc).
For software, this can occur when the algorithm or steps for
performing the computer function are not explained at all or are not
explained in sufficient detail. It is not enough that one skilled in the art
could write a program to achieve the claimed function because the
Appeal 2020-001532
Application 15/900,317

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specification must explain how the inventor intends to achieve the claimed
function to satisfy the written description requirement. Vasudevan Software,
Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683 (Fed. Cir. 2015); see also
2019 Guidance, 84 Fed. Reg. 62.
Here, missing from the disclosure is what algorithms or steps for
performing the computer functions of the claimed “detect a tampering
event based on a difference between the first level of light and the second
level of light.” Final Act. 5. The disclosure illustrates situations in which a
tampering event determination might be made via changes in:
(1) particular measured spatial patterns (compare Fig. 2D (tampering) to
Figs. 2A–C (no tampering)), or
(2) average measurements over an array (compare Fig. 2E (tampering) to
Figs. 2A–C (no tampering)).
These illustrations, while helpful, are insufficient to explain how the
inventor intends to achieve the claimed function to satisfy the written
description requirement. Further, Figure 9’s “simplified functional block
diagram” offers insufficient details regarding how to perform the invention,
and neither the disclosure nor Appellant’s arguments refer to the relevant
features or operation of either:

(1) “Model ADBS-A350 commercially available from Pixart Imaging
Inc., No. 5, Innovation Road 1, HsinChu Science Park, Hsin-Chu,
Taiwan, R.O.C.” (see Spec. ¶¶ 35, 54, 70); or
(2) “Model 27903 commercially available from Parallax Inc.” that are
each identified in the disclosure as a sample “OFN module.” (Spec.
¶¶ 30, 66–67, and 69).
Appeal 2020-001532
Application 15/900,317

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This information is insufficient to satisfy the written description
requirement as it too fails to explain how the inventor intends to achieve the
claimed function.

CONCLUSION
Accordingly, we sustain the Examiner’s written description rejection of
independent claim 31, as well as independent claim 37 commensurate in
scope, and dependent claims 32–36 and 38–45 not argued separately. See
Appeal Br. 11.
DECISION SUMMARY
In summary:

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
31–45 112(a) Written
Description
31–45