VERIFONE, INC.

Patent Trials and Appeals Board

Jan 27, 2021

2020001304 (P.T.A.B. Jan. 27, 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.
14/661,328 03/18/2015 Michael SCHMID 054060.001073 1016
175224 7590 01/27/2021
VeriFone/ Greenberg Traurig
77 West Wacker Drive, Suite 3100
Chicago, IL 60601
EXAMINER
KELLY, RAFFERTY D
ART UNIT PAPER NUMBER
2876
MAIL DATE DELIVERY MODE
01/27/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SCHMID, JACK RICHARD GRENFELL,
MARINEL RIVERA, MEHRAN MIRKAZEMI, SCOTT MCKIBBEN,
CHRISTOPHER DELGADO, and EPHRAIM CHROLOVICH
Appeal 2020-001304
Application 14/661,328
Technology Center 2800

Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

The Appellant2 appeals under 35 U.S.C. § 134(a), from the
Examiner’s decision finally rejecting claims 4, 5, 10, 11, and 20.3 Claims 2,

1 This Decision includes citations to the following documents: Specification
filed Mar. 18, 2015 (“Spec.”); Final Office Action dated Nov. 15, 2018
(“Final Act.”); Appeal Brief filed May 30, 2019 (“Appeal Br.”); Examiner’s
Answer dated Oct. 15, 2019 (“Ans.”); and Reply Brief filed Dec. 5, 2019
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as Verifone,
Inc. Appeal Br. 1 (The Appeal Brief does not include page numbering.
Accordingly, we have added numbering, starting with the first page
appearing after the Table of Contents.)
3 We have jurisdiction under 35 U.S.C. § 6(b).
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3, 6, 8, 9, and 13–19 are also pending. The Examiner determined that these
claims would be allowable if rewritten in independent form. Final Act. 4.
We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to a point of sale device. Spec. ¶ 4. The
inventive device includes a contactless payment antenna located in
propinquity to an LCD display. Id. ¶ 44. Contactless communication
circuitry for effecting transactions is associated with the contactless payment
antenna. Id. Similarly, LCD control circuitry is associated with the LCD
display. Id. The device also includes coordination control circuitry for
controlling the LCD control circuitry’s operation, thereby reducing
interference to operation of the contactless communication circuitry. Id. In a
preferred embodiment, “the LCD control circuitry provides a clock signal
and a data enable signal and at least one of the clock signal and the data
enable signal is varied in order to reduce interference between the [LCD]
display and operation of the contactless communication circuitry.” Id. ¶ 22.
For example, at least one of the data enable signal and the clock signal is
disabled during at least some of transmit/receive time duration of the
contactless communication circuitry. Id. ¶¶ 23–24. The clock signal may be
slowed or stopped during a payment data transfer operation of the
contactless communication circuitry. Id. ¶¶ 25–27. Claim 10 is illustrative of
the claimed subject matter, and is reproduced below from the Appeal Brief’s
Claims Appendix:
10. A point of sale device comprising:
an LCD display;
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a contactless payment antenna arranged in propinquity to
said LCD display;
LCD control circuitry;
contactless communication circuitry associated with said
contactless payment antenna; and
coordination control circuitry operative to control
operation of said LCD control circuitry thereby to reduce
interference to operation of said contactless communication
circuitry resulting from operation of said LCD display,
said coordination control circuitry being operative to
cause the operation of said LCD control circuitry and said
contactless communication circuitry to be such that updating
data to said LCD display is altered when said contactless
communication circuitry is carrying out a transaction in order to
reduce the interference therebetween.
Claim 20, the only other independent claim on appeal, recites “[a] method of
operating an LCD display in propinquity to a contactless antenna,” and
includes a step of altering operation of updating data to the LCD display to
reduce interference to operation of the contactless communication circuitry.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Toy US 2005/0075689 A1 Apr. 7, 2005
Kuo US 2006/0283940 A1 Dec. 21, 2006
Lee US 2008/0113631 A1 May 15, 2008
OPINION
The Examiner rejected claims 4, 5, 10, 11, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Kuo in view of Toy and Lee. The Appellant
argues that the “Pre-Appeal Brief Conference [Panel] already found claim
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10 to be allowable over the same cited art now being relied upon to reject the
claims.” Appeal Br. 5 (citing Notice of Panel Decision from Pre-Appeal
Brief Review, dated Feb. 6, 2018). The Appellant contends that the only
difference between the prior and present rejections is the ordering of Kuo
and Lee, i.e., Lee was previously designated as the primary reference. See id.
at 5–6. The Appellant argues that “each reference is still missing the
elements that the panel found to be missing when it issued the Notice of
Panel Decision,” and “the order in which these references are combined does
not change this fact. Therefore, for at least this reason, this rejection is
improper and must be withdrawn.” Id. at 6.
The Appellant’s argument is not persuasive. The Pre-Appeal Brief
Conference Pilot Program “is designed to allow applicants who think there is
a clear deficiency in the prima facie case in support of a rejection to file the
[pre-appeal brief conference] request at the same time that they file a notice
of appeal.” Official Gazette of the USPTO, 1296 Off. Gaz. Pat. 2 (July 12,
2005). Under the program, “[a] panel of examiners (including the examiner
of record) will consider the merits of each ground of rejection for which
appeal has been requested . . . .” Id. “After the review is complete, the Office
will mail a decision on the status of the application.” Id. In the present case,
the panel’s decision was to withdraw the rejection and reopen prosecution.
Notice of Panel Decision from Pre-Appeal Brief Review, dated Feb. 6, 2018.
Although the panel determined that no issue for appeal was present in the
record before them, the panel did not determine that claim 10 was allowable
over the combined teachings of Kuo, Toy, and Lee. See id.
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The Appellant quotes In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir.
2012) in support of its argument that “merely reordering the cited references
is insufficient to create a new obviousness rejection.” Appeal Br. 6. But the
Appellant fails to include the court’s acknowledgement that “there may be
some cases in which relevant factual determinations inhere in such
characterization of prior art references.” Mouttet, 686 F.3d at 1333. In this
case, the Examiner explains that “the restructuring of the rejection in view of
Kuo, Toy, and Lee is not limited to the primary and secondary designations
of the references. The new rejection relies upon different factual inquires
and the combination of the references is made in a different way with a
different motivation.” Final Act. 4; see also Ans. 4. The Appellant has not
shown that the Examiner’s characterization of the present rejection is
erroneous, and has not otherwise persuaded us that the Examiner’s rejection
is improper.
The Appellant argues that the Examiner’s rejection is based solely on
improper hindsight reasoning. Appeal Br. 6. The Appellant acknowledges
that Kuo describes a multifunctional card reader that is suitable for point-of-
sale transactions, but argues that Toy’s handheld programmer for a medical
device is in an unrelated field of endeavor and Lee’s system and method of
controlling an RF transceiver is not described as being usable with a point of
sale device. Id. at 6–8. The Appellant argues that the Examiner has not
identified “a suggestion in the references, or a suggestion from the
knowledge of one of ordinary skill in the art” to support combining the
references’ teachings. Id. at 9.
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The Appellant’s argument is not persuasive. The Examiner found that
the ordinary artisan would have altered the operation of Kuo’s LCD display
by using Toy’s coordination control circuitry to “ensure[] that the operation
of the LCD does not negatively impact the contactless communication.”
Final Act. 3. The Examiner found that the ordinary artisan would have
altered data updating to Kuo’s LCD display when the contactless
communication circuitry was carrying out a data transaction in order to
prevent interference with the LCD’s RF signal as taught by Lee. Id. The
Appellant has not explained why these findings are not supported by Toy
paragraphs 16–19 and Lee paragraph 13 and Figure 2, relied on by the
Examiner in making these findings. Absent some explanation of why the
Examiner’s specific findings are erroneous or unreasonable, the Appellant’s
mere assertions are not persuasive of reversible error. See Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections.”).
Like the Examiner, we find the Appellant’s hindsight argument more
akin to an argument that Toy and Lee are nonanalogous art. See Ans. 5. A
reference qualifies as analogous art if it is in the same field of endeavor as
the invention or reasonably pertinent to the particular problem with which
the inventor was involved. Innovention Toys, LLC v. MGA Entm’t, Inc., 637
F.3d 1314, 1321 (Fed. Cir. 2011). In the Answer, the Examiner explains why
each of Toy and Lee, at a minimum, “logically would have commended
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itself to [the] inventor’s attention in considering his problem,” id. See Ans.
5.
In the Reply Brief, the Appellant addresses the Examiner’s
explanation as though it advances new reasons for modifying Kuo’s point of
sale device. See Reply Br. 1–3. We disagree that the Answer presents a new
rationale. Compare Final Act. 3 (finding that the ordinary artisan would have
modified Kuo to use Toy’s and Lee’s features that “ensure[] that the
operation of the LCD does not negatively impact the contactless
communication” and “prevent[] interference with the RF signal from the
LCD device”), with Ans. 5 (“[O]ne of ordinary skill would look to Toy’s
device because it faces the same issues of interference between the LCD
display . . . [and] to Lee because it is a physically similar device that
presents some of the same challenges regarding the display and the antenna
as faced by Kuo.”). Rather we find that the Appellant’s Reply Brief raises
new arguments that could have been made in the Appeal Brief. “Any
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner’s answer, including
any designated new ground of rejection, will not be considered by the Board
for purposes of the present appeal, unless good cause is shown.” 37 C.F.R.
§ 41.41(b)(2) (2018); see also Cross Med. Prods. Inc. v. Medtronic Sofamor
Danek, Inc., 424 F.3d 1293, 1320–21 n.3 (Fed. Cir. 2005) (noting that
arguments not raised in the opening Brief are deemed waived). Accordingly,
we decline to consider the Appellant’s new arguments.
In the interest of advancing any further prosecution of this application,
we add that the Appellant’s Reply Brief improperly focuses on the absence
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of an explicit recognition by Kuo of potential interference problems when
operating the LCD display and contactless communication circuitry.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Translogic
Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007) (explaining that a
reference’s teachings and its obvious variants are relevant prior art, even if
the reference addresses a problem which differs from that addressed by a
patent applicant); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.”).
The Appellant argues that the combination of Kuo, Toy, and Lee
would not have resulted in a point of sale device comprising coordination
control circuitry that was operative to alter data updating to the LCD display
as recited claim 10’s last paragraph. Appeal Br. 10. The Appellant contends
that both Toy and Lee turn off their displays to prevent interference. Id. at
12–13. The Appellant argues that the present invention does not disable or
turn off the LCD display, but alters data updating to the LCD display by
stopping or slowing the LCD clock or disabling the data enable signal. Id. at
10–11 (citing Spec. ¶¶ 76–77).
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The Appellant’s arguments are not persuasive of reversible error in
the Examiner’s rejection. The Examiner contends that when Toy’s and Lee’s
displays are turned off, “updating data to [the] LCD display is altered”
(claim 10) because data is not sent to the LCD display. Ans. 5. The
Examiner’s position is consistent with the Specification’s disclosure that in
the preferred embodiment, “the coordination control circuitry is operative to
cause the operation of the LCD control circuitry and the contactless
communication circuitry to be such that the contactless communication
circuitry generally operates when data is not being written on the LCD
display in order to reduce interference therebetween.” Spec. ¶ 13. We have
reviewed the Specification but do not find any indication that the manner of
preventing data from being written on the LCD display is limited to stopping
or slowing the LCD clock or disabling the data enable signal. See, e.g., id.
¶ 14 (“Preferably, the coordination control circuitry is operative to vary at
least one of the clock signal and the data enable signal in order to reduce
interference between the LDC display and operation of the contactless
communication circuitry.”). Nor has the Appellant identified support in the
Specification for its contention that claim 10 “requires that updating data to
the LCD display is altered, while the display is still on.” Reply Br. 4.
In sum, for the reasons stated above, and based on the Examiner’s fact
finding and analysis in the Final Office Action and the Answer, we are not
persuaded of reversible error in the Examiner’s conclusion of obviousness as
to claim 10. Because the Appellant does not argue in support of separate
patentability of any other claim (see generally Appeal Br. 4–13), we sustain
the rejection as to all appealed claims.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
4, 5, 10, 11,
20
103(a) Kuo, Toy, Lee 4, 5, 10,
11, 20

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