VERIFONE, INC.Download PDFPatent Trials and Appeals BoardJan 27, 20212020001304 (P.T.A.B. Jan. 27, 2021) Copy Citation 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). Appeal 2020-001304 Application 14/661,328 2 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; Appeal 2020-001304 Application 14/661,328 3 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 Appeal 2020-001304 Application 14/661,328 4 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. Appeal 2020-001304 Application 14/661,328 5 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. Appeal 2020-001304 Application 14/661,328 6 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 Appeal 2020-001304 Application 14/661,328 7 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 Appeal 2020-001304 Application 14/661,328 8 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). Appeal 2020-001304 Application 14/661,328 9 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. Appeal 2020-001304 Application 14/661,328 10 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 Copy with citationCopy as parenthetical citation