Mark Butsch et al.Download PDFPatent Trials and Appeals BoardMay 4, 202014861000 - (D) (P.T.A.B. May. 4, 2020) 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. 14/861,000 09/22/2015 Mark Butsch 23693-30376 7835 38642 7590 05/04/2020 WILEY HORTON 215 SOUTH MONROE STREET 2ND FLOOR TALLAHASSEE, FL 32301 EXAMINER MUTSCHLER, JOSEPH M ART UNIT PAPER NUMBER 3627 MAIL DATE DELIVERY MODE 05/04/2020 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 MARK BUTSCH, JON HOFFMAN, and STEPHEN POLLOCK Appeal 2019-006862 Application 14/861,000 Technology Center 3600 Before JAMES R. HUGHES, LINZY T. McCARTNEY, and JASON J. CHUNG, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1, 4, 6, 7, 10, 11, 14, 16, 17, and 20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies the real party in interest as Syn-Tech Systems, Inc. Appeal Brief 1, filed March 25, 2019 (Appeal Br.). Appeal 2019-006862 Application 14/861,000 2 BACKGROUND This patent application concerns “a system allowing a user to automate payment for a dispensing operation with a hand-held communication device such as a smart phone.” Specification 2, filed September 22, 2015. Claim 1 illustrates the claimed subject matter: 1. A fuel payment system for allowing a user to use a fuel dispenser, comprising: a. a fuel dispenser; b. a pump control module configured to monitor an amount of fuel dispensed by said fuel dispenser and control dispensing of said fuel by said fuel dispenser; c. a remote server configured to receive and process payment transactions; d. a graphic containing a machine readable code, said graphic located proximate said fuel dispenser; e. wherein said pump control module includes a limited-range radio frequency transceiver; f. said pump control module configured to operate in a non-discoverable mode, wherein said pump control module will only provide communication access to said pump control module in response to a defined sequence transmitted by a portable electronic device to said transceiver in said pump control module; g said portable electronic device, including i. a processor, ii. a memory associated with said processor, iii. a camera, and iv. a radio frequency transceiver; h. a software application running on said processor in said portable electronic device; Appeal 2019-006862 Application 14/861,000 3 i. said software application configured to store payment information for said user in said memory associated with said processor; j. said camera being configured to capture said readable code in said graphic on said dispenser; k. said software application configured to take said captured image of said machine readable code and determine therefrom said defined sequence to be used to contact said limited-range radio frequency transceiver in said pump control module, wherein said defined sequence is required to establish communication between said portable electronic device and said pump control module; l. said defined sequence only being available within said portable electronic device following said capture of said readable code in said graphic, with said defined sequence not being stored in memory in said portable electronic device following a completion of said dispensing of said fuel; m. said software application configured to use said transceiver in said portable electronic device to transmit said defined sequence to said transceiver in said pump control module to establish a communication link with said transceiver in said pump control module, and thereafter transmit said payment information over said communication link to said pump control module; n. said pump control module being configured to transmit said payment information to said remote server; o. said remote server being configured to receive said payment information from said pump control module and use said payment information to process a payment transaction for said user; and p. said payment information not being stored by said remote server after completion of said payment transaction for said user. Appeal Br. 22–24. Appeal 2019-006862 Application 14/861,000 4 REJECTIONS2 Claims 35 U.S.C. § Reference(s) 1, 11 103 Payne,3 Shalunov,4 Wu,5 Barillaud6 4, 14 103 Payne, Shalunov, Wu, Barillaud, Official Notice 6, 16 103 Payne, Shalunov, Wu, Barillaud, Bonk7 10, 20 103 Payne, Shalunov, Wu, Barillaud, Official Notice, Williams8 7, 17 103 Payne, Shalunov, Wu, Barillaud, Williams DISCUSSION We have reviewed the Examiner’s rejections and Appellant’s arguments, and Appellant has not persuaded us that the Examiner erred. As consistent with the discussion below, we adopt the Examiner’s reasoning, findings, and conclusions on pages 2–16 of the Final Office Action mailed 2 The Office has revised its guidance for evaluating subject matter eligibility under 35 U.S.C. § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). If prosecution continues, we leave it to the Examiner to determine whether the claim passes muster under § 101 in accordance with the Revised Guidance or is instead directed to, for example, certain methods of organizing human activity such as commercial interactions. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure § 1213.02. 3 Payne et al. (US 2008/0308628 A1; December 18, 2008). 4 Shalunov et al. (US 2013/0091288 A1; April 11, 2013). 5 Wu et al. (US 2016/0277506 A1; September 22, 2016). 6 Barillaud et al. (US 9,280,771 B2; March 8, 2016). 7 Bonk et al. (US 2015/0032558 A1; January 29, 2015). 8 Williams et al. (US 2015/0106196 A1; April 16, 2015). Appeal 2019-006862 Application 14/861,000 5 July 23, 2018 (Final Act.), and pages 3–7 of the Examiner’s Answer mailed May 14, 2019 (Ans.). Appellant states “that the argument listed as [S]ection VI(A) . . . is the only argument that needs to be considered to resolve this appeal” and thus “the Board need only consider the question of whether claim 1 and claim 11 are rendered obvious by the combination of Payne, Shalunov, Wu[,] and Barillaud.” Appeal Br. 12. Appellant argues claims 1 and 11 together, so as permitted by 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal for this ground of rejection based on claim 1. Appellant asserts that “[t]he primary factual question is whether Payne discloses the limitation of a remote server not storing any payment information,” that is, limitation p. Appeal Br. 11. Appellant contends that “[t]he cited section of Payne actually says nothing about whether the remote server stores payment information.” Appeal Br. 15. But the Examiner found that Barillaud teaches limitation p, not Payne.9 See Final Act. 10. We thus find unpersuasive Appellant’s argument that Payne does not teach this subject matter. Appellant then states that “[t]he secondary factual question is whether Shalunov discloses the limitation of using a captured image to permit communication of Bluetooth devices operating a non-discoverable mode,” which presumably refers to limitations f and k. Appeal Br. 11; see also Appeal Br. 20–21. Appellant asserts that Shalunov discloses a system in 9 Appellant does not appear to dispute this finding about Barillaud. See Appeal Br. 20 (“Barillaud is cited as disclosing a remote payment system when – following the transaction – none of the user’s information is stored on the server. . . . There is no dispute regarding the fact that Barillaud discloses this one element[].”). Appeal 2019-006862 Application 14/861,000 6 which “Bluetooth devices . . . provide their MAC addresses to [a] beacon” and then “request[] . . . MAC addresses from the beacon” when the devices need to communicate with other Bluetooth devices. Appeal Br. 17–18. According to Appellant, Shalunov also discloses that instead of using a beacon to obtain MAC addresses, a “first device asks [a] second device for all [the] MAC addresses the second device is aware of.” Appeal Br. 18. Appellant contends that these approaches “defeat[] the security advantages of operating in non-discoverable mode.” Appeal Br. 18. We find these arguments unpersuasive. The Examiner did not find that Shalunov discloses limitations f and k as suggested by Appellant. Instead, the Examiner concluded that these limitations would have been obvious given the combined teachings of Payne and Shalunov. See Final Act. 4–9. Payne discloses a “retail fueling environment” in which a customer uses her cellular phone to take a picture of a mobile code on the front of a fuel dispenser. See, e.g., Payne ¶¶ 10–11, 81–82, Fig. 3. The phone extracts identifiers for the fuel dispenser and the retail fueling environment from the picture of the mobile code and then, in some embodiments, uses Bluetooth to communicate with a control system of the fuel dispenser to initiate a transaction. See, e.g., Payne ¶¶ 10–11, 66–67, 97–98, Fig. 6; see also Appeal Br. 14 (stating that Payne’s “application passes along information derived from the graphical image to . . . a controller within [the] dispenser”); Reply Brief 1, filed August 13, 2019 (Reply Br.) (stating that Payne’s “smartphone then passes the dispenser’s identity on to a controller on the dispenser itself”). The Examiner found that this retail fueling environment teaches a “pump control module” and a “software application configured to take said captured image of said machine readable code and determine therefrom said Appeal 2019-006862 Application 14/861,000 7 defined sequence to be used to contact said limited-range frequency transceiver in said pump control module” as recited in limitations f and k but does not teach the rest of these limitations. See Final Act. 4–7. As for Shalunov, the Examiner found that Shalunov teaches allowing communication between Bluetooth devices in non-discoverable mode using a MAC address as a “defined sequence” in order to skip the first two steps of the pairing process. See Final Act. 7–8; see also Shalunov ¶ 26 (“[T]he initiating device transmits a request to the target device using the target devices’ [sic] MAC address. The target device that receives a request with its MAC address would respond to the request, even if it is not in a discoverable mode.” (emphases added)). The Examiner concluded that it would have been obvious to incorporate these teachings into Payne to arrive at limitations f and k because doing so would “enhance security” and involve “the simple substitution of one known element for another producing a predictable result.” See Final Act. 8–9. Notably, the Examiner did not modify Payne to include Shalunov’s method of using a beacon or device-to-device communication to supply MAC addresses. See Final Act. 4–9. So even if this method “defeats the security advantages of operating in non-discoverable mode” as asserted by Appellant, Appellant has not shown that the Examiner’s combination of Payne and Shalunov would suffer from this drawback.10 And as discussed above, the Examiner did not find that Shalunov alone “discloses the limitation of using a captured image to permit communication of Bluetooth 10 In any case, Shalunov suggests that operating a Bluetooth device in non- discoverable mode would still have security advantages. See, e.g., Shalunov ¶ 13. Appeal 2019-006862 Application 14/861,000 8 devices operating a non-discoverable mode” as indicated by Appellant. Appellant therefore has not persuaded us that the Examiner erred. For much the same reason, we find unpersuasive Appellant’s contention in the Reply Brief that “Shalunov defeats [the] security scheme” recited in limitations f and j–l. Reply Br. 2. This contention rests on Appellant’s assertions about Shalunov’s method of using a beacon or device-to-device communication to provide MAC addresses, see Reply Br. 2–3, but as noted above, the Examiner’s combination does not incorporate this aspect of Shalunov into Payne’s system. Because Appellant’s argument that “combining Shalunov with Payne makes no sense because Shalunov teaches a system to defeat security by voluntarily recording and disseminating the defined sequence” also relies on these assertions, Reply Br. 2–3, we find this argument unpersuasive as well. Finally, Appellant asserts that “[a] third factual question is whether Wu discloses the limitation of permitting communication directly between smart phones.” Appeal Br. 11; see also Appeal Br. 19 (asserting that Wu “does not actually appear to permit communication directly between the smartphones”). Appellant has not identified a claim limitation that requires permitting direct communication between smart phones. The Examiner found that Wu teaches the subject matter recited in limitation l, see Final Act. 9–10, and Appellant has provided no persuasive evidence or reasoning that shows that the Examiner erred in this respect. We thus find this argument unpersuasive. CONCLUSION We have considered Appellant’s remaining arguments and find them inadequately presented, unpersuasive, or both. For at least the above reasons, Appeal 2019-006862 Application 14/861,000 9 Appellant has not persuaded us that the Examiner erroneously rejected claim 1 under § 103. We therefore sustain this rejection. The following table summarizes our decision for claims 1, 4, 6, 7, 10, 11, 14, 16, 17, and 20, the claims before us on appeal: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 11 103 Payne, Shalunov, Wu, Barillaud 1, 11 4, 14 103 Payne, Shalunov, Wu, Barillaud, Official Notice 4, 14 6, 16 103 Payne, Shalunov, Wu, Barillaud, Bonk 6, 16 10, 20 103 Payne, Shalunov, Wu, Barillaud, Official Notice, Williams 10, 20 7, 17 103 Payne, Shalunov, Wu, Barillaud, Williams 7, 17 Overall Outcome 1, 4, 6, 7, 10, 11, 16, 17, 20 No 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 Copy with citationCopy as parenthetical citation