MASTERCARD INTERNATIONAL INCORPORATED

Patent Trials and Appeals Board

Jun 4, 2020

2020000512 (P.T.A.B. Jun. 4, 2020)

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.
15/178,061 06/09/2016 Jean-Paul Edmond Rans 16754-000114-US-CPA 7203
120493 7590 06/04/2020
Harness Dickey (Mastercard)
7700 Bonhomme
Suite 400
St. Louis, MO 63105
EXAMINER
GETACHEW, WODAJO
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/04/2020 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):
gwmefile@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-PAUL EDMOND RANS and SUMEET BHATT
Appeal 2020-000512
Application 15/178,061
Technology Center 3600
Before JEFFREY S. SMITH, MELISSA A. HAAPALA, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 23–26 and 29–35, which are all of the
pending claims.2 See Final Act. 1. 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 the applicant,
Mastercard International Inc. Appeal Br. 3.
2 Per Appellant, “[c]laims 1–6 and 22–35 were pending in the current
application, of which [c]laims 1–6, 22, and 27–28 were withdrawn.” Appeal
Br. 5. Claims 7–21 were previously canceled. Appeal Br. 34 (Claims
App.); Final Act. 2.

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CLAIMED SUBJECT MATTER
Appellant’s Specification describes “systems and methods for
verifying users based on biometrics, in connection with transactions using
payment devices, prior to, for example, authorizing the transactions,
distributing benefits associated with the transactions to the users (e.g.,
products, payments, etc.), etc.” Spec. ¶ 2. By way of background, the
Specification describes payment account cards that are used in financial
transactions, such as for purchase of goods or services, for transfers of funds
into and out of bank accounts, and for social assistance. Id. ¶ 4. Such cards
typically are associated with “a variety of card verification methods” that are
used “to ensure that the users of the payment account cards are, in fact,
authorized to use them.” Id.
The Specification purports to describe and claim an improvement in
payment card verification, in which the payment cards “incorporate security
chips (e.g., EMV3 chips, etc.) with biometric sensors (e.g., fingerprint
sensors, etc.).” Id. ¶ 14. “The security chips acts to verify the users, if
possible, by use of the biometric sensors and then, if verified, interact with
terminals . . . to provide transactions, through which the verifications are
confirmed, to the issuers of the payment accounts.” Id.
Claim 23, reproduced below, is the sole independent claim, and
illustrates the claimed subject matter:
23. A system comprising a payment card device, wherein the
payment card device is associated with a payment account and
comprises:
a fingerprint sensor; and

3 “EMV” stands for “Europay®, Mastercard® and VISA®.” Spec. ¶ 33.
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a security chip coupled to the fingerprint sensor and
including a payment application and a verification application
stored in the security chip;
wherein the security chip is configured to receive a select
command from a terminal when the security chip is powered by
the terminal;
wherein the security chip is further configured to invoke
the payment application, in response to the select command,
and wherein the security chip is configured, by the payment
application, to invoke the verification application; and
wherein the security chip is configured, by the
verification application, to:
initiate a timer;
capture a fingerprint image, at the fingerprint
sensor, when the timer is unexpired;
validate the captured fingerprint image against
reference fingerprint data in the payment card device;
when the timer expires, without a match to the
reference fingerprint data, return a first authentication file
location (AFL) to the terminal; and
when a match between the captured fingerprint
image and the reference fingerprint data is found, while
the timer is unexpired, return a second AFL to the
terminal.
REFERENCE
The prior art relied upon by the Examiner is:
Bonalle et al. (“Bonalle”) US 2006/0000892 A1 Jan. 5, 2006
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REJECTIONS4
Claims 23–26 and 29–35 stand rejected under 35 U.S.C. § 112(b) as
being indefinite. Final Act. 5–6.
Claims 23–26 and 29–35 stand rejected under 35 U.S.C. § 102(a)(1)
as being anticipated by Bonalle. Final Act. 6–7.
OPINION
I. INDEFINITENESS REJECTION
The Examiner rejects claims 23–25, and 29–35 under 35 U.S.C.
§ 112(b) as “indefinite” on the ground that they are “directed to neither a
‘process’ nor a ‘machine’ but rather embrace or overlap two different
statutory classes invention,” and thus are “hybrid claim[s].” Final Act. 5. In
particular, as evidence that the claims are “drawn to a product,” the
Examiner points to the preamble of independent claim 23, which recites “[a]
system comprising a payment card device” and further points to the
recitation in the claim of a “fingerprint sensor.” Id. The Examiner then
states “[o]n the other hand, evidence to support a position that the claims are
drawn to a process” includes the recitation in the claims of terms like
“powered,” “selected,” “initiated,” etc. Id. The Examiner concludes that the
claims recite both an apparatus and a method, and thus “do[] not sufficiently
provide competitors with an accurate determination of the ‘metes and
bounds’ of the protection involved.” Id. (citing IPXL Holdings LLC v.
Amazon.com Inc., 430 F.3d 1377 (Fed. Cir. 2005); Ex parte Lyell, 17

4 All rejections are under the provisions of Title 35 of the United States
Code in effect after the effective date of the Leahy-Smith America Invents
Act of 2011.
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USPQ2d 1548 (BPAI 1990); In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303 (Fed. Cir. 2011)).
Appellant argues that the Examiner’s rejection is in error because the
claims do not recite method steps but instead recite “permissible functional
language” to “describe capabilities of the recited structure.” Appeal Br. 14.
Appellant further argues that the cases cited by the Examiner are inapposite,
and that the claims are instead analogous to the claims determined to use
permissible functional language in MasterMine Software, Inc. v. Microsoft
Corp., 874 F.3d 1307 (Fed. Cir. 2017). Id. at 13–14.
Appellant’s argument persuades us of Examiner error. We determine
that the functional limitations in apparatus claim 23 (and similar recitations
in the dependent claims) recite how components in the system (e.g., the
security chip) are to be configured, rather than activities of a user. In that
regard, we agree the claims are more analogous to those addressed in
MasterMine. See MasterMine 874 F.3d at 1315–16; see also Appeal Br. 13–
14; Reply Br. 9–10. In MasterMine, the Federal Circuit reversed the district
court’s finding of indefiniteness of a system claim, which recited, inter alia,
a “reporting module” that “receives from the user a selection . . . , and
generates a database query,” reasoning that “the claims merely use
permissible functional language to describe the capabilities of the claimed
system, [and, therefore] it is clear that infringement occurs when one makes,
uses, offers to sell, or sells the claimed system.” Id. at 1316. In so doing,
the court expressly distinguished IPXL Holdings, which addressed a system
claim reciting, inter alia, “the user uses the input means.” Id.
Here, claim 23 recites a system comprising a payment card device,
further comprising “a security chip,” which is “configured to” perform
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various functions, such as “to receive a select command from a terminal
when the security chip is powered by the terminal,” as well as to “initiate a
timer” and to “capture” and “return” certain data upon satisfaction of certain
conditions. Although claim 23 includes verbs like “initiate,” “capture,” and
“return,” such terms are used in the context of “configured to” clauses, and
therefore represent permissible functional language used to describe the
configuration of the security chip. See MasterMine, 874 F.3d at 1315–16
(“[T]he claims at issue here merely claim that the system ‘possess[es] the
recited structure [which is] capable of performing the recited functions.’”
(citation omitted)). The same is true of the dependent claims, which contain
similar terminology and which the Examiner rejected on the same basis.
See Final Act. 5–6; Appeal Br. 13–15; Reply Br. 9–10.
Accordingly, we do not sustain the Examiner’s rejection of claims 23–
26 or 29–35 as indefinite under § 112(b).
II. ANTICIPATION REJECTION
The Examiner rejects claims 23–26 and 29–35 as anticipated by
Bonalle. Final Act. 6–7. The Examiner does not, however, make findings
that Bonalle discloses certain functionality recited in the claims that the
Examiner determines “represents intended use/functional language and does
not have patentable weight.” Id. at 7. For example, the Examiner makes no
findings that Bonalle discloses “the security chip is configured . . . to”
“initiate a timer,” “capture a fingerprint image,” “validate the captured
fingerprint image,” “return a first authentication file location (AFL) to the
terminal,” or “return a second AFL,” as recited in independent claim 23. Id.
Rather, the Examiner concludes that, given its “broadest reasonable
interpretation,” “the security chip is a processor,” and because “processors
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or CPUs are programmable, the actions of ‘receive, invoke, initiate, validate
and return’ . . . are inherent to these processors or CPUs.” Id. (citing “How
Computers Work,” 7th ed, p.4). The Examiner then determines that
Bonalle’s disclosure of a payment card device that comprises “a fingerprint
sensor; and a security chip coupled to the fingerprint sensor and including a
payment application and a verification application stored in the security
chip; terminal and payment network computing device” is “sufficient in
terms of art.” Id.
Appellant argues the Examiner’s rejection is in error because the
limitations that the Examiner dismisses as merely statements of “intended
use” are in fact structural limitations that are entitled to patentable weight.
Appeal Br. 22. We agree.
It is well settled that when a claim recites an element that is
“configured to” achieve a function, the claim requires that the specific
element is not only “capable of” performing the recited function, but also is
designed specifically to accomplish the function that is claimed. See Aspex
Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.
2012) (indicating that claim language “configured to” is construed more
narrowly than “capable of,” and requires that the structure must be
“designed or configured to accomplish the specified objective, not simply
that [it] can be made to serve that purpose”). Moreover, when functional
language in a claim is associated with programming or some other structure
required to perform the function, that programming or structure must be
present in order to meet the claim limitation. See Typhoon Touch Techs.,
Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing
Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d
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1367 (Fed. Cir. 2008)); see also In re Noll, 545 F.2d 141, 148 (CCPA 1976)
(“[T]he claimed invention . . . comprises physical structure, including
storage devices and electrical components uniquely configured to perform
specified functions through the physical properties of electrical circuits to
achieve controlled results. Appellant’s programmed machine is structurally
different from a machine without that program.”).
Here, the “configured to” language recited in claim 23 imposes a
structural limitation on the security chip in the claimed system and,
therefore, is not simply a recitation of its intended use or mere capability.
This is confirmed by reference to the Specification, which consistently
describes the security chip as being specifically “configured to” perform the
various recited functions, through “hardware, or firmware, or software in the
form of executable instructions,” and not merely capable of being
programmed to perform those functions. See, e.g., Spec. ¶¶ 39–40.
For essentially the reasons argued by Appellant (Appeal Br. 19–27;
Reply Br. 6–9), we agree that the Examiner has failed to find that Bonalle’s
CPU is configured to perform the functionality that the security chip recited
in claim 23 is required to perform.5 The Examiner finds that Bonalle’s CPU,
being programmable, is capable of initiating a timer, capturing a fingerprint
image, etc. (Final Act. 7), but the Examiner does not point to, nor do we
discern, adequate disclosure in Bonalle that the CPU is actually programmed
to, inter alia, “initiate a timer,” “when the timer expires, without a match to

5 Appellant’s contentions present additional issues. Because the identified
issue is dispositive of Appellant’s arguments on appeal, we do not reach the
additional issues.

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the reference fingerprint data, return a first authentication file location (AFL)
to the terminal,” or “when a match between the captured fingerprint image
and the reference fingerprint data is found, while the timer is unexpired,
return a second AFL to the terminal,” as required by the claims. Nor does
the Examiner provide sufficient evidence or reasoning to support the finding
that the recited functionality is “inherent” to Bonelle’s programmable CPU.
See Final Act. 7.
For the foregoing reasons, we are persuaded of Examiner error in the
anticipation rejection of claim 23 and we, therefore, do not sustain that
rejection. The dependent claims stand with the independent claim.
CONCLUSION
The Examiner’s decision rejecting claims 23–26 and 29–35 under 35
U.S.C. § 112(b) is reversed.
The Examiner’s decision rejecting claims 23–26 and 29–35 under
35 U.S.C. § 102(a)(1) is reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
23–26, 29–
35

112(b)
second
paragraph
Indefinite 23–26, 29–
35
23–26, 29–
35
102(a)(1) Bonalle 23–26, 29–
35
Overall Outcome

23–26, 29–
35
REVERSED