NXP B.V.

Patent Trials and Appeals Board

Mar 11, 2021

2019005628 (P.T.A.B. Mar. 11, 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.
14/724,748 05/28/2015 Jan Brands 81616262US04 9174
65913 7590 03/11/2021
Intellectual Property and Licensing
NXP B.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
WILCOX, JAMES J
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
03/11/2021 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAN BRANDS, FRISO JEDEMA,
PIOTR POLAK, and TIMOTHEUS van ROERMUND
____________

Appeal 2019-005628
Application 14/724,748
Technology Center 2400
____________

Before JOHN A. JEFFERY, JAMES W. DEJMEK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a rejection
of claims 1–6 and 8–13, i.e., all pending claims. Because the claims have
been twice rejected, we have jurisdiction under 35 U.S.C. §§ 6(b) and

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). Although 37 C.F.R. § 41.37(c)(1)(i) requires that
an appeal brief include a “statement identifying by name the real party in
interest at the time the appeal brief is filed,” Appellant did not provide the
required statement. See Appeal Br. 1–4. We note that PTO assignment
records identify the assignee as NXP B.V.
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134(a). See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994)
(precedential).
We reverse.
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns “a method
for facilitating transactions carried out by a mobile device.” Spec. 2:26–27,
12:2–3.2 The method may include the following steps:
(1) “the mobile device executes a smart card application”;
(2) “the smart card application receives a cryptographic
algorithm from a transaction server external to the
mobile device”;
(3) “the smart card application further receives transaction
data from said transaction server”; and
(4) “the cryptographic algorithm encrypts said transaction
data and stores the encrypted transaction data in a storage
unit of the mobile device.”
Id. at 2:27–31, 12:3–9; see id. at 3:23–31.
The Specification explains that the transaction data “may for example
comprise a transport ticket, an entrance ticket or access control data, such
as data which are normally carried on a badge.” Spec. 4:26–27. The
Specification also explains that the cryptographic algorithm may relate to
a specific “type of transaction data, for example a ticket type, and/or be

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed May 28, 2015; “Non-Final Act.” for the Non-Final
Office Action, mailed November 26, 2018; “Appeal Br.” for the Appeal
Brief, filed February 25, 2019; “Ans.” for the Examiner’s Answer, mailed
June 26, 2019; and “Reply Br.” for the Reply Brief, filed July 15, 2019.
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updated from time to time in order to further enhance the security.” Id.
at 6:7–9.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads
as follows:
1. A method for facilitating transactions carried out by
a mobile device, the method comprising:
executing, with the mobile device, a smart card
application;
receiving, with the smart card application, a
cryptographic algorithm from a transaction server external
to the mobile device;
receiving, with the smart card application, transaction
data from said transaction server;
encrypting, with the cryptographic algorithm, said
transaction data, wherein the encrypted transaction data are
made dependent on a specific mobile device on which the
encrypted transaction data were downloaded by compiling
at least one look-up table using a coding function which takes
a unique identifier of the specific mobile device as an input
and is specific for a particular type of transaction data; and
storing the encrypted transaction data in a storage unit
of the mobile device.
Appeal Br. 17 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 103, the Examiner
relies on the following prior art:
Name Reference Date
Scarlata et al. (“Scarlata”) US 2006/0256105 A1 Nov. 16, 2006
Graunke US 7,184,550 B2 Feb. 27, 2007
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The Rejections on Appeal
Claims 1 and 9–11 stand rejected under 35 U.S.C. § 103 as
unpatentable over Scarlata and Zhang. Non-Final Act. 7–10.
Claims 2, 3, and 12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Scarlata, Zhang, and Asnaashari. Non-Final Act. 10–13.
Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable over
Scarlata, Zhang, Asnaashari, and Graunke. Non-Final Act. 13–14.
Claims 5 and 13 stand rejected under 35 U.S.C. § 103 as unpatentable
over Scarlata, Zhang, Asnaashari, and Rafeeq. Non-Final Act. 14–16.
Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable over
Scarlata, Zhang, and Michiels. Non-Final Act. 16.
Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable over
Scarlata, Zhang, and Brudnicki. Non-Final Act. 17.
ANALYSIS
We have reviewed the § 103 rejections in light of Appellant’s
arguments that the Examiner erred. Based on the record before us and for
the reasons explained below, we agree with Appellant’s arguments that the
Examiner erred in finding that the cited portions of the references teach or
suggest the claimed subject matter. We add the following to address and
emphasize specific findings and arguments.
Name Reference Date
Zhang et al. (“Zhang”) US 2008/0270578 A1 Oct. 30, 2008
Asnaashari et al. (“Asnaashari”) US 2010/0023747 A1 Jan. 28, 2010
Michiels et al. (“Michiels”) US 2010/0080395 A1 Apr. 1, 2010
Brudnicki et al. (“Brudnicki”) US 2012/0124658 A1 May 17, 2012
Rafeeq WO 2014/011144 A1 Jan. 14, 2014
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The § 103 Rejection of Claims 1 and 9–11
INDEPENDENT CLAIMS 1, 9, AND 10
As noted above, the § 103 rejection of independent claims 1, 9, and 10
rests on Scarlata and Zhang. See Non-Final Act. 7–10. Appellant argues
that the Examiner erred in rejecting claims 1, 9, and 10 because the
references fail to teach or suggest the following limitation in each claim:
wherein the encrypted transaction data are made dependent on a
specific mobile device on which the encrypted transaction data
were downloaded by compiling at least one look-up table using
a coding function which takes a unique identifier of the specific
mobile device as an input and is specific for a particular type of
transaction data.
See Appeal Br. 10–12; Reply Br. 4–7. The Examiner cites Zhang as
teaching or suggesting the disputed limitation in claims 1, 9, and 10. See
Non-Final Act. 8–10; Ans. 6–9.
Appellant contends that the Examiner “conceded that Scarlata did not
disclose” the disputed limitation in claims 1, 9, and 10. Appeal Br. 8 (citing
Non-Final Act. 8); Reply Br. 3; see Non-Final Act. 8. Appellant also
contends that Zhang does not cure the deficiency in Scarlata for two related
reasons. First, Zhang’s download server encrypts a single number, i.e., a
unique transaction ID. Appeal Br. 8–9 (citing Zhang ¶ 76); see Reply Br. 4.
Second, the “broadest reasonable interpretation of compilation of at least one
look-up table cannot be expanded to encompass encryption of a single
number.” Appeal Br. 8; see Reply Br. 3–4.
The Examiner determines that Zhang discloses a download server
with a transaction ID generating unit 331, a transaction ID data storing
unit 332, a transaction ID verifying unit 333, a content downloading
unit 334, and a transaction ID time effectiveness maintaining unit 335.
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Ans. 8 (quoting Zhang ¶ 85). The Examiner finds that the transaction ID
generating unit 331 dynamically generates a transaction ID according to
a download client number, a transaction type, and a time effectiveness
parameter and then encrypts the transaction ID. Id. at 6–8 (quoting Zhang
¶¶ 76, 86). The Examiner also finds that the transaction ID generating unit
331 saves a copy of the transaction ID in the transaction ID data storing
unit 332. Id. at 8 (quoting Zhang ¶ 86). The Examiner further finds that the
transaction ID verifying unit 333 accesses the saved copy of the transaction
ID in the transaction ID data storing unit 332 when the download server
receives a download request from a download client. Id. at 8 (quoting Zhang
¶ 87). The Examiner explains that (1) the transaction ID data storing unit
332 corresponds to the claimed “at least one look-up table,” (2) the
download client number for the transaction ID corresponds to the claimed
“unique identifier of the specific mobile device,” and (3) the transaction type
for the transaction ID corresponds to the claimed “particular type of
transaction data.” Id. at 9.
In response, Appellant contends that Zhang contains no disclosure that
the transaction ID data storing unit 332 “is compiled using a coding function
which takes a unique identifier of the specific mobile device as an input and
is specific for a particular type of transaction data.” Reply Br. 3–4
(emphasis omitted).
Based on the record before us, we agree with Appellant that the
Examiner has not adequately explained how the cited portions of Scarlata
and Zhang teach or suggest the disputed limitation in claims 1, 9, and 10.
See Appeal Br. 8–9; Reply Br. 2–4. Specifically, the Examiner has mapped
the claimed “at least one look-up table” to the transaction ID data storing
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unit 332. Ans. 9; see Non-Final Act. 8–9. The transaction ID data storing
unit 332 saves copies of transaction IDs. Zhang ¶ 86. The Examiner has not
adequately explained how saving copies of transaction IDs in the transaction
ID data storing unit 332 corresponds to “compiling at least one look-up table
using a coding function which takes a unique identifier of the specific
mobile device as an input” as required by the claims. See Non-Final Act.
8–9; Ans. 5–9.
Although Zhang discloses generating a transaction ID that uniquely
identifies a specific transaction, the cited portions of Zhang do not disclose
generating a transaction ID that uniquely identifies a specific mobile device.
See Zhang ¶¶ 45, 56. In Zhang, the transaction ID generating unit 331
(1) generates the transaction ID, (2) encrypts the transaction ID, and
(3) saves a copy of the transaction ID in the transaction ID data storing
unit 332. Id. ¶ 86; see id. ¶¶ 55, 76. Zhang states that a transaction ID “may
be generated with various algorithms.” Id. ¶ 56; see id. ¶ 57. As an
example, Zhang identifies an “incremental algorithm” that “start[s] from 1”
and “the subsequent transaction IDs are successively 2, 3, 4, 5, 6 . . .” to
ensure “that the newly generated ID is different from the previously
generated IDs.” Id. ¶ 56.
When an “incremental algorithm” generates transaction ID’s
successively for multiple mobile devices, the transaction ID associated with
a first mobile device (e.g., ID = 3) will be lower than the transaction ID
associated with a second mobile device (e.g., ID = 4) if the first mobile
device downloads content before the second mobile device. But if the
second mobile device downloads content before the first mobile device, the
transaction ID associated with the second mobile device (e.g., ID = 3) will
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be lower than the transaction ID associated with the first mobile device (e.g.,
ID = 4). Further, the cited portions of Zhang do not disclose an algorithm
for generating transaction IDs that uniquely identify specific mobile devices
rather than specific transactions. See, e.g., Zhang ¶¶ 45, 56–57, 76, 79–90,
Fig. 5.
Because Zhang’s transaction ID may relate to any of multiple mobile
devices depending on when a device downloads content, the transaction ID
does not uniquely identify a specific mobile device. See Zhang ¶¶ 45, 56.
Moreover, the cited portions of Zhang do not describe the download client
number as uniquely identifying a specific mobile device. See, e.g., id. ¶¶ 54,
58, 76. Hence, an encryption algorithm for a transaction ID does not “take[]
a unique identifier of the specific mobile device as an input” according to
the claims. See id. ¶¶ 56–61.
In addition, the Examiner has not adequately explained how Zhang’s
transaction ID data storing unit 332, e.g., a memory, functions as a look-up
table according to the claims. See Non-Final Act. 8–9; Ans. 5–9. The IEEE
dictionary defines a look-up table as “[a] table of values used in obtaining
the value of a function using a table look-up procedure.”3
For the reasons discussed above, we do not sustain the § 103 rejection
of claims 1, 9, and 10.
DEPENDENT CLAIM 11
Claim 11 depends directly from claim 10. For the reasons discussed
for claim 10, we do not sustain the § 103 rejection of claim 11.

3 IEEE 100 The Authoritative Dictionary of IEEE Standards Terms at 640
(7th ed. 2000).
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The § 103 Rejections of Claims 2–6, 8, 12, and 13
Claims 2–6 and 8 depend directly or indirectly from claim 1, and
claims 12 and 13 depend directly or indirectly from claim 10. On this
record, the Examiner has not shown how the additionally cited references—
Asnaashari, Graunke, Rafeeq, Michiels, and Brudnicki—overcome the
deficiency in Scarlata and Zhang discussed above for claims 1 and 10.
Hence, for the reasons discussed for claims 1 and 10, we do not sustain
the § 103 rejections of claims 2–6, 8, 12, and 13.
Because the preceding determinations resolve the § 103 rejections
for all pending claims, we need not address Appellant’s other arguments
regarding Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d
1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency may
render a decision based on “a single dispositive issue”).
CONCLUSION
We reverse the Examiner’s decision to reject claims 1–6 and 8–13.
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 9–11 103 Scarlata, Zhang 1, 9–11
2, 3, 12 103 Scarlata, Zhang, Asnaashari 2, 3, 12
4 103
Scarlata, Zhang,
Asnaashari,
Graunke
4
5, 13 103 Scarlata, Zhang, Asnaashari, Rafeeq 5, 13
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Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
6 103 Scarlata, Zhang, Michiels 6
8 103 Scarlata, Zhang, Brudnicki 8
Overall
Outcome 1–6, 8–13
REVERSED