David Terra et al.

Patent Trials and Appeals Board

Jan 27, 2020

15197706 - (D) (P.T.A.B. Jan. 27, 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.
15/197,706 06/29/2016 David Terra SQ-0655-US1 3771
132781 7590 01/27/2020
Maynard Cooper & Gale, P.C. (Square)
655 Gallatin Street, SW
Huntsville, AL 35801
EXAMINER
TIBLJAS, SHACOLE C
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
01/27/2020 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):
ipdocket@maynardcooper.com
mdunn@maynardcooper.com
tebbert@maynardcooper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID TERRA, KOUN HAN, MICHAEL WELLS WHITE, and
MICHAEL DAHN
Appeal 2019-000092
Application 15/197,706
Technology Center 3600
Before JUSTIN BUSCH, JASON J. CHUNG, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, 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 rejecting claims 1–33, which constitute all the claims
pending in this application. 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 Square, Inc. Appeal
Br. 2.
Appeal 2019-000092
Application 15/197,706

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CLAIMED SUBJECT MATTER
The claims are directed to a preliminary enablement of transaction
processing circuitry. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A system for exchanging electronic payment
information between a payment reader and a chip card or
wireless payment device, the system comprising:
a chip card interface configured to receive the chip card
and exchange the electronic payment information with the chip
card;
a wireless payment interface configured to communicate
wirelessly to exchange the electronic payment information with
the wireless payment device;
a transaction chip configured to operate in a low-power
mode and in a transaction processing mode, wherein the
transaction chip is configured to exchange payment information
with the chip card interface or the wireless payment interface
during the transaction processing mode, and wherein the
transaction chip comprises:
a transaction processing unit coupled to the chip card
interface and the wireless payment interface, wherein the
transaction processing unit is configured to execute wake-up
instructions and transaction processing instructions; and
a transaction processing memory configured to store the
wake-up instructions and the transaction processing instructions,
wherein the wake-up instructions cause the transaction
processing unit to cause the transaction chip to enter the
transaction processing mode in response to a wake-up request,
wherein the transaction processing instructions cause the
transaction processing unit to receive the electronic payment
information during the transaction processing mode in response
to a request for payment information, and wherein the wake-up
instructions cause the transaction processing unit to return to the
low-power mode from the transaction processing mode if the
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request for payment information is not received within a
threshold wakeup period; and
a payment reader chip coupled to the transaction chip,
wherein the payment reader chip comprises:
a reader processing unit coupled to the transaction
processing unit, wherein the reader processing unit is configured
to execute reader instructions;
a communication interface configured to receive a wake-
up signal as a wake-up message from a merchant device and to
receive a request to process payment from the merchant device,
wherein the wake-up message is based on the progress of a
payment transaction at the merchant device; and
a reader memory configured to store the reader
instructions, wherein the reader instructions cause the reader
processing unit to identify a wake-up type based on the wake-up
message, identify a wake-up rule based on the wake-up type,
send the wake-up request to the transaction processing unit in
response to a comparison of the wake-up signal to the wake-up
rule, receive the request to process payment, and transmit the
request for payment information to the transaction processing
unit in Response to the request to process payment.
REJECTIONS
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Smets et al. (US 2014/0263625 A1; published Sept.
18, 2014) (“Smets”) and Sweet et al. (US 8,534,555 B1; issued Sept. 17,
2013) (“Sweet”). Final Act. 3–7.
Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Smets, Sweet, Harrell (US 6,609,655 B1; issued Aug. 26,
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2003), and Jonely (US 2013/0335199 A1; issued Dec. 19, 2013).2 Final Act.
7.
Claims 4, 5, 6, 11, 13, 14, 15, 20, 22–27, 29, and 31–333 stand
rejected under 35 U.S.C. § 103 as unpatentable over the combination of
Sweet and Smets. Final Act. 7–15.
Claims 8 and 17 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Sweet, Smets, and Harrell. Final Act. 15–16.
Claims 9 and 18 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Sweet, Smets, and Harrell. Final Act. 16–17.
Claim 10 stands rejected under 35 U.S.C. 103 as unpatentable over the
combination of Sweet, Smets, Bailey (US 2004/0104268 A1; published June
3, 2004), and Weng et al. (US 2016/0007292;published Jan. 7, 2016)
(“Weng”). Final Act. 17.
Claims 7 and 16 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Sweet, Smets, and McIntyre (US 2014/0225713 A1;
published Aug. 14, 2014). Final Act. 17–18.
Claims 19 and 28 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Sweet, Smets, Harrell, and Weng.
Final Act. 18–19.

2 The Examiner identified Smets, Harrell, and Jonely in the rejection
heading. Final Act. 7. Because claim 3 depends from claim 1, which stands
rejected over Smets and Sweet, we include Sweet in the list of references for
claim 3 for completeness.
3 The Examiner omitted claims 11 and 31–33 from the rejection heading, but
analyzed the claims in the body of the rejection. Final Act. 7, 11. The
Examiner included claim 28 in the rejection heading, but did not reject claim
28 based on this combination of references. We omit claim 28 and include
claims 11 and 31–33 in the list of rejected claims for clarity.
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Claims 12, 21, and 30 stand rejected under 35 U.S.C. 103 as
unpatentable over the combination of Sweet, Smets, and Jonely. Final Act.
19–21.
ANALYSIS
With respect to independent claim 1, Appellant contends the cited
portions of Smets and Sweet do not teach or suggest instructions that cause
the payment reader processing unit “to identify a wake-up type based on the
wake-up message,” “to identify a wake-up rule based on the wake-up type,”
and “to send the wake-up request to the transaction processing unit in
response to a comparison of the wake-up signal to the wake-up rule,” as
claim 1 requires. Appeal Br. 11–16.
When rejecting claims for obviousness, the Examiner must show that
each and every limitation of the claim is described or suggested by the prior
art or would have been obvious based on the knowledge of those of ordinary
skill in the art or the inferences and creative steps a person of ordinary skill
in the art would have employed. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir.
1988); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellant’s arguments have persuaded us that the Examiner erred.
The Examiner found that Sweet teaches, “based on the swipe of a card,
generating wake-up signals which transition the card reader from a low
power mode to an operating mode (reads on wake-up) in order to allow the
card reader to read data stored on the card.” Ans. 3 (citing Sweet col. 2:62–
3:13.) The Examiner mapped the wake-up message based on card insertion
of Sweet to the recited “wake-up type” of claim 1. Id. The Examiner further
found that “the act of waking up a terminal based on the card insertion
demonstrates the use of a rule.” Id. With regard to sending the wake-up
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request in response to a comparison of the wake-up signal to the wake-up
rule, the Examiner found that “[i]f the card reader transitions from a lower
power mode to an operating mode based on the swipe of a card, a wake-up
rule causing this transition to happen based upon a wake-up signal is clearly
in place, otherwise it wouldn’t happen.” Id. at 4.
We agree with Appellant that the Examiner has not explained
sufficiently how the proposed combination of Smets and Sweet teaches or
suggests the claim limitations “to identify a wake-up type based on the
wake-up message,” “to identify a wake-up rule based on the wake-up type,”
and “to send the wake-up request to the transaction processing unit in
response to a comparison of the wake-up signal to the wake-up rule,” as
recited in independent claim 1 and commensurately recited in independent
claims 4, 13, and 22. Even accepting the Examiner’s mapping of Sweet’s
wake-up message based on card insertion to the recited “wake-up type” of
claim 1, the Examiner has not explained clearly where or how the cited
portions of Smets and Sweet teach or suggest identifying the wake-up type,
as the claims require. Nor has the Examiner clearly explained where or how
the cited prior art teaches or suggests that a reader processing unit identifies
a wake-up rule based on the wake-up type. The Examiner found that waking
up the terminal demonstrates “use of a rule,” but that is not what the claim
requires. Furthermore, the Examiner has not clearly identified where the
prior art references teach or suggest the recited sending of the wake-up
request to the transaction processing unit in response to a comparison of the
wake-up signal to the wake-up rule. Not only has the Examiner failed to
clearly identify a wake-up rule, the Examiner has not identified where the
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prior art teaches or suggests a comparison of the wake-up signal to the wake-
up rule, or that a wake-up request is sent in response to the comparison.
For these reasons, the Examiner has not demonstrated that the
combination of Smets and Sweet teaches or suggests the disputed limitations
of claim 1.
Accordingly, on the record before us, we reverse the Examiner’s
§ 103 rejection of independent claim 1. Regarding the rejections of claims 4,
13, and 22, on this record, the Examiner has not shown how the additionally
cited secondary references overcome the aforementioned deficiencies of
Smets and Sweet, in which the Examiner has not shown a teaching of the
disputed limitations, as discussed above regarding the rejection of claim 1.
Therefore, we also reverse the Examiner’s § 103 rejections of independent
claims 4, 13, and 22. Because we reverse each independent claim on appeal,
we also reverse all of the dependent claims 2, 3, 5–12, 14–21, and 23–33,
which stand with the independent claims from which they depend.
Because it is dispositive that the Examiner has not shown by a
preponderance of evidence that the cited prior art teaches or reasonably
suggests the claimed limitations “to identify a wake-up type based on the
wake-up message,” “to identify a wake-up rule based on the wake-up type,”
and “to send the wake-up request to the transaction processing unit in
response to a comparison of the wake-up signal to the wake-up rule,” we do
not address other issues raised by Appellant’s arguments related to these
claims. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
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DECISION
We reverse the decision of the Examiner rejecting claims 1–33.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 2 103 Smets, Sweet 1, 2
3 103 Smets, Sweet, Harrell,
Jonely
3
4, 5, 6, 11,
13, 14, 15,
20, 22–27,
29, 31–33
103 Sweet, Smets 4, 5, 6, 11,
13, 14, 15,
20, 22–27,
29, 31–33
8, 17 103 Sweet, Smets, Harrell 8, 17
9, 18 103 Sweet, Smets, Harrell 9, 18
10 103 Sweet, Smets, Bailey,
Weng
10
7, 16 103 Sweet, Smets,
McIntyre
7, 16
19, 28 103 Sweet, Smets, Harrell,
Weng
19, 28
12, 21, 30 103 Sweet, Smets, Jonely 12, 21, 30
Overall
Outcome:
  1–33

REVERSED