ECEBS LIMITED

Patent Trials and Appeals Board

Aug 27, 2020

14246778 - (D) (P.T.A.B. Aug. 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.
14/246,778 04/07/2014 Barry Sim Hochfield 106195-1164646
(RA-0011US
1488
66945 7590 08/27/2020
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY SIM HOCHFIELD, ANTHONY BRESLIN, and
MICHAEL PETERS
Appeal 2019-006268
Application 14/246,778
Technology Center 3600
Before JOHNNY A. KUMAR, LARRY J. HUME, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, 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 17–36. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 “Rambus Inc., parent
of wholly owned subsidiary Ecebs Limited, assignee of the entire right, title
and interest in the [instant] application.” Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed “to a scheme to enable value transfers of
commodities with multiple denominations using smartcards, including card-
to-card transactions. In this context, the term ‘commodity’ is used to denote
anything which is perceived as having a value, including, for example, a
currency.” Spec. ¶ 2.
Claim 17, reproduced below, is illustrative of the claimed subject
matter:
17. An electronic terminal that enables an offline
transaction between first and second smartcards during an
interval in which neither the electronic terminal nor the first or
second smartcards is in communication with a central processing
center at which respective first and second card-holder accounts
for the first and second smartcards is maintained, the electronic
terminal comprising:
a card-communications interface to enable information
transfer with respect to each of the first and second smartcards;
a user-interface to enable reception of information from
respective first and second card-holders of the first and second
smartcards;
a processing unit; and
a memory to store program code which, when executed by
the processing unit, causes the processing unit to (i) receive first
and second authentication information corresponding to the first
and second card-holders, respectively, via the user-interface, and
(ii) communicate with the first and second smartcards via the
card-communications interface to:
verify authorization for the offline transaction
between the first and second smartcards based at least in
part in the first and second authentication information;
read first and second electronic chequebooks from
the first and second smartcards, respectively, the first and
second electronic chequebooks indicating respective
account balances of the first and second card-holder
accounts;
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write the first electronic chequebook to the second
smartcard and the second electronic chequebook to the
first smartcard;
provide information to the first and second
smartcards indicative of an amount of value to be
exchanged between the first and second smartcards
pursuant to the offline transaction;
receive from the second smartcard a modified
version of the first electronic chequebook including a
record of an electronic cheque specifying that the amount
of value is to be deducted from the first card-holder
account at a later time when the first smartcard is in
communication with the central processing center;
receive from the first smartcard a modified version
of the second electronic chequebook including a record of
an electronic cheque specifying that the amount of value
is to be added to the second card-holder account at a later
time when the second smartcard is in communication with
the central processing center; and
write the modified version of the first electronic
chequebook to the first smartcard and the modified version
of the second electronic chequebook to the second
smartcard to complete the offline transaction.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Gressel US 6,609,114 B1 Aug. 19, 2003
Kawan US 6,913,193 B1 July 5, 2005
Linehan US 7,103,575 B1 Sept. 5, 2006

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REJECTIONS2
Claims 17, 18, 20–28, and 30–36 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Kawan and Gressel.
Claims 19 and 29 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Kawan, Gressel, and Linehan.
OPINION
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments regarding the pending claims.

Claims 17–26
The Examiner finds Kawan teaches all of the limitations recited in
claim 17 except for “writing the modified version of the first electronic
chequebook to the first smartcard and the modified version of the second
electronic chequebook to the second smartcard to complete the offline
transaction.” Final Act. 8–9. The Examiner further finds that because
Gressel teaches that “value is transferred between smart cards,” Gressel
teaches the writing limitation identified above. Id. at 9 (citing Gressel
28:22–54); see also Ans. 3–5. The Examiner further finds because of a need
for an audit trail of the transaction, a person having ordinary skill in the art

2 In addition to the rejections identified below, the Examiner also rejected
claims 17–36 as (1) directed to patent-ineligible subject matter and (2) on
the ground of non-statutory obviousness type double patenting over claims
1–9 of US patent 8,694,437. Final Act. 2–7, 16–18. The Examiner
withdrew those rejections in the Answer. Ans. 3.
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would have modified Kawan to incorporate Gressel’s teaching. Id. (citing
Gressel 28:22–54).
Appellant argues that “[t]he claim feature at issue is not simply ‘value
is transferred between smart cards.’” Appeal Br. 12; see also Reply Br. 2–3.
Although Appellant admits that Gressel teaches, inter alia, that “upon
receipt of the cheque, SC2 signs and sends SC1 a receipt therefor,” Gressel
does not teach or suggest “that SC2 sends a modified version of an
electronic chequebook to SC1. In other words, Gressel completely avoids
the swap in the writing of swapped checkbooks.” Appeal Br. 12.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981). The Examiner finds—and Appellant does not dispute3—
Kawan teaches the first and second chequebooks and all of the limitations
relating to the first and second chequebooks, including modifying the
chequebooks, except for the final writing step. Final Act. 8–9. Because
Appellant’s argument focuses solely on Gressel and does not address the
combination of Kawan and Gressel—including Kawan’s use of modified

3 “If an appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.” Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
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chequebooks—we are not persuaded by Appellant’s arguments that the
Examiner erred. To the contrary, we agree with the Examiner that a person
having ordinary skill in the art would have modified Kawan in light of
Gressel’s teaching of exchanging electronic cheques and receipts (see
Gressel 8:45–53) to write the modified chequebooks to the respective smart
cards to ensure that proper payment is made. See Final Act. 9; Ans. 3–5.
Accordingly, we sustain the rejection of independent claim 17 along
with dependent claims 18 and 20–26, which are not argued separately.
With respect to dependent claim 19, Appellant merely contends that
because Linehan does not cure the shortcomings of the other references
applied against claim 17, the Examiner failed to make a prima facie case of
obviousness for these claims. Appeal Br. 13. Because we determine that the
rejection of claim 17 is not erroneous for the reasons discussed above, we
sustain rejection of claim 19 for the same reasons.
Claims 27, 28, and 30–35
Although Appellant argues claims 27, 28, and 30–36 in a separate
section, Appellant relies on substantially the same argument. Compare
Appeal Br. 11–13, with id. at 15–17. Accordingly, for the reasons discussed
above, we are not persuaded by Appellant’s arguments that the Examiner
erred.
Accordingly, we sustain the rejection of independent claim 27 along
with dependent claims 28 and 30–35, which are not argued separately.
With respect to dependent claim 29, Appellant merely contends that
because Linehan does not cure the shortcomings of the other references
applied against claim 27, the Examiner failed to make a prima facie case of
obviousness for these claims. Appeal Br. 17. Because we determine that the
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rejection of claim 17 is not erroneous for the reasons discussed above, we
sustain rejection of claim 19 for the same reasons.
Claim 36
Although Appellant argues claim 36 in a separate section, Appellant
relies on substantially the same argument. Compare Appeal Br. 11–13, with
id. at 18–20. Accordingly, for the reasons discussed above, we are not
persuaded by Appellant’s arguments that the Examiner erred.
Accordingly, we sustain the rejection of claim 36.
CONCLUSION
We affirm the Examiner’s rejection of claims 17–36 under 35 U.S.C.
§ 103(a).
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17, 18, 20–
28, 30–36
103(a) Kawan, Gressel 17, 18, 20–
28, 30–36

19, 29 103(a) Kawan, Gressel,
Linehan
19, 29
Overall
Outcome
17–36
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED