Ex Parte Bailey

Patent Trial and Appeal Board

Aug 31, 2016

12326447 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/326,447 12/02/2008 Michael BAILEY
126568 7590 09/02/2016
Zebra Technologies Corporation
3 Overlook Point
Lincolnshire, IL 60069
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SBL08294 3419
EXAMINER
TARDIF,DAVIDP
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
docketing@zebra.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL BAILEY
Appeal2015-003509
Application 12/326,447
Technology Center 2800
Before PETER F. KRATZ, JAMES C. HOUSEL, and
BRIAND. RANGE, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-20. We have jurisdiction pursuant to
35 U.S.C. § 6.
Appellant's claimed invention is directed to a system comprising a
data card and a payment receiving device for providing a secure transaction
and a method for securing a transaction (Spec. i-f 4; Figs. 1-3). Appellant's
data card may comprise a credit card, debit card, or an integrated circuit card
(ICC) 1, etc., which card can store confidential information, such as a credit
card number, a debit card number, and/or other personal information data
1 smart card
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Application 12/326,447
(Spec. iii! 2--4 ). The payment receiving device may receive the confidential
data when the payment receiving device has its authentication verified
(Spec. iii! 4--8, 16, 29-33). Appellant's disclosed invention can provide for
bidirectional authentication/verification such as authentication/verification
of a buyer's data card and authentication/verification of the payment
receiving device (Spec. if 33).
Claim 1 is illustrative and reproduced below:
1. A system, comprising:
a data card storing confidential data related to a secure transaction;
and
a payment receiving device initially in a deactivated state prior to
receiving the confidential data from the data card, the payment receiving
device switching to an activated state upon a verification that the payment
receiving device is authenticated.
wherein the verification relating to the payment receiving device is
determined by the data card in response to a query requesting a transmission
of authenticity of the payment receiving device sent to the payment
receiving device by the data card; and
wherein upon receipt of the verification, the data card provides the
confidential data to the payment receiving device.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
1. Zai et al., US 2005/0061875 Mar. 24, 2005;
hereinafter "Zai."
2. Elliott et al., US 5,036,461 Jul. 30, 1991;
hereinafter "Elliott."
3. Pearson et al., US 7,526,785 Apr. 28, 2009;
hereinafter "Pears on."
4. Bonalle et al., US 2008/0110977 May 15, 2008
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Application 12/326,447
hereinafter "Bonalle."
The Examiner maintains the following grounds of rejection:
Claims 1-7, 9, 11-17, 19, and 20 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the combined teachings of Zai, Elliott and
Pearson. Claims 8, 10, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zai, Elliott, Pearson as above, and further in view of
Bonalle.
After review of the opposing positions articulated by Appellant and
the Examiner, the applied prior art, and Appellant's claims and Specification
disclosures, we determine that the Appellant's arguments are insufficient to
identify reversible error in the Examiner's obviousness rejections. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the stated obviousness rejections for
substantially the fact findings and the reasons set forth by the Examiner in
the Examiner's Answer and the Final Office Action. We offer the following
for emphasis only.
Concerning the Examiner's first stated rejection, Appellant argues the
rejected claims together as a group. Also, Appellant does not present
separate arguments against the Examiner's second stated rejection involving
certain dependent claims. Accordingly, we select claim 1 as the
representative claim on which we focus in deciding this appeal.
At the outset, we observe that representative claim 1 is drawn to a
system that comprises a data card and a payment receiving device having
certain functional capabilities as specified in claim 1.
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The Examiner has determined that the applied prior art would have
suggested to one of ordinary skill in the art a system including a data card
and a payment receiving device that corresponds to the requirements of
representative claim 1 (Final Act. 2--4; Ans. 2--4). While the Examiner
recognizes that Zai does not explicitly teach a system comprising a payment
receiving device as its data card reader, the Examiner has determined that
Elliott teaches a data card and reader system that includes a reader that "is
for monetary transactions (abstract) [a payment receiving device], and that
the verification is completed in response to a query sent by the data card"
(Final Act. 3).
Appellant does not argue that the combined teachings of the applied
prior art, including Elliott, would not have taught or suggested a system
comprising a card that can store confidential data and a device that is
configured to receive confidential data, such as a payment receiving device.
Indeed, Appellant's acknowledge as background to their invention, that
systems including a data card, such as a credit card, and a payment receiving
device, such as a computing device/cash register are known (Spec. i-fi-12, 3).2
Rather, Appellant's arguments primarily focus on the limitations set
forth in the wherein clauses of representative claim 1. Appellant contends
that the applied prior art would not have taught or suggested a data card and
2 It is axiomatic that admitted prior art in an Applicants' Specification may
be used in determining the patentability of a claimed invention and that
consideration of the prior art cited by the Examiner may include
consideration of the admitted prior art found in an Applicants' Specification.
In re Nomiya, 509 F.2d 566, 570-571(CCPA1975); In re Davis, 305 F.2d
501, 503 (CCPA 1962); In re Hedges, 783 F.2d 1038, 1039-1040 (Fed. Cir.
1986).
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Application 12/326,447
payment receiving device system that is capable of or configured to have the
functionality corresponding to that set forth in the wherein clauses of
representative claim 1. 3 In particular, Appellant urges, for example, that (1)
representative claim 1 requires that "the verification relating to the payment
receiving device is determined by the data card in response to a query
requesting a transmission of authenticity of the payment receiving device
sent to the payment receiving device by the data card," (2) Elliott "fails to
teach or suggest that 'the verification is completed in response to a query
sent by the data card,' as alleged in the Office Action," and (3) Pearson does
not teach the aforementioned verification feature required by representative
claim 1.
We are not persuaded that Appellant's argument identifies reversible
error in the Examiner's obviousness rejection of representative claim 1. In
particular, we observe that the above-noted representative claim 1 feature
pertains to a required functionality/capability of the system comprising the
data card and the payment receiving device of representative claim 1. As
found by the Examiner, Elliott teaches/suggests that its card is configured to
send data/random number to the reader/payment receiving device, the
reader/payment receiving device responds to the query as to the
authentication status of the reader/payment receiving device with an
encrypted random number, and the card determines through its
3 While Appellants argument may indicate that the Examiner mistakenly
identified certain features of Figures 8 and 9 of Zai as corresponding to
certain claimed features in the Final Office Action (App. Br. 5-8; Final Act.
2-3), Appellants have not established that such represents harmful error in
the Examiner's obviousness holding based on the combined teachings of the
applied prior art (Ans. 3).
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Application 12/326,447
microprocessor if the numbers match to verify the authentication of the
reader/payment receiving terminal (Ans. 3--4; Elliott, Fig. 5; col. 8, 1. 60-
col. 9, 1. 22). Furthermore, Elliott teaches/suggests that the circuit card/data
card is configured to continue operation/send data subsequent to
assurance/verification of the authenticity of the reader/payment receiving
terminal and other authentications, such as an authentication pertaining to
the circuit card (col. 9, 1. 23---col. 11, 1. 2).
After all, " [ t ]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Consequently, Appellant has not exposed harmful error in the stated
obviousness rejection as to representative claim 1 by the argument presented
in the Appeal Brief for reasons set forth above and by the Examiner in the
Answer.
It follows that, on this appeal record, we sustain the Examiner's first
stated obviousness rejection.
Appellants do not present any further argument with respect to the
Examiner's separate obviousness rejection of certain dependent claims.
Therefore, we shall likewise sustain the latter rejection for the reasons
advanced by the Examiner.
CONCLUSION
The Examiner's decision to reject the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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Application 12/326,447
AFFIRMED
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