Ex Parte Fisher

Patent Trial and Appeal Board

Aug 11, 2017

13650437 (P.T.A.B. Aug. 11, 2017)

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.
13/650,437 10/12/2012 Michelle Fisher BLZMP002C37 1033
7590
Michelle Fisher
2930 Domingo Ave
Suite 123
Berkeley, CA 94705
08/15/2017 EXAMINER
AGWUMEZIE, CHINEDU CHARLES
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
08/15/2017 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):
mfisher @ blazemobile .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHELLE FISHER
Appeal 2016-002353
Application 13/650,4371
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
JESSICA C. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellant appeals2 under 35 U.S.C. § 134(a) from a final rejection of
claims 1—4 and 7—23, which are all of the claims pending in the application,
which are all of the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). Claims 5 and 6 have been cancelled.
We AFFIRM.
1 According to Appellant, the real party in interest is Michelle Fisher. App.
Br. 2.
2 Appellant’s original Appeal Brief filed May 1, 2015 addressed amended
claims that were not entered into the record. See Notification of Non-
Compliant App. Br. 2. Accordingly, our Decision addresses Appellant’s
Supplemental Appeal Brief filed July 21, 2015 (“App. Br.”) and Appellant’s
Reply Brief filed December 18, 2015 (“Reply Br.”), which address the
current claims of record.
Appeal 2016-002353
Application 13/650,437
EXEMPLARY CLAIM
Claim 1, reproduced below with line breaks added for clarity, is
illustrative of the claimed subject matter with disputed limitations
emphasized:
1. A method for conducting a near field communication
transaction, the method comprising:
a mobile device comprising of a mobile device memory, a
mobile device processor, and a mobile device transceiver;
the mobile device coupled to a secure element, the secure
element operable to maintain a secure element application in
secure element memory,
wherein initiation of the execution of the secure element
application is in response to a near field communication
interaction of the secure element with the point-of-sale terminal
facilitates transmission of transaction data to the point-of-sale
terminal using a transceiver capable of near field
communications and using the secure element processor without
communication with the mobile device,
wherein the secure element includes a plurality of
communications transceiver and
wherein each of the communications transceivers support
a respective communications protocol and wherein one of the
plurality of communications transceiver is capable of NFC, and
receives digital artifacts at the secure element from the NFC
terminal secure element application during the NFC transaction.
REJECTIONS
Claims 1—4 and 7—23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nystrom (US 2009/0075592 Al; published Mar. 19,
2009) and Rosenberg (US 2004/0235450 Al; published Nov. 25, 2004).
Final Act. 6—12.
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ANALYSIS
We disagree with Appellant’s contentions and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken; and (2) the reasons set forth by the Examiner in
the Answer in response to the Appeal Brief. With respect to the claims
argued by Appellant, we highlight and address specific findings and
arguments for emphasis as follows.
35 U.S.C. ft 102: Prior Art
Appellant contends the Examiner erred in finding Nystrom qualifies
as prior art under 35 U.S.C. § 102. App. Br. 25—26. Specifically, Appellant
argues “Nystrom’s foreign patent application was published in the US on
March 19, 2009 and internationally in 2008,” but “the instant Application
has an effective filing date of November 14, 2007.”3 Id. (emphasis omitted).
Appellant further asserts that “the Examiner is also issuing a 102 rejection.”
Id.
Initially, the Examiner does not reject any claim under 35 U.S.C.
§ 102. Instead, the Examiner has issued a 35 U.S.C. § 103 rejection over
Nystrom and Rosenberg. Final Act. 6.
3 Appellant’s Summary of Claimed Subject Matter cites only application
number 11/933,351 as support for the claimed subject matter. See App. Br.
3—5. In the event of further prosecution, the Examiner may wish to
determine whether Appellant has properly incorporated by reference the
’351 application or whether Appellant has improperly incorporated
“essential material” by citing only the unpublished ’351 application and not
its corresponding publication (see MPEP § 608; see also 37 CFR § 1.57(d))
and if the latter, whether a rejection under 35 U.S.C. § 112, first paragraph is
appropriate.
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We also disagree with Appellant that “Nystrom does not qualify as
prior art under 35 [U.S.C. §] 102.” App. Br. 26. Nystrom is a U.S.
publication of a PCT International Application (WO 2007/068993 Al), filed
December 16, 2005, in English, and designating the United States.
Accordingly, Nystrom qualifies as prior art under 35 U.S.C. § 102(e) based
on the December 16, 2005 international filing date. See MPEP §§706
(“Flowcharts for 35 U.S.C. § 102(e) Dates”), 2136.03 (“Critical Reference
Date”). We also note the International Application publication of Nystrom,
WO 2007/068993 Al, was published June 21, 2007, before Appellant’s
effective filing date of November 14, 2007, and qualifies as prior art under
35 U.S.C. § 102(a).
35 U.S.C. f 103: Claims 1, 22, and 23
“initiation of the execution of the secure element application is in response
to a near field communication interaction ”
Appellant contends the Examiner erred in finding Nystrom teaches
“initiation of the execution of the secure element application is in response
to a near field communication interaction of the secure element with the
point-of-sale terminal,” as recited in claim 1 and similarly recited in
claims 22 and 23. App. Br. 9—12, 26—29; Reply Br. 3—5. Specifically,
Appellant argues Nystrom teaches “send[ing] queries to the secure smart
card module . . . [to] start communicating with [an] application” (App. Br. 9
(citing Nystrom 1142)) but Nystrom’s queries are not a “Near field
communication (NFC) inductive signal” (App. Br. 11—12). Appellant
further argues that, rather than being initiated, Nystrom’s “application may
already be running.” App. Br. 10, 27; Reply Br. 4 (citing Nystrom 1140).
Appellant next argues Nystrom’s application is not “used for processing a
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Application 13/650,437
payment” (App. Br. 10) and instead “play[s] multimedia” (Reply Br. 3).
Appellant additionally argues “[i]t can’t be assumed that the POS
Terminal (‘NFC Terminal’) executes the application.” App. Br. 10.
We are not persuaded. The Examiner finds (Final Act. 7), and we
agree, Nystrom teaches a “near field (secure) smart card (module) 800,” i.e.,
a “secure element,” which includes “an interface 860 to a near field
communication module” (Nystrom 1143, Fig. 11). The Examiner further
finds (Final Act. 7), and we agree, that Nystrom’s smart card further
includes “groups of applications 810, 820, 830, 840” that are “stored in a . . .
storage and are accessible from an external (NFC) terminal device via said
[NFC] interface” (Nystrom 1143). Nystrom further discloses “an external
point of sale (POS) terminal may send queries to the secure smart card
module for finding applications it requests and upon finding a preferred
application, start communicating with the application for conducting the
transaction or [the] like.” (Nystrom 1142; see Nystrom Fig. 4).
Appellant’s argument that Nystrom’s query is not a “Near field
communication (NFC) inductive signal” (App. Br. 11—12) is not
commensurate with the scope of the claims. The claims do not recite an
NFC inductive signal; rather, the claims recite “a near field communication
interaction.” Furthermore, the Specification does not provide any definition
of “a near field communication interaction,” much less one that limits a near
field communication interaction to an NFC inductive signal nor has
Appellant proffered evidence or argument to persuade us of error in the
Examiner’s interpretation. Nystrom provides a near field communication
interaction, as required by the claims, because Nystrom’s smart card NFC
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interface receives queries from Nystrom’s POS terminal. Nystrom || 142—
143.
Further, Appellant’s argument that Nystrom’s “application may
already be running” when the query is sent, i.e., the application execution is
not initiated in response to Nystrom’s query (App. Br. 10, 27; Reply Br. 4),
is not persuasive. We agree with the Examiner that the POS terminal’s
query, i.e., an “NFC event or condition,” is what “triggers] the
communication” with an application to “star[t] to transmit[t] or
communicat[e] with the application.” Ans. 9—10 (citing Nystrom 1142).
Indeed, as the Examiner points out (Ans. 10), Figure 4 of Nystrom teaches a
“Trigger condition” which causes the “[a]ction . . . Start infergrow
SmartoPoster Application” (emphasis added). See Nystrom || 116, 123.
Appellant’s next argument that Nystrom’s “applications play
multimedia” instead of “processing a financial transaction” (Reply Br. 3
(citing Nystrom 1117)) is not commensurate with the scope of the
independent claims. The independent claims do not recite that “transaction
data” processed by the application is financial transaction data.
Furthermore, the Specification does not provide a definition limiting
transaction data to financial transaction data. Moreover, Nystrom teaches
that the transactions processed by its applications include financial
transactions, e.g., “payment and ticketing transactions” (Nystrom 1141),
transactions requiring “a credit card provider” {id. 1142), and “credit card
application^]” {id. 1144).
Appellant’s additional argument that Nystrom’s POS terminal does
not execute the application (App. Br. 10) is not commensurate with the
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scope of the claims. The claims do not recite, and therefore do not require,
that the application is executed by the “point-of-sale terminal.”
Additionally, while not necessary to our decision because we agree
with the Examiner that Nystrom teaches the disputed limitations as
discussed supra, Appellant’s arguments that Rosenberg does not teach the
disputed limitations are also not persuasive. App. Br. 13—23; Reply Br. 5,
7—8. In particular, we disagree with Appellant that “Rosenberg does not
appear to ever expressly disclose near field communication as a specific
communication protocol” (App. Br. 13, 24 (emphasis omitted); Reply Br. 5)
and that “Rosenberg positively recites that the mobile device which the
secure transfer program runs on does not follow conventional [NFC]
smartcard communication standards” (Reply Br. 7—8 (emphasis omitted)).
We agree with the Examiner’s finding that Rosenberg teaches “contactless
smartcards.” Ans. 9, 14. Indeed, Rosenberg teaches that the use of the same
wireless NFC protocol, ISO 14443 (Rosenberg 199), described in an
application Appellant incorporates by reference (Spec. 13), application
number 11/933,351 (US 2008/0052192 A1125). Although paragraph 99 of
Rosenberg teaches that one particular embodiment, “device 800” of Figure
8, “does not follow conventional smartcard communication standards . . .
e.g., ISO standards 7816 and 14443,” that paragraph reads as contrasting
device 800 with the smartlink modules 100 and 600 of Figures 1 and 6
which do follow ISO standard 14443 for wireless NFC communications.
Rosenberg 199, Figs. 1, 6, 8.
Further, Appellant’s argument that “Rosenberg describes a smart
card . . . that makes contact with a card reader during a purchase” (App. Br.
13, 24 (emphasis omitted); Reply Br. 5) does not address the Examiner’s
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finding that Rosenberg teaches wireless smart card embodiments (Ans. 9,
14; see Rosenberg |3 (“Smartcards can also be contactless or wireless”)).
Appellant’s arguments directed to the “[second] embodiment,” the “third
embodiment,” the “[fourth] embodiment,” and the “[fifth] embodiment” of
Rosenberg are embodiments the Appellant acknowledges are “not relied
upon by the Examiner” (App. Br. 14—19 (emphasis omitted)). Those
arguments do not persuasively address the Examiner’s findings regarding
Rosenberg’s use of wireless NFC in other embodiments. Final Act. 8 (citing
Rosenberg |4); Ans. 9, 14; see Rosenberg || 3, 10.
Also, Appellant’s argument that Rosenberg’s secure transfer program
resides on the mobile device and cannot “transfer[] itself from the mobile
device to the ‘secure element’” (App. Br. 19—20) is not persuasive. We
agree with the Examiner (Final Act. 8) that Rosenberg teaches smart cards
include “software applications stored on [the smart card] chip.” (Rosenberg
14).
Finally, Appellant’s argument that Rosenberg’s “secure transfer
program running on the mobile device triggers the smart link module” rather
than an NFC interaction triggering the application (App. Br. 21) is not
persuasive because, as discussed supra, the Examiner relies on Nystrom to
teach an NFC interaction initiating an application (Ans. 9—10 (citing
Nystrom || 11, 142, Fig. 4), 14; Final Act. 5, 7).
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Nystrom and Rosenberg teaches “initiation of the execution
of the secure element application is in response to a near field
communication interaction of the secure element with the point-of-sale
terminal,” as recited in claim 1 and similarly recited in claims 22 and 23.
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“transmission of transaction data ”
Appellant contends the Examiner erred in finding the combination of
Nystrom and Rosenberg teaches “transmission of transaction data to the
point-of-sale terminal,” as recited in claim 1 and similarly recited in claims
22 and 23. App. Br. 10; Reply Br. 5. Specifically, Appellant argues
“Nystrom doesn’t. . . disclose any details about the ‘transaction’ much less
[that] transaction data is transferred from the secure element to the POS
terminal.” App. Br. 10. Appellant further argues “Nystrom does not
disclose a server[,] much less transaction data transferred from the external
POS terminal (‘NFC Terminal’) to a server.” Reply Br. 5 (emphasis
omitted).
We are not persuaded. As discussed supra, we agree with the
Examiner’s finding (Ans. 9—10; Final Act. 7) that Nystrom teaches “an
external point of sale (POS) terminal may send queries to the secure smart
card module for finding applications it requests and upon finding a preferred
application, start communicating with the application for conducting the
transaction or [the] like” (Nystrom 1142; see Nystrom Fig. 4). For example,
“the POS tries to fmd[,] e.g.[,] an identification of a credit card provider[;] if
such an identification has been found, a transaction procedure may be
initiated.” Nystrom]] 142.
Appellant’s argument that Nystrom does not teach that “transaction
data is transferred from the secure element to the POS terminal” (App. Br.
10) is not persuasive. Nystrom teaches its POS terminal “send[s] queries to
the secure smart card module for finding applications it requests and . . .
fmd[s] a preferred application” Nystrom 1142. The response from
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Nystrom’s smart card to Nystrom’s POS terminal teaches a transfer of
transaction data because that response responds to a query for conducting a
transaction. Furthermore, Nystrom teaches that the smart card’s “NFC
interface 610 allows both reading and writing operations to be conducted
both to and from external tags/devices and also peer-to-peer type
communication between two NFC terminals” (Nystrom 1141) and the
transaction between the smart card and the POS terminal transfers data
between the two (Nystrom 1142).
Further, Appellant’s argument that “Nystrom does not disclose a
server[,] much less transaction data transferred from the external POS
terminal (‘NFC Terminal’) to a server” (Reply Br. 5) is not commensurate
with the scope of the claims. The claims do not recite, and therefore do not
require, a server or sending transaction data to a server. Accordingly, we are
not persuaded the Examiner erred in finding the combination of Nystrom
and Rosenberg teaches “transmission of transaction data to the point-of-sale
terminal,” as recited in claim 1 and similarly recited in claims 22 and 23.
“receiving] digital artifacts ”
Appellant contends the Examiner erred in finding the combination of
Nystrom and Rosenberg teaches “receiv[ing] digital artifacts at the secure
element from the NFC terminal secure element application during the NFC
transaction,” as recited in claim 1 and similarly recited in claims 22 and 23.
App. Br. 25.
We are not persuaded. The Examiner finds (Final Act. 7—8), and we
agree, Nystrom teaches “a transaction procedure may be initiated” between
Nystrom’s smart card and POS terminal (Nystrom 1142) to “conduct RFID-
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based payment and ticketing transactions” (Nystrom 1141). The Examiner
further finds (see Final Act. 9), and we agree Nystrom’s smart card’s “secure
storage module 601 .. . stor[es] different data . . . comprising] . . . receipts
and electronic tickets” (Nystrom 1140; see Nystrom || 5, 48). Appellant’s
argument is without elaboration and merely asserts that Nystrom and
Rosenberg “[do] not disclose” the claimed limitation without addressing the
Examiner’s findings. App. Br. 25. Accordingly, we are not persuaded the
Examiner erred in finding the combination of Nystrom and Rosenberg
teaches “receiving] digital artifacts at the secure element from the NFC
terminal secure element application during the NFC transaction,” as recited
in claim 1 and similarly recited in claims 22 and 23.
Improper Combination
Appellant contends the Examiner improperly combined Nystrom and
Rosenberg. App. Br. 12, 20, 22, 25, 30; Reply Br. 5, 9—12. Specifically,
Appellant argues Nystrom and Rosenberg teach away from each other and
the claimed invention. App. Br. 12, 20, 22, 25; Reply Br. 5, 9. Appellant
further argues the combination “require[s] an impermissible redesign of
Nystrom to store an application that works in a plastic card slid[] through a
card reader, [is] processed at a server, and [does] not use NFC.” Reply Br.
5—6, 9; App. Br. 25. Appellant additionally argues the Examiner’s
combination is “based on impermissible hindsight” (App. Br. 12, 22, 30),
and “rather than identifying such a reason to combine, the Examiner merely
identified a shared advantage” (Reply Br. 10-12).
We are not persuaded. As discussed supra, the Examiner finds (Final
Act. 7), and we agree, Nystrom teaches a “near field (secure) smart card
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(module) 800” which includes “an interface 860 to a near field
communication module” and “groups of applications 810, 820, 830, 840”
that are “stored in a . . . storage and are accessible from an external (NFC)
terminal device” (Nystrom 1143). The Examiner further finds, and we
agree, Rosenberg “further reinforce[s] that the application is contained and
executed in the secure element.” Final Act. 5, 8 (citing Rosenberg 14). The
Examiner combines Nystrom and Rosenberg “in order to facilitate mobile
transaction payments].” Final Act. 9.
We are not persuaded by Appellant’s argument that Nystrom and
Rosenberg teach away from the claimed invention. App. Br. 12, 20, 22, 25;
Reply Br. 5, 9. To teach away, a reference must “criticize, discredit, or
otherwise discourage” investigation into the claimed solution. In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant’s discussions ofNystrom’s
application identification (App. Br. 12 (citing Nystrom 121)) and
Rosenberg’s secure transfer program (App. Br. 20, 22) do not identify any
actual criticisms, discrediting, or discouragement of executing applications
in response to NFC interactions.
Further, Appellant’s argument that Nystrom must be impermissibly
redesigned to “store an application that works in a plastic card slid[] through
a card reader, [is] processed at a server, and [does] not use NFC” (Reply Br.
5—6, 9; App. Br. 25) is not persuasive. Appellant’s argument that Nystrom’s
smart card would be redesigned to be a contact-based card that does not use
NFC inappropriately requires the bodily incorporation of contact-based
embodiments in Rosenberg on which the Examiner does not rely. See Final
Act. 8; see also Ans. 9. Further, Appellant’s argument that Nystrom must be
redesigned to incorporate a server requires features the claims do not recite
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and modifications the Examiner’s combination does not make. See Final
Act. 5, 8—9.
Additionally, we are not persuaded the Examiner’s rationale is based
on impermissible hindsight and “simply identif[ies] a benefit or advantage
that the suggested combination shares with the claimed invention.” App. Br.
12, 22, 30; Reply Br. 10, 12. The Examiner’s rationale for the combination,
“facilitating] mobile transaction payments]” (Final Act. 9), is taught by
Rosenberg itself. The Examiner points out (Ans. 14) that Rosenberg teaches
a “smartcard is waved near a [smart card reader] to permit the user to
purchase” a product (Rosenberg 110). Indeed, Rosenberg teaches its
invention is directed towards “a mobile communication device [that]
facilitates information transfer” for “a financial transaction.” Rosenberg
115. Accordingly, we are not persuaded the Examiner improperly
combined Nystrom and Rosenberg.
Remaining Claims 2—4 and 7—21
Appellant does not argue separate patentability for dependent claims
2-4 and 7—21, which depend directly or indirectly from claim 1. App. Br.
30-31.4 Accordingly, for the reasons set forth above, we sustain the
Examiner’s decision to reject claims 2-4 and 7—21.
4 Appellant refers to claims 2—21 (App. Br. 30), but acknowledges that
claims 5 and 6 have been canceled {id. at 32).
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DECISION
The Examiner’s rejection of claims 1—4 and 7—23 under 35
U.S.C. § 103(a) as being unpatentable over Nystrom and Rosenberg 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).
AFFIRMED
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