Ex Parte LI et al

Patent Trial and Appeal Board

Mar 22, 2016

12231379 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/231,379 08/3112008
38062 7590 03/24/2016
NORTH, WEBER & BAUGH LLP
2479 E. BA YSHORE RD., STE. 210
PALO ALTO, CA 94303
FIRST NAMED INVENTOR
Michelle Leyden Li
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.
20057-1554 3781
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/24/2016 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):
docket!@northweber.com
docket2@northweber.com
nmiller@northweber.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHELLE LEYDEN LI,
STEVEN M. POPE,
and MANUEL ACEVES
Appeal2013---005278
Application 12/231,379
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Michelle Leyden Li, Steven M. Pope, and Manuel Aceves
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims
1-11, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed July 24, 2012) and the Examiner's Answer ("Ans.," mailed December
5, 2012), and Final Action ("Final Act.," mailed February 23, 2012).
Appeal2013-005278
Application 12/231,379
The Appellants invented a customer mobile personal point-of-sale
terminal (CMPPT) including a Point-of-Sale (POS) sleeve portion that
slidingly engages to, and slidably disengages from, a cellular telephone
portion. Specification para. 9.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below.
1. A method comprising:
(a) loading customer account information into a customer
mobile personal point-of- sale terminal (CMPPT) using a
point-of-sale attachment portion included in the CMPPT,
wherein the CMPPT further includes a cellular telephone
portion that is a mass-produced standard cellular phone and
coupled to the point-of-sale terminal via connectors;
(b) receiving merchant account information by the
CMPPT;
and
( c) initiating a transaction by sending the customer
account information and the merchant account information
from the CMPPT to a financial transaction verification entity
(FTVE) by the CMPPT.
The Examiner relies upon the following prior art:
Abifaker US 2008/0059375 Al
Hammad US 2008/0208681 A 1
Mar. 6, 2008
Aug.28,2008
Claims 1-11 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Abifaker and Hammad.
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Application 12/231,379
ISSUES
The issues of patentable subject matter tum primarily on whether the
claims are directed to more than conceptual advice on how to pass data
through a general purpose wireless phone. The issues of obviousness tum
primarily on whether the art describes the steps recited in the claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Abifaker
01. Abifaker is directed to payment card terminals for
mobile phones. Abifaker para. 2.
02. Abifaker describes setting up the client application
by entering merchant account information that may be used when
making requests for settlement. Abifaker para. 40.
03. Abifaker describes providing for settlement with a
payment card by an agreement between the merchant account
providers and an association of payment cards, which may operate
the payment card association server. The merchant account
providers communicate with payment card associations to
determine whether to authorize a transaction, crediting and
debiting of merchant accounts, and the like. Abifaker para. 57.
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Application 12/231,379
04. Abifaker describes user interfaces from which to
request a settlement with a payment card through a mobile phone.
The user interface includes a combination of fields in which credit
card information in combination with an amount of a transaction
may be entered. Interaction with the user interface may be
performed, for example through a twelve button keypad (or a
QWERTY keypad, if so-equipped). As another example, entering
of a credit card number may be performed through the use of a
card reading device that communicates with a mobile phone.
Abifaker para. 74.
Hammad
05. Hammad is directed to payment and collection of
transit fares, and more specifically, to a mobile device such as a
cell phone to enable payment of a transit fare. Hammad para. 2.
06. Hammad describes using a contactless element
such as an integrated circuit chip embedded in a wireless mobile
device that may combine transaction payment and transit fare
payment capabilities. Hammad id.
07. Hammad describes using a contactless element
including, for example, a contactless smart chip and a wireless
data transfer element, embedded within a mobile wireless device,
such as a mobile phone, PDA, MP3 player or the like. The smart
chip, or other type of device, can be integrated with the circuitry
of the mobile device to permit data stored on the chip to be
accessed and manipulated (e.g., read, written, erased) using the
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Application 12/231,379
wireless communications network as the data transport channel.
In this way, the data required to enable a user to access, for
example, a transit system and data for the system to conduct fare
calculations may be provided to the chip using the wireless
network. Such data may include access control data (keys,
passwords, identification data) or data required for fare
calculations (rates, historical data on system use), for example.
Hammad para. 14.
08. Hammad describes using device (e.g., card)
readers as suitable point of sale terminals. The device readers
may include any suitable contact or contactless mode of operation.
Hammad para. 7 5.
ANALYSIS
Claims 1-11 rejected under 35 U.S.C. § 1 OJ as directed to non-
statutory subject matter
The claims are directed to methods of transmitting financial
transaction data. Sending financial transaction data is as old as the banking
industry, and as such is no more than a business concept, which is an
abstract idea. The steps recited load data, receive data, and send data. These
are conventional computer steps. That they are performed on a cellular
phone with an embedded computer does not significantly alter the level of
abstraction.
We are not persuaded by the Appellants' argument that the recited
CMPPT is a particular machine. Claim 1 recites that the CMPPT includes a
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Application 12/231,379
cellular telephone portion that is a mass-produced standard cellular phone.
The recitation that it is coupled to the point-of-sale terminal via connectors
absent any further structural limitation of such a point-of-sale terminal does
not tum the general purpose cell phone into a special purpose machine.
We are not persuaded by the Appellants' argument that the CMPPT is
used in a manner different from conventional cell phone usage. The
argument is that the passing of this particular collection of data is unknown.
But passing data per se is simply what general purpose computers do.
Directing particular sets of data is conceptual advice, no more than advising
what data to pass and doing so with a computer. This is insufficient to tum
abstract advice into patentable subject matter. See Alice Corp., Pty. Ltd. v
CLS Bank Intl, 134 S.Ct. 2347, 2358 (2014).
Claims 1-11 rejected under 35 U.S. C. § 103 (a) as unpatentable over
Abifaker and Hanunad
Claim 1 is a process claim that refers to an apparatus and is not an
apparatus claim per se. All three steps are performed by the same apparatus.
The only structural limitation occurs in limitation (a) reciting that the
apparatus includes a standard cellular phone coupled to a point-of-sale
terminal via connectors, and that it has some point-of-sale attachment
portion. As the device is recited as being a customer mobile personal
point-of- sale terminal, there is some ambiguity in distinguishing such a
customer mobile personal point-of-sale terminal from the point-of-sale
attachment portion. Thus, the point-of-sale terminal coup 1 e d via
connectors could refer to either the customer mobile personal point-of-sale
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Application 12/231,379
terminal from the point-of-sale attachment portion. The inclusion of the
word "terminal" suggests it is the customer mobile personal point-of- sale
terminal that is meant. No structural limitation for the point-of-sale
attachment portion is recited. The only functional limitation of the point-of-
sale attachment portion is that it be used somehow in loading customer
account information into the customer mobile personal point-of-sale
terminal. Thus, the issue is whether the combined art makes it predictable to
have performed all three steps on a single device, where the loading step
somehow uses something that might be referred to as an attachment portion.
The Examiner found that Abifaker described the three steps as such
and that Hammad described adding some device containing specialized point
of sale capability to a generic communication device as a way of adapting
the communication device into a specialized point of sale device. The
Examiner reasoned that Hammad described the advantages of doing so, and
so the combination would perform the three steps with the device recited in
step (a).
The Examiner also found that the keypad portion of Abifaker' s
communication device was an attachment portion of a point of sale device,
and that Hammad's cell phone was connected to the entire point of sale
terminal by the connectors connected to a contactless element. Hammad's
"contactless element" refers to lack of contact during reading, such as a
wireless chip credit card that does not require actual contact with a reader.
The contactless element itself is described as being in a conventional
package such as an integrated circuit chip that requires connectors to the
enclosing device to pass data to the device's circuitry. Thus, the connectors
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Application 12/231,379
that connect the contactless element to the phone also connects the phone to
the element and thus to the entire terminal. Final Act. 5; Ans. 10-12.
We are not persuaded by the Appellants' argument that
[t]he Examiner asserts that the user interfaces illustrated
in FIG. 2D and 2E in Abifaker are equivalent to the point-of-
sale attachment portion in claim 1. These user interfaces are
merely software applications or programs installed on the
cellular phone to allow the mass-produced cellular phone to be
used as a payment terminal. In contrast, the point-of-sale
attachment portion in claim 1 is hardware, rather than
programs. The point-of-sale attachment portion is separated
from the cellular phone, but can be coupled to the cellular
phone using mating connectors. Moreover, the point-of-sale
attachment in claim 1 portion receives the customer account
information, while in Abifaker, the information is received by
the cellular phone using software program interfaces in FIG.
2D. The Examiner has erroneously regarded the software user
interface as a detachable hardware component.
App. Br. 13. Appellants misapprehend the Examiner's analysis. The
Examiner found that Abifaker describes using a keypad portion of a point of
sale terminal to load customer account information. As a keypad is attached
to Abifaker' s terminal, this is within the scope of an attachment portion of a
point of sale terminal.
We are not persuaded by the Appellants' argument that
[t]he Examiner asserts that Abifaker discloses a step of
sending both the customer and merchant account information
from the CMPPT to the FTVE in paragraph 57. However,
paragraph 57 is focused on communication between the
merchant account providers and the payment card association
server to determine whether to authorize a transaction.
(Abifaker, pg.5, par.57) Such communication does not involve
the CMPPT or steps 100-103 in FIG. 4 of the present invention
as, claimed in step ( c) of claim 1. Rather, par. 57 in Abifaker is
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more related to subsequent steps 104-108 in FIG. 4. Therefore,
the Examiner erroneously regards conventional communication
between the merchant and payment card servers as step (C) in
claim 1.
App. Br. 13-14. We take Appellants' argument to mean that the
device Abifaker describes is not a CMPPT because it is the merchant's
rather than customer's device. Ownership is neither a structural nor
procedural limitation. Abifaker describes the three steps performed by a
single device as the claim recites. More to the point, the claim is silent as to
the owner of the device. Giving the device the label "customer mobile
personal point-of-sale terminal" does not identify an owner per se. The
label only says the terminal is of a type that might be used by or for a
customer for some point-of-sale purpose and is in some sense mobile and
personal.
We are not persuaded by the Appellants' argument that
[t]he Examiner cites Hammad for the claim element of
the point-of-sale attachment portion that is missing in Abifaker.
Hammad discloses a contactless element that may include a
smart chip and a wireless data transfer element. In particular,
the data transfer element may be implemented as an antenna,
LED or laser diode. (Hammad, par. 14) First of all, the
contactless element is an electronic part embedded within a
mobile device, rather than a relatively independent detachable
attachment portion. (pg.2, par. 14, line 7) Moreover, the
contactless element is applied to communicate with a transit
data system 130. (FIG.I; pg.5, par.50) The contactless element is
not used to load customer account information from an external
source to the CMPPT or the mobile device. As a result, the
contactless element as disclosed in Hammad is distinct from the
point-of-sale attachment portion in both its form and its
function.
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App. Br. 14. The claim does not recite anything regarding being
detachable. All that is required is that the attachment portion be attached.
The Examiner maps each of Abifaker's keypad and Hammad's contactless
element to such an attachment portion. Each is attached by some form of
connector to pass signals to and from the phone. As to loading customer
data, the claim does not recite or narrow the implementation for doing so.
Both the keypad and point of sale module would be used in loading
customer information for transmission to a credit card company. Even if the
customer data were already resident somewhere in the terminal beforehand,
the staging of the data from that location to the memory location for
transmission to the credit card company would be a form of loading.
We are not persuaded by the Appellants' argument that
the method in Hammad is directly contradictory to the
present invention. In FIG. 1, near field capability 112 is
established between the transit data system 130 and the contacts
element 106 in the mobile device 102. (Hammad, pg.5, par.49)
Such a configuration directly exposes the sensitive customer
account information stored in the mobile device to an external
merchant system. This security threat is the actual drive for the
present invention that relies on the CMPPT to communicate
both merchant and customer account information. To this
extent, Hammad teaches away the present invention
App. Br. 14. "The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference .... Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art."
In re Keller, 642 F.2d 413, 425, (CCPA 1981). See also In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of
the references be physically combinable to render obvious the invention
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Application 12/231,379
under review."); and In re Nievelt, 482 F.2d 965, (CCPA 1973) ("Combining
the teachings of references does not involve an ability to combine their
specific structures."). The Examiner did not propose to include Hammad's
near field capability, but only proposed Hammad showed that one of
ordinary skill knew to attach a device already loaded with some point of sale
capacity to a cell phone.
CONCLUSIONS OF LAW
The rejection of claims 1-11 under 35 U.S.C. § 101 as directed to
non-statutory subject matter is proper.
The rejection of claims 1-11 under 35 U.S.C. § 103(a) as unpatentable
over Abifaker and Hammad is proper.
DECISION
The rejection of claims 1-11 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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