15621474 - (D) (P.T.A.B. Aug. 26, 2019)

George Baldwin. Bumiller

Patent Trials and Appeals BoardAug 26, 2019

15621474 - (D) (P.T.A.B. Aug. 26, 2019)

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. 15/621,474 06/13/2017 George Baldwin Bumiller JL1110.003 4277 14207 7590 08/26/2019 The Juhasz Law Firm, P.C. 10777 Westheimer, Suite 1100 Houston, TX 77042 EXAMINER AGWUMEZIE, CHINEDU CHARLES ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 08/26/2019 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): pjuhasz@patenthorizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GEORGE BALDWIN BUMILLER ____________ Appeal 2019-004312 Application 15/621,474 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and BRUCE T. WIEDER, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 103. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 “The real party in interest is George Bumiller,” who “is the sole named inventor on the application.” (Appeal Br. 2.) Appeal 2019-004312 Application 15/621,474 2 STATEMENT OF THE CASE The Appellant describes a mobile device that is “provided with a secure element (SE)” in which may be embedded “sensitive information about the user,” such as “virtual credit card[]” information. (Spec. ¶ 6.) To facilitate security during a credit-card transaction, a message containing this SE-embedded information can be communicated to a trusted service manager. (See id.) With the Appellant’s mobile device, this communication is conducted over a “PIN communication channel[]” that is “operated under the complete control” of an entity that owns “the PIN address” of the mobile device. (Id. ¶ 81.) Put another way, communication between the secure element and the trusted service manager is not conducted in a SIM domain that involves “communication through cellular data channels that are shared between [cellular] service providers.” (Id.) Illustrative Claim 1. A mobile device comprising: a secure element that contains sensitive information; a PIN number that uniquely identifies the mobile device on a single-entity controlled PIN network; a cellular data channel module that enables the mobile device to communicate over a cellular communication channel using a SIM address provided in a SIM that is used with the mobile device, and that is associated with a cellular carrier; and a PIN data channel module that enables the mobile device to communicate over the single-entity controlled PIN network; wherein the secure element resides within the mobile device, and not within the SIM, such that the secure element remains unchanged when the SIM is changed; and wherein the mobile device is configured to communicate between the secure element and a trusted service manager only through the PIN data channel module. Appeal 2019-004312 Application 15/621,474 3 Rejection Claims 1–20 are rejected under 35 U.S.C. § 103 as being unpatentable over Tysowski2 and Singh.3 (Final Action 7.) ANALYSIS Independent claims 1 and 20, the only independent claims on appeal, recite a mobile device that is “configured to communicate between [a] secure element and a trusted service manager only through [a] PIN data channel module.” (Appeal Br., Claims App.) The Examiner’s obviousness rejection relies upon Singh to disclose this limitation. (See Final Action 9.) We are persuaded by the Appellant’s arguments that the Examiner does not sufficiently establish that Singh discloses a mobile device that is configured to communicate between a secure element and a trusted service manager only through a PIN data module. (See Appeal Br. 6–8; Reply Br. 5–8.) Singh discloses a mobile device 102 having a token generator 110 that “interacts with a secure element 112 to generate a token.” (Singh ¶ 33.) For example, the token may be generated using a unique “secure element key” that “was previously loaded into [a] secure element 112 of the mobile device 102.” (Id.) A PIN (e.g., “an eight character reference that is assigned uniquely to each mobile device”) may also be “provided as part of the token.” (Id. ¶¶ 44, 50.) “[A] trusted service manager 106 directly or indirectly receives the token generated by the mobile device 102 and validates the token.” (Singh 2 US 2009/0215476 Al, published August 27, 2009. 3 US 2013/0041830 A1, published February 14, 2013. Our quotations to this reference omit the bolding of drawing-associated numerals. Appeal 2019-004312 Application 15/621,474 4 ¶ 39.) The Singh’s token can, therefore, be considered a communication between the mobile device 102 and the trusted service manager 106. And, inasmuch as Singh’s token can be considered a communication between the mobile device’s secure element 112 (as opposed to just the mobile device 102) and the trusted service manager 106, we agree with the Examiner that this communication “includes the PIN.” (Answer 4–5.) But a finding that Singh’s token includes a PIN falls short of establishing that Singh’s mobile device 102 is configured to communicate between its secure element 112 and the trusted service manager 106 only through a PIN data channel module. Singh does not disclose that the token’s PIN, or any PIN for that matter, dictates how the token is communicated to the trusted service manager 106 for validation. Rather, Singh discloses that the mobile device 102 “is configured to communicate with” the trusted service manager 106 “using suitable networks (e.g., cellular networks, local area networks, etc.).” (Singh ¶ 29; see also Fig. 1.) And the Examiner acknowledges that Singh does “not specify that the communication is exclusively through a PIN data channel module.” (Answer 5.) The Examiner seems to focus somewhat on the communication that takes place “between [a] secure element key obtainer 302 and a flexible secure element 304.” (Answer 5.) The Examiner points out, and we do not necessarily disagree, that this communication involves the token’s PIN. (See id.) However, Singh’s components 302 and 304 are token-validation components internal to the trusted service manager 106. (See Singh ¶¶ 31, 39, 50, see also Fig. 1.) As such, the token-providing communication between the mobile device 102 and the trusted service manager 106 is Appeal 2019-004312 Application 15/621,474 5 complete before these components come into play. In other words, communication between Singh’s token-validating components 302 and 304 “has absolutely nothing to do with the mobile device communicating with the trusted service manager only through a PIN data channel module.” (Appeal Br. 6–7.) As such, the Examiner does not sufficiently establish that Singh shows or suggests a mobile device configured to communicate between a secure element and a trusted service manager only through a PIN data channel module. Thus, we do not sustain the Examiner’s rejection of independent claims 1 and 20, and the claims depending therefrom.4 DECISION We REVERSE the Examiner’s rejection of claims 1–20. REVERSED 4 The Examiner’s further findings and determinations with respect to the dependent claims (see Final Action 9–13) do not compensate for the above- discussed shortcoming in the rejection of independents claims 1 and 20.