MASTERCARD INTERNATIONAL INCORPORATED

Patent Trials and Appeals Board

Jul 21, 2020

2020001629 (P.T.A.B. Jul. 21, 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.
14/248,820 04/09/2014 Garry LYONS 0076412-000233 1024
21839 7590 07/21/2020
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
ORTIZ ROMAN, DENISSE Y
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
07/21/2020 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GARRY LYONS
__________________

Appeal 2020-001629
Application 14/248,820
Technology Center 3600
____________________

Before STEFAN STAICOVICI, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1, 3, 5–8, 11–14, 16, 18–21, and 24–26,
which are all pending claims.2 Appeal Br. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Mastercard International Incorporated as the real party in interest.
Appeal Br. 2.
2 Claims 2, 4, 9, 10, 15, 17, 22, and 23 are cancelled. Appeal Br. 2.
Appeal 2020-001629
Application 14/248,820

2
CLAIMED SUBJECT MATTER
Claims 1, 7, 14, and 21 are independent. Claim 1 is reproduced
below.
1. A method for processing a contactless payment
transaction using a traditional point of sale, comprising:
physically coupling, to a point of sale device, a
removable computing device;
detecting, by the removable computing device, an
external computing device;
establishing, by the removable computing device, direct
communication with the external computing device by a
wireless communication protocol;
communicating, by a wireless communication interface
of the removable computing device, with a payment network,
and receiving therefrom, payment details associated with a
payment account of a user of the external computing device;
formatting, by a processor of the removable computing
device, the received payment details into a format configured
for inclusion in an authorization request for a payment
transaction, the authorization request being compliant with an
electronic financial transaction interchange messaging standard;
and
transmitting, by a transmitter of the removable
computing device, the formatted payment details to the point of
sale device.

Appeal Br. 19 (Claims App.).
REJECTION
Claims 1, 3, 5–8, 11–14, 16, 18–21, and 24–26, are rejected under
35 U.S.C. § 103 as unpatentable over Drozd (US 2012/0226565 A1, pub.
Sept. 6, 2012) and Falzone (US 2012/0066079 A1, pub. Mar. 15, 2012).

Appeal 2020-001629
Application 14/248,820

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ANALYSIS
Appellant argues the claims as a group. Appeal Br. 9–17. We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding claim 1, the Examiner finds that Drozd teaches a method of
using a traditional point of sale with an external computing device of a user
(Mobile Phone) and a removable computing device (Apparatus) coupled to a
Point of Sale (POS). The Examiner finds that the Apparatus communicates
with a Payment Network to receive payment details for a payment account
of a user of the Mobile Phone, formats the received payment details into a
format configured for inclusion in an authorization request compliant with
an electronic financial transaction interchange messaging standard, and
transmits the payment details to the POS. Final Act. 5 (citing Drozd ¶¶ 9,
16, Fig. 3); Ans. 3 (also citing Drozd ¶¶ 17, 18, Fig. 3).
The Examiner further finds that Drozd lacks direct communication
between a removable computing device (Apparatus) and external computing
device (Mobile Phone), but Falzone has it. Final Act. 6 (citing Falzone ¶¶ 6,
7, 22–27, 63). The Examiner determines that it would have been obvious to
a skilled artisan to establish direct communication between a Mobile Phone
and an attachment to a POS (Apparatus) of Drozd, as taught by Falzone, as
this known payment technique would improve Drozd’s system similarly. Id.
Appellant argues that the Apparatus of Drozd does not communicate
with a payment network or receive therefrom payment details of a payment
account of a user of the mobile device as claimed. Appeal Br. 11. Appellant
argues that Drozd’s IPS retrieves payment details, sends an authorization
request to a Payment Processor, and relays an authorization response to the
Apparatus, which forwards the authorization to the POS. Id.; Reply Br. 2–3.
Appeal 2020-001629
Application 14/248,820

4
The Examiner has the better position. We reproduce Figure 3 of
Drozd below to illustrate Drozd’s payment transaction system.

Figure 3 of Drozd above illustrates point of sale (POS) connected to
an Apparatus to process an ACH payment with a Mobile Phone in a store.
Drozd ¶¶ 2, 13, 17, 18. The Apparatus, which is a “removable computing
device,” includes a gateway “for communicating with [a] money processor
similarly to payment consoles.” Id. ¶ 9. “As a result, POS terminal engages
into mobile payment transactions treating the attached apparatus as a
standard payment console, which does not require any changes in POS
terminal software.” Id. Thus, Drozd teaches an Apparatus communicating
with a payment network and transmitting received payment details to a POS.
Appeal 2020-001629
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Drozd describes the payment transaction in more detail as follows:
After the total is confirmed (arrow 8), IPS retrieves the
customer bank routing number and account number from its
database and sends an ACH transaction request to the payment
processor (arrow 9). The processor processes the request and
sends a message to IPS about completion of the transaction
(arrow 10). IPS relays this message to the apparatus (arrow
11), which, in turn, relays it to the POS (arrow 12).
Id. ¶ 18.
Thus, Apparatus receives payment details from a Payment Processor
associated with a payment account of the Mobile Phone user of the external
computing device and transmits details to the POS as claimed. Drozd ¶¶ 9,
18; see Reply Br. 3 (“The IPS relays the authorization response (authorized
or declined) to the alleged removable computing device (apparatus), which
then forwards it to the POS for display.”). The fact that the Apparatus may
receive payment details from the Payment Processor via an intermediary
Identity Provisioning Service (IPS) is not precluded by claim 1.
Claim 1 does not require the removable computing device (Apparatus)
to communicate directly with a payment network as Appellant argues. See
Appeal Br. 11 (arguing the Apparatus does not communicate with a payment
network and IPS sends an authorization response to the Apparatus). Claim 1
recites a “removable computing device [in] direct communication with the
external computing device,” but claim 1 does not require a similar direct
communication with a payment network. Appeal Br. 19 (Claims App.).
Appellant’s argument is not commensurate with the scope of claim 1.
Even so, Drozd’s IPS is part of a payment network. The Specification
defines “Payment Network” as a “system or network used for the transfer of
money via the use of cash-substitutes.” Spec. ¶ 18.
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The term “payment network” refers to “the equipment, hardware, and
software comprising the payment network.” Spec. ¶ 18. Drozd’s IPS is part
of a system/network that transfers money via cash-substitutes. It contains a
customer’s bank routing and account number and sends that information in
an ACH transaction request to the Payment Processor to complete a payment
transaction. Drozd ¶ 18. The IPS and Payment Processor together comprise
equipment of the payment network that processes payment requests of a user
of a Mobile Phone using Apparatus connected to POS. Drozd ¶¶ 9, 17, 18.
When IPS sends a message to the Apparatus indicating a transaction is
complete (i.e., authorized), Apparatus receives “payment details” from the
“payment network” (IPS, Payment Processor) as claimed. See Ans. 3.
Appellant also argues that Falzone does not teach “formatting . . .
the received payment details into a format configured for inclusion in an
authorization request for a payment transaction, the authorization request
being compliant with an electronic financial transaction interchange
messaging standard.” Appeal Br. 13–15. Appellant argues that Falzone’s
conversion of information from a first format to a second format does not
teach that peripheral device 120 formats payment details received from the
payment network into a format configured for inclusion in an authorization
request for a payment transaction. Id. at 14–15.
Appellant’s arguments are not persuasive because they attack the
references individually when the Examiner relies on the combined teachings
of Drozd and Falzone to render obvious this limitation of claim 1. See In re
Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”).
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The Examiner relies on Drozd to teach receiving by the removable
computing device payment details from a payment network and providing
the payment details in an authorization requests for payment transactions
compliant with an electronic financial transaction interchange messaging
standard. See Final Act. 5. The Examiner also finds that “Drozd does not
explicitly disclose[] formatting payment details into a format configured for
inclusion in an authorization request [but] Falzone does.” Id. at 6.
The Examiner explains that Falzone’s peripheral device outputs a
dataset as part of a commercial transaction. Ans. 4 (citing Falzone ¶ 29).
The Examiner also finds that peripheral device 120 is configured to receive
payment-related information and format such data before transmitting the
formatted data to a POS device. Id. (citing Falzone ¶¶ 30, 63, 71, 72).
Appellant recognizes that peripheral device 120 may include a module
122, which formats data into protocols acceptable for data processing system
110 (the POS device) and then transmits the formatted data to the POS 122.
Appeal Br. 14; Reply Br. 5. However, Appellant argues that Falzone does
not format “payment details,” but this argument ignores Falzone’s teachings
that peripheral device 120 receives payment-related information and outputs
datasets of commercial transactions. Id. at 14–15; Falzone ¶¶ 29, 63; Ans. 4.
Appellant also argues that Falzone “discloses different manners in
which the peripheral device 120 (alleged removable computing device) may
receive payment information, none of which involving communication to and
receiving payment information from a payment network” and therefore the
peripheral device does not format payment details received from a payment
network into a format configured for inclusion in an authorization request.
Reply Br. 4–5.
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This argument is not persuasive because the Examiner cites Drozd’s
Apparatus to receive payment details from a payment network and send an
authorization request for payment transactions to a POS. Final Act. 5. The
Examiner cites Falzone to teach details of formatting the payments. Id. at 6.
Falzone’s teachings evidence the knowledge in the art of point of sale
transactions that use of a peripheral device to facilitate a sales transaction at
a point of sale device requires some formatting of data sets of the transaction
to include payment-related information received by the peripheral device in
order to transmit the payment related and transaction data to the POS device.
See Falzone ¶¶ 29, 30, 63, 71, 72; see Ans. 4; Final Act. 6. The Examiner
reasonably determines that these well-known payment techniques taught by
Falzone would yield predictable results in Drozd’s POS. Final Act. 6; see
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.”); see also id. at 418
(“Often, it will be necessary for a court to look to interrelated teachings of
multiple patents; the effects of demands known to the design community or
present in the marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.”).
Thus, we sustain the rejection of claim 1 and its dependent claims 3
and 5–7. Appellant presents similar arguments for independent claims 8, 14,
and 21. Appeal Br. 15–17. Thus, we sustain the rejection of those claims
for the same reasons as claim 1 above and their respective dependent claims
11–13, 16, 18–20, and 24–26, which are not argued separately. Id. at 17.
Appeal 2020-001629
Application 14/248,820

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 3, 5–8, 11–
14, 16, 18–
21, 24–26
103 Drozd, Falzone 1, 3, 5–8, 11–
14, 16, 18–
21, 24–26

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