Michelle Fisher

Patent Trials and Appeals Board

Sep 4, 2020

2020001436 (P.T.A.B. Sep. 4, 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.
13/218,879 08/26/2011 Michelle Fisher 8771
12120 7590 09/04/2020
Michelle Fisher
2930 Domingo Ave
Suite 123
Berkeley, CA 94705
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/04/2020 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):
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 2020-001436
Application 13/218,879
Technology Center 3600
____________

Before ERIC S. FRAHM, CATHERINE SHIANG, and
MICHAEL T. CYGAN, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–10, 12, and 16–24, which are all the claims pending
and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Michelle Fisher as the real party in interest. Appeal Br.
1.

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STATEMENT OF THE CASE
Introduction
The present invention relates to “data communications and wireless
devices.” Spec. ¶ 3. In particular, the invention relates to “using an NFC
[near field communication] enabled mobile device to manage digital medical
artifacts.” Title (emphasis omitted).

The system is configured with a mobile device (with
client application also referred to as a mobile wallet), a secure
element that is associated with the mobile device, NFC Point Of
Sale System which is capable of processing financial
transactions (including 2-way wireless terminal capable of
sending and transmitting), NFC Point-Of-Presence Terminal
which is capable of processing non-financial transactions
(including 2-way wireless terminal capable of sending and
transmitting), an NFC Point-of-Entry Device which is capable
of providing access to venues including 2-way wireless
terminal capable of sending and transmitting, a management
server, a Trusted Service Manager (TSM) and several 3rdParty
artifact provider/aggregator.

In the delivery scenario, when the user holds an NFC
enabled mobile communication device with a secure element
coupled to it in proximity of a suitable equipped POS/POE/POP
with NFC, the NFC POS/POE/POP device will trigger an
application residing in the secure element (which is different
than an application residing on the mobile communication
device) to power on and activate an application residing in the
secure element, transfer data or digital artifacts (e.g
debit/prepaid/credit card, receipts, tickets, advertisements,
coupons, loyalty points, gift cards, vouchers, content (video,
image, ringtone, movie), games, documentation, business cards,
tickets, hotel key, health care records, security key, automobile
key, etc.) from/to the secure element, and the secure element
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may issue commands and/or respond to commands just to name
a few.

Spec. ¶ 1. Claim 1, 6, and 7 are exemplary:

1. A method for transferring medical digital artifacts between Near
Field Communication(NFC) enabled devices, the method comprising:
receiving manual user authentication at a handheld mobile device
wherein a non-browser based application running on the mobile device
prompts the user for authentication, and further wherein authentication is
performed by a remote server;
maintaining in a memory a health care secure element software
application and user Identification(ID), wherein the memory is included in a
secure element coupled to the handheld mobile device;
executing, by a processor of the secure element, a health care secure
element software application in response to an NFC inductive signal by a
Point-Of-Presence (POP) device,
wirelessly receiving at the secure element transaction data from the
point-of presence device;
generating a Dynamic Verification Code (DVC) using the health care
secure element software application
transmitting transaction data, including the user ID and the DVC-
using the health care secure element software application, through a second
communication channel to the point-of-presence device, the second
communication channel being different from a first communication channel
through which the hand-held mobile device communicates voice and data;
wirelessly receiving a command to unlock the secure element; and
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receiving the medical digital artifacts at the secure element from the
POP device which is subsequently displayed on the mobile device.
6. The method of claim 1 wherein the secure element is unlocked by
the remote server.
7. The method of claim 1 wherein the secure element is unlocked by
the non-browser based mobile application on the mobile device, wherein the
non-browser based application decrypts a file downloaded by a remote
server and retrieves the secure element key inside of the file.

References and Rejections2

The Examiner rejects claims 1, 6–9, 12, 16, 21, 22, 24 under 35
U.S.C. § 103 as being obvious over the collective teachings of Huomo (US
2009/0312011 Al; Dec. 17, 2009) and Bernabeu (US 2011/0296521 Al; Dec.
1, 2011). Final Act. 5–10.
The Examiner rejects claims 2, 3, 5, 17, 18, 20 under 35 U.S.C. § 103
as being obvious over the collective teachings of Huomo, Bernabeu, and
Fisher (US 2009/0144161 Al; June 4, 2009). Final Act. 11–12.
The Examiner rejects claims 4 and 19 under 35 U.S.C. § 103 as being
obvious over the collective teachings of Huomo, Bernabeu, and Chivallier
(US 2010/0045425 Al; Feb. 25, 2010). Final Act. 12–13.

2 Throughout this opinion, we refer to the (1) Final Office Action dated Feb.
14, 2019 (“Final Act.”); (2) Supplemental Appeal Brief dated July 31, 2019
(“Appeal Br.”); (3) Examiner’s Answer dated Oct. 22, 2019 (“Ans.”); and
(4) Reply Brief dated Dec. 16, 2019 (“Reply Br.”).
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The Examiner rejects claims 10 and 23 under 35 U.S.C. § 103 as
being obvious over the collective teachings of Huomo, Bernabeu, and
Yeager (US 8,151,345 B1; Apr. 3, 2012). Final Act. 13–14.

PRINCIPLES OF LAW

“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citation omitted).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (citation omitted).
“[The] mere disclosure of alternative designs does not teach away”
and “just because better alternatives exist in the prior art does not mean that
an inferior combination is inapt for obviousness purposes.” In re Mouttet,
686 F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted).
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
37 C.F.R. § 1.131 provides in pertinent part:
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§ 1.131 Affidavit or declaration of prior invention or to
disqualify commonly owned patent or published application as
prior art.
(a) When any claim of an application or a patent under
reexamination is rejected, the applicant or patent owner may
submit an appropriate oath or declaration to establish
invention of the subject matter of the rejected claim prior to
the effective date of the reference or activity on which the
rejection is based. . . . . Prior invention may not be
established under this section if either:
(1) The rejection is based upon a U.S. patent or U.S. patent
application publication of a pending or patented application
naming another inventor which claims interfering subject matter as
defined in § 41.203(a) of this chapter, in which case
an applicant may suggest an interference pursuant to
§41.202(a) of this chapter; or
(2) The rejection is based upon a statutory bar.

(b) The showing of facts for an oath or declaration
under paragraph (a) of this section shall be such, in
character and weight, as to establish reduction to practice
prior to the effective date of the reference, or conception of
the invention prior to the effective date of the reference
coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the
application. Original exhibits of drawings or records, or
photocopies thereof, must accompany and form part of the
affidavit or declaration or their absence must be
satisfactorily explained.
37 C.F.R. § 1.131.
Further, 35 U.S.C. § 120 provides in pertinent part:
An application for patent for an invention disclosed in the
manner provided by section 112(a) . . . in an application
previously filed in the United States . . . which names an
inventor or joint inventor in the previously filed application
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shall have the same effect, as to such invention, as though filed
on the date of the prior application, if filed before the patenting
or abandonment of or termination of proceedings on the first
application or on an application similarly entitled to the benefit
of the filing date of the first application and if it contains or is
amended to contain a specific reference to the earlier filed
application.
35 U.S.C. § 120.

ANALYSIS
Obviousness
On this record, the Examiner did not err in rejecting claim 1.
We have reviewed and considered Appellant’s arguments, but such
arguments are unpersuasive. To the extent consistent with our analysis
below, we adopt the Examiner’s findings and conclusions in (i) the action
from which this appeal is taken and (ii) the Answer.3

I

Appellant contends neither Huomo nor Bernabeu qualifies as prior art,
pointing to applications that are incorporated by reference in the
Specification. See Appeal Br. 9–13; Reply Br. 10. In particular, Appellant
submits affidavits stating such publications predate Huomo and Bernabeu.
See Affidavits dated November 1, 2018. Appellant argues:

3 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).

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Neither Huomo nor Berman individually or in combination
disclose the following limitations:
• “receiving manual user authentication at a handheld
mobile device wherein a non-browser based application
running on the mobile device prompts the user for
authentication, and further wherein authentication is
performed by a remote server;” Even if Bernabeu did
disclose this (which Applicant doesn’t concede),
Applicant disclosed this limitation in US Patent
11/933,821 which was filed on November 14, 2007 in for
example, paragraph 16 BEFORE Application No.:
13/218,879 Bernabeu’s U.S. Patent Appl. Pub. No.
2011/0296521 which was [sic] filed on November 24,
2009. Thus, Bernabeu is not valid since Applicant
disclosed this limitation before Bernabeu.

• “generating a Dynamic Verification Code (DVC) using
the health care secure element software application.[“]
Even hypothetically speaking for the sake of argument,
Bernabeu discloses this (which Applicant doesn’t
concede), Applicant positively recites transmitting
augmented data from the secure element to a POS
terminal in U.S. Patent Publication No. 2007/0156436
(Application No.11/467,441 herein referenced as “436”)
which is incorporated by reference and filed on August
25, 2006, in, for example, paragraph 0045, “It is also
preferable to provide the ability to augment the
information passed via the PayPass protocol to the POS
terminal 150 and thence to the transaction server 170
with additional fields containing the elements of the
tunneling protocol, for subsequent processing by the
transaction server 170, either directly, or through the
management server 180, as described above. BEFORE
Bernabeu’s U.S. Patent Appl. Pub. No. 2011/0296521
which was was [sic] filed on November 24, 2009. Thus,
Bernabeu is not valid since Applicant discloses this
limitation before Bernabeu.

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• “wirelessly receiving a command to unlock the
secure[.]”

Appeal Br. 10–11.
Appellant has not persuaded us of error. We began by addressing
priority claims, as Appellant attempts to antedate prior art references by
citing applications that are incorporated by reference in the Specification.
See Affidavits dated November 1, 2018; Spec. ¶ 27.
Priority claims are governed by statutes. To claim the benefit of an
earlier filing date in the United States, the governing statute, 35 U.S.C. § 120
provides:
An application for patent for an invention disclosed in the
manner provided by section 112(a) . . . in an application
previously filed in the United States . . . which names an
inventor or joint inventor in the previously filed application
shall have the same effect, as to such invention, as though filed
on the date of the prior application, if filed before the patenting
or abandonment of or termination of proceedings on the first
application or on an application similarly entitled to the benefit
of the filing date of the first application and if it contains or is
amended to contain a specific reference to the earlier filed
application.
35 U.S.C. § 120.
the [35 U.S.C. § 120] statute requires that the patent application
“contain a specific reference to the earlier filed application” to
which it purports to claim priority. . . . . For the specific
reference to have effect, the statute provides that the application
must be copending with the first-filed application or a later-
filed application “similarly entitled” to the benefit of the first
application’s filing date.

Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309, 1315 (Fed. Cir.
2018) (citation omitted).
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Section 119(e)(1) recites parallel requirements to claim priority
from an earlier-filed U.S. provisional application. 35 U.S.C.
§ 119(e)(1). That provision similarly states that “[n]o
application shall be entitled to the benefit of an earlier filed
provisional application ... unless an amendment containing the
specific reference to the earlier filed provisional application is
submitted at such time during the pendency of the application
as required by the Director.”
Droplets, 887 F.3d at 1315 (citation omitted).
The PTO has issued a regulation implementing these statutes—
37 C.F.R. § 1.78—which requires that an application contain a
specific reference to each prior-filed application to which the
application seeks to claim priority. Specifically, regulation 1.78
provides that the application claiming the benefit of one or
more prior-filed copending nonprovisional applications must
include “a reference to each such prior-filed application,
identifying it by application number (consisting of the series
code and serial number)” and indicating “the relationship of the
applications (i.e., whether the later-filed application is a
continuation, divisional, or continuation-in-part of the prior-
filed nonprovisional application or international application).”
37 C.F.R. § 1.78(d)(3) (2009).
Droplets, 887 F.3d at 1315.

Consistent with 35 U.S.C. § 120 and 37 C.F.R. § 1.78, the
MPEP provides detailed guidance on how to claim priority
from multiple prior-filed applications. It states that “[t]he
reference to the prior applications must identify all of the prior
applications and indicate the relationship (i.e., continuation,
divisional, or continuation-in-part) between each
nonprovisional application in order to establish copendency
throughout the entire chain of prior applications.” MPEP
§ 201.11 III.C.
Droplets, 887 F.3d at 1315.
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According to the Federal Circuit, “‘[a]lthough § 120 might appear to
be a technical provision,’ courts have long-recognized that ‘it embodies an
important public policy,’ and thus have required strict adherence to its
requirements.” Droplets, 887 F.3d at 1316 (citation omitted).
[T]he “specific reference” requirement in § 120 “mandates each
[intermediate] application in the chain of priority to refer to the
prior applications.” . . . . In Medtronic, we held that, because
two intermediate applications failed to specifically reference the
earlier-filed applications in the priority chain, the later-filed,
asserted patent was not entitled to the filing date of the first-
filed application.
Droplets, 887 F.3d at 1317.
In this case, Appellant’s affidavits cite three applications for
antedating Huomo and Bernabeu:
a. US Patent Application Publication No. 2007/0156436
(Application No. 11/467,441) which was filed on August 26,
2006 and claims priority to US provisional application filed
60/766,171 filed on December 31, 2005 and provisional
application No. 60/766, 172 filed on December 31, 2005.

b. US Patent Publication No. 2008/0052192 (Application No.
11/933,351) which is incorporated by reference and filed on
October 31, 2007 claims priority to US Patent Application
Publication No. 2007/0156436 (Application No.
11/467,441) which was filed on August 26, 2006 and claims
priority to US provisional application filed 60/766,171 filed
on December 31, 2005 and provisional application No.
60/766,172 filed on December 31, 2005 per the declaration
filed on October 31, 2007 listed in the Appendix.

c. US Patent Application Publication No. [sic] (Application
11,939, 821) which is incorporated by reference and filed
November 14, 2007.

Affidavits dated November 1, 2018 (emphases added). However, those
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applications are merely incorporated by reference in the Specification:
An NFC enabled device is one that includes a secure element
and enables contactless transactions which have been described
in more detail in previous patents including . . . U.S. Patent
Application No. 11/939,821, entitled “Method and System for
Securing Transactions Made Through a Mobile Communication
Device” filed November 14, 2007, and U.S. Patent Application
No. 11/933,351 entitled “Method and System for Purchasing
Event Tickets Using a Mobile Communication Device”, filed
October 31, 2007, . . all of which are a continuation-in-part of
U.S. Patent Application No. 11/467,441, entitled “Method and
Apparatus for Completing a Transaction Using a Wireless
Mobile Communication Channel and Another Communication
Channel,” filed August 25, 2006, which claims priority to U.S.
Provisional Patent Application Nos. 60/766,171 and
60/766,172, both of which were filed December 31, 2005. All
of the above-referenced patent applications are incorporated by
reference herein in their entirety.

Spec. ¶ 27 (emphasis added).
As a result, the applications cited in the affidavits do not meet the
above specific requirements for claiming priority. See Droplets, 887 F.3d at
1318 (holding “Incorporation by Reference Cannot Satisfy the ‘Specific
Reference’ Requirement of § 120.”). According to the Federal Circuit,
nothing in regulation 1.57[, which deals with incorporation by
reference,] authorizes making a priority claim under § 120
through an incorporated reference. Indeed, there is no reference
to § 120 in 37 C.F.R. § 1.57.6 Instead, the focus of the
incorporation by reference procedure set forth in § 1.57 is to
help a patent applicant satisfy the requirements of 35 U.S.C. §
112 under 37 C.F.R. § 1.57(c), and to provide background for
the invention or to illustrate the state of the art under 37 C.F.R.
§ 1.57(d).
Droplets, 887 F.3d at 1319.
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Therefore, Appellant cannot antedate Huomo and Bernabeu by citing
applications that are merely incorporated by reference, which is insufficient
for claiming priority under 35 U.S.C. § 120.
With respect to Appellant’s use of affidavits under 37 C.F.R. § 1.131
to antedate Huomo and Bernabeu, because the cited applications do not
satisfy the requirement of 35 U.S.C. §120 (discussed above), Appellant has
not shown such applications constitute constructive reduction to practice, as
required by 37 C.F.R. § 1.131(b). Further, as pointed out by the Examiner,
Appellant has not presented the requisite evidence of due diligence, as
required by 37 C.F.R. § 1.131(b). See Final Act. 3. As a result, Appellant’s
affidavits under 37 C.F.R. § 1.131(a) are unavailing.
In any event, Appellant’s attempt to use an affidavit under 37 C.F.R.
§ 1.131 to antedate Huomo fails. Because Huomo constitutes prior art under
pre-AIA 35 U.S.C. § 102(b), a rejection based on Huomo constitutes a
rejection based on a statutory bar. And Appellant’s affidavit under 37
C.F.R. § 1.131 is ineffective against a rejection based on a statutory bar. See
37 C.F.R. § 1.131(a)(2).
Because Appellant cannot use the three applications cited in the
affidavits to disqualify Huomo and Bernabeu as prior art, and Appellant
does not cite any other reason for disqualifying the two references,
Appellant has not shown Huomo and Bernabeu do not constitute prior art to
the invention.

II

Appellant argues the cited references do not collectively teach
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receiving manual user authentication at a handheld
mobile device wherein a non-browser based application running
on the mobile device prompts the user for authentication, and
further wherein authentication is performed by a remote server,

as recited in claim 1. See Appeal Br. 13–14; Reply Br. 3–5.
First, Appellant argues:
In response to the Examiner’s assertion, “at the time of the
invention/filing to provide an application which prompts the
user for manual user authentication and, and further wherein
authentication is performed by a remote server (Bernabeu
discloses user authentication manually entered by the user, see
paragraph 108-110, which is authenticated remotely, see also
the identity authentication via remote server of paragraphs 114-
115.) in order to provide additional security capabilities of
electronic communication devices.” (See page 8 of the FOA),
Applicant respectively disagrees.

Bernabeu positively recites that the keys is stored in the card 14
(Examiner alleges is “secure element”) and released by the card
14 (Examiner alleges is “secure element”) paragraph 114 relied
upon by the Examiner.

Stated another way, Bernabeu does not teach or suggest that the
user is not prompted to provide the keys manual user
authentication much less by a non-browser based application
running on the mobile.

Appeal Br. 13–14 (emphasis omitted). In the Reply Brief, Appellant
further argues:
[W]hile Bernabeu teaches that the user enters personal identity
information and an associated user authentication key
(Examiner alleges is “manual user authentication”) in paragraph
107 relied upon by the Examiner, the authentication
information is entered into the Self-Issuer application
running on the card (Examiner alleges is “secure element’’)
not the mobile device as Bernabeau discloses in paragraph 74
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shown below.
. . . .
Bernabeu positively recite that the card Examiner alleges is
“secure element”) on the mobile device is used for
authentication not a server in paragraph 107-109 shown below.

Reply Br. 3–4.
Appellant has not persuaded us of error, as Appellant’s arguments are
not directed to the Examiner’s specific findings. The Examiner finds:
Huomo is utilized to disclose use of a non-browser based
application running on a mobile device. Bernabeu discloses
user authentication manually entered by the user, see paragraph
108-110, which is authenticated remotely, see also the identity
authentication via remote server of paragraphs 114-115.
Ans. 8.
In particular, the Examiner cites Bernabeu’s paragraphs 114–115 for
teaching “authentication is performed by a remote server.” Final Act. 8;
Ans. 8; Bernabeu ¶¶ 114–115 (“One or several keys are to be released by the
card 14, so as to authorize the card user before an external entity, such as a
remote server, like the bank server, to benefit from the service(s) that it
proposes.”) (emphasis added). Appellant’s assertion that “Bernabeu
positively recites that the keys is stored in the card 14 . . . and released by
the card 14 . . . paragraph 114 relied upon by the Examiner” (Appeal Br. 13–
14 (emphasis omitted)) does not address the issue of whether “authentication
is performed by a remote server,” as required by claim 1.
Appellant also argues other paragraphs (such as paragraphs 74, 107–
110) (Reply Br. 3–4), which are not the paragraphs cited by the Examiner
for teaching the claimed “authentication is performed by a remote server.”
As a result, such arguments are unpersuasive because they are not directed to
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the Examiner’s specific findings. In any event, even the paragraphs cited by
Appellant—and not cited by the Examiner—support the Examiner’s
findings. See, e.g., Bernabeu ¶ 110 (“[s]uch an on-card user identity can be
certified by an external entity, as an off-card entity”).
Second, Appellant argues:
Bernabeu”s design is different from an engineering, security,
reliability, and cost perspective. If the card (Examiner alleges is
“secure element”) is lost or stolen, its not as secure since the
authentication information is stored on the card. Without the
card (Examiner alleges is “secure element”), the user cannot
enter personal identity information using the self -issuer
application and not authenticate. Thus, its less reliable. Also,
the card makes it more costly.
Reply Br. 4.
The above arguments are unpersuasive because they are not
commensurate with the scope of disputed limitations: The arguments focus
on features that are not claimed in the disputed limitations.
Third, Appellant argues:
It is respectively submitted that the Examiner appears to
contradict himself. First the Examiner stated, “Huomo fails to
explicitly disclose an application which prompts the user for
manual user authentication and, and further wherein
authentication is performed by a remote server.” (see page 7 of
the FOA dated 2/14/19). In contrast, the Examiner states in the
EA, “Huomo is utilized to disclose use of a non-browser based
application running on a mobile device.”.”(see page 6 of the
EA).

Reply Br. 3.
We do not see contradiction of the Examiner’s above findings. In
particular, the Examiner’s first finding “Huomo fails to explicitly disclose an
application which prompts the user for manual user authentication and, and
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further wherein authentication is performed by a remote server” (Final Act.
7 (emphasis omitted)) does not contradict with the Examiner’s second
finding “Huomo is utilized to disclose use of a non-browser based
application running on a mobile device” (Ans. 8). As a result, we disagree
with Appellant.
Fourth, Appellant argues the proposed combination would require
impermissible redesign of Huomo. See Appeal Br. 14; Reply Br. 4–5. In
particular, Appellant argues:
the combination of Huomo and Bernabeu would require an
impermissible redesign of Huomo who discloses that the
reader (Examiner alleges is “POP’) not the server
authenticates the device400 (Examiner alleges is “mobile
device’) not the user in paragraph 113, 85, and Figure 6 relied
upon by the Examiner. Huoumo’s design is different from an
engineering, security, cost, and scalability perspective. For
example, since each device is authenticated it is more costly if
the user has multiple devices.
Appeal Br. 14.
Houmo positively recites the use of Text Messaging which is
also referred to as SMS for those skilled in the art in paragraph
104 shown below.

. . .
Per MPEP 2143.01 (V),”If the proposed modification or
combination of the prior art would change the principle of
operation of the prior art invention being modified, then the
teachings of the references are not sufficient to render the
claims prima facie obvious”. In re Ratti, 270 F.2d 810, 123
USPQ 349 (CCPA 1959) MPEP 2143.0l(v). For example, the
combination Huomo and Bernabeu would require an
impermissible redesign and change the principal operation of
Huomo to not accept user authentication via text message
application running on the mobile device but using an
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application running on a secure element.

Per MPEP 2143.01 (VI),” If a proposed modification would
render the prior art invention being modified unsatisfactory for
its intended purpose, then there is no suggestion or motivation
to make the proposed modification. In re Gordon, 733 F.2d 900,
221 USPQ 1125 (Fed. Cir. 1984).” For example, the
combination Huomo and Bernabeu would require an
impermissible redesign Huomo to not accept user
authentication via text message application running on the
mobile device, but through a secure element.
Reply Br. 4–5.
An argument that a method is rendered “inoperable for its intended
purpose” is a “teach[ing] away” argument. In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (The court concluded that in effect, “French teaches away
from the board’s proposed modification” because “if the French apparatus
were turned upside down, it would be rendered inoperable for its intended
purpose”). Appellant’s teaching away argument is unpersuasive because
Appellant fails to provide adequate analysis under the case law: Appellant
does not cite any teaching that criticizes or discourages the proposed
combination. In short, Appellant fails to assert—let alone show—one
skilled in the art “would be discouraged from following the path set out in
the reference, or would be led in a direction divergent from the path that was
taken by the applicant.” Kahn, 441 F.3d at 990 (citation omitted).
Further, Appellant has not provided adequate analysis about Huomo’s
principle of operation, as Appellant does not provide sufficient objective
evidence to support the arguments. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (“argument [is] not the kind of factual evidence that is
required to rebut a prima facie case of obviousness”); Meitzner v. Mindick,
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549 F.2d 775, 782 (CCPA 1977) (“Argument . . . cannot take the place of
evidence lacking in the record.”). Nor has Appellant cited any evidence to
show the proposed combination would indeed change Huomo’s principle of
operation.
Finally, we note the Examiner cites Huomo and Bernabeu for
rejecting claim 1 under 35 U.S.C. § 103, and citing multiple references to
reject claims is very common and permissible in the course of patent
prosecution. In this case, the Examiner’s findings and conclusion are
reasonable because the skilled artisan would “be able to fit the teachings of
multiple patents together like pieces of a puzzle,” as the skilled artisan is “a
person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420–21 (2007). Appellant does not present adequate
evidence that the resulting arrangements would have been “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19).

III

Appellant argues:
Independent claim 1 recites, “generating a Dynamic
Verification Code (DVC) using the health care secure element
software application”

The Examiner relies on paragraph 111 of Huomo for this
disclosure (see page 6 of the Final Office). However, while
Humo discloses generating a MAC, it is verified by the reader
(Examiner alleges is “POPI”) not the server.

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In contrast, Applicant positively recites that the DVC is
authenticated by the management server.

As stated in the Specification, support , can be found, for
example, in [various paragraphs.]

. . . .

Thus, neither reference teaches or suggests, however,
that the same channel is used to send an “identification code
associated with the user” to a server and to receive a
“digital artifact” by the mobile device.

Appeal Br. 14–16; see also Reply Br. 6–8.
We disagree. It is well established that during examination, claims
are given their broadest reasonable interpretation consistent with the
specification, but without importing limitations from the specification. See
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted); SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004).
Appellant’s arguments are unpersuasive because they are not
commensurate with the scope of the disputed limitation: Appellant has not
shown the disputed limitation “generating a Dynamic Verification Code
(DVC) using the health care secure element software application” (claim 1)
requires the argued “DVC is authenticated by the management server”
(Appeal Br. 14). We note claim 1 recites “server” only once, and we have
already discussed the limitation “authentication is performed by a remote
server” in Section II above. Further, Appellant has not shown claim 1
requires the argued “the same channel is used to send an ‘identification code
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associated with the user’ to a server and to receive a ‘digital artifact’ by the
mobile device” (Appeal Br. 16).

IV

Appellant argues:
Independent claim 1 recites, “wirelessly receiving a
command to unlock the secure element;”

The Examiner relies on Fig. 11, S26 and S27, and
paragraphs 115-116 of Huomo. (See page 6 of the. Final Office
Action).

However, Huomo positively recites that the reader
(Examiner alleges is “POP’’ decrypts the command in
paragraph 115 relied upon by the Examiner.

In contrast, Applicant teaches that either the server or
the mobile application unlocks as shown below:

Dependent clam 6 & 21 which recite in part, “wherein
the secure element is unlocked by the: remote server.

Dependent claim 7 & 22, which recite in part, wherein
the secure element is unlocked by the mobile wallet application
residing on the mobile device, wherein the mobile wallet
application decrypts a file downloaded by a remote server and
retrieves a secure element key inside of the file.

Thus neither reference teaches or suggests, however,
“wirelessly receiving a command to unlock the secure
element”

Appeal Br. 16–17; see also Reply Br. 8.
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Appellant’s arguments are unpersuasive because they are not
commensurate with the scope of claim 1. Claim 1 recites “unlock” once:
“wirelessly receiving a command to unlock the secure element,” which does
not require any specific manner to unlock the secure element.
Even if we treat Appellant’s arguments as being directed to dependent
claims 6, 7, 21, and 22 (referenced above), such arguments are still
unpersuasive because they are not directed to the Examiner’s specific
findings. As pointed out by the Examiner, the Examiner cites Bernabeu for
teaching the argued features of the dependent claims. Therefore, Huomo
does not need to teach such features separately. See Ans. 11; Final Act.
9–10.
Further, Appellant’s argument that
[t]he Examiner positively states Huomo discloses,
“wirelessly receives a command to unlock the secure element
(Reader/POP device validates application platform, which
unlocks the secure element to provide secure element data to
reader, see Fig. 11, S26 and S27, and paragraphs 115-116);”
(see page7 of the FOA).

Thus, the combination of Huomo and Bernabeu would
require an impermissible redesign of Huomo for the reader
not to unlock the secure element

(Appeal Br. 8), is unpersuasive. For similar reasons discussed above in
Section II, Appellant does not persuasively explain why the proposed
combination requires impermissible redesign of Huomo.

V
In the Reply Brief and for the first time, Appellant belatedly raises a
number of new arguments. First, Appellant argues:
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In Ex parte Cooper, Appeal No. 2018-005477 USSN
13/934256, decided October 7, 2019 Ex parte Cooper was an
appeal of a final rejection of claims directed to a method of
making a vacuum insulating glass window unit, one step of the
method being focusing near infrared inclusive radiation via a
parabolic mirror, onto a frit so as to partially melt it. The
examiner applied a piece of prior art that disclosed a curved
reflector that was not identified as being parabolic. The Board
held: “Here we are persuaded by Appellant’s argument that not
all curves are parabolas or parabolic. Rather, only certain
curves appear to meet the geometric requirements of this art-
recognized term in its ordinary usage and that understanding is
consistent with how the term is used in the present disclosure.
Because the Examiner fails to adequately explain how [the
prior art’s] curved element meets such geometric
requirements, or how modifying [the prior art’s] curved
element to be parabolic would have been obvious, the
obviousness conclusion is not/actually supported and cannot
be sustained.” Citing In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not ... resort
to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in the cited references.”)

Similarly, the Examiner fails to explain how Huomo,
further in view of Bernabeu would be obvious for teaching or
suggesting independent claims which recite in part,

“receiving manual user authentication at a handheld
mobile device wherein a non-browser based application running
on the mobile device prompts the user for authentication, and
further wherein authentication is performed by a remote server;

maintaining in a memory a health care secure element
software application and user Identification(ID), wherein the
memory is included in a secure element coupled to the hand-
held mobile device;

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executing, by a processor of the secure element, a health
care secure element software application in response to an NFC
inductive signal by a Point-Of-Presence (POP) device,:
wirelessly receiving at the secure element transaction
data from the point-of presence device;

generating a Dynamic Verification Code (DVC) using
the health care secure element software application transmitting
transaction data, including the user ID and the DVC-using the
health care secure element software application, through a
second communication channel to the point-of presence device,
the second communication channel being different from a first
communication channel through which the hand-held mobile
device communicates voice and data;
wirelessly receiving a command to unlock the secure
element; and

receiving the medical digital artifacts at the secure
element from the POP device which is subsequently displayed
on the mobile device”

Thus, it is respectively submitted that the Affidavits filed
on 1 November 2018 are valid.
Reply Br. 8–10.
Appellant’s arguments are untimely, and Appellant has not
demonstrated any “good cause” for the belated presentation. See 37 C.F.R.
§ 41.41(b)(2). Raising the arguments at such a late stage is unfair, as the
Examiner did not have an opportunity to respond to such late arguments in
the Answer. Despite the late timing, in order to ensure abundance of
fairness, we address Appellant’s arguments substantively and find such
arguments are unpersuasive for the reasons discussed below.
Appellant’s general arguments are unpersuasive. In particular,
Appellant lists every limitation of claim 1, but does not explain—let alone
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show—what specific limitations (other than those discussed above in the
previous sections) are missing from the Examiner’s findings and
conclusions. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (holding that “the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art”).
Further, Appellant cites Ex parte Cooper, Appeal No. 2018-005477
(PTAB Oct. 7, 2019) (Reply Br. 8–9), but that case is not precedential, and
Appellant has not adequately explained why that case is applicable here. In
addition, Appellant’s conclusion “[t]hus, it is respectively submitted that the
Affidavits filed on 1 November 2018 are valid” (Reply Br. 10 (emphasis
omitted)) is unhelpful, as Appellant does not explain how Cooper and
Appellant’s general arguments lead to that conclusion.
Second, Appellant argues:
Huomo positively recites that an internally stored algorithm
generates the MAC (Examiner alleges is “dynamic
verification code’’) not the application platform identifier
(Examiner alleges is “health care secure element software
application’’) in paragraph 111 relied upon by the Examiner.

In contrast, Independent claims recite in part, “executing,
by a processor of the secure element, a health care secure
element software application in response to an NFC inductive
signal by a Point-Of-Presence (POP) device,:”

Reply Br. 6.
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Appellant’s arguments are untimely, and Appellant has not
demonstrated any “good cause” for the belated presentation. See 37 C.F.R.
§ 41.41(b)(2). Raising the arguments at such a late stage is unfair, as the
Examiner did not have an opportunity to respond to such late arguments in
the Answer. Despite the late timing, in order to ensure abundance of
fairness, we address Appellant’s arguments substantively and find such
arguments are unpersuasive for the reasons discussed below.
Appellant’s arguments are unpersuasive, because Appellant does not
adequately explain why the Examiner erred with respect to the executing
limitation. Further, Appellant’s arguments are unpersuasive because they
are not directed to the Examiner’s specific findings. The Examiner cites
Huomo’s Figures 10 and 11, and paragraphs 88 and 112 for teaching the
executing limitation. See Final Act. 6. Appellant does not critique the
Huomo portions cited by the Examiner, and does not explain why the
Examiner’s findings based on such cited portions are incorrect. See In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court [or this Board] to examine the claims in greater detail
than argued by an appellant, looking for [patentable] distinctions over the
prior art.”).
Third, Appellant argues:
Huomo positively recites that application platform identifier
(Examiner alleges is “health care secure element software
application”) is executed after the MAC (Examiner alleges is
“dynamic verification code”) is transmitted to the reader in
paragraph 111 relied upon by the Examiner. Stated another
way, Huomo does not teach or suggest that the application
platform is executed begore transmitting the MAC (Examiner
alleges is “dynamic verification code”) much less used to
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transmit the MAC (Examiner alleges is “dynamic verification
code”).

In contrast, Independent claims recite in part,

“executing, by a processor of the secure element, a
health care secure element software application in response to
an NFC inductive signal by a Point-Of-Presence (POP)
device,:

wirelessly receiving at the secure element transaction
data from the point-of
presence device;

generating a Dynamic Verification Code (DVC) using
the health care secure
element software application

transmitting transaction data, including the user ID and
the DVC-using the health care secure element software
application, through a second communication channel to the
point-of-presence device, the second communication channel
being different from a first communication channel through
which the hand-held mobile device communicates voice and
data;

Per MPEP 2144.04 VC), “selection of any order of
performing process steps is prima facie obvious in the absence
of new or unexpected results”. Since, the order of transmitting
the transaction data is important and generates new results
depending on when the user transmitting the transaction data, it
is respectively submitted that the claimed embodiments are not
obvious .. For example, if the transaction data is sent BEFORE
the secure element is executed and without using the secure
element applications , the result is that the data is transmitted
without the uses of an application to any device and an
authorized device may receive the transaction data. Thus,
making it less secure and reliable.

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Reply Br. 6–7.
Appellant’s arguments are untimely, and Appellant has not
demonstrated any “good cause” for the belated presentation. See 37 C.F.R.
§ 41.41(b)(2). Raising the arguments at such a late stage is unfair, as the
Examiner did not have an opportunity to respond to such late arguments in
the Answer. Despite the late timing, in order to ensure abundance of
fairness, we address Appellant’s arguments substantively and find such
arguments are unpersuasive for the reasons discussed below.
Appellant’s arguments are unpersuasive because they are not
commensurate with the scope of claim 1, as Appellant has not shown claim
1 explicitly or implicitly specifies an order for carrying out the claim
limitations. See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338,
1345 (Fed. Cir. 2008) (“[A]lthough a method claim necessarily recites the
steps of the method in a particular order, as a general rule the claim is not
limited to performance of the steps in the order recited, unless the claim
explicitly or implicitly requires a specific order.”) (citing Interactive Gift
Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001)).
Further, “[t]he specification or prosecution history may also require a
narrower, order-specific construction of a method claim in some cases,” but
Appellant has not shown that kind of “narrower, order-specific construction”
is applicable here. See Baldwin Graphic, 512 F.3d at 1345. As a result,
Appellant has not persuaded us claim 1 requires the specific order argued by
Appellant.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 1.
For similar reasons, we sustain the Examiner’s rejection of claims
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2–10, 12, and 16–24, as Appellant does not advance separate substantive
arguments about those claims. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1–10, 12, and 16–
24 under 35 U.S.C. § 103.
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 6–9, 12,
16, 21, 22,
24
103(a) Huomo, Bernabeu 1, 6–9, 12,
16, 21, 22,
24

2, 3, 5, 17,
18, 20
103(a) Huomo, Bernabeu,
Fisher
2, 3, 5, 17,
18, 20

4, 19 103(a) Huomo, Bernabeu,
Chivallier
4, 19
10, 23 103(a) Huomo, Bernabeu,
Yeager
10, 23
Overall
Outcome
1–10, 12,
16–24

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED