Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Jan 21, 2022

2021002690 (P.T.A.B. Jan. 21, 2022)

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. 14/937,352 11/10/2015 Yang-Soo LEE 0202-1164 7515 68103 7590 01/21/2022 Jefferson IP Law, LLP 1130 Connecticut Ave., NW, Suite 420 Washington, DC 20036 EXAMINER MILLER, JAMES H ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 01/21/2022 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): usdocketing@jeffersonip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YANG-SOO LEE, MOON-SU CHANG, DA-SOM LEE, and DONG-HO JANG ____________ Appeal 2021-002690 Application 14/937,352 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-6, 8, 9, 12-15, 17, and 20-34. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2012). Appellant identifies the real party in interest as Samsung Electronics Co., Ltd. (Appeal Br. 2). Appeal 2021-002690 Application 14/937,352 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to “an apparatus and a method for transmitting information using at least one communication module for payment” (Spec., para. 2). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. An electronic device comprising: a first communication circuitry configured to transmit first authentication information corresponding to a user, to a point of sale (POS) device; a second communication circuitry configured to transmit second authentication information corresponding to the user, to the POS device; and one or more processors, wherein the one or more processors are configured to: control the first communication circuitry to transmit first authentication information to the POS device for a given transaction, while the first communication circuitry transmits the first authentication information to the POS device, detect that the electronic device is within a distance from the POS device, and in response to the detecting, control the second communication circuitry to transmit second authentication information to the POS device for the given transaction. Appeal 2021-002690 Application 14/937,352 3 THE REJECTION The following rejection is before us for review2: Claims 1-6, 8, 9, 12-15, 17, and 20-34 are rejected under 35 U.S.C. § 103 as unpatentable over Huang (US 2015/0371234 A1; Dec. 24, 2015) and Wall (US 2012/0143703 A1; June 7, 2012). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence3. ANALYSIS The Appellant argues that the rejection of claim 1 is improper because the rejection fails to disclose argued recited claim limitations (Appeal Br. 11-13, Reply Br. 3, 4). In contrast, the Examiner has determined that the rejection of record is proper (Final Act. 8-11, Ans. 7-11). We agree with the Appellant. Claim 1 requires in part the device: control the first communication circuitry to transmit first authentication information to the POS device for a given transaction, while the first communication circuitry transmits the first authentication information to the POS device, detect that the electronic device is within a distance from the POS device, and 2 The Answer indicates that the rejections made under 35 U.S.C. § 112(a) and 35 U.S.C. § 112(b) have been withdrawn (Ans. 3, 4). 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2021-002690 Application 14/937,352 4 in response to the detecting, control the second communication circuitry to transmit second authentication information to the POS device for the given transaction. (Claim 1). The rejection of record cites to Huang at Fig. 1 as disclosing first communication circuitry including a communication device (104) having a magnetic stripe reader (102) which communicates with a point of sale (POS) terminal (120) (Final Act. 8, 9). The rejection also cites to Huang as disclosing a second communication circuitry to transmit “second authentication information corresponding to the user to the POS device” by the disclosure at paragraph 3 of that reference. However, paragraph 3 of the Huang reference is a background section relating to prior art, and there is no specific disclosure of the “first communication circuitry” of Huang at Fig. 1 being incorporated with the background section prior art of paragraph 3. Thus, the rejection fails to specifically disclose the “second communication circuity” and the functions it performs in combination with the disclosed “first communication circuitry.” The rejection of record also cites to Wall at paragraphs 33-36 as disclosing while the first authentication information is transmitting “detect[ing] that the electronic device is within a distance from the POS device.” Although Wall at paragraphs 33-36 does disclose continuous polling for a contactless device near a device reader, it does not specifically disclose or suggest that this is done “while the first communication circuitry transmits the first authentication information to the POS device” in the reference or cited combination. The Final Action at page 10 also cites to Wall at paragraphs 42-44 but these portions also fail to disclose this cited claim limitation as well. Appeal 2021-002690 Application 14/937,352 5 Further, even taking the prior art to disclose the cited claim elements, here the rejection lacks articulated reasoning with rational underpinnings to suggest modifying the Huang reference with Wall to include that detecting the electronic device is within a distance from the POS device while the first authentication information is transmitted, and then in response to the detecting, transmitting the second authentication information in the manner claimed without impermissible hindsight. For these above reasons, the rejection of claim 1 and its dependent claims is not sustained. The remaining independent claims 12, 17, 23, are drawn to similar claimed subject matter as claim 1, and the rejection of these claims and their dependent claims is not sustained for the same reasons given above. CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting claims 1-6, 8, 9, 12-15, 17, and 20-34 under 35 U.S.C. § 103 as unpatentable over Huang and Wall. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6, 8, 9, 12-15, 17, 20-34 103 Huang, Wall 1-6, 8, 9, 12-15, 17, 20-34 REVERSED