Square, Inc.

Patent Trials and Appeals Board

Jul 8, 2021

2021003676 (P.T.A.B. Jul. 8, 2021)

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.
15/339,744 10/31/2016 Jesse Dorogusker S156-0147US2C1 4120
126350 7590 07/08/2021
Lee & Hayes, P.C./Square
601 West Riverside Avenue
Suite 1400
Spokane, WA 99201
EXAMINER
MARTINEZ-HERNANDE, EDGAR R
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/08/2021 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JESSE DOROGUSKER
____________

Appeal 2021-003676
Application 15/339,744
Technology Center 3600
____________

Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 2–4 and 22–28. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed December 16, 2020) and Reply Brief (“Reply Br., filed May 21, 2021),
and the Examiner’s Answer (“Ans.,” mailed March 25, 2021) and Final
Office Action (“Final Act.,” mailed July 24, 2020). Appellant identifies
Square, Inc. of San Francisco, California as the real party in interest (Appeal
Br. 3).
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CLAIMED INVENTION
The Specification states, “[s]ome implementations . . . include
methods and systems that enable customers to register biometric
characteristics as biometric payment instruments, and subsequently allow the
registered biometric payment instrument to be used towards a payment
transaction between a customer and a merchant” (Spec. ¶ 13).
Claims 2 and 26 are the independent claims on appeal. Claim 2,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
2. A method for processing a transaction, the method
comprising:
[(a)] receiving, by a merchant device associated with a
first user, information regarding the transaction;
[(b)] receiving by a biometric sensor communicatively
coupled to the merchant device, biometric data of a second user;
[(c)] generating a biometric signature based at least in
part on the biometric data;
[(d)] sending, by the merchant device, the information
and the biometric signature to a customer device associated with
the second user;
[(e)] determining, by an application residing on the
customer device, a similarity between the biometric signature
and a registered biometric signature stored in association with the
customer device, the similarity based at least in part on a
comparison of the biometric signature with the registered
biometric signature;
[(f)] determining, based at least in part on the similarity,
an account associated with the registered biometric signature;
[(g)] generating, by the application and based at least in
part on the similarity, a request for approval of the transaction
utilizing the account;
[(h)] sending, by the application, the request to a payment
processing system; and
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[(i)] receiving, at the customer device and in response to
the request, a transaction approval involving the account to settle
the transaction.
REJECTIONS
Claims 2, 3, 22, and 25–27 are rejected under 35 U.S.C. § 103 as
unpatentable over Sobel et al. (US 2015/0088755 A1, published Mar. 26,
2015) (“Sobel”), Donaldson (US 2015/0317638 A1, published Nov. 5,
2015), and Scully-Power et al. (US 2016/0217279 A1, published July 28,
2016) (“Scully-Power”).
Claims 4, 24, and 28 are rejected under 35 U.S.C. § 103 as
unpatentable over Sobel, Donaldson, Scully-Power, and Sprecher
(US 2016/0048821 A1, published Feb. 18, 2016).
Claim 23 is rejected under 35 U.S.C. § 103 as unpatentable over
Sobel, Donaldson, Scully-Power, and Guo et al. (US 8,769,556 B2, issued
July 1, 2014) (“Guo”).
ANALYSIS
Independent Claim 2 and Dependent Claim 3
Appellant argues that the Examiner erred in rejecting claim 2 under
35 U.S.C. § 103 because Sobel, on which the Examiner relies, does not
disclose or suggest “generating, by the application [residing on the customer
device] and based at least in part on the similarity, a request for approval of
the transaction utilizing the account”; “sending, by the application, the
request to a payment processing system”; and “receiving, at the customer
device and in response to the request, a transaction approval involving the
account to settle the transaction,” i.e., steps (g), (h), and (i), as recited in
claim 2 (Appeal Br. 9). Appellant maintains that although “Sobel describes
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approval-based interactions between customer devices and merchant
devices,” Sobel does not disclose or suggest “a customer device generating
requests for transaction approval from a payment processing system (instead
of a merchant device) and the customer device receiving that approval to
authorize the customer device to finish a transaction that was started on a
merchant device” (id.).
We are not persuaded by Appellant’s argument. Instead, we agree
with the Examiner that Sobel discloses the argued limitations, under a broad
but reasonable interpretation (Final Act. 5–6).
Sobel is titled “SYSTEMS, METHODS, AND DEVICES FOR
IMPROVED TRANSACTIONS AT A POINT OF SALE,” and discloses an
example procedure, with reference to Figure 10, for conducting a point of
sale (“PoS”) transaction. In accordance with the procedure, a PoS terminal
scans product identification information corresponding to a product to be
purchased by a consumer, and displays a currency value associated with the
product on a graphical user interface (Sobel ¶ 65). The PoS terminal also
receives biometric data from the consumer (e.g., retina, fingerprint, vein
pattern, facial recognition, or other biometric measurement) and determines
an encryption key based on the biometric data (id.). The PoS terminal
transmits the encryption key to a mobile device associated with the
consumer, which causes the mobile device to decrypt a consumer key (e.g., a
key pair, including a private key and a public key) and transmit an indication
of a successful decryption to the PoS terminal (id.). The PoS terminal, on
receiving the indication of the successful decryption (e.g., a payment option
password), forwards a request (including the payment option password) to a
server (server 210 in Figure 5B), which causes the server to transmit
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consumer account information, i.e., one or more payment tokens that
correspond to methods of payment, to the PoS terminal (id. ¶ 66). The PoS
terminal displays the payment tokens to the consumer and, responsive to
receipt of the consumer’s selection of at least one of the payment tokens,
transmits a digital receipt to the consumer’s mobile device to cause the
mobile device to sign the receipt based on the decrypted consumer key (id.).
Sobel discloses that the mobile device transmits the signed digital
receipt (which the Examiner equates to the “request for approval”) to the
PoS terminal, which, in turn, forwards the signed digital receipt to
server 210 (Sobel ¶ 55). The server extracts the payment option token from
the digital receipt and sends a payment command to a payment
gateway/server (payment gateway 212 in Figure 5B), which communicates
with other payment processing servers and bank servers as appropriate to
approve the transfer of funds (id. ¶ 56). Sobel describes that “[w]hen this
communication is complete, the payment gateway . . . returns a status
message to server 210 indicating approval or disapproval” and that “[t]he
status message is subsequently displayed to the user,” e.g., at the
PoS terminal, the mobile device, in an email sent to the user, etc. (id.).
We agree with the Examiner that Sobel, thus, discloses that the mobile
device generates a request for approval of the transaction (i.e., a signed
digital receipt); sends the request (i.e., the signed digital receipt) to a
payment processing system (i.e., to the payment gateway, using the PoS
terminal as the means of communication between the mobile device and the
payment gateway); and receives a transaction approval at the mobile device
(i.e., a status message that Sobel discloses is displayed, e.g., to the user at the
mobile device) in response to the request (Sobel ¶ 56). As such, we agree
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with the Examiner that Sobel discloses the argued limitations under a broad,
but reasonable, interpretation (Final Act. 5–6; see also Ans. 7–9).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 2 under 35 U.S.C. § 103. For the same reasons, we also sustain the
rejection of dependent claim 3, which is not argued separately except based
on its dependence from independent claim 2 (Appeal Br. 13).
Dependent Claim 22
Claims 22 depends from claim 2, and recites that the method of
claim 2 further comprises:
determining, by the merchant device, that the biometric
data corresponds to a fingerprint; and
selecting the account from multiple accounts based at least
in part on determining that the biometric data corresponds to the
fingerprint
(Appeal Br. 19 (Claims Appendix)).
Appellant points to Figure 1 and paragraph 48 of the Specification in
describing the claimed subject matter (Appeal Br. 6–7). There, the
Specification discloses that a customer’s biometric characteristics may be
used as payment instruments to pay for any payment transaction; “[f]or
example, the fingerprint may correspond to a credit account of the customer
while the iris scan may correspond to a debit account” (Spec. ¶ 48). A
person of ordinary skill in the art would, thus, reasonably understand, from
the Specification (including the claim language), that the account being
selected in claim 22, from among the multiple accounts, is the account to
which the fingerprint corresponds.
Appellant argues, and we agree, that the rejection of claim 22 cannot
be sustained because although Sobel describes the ability to receive a user’s
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fingerprint for biometric analysis (Appeal Br. 11 (citing Sobel ¶¶ 59, 61)),
“nowhere in Sobel does it describe selecting an account from multiple
accounts based on determining that the biometric data correspond[ ] to a
fingerprint as opposed to another type of biometric input” (id. at 11–12).
Responding to Appellant’s argument, the Examiner observes that
“[c]laim 22 clearly recites the merchant device receiving the biometric data
that correspond[ ] to a fingerprint,” and notes that “Sobel teaches a
PoS terminal that can receive any biometric input, including the fingerprint
scanner to receive exclusively fingerprints (shown in Sobel in Figure 1 and
recited in [0032])” (Ans. 12). The Examiner further notes, “Sobel does
teach allowing the customer to select the payment method after confirming
the biometric scan” (id. (citing Sobel ¶ 62, Fig. 7D); see also Final Act. 15
(citing Sobel ¶¶ 9, 32, 40, 59, 61, Figs. 7A–7C)). And the Examiner
concludes, “[t]herefore, Sobel does teach the limitations of claim 22”
(Ans. 12).
The difficulty with the Examiner’s analysis, as Appellant observes, is
that “instead of rejecting the claim for the features it actually recites [i.e.,
‘selecting an account from multiple accounts based . . . on determining that
the biometric data corresponds to the fingerprint’] the Office changes the
language of the claim to merely ‘the selection of a payment method’” (Reply
Br. 5–6). Thus, although we agree with the Examiner that Sobel teaches
allowing the customer to select the payment method after confirming the
biometric scan, we find nothing in the cited portion of Sobel that discloses or
suggests that a payment account is selected from among multiple accounts
based on whether the fingerprint corresponds to that particular account.
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Therefore, we do not sustain the Examiner’s rejection of claim 22
under 35 U.S.C. § 103.
Dependent Claim 25
Claims 25 similarly depends from claim 2, and recites that “the
registered biometric signature [recited in claim 2] includes a model of
previously-obtained biometric data” (Appeal Br. 19 (Claims Appendix)).
Appellant argues that the rejection of claim 25 cannot be sustained
because “Sobel does not describe the use of models at all, whether in the
context of the features of claim 25 or otherwise” (Appeal Br. 12).
Appellant, thus, maintains, “[a]s such, Sobel cannot teach or suggest the
registered biometric signature including a model of previously-obtained
biometric data, as [claim] 25 recites” (id.).
Appellant points to Figure 3 and paragraph 21 of the Specification in
describing the subject matter of claim 25 (Appeal Br. 7). There, the
Specification discloses the process by which a customer may register
biometric data, and describes that the customer provides a number of
biometric samples, from which the biometric system “may create a model of
the particular individual’s patterns, which is referred to as a template” (Spec.
¶ 21). When the customer attempts to access the system, the application
collects new data; retrieves the customer’s model from a database; and
compares the new data to the retrieved model (id.).
We agree with the Examiner that Sobel discloses the subject matter of
claim 25 at least at paragraph 40 (Ans. 13). There, Sobel describes that, as
an alternative to controlling access to the consumer key (used for
authentication during PoS transactions) by encrypting the key using
biometric data, “access to the consumer key can be achieved by, for
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example, comparing fingerprint (or other biometric) data against a stored
fingerprint (or other biometric) template” (Sobel ¶ 40).
Addressing claim 25, Appellant argues in the Reply Brief that “the
Office [impermissibly] changes the language of the claim from ‘wherein the
registered biometric signature includes a model of previously-obtained
biometric data’ to merely ‘a template’” (Reply Br. 6). Yet, accordingly to
Appellant’s own Specification, a model of a particular individual’s patterns
is referred to as a “template” (see Spec. ¶ 21).
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 25 under 35 U.S.C. § 103. Therefore, we sustain the
Examiner’s rejection.
Independent Claim 26 and Dependent Claim 27
Appellant argues that independent claim 26 is allowable for the same
reasons set forth with respect to independent claim 2 (Appeal Br. 12–13).
We are not persuaded for the reasons set forth above that the Examiner erred
in rejecting independent claim 2 under 35 U.S.C. § 103. Therefore, we
sustain the Examiner’s rejection of independent claim 26 for the same
reasons. We also sustain the rejection of dependent claim 27, which is not
argued separately except based on its dependence from independent
claim 26 (id. at 13).
Dependent Claims 4, 24, and 28
Each of claims 4, 24, and 28 depends from one of independent
claims 2 and 26. Appellant does not present any arguments in support of the
patentability of any of these dependent claims except to argue that the claims
are allowable based on their dependence from claims 2 and 26 (Appeal
Br. 13). We are not persuaded for the reasons set forth above that the
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Examiner erred in rejecting independent claims 2 and 26. Therefore, we
sustain the Examiner’s rejections under 35 U.S.C. § 103 of dependent
claims 4, 24, and 28 for the same reasons.
Dependent Claim 23
Claim 23 depends from independent claim 2. Appellant does not
present any argument in support of the patentability of claim 23 except to
assert that “claim 2 is allowable over the combination of Sobel, Donaldson,
and Scully-Power” and that “Guo fails to remedy the deficiencies of Sobel,
Donaldson, and Scully-Power as noted above with regard to independent
claim 2” (Appeal Br. 13–14).
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting independent claim 2. Therefore, we sustain the
Examiner’s rejection under 35 U.S.C. § 103 of dependent claim 23 for the
same reasons.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2, 3, 22,
25–27
103 Sobel, Donaldson,
Scully-Power
2, 3, 25–27 22
4, 24, 28 103 Sobel, Donaldson,
Scully-Power,
Sprecher
4, 24, 28
23 103 Sobel, Donaldson,
Scully-Power, Guo
23
Overall
Outcome
2–4, 23–28 22
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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 IN PART