Apple Inc.

Patent Trials and Appeals Board

Nov 2, 2020

14869831 - (D) (P.T.A.B. Nov. 2, 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.
14/869,831 09/29/2015 Marcel VAN OS P26049US1/77770000402101 5111
150004 7590 11/02/2020
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
SMITH, SLADE E
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
11/02/2020 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):
dentons_PAIR@firsttofile.com
patent.docket@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCEL VAN OS, GEORGE R. DICKER,
CHRISTOPHER D. ADAMS, and GLEN W. STEELE
Appeal 2020-000266
Application 14/869,831
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MACDONALD, and
IRVIN E. BRANCH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3, and 5–32. See Final Act. 1.

1 We refer to the Specification, filed September 9, 2015 (“Spec.”); Final
Office Action, mailed July 30, 2018 (“Final Act.”); Appeal Brief, filed April
29, 2019 (“Appeal Br.”); Examiner’s Answer, mailed August 12, 2019
(“Ans.”); and Reply Brief, filed October 14, 2019 (“Reply Br.”).

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Apple Inc. Appeal
Br. 3.
Appeal 2020-000266
Application 14/869,831

2
Claims 2 and 4 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b). A hearing was held on September 1, 2020, and a transcript
has been made of record.
We AFFIRM–IN–PART.
CLAIMED SUBJECT MATTER
The claims are directed to “making payments with a mobile device.”
Spec. Abstract. Claims 1 and 6, reproduced below with disputed limitations
emphasized in italics, are illustrative of the claimed subject matter:
1. A non-transitory computer-readable storage medium
comprising one or more programs for execution by one or more
processors of an electronic device with a short-range
communication radio and a physical input mechanism that
includes an integrated biometric sensor, the one or more
programs including instructions for:
while the electronic device is in a lock state and is not
enabled to participate in payment transactions via the short-
range communication radio:
detecting activation of the physical input
mechanism;
determining whether the activation of the physical
input mechanism was performed by a finger that has a
fingerprint that is consistent with an enrolled fingerprint;
and
in response to detecting the activation of the
physical input mechanism:
in accordance with a determination that the
activation of the physical input mechanism was
performed by a finger that has a fingerprint that is
consistent with an enrolled fingerprint and the
activation of the physical input mechanism meets
first input criteria, enabling the device to
participate in payment transactions via the short-
range communication radio;
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Application 14/869,831

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in accordance with a determination that the
activation of the physical input mechanism was
performed by a finger that has a fingerprint that is
consistent with an enrolled fingerprint and the
activation of the physical input mechanism meets
second input criteria different from the first input
criteria, unlocking the device without enabling the
device to participate in payment transactions via
the short-range communication radio; and
in accordance with a determination that the
activation of the physical input mechanism was not
performed by a finger that has a fingerprint that is
consistent with an enrolled fingerprint, maintaining
the device in the lock state without enabling the
device to participate in payment transactions via
the short-range communication radio.
6. The non-transitory computer-readable storage medium of
claim 1, wherein enabling the device to participate in payment
transactions via the short-range communication radio comprises
enabling the device to participate in payment transactions via the
short-range communication radio without turning on a display of
the device.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Ghassabian
Mardikar
Levovitz
US 2005/0253814 A1
US 2009/0307139 A1
US 2012/0185397 A1
Nov. 17, 2005
Dec. 10, 2009
July 19, 2012
REJECTIONS
Claims 1, 3, 5–11, 13–22, and 24–31 stand rejected under 35 U.S.C.
§ 103 as unpatentable over the combination of Mardikar and Ghassabian.
Final Act. 7–11.
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Application 14/869,831

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Claims 12, 23, and 32 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Mardikar and Ghassabian, and
Levovitz. Final Act. 11.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
35 U.S.C. § 103
Claims 1, 3, 5, 7–16, 18–25, and 27–32
Appellant argues claims 1, 3, 5, 7–16, 18–25, and 27–32 collectively.
See Appeal Br. 8. We select claim 1 as representative of this group.
37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues the Examiner errs in rejecting claim 1 because the
cited references do not teach or suggest “unlocking the device without
enabling the device to participate in payment transactions via the short-range
communication radio.” Id. at 14–15. In particular, Appellant argues
“Mardikar consistently describes unlocking the phone as a secondary
function that can occur alongside authentication of a payment.” Id. at 15.
We are not persuaded of error. The flow diagram depicted in Figure 4
and described at paragraphs 53–57 of Mardikar directly contradicts
Appellant’s argument. In this process, the phone is opened before the
“Make Payment” button is selected. Mardiker ¶ 54 (“the user, in the role of
a purchaser, may, at S404, first activate the phone 300, e.g., by opening it
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Application 14/869,831

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. . . the user may then select a ‘Make Payment’ button on the phone 300”).
That is, prior to selection of the “Make Payment” button, the phone is
unlocked without being enabled to participate in payment transactions.
Appellant also argues “[m]odifying Mardikar in a manner that results
in sometimes unlocking the device without enabling the device to participate
in payment transactions would change the principle of operation of
Mardikar.” Appeal Br. 17. We are not persuaded by this argument because
Mardiker discloses exactly the feature Appellant contends in missing. See
Mardikar ¶ 54.
Appellant also argues “[t]he Examiner’s reliance on In re Keller is
misplaced” (Appeal Br. 16) and that the Examiner improperly relies on
teachings from multiple embodiments in Mardikar (Reply Br. 5). These
arguments do not persuade us of error. References are considered for the
entirety of what they teach and suggest to one skilled in the art. See, e.g., In
re Hedges 783 F.2d 1038, 1039 (Fed. Cir. 1986) (citing In re Wesslau, 353
F.2d 238, 241 (CCPA 1965)). “Just as piecemeal reconstruction of the prior
art by selecting teachings in light of appellant’s disclosure is contrary to the
requirements of 35 U.S.C. § 103[,] so is the failure to consider as a whole
the references collectively as well as individually.” In re Passal, 426 F.2d
828, 831 (CCPA 1970). Accordingly, whether the teachings from Mardikar
are from different embodiments is irrelevant; the Examiner’s rejection is
based on what the combined teachings of the references would have taught
or suggested to one of ordinary skill in the art. See In re Keller, 642 F.2d
413, 425 (CCPA 1981) (“The test for obviousness . . . is what the combined
teachings of [those] references would have suggested to those of ordinary
skill in the art.”
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Application 14/869,831

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In view of the foregoing, we are unpersuaded of error in the rejection
of claim 1 and of claims 3, 5, 7–16, 18–25, and 27–32 argued therewith.

Claims 6, 17, 26
Appellant argues claims 6, 17, and 26 collectively. Appeal Br. 8. We
select claim 6 as representative of this group. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 6 depends from claim 1 and recites “enabling the device to
participate in payment transactions via the short-range communication radio
comprises enabling the device to participate in payment transactions via the
short-range communication radio without turning on a display of the
device.”
The Examiner finds “Ghassabian teaches receipt of fingerprint scan
without turning on the display screen of a device having a display screen.”
Final Act. 9 (citing Ghassabian ¶ 89). Ghassabian discloses that “an
individual can use the fingerprint pad without viewing the display screen.”
We are persuaded of error at least because the cited portion of
Ghassabian “describes what the individual can/should do with respect to the
display screen (‘without viewing’) [but] . . . does not describe (a) whether
the display is already on or off, or (b) whether an action is taken or not to
cause the display to turn on or off,” as Appellant argues. Appeal Br. 18.
Accordingly, on this record, we do not sustain the Examiner’s
rejection of claims 6, 17, and 26.
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Application 14/869,831

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 3, 5–11,
13–22, 24–
31
103 Mardikar, Ghassabian 1, 3, 5, 7–
11, 13–16,
18–22, 24,
25, 27–31
6, 17, 26
12, 23, 32 103 Mardikar, Ghassabian,
Levovitz
12, 23, 32
Overall
Outcome:
  1, 3, 5, 7–
16, 18–25,
27–32
6, 17, 26

TIME PERIOD FOR RESPONSE
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