Apple Inc.Download PDFPatent Trials and Appeals BoardNov 2, 202014869831 - (D) (P.T.A.B. Nov. 2, 2020) Copy Citation 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; Appeal 2020-000266 Application 14/869,831 3 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. Appeal 2020-000266 Application 14/869,831 4 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 Appeal 2020-000266 Application 14/869,831 5 . . . 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.” Appeal 2020-000266 Application 14/869,831 6 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. Appeal 2020-000266 Application 14/869,831 7 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 Copy with citationCopy as parenthetical citation