Apple Inc.

Patent Trials and Appeals Board

May 3, 2021

2020006233 (P.T.A.B. May. 3, 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.
14/475,113 09/02/2014 George R. Dicker 5607.2030002
(P21714US1)
1005
63975 7590 05/03/2021
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
SAX, TIMOTHY P
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
Apple-eOA@sternekessler.com
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGE R. DICKER, CHTOPHER B. SHARP,
AHMER A KHAN, YOUSUF H. VAID, GLEN W. STEELE,
CHRISTOPHER D. ADAMS, and DAVID HAGGERTY
_____________

Appeal 2020-006233
Application 14/475,113
Technology Center 3600
____________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
JOHN A. EVANS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–10, 12, 13, 22, 23, 25–27, and 29–34, which constitute all the
claims pending in this application. Claims 11, 14–21, 24, and 28, are
canceled. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest in this
appeal is Apple Inc. See Appeal Br. 3.
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STATEMENT OF THE CASE 2
Introduction
Embodiments of Appellant’s invention on appeal relate generally to:
“wireless communications, wireless electronic devices, and techniques for
generating identifiers and receipts related to financial transactions conducted
by electronic devices via wireless communication.” Spec. ¶ 3.

Representative Claim 1
1. A portable electronic device, comprising:
an antenna;
an interface circuit, coupled to the antenna, configured to
wirelessly communicate with another electronic device; and
a secure element, coupled to the interface circuit,
configured to:
in response to an authentication-complete flag
being set by the secure element, conduct, through the
interface circuit, a financial transaction with the other
electronic device;
determine, after financial-account information is
communicated to the other electronic device, a first
unique transaction identifier for the financial transaction
based on the financial-account information;
receive, from another entity associated with the
financial transaction, financial transaction receipt
information associated with the financial transaction,
wherein the financial transaction receipt information

2 We herein refer to the Final Office Action, mailed October 1, 2019 (“Final
Act.”); Appeal Brief, filed April 28, 2020 (“Appeal Br.”); the Examiner’s
Answer, mailed July 2, 2020 (“Ans.”); and Reply Brief, filed September 2,
2020 (“Reply Br.”).
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includes a second unique transaction identifier
independently computed by the other entity based on the
financial-account information communicated to the other
electronic device,
wherein the other entity comprises a payment
network that processes payment for the financial
transaction using a financial account specified by the
financial account information;
[L1] compare the first unique transaction
identifier with the second unique transaction identifier;
and
[L2] associate the received financial transaction
receipt information with the financial transaction in
response to the second unique transaction identifier
matching the first unique transaction identifier.
Appeal Br. 19–20. Claims App. (disputed claim limitations
emphasized).

Evidence Relied Upon by the Examiner
Name Reference Date
Bowman US 6,460,163 B1 Oct. 1, 2002
Dua US 2006/0165060 A1 July 27, 2006
Bhinder US 2011/0302083 A1 Dec. 8, 2011
Kulkarni US 2012/0052801 A1 Mar. 1, 2012
Crake US 2012/0143706 A1 June 7, 2012
Weinstein US 2013/0117186 A1 May 9, 2013
Argue US 2014/0025517 A1 Jan. 23, 2014

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Table of Rejections
Rej.
Claims
Rejected
35 U.S.C. § Reference(s)/Basis
A 1, 6, 12, 23, 25, 29–34 103 Crake, Dua, Bowman
B 3, 9, 10, 22 103 Crake, Dua, Bowman, Argue
C 4, 5, 26 103 Crake, Dua, Bowman, Argue, Kulkarni
D 2, 13 103 Crake, Dua, Bowman, Bhinder
E 7, 8, 27 103 Crake, Dua, Bowman, Weinstein

ANALYSIS
Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

Rejection A under 35 U.S.C. § 103
Issues: Under 35 U.S.C. § 103, did the Examiner err by finding that
the combination of Crake, Dua, and Bowman teaches or suggests the
following disputed limitations of independent claim 1?
[L1] compare the first unique transaction identifier with the
second unique transaction identifier; and
[L2] associate the received financial transaction receipt
information with the financial transaction in response to the
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second unique transaction identifier matching the first unique
transaction identifier.

We note that similar limitations of commensurate scope are recited in
remaining independent claims 12 and 23.
Claim Construction
As a preliminary issue of claim construction, we interpret the claim
term “unique transaction identifier” as an identifier that is associated with a
unique transaction such that two unique transaction identifiers can be
matched when they refer to the same unique transaction. The alternative
interpretation of the “unique transaction identifier” as being a unique
identifier with respect to other identifiers would result in identifiers that
would never match within the scope of the claim, because each identifier
would be “unique” with respect to all other identifiers.3

3 During prosecution of an application before the USPTO, the threshold
standard of ambiguity for indefiniteness is lower than it might be during
litigation of an issued patent. See Ex parte Miyazaki, 89 USPQ2d 1207,
1212 (BPAI 2008) (precedential). Accord Ex parte McAward, Appeal 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential); see
also In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014). Thus, “if a
claim is amenable to two or more plausible claim constructions, the USPTO
is justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim . . . indefinite.”
Miyazaki, 89 USPQ2d at 1211. Moreover, because “applicants may amend
claims to narrow their scope, a broad construction during prosecution creates
no unfairness to the applicant or patentee.” In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). In the event of
further prosecution, including any review prior to allowance, we leave this
issue to the further consideration of the Examiner. Should a patent issue
from this application, and if the language of the claims is such that a person
of ordinary skill in the art could not interpret the metes and bounds of the
claimed invention so as to understand how to avoid infringement, a rejection
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Our former interpretation is supported under BRI by the Specification
(see e.g., paragraph 39),4 and by the claim language. For example, claim 1
recites “determine...a first unique transaction identifier for the financial
transaction based on the financial-account information,” which we
understand under BRI as associating a unique transaction identifier to a
particular transaction. Claim 1 further recites “associate...in response to the
second unique transaction identifier matching the first unique transaction
identifier,” which associates “the received financial transaction receipt
information with the financial transaction” in response to matching unique
first and second transaction identifiers.
Regarding claim limitation L1 (compare the first unique transaction
identifier with the second unique transaction identifier), Appellant contends
that Bowman’s disclosure of comparing a checksum calculated on a client
and a checksum calculated on an order fulfillment server does not teach or
suggest claim limitation L1. See Appeal Br. 13–14 (emphasis added). In
particular, Appellant contends that each of Bowman’s checksums are
calculated for a downloaded digital content item, and are not calculated for a

of the claims under 35 U.S.C. § 112, second paragraph (now § 112(b)) is
deemed appropriate. Morton Int’l, Inc. v. Cardinal Chemical Co., 5 F.3d
1464, 1470 (Fed. Cir. 1993). Although the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See Manual of Patent Examining Procedure
(MPEP) § 1213.02.

4 See e.g., Spec. ¶ 39 (“In particular, the unique transaction identifier may
be capable of being independently computed by one or more other entities
associated with the financial transaction based on the financial-account
information communicated by electronic device 110-1.”) (emphasis added).
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“financial transaction based on the financial-account information” as
required by the language in claim 1. Id.
Appellant also contends that the Examiner has relied upon
impermissible hindsight in combining Bowman with Dua. See Appeal Br.
15. In particular, Appellant contends that “[a] person of ordinary skill in the
art would have not been motivated to use Bowman’s verification of
downloaded digital content in Dua’s alleged transaction ID and digital
receipt without using the claimed invention as a ‘blueprint,’ which
necessarily constitutes impermissible hindsight.” Appeal Br. 16 (citing
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)).
The Examiner finds that one of ordinary skill in the art would have
known that the functions of Bowman “(e.g. determining a checksum on a
digital content item independently on a client device and a server)” could
have been be performed using any type of data, including the financial
transaction data of Dua, and the results would have been predictable. See
Ans. 5–6. 5

5 Whether a claim would have been obvious under 35 U.S.C. § 103 is
a legal conclusion based upon underlying factual determinations. The
factual determinations include: (1) the scope and content of the prior
art; (2) the differences between the claims and the prior art; (3) the
level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. See Graham v. John Deere Co. of Kansas City, 383
U.S. 1, 17–18 (1966). The person of “ordinary skill” in the art is not
the inventor, of course, but rather an imaginary person. See Kimberly-
Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1454 (Fed. Cir.
1984). This imaginary person having ordinary skill in the art is
determined by reference to the factors set out by the Federal Circuit in
Environmental Designs v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir.
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The Examiner also finds an artisan would have been motivated “to
include in the mobile electronic payment system of Crake/Dua[,] the concept
of a client device and [another] entity separately determining identifiers and
comparing the identifiers before associating the data as taught by Bowman.”
Final Act. 8.
We agree with Appellant that Bowman’s checksum is not necessarily
a unique transaction identifier, because it is possible that the same checksum
value could be calculated for different digital content items.
Moreover, the claimed unique transaction identifiers must refer to the
same transaction. See Claim 1.

1983), cert. denied, 464 U.S. 1043 (1984). Those factors in a
particular field are: (a) the educational level of inventors and active
workers; (b) the types of problems encountered in the art; (c) the prior
art solutions to those problems; (d) the rapidity with which
innovations are made; and (e) the sophistication of technology. See
also Jacobson Bros. v. United States, 512 F.2d 1065, 1071 (Ct. Cl.
1975); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011
(Fed. Cir. 1983) (quoting with approval Jacobson Bros.). Accord
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior
art itself may reflect an appropriate level of skill in the art.).

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Regarding the question of whether Bowman, in combination with
Dua, teaches or suggests claim 1 limitation L1, we turn to the evidence and
reproduce the pertinent cited portions of the Bowman and Dua references:
In block 419, a checksum of at least a portion of the digital
content item used as a designated test portion and preferably of
the entire digital content item is calculated at the client. In block
421, a comparison is made between a checksum of the file
generated on the order fulfillment server, and the checksum
computed in block 419 on the client computer. This important
step verifies that digital content item which has been paid for by
the use, has been received intact.
Bowman col. 8, l. 45–47 (emphasis added).
In the case of financial transactions, the log entries will also have
links to digital receipts (which are stored separately in the wallet
application). Digital Receipts will be linked to log entries based
on date/time stamp and credential matches (other criteria could
also be used—or example, under one embodiment, the device
generates a unique transaction ID which is transmitted with the
credential to the merchant during each transaction. This ID could
be contained in the digital receipt, and used by the wallet
application to link the digital receipt with the log entries).
Dua ¶ 489 (emphasis added).

Given this evidence, it is our view that the cited portions of Bowman
and Dua support the Examiner’s finding that Bowman teaches comparing
two identifiers, and Dua discloses financial transaction data and transaction
IDs. Therefore, based upon a preponderance of the evidence, we find that
the Examiner’s proffered combination of Bowman and Dua teaches or
suggests claim 1 limitation L1 (“compare the first unique transaction
identifier with the second unique transaction identifier”) (emphasis added).
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However, as noted above, Appellant urges that the Examiner erred in
combining Bowman and Dua by relying upon impermissible hindsight
reasoning. See Appeal Br. 16. As recited in claim 1, we note that the
compare limitation L1 is closely linked to the associate limitation L2, in a
chain of causation: See “in response to” language of claim 1, limitation L2:
“associate the received financial transaction receipt information with the
financial transaction in response to the second unique transaction identifier
matching the first unique transaction identifier.” Claim 1 (emphasis
added).
In support of Rejection A, the Examiner cites Dua’s disclosure of
using a transaction ID to link a digital receipt to a log entry at paragraph
489. Thus, the Examiner finds Dua teaches or suggests “associate the
received financial transaction receipt information with the financial
transaction,” as recited in claim 1 limitation L2. See Ans. 3–4.
With respect to the remaining portion of claim limitation L2 (“in
response to the second unique transaction identifier matching the first
unique transaction identifier”), the Examiner finds that “[i]n order to link
the digital receipt to a transaction log entry using the unique transaction ID,
a comparison needs to be done so that the wallet application knows which
log entry to associate with the digital receipt.” Ans. 4 (emphasis added).
Appellant contends that the Examiner’s apparent reliance upon
inherency through obviousness to teach or suggest claim limitation L2 is
inappropriate. See Reply Br. 3.

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In particular, Appellant urges:
[T]he Examiner does not explain how and why a POSA would
have recognized that a comparison necessarily must be done.
And the Examiner does not explain why the particular claimed
type of comparison necessarily must be done in Dua, vers[us]
some other type of comparison, for example, a comparison of
transaction amounts. These details are left unresolved, and
therefore the Examiner's statements are insufficient to support a
prima facie case of obviousness.
Reply Br. 4 (emphasis added).
“The inherent teaching of a prior art reference, a question of fact,
arises both in the context of anticipation and obviousness.” In re Napier, 55
F.3d 610, 613 (Fed. Cir. 1995) (affirming a section 103 rejection based in
part on an inherent disclosure in one of the references). The question of
obviousness is “based on underlying factual determinations including . . .
what th[e] prior art teaches explicitly and inherently.” In re Zurko, 258 F.3d
1379, 1383 (Fed. Cir. 2001) (citations omitted). Accord PAR
Pharmaceutical, Inc. v TWI Pharmaceuticals, Inc. 773 F.3d 1186, 1194-95
(Fed Cir. 2014) (“inherency may supply a missing claim limitation in an
obviousness analysis.”).
However, “[t]he mere fact that a certain thing may result from a given
set of circumstances is not sufficient. If, however, the disclosure is sufficient
to show that the natural result flowing from the operation as taught would
result in the performance of the questioned function, it seems to be well
settled that the disclosure should be regarded as sufficient.” In re Oelrich,
666 F.2d 578, 581 (CCPA 1981) (emphasis added) (citations and quotations
omitted). “Thus, . . . the concept of inherency must be limited when
applied to obviousness, and is present only when the limitation at issue is the
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‘natural result’ of the combination of prior art elements.” PAR
Pharmaceutical, Inc., 773 F.3d at 1195 (quoting Oelrich, 666 F.2d at 581).
Turning to the evidence, and referring to Dua, the Examiner finds that
“a comparison needs to be done so that the wallet application knows which
log entry to associate with the digital receipt.” Ans. 4 (emphasis added).
However, Appellant urges that a comparison between Dua’s
transaction IDs is not necessary to link the digital receipt with a log entry
and that the Examiner has failed to provide sufficient detail explaining why
it would be necessary. See Reply Br. 3–4.
In view of the guidance noted supra, as further discussed below, we
agree with Appellant that the Examiner’s findings are insufficient to support
a conclusion of obviousness via inherency. Cf. PAR Pharm., 773 F.3d at
1194-95.
The Examiner alternatively finds: “Even assuming that Dua does not
require a comparison of the transaction IDs to link the digital receipt with
the transaction log entry,” Bowman discloses comparing two checksums “to
make sure that they match.” Ans. 4–5.
In response to this alternative finding, Appellant contends that, even if
Dua discloses “associating” and Bowman discloses “comparing,” the
combination of Dua and Bowman does not teach or suggest that Dua’s
alleged “associating” is in response to Bowman’s alleged “comparing.”
Appeal Br. 12.
We agree with Appellant that the Examiner has not established that
Dua’s “associating” is performed in response to Bowman’s alleged
“comparing,” as required by the claim language. See Claim 1.
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We are particularly troubled by the chain of causation that is split
between the two references in the Examiner’s proposed combination of Dua
and Bowman. Since neither reference alone teaches or suggests the complete
chain of causation (i.e., comparing the first and second unique transaction
IDs, determining that the first and second unique transaction IDs match, and,
in response, associating the receipt with the financial transaction), we are of
the view that one of ordinary skill in the art would not have reasonably
combined Dua and Bowman in the manner found by the Examiner without
impermissibly relying upon Appellant’s claims and Specification as a guide.
Therefore, on this record, we are persuaded that the Examiner’s
ultimate legal conclusion of obviousness is in error regarding Rejection A of
independent claims 1, 12, and 23. We note that claims 2–10, 13, 22, 25–27,
and 29–34 variously and ultimately depend from either claim 1, 12, or 23.
Accordingly, we are constrained on this record to reverse the
Examiner’s Rejections A–E of all claims 1–10, 12, 13, 22, 23, 25–27, and
29–34 under 35 U.S.C. § 103.

CONCLUSION
The Examiner erred in rejecting claims 1–10, 12, 13, 22, 23, 25–27,
and 29–34 under U.S.C. § 103.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 12, 23,
25, 29–34 103 Crake, Dua, Bowman
1, 6, 12,
23, 25,
29–34
3, 9, 10, 22 103 Crake, Dua, Bowman, Argue
3, 9, 10,
22
4, 5, 26 103
Crake, Dua,
Bowman, Argue,
Kulkarni
4, 5, 26
2, 13 103 Crake, Dua, Bowman, Bhinder 2, 13
7, 8, 27 103 Crake, Dua, Bowman, Weinstein 7, 8, 27
Overall
Outcome
1–10, 12,
13, 22, 23,
25–27,
29–34

REVERSED