Dominique Quesselaire et al.

Patent Trials and Appeals Board

Sep 19, 2019

14594842 - (D) (P.T.A.B. Sep. 19, 2019)

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.
14/594,842 01/12/2015 Dominique Quesselaire 09669/092002 9716
22511 7590 09/19/2019
OSHA LIANG L.L.P.
TWO HOUSTON CENTER
909 FANNIN, SUITE 3500
HOUSTON, TX 77010
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/19/2019 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):
docketing@oshaliang.com
escobedo@oshaliang.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOMINIQUE QUESSELAIRE, JEAN-PAUL MENGUS, and
MICHEL LEGER
____________

Appeal 2018-001060
Application 14/594,8421
Technology Center 3600
____________

Before JENNIFER S. BISK, ALEX S. YAP, and
JASON M. REPKO Administrative Patent Judges.

YAP, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1–8, which are all the claims pending in this application. (See Final
Office Action (mailed January 9, 2017) (“Final Act.”) 1.) We have
jurisdiction under 35 U.S.C. § 6(b)
We reverse.

1 According to Appellants, the real party in interest is Gemalto SA. (App.
Br. 3.)
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STATEMENT OF THE CASE
Introduction
According to the Specification, Appellants’ invention relates to
“electronic transaction systems and transaction terminals adapted to perform
electronic transaction.” (April 19, 2013 Specification (“Spec.”) 1.) Claim 1
is illustrative, and is reproduced below (with minor reformatting):
1. A system for performing electronic transaction
comprising:
a payment terminal including:
a human interface module comprising a keypad, a
display, a card reader, a first processor, and an
internal bus connecting the keypad, the display, and
the card reader; and
a host terminal, connected to the human interface
module through a first connection, comprising:
a second processor, a first memory, a power supply,
and a first security module,
wherein the first security module comprises a
transaction terminal task manager and
a second memory comprising a first cipher key and
first identification data, wherein the first connection
is established using the first cipher key and the first
identification data; and
a gateway or a remote server of a service provider,
connected to the host terminal through a second
connection over a telecommunications network,
comprising a virtual terminal server, at least one
communications interface and a second security
module comprising a third memory, a second cipher
key and second identification data, wherein the
second connection is established using the second
cipher key and the second identification data,
wherein the human interface module receives a
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transaction request initiated using at least one
selected from a group consisting of the keypad, the
display, and the card reader, and wherein the human
interface module transmits the transaction request to
the first security module
wherein the first security module processes the
transaction request received by the human interface
module and, using the transaction terminal task
manager, schedules the execution of the transaction
request as a plurality of transaction phases,
wherein the human interface module executes,
totally autonomously from the host terminal, one or
more of the plurality of transaction phases, as
scheduled by the first security module,
wherein non-sensitive data is stored on the host
terminal and sensitive data is stored on the gateway
or remote server, and wherein the non-sensitive and
sensitive data pertains to the plurality of transaction
phases, and
wherein the host terminal communicates with the
gateway or remote server to receive data stored on
the gateway or remote server, in connection with the
transaction request.

Rejections on Appeal
Claims 1–8 stand rejected as failing to comply with the enablement
requirement under 35 U.S.C. § 112, first paragraph.2 (See Final Act. 5–9.)
Claims 1–8 stand rejected as failing to comply with the written
description requirement under 35 U.S.C. § 112, second paragraph. (See
Final Act. 9–12.)

2 The Examiner withdrew this rejection in the Answer. (Ans. 2.)
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Claims 1–8 stand rejected as being indefinite under 35 U.S.C. § 112,
second paragraph. (See Final Act. 13–15.)

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We are persuaded the Examiner
erred in rejecting the claims on appeal.
“transaction terminal task manager”
The Examiner finds the term “transaction terminal task manager” of
claim 1 lacks written description support because “[t]here is no disclosure of
what constitutes a ‘transaction terminal task manager’ [and the term] is not
known in the prior art”. (Ans. 11; Final Act. 11; see also Ans. 10, 12–13.)
According to the Examiner, “there is no disclosure of what a ‘transaction
terminal task manager’ is, let alone how it is ‘us[ed]’ by the ‘first security
module’ to ‘schedule the execution of the transaction request as a plurality
of transaction phases,’ as claimed.” (Ans. 13.) Appellants, however,
contend that “the transaction terminal task manager within the e-scheduler
(i.e., security module) [] performs the scheduling of the transaction phases
(i.e., tasks) for execution [and because] scheduling these tasks is well known
in the prior art, [the term] does not need detailed disclosure.” (Reply 5.)
The purpose of the written description requirement is to “ensure that
the scope of the right to exclude, as set forth in the claims, does not
overreach the scope of the inventor’s contribution to the field as described in
the patent specification.” Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345
(Fed. Cir. 2000). To that end, to satisfy the written description requirement,
the inventor “must also convey with reasonable clarity to those skilled in the
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art that, as of the filing date sought, he or she was in possession of the
invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir.
1991). “One shows that one is ‘in possession’ of the invention by describing
the invention, with all its claimed limitations.” Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphases in original).
It is not necessary for the specification to describe the claimed invention
ipsissimis verbis; all that is required is that it reasonably convey to those
skilled in the art that, as of the filing date sought, the inventor was in
possession of the claimed invention. Union Oil of California v. Atlantic
Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000); Vas-Cath Inc. v.
Mahurkar, 935 F.2d at 1563–64; In re Gosteli, 872 F.2d 1008, 1012 (Fed.
Cir. 1989); In re Edwards, 568 F.2d 1349, 1351–52 (CCPA 1978).
Here, we agree with Appellants that the transaction terminal task
manager resides within the e-scheduler and performs the scheduling of the
transaction tasks for execution. (Specification 2, 5; Reply 4–5.) We also
agree with Appellants that because “scheduling these tasks is well known in
the prior art, [] the transaction terminal task manager[, therefore,] does not
need detailed disclosure.” (Reply 5.) “It is not necessary that the
application describe the claim limitations exactly, but only so clearly that
persons of ordinary skill in the art will recognize from the disclosure that
appellants invented processes including those limitations.” In re Wertheim,
541 F.2d 257, 262 (CCPA 1976) (citation omitted); see also Purdue Pharma
L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to
satisfy the written description requirement, the disclosure as originally filed
does not have to provide in haec verba support for the claimed subject
matter at issue.”).
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“a second memory comprising a first cipher key”
The Examiner also finds that there is no written description support
for “a second memory comprising a first cipher key” because “Appellants’
finding that ‘as described in paragraph [0028], ciphering means are
cryptographic keys (i.e., cipher keys)’ is in error.” (Ans. 12; Final Act. 11.)
However, “the disclosure as originally filed does not have to provide in haec
verba support for the claimed subject matter at issue.” Purdue Pharma L.P.,
230 F.3d at 1323. We agree with Appellants that “[i]n order to perform
ciphering, a cipher key is required[; a]ccordingly, the ciphering means
includes a cipher key to operate and the cipher key must be stored (i.e.,
memory) at least temporarily during the ciphering.” (Reply 4.)
“human interface module”
The Examiner further finds that the “human interface module” term of
claim 1 lacks written description support because the “human interface
module” cannot execute “autonomously from the host terminal, one or more
of the plurality of transaction phases” as claimed. (Ans. 14–15.) According
to the Examiner, because the transaction phases “are executed by the human
interface module under the e-scheduler ES control (Spec., [0027]), and
because the e-scheduler is part of the host terminal (see Appellants’ figure
1), the disclosed transaction phases [] are not executed totally autonomously
from the host terminal.” (Id.) The Examiner, however, does not respond to
the Appellants’ contention that original claim 1, which is part of the original
disclosures, provides written description support for “human interface
module.” Specifically, original claim 1 states, in part, “wherein the human
interface module executes transaction phases under control of the security
module, and executes security treatments, totally autonomously from the
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host terminal, the security treatments including . . . .” We agree with
Appellants this the cited portion of claim 1, which recites similar language
as that in pending claim 1, provides written description support for “the
human interface module executes, totally autonomously from the host
terminal” of pending claim 1.
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 1 and do not sustain the 35 U.S.C. § 112, first paragraph
rejection of claim 1. The Examiner relies on the same arguments for the
rejection of claims 2–8;3 therefore, we also do not sustain the 35 U.S.C.
§ 112, first paragraph rejection of claims 2–8.
“first security module”
Claim 1 recites, in part, “a first security module, wherein the first
security module comprises a transaction terminal task manager and a second
memory . . . .” Claim 1 further recites that “the first security module
processes the transaction request received by the human interface module
and, using the transaction terminal task manager, schedules the execution of
the transaction request as a plurality of transaction phases”
The Examiner finds that “a security module” is a means-plus-function
term subjected to 35 U.S.C. § 112, sixth paragraph because the term
“module” is a nonce word. (Ans. 17.) According to the Examiner, “a
security module” is similar to the term “distributed learning control module”
in Williamson v. Citrix Online, LLC, which the Federal Circuit found to be
governed by § 112 sixth paragraph. 792 F.3d 1339 (Fed. Cir. 2015). The
Examiner contends the term “‘a security module’ does not provide any

3 The Examiner does not respond to Appellants further arguments regarding
dependent claims 3 and 4. (See Ans. 16; App. Br. 12.)
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indication of structure because it sets forth the same black box recitation of
structure for providing the same specified function as if the term ‘means’
had been used.” (Ans. 17.) The Examiner then concludes that the term “a
security module” “is indefinite because the written description fails to
clearly link or associate sufficient disclosed structure to the claimed function
such that one of ordinary skill in the art would recognize what structure
performs the claimed function.” (Ans. 19; Final Act. 13–14.)
Appellants contend that 35 U.S.C. § 112, sixth paragraph does not
apply because “the security module is described as physical hardware (i.e.,
an analog to a Subscriber Identity Module SIM)” in the Specification and
“[o]nce ‘security module’ is properly construed as a smart card, [] ‘security
module’ does provide sufficiently definite structure (i.e., a smart card is
sufficiently definite structure) and thus 35 U.S.C. § 112, ¶ 6 should not be
invoked.” (Reply 2–3.)
We agree with Appellants that 35 U.S.C. § 112, sixth paragraph, does
not apply to the claimed “security module.” First, the term does not use the
word “means” and, therefore, presumptively § 112, sixth paragraph does not
apply. See Williamson, 792 F.3d at 1348. Second, based on the
Specification, a person of ordinary skill in the art would understand
“security module” to have a sufficiently definite meaning as the name for a
structure. Id. To be sure, the term “module” alone can be nonce-word
substitute for “means” and the prefix “security” does not impart structure to
the term. But the Specification in this case leads us to construe “security
module” to include a Subscriber Identity Module (SIM) card. For example,
paragraph 26 of the Specification states that “[t]he hosting terminal HT is
equipped with a security module or e-scheduler ES[, and t]he security
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module ES is comparable to a Subscriber Identity Module SIM card as
currently used in the field of mobile telephony.” (Emphasis added.) The
Specification, in paragraph 27, further states that “[t]he human interface
module SPED executes these transaction phases under the e-scheduler ES
control.” Therefore, the Specification indicates that one of ordinary skill in
the art would recognize that “a security module” refers to a structure (i.e.,
“Subscriber Identity Module SIM card as currently used in the field of
mobile telephony”) that performs a function.
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 1 and do not sustain the 35 U.S.C. § 112 rejection of claim
1. The Examiner relies on the same arguments for the rejection of claims 2–
8; therefore, we also do not sustain the 35 U.S.C. § 112 rejection of claims
2–8.

DECISION
We reverse the decision of the Examiner to reject claims 1–8.

REVERSED