Ex Parte Barton et alDownload PDFPatent Trial and Appeal BoardJan 30, 201713225898 (P.T.A.B. Jan. 30, 2017) 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. 13/225,898 09/06/2011 Loren Barton 30041.028 2546 32137 7590 02/01/2017 PATENT DOCKET CLERK COWAN, LIEBOWITZ & LATMAN, P.C. 114 WEST 47th STREET 21st FLOOR NEW YORK, NY 10036 EXAMINER MADAMBA, CLIFFORD B ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 02/01/2017 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): sxd@cll.com ram@cll.com dxo@cll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LOREN BARTON, ERIC CROZIER, GLENN CURTISS McCMILLEN, DAVID A. CRAKE, JOHN BAUER, GARRY R. LLOYD, and CHRISTINE ANN SCHUETZ Appeal 2014-001547 Application 13/225,8981 Technology Center 3600 Before, ANTON W. FETTING, JOSEPH A. FISCHETTI, and ROBERT J. SILVERMAN, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1—8 and 14—22. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 Appellants identify Barclays Bank PLC as the real party in interest. (Appeal Br. 1). Appeal 2014-001547 Application 13/225,898 THE INVENTION Appellants’ claims “relate[] to a method and system for electronic wallet access in a mobile transaction system, and more particularly to authentication or authorization mechanisms for secure transaction operations by a mobile device at an electronic point of sale location. (Spec. 11). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A mobile device configured as an electronic wallet for transaction operations from a plurality of mobile transaction accounts, comprising: a mobile device including a secure element, the secure element being an embedded secure memory chip, a Universal Integrated Circuit Card secure element, a peripheral memory device or a micro Secure Digital card, wherein the secure element includes a secure wallet application module associated with a payment account issuer; the secure wallet application module includes a plurality of transaction modules associated with the payment account issuer, the plurality of transaction modules storing and processing instructions in the secure element of the mobile device, the plurality of transaction modules operable to process mobile transaction operations with a respective transaction account, each transaction module configured to allow a transaction operation to be completed after an authentication process; and the secure wallet application module includes an authentication module associated with the payment account issuer, the authentication module is coupled to the plurality of transaction modules, the authentication module storing and processing instructions in the secure element of the mobile 2 Appeal 2014-001547 Application 13/225,898 device, the authentication module operable to verify a user input passcode and to respond to authentication requests from the plurality of transaction modules after the user input passcode is verified. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Zhu US 8,200,582 June 12,2012 Grigg US 2012/0197691 Aug. 2,2012 The following rejection is before us for review: Claims 1—8 and 14—22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Grigg in view of Zhu. FINDINGS OF FACT 1. We adopt the Examiner’s findings as set forth on pages 3—12 of the Final Action and pages 3—9 of the Answer. 2. The Specification describes, “Typically, application logic, applets, modules or the like in the portable electronic device for handling electronic wallet transactions require user validation by requesting the user to first enter a correct passcode to ensure the user really wants the transaction to be executed.” (Spec. 13). 3. Grigg discloses, The memory 320 may store any of a number of applications or programs which comprise computer-executable instructions/code executed by 3 Appeal 2014-001547 Application 13/225,898 the processor 310 to implement the functions of the mobile device 300 described herein. For example, the memory 320 may include such applications as a web browser application 322 and a mobile wallet application 400.” (Para. 94). 4. Grigg discloses The mobile wallet application 400 may be capable of performing one or more functions described above. These applications may also typically provide a graphical user interface (GUI) on the display 330. For instance, as described previously, the GUI for the mobile wallet application 400 may allow the user 110 to enter input to select a payment vehicle or to transmit to a contactless terminal 200. (Para. 94). ANALYSIS 35 U.S.C. § 103 Rejection The Appellants argued claim 1 as representative. Thus, the remaining independent claims 21 and 22 standing or falling with claim 1. See 37 C.F.R. §41.37(c)(l)(iv) (2015). Appellants argue, “Grigg discloses a system for making contactless financial transactions utilizing a mobile wallet. Grigg does not disclose a plurality of transaction modules operable to power mobile transaction operations with respect to a transaction account.” (Appeal Br. 12). The Examiner however found that Grigg discloses that “memory 320 may store any of a number of applications or programs which comprise 4 Appeal 2014-001547 Application 13/225,898 computer-executable instructions/code executed by the processor 310 to implement the functions of the mobile device 300. . . (Answer 3). We disagree with Appellants. We find that the Specification uses the term “module” or “application” interchangeably. (FF. 2). Therefore, we find that Grigg meets the claim requirement, because it discloses a plurality of applications which implement the functions of the device 300, e.g., the mobile wallet application 400. (FF. 3^4). Appellants next argue, The claimed plurality of transaction modules are operable to process mobile transaction operations with a respective transaction account. Each of the claimed transaction modules is configured to allow a transaction operation to be completed after an authentication process. Despite the Examiner's suggestion to the contrary, Grigg does not disclose such structure. Appeal Br. 13. This argument is not well taken because the Appellants are attacking the reference individually when the rejection is based on a combination of references, and the Examiner found that Zhu, and not Grigg, discloses the feature of allowing a transaction operation to be completed after an authentication process. Final Act. 5—6; see In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young, 403 F.2d 754, 757-58 (CCPA 1968). Appellants next argue that, “Zhu does not disclose such structure but merely discloses a password system and provides no suggestion for integrating such a system with a plurality of transaction modules as 5 Appeal 2014-001547 Application 13/225,898 claimed.” Appeal Br. 14. To the extent Appellants seek an explicit suggestion or motivation in the reference itself, this is no longer the law in view of the Supreme Court’s recent holding mKSRInt’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). Since the Examiner has provided some articulated reasoning with some rational underpinning for why a person with ordinary skill in the art would modify Grigg to use the pre-transaction authentication feature of Zhu in the mobile device (Answer 6), we are unpersuaded by Appellants’ argument here. Instead, we find the Examiner made clear articulation of findings for motivation relying, inter alia, on analogous art reasoning based on detailed features found in each of Zhu and Grigg. Id. Appellants further argue: The Examiner incorrectly attempts to equate the claimed plurality of transaction modules with the web browser and mobile wallet applications of Grigg. The web browser is not a transaction module “associated with the payment account issuer” nor is the web browser a transaction module “configured to allow a transaction operation to be completed after an authentication process”. (Appeal Br. 17). We disagree with Appellants because the Examiner found that the plural applications in the mobile device in Grigg are the modules and the mobile wallet application performs the transactions. (FF. 2; Answer 3—4). Among these applications are “web browser application 322 and a mobile wallet application 400.” (FF. 3—4). Thus, Appellants’ argument fails 6 Appeal 2014-001547 Application 13/225,898 because we find that the Examiner properly mapped the transaction module to the mobile wallet application, and not the web browser. Appellants also argue, Grigg also does not disclose an authentication module operable to respond to authentication requests from the plurality of transaction modules after the user input passcode is verified. As discussed above, this difference is acknowledged by the Examiner, but the Examiner turns to Zhu in an effort to remedy this deficiency. However, Zhu also does not disclose either a plurality of transaction modules as claimed or an authentication module as claimed. At most, Zhu describes a system for providing password access to an electronic wallet application. (Appeal Br. 17). This argument is not well taken because the Appellants are attacking the references individually when the rejection is based on a combination of references; the Examiner found that Grigg, and not Zhu, discloses the feature of using a plurality of modules (Final Act. 5) and Zhu discloses in an authentication application having “a key code to enter into a portable electronic device in order to be able to be able to access the portable electronic device and use the electronic wallet application.” Final Act. 6; see In re Keller, 642 F.2d at 426; In re Young, 403 F.2d at 757—58. 7 Appeal 2014-001547 Application 13/225,898 Concerning claims 3—6, Appellants argue the Examiner “does not explain how and why one of ordinary skill in the art would go about modifying Grigg so as to read upon the pending claims.” (Appeal Br. 20). We disagree with Appellants because Appellants here seek an explanation of how Zhu’s authentication would be bodily incorporated into the system of Grigg, which is not the test for obviousness. See In re Keller, 642 F.2d at 425. Moreover, we find no insufficiency with the Examiner’s findings for why one of ordinary skill in the art would make each prescribed modification to Grigg to meet the limitations recited in each of these claims as set forth on pages 7—8 of the Final Action. Appellants’ remaining arguments to claims 2—6 either repeat those arguments made against the rejection of claim 1 as discussed above, and/or merely point out what a claim recites without offering an analysis of the difference; they are thus deemed unpersuasive. The mere existence of differences between the prior art and the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976). The issue is “whether the difference between the prior art and the subject matter in question ‘is a difference] sufficient to render the claimed subject matter unobvious to one skilled in the applicable art.’” Dann, 425 U.S. at 228. “It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art.” In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991); see also In re Wiseman,__596 F.2d 1019, 1022 (CCPA 1979) (arguments must 8 Appeal 2014-001547 Application 13/225,898 first be presented to the board). A general allegation that the art does not teach any of the claim limitations is no more than merely pointing out the claim limitations. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. 37C.F.R. §41.37(c)(l)(vii). We also affirm the rejection of dependent claims 7, 8, 14—20, because Appellants have not challenged the rejection of such with any reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)). CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1—8 and 14— 22 under 35 U.S.C. § 103(a). DECISION The decision of the Examiner to reject claims 1—8 and 14—22 is affirmed. 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)(l)(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation