Ex Parte Barton et al

Patent Trial and Appeal Board

Jan 30, 2017

13225898 (P.T.A.B. Jan. 30, 2017)

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).
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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
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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
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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
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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
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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
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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.
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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
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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
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