Ex Parte Johnson et al

Patent Trial and Appeal BoardDec 12, 2012

11641556 (P.T.A.B. Dec. 12, 2012)

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. 11/641,556 12/19/2006 William S. Johnson JR. 1615/6/2 8019 25297 7590 12/13/2012 JENKINS, WILSON, TAYLOR & HUNT, P. A. 3100 Tower Blvd. Suite 1200 DURHAM, NC 27707 EXAMINER VO, TUYEN KIM ART UNIT PAPER NUMBER 2887 MAIL DATE DELIVERY MODE 12/13/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WILLIAM S. JOHNSON, JR. and MING-LI LIU ____________ Appeal 2010-006632 Application 11/641,556 Technology Center 2800 ____________ Before ALLEN R. MacDONALD, JASON V. MORGAN, and LYNNE E. PETTIGREW, Administrative Patent Judges. PETTIGREW, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-44. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection for claim 1 pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2010-006632 Application 11/641,556 2 STATEMENT OF THE CASE Introduction According to Appellants, their invention “relates to acquiring payment device data from smart payment devices for effecting wireless payment transactions.” Spec. 1, ll. 11-12. In particular, the invention relates to “assembling standardized payment device data on a smart payment device for sending to a wireless payment reader to effect a wireless payment transaction.” Spec. 1, ll. 14-16. Claim 1 is illustrative of the invention: 1. A method of acquiring payment device data for a wireless payment transaction, the method comprising: (a) receiving, by a wireless smart payment device, a request from a wireless payment reader for standardized payment device data for effecting a wireless payment; (b) assembling, by the wireless smart payment device, payment device data elements into the standardized payment device data, wherein the standardized payment device data includes a personal account number and at least one other data element; and (c) sending, by the wireless smart payment device, to the wireless payment reader, the standardized payment device data. Rejections on Appeal The Examiner rejected claims 1-5, 7-9, 11-16, 18-20, 22, 23, 25, 26, 28-34, 36-38, and 40-44 under 35 U.S.C. § 102(b) as anticipated by Guthery (US 6,824,064 B2; issued Nov. 30, 2004, filed Dec. 6, 2000). The Examiner rejected claims 6, 10, 17, 21, 24, 27, 35, and 39 under 35 U.S.C. § 103(a) as being unpatentable over Guthery and Berardi (US 2004/0118930 A1; published June 24, 2004, filed June 30, 2003). Appeal 2010-006632 Application 11/641,556 3 Appellants’ Contentions 1. Appellants contend that the Examiner erred in rejecting independent claims 1 and 30 under 35 U.S.C. § 102(b) because Guthery does not disclose “assembling, by a wireless smart payment device, payment device data elements into standardized payment device data.” App. Br. 11-16. 2. Appellants contend that the Examiner erred in rejecting independent claims 11, 19, and 25 because Guthery fails to disclose similar limitations requiring assembly by a wireless smart payment device of payment device data elements into standardized payment device data. App. Br. 21-23, 26-28, 30-32. 3. Appellants contend that the Examiner erred in rejecting dependent claims 2-5, 7-9, 12-16, 18, 20, 22, 23, 26, 28, 29, 31-34, 36-38, and 40-44 under 35 U.S.C. § 102(b) for the same reasons set forth above with respect to the independent claims. Appellants further contend that Guthery fails to teach many of the additional limitations recited in these dependent claims. App. Br. 16-20, 23-26, 28-30, 33-36. 4. Appellants contend that the Examiner erred in rejecting claims 6, 10, 17, 21, 24, 27, 35, and 39 under 35 U.S.C. § 103(a) because the combination of Guthery and Berardi fails to teach or suggest assembling payment device data elements into standardized payment data by a wireless smart payment device. App. Br. 36-41. Issues on Appeal 1. Did the Examiner err in rejecting claims 1 and 30 under 35 U.S.C. § 102(b) because Guthery fails to teach assembling, by a smart Appeal 2010-006632 Application 11/641,556 4 payment device, payment device data elements into standardized payment device data? 2. Did the Examiner err in rejecting claims 6, 10, 17, 21, 24, 27, 35, and 39 under 35 U.S.C. § 103(a) because the combination of Guthery and Berardi fails to teach assembling, by a smart payment device, payment device data elements into standardized payment device data? ANALYSIS We agree with Appellants’ contention regarding independent claims 1 and 30. We find no evidence in the record that Guthery teaches “assembling, by a wireless smart payment device, payment device data elements into standardized payment device data.” The portions of Guthery relied on by the Examiner describe a smart card that may contain user- specific information such as an account number and that communicates with a host reader. Ans. 3, 13; Guthery, col. 6, ll. 35-46; col. 7, ll. 5-32. Guthery does not, however, disclose assembling an account number with at least one other payment device data element into standardized payment device data on the smart card, as required by the claim language. The only assembly described in Guthery involves assembling packets received by the smart card from the host into a request to send message for processing by the smart card, Guthery, col. 13, ll.15-52, which is not assembly of payment device data elements into standardized payment device data. Because Guthery fails to disclose “assembling, by a wireless smart payment device, payment device data elements into standardized payment device data,” we reverse the Examiner’s rejection of independent claims 1 and 30 under 35 U.S.C. § 102(b). We also reverse the Examiner’s § 102(b) Appeal 2010-006632 Application 11/641,556 5 rejection of independent claims 11, 19, and 25, which contain similar limitations, as well as the Examiner’s § 102(b) rejection of dependent claims 2-5, 7-9, 12-16, 18, 20, 22, 23, 26, 28, 29, 31-34, 36-38, and 40-44. We do not reach Appellants’ arguments directed to additional limitations in these claims. We also agree with Appellants’ contentions regarding the Examiner’s rejection of claims 6, 10, 17, 21, 24, 27, 35, and 39 under 35 U.S.C. § 103(a) over Guthery and Berardi. Like Guthery, Berardi fails to disclose assembly of payment device data elements at a wireless smart payment device. In fact, the Examiner does not rely on Berardi for this teaching, citing Berardi instead for other limitations. Ans. 11-12. Berardi thus does not bridge the gap between Guthery and the independent claims. Therefore, we reverse the Examiner’s § 103(a) rejection of claims 6, 10, 17, 21, 24, 27, 35, and 39. NEW GROUND OF REJECTION We now provide evidence that teaches the disputed limitations of claim 1. Sahota (US 7,761,374 B2; issued July 20, 2010, filed Aug. 18, 2003) teaches a method of acquiring standardized payment device data for a wireless payment transaction. Sahota, col. 2, ll. 38-43; col. 2, l. 66-col. 3, l.2. Specifically, Sahota teaches a wireless smart payment device that assembles payment device data elements into standardized payment device data (e.g., Track 1 or Track 2 data, col. 2, ll. 42-43), which includes a personal account number and at least one other data element (expiration date and service code), and sends the standardized payment device data to a wireless payment reader (a point of sale terminal), as recited in claim 1: Appeal 2010-006632 Application 11/641,556 6 FIG. 4 depicts an exemplary record format for transmitting payment data . . . from the payment device to the point of sale terminal. The record format of FIG. 4 is created by concatenating a primary account number 401 for the payment service, with an expiration date 402, and a service code 403. Sahota, col. 6, ll. 58-63. Thus, Sahota teaches steps (b) and (c) of claim 1. Appellants’ admitted prior art teaches step (a) of claim 1—receiving at a wireless smart payment device a request from a wireless payment reader for standardized payment device data for effecting a wireless transaction. Spec. 2, ll. 12-13, ll. 20-30. Thus, Sahota and Appellants’ admitted prior art together teach all the limitations of claim 1, and we conclude that claim 1 would have been obvious over the combination of Sahota and Appellants’ admitted prior art. We designate this as a new ground of rejection of claim 1 under 35 U.S.C. § 103(a). The Patent Trial and Appeal Board is a review body rather than a place of initial examination. We have made a rejection of claim 1 pursuant to our discretionary authority under 37 C.F.R. § 41.50(b). However, we have not reviewed the remaining claims to the extent necessary to determine whether these claims are unpatentable under 35 U.S.C. § 103(a). We leave it to the Examiner to evaluate the patentability of the remaining claims and determine the appropriateness of any further rejections. See MPEP 1213.02. CONCLUSION Appellants have established that the Examiner erred in rejecting claims 1-5, 7-9, 11-16, 18-20, 22, 23, 25, 26, 28-34, 36-38, and 40-44 under 35 U.S.C. § 102(b) as anticipated by Guthery and claims 6, 10, 17, 21, 24, 27, 35, and 39 as being unpatentable under 35 U.S.C. § 103(a). Appeal 2010-006632 Application 11/641,556 7 DECISION The Examiner’s rejections of claims 1-44 are reversed. Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claim 1 under 35 U.S.C. § 103(a). Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED 37 C.F.R. § 41.50(b) ELD