Ex Parte Sievel et al

Patent Trial and Appeal Board

Apr 28, 2016

12648525 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/648,525 12/29/2009 Mark E. Sievel
919 7590 05/02/2016
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT.
37 EXECUTIVE DRIVE
MSC 01-152
DANBURY, CT 06810
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
G-550 3970
EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
iptl@pb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKE. SIEVEL, CHRISTOPHER S. KALLAS,
JOSEPH P. TOKARSKI, and NIRA VI. PRA VASI
Appeal2013-010783 1
Application 12/648,5252
Technology Center 3600
Before ROBERT L. KINDER, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 5-12, and 14--18. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("Br.," filed Dec. 17,
2012), and the Examiner's Answer ("Ans.," mailed May 24, 2013) and Final
Office Action ("Final Act.," mailed July 20, 2012).
2 Appellants identify Pitney Bowes Inc. as the real party in interest. Br. 2.
Appeal2013-010783
Application 12/648,525
CLAIMED INVENTION
Appellants' claimed invention "relates to kiosks in which payments
can be made using payment cards, such as credit or debit cards, and in
particular to a postal services kiosk having payment card security for
processing payments using payments cards that simplifies compliance with
data security requirements and standards relating to payment cards."
Spec. ,-r 1.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. An apparatus for facilitating payment for goods or services
using a payment card, comprising:
a computerized sales transaction device structured to
determine a monetary amount for a sale of goods or services, the
computerized sales transaction device not meeting Payment Card
Industry Data Security Standards requirements relating to
security of payment card information; and
a secure card activated terminal device in electronic
communication \'l1ith the computerized sales transaction device,
the secure card activated terminal device meeting Payment Card
Industry Data Security Standards requirements relating to
security of payment card information;
wherein the computerized sales transaction device is
structured to electronically send the monetary amount for the sale
to the secure card activated terminal device, wherein the secure
card activated terminal device is structured to: (i) securely read
sensitive payment card information from the payment card, (ii)
responsive to receiving the determined monetary amount and the
read sensitive payment card information, automatically request
in a secure manner authorization for the sale from a third party
using the determined monetary amount and the obtained
sensitive payment card information, (iii) receive in a secure
manner authorization approval for the sale from the third party,
and (iv) in response to receiving the authorization approval,
electronically send purchase authorization approval information
2
Appeal2013-010783
Application 12/648,525
to the computerized sales transaction device, and wherein the
computerized sales transaction device never receives the
sensitive payment card information.
REJECTIONS
Claims 1-3, 5-12, and 14--18 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellants regard as the invention.
Claims 1-3, 5, 7, 8, 10-12, 14, 16, and 17 are rejected under 35
U.S.C. § 103(a) as unpatentable over Killian (US 2009/0266884 Al, pub.
Oct. 29, 2009), Abeyta (US 2004/0204082 Al, pub. Oct. 14, 2004), and
Official Notice. 3
Claims 6 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Killian, Abeyta, Official Notice, and Sansone (US 5,970, 150, iss. Oct.
19, 1999).
Claims 9 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Killian, Abeyta, Official Notice, and Currey (US 2005/0127165 Al,
pub. June 16, 2005).
ANALYSIS
Indefiniteness
Claim 1 is directed to an apparatus for facilitating payment for goods
or services using a payment card and recites that the apparatus comprises,
inter alia, a secure card activated terminal device "meeting Payment Card
3 In response to Appellants' traversal of Official Notice (App. Br. 9), the
Examiner takes Official Notice as evidenced by Choudhary (US
2010/0198636, pub. Aug. 5, 2010). See Ans. 2, 4.
3
Appeal2013-010783
Application 12/648,525
Industry Data Security Standards requirements." Claim 10 recites similar
language. The Examiner maintains that independent claims 1 and 10 are
indefinite because neither "Payment Card Industry Data Security Standards"
nor "Payment Card Industry Data Security Standards requirements" is
lexicographically defined in the Specification. Final Act. 2-3. The
Examiner asserts that it is not clear what requirements need to be met to
meet the claim language. Id. at 3.
The test for definiteness under 35 U.S.C. § 112, second paragraph is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." See Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citation omitted).
Here, a person of ordinary skill in the art would reasonably understand from
the claim language, when read in light of the Specification, that "meeting
Payment Card Industry Data Security Standards requirements," as recited in
claim 1 and similarly recited in claim 10, means complying with the six key
data security standards requirements as set forth at paragraph 3 of
Appellants' Specification. See Spec. i-f 3; see also, e.g., Ex Parte Charles R.
McClary, Appeal No. 2009-001300, 2010 WL 1991475, at *2 (May 17,
2010) (reversing an indefinite rejection of the claim language "ARINC 615
protocol" because the protocol, which was specifically recited in the claims,
was considered to be an industry standard in the field of avionics and also
finding that the standard in effect as of the filing date of Appellant's
application could readily be determined).
4
Appeal2013-010783
Application 12/648,525
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 112, second paragraph of independent claims 1 and 10, and claims 2, 3, 5-
9, 11, 12, and 14--18, which depend therefrom.
Obviousness
Independent claim 1, and dependent claims 2, 3, 5, 7, and 8
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claim 1under35 U.S.C. § 103(a) because the combination of
Killian and Abeyta does not disclose or suggest a secure card activated
terminal device, as recited in claim 1. Br. 6-11.
The Examiner finds that a mobile telephone, as disclosed by Killian,
corresponds to the claimed secure card activation device, as recited in claim
1. Final Act. 4--5 (citing Killian Figs. 2, 10, i-fi-145, 79, 107, 143-146).
Killian relates to a payment card system that consummates a purchase of
goods or services using a payment transaction initiated from a customer's
device (e.g., a mobile telephone). Killian i128. The mobile phone interacts
with an RFID/NFC proximity reader of a point-of-sale ("POS") terminal to
provide a payment card account number for a purchase transaction at the
POS terminal. Id. i1 45. The mobile telephone may adopt with a "PayPass"
standard for contactless payment applications. Id.
However, a mobile telephone, as disclosed by Killian, does not
disclose or suggest a secure card activated terminal device, as recited in
claim 1. For example, a mobile phone, as disclosed by Killian, is a device
that is activated when in proximity to an RFID/NFC proximity reader, not a
device activated by a "[payment] card." Moreover, Killian does not disclose
that the mobile phone "securely read[ s] sensitive payment card information
from the payment card," as recited in claim 1, but rather generates a request
5
Appeal2013-010783
Application 12/648,525
for a payment transaction that may include a customer identifier, such as a
customer's payment card account. See Killian i-f 79.
In addition, a mobile phone, as disclosed by Killian, is not a "secure"
card activated terminal device, as the term would be understood by those of
ordinary skill in view of the Specification. See Spec. i-f 13 ("the term
'secure' in reference to the secure [card activated terminal] shall mean that
any attempt to open or otherwise access the content of the secure [card
activated terminal] will result in the [card activated terminal] erasing its
cryptographic keys and any cardholder data that it stores.")
The Examiner acknowledges that Killian fails to disclose the secure
card activated terminal device "is structured to: (i) securely read sensitive
payment card information from the payment card," as recited in claim 1.
Final Act. 5---6. But the Examiner relies on Abeyta to cure the deficiency.
Id. at 6-7. In particular, the Examiner finds that Abeyta discloses securely
obtaining sensitive payment card information from a payment card and
sending purchase authorization approval, once received, to the computerized
sales transaction device. Id. at 6 (citing Abeyta, Abstract, i-f 23).
Abeyta discloses that a transaction device, such as a point-of-sale
credit card terminal, scans a financial card in the course of a transaction
signal to read data and send the data to a digital phone. Id. Abstract, see also
id. i-f 23. The phone transmits the data over a wireless network to a remote
financial authority. Id. The data transmitted between the phone and
financial authority can be encrypted. Id.
The Examiner determines that it would have been obvious to one of
ordinary skill at the time the invention was made
6
Appeal2013-010783
Application 12/648,525
to modify the apparatus of Killian in the Killian/official notice
combination by the features of Abeyta and in particular to
include Abeyta's payment card in Killian's feature of securely
obtain sensitive payment card information and to include in
Killian's secure card activated terminal device Abeyta's
structure to electronically send information, and to include in
Killian/ Abeyta' s secure activated terminal device.
Final Act. 6-7.
However, the Examiner does not explain how, and we fail to see how,
a mobile telephone, as disclosed by Killian, would be modified to securely
read sensitive payment card information from the payment card based on
Abeyta's disclosure of a transaction device that scans a financial card. The
Examiner also provides no evidence or persuasive reasoning to explain how
the modified mobile telephone would disclose or suggest a secure card
activated terminal device, as that term would be understood by one of
ordinary skill in the art in view of the Specification. For example, we do not
find any disclosure or suggestion that an attempt to open or otherwise access
the content of the card activated terminal would result in the terminal erasing
its cryptographic keys and any cardholder data that it stores.
After careful consideration of the respective positions of the Examiner
and Appellants, we find the Examiner's obviousness conclusion is not
supported by a preponderance of the evidence. Therefore, we do not sustain
the Examiner's rejection of claim 1 and dependent claims 2, 3, 5, 7, and 8
under 35 U.S.C. § 103(a).
Independent claim 10, and dependent claims 11, 12, 14, 16, and 17
Independent claim 10 includes language substantially similar to the
language of claim 1. Therefore, we do not sustain the Examiner's rejection
under 35 U.S.C. § 103(a) of independent claim 10, and claims 11, 12, 14, 16,
7
Appeal2013-010783
Application 12/648,525
and 17, which depend therefrom, for the same reasons set forth with respect
to claim 1.
Dependent claims 6, 9, 15, and 18
Each of claims 6, 9, 15, and 18 depends, directly or indirectly, from
claims 1 or 10. Neither the rejection of claims 6 and 15 based on Sansone,
in combination with Killian, Abeyta, and Official Notice, nor the rejection of
claims 9 and 18 based on Currey, in combination with Killian, Abeyta, and
Official Notice, cures the deficiency in the Examiner's rejection of claims 1
and 10. Therefore, we do not sustain the Examiner's rejections of claims 6,
9, 15, and 18 under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 1-3, 5-12, and 14--18 under 35
U.S.C. § 112, second paragraph, is reversed.
The Examiner's rejections of claims 1-3, 5-12, and 14--18 under
35 U.S.C. § 103(a) are reversed.
REVERSED
8