Ex Parte Teuwen et al

Patent Trial and Appeal BoardMay 11, 2018

13720848 (P.T.A.B. May. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 131720,848 12/19/2012 65913 7590 05/15/2018 Intellectual Property and Licensing NXPB.V. 411 East Plumeria Drive, MS41 SAN JOSE, CA 95134 FIRST NAMED INVENTOR Philippe Teuwen 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. 81531914US01 6721 EXAMINER HAMILTON, LALITA M ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 05/15/2018 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): ip.department.us@nxp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PHILIPPE TEUWEN and CEDRIC COLNOT Appeal2017-002404 Application 13/720,848 Technology Center 3600 Before LARRY J. HUME, CATHERINE SHIANG, and NORMAN H. BEAMER, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-20, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. Appeal2017-002404 Application 13/720,848 STATEMENT OF THE CASE Introduction According to the Specification, the present invention relates to digital wallet devices for virtual wallets. See generally Spec. 1. Claim 1 is exemplary: 1. A digital wallet device comprising: a wireless communications unit; a secure element including a cryptographic core, electrically coupled to the wireless communications unit, the secure element configured to communicate with an external mobile device via the wireless communications unit and securely pair with the external mobile device such that the secure element is able to store and synchronize a subset of a virtual wallet stored in a cloud using the external mobile device that is configured to communicate with the cloud; wherein the secure element is configured to communicate with a transaction terminal to perform a transaction. Reference and Rejection Claims 1-20 are rejected under pre-AIA 35 U.S.C. Â§ 102(e) as being anticipated by Rao (US 2014/0006277 Al; published Jan. 2, 2014). ANALYSIS Anticipation We have reviewed the Examiner's rejection in light of Appellants' contentions and the evidence of record. We concur with Appellants' argument that the Examiner erred in finding the cited portions of Rao disclose "a secure element including a cryptographic core ... wherein the 2 Appeal2017-002404 Application 13/720,848 secure element is configured to communicate with a transaction terminal," as recited in independent claim 1. 1 See App. Br. 6-7; Reply Br. 2. In the Final Action, the Examiner cites Rao' s paragraphs 93, 101, and 169--1 71 for the entire claim 1 and finds the "virtual wallet is stored in a cloud server and the mobile device communicates with the cloud," but does not specifically map the disputed limitations. Final Act. 5. In response to Appellants' argument that the Examiner has not adequately mapped the disputed limitations (Appeal Br. 6-7), the Examiner cites Rao's paragraphs 101, 103, 135, and 172, and asserts "Rao is ... similar to the Appellant's Specification." Ans. 4--7. 2 However, "similarity" is not the standard for anticipation; the Examiner still does not provide any mapping for the disputed limitations, and does not adequately explain how and why Rao discloses the disputed limitations. Further, we have reviewed the cited Rao portions, and they do not disclose "a secure element including a cryptographic core ... wherein the secure element is configured to communicate with a transaction terminal," as required by claim 1. Absent further explanation from the Examiner, we do not see how the cited Rao portions disclose the disputed claim limitations. 1 Appellants raise additional arguments. Because the identified issue is dispositive of the appeal, we do not reach the additional arguments. 2 The Examiner also asserts the cited Rao excerpts are "similar to" a definition of a cryptographic key. See Ans. 6-7. As pointed out by Appellants (Reply Br. 2), the Examiner's definition is unhelpful because it is for a "cryptographic key"-not the claimed "cryptographic core" (emphases added). We also agree with Appellants that one skilled in the art would readily understand the meaning of the claimed "cryptographic core." See Reply Br. 2. 3 Appeal2017-002404 Application 13/720,848 Because the Examiner fails to provide sufficient evidence or explanation to support the anticipation rejection, we are constrained by the record to reverse the Examiner's rejection of claim 1. Independent claim 20 recites a claim limitation that is substantively similar to the disputed limitation of claim 1. See claim 20. Therefore, for similar reasons, we reverse the Examiner's rejection of independent claim 20. We also reverse the Examiner's anticipation rejection of corresponding dependent claims 2-19. DECISION We reverse the Examiner's decision rejecting claims 1-20. REVERSED 4