Justin Howe

Patent Trials and Appeals Board

Nov 4, 2019

13693333 - (D) (P.T.A.B. Nov. 4, 2019)

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.
13/693,333 12/04/2012 Justin HOWE 0076412-000082 1837
21839 7590 11/04/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
POINVIL, FRANTZY
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
11/04/2019 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte JUSTIN HOWE
_____________

Appeal 2018-002748
Application 13/693,333
Technology Center 3600
______________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to finally reject claims 1, 3–7, 9–22, 24–28, and 30–46,
which constitute all the claims pending in this Application. Claims 2, 8, 23,
and 29 have been canceled (see App. Br. 1). We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Mastercard International Incorporated
(App. Br. 1).
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STATEMENT OF THE CASE
Appellant’s disclosed and claimed invention “relates to the providing
of financial transactions for the visually impaired, specifically using a
smartphone to provide audible information regarding transactions and
balance inquiries to a visually impaired user with minimal user instruction”
(Spec. ¶ 1; see also Abstract; claims 1, 18). More particularly, Appellant’s
disclosed and claimed invention concerns improving the ability of visually
impaired customers to verify transaction details such as a transaction
amount, so as to avoid being defrauded through over charging (Spec. ¶¶ 2,
3). “If a visually impaired consumer is defrauded when using their payment
card, they are usually unable to discover the discrepancy as to the payment
versus their expectation until a later time and/or date when they can verify
their payment history” (Spec. ¶ 3). Claims 1, 18, 22, and 39 are
independent. Method claims 1 and 18 are illustrative,2 and are reproduced
below with emphases added to the key disputed limitations:
1. A method for audibly communicating transaction
details, comprising:
capturing, by a reading unit of a mobile communication
device of a consumer, payment card data from a payment card;
processing, by a processing device of the mobile
communication device, the captured payment card data to
identify and store payment card details for a payment card
account;
storing, in a database of the mobile communication
device, the payment card details, as identified by the processing
device, for the payment card account, wherein the payment card

2 Device claims 22 and 39 recite commensurate, disputed limitations as
method claims 1 and 18, respectively, but in apparatus format (see claims
22, 39).
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details for the payment card account include at least a payment
card number;
receiving, by a receiving device of the mobile
communication device, from a transaction processing server,
transaction details included in an authorization request for a
financial transaction (i) that involves the payment card account
and (ii) which was processed by said transaction processing
server;
identifying, by the processing device of the mobile
communication device, a transaction amount included in the
transaction details received by the receiving device from the
transaction processing server;
causing, by the processing device of the mobile
communication device, an audio transmitter of the mobile
communication device to audibly emit at least the transaction
amount of the financial transaction that was included in the
transaction details received by the receiving device of the
mobile communication device and identified by the processing
device of the mobile communication device;
receiving, by the processing device of the mobile
communication device, a verbal command, from the consumer
of the mobile communication device, requesting remedial action
when at least the audible emitted transaction amount of the
financial transaction is being disputed; and
transmitting, by a transmitting device of the mobile
communication device, to the transaction processing server, at
least one of a chargeback request and a credit request in
response to the verbal command received from the consumer.

App. Br. 11 (Claims Appendix) (emphases added).
18. A method for audibly communicating account
information, comprising:
capturing, by an imaging device of a mobile
communication device of a consumer, an image of a payment
card;
processing, by a processing device of the mobile
communication device, the captured image of the payment card
to identify payment card details from the captured image,
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wherein the payment card details include at least a payment
card number;
storing, in a database of the mobile communication
device, the identified payment details;
transmitting, by a transmitting device of the mobile
communication device, the identified payment card details to a
transaction processing server;
receiving, by a receiving device of the mobile
communication device, from the transaction processing server,
(i) account details for a financial account associated with the
payment card, the account details including at least an account
balance, and (ii) location information for nearby automated
teller machines (ATM) from which the consumer may
withdraw funds from the account balance; and
audibly emitting, by an audio transmitter of the mobile
communication device, at least (i) the account balance for the
financial account and (ii) directions to an ATM at a location
closest to the mobile communication.

App. Br. 14 (Claims Appendix) (emphasis added).
The Examiner’s Rejections
(1) The Examiner rejected claims 1, 3–7, 9–17, and 43 under
35 U.S.C. § 103(a) as being unpatentable over Phillips et al. (US
2012/0310760 A1; published Dec. 6, 2012; filed Sept. 1, 2011) (hereinafter,
“Phillips”), Yankovich et al. (US 2012/0234912 A1; published Sept. 20,
2012) (hereinafter, “Yankovich”), and Mark et al. (US 2011/0184853 A1;
published July 28, 2011) (hereinafter, “Mark”). Final Act. 2–10; Ans. 3–10.
With regard to independent claim 1 (the only independent claim in this
rejection), the Examiner takes Official Notice as to (i) “[m]ethods for
obtaining or reading financial card information” (Final Act. 3; Ans. 3); (ii)
“that during most purchase transactions or financial transactions, a receipt is
usually generated” (Final Act. 4; Ans. 5); and (iii) mobile phones/devices are
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two-way communication devices capable of (a) answering incoming
messages such as a dispute, chargeback, or credit request, and therefore, (b)
receiving verbal commands from the consumer of the mobile
communication device (see Final Act. 5–6).
(2) The Examiner rejected claims 18–22, 24–28, 30–42, and 44–46
under 35 U.S.C. § 103(a) as being unpatentable over Yankovich, Phillips,
and Mark. Final Act. 10–26; Ans. 10–24.
With regard to independent claim 18, the Examiner takes Official
Notice as to (i) “storing payment card data in the memory of a mobile phone
card” (Final Act. 11; Ans. 11), because “users usually take pictures using a
mobile phone” and “pictures are usually stored in a memory unit of the
mobile phone” (Final Act. 11; Ans. 10); (ii) “providing an address and
direction to a user based on the location of the mobile device of the user”
(Final Act. 13, 24), and “providing mapping directions to a location or a
merchant’s store or ATM” (Ans. 27). The Examiner cites Eckhoff-
Hornback et al. (US 8,065,353 B2; issued Nov. 22, 2011) and Schilit et al.
(US 8,626,135 B1; issued Jan. 7, 2014; filed Oct. 17, 2012) as evidence to
show “audible mapping direction[s] to a location,” “an ATM[,] or store
location” (Ans. 27), without citing any specific portions of either reference.
With regard to independent claim 22, the Examiner takes Official
Notice as to (i) “storing payment card data in the memory of a mobile phone
card,” because “users usually take pictures using a mobile phone” and
“pictures are usually stored in a memory unit of the mobile phone” (Final
Act. 15; Ans. 14); and (ii) mobile phones/devices are two-way
communication devices capable of (a) answering incoming messages such as
a dispute, chargeback, or credit request, and therefore, (b) receiving verbal
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commands from the consumer of the mobile communication device (see
Final Act. 17).
With regard to independent claim 39, the Examiner takes Official
Notice as to (i) “storing payment card data in the memory of a mobile phone
card,” because “users usually take pictures using a mobile phone” and
“pictures are usually stored in a memory unit of the mobile phone” (Final
Act. 23; Ans. 21); (ii) “providing an address and direction to a user based on
the location of the mobile device of the user” (Final Act. 24), and “providing
mapping directions to a location or a merchant’s store or ATM” (Ans. 27).
The Examiner cites Eckhoff-Hornback and Schilit as evidence to show
“audible mapping direction[s] to a location,” “an ATM[,] or store location”
(Ans. 27), without citing any specific portions of either reference.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs (App. Br. 2–
10; Reply Br. 4–10), the Examiner’s Final rejection (Final Act. 2–26) as
modified by the Examiner’s Answer (Ans. 3–24), and the Examiner’s
response (Ans. 24–27) to Appellant’s arguments in the Appeal Brief.
Claims 1 and 22
As to claims 1 and 22, Appellant contends (Appeal Br. 4–7; Reply Br.
2–7) the Examiner has not adequately shown that any of the cited references
disclose receiving a verbal command for remedial action from a consumer of
a communication device. More specifically, Appellant argues that “the cited
portions of the documents (e.g., paragraphs [0046], [0048], [0060] of
Phillips; abstract and figure 2 of Yankovich; and paragraphs [0034], [0035],
[0042] and [0044]) of Mark) are devoid of disclosure regarding a mobile
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communication device receiving a ‘verbal command’ provided by a
consumer requesting remedial action” (Reply Br. 4), therefore, “the
Examiner’s approach and conclusion are legal error” (Reply Br. 4).
Appellant points out that Phillips uses buttons or icon selection using
physical buttons (button 114, switch 116, keys 118 and 120) or uses a touch
screen (Reply Br. 5 (citing Phillips ¶¶ 32, 35, 38); see also Figs. 1, 6), which
is in direct contrast to the heart of Appellant’s invention, which is to allow
users to provide input/commands without physical interaction to dispute a
transaction. Appellant also points out that Yankovich only creates digital
images of gift cards using received text, not verbal commands (Reply Br. 5–
6);3 and Mark discloses a user can reply to a message with “a notification
that the transaction is unauthorized and/or the amount of the transaction is
incorrect” (Reply Br. 6 (citing Mark ¶ 48)),4 but “provides no explanation as
to what a ‘notification’ could entail,” and is silent as to issuing/receiving a
verbal command from the user at the communication device (Reply Br. 6).
Finally, Appellant contends that even if Phillips, Yankovich, and
Mark “could be properly combined as suggested, the hypothetical
combination would still not teach the combination of features found in
[claims 1 and 22]” (Reply Br. 7). We agree.

3 Yankovich discloses reading gift card information using a computing
system 1200, including a display 1210, alphanumeric input device 1212 or
keyboard, a user interface or mouse 1214, and a signal generation device or
speaker 1218, but is silent as to any microphone or verbal input device (see
Fig. 12; ¶ 60).
4 Mark discloses “providing audio messages relating to financial
transactions” to users (Abstract; see ¶¶ 42, 44; see also Fig. 1).
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The Examiner takes Official notice that mobile phones/devices are
two-way communication devices capable of (a) answering incoming
messages such as a dispute, chargeback, or credit request, and therefore, (b)
receiving verbal commands from the consumer of the mobile
communication device (see Final Act. 5–6, 17). Notably, the Examiner has
removed these assertions of Official Notice regarding the disputed limitation
in claims 1 and 22 in the restatement of the rejection in the Answer (see Ans.
5, 16), and reasons that receiving verbal commands for command inquiry or
response would have been obvious when using a phone, and could even be
done by making a direct call to financial institution (Ans. 25–26).
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n v.
State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation
marks and citation omitted); see Synopsys, Inc. v. Mentor Graphics Corp.,
814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an administrative
agency, the PTAB “must articulate logical and rational reasons for [its]
decisions” (internal quotation marks and citation omitted)). We will not
resort to speculation or assumptions to cure the deficiencies in the
Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967).
In this light, the Examiner has not articulated a satisfactory
explanation as to how/why the combination of Phillips, Yankovich, and
Mark teaches or suggests the disputed limitation in claims 1 and 22 of
“receiving, by the processing device of the mobile communication device, a
verbal command from the consumer of the mobile communication device,
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requesting remedial action when at least the audible emitted transaction
amount of the financial transaction is being disputed.” As a result, we agree
with Appellant (Appeal Br. 4–7; Reply Br. 2–7) that the Examiner has not
adequately shown that any of the cited references disclose receiving a verbal
command for remedial action from a consumer of a communication device.
At best, the Examiner leaves us to speculate as to how or why one of
ordinary skill in the art would modify the combination of Phillips,
Yankovich, and Mark to meet the disputed “verbal command” limitation
recited in claims 1 and 22. We will not resort to speculation or assumptions
to cure the deficiencies in the Examiner’s fact finding and reasoning. See
Warner, 379 F.2d at 1017; Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI
1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a
process whereby the examiner . . . invite[s] the [B]oard to examine the
application and resolve patentability in the first instance.”). As such, based
on the record before us, we find that the Examiner (i) improperly relies upon
the combination of Phillips, Yankovich, and Mark, to teach or suggest
disputed claim limitation; and thus, (ii) has not properly established factual
determinations and articulated reasoning with a rational underpinning to
support the legal conclusion of obviousness for claims 1 and 22, resulting in
a failure to establish a prima facie case of obviousness.
Based on the record before us, we cannot sustain the Examiner’s
obviousness rejections of independent claims 1 and 22, as well as claims 3–
7, 9–17, 24–28, 30–38, 43, and 45 depending respectively therefrom.
Claims 18 and 39
With regard to independent claim 18, the Examiner takes Official
Notice as to “providing an address and direction to a user based on the
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location of the mobile device of the user” (Final Act. 13), and “providing
mapping directions to a location or a merchant’s store or ATM” (Ans. 27).
With regard to independent claim 39, the Examiner takes Official
Notice as to “providing an address and direction to a user based on the
location of the mobile device of the user” (Final Act. 24), and “providing
mapping directions to a location or a merchant’s store or ATM” (Ans. 27).
As to claims 18 and 39, rejected over the same combination of
references as claim 1, but in a different order (now Yankovich, Phillips, and
Mark), Appellant persuasively contends (App. Br. 8–9; Reply Br. 7–10) that
the Examiner’s reliance on Official Notice is improper. We agree.
Appellant is correct (see App. Br. 8–9) that the Examiner failed to
provide evidentiary support for the officially noticed facts in the Final
Rejection and Advisory Action mailed March 31, 2017. And, although the
Examiner cites Eckhoff-Hornback and Schilit in the response to Appellant’s
arguments in the Appeal Brief as evidence to show “audible mapping
direction[s] to a location,” “an ATM[,] or store location” (Ans. 27),
Appellant is also correct that “the Examiner does not cite to any particular
portions of these newly cited documents in support [of the Official Notice]”
(Reply Br. 10).
An adequate traverse of the Examiner’s taking of Official Notice must
contain sufficient information or argument to create on its face a reasonable
doubt regarding the circumstances justifying the Examiner’s notice of what
is well known to one of ordinary skill in the art. In re Boon, 439 F.2d 724,
728 (CCPA 1971). As to the rebuttal of the Examiner’s Official Notice
required by Appellant, the MPEP sets forth the following:
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C. If Applicant Challenges a Factual Assertion as Not
Properly Officially Noticed or Not Properly Based Upon
Common Knowledge, the Examiner Must Support the
Finding With Adequate Evidence
To adequately traverse such a finding, an applicant must
specifically point out the supposed errors in the examiner’s
action, which would include stating why the noticed fact is not
considered to be common knowledge or well-known in the art.
See 37 CFR [§] 1.111(b). See also Chevenard, 139 F.2d at 713 .
. . (“[I]n the absence of any demand by appellant for the
examiner to produce authority for his statement, we will not
consider this contention.”). A general allegation that the claims
define a patentable invention without any reference to the
examiner’s assertion of official notice would be inadequate. If
applicant adequately traverses the examiner’s assertion of
official notice, the examiner must provide documentary
evidence in the next Office action if the rejection is to be
maintained. See 37 CFR [§]1.104(c)(2). See also Zurko, 258
F.3d at 1386 . . . (“[T]he Board [or examiner] must point to
some concrete evidence in the record in support of these
findings” to satisfy the substantial evidence test). If the
examiner is relying on personal knowledge to support the
finding of what is known in the art, the examiner must provide
an affidavit or declaration setting forth specific factual
statements and explanation to support the finding. See 37 CFR
[§] 1.104(d)(2).
MPEP § 2144.03(C) (9th ed., rev. 08.2017, Jan. 2018) (underlining and
italicized emphases added). Therefore, in the instant case, Appellant has
met the required burden in both briefs (see App. Br. 8–9; Reply Br. 7–10), as
discussed above.
As to the requirements of the Examiner’s statement of Official Notice
and support to be provided thereof, the MPEP sets forth the following:
B. If Official Notice Is Taken of a Fact, Unsupported by
Documentary Evidence, the Technical Line of Reasoning
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Underlying a Decision To Take Such Notice Must Be Clear
and Unmistakable
In certain older cases, official notice has been taken of a fact
that is asserted to be “common knowledge” without specific
reliance on documentary evidence where the fact noticed was
readily verifiable, such as when other references of record
supported the noticed fact, or where there was nothing of record
to contradict it. See In re Soli, 317 F.2d 941, 945-46, . . .
(CCPA 1963) (accepting the examiner’s assertion that the use
of “a control is standard procedure throughout the entire field of
bacteriology” because it was readily verifiable and disclosed in
references of record not cited by the Office); In re Chevenard,
139 F.2d 711, 713 . . . (CCPA 1943) (accepting the examiner’s
finding that a brief heating at a higher temperature was the
equivalent of a longer heating at a lower temperature where
there was nothing in the record to indicate the contrary and
where the applicant never demanded that the examiner produce
evidence to support his statement). If such notice is taken, the
basis for such reasoning must be set forth explicitly. The
examiner must provide specific factual findings predicated on
sound technical and scientific reasoning to support the
conclusion of common knowledge. See Soli, 317 F.2d at 946 . . .
; Chevenard, 139 F.2d at 713 . . . . The applicant should be
presented with the explicit basis on which the examiner regards
the matter as subject to official notice so as to adequately
traverse the rejection in the next reply after the Office action in
which the common knowledge statement was made.

MPEP § 2144.03(B) (9th ed., rev. 08.2017, Jan. 2018) (underlining and
italicized emphases added).
In the instant case, the Examiner has failed to produce specific
evidence that either reference cited as supporting the Official Notice teaches
“directions to an ATM at a location closest to the mobile communication” as
required by claims 18 and 39 (claims 18, 39) (emphasis added). And, even
if Appellant is correct that:
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while Eck[h]off-Hornback may disclose displaying directions
from a customer's current location to a nearby store (see, e.g.,
col. 6, 11. 47-53; col. 8, 11. 14-20), and the Schilit document
may disclose that a kiosk device may send, to a computing
device, a digital item including directional information, neither
of these document remedy the deficiencies of Phillips,
Yankovich and Mark for failing to disclose or suggest receiving,
from a transaction processing server, location information for
nearby ATMs (i.e., more than one) from which the consumer
may withdraw funds, and audibly emitting directions to the
closest ATM, as recited in the ordered combination of features
in the instant claims

(Reply Br. 10); the Examiner’s finding that “providing mapping
directions to a location or a merchant’s store or ATM” is “old and
well-practiced in the art before the Appellant’s claimed invention”
(Ans. 27), does not adequately support a finding that the missing
limitation is readily verifiable and disclosed in references of record.
This is because no portions of the references cited in support of the
Official Notice statement are provided by the Examiner, and the
Examiner has not presented Appellant with an explicit basis, nor
provided “specific factual findings predicated on sound technical and
scientific reasoning to support the conclusion of common knowledge”
(MPEP § 2144.03 (citing Soli, 317 F.2d at 946; Chevenard, 139 F.2d
at 713)). And, notably, Appellant is correct that the Examiner’s
Official Notice does not teach or suggest the salient and disputed
limitation recited in claims 18 and 39 that the audible emission
contain “directions to an ATM at a location closest to the mobile
communication” (claims 18, 39) (emphases added).
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Therefore, the Examiner has not provided “a satisfactory
explanation for its action including a ‘rational connection between the
facts found and the choice made’” (see Motor Vehicle Mfrs. Ass’n,
463 U.S. at 43), nor has the Examiner “articulate[d] logical and
rational reasons for” the findings regarding Official Notice (see
Synopsys, Inc., 814 F.3d at 1322).
In view of the foregoing, Appellant’s contentions (App. Br. 8–9;
Reply Br. 7–10) that the Examiner’s reliance on Official Notice is improper
are persuasive. Thus, Appellant has shown the Examiner erred in rejecting
claims 18 and 39, as well as claims 19–21, 40–42, 44, and 46 depending
respectively therefrom as being unpatentable under 35 U.S.C. § 103(a) over
Yankovich, Phillips, and Mark.
Based on the record before us, we cannot sustain the Examiner’s
obviousness rejections of independent claims 18 and 39, as well as claims
19–22, 24–28, 30–38, 40–42, and 44–46 depending respectively therefrom.

CONCLUSION
For all of the reasons above, we hold as follows:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7, 9–
17, 43
103(a) Phillips, Yankovich,
Mark

1, 3–7, 9–
17, 43
18–22, 24–
28, 30–42,
44–46
103(a) Yankovich, Phillips,
Mark
18–22, 24–
28, 30–42,
44–46
Overall
Outcome
1, 3–7, 9–
22, 24–28,
30–46

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REVERSED