THE TORONTO DOMINION BANK

Patent Trials and Appeals Board

May 13, 2021

2020005709 (P.T.A.B. May. 13, 2021)

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.
14/464,632 08/20/2014 Robert Hayhow G4144-00230 3553
39290 7590 05/13/2021
Duane Morris LLP - Washington, D.C.
505 9th Street N.W.
Suite 1000
Washington, DC 20004
EXAMINER
CASTILHO, EDUARDO D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/13/2021 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):
DC_IPDocketing@duanemorris.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT HAYHOW, IGOR ELKHINOVICH, and
JEFFREY AARON ECKER
Appeal 2020-005709
Application 14/464,632
Technology Center 3600
Before JAMES W. DEJMEK, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING

Appellant has filed a Request for Rehearing under 37 C.F.R. § 41.52
for reconsideration of our Decision on Appeal dated February 19, 2021
(“Decision”). In that Decision, we affirmed the Examiner’s Final Rejection
of claim 8 under 35 U.S.C. § 112(a) and claims 2–6, 8, 10–17, and 19–24
under 35 U.S.C. § 103. For the reasons set forth below, the request for
rehearing is denied.
ANALYSIS
We have considered the arguments presented by Appellant in the
Request for Rehearing (“Req. Reh’g”), but we are not persuaded that the
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Board misapprehended or overlooked any points in issuing the Decision. We
provide herein additional explanations, but decline to change our decision in
view of Appellant’s arguments.
A request for rehearing is properly limited to previously addressed
matters that were misapprehended or overlooked. See 37 C.F.R. § 41.52(a).
It is not an opportunity to further develop the record through the introduction
of new evidence and/or arguments. Nor is it an opportunity to disagree with
the Board’s assessment of the arguments or to bolster an insufficient
argument already made. The applicable standard for a Request for Rehearing
is set forth in 37 C.F.R. § 41.52(a)(1), which provides in relevant part, “[t]he
request for rehearing must state with particularity the points believed to have
been misapprehended or overlooked by the Board.”
The Board has not misapprehended or overlooked any points or
arguments originally raised by Appellant with regard to the Examiner’s
obviousness and written description rejections. The Board carefully
considered Appellant’s previous arguments.
Moreover, Appellant has not shown “good cause” for the Board to
consider the new arguments presented in the Request for Rehearing. In the
absence of a showing of good cause, we decline to consider new arguments
raised for the first time in the Rehearing Request. See 37 C.F.R.
§ 41.37(c)(1)(iv) (second sentence); In re Hyatt, 211 F.3d 1367, 1373 (Fed.
Cir. 2000) (noting that an argument not first raised in the brief to the Board
is waived on appeal); Ex parte Borden, 93 USPQ2d 1473, 1477 ( BPAI
2010) (informative) (“[p]roperly interpreted, the Rules do not require the
Board to take up a belated argument that has not been addressed by the
Examiner, absent a showing of good cause.”).
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Although no further response from the Board is necessary, we
nevertheless provide the following explanation for emphasis.
With regard to the obviousness rejection of claims 2–6, 8, 10–17 and
19–24 under 35 U.S.C. § 103, Appellant argues that:
(1) The evidence of record is insufficient to demonstrate that the skilled
person would have arrived at the claimed sequence based on the
combination of the cited references (Reh’g Req. 2–7, 13–19);
(2) The Board improperly reversed the burden of persuasion upon
Appellant (Reh’g Req. 7–9, 19–21);
(3) The Board failed to consider all elements of the claimed solution
(Reh’g Req. 9–11);
(4) The Board improperly considered the EMV4 prior art reference under
the primary obviousness rejection (Reh’g Req. 11–12);
(5) The Board relied improperly on jurisprudence distinguishable from
the claim rejection (Reh’g Req. 21–25); and
(6) The Board’s conclusion is unsupported by substantial evidence
(Reh’g Req. 25–26).
Regarding the rejection of claim 8 for lack of written description
under 35 U.S.C. § 112(a), Appellant argues:
(1) The Board improperly imported a requirement for verbatim support
into the possession analysis (Reh’g Req. 27–29);
(2) The Board improperly reversed the burden of persuasion upon
Appellant (Reh’g Req. 29–30); and
(3) The evidence of record is insufficient to demonstrate that the skilled
person would have determined that the inventors were not in
possession of the claimed subject matter (Reh’g Req. 31–33).

Rejection of Claims 2–6, 8, 10–17, and 19–24 Under 35 U.S.C. § 103
Appellant argues in two sections of the Request for Rehearing that the
evidence of record “is insufficient to demonstrate that the skilled person
would have arrived at the claimed sequence based on the combination of the
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cited references.” See Reh’g Req. 2–7, 13–19. Appellant first argues that the
evidence of record is insufficient to demonstrate that the skilled person
would have arrived at the claimed sequence in the following limitations:
a payment terminal receiving a preliminary authorization
amount;
the payment terminal providing to a payment card
interfaced with the payment terminal a predetermined
authorization amount different than the preliminary
authorization amount;
the payment terminal receiving, from the payment card,
application data in response to the predetermined authorization
amount, the application data comprising an account number
uniquely associated with the payment card,
as recited in claim 20, based on the combination of the cited references.
Reh’g Req. 2. In support, Appellant repeats arguments made in the Appeal
Brief. Id. at 2–6. Appellant also introduces new arguments regarding the
optional nature of the risk analysis and merchant exception file in Peart (id.
at 4) and whether EMV4 teaches that the terminal must receive the account
number from the card prior to the terminal determining whether to go online
(id. at 5–6).
Appellant also argues that the evidence of record is insufficient to
demonstrate that the skilled person would have arrived at the claimed
sequence in the following limitations:
the payment terminal generating an adjusted
authorization amount based on the account number and the
preliminary authorization amount, and transmitting a
cryptogram request to the payment card, the cryptogram request
including the adjusted authorization amount, the cryptogram
request requesting from the payment card a cryptogram
generated from the adjusted authorization amount, the adjusted
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authorization amount being different than the predetermined
authorization amount and the preliminary authorization amount;
the payment terminal receiving an online cryptogram
from the payment card, and transmitting a payment
authorization request over a payment network, the payment
authorization request including the online cryptogram and the
adjusted authorization amount, the payment authorization
request requesting online authorization of a financial
transaction for the adjusted authorization amount; and
receiving a transaction authorization from the payment
network in response to the payment authorization request, the
transaction authorization providing ... a confirmation that the
online cryptogram was generated from the adjusted
authorization amount and from a cryptographic key uniquely
associated with the payment card,
as recited in claim 20, based on the combination of the cited references.
Reh’g Req. 13. In support, Appellant reargues points made in the Appeal
Brief and makes new arguments addressed to the Examiner’s Answer. Id. at
13–19.
Appellant further argues that the Board has the burden of rebutting
Appellant’s evidence (Reh’g Req. 18), of demonstrating that the
combination of the cited references teaches the disputed limitations (id. at
14), and of “demonstrate[ing] the skilled person would have arrived at the
claimed sequence based on the combination of the cited references” (id. at
19). As explained further below, if the Examiner establishes a prima facie
case of obviousness, the burden shifts to the applicant to come forward with
arguments and/or evidence to rebut the prima facie case. See, e.g., In re
Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990).
We decline to modify our prior decision with regard to Appellant’s
“insufficient evidence” arguments because Appellant has not shown that we
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misapprehended or overlooked any argument in the Decision.
Appellant next argues that “[t]he Board improperly reversed the
burden of persuasion upon Appellant.” Reh’g Req. 7–9, 19–21.
Appellant argued in the Reply Brief that paragraph 104 of Peart
“provides an implicit definition of the response data that is required to be
returned in response to the READ APPLICATION DATA command,” and
that list does not include “account number,” as recited in claim 20. Reply
Br. 4. We explained in the Decision that Appellant did not persuade us that
the list of data objects pertinent to transaction completion, as taught in
paragraph 104 of Peart, is exclusive such that it cannot include the “account
number” recited in claim 20. Decision 8. We explained that the list is non-
exclusive, as it is prefaced by “e.g.,” and ends with “etc.” Id., citing Peart
¶ 104 (“transaction completion (e.g., account or card expiration date,
cardholder name, address, issuer identification code, acquirer identification
code, etc.)”).
Appellant now argues that the Board improperly “reversed” the
burden of persuasion to rest on Appellant, and the Board’s Decision is
“procedurally flawed.” Reh’g Req. 8–9. In particular, Appellant argues that
“the Board improperly required Appellant to persuade the Board that the list
of data elements of Peart ‘cannot include the account number.’” Id. at 8.
If a prima facie case of obviousness is established, the burden shifts to
the applicant to come forward with arguments and/or evidence to rebut the
prima facie case. See, e.g., Dillon, 919 F.2d at 692. Here, the Examiner
provided a detailed description of the findings and rationales that were the
basis for the § 103 rejection, including pinpoint citations for each claim
limitation and rationales for modifying references, as set forth on pages of
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the Examiner’s Answer. See, e.g., Ans. 7–19. The Federal Circuit reaffirmed
in Jung that the procedural burden of establishing a prima facie case of
obviousness is met by stating the reasons for a rejection together with
information and references that will be useful to the applicant in judging the
propriety of continued prosecution. In re Jung, 637 F.3d 1356, 1362 (Fed.
Cir. 2011). Here, the Examiner made the evidentiary showing necessary to
shift the burden of persuasion to Appellant. Therefore, the burden properly
shifted to Appellant to rebut the prima facie case, which Appellant did not
do for the reasons set forth in the Decision.
We decline to modify our prior decision with regard to Appellant’s
“burden of persuasion” arguments because Appellant has not shown that we
misapprehended or overlooked any argument in the Decision.
Appellant next argues that “[t]he Board failed to consider all elements
of the claimed solution.” Reh’g Req. 9–11. Appellant argues that “nothing in
the Examiner’s Answer or the Board’s Decision demonstrates that the
payment terminal receives the account number in response to providing the
payment card with the GET PROCESSING OPTIONS command or
otherwise receives the account number in response to providing the payment
card with a payment amount.” Reh’g Req. 10. Appellant also argues that
“the Board failed to consider all elements of the claimed solution” because
“[n]othing in the Examiner’s Answer or the Board’s decision demonstrates
that the payment terminal must receive the account number from the
payment card prior to the terminal determining whether to go online.” Reh’g
Req. 10. These are new arguments that were not made in the Appeal Brief,
and good cause has not been shown to bring the arguments now. Thus, we
will not consider the arguments for the first time here.
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In our Decision, we explained why Appellant did not persuasively
rebut the Examiner’s findings or show error in the Examiner’s conclusion of
obviousness. Decision 7. It is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(attorney argument is not evidence).
We decline to modify our prior decision with regard to Appellant’s
“elements of the claimed solution” arguments because Appellant has not
shown that we misapprehended or overlooked any argument in the Decision.
Appellant next contends that “since the Examiner never characterized
the EMV4 reference as ‘common knowledge,’ or otherwise advised that the
Office was taking ‘official notice’ of the reference, the evidence of record
fails to support the Board’s conclusion that the Examiner relied on EMV4 as
‘common knowledge.’” Reh’g Req. 12.
The Examiner did not rely on EMV4 itself as “common knowledge.”
Nor did the Examiner take Official Notice of the reference itself. Rather the
Examiner found that “the account number is a fundamental element of an
EMV card transaction,” and “[o]ne of ordinary skill in the art would
reasonably convey that the account number is a mandatory data element
obtained from the initial commands submitted to the card.” Ans. 20 (citing
EMV 4.1, Book 3, page 95). The Examiner also found that “[o]btaining a
[Primary Account Number] from a READ APPLICATION DATA/READ
RECORD is as fundamental as the EMV Specification itself.” Id. at 21
(citing EMV 4.1, Book 3, page 78 “Debit and Credit Application
Specification”). The Examiner further noted that “one of ordinary skill in the
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art would reasonably convey that EMV is the most popular Standard for card
present online payment transactions.” Id. at 17.
In the Reply Brief, Appellant did not dispute any of these facts found
by the Examiner or challenge the procedural aspects of the Examiner’s
assertions of knowledge in the art. See Ans. 17, 20–21. Appellant has not
shown good cause to make such challenges for the first time now.
We decline to modify our prior decision with regard to Appellant’s
“EMV4” arguments because Appellant has not shown that we
misapprehended or overlooked any argument in the Decision.
Appellant next argues that “[t]he Board relied improperly on
jurisprudence distinguishable from the claim rejection.” Reh’g Req. 21–25.
Specifically, Appellant argues that the holding in In re Keller, 642 F.2d
413,425 (CCPA 1981) does not apply in this case. Reh’g Req. 24.
In the Decision, we explained that Appellant had not persuasively
rebutted the Examiner’s findings based on the teachings of the prior art
because Appellant argued each prior art reference separately, whereas the
Examiner relied on a combination of the references. Dec. 9 (citing In re
Keller, 642 F.2d 413,425 (CCPA 1981)). Appellant argues that the legal
premise set forth in Keller does not apply because Appellant demonstrated
that none of the cited references teaches a feature of Appellant’s claim
sequence. Reh’g Req. 24 (citing Appeal Br. 19–24). Appellant continues to
overlook that the test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See Dec. 9
(citing In re Keller, 642 F.2d 413, 425).
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We decline to modify our prior decision with regard to Appellant’s
“improper jurisprudence” arguments because Appellant has not shown that
we misapprehended or overlooked any argument in the Decision.
Appellant next argues that “[t]he Board’s conclusion is unsupported
by substantial evidence.” Reh’g Req. 25–26. Appellant argues
Since the Board improperly reversed the burden of
persuasion on Appellant, relied on irrelevant jurisprudence for
the claim rejection, and failed to articulate any reasons that
would allow an independent third party to conclude that the
totality of the evidence of record demonstrated that the claim
rejection was justified, the articulated basis for the claim
rejection contravenes the procedural fairness requirements
of at least the Administrative Procedures Act.
Reh’g Req. 26. Appellant further argues that “it was incumbent upon the
Board to articulate a rational basis for the claim rejection, sufficient to
allow an independent third party to conclude that, it was more likely
than not that, the continued claim rejection was justified.” Id.
Once again, we refer Appellant to the relevant law that, if the
Examiner establishes a prima facie case of obviousness, the burden shifts to
the applicant to come forward with arguments and/or evidence to rebut the
prima facie case. See, e.g., Dillon, 919 F.2d at 692.
We decline to modify our prior decision with regard to Appellant’s
“substantial evidence” arguments because Appellant has not shown that we
misapprehended or overlooked any argument in the Decision.
For these reasons, the Examiner’s § 103 rejection of claims 2–6, 8,
10–17, and 19–24 remains AFFIRMED.
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Rejection of Claim 8 Under 35 U.S.C. § 112(a)
With regard to the Examiner’s rejection of claim 8 for lack of written
description, Appellant first argues that “the Board improperly imported
verbatim support into the possession analysis.” Reh’g Req. 27. Appellant
first made this argument in the Appeal Brief, directed to the Examiner rather
than the Board. Appeal Br. 33. Appellant’s argument was, and remains,
conclusory, stating
the Final Office Action looks for verbatim support for the
subject matter of claim 8. See Final Office Action, p. 24 (stating
“[s]ince the Specification as filed does not disclose the step of
“the receiving a transaction authorization (from the payment
network)” comprising “the payment terminal transmitting the
transaction authorization to the payment card, and receiving
from the payment card confirmation that an issuer of the
payment card generated the transaction authorization,” claim 8
is rejected under 35 U.S.C. 112(a) for failing to comply with
the written description requirement.”).
App. Br. 33. Notably, the Decision does not explicitly refer to “verbatim
support.” Instead, the Decision sets forth the proper legal standard for
written description (Decision 5). We fully considered the Examiner’s
rejection in light of that standard and Appellant’s arguments.
Thus, we decline to modify our prior decision with regard to
Appellant’s “verbatim support” arguments because Appellant has not shown
that we misapprehended or overlooked any argument in the Decision.
Appellant next argues that “the Board improperly reversed the burden
of persuasion upon Appellant to prove possession” of the claimed invention.
Reh’g Req. 30. In particular, Appellant argues that, because Appellant
demonstrated that the person of ordinary skill could make the subject matter
of claim 8 “without undue (or any) experimentation,” “it was incumbent
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upon the Board to consider the Examiner’s evidence together with
Appellant’s rebuttal evidence, and determine whether the totality of the
evidence of record demonstrated that the Office had proven, on the balance
of probabilities, that the claim rejection was justified.” Id.
As the Decision makes clear, the test for adequate written description
is not whether a person of ordinary skill could make the subject matter of the
without undue (or any) experimentation, as Appellant alleges. The Decision
sets forth the proper legal standard for written description. Decision 5. In
light of that legal standard, we fully considered the Examiner’s rejection in
light of Appellant’s arguments.
Thus, we decline to modify our prior decision with regard to
Appellant’s “reversed burden” arguments because Appellant has not shown
that we misapprehended or overlooked any argument in the Decision.
Appellant next argues that “the evidence of record is insufficient to
demonstrate that the skilled person would have determined that the inventors
were not in possession of the claimed subject matter” because “the Board
has not articulated a rational basis sufficient to sustain this claim rejection.”
Reh’g Req. 31.
The Decision sets forth the proper legal standard for written
description. Dec. 5. In light of that legal standard, we fully considered the
Examiner’s rejection in light of Appellant’s arguments. Thus, we decline to
modify our prior decision with regard to Appellant’s “evidence of record”
arguments because Appellant has not shown that we misapprehended or
overlooked any argument in the Decision.
For these reasons, the Examiner’s § 112(a) rejection of claim 8
remains AFFIRMED.
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CONCLUSION

We have considered Appellant’s arguments in the Request, but find
none of them persuasive that our original Decision misapprehended or
overlooked any points raised by Appellant, resulting in error.

DECISION

We have granted Appellant’s request to the extent that we have
reconsidered our Decision, but we deny the request with respect to making
any changes therein. The Examiner’s decision rejecting claim 8 under
35 U.S.C. § 112(a) and claims 2–6, 8, 10–17, and 19–24 under 35 U.S.C.
§ 103 remains AFFIRMED.
SUMMARY
Outcome of Decision on Rehearing
Claim(s)
Rejected
35 U.S.C.
§

Reference(s)/Basis
Granted Denied
8 112(a) Written
Description
8
2–6, 8, 10–17,
19–24
103 Peart, Grossman,
Linehan, Cowen,
or Peart,
Grossman,
EMV4.1
2–6, 8,
10–17,
19–24

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Final Outcome of Appeal after Rehearing
Claim(s)
Rejected
35 U.S.C. §
Reference(s)/Basis
Affirmed Reversed
8 112(a) Written
Description
8
2–6, 8, 10–
17, 19–24
103 Peart, Grossman,
Linehan, Cowen,
or Peart,
Grossman,
EMV4.1
2–6, 8, 10–
17, 19–24

Overall
Outcome
2–6, 8, 10–
17, 19–24

REHEARING DENIED