VeriFone, Inc.

Patent Trials and Appeals BoardJun 23, 2021

2020001532 (P.T.A.B. Jun. 23, 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. 15/900,317 02/20/2018 John Henry Barrowman 054060.001196 7891 175224 7590 06/23/2021 VeriFone/ Greenberg Traurig 77 West Wacker Drive, Suite 3100 Chicago, IL 60601 EXAMINER ONYEKABA, AMY ART UNIT PAPER NUMBER 2628 NOTIFICATION DATE DELIVERY MODE 06/23/2021 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): GTIPMAIL@gtlaw.com cadanoc@gtlaw.com clairt@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN HENRY BARROWMAN, DOUG LEIGH MANCHESTER, and WILLIAM MARTIN JOHANSEN JR. ____________ Appeal 2020-001532 Application 15/900,317 Technology Center 2600 ____________ Before ELENI MANTIS MERCADER, ADAM J. PYONIN, and GARTH D. BAER, Administrative Patent Judges. BAER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final rejection of claims 31–45, which are all pending claims.1 Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Verifone, Inc. as the real party in interest. Appeal Br. 1. Appeal 2020-001532 Application 15/900,317 2 BACKGROUND A. The Invention Appellant’s invention is directed to a “data entry device” including a housing, and “OFN [Optical Finger Navigation] circuitry mounted inside the housing, being operative for sensing tampering with the device and providing a tamper indication output to the tamper detection circuitry.” Spec. ¶ 7. Claims 31 and 37 are independent. Claim 31 is representative and reproduced below: 31. A device, comprising: a device housing defining an enclosed space; a light source disposed in the device housing operative to illuminate the enclosed space; an optical sensor disposed in the device housing and operative to sense a first level of light within the device housing at a first time and a second level of light within the device housing at a second time; and anti-tampering detection circuitry operative to detect a tampering event based on a difference between the first level of light and the second level of light. Appeal Br. 13 (Claims App.). B. The Rejections on Appeal The Examiner rejects claims 31–45 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 6, Ans. 3. Appeal 2020-001532 Application 15/900,317 3 ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s arguments. Arguments Appellant could have made but chose not to make are waived. See 37 C.F.R. § 41.37(c)(1)(iv). A. Written Description Rejection of Claim 31 Appellant argues that the disclosure establishes that “background noise may be used as a thumbprint, captured upon manufacture of the device at the factory, employed for verification, typically each time that the device is booted up”, and once this thumbprint is captured upon manufacture, it is compared to the background noise sensed upon bootup. If the sensed background noise does not differ from the thumbprint, the device has not been tampered with. If it does differ, however, there may be a tamper event. Reply Br. 4 (citing Spec. ¶ 80) (emphasis omitted). Appellant contends that the disclosure accompanying Figures 2A–2E, in which Figure 2E “describes [a] removal of [a] key that allows a flood of light into the housing[,]” illustrates that “one of ordinary in the art would understand that Figure 2A and Figure 2E represent different levels of light taken at two different times.” Reply Br. 6 (emphasis in original). Appellant further argues that in Figures 6A–6B (in which Figure 6B illustrates placement of probe 634 inserted into data entry device 600 as illustrated by Figure 6A) and in Figures 7A–7B (in which Figure 7B illustrates removal of key 708 from data entry device 700 as illustrated by Figure 7A), each figure set represents an example in which the OFN (Optical Finger Navigation) module includes an “optical sensor” that detects tampering. See Reply Br. 7–9; see also Spec. ¶¶ 67–69. Appeal 2020-001532 Application 15/900,317 4 We are not persuaded by Appellant’s arguments. The Examiner finds that the claims “fail[] to comply with the written description requirement” in part because the independent claims recite “a first level of light received from within the device housing at a first time” and “a second level of light received from within the device housing a second time” for which the Specification is “silent.” Final Act. 6 (emphasis omitted). Particularly, the Examiner finds that when viewing Appellant’s figures, a person of ordinary skill in the art would not readily determine how a level of light is determined, obtained and/or measured with respect to a point in time as applicant points out by just looking at these figures; at best a person can only see two pixels (as mentioned in Applicant[’]s disclosure []; Fig[ures] 2a–2d represent[] a pixel grid, with block representing a single pixel or an X by Y array of pixels [] disappearing from the grid. Ans. 5 (citing Spec. ¶ 45). The Examiner finds that “it [is] unclear how the claim has been drafted based on levels of light with respect to time when tampering is solely based on determination of appearance and disappearance of pixels and/or markings.” Ans. 6 (citing Spec. ¶¶ 81–89). We agree with the Examiner’s findings quoted above. Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the Specification does not sufficiently identify how the invention achieves the claimed function. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). For software, this can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. It is not enough that one skilled in the art could write a program to achieve the claimed function because the Appeal 2020-001532 Application 15/900,317 5 specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683 (Fed. Cir. 2015); see also 2019 Guidance, 84 Fed. Reg. 62. Here, missing from the disclosure is what algorithms or steps for performing the computer functions of the claimed “detect a tampering event based on a difference between the first level of light and the second level of light.” Final Act. 5. The disclosure illustrates situations in which a tampering event determination might be made via changes in: (1) particular measured spatial patterns (compare Fig. 2D (tampering) to Figs. 2A–C (no tampering)), or (2) average measurements over an array (compare Fig. 2E (tampering) to Figs. 2A–C (no tampering)). These illustrations, while helpful, are insufficient to explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Further, Figure 9’s “simplified functional block diagram” offers insufficient details regarding how to perform the invention, and neither the disclosure nor Appellant’s arguments refer to the relevant features or operation of either: (1) “Model ADBS-A350 commercially available from Pixart Imaging Inc., No. 5, Innovation Road 1, HsinChu Science Park, Hsin-Chu, Taiwan, R.O.C.” (see Spec. ¶¶ 35, 54, 70); or (2) “Model 27903 commercially available from Parallax Inc.” that are each identified in the disclosure as a sample “OFN module.” (Spec. ¶¶ 30, 66–67, and 69). Appeal 2020-001532 Application 15/900,317 6 This information is insufficient to satisfy the written description requirement as it too fails to explain how the inventor intends to achieve the claimed function. CONCLUSION Accordingly, we sustain the Examiner’s written description rejection of independent claim 31, as well as independent claim 37 commensurate in scope, and dependent claims 32–36 and 38–45 not argued separately. See Appeal Br. 11. DECISION SUMMARY In summary: No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 31–45 112(a) Written Description 31–45