Ex parte Berson et al.

Board of Patent Appeals and Interferences

Mar 30, 1999

08175001 (B.P.A.I. Mar. 30, 1999)

Application for patent filed December 29, 1993. 1
1
Paper No. 20
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte WILLIAM BERSON,
MICHAEL D. O'HARE
and KENNETH C. ZEMLOK
______________
Appeal No. 96-2278
Application 08/175,0011
_______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH and HECKER, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
Appeal No. 96-2278
Application 08/175,001
2
from the examiner’s rejection of claims 1-3, 5-8 and 10-15.
Claims 4, 9 and 16 have been indicated by the examiner as
containing allowable subject matter. An amendment after final
rejection was filed on June 23, 1995 and was entered by the
examiner.
The disclosed invention pertains to a method and
apparatus for verifying an identification card. The
identification card contains both an image of an object to be
identified as well as a coded representation of the image.
The card is placed in a card holding station where the image
of the object is visible. The coded representation is decoded
into the image which is displayed on a display. The visible
image of the card in the card holder and the display are
situated such that the two images can be easily compared by an
operator.
Representative claim 1 is reproduced as follows:
1. An apparatus for verifying an identification card,
said card including an image of an object to be identified on
a first portion and a coded representation of an encrypted
signal comprising a representation of said image on a second
portion, said apparatus comprising:
a) a card holding station for receiving said card so that
said image is visible to an operator of said apparatus;
Appeal No. 96-2278
Application 08/175,001
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b) control means for controlling the operation of said
apparatus[;]
c) means for reading said coded representation of said
signal from said card; when said card is received in said
station[;]
d) decoding means, responsive to said reading means for
decoding said representation of said signal to provide a
decoded signal;
e) decrypting means for decrypting said decoded signal to
provide a decrypted signal[;]
f) display means responsive to said decrypting means for
displaying said representation of said image, said display
means being positioned adjacent to said image, whereby
comparison of said representation of said image and said image
is facilitated.
The examiner relies on the following references:
Piosenka et al. (Piosenka) 4,993,068 Feb. 12, 1991
Senanayake 5,053,608 Oct. 01, 1991
Axelrod et al. (Axelrod) 5,337,358 Aug. 09, 1994
(filed Nov. 20,
1992)
Claims 1-3, 5-8 and 10-15 stand rejected under 35
U.S.C. § 102(e) as being anticipated by the disclosure of
Axelrod. Claims 1-3, 5-8 and 10-15 also stand rejected under
35 U.S.C. § 103 as being unpatentable over the teachings of
Senanayake in view of Piosenka.
Appeal No. 96-2278
Application 08/175,001
The reply brief filed February 7, 1996 was denied entry2
by the examiner [Paper No. 15]. Accordingly, we have not
considered the reply brief in the formulation of this
decision.
4
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for2
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of anticipation and obviousness relied upon by the
examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our
decision, the appellants’ arguments set forth in the brief
along with the examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the
examiner’s answer.
It is our view, after consideration of the record
before us, that the disclosure of Axelrod does not fully meet
the invention as recited in claims 1-3, 5-8 and 10-15. We are
also of the view that the teachings of Senanayake and Piosenka
Appeal No. 96-2278
Application 08/175,001
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and the level of skill in the particular art would not have
suggested to one of ordinary skill in the art the obviousness
of the invention as set forth in claims 1-3, 5-8 and 10-15.
Accordingly, we reverse.
We consider first the rejection of claims 1-3, 5-8 and
10-15 under 35 U.S.C. § 102(e) as being anticipated by the
disclosure of Axelrod. Anticipation is established only when
a single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984);
W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1554, 220
USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
The examiner asserts that Axelrod’s Figure 1
illustrates all the components of the apparatus recited in
claims 1-12 as well as the method recited in claims 13-16
[final rejection, page 2]. With respect to independent claims
1 and 13, appellants argue that in Axelrod “there is nothing
Appeal No. 96-2278
Application 08/175,001
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which teaches or suggests a card holding station where the
image on the card is visible to an operator after the card is
received, or that the apparatus should be configured so that
the image and the displayed representation of that image are
adjacent” [brief, page 4]. The examiner responds that Figure
1 of Axelrod discloses these features [answer, page 3].
We agree with appellants that the invention of claims
1 and 13 is not fully met by the disclosure of Axelrod. There
is clearly no card holding station disclosed in Axelrod so
that there is no disclosure of the image on the card being
visible when the card is received in the card holding station.
Axelrod discloses a bar code scanner for reading the card, but
there is no disclosure of how this card is received in a card
holding station. Although Axelrod teaches that the image on
the card C and the image on display 36 are compared by an
operator, and although Axelrod shows the card C and the
display 36 in close proximity in Figure 1, there is no
disclosure that the comparison should take place while the
card is in the card holding station. Axelrod could just as
easily suggest that the comparison take place after a card is
removed from whatever mechanism is used to hold and decode the
Appeal No. 96-2278
Application 08/175,001
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data on the card.
Thus, the examiner’s anticipation rejection of claims
1 and 13 is based on pure speculation as to how one might
implement the comparison suggested by Axelrod. A rejection
cannot be made under 35 U.S.C. § 102 based upon speculation
with respect to the teachings of a reference or based on
assumptions of what an artisan might decide to do given the
disclosure of a reference. These considerations would be more
relevant to a rejection under 35 U.S.C. § 103, however, we do
not have a rejection on that ground before us using Axelrod.
Although Axelrod is the most pertinent reference on
this record, it does not anticipate the invention of
independent claims 1 and 13 for reasons discussed above, and
the obviousness issue has not been properly raised by the
examiner. We would have no difficulty agreeing with the
examiner that it would have been obvious to the artisan that
the image on card C in Axelrod and the image on display 32
should be placed adjacent to each other to facilitate
Axelrod’s disclosure that a human must compare these two
images. Humans are well aware that when comparing two images
to each other, they should be simultaneously viewable and
Appeal No. 96-2278
Application 08/175,001
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relatively close to each other. This is a matter of simple
common sense. There is no evidence on this record, however,
regarding the obviousness of the card holding station of
claims 1 and 13 in which the image of the object is visible
when the card is received. As we noted above, such a
condition is not necessary to the operation of Axelrod, and
the examiner has not addressed the obviousness of this
limitation.
Independent claims 7 and 12 also contain the
recitation of “a card holding station for receiving said card
so that said image is visible to an operator of said
apparatus.” For reasons we have already discussed at length,
Axelrod does not disclose any card holding mechanism so that
Axelrod does not anticipate these claims within the meaning of
35 U.S.C. § 102. Therefore, we do not sustain the examiner’s
rejection under 35 U.S.C. § 102 of any of the appealed claims
based on Axelrod.
We now consider the rejection of claims 1-3, 5-8 and
10-15 under 35 U.S.C. § 103 as being unpatentable over the
teachings of Senanayake and Piosenka. In rejecting claims
under 35 U.S.C. § 103, it is incumbent upon the examiner to
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Application 08/175,001
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establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is
expected to make the factual determinations set forth in
Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a
reason why one having ordinary skill in the pertinent art
would have been led to modify the prior art or to combine
prior art references to arrive at the claimed invention. Such
reason must stem from some teaching, suggestion or implication
in the prior art as a whole or knowledge generally available
to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293,
227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S.
1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These
showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
Appeal No. 96-2278
Application 08/175,001
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USPQ2d 1443, 1444 (Fed. Cir. 1992).
The examiner cites Senanayake as teaching everything
recited in the claims except for the public key encryption
techniques. The examiner cites Piosenka as teaching an
identification card having encrypted versions of physical
identification information stored on the card. The examiner
asserts that it would have been obvious to the artisan to
substitute Piosenka’s encrypted facial information for
Senanayake’s fingerprint image [final rejection, pages 2-3].
Appellants argue that with respect to the teachings of
Senanayake and Piosenka, “provision of a holding station where
the card remains visible after insertion, and positioning of a
display adjacent to such a holding station would be
meaningless in the context of these references, and their
combination cannot be considered to make the claimed
invention, which includes these limitations, obvious” [brief,
page 5]. We agree with appellants.
Senanayake is designed to compare an actual image on a
card with a coded image on the card automatically by computer.
Since the comparison is made by computer, there is no
motivation to make the card in Senanayake visible when it is
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Application 08/175,001
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inserted in a card holder because no one is expected to be
looking at the card. Piosenka is also intended to primarily
operate to automatically compare an actual image with a coded
image on a card by computer. Once again, since the comparison
is made by computer, there is no incentive to have the data on
the card be visible when it is received in a card holder.
Piosenka does describe a situation, however, where the
comparison is made by a human operator [column 9, lines 5-21].
In this situation, however, two images on a card are not
compared, but rather, a decoded displayed image is compared to
the actual facial feature biometric of the person seeking
validation. There is again no reason for the information on
the card to be visible to the human operator when it is
received in a card holding mechanism.
Thus, the examiner has failed to explain why it would
have been obvious to the artisan to have a card holding
station for receiving an identification card so that an image
on the card is visible to an operator as recited in each of
the independent claims. This recited limitation is clearly
not suggested by either Senanayake or Piosenka. Therefore,
the examiner has failed to establish a prima facie case for
Appeal No. 96-2278
Application 08/175,001
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the obviousness of the claimed invention. Accordingly, we do
not sustain the examiner’s rejection of the claims under 35
U.S.C. § 103 based on the teachings of Senanayake and
Piosenka.
The decision of the examiner rejecting claims 1-3, 5-8
and 10-15 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
Appeal No. 96-2278
Application 08/175,001
13
)
)
STUART N. HECKER )
Administrative Patent Judge )
JS/cam
Appeal No. 96-2278
Application 08/175,001
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Robert H. Whisker (50-01)
Pitney Bowes, Incorporated
Intellectual Property & Technology
Law Dept., World Headquarters
One Element Road
Stamford, CT 06926-0700