Ex Parte Boyer

Board of Patent Appeals and Interferences

Jan 5, 2010

10713247 (B.P.A.I. Jan. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES E. BOYER
____________

Appeal 2009-003189
Application 10/713,247
Technology Center 2800
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Decided: January 5, 2010
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Before JOHN C. MARTIN, MAHSHID D. SAADAT,
and ROBERT E. NAPPI, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 4-8, and 16. Claims 2, 3, and 9-15 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
Appellant’s invention relates to a high security card in which data is
presented in a two-dimensional binary information symbol, and a system for
reading such a card (Spec. 4:2-5). Claim 1 is illustrative and reads as
follows:
1. A high-security transaction card including account
representation information for an entity, comprising:

a card body having a perimeter and at least one face; and

at least one two-dimensional binary information symbol
comprising a symbolic representation of coded data
including the account representation information for the
entity and entity identification information and, said at
least one symbol being located within said perimeter of
said card body on said at least one face,

wherein the account representation information for the entity
that is coded in the two-dimensional binary information
symbol is not otherwise represented in human readable
form on the card body so that account identification can
only be made be decoding the two-dimensional binary
information symbol and the identity identification
information useable for comparing with a characteristic
of the entity associated with the card.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tahan US 2002/0111830 A1 Aug. 15, 2002
Nishikado US 6,572,025 B1 Jun. 3, 2003
Wankmueller US 6,857,566 B2 Feb. 22, 2005
(filed Nov. 25, 2002)

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The rejections as presented by the Examiner are as follows:
Claims 1, 4, 8, and 16 stand rejected as obvious under 35 U.S.C.
§ 103(a) over Wankmueller and Nishikado.
Claims 5-7 stand rejected as obvious under 35 U.S.C. § 103(a) over
Wankmueller, Nishikado, and Tahan.
We make reference to the Brief (filed Jan. 25, 2008 and supplemented
Mar. 17, 2008), the Reply Brief (filed Aug. 29, 2008), and the Answer
(mailed Jun. 26, 2008) for the respective positions of Appellant and the
Examiner. Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant did not make in the
Briefs have not been considered and are deemed waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
In rejecting claims 1, 4, 8, and 16, the Examiner reads the claimed
elements of high-security card on Wankmueller and relies on Nishikado for
teaching a two-dimensional binary information symbol shown as codes
306a-306d depicted in Figure 15 of Nishikado (Ans. 3-4). Appellant
contends that Nishikado provides critical information on the card in human
cognizable form, whereas the claims require that identification of such
information can only be made by decoding the two-dimensional symbol
(App. Br. 11-12). Appellant further argues that the symbols disclosed by
Nishikado are parts of an exceptionally complex system and very different
from the claimed invention because Nishikado stores the critical information
in various pieces of a symbol that must be reassembled by a specialized
reader (App. Br. 12). Regarding the rejection of claims 5-7, Appellant
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presents the same arguments made for claims 1, 4, 8, and 16 (App. Br. 13-
15).
Thus, Appellant’s arguments present the following issue:
Has Appellant shown that the Examiner erred in finding that
Nishikado discloses presenting critical information in the form of at least
one two-dimensional binary information symbol and that combining
Nishikado with Wankmueller would have resulted in the claimed invention.

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issue involved
in the appeal.
Wankmueller
1. As shown in Figure 1, Wankmueller discloses a payment card
10 having a bar code 20 thereon and a radio frequency ID chip or circuitry
30 included in the card. The bar code may be graphically printed, imprinted,
or otherwise placed on the card. (Col. 3, ll. 29-35.)
2. Wankmueller discloses that the bar code is encoded with at
least one or more digits of the payment account number (PAN). (Col. 3, ll.
35-36.)
Nishikado
3. Figure 12 of Nishikado illustrates an ID card 250 including a
card substrate 256, card holder’s picture, and a synthesized image placed in
four different coded units 251a-251d. The four encoded image units 251a-
251d of two-dimensional codes include specific coded data, such as address,
name, date of birth, and telephone number of the card holder. (Col. 22, ll.
56-67.)
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4. Figure 12 of Nishikado is shown below:

Figure 12 of Nishikado
5. Nishikado further discloses in Figure 15 a credit card 305 that is
used by a user to purchase goods from a credit card member shop having an
authentication terminal 302 shown in Figure 14. (Col. 24, ll. 4-33.)
6. Figure 15 of Nishikado is shown below:

Figure 15 of Nishikado
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7. The card 305 comprises a card substrate 305a and a code
including an image 306 which is printed on the substrate. The code includes
a first unit of identifying information of two-dimensional codes for
identifying the owner of the card such as a password, and a second unit
including coded identifying information such as the name, face picture, date
of birth, or signature. (Col. 24, ll. 18-28.)
8. As shown in Figures 16A and 16B, Nishikado discloses that the
two-dimensional bar codes 307 and 308 include the coded password of the
owner and the owner’s information hidden in the code. (Col. 24, ll. 28-33.)

PRINCIPLES OF LAW
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The KSR Court further recognized that “[w]hen there is a design need
or market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp.” Id. at 421.
On the issue of obviousness, the Supreme Court has stated that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
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ANALYSIS
Appellant’s contentions focus on Nishikado’s depiction of user’s
information in human cognizable form “with some, all, or more information
represented in code form, such as a two-dimensional bar code” (App. Br.
11). We agree with the Examiner’s findings (Ans. 6-7) that the description
of Figure 15 specifically indicates that the information is encoded in two-
dimensional barcode which is readable only by a specialized reader such as
an authentication terminal (FF 5-8). Appellant’s arguments appear to merely
rely on Figure 12 of Nishikado that includes a picture of the card owner in
addition to the coded user information on the card (FF 3-4). However, the
embodiment shown in Figure 15 of Nishikado includes only encoded
information regarding the user, such as the user’s picture, name, and
signature, as well as the account information, such as a password, which are
not presented in human readable form (FF 6-8).
With respect to the alleged complexity of Nishikado’s system and
whether storing the encoded information in pieces makes it difficult to
decode (App. Br. 12), we also agree with the Examiner (Ans. 7-8) that
Nishikado’s system, although more complex, still discloses presenting
encoded information on an identification or credit card. In that regard, while
Nishikado provides the encoded information in multiple units placed on
different portions of the card face (FF 6), each portion includes user’s
information or the account information. We also note that the claims do not
preclude additional symbols on the card because they recite “at least one
two-dimensional binary information symbol.”
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Appellant’s argument (Reply Br. 5) that no entity or user information
is disclosed in Wankmueller is not responsive to the rationale of the
rejection, which relies on Nishikado for such a teaching.
Appellant argues (id.) that since Wankmueller splits the account
information between two different forms of machine readable information,
one of ordinary skill in the art would not have modified Wankmueller with
Nishikado to form the encoded information within a single barcode. This
argument is unconvincing because claim 1 does not require that the account
representation information be encoded in a single two-dimensional binary
information symbol.
As stated by the Examiner (Ans. 7), the teachings of Nishikado
provide an alternate method of encoding information which may be applied
to Wankmueller in order to improve presentation of coded information. In
fact, the teaching value of Wankmueller is not in the type of information
encoded or the form of machine readable information, but in presenting
account information in a form that is not human readable. As such, one of
ordinary skill in the art would have considered improving Wankmueller by
using the two-dimensional bar codes of Nishikado for encoding user’s
information along with the account information within regions of two-
dimensional barcodes. In combining Wankmueller and Nishikado, a person
of ordinary skill in the art would recognize that using the two-dimensional
barcodes of Nishikado would have provided the predictable result of
providing more encoded information on the card. See KSR, 550 U.S. at 421.
CONCLUSION
For all of the above discussed reasons, we find that Appellant has not
shown that the Examiner erred in finding that Nishikado discloses presenting
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critical information in the form of at least one two-dimensional binary
information symbol and that combining Nishikado with Wankmueller would
have resulted in the claimed invention. Therefore, we sustain the 35 U.S.C.
§ 103 rejection of claims 1, 4, 8, and 18 over Wankmueller and Nishikado as
well as the rejection of claims 5-7 over Wankmueller, Nishikado, and Tahan.

ORDER
The decision of the Examiner rejecting claims 1, 4-8, and 16 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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