Ex Parte Carr et al

Board of Patent Appeals and Interferences

Jul 26, 2010

10370421 (B.P.A.I. Jul. 26, 2010)

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.
10/370,421 02/19/2003 J. Scott Carr 38820-522001US 7029
30623 7590 07/26/2010
MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C
ONE FINANCIAL CENTER
BOSTON, MA 02111
EXAMINER
MEYERS, MATTHEW S
ART UNIT PAPER NUMBER
BPAI
MAIL DATE DELIVERY MODE
07/26/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte J. SCOTT CARR, BRUCE L. DAVIS, STEPHEN K. DECKER,
JONATHAN L. HAWES, WILLIAM C. HEIN III, KENNETH L. LEVY,
JOHN MUNDAY, BURT W. PERRY, PHILLIP ANDREW SEDER, JOEL
R. MEYER, TYLER J. MCKINLEY, HUGH L. BRUNK, and STEVEN W.
STEWART
____________

Appeal 2009-009114
Application 10/370,421
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and THU A.
DANG, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-009114
Application 10/370,421

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-3 and 26-29. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM IN PART (37 C.F.R. § 41.50(b)).

THE INVENTION
Appellants claim a method relating to identification documents, such
as drivers licenses, and the use of such documents in security applications.
(Specification 1:8-9).
Claim 1, reproduced below, is representative of the subject matter on
appeal.

1. An airport security screening method comprising:
receiving from a person checking-in for air travel a driver's license
including machine- readable data;
reading the machine-readable data from the license;
determining from the read data the identity of a governmental issuing
authority that issued the license;
forwarding at least some of the read data to a remote computer system
having access to data records compiled by said governmental issuing
authority and relating to said license;
receiving back from said computer system data relating to said
license; and
making use of said received data in screening the person for air travel.
Appeal 2009-009114
Application 10/370,421

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sehr US 6,085,976 Jul. 11, 2000

The following rejection is before us for review.
The Examiner rejected claims 1-3, and 26-29 under § 102 as
anticipated by Sehr.
THE ISSUE
Have Appellants shown that the Examiner erred in rejecting claims1-
3, and 26-29 under § 102 as anticipated by Sehr on the grounds that the
passenger card in Sehr with an electronic representation of the cardholder’s
driver's license is issued by a government issuing authority DMV because
the DMV downloads the data to the card and certifies it after proper
identification is provided by the cardholder?

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set
forth in the claim is found, either expressly or inherently described, in a
single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California,
814 F.2d 628, 631 (Fed. Cir. 1987).

Appeal 2009-009114
Application 10/370,421

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FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Examiner found that “Sehr discloses … a police officer accepts
the Sehr card after being stopped for a speeding ticket.” (Answer 7)
2. The Examiner found with respect to claim 3 that Sehr discloses a:
‘[P]assenger card, which can act as a portable
database and/or off-line processing unit, also will
free the system from lengthy and costly on-line
modus of operandi...’ (Sehr col. 12, lines 12-54).
This data stored on the passenger would be stored
(cached) and when a person checks-in it would be
accessed and then forwarded to the remote
computer system. Thus, Sehr discloses the
limitations of claim 3.
(Answer 8).
3. Sehr discloses storing on an electronic card an electronic
representation of the documents pertaining to the cardholder, such as a
driver's license. (Col. 32, ll. 11-13).
4. Sehr discloses that the electronic representation of the user’s license
“can be requested from the appropriate authorities, such as DMV office…
and certified and downloaded into the card after proper identification is
provided by the cardholder”. (Col. 32, ll. 15-18).
5. Sehr discloses that the card can be coupled to the DMV's database.
(Col. 32, ll. 22-23).
6. Sehr discloses that the electronic card is acceptable indicia of a
driver’s license in that in the case where an officer stops a driver for
speeding and:
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Application 10/370,421

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… [R]equests to see some documents, such as the
driver's license… The driver presents the
passenger card, which contains those documents,
and to view or verify this card data, the data can be
retrieved and displayed, as well as communicated
and compared against information stored in a
remote database. The traffic officer can verify the
displayed information or upload it for comparison
with a remote database, and proceed accordingly.
For example, the driver's license or other
documents can be displayed within a card-based
template(s) and viewed by the traffic officer.
(Col. 38, ll. 23-36).
7. Sehr discloses “the displayed picture of the driver can be verified
against the physical appearance of the cardholder by the officer.” (Col. 38,
ll. 34-36).
8. Sehr discloses “[t]he card can also be coupled to the officer's
laptop, or to any other remote system database, for further verification
purposes. For example, the officer can cross-check the contents of the
documents with the database(s) of the DMV office… (Col. 38, ll. 39-43).
9. Sehr discloses that as a result of receiving data back from the
DMV, actions can be taken: “for example, if the driver's license is expired or
suspended, the officer will cancel the card-based driver's license and issue a
ticket for driving without a valid license, as well as communicate the
implemented measures to the DMV database. (Col. 38, ll. 52-56).

Appeal 2009-009114
Application 10/370,421

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ANALYSIS
We affirm the rejection of claims 1, 2, 26-29, and reverse the rejection
of claim 3.
Appellants argue that: “Claim 1 requires that the credential presented
by the traveler for airport security screening be a driver's license, and that it
be issued by a governmental authority. Sehr's passenger card is not a
driver's license, nor is it issued by a governmental authority.” (Appeal Br. 7).
In so arguing Appellants maintain that “Sehr introduces a further link in the
chain, weakening its trust: an intermediary data card issued by a third party.”
(Appeal Br. 7).
We disagree with Appellants because Sehr discloses storing on the
passenger card an electronic representation of the cardholder’s driver's
license (FF 3). This representation of the license is in fact issued by the
issuing authority, DMV, which downloads the data to the card and certifies
it after proper identification is provided by the cardholder. (FF 4). Thus, the
certified version of the drivers license which exists in the passenger card in
Sehr is issued, i.e., downloaded, by the governmental authority to the card
thereby maintaining the chain of trust for the license.
Appellants’ Reply Brief argues that “[i]t is clear that the recited
sequential steps of "receiving," "reading," "determining," "forwarding,"
"receiving back" and "making," as recited in Claim 1 … are not in any way
shown in Sehr.” (Reply Br. 9).
We disagree with Appellants because the Examiner found that “Sehr
discloses … a police officer accepts the Sehr card after being stopped for a
Appeal 2009-009114
Application 10/370,421

7
speeding ticket.” (FF 1) In so doing, the card can also be coupled to the
officer's laptop, or to any other remote system database (DMV (FF 5)), for
further verification purposes. Moreover, the officer can cross-check the
contents of the documents with the database(s) of the DMV office (FF 8).
Based on these findings, we find that in order for the passenger card in
Sehr to couple to a police laptop or a DMV system and transfer information
from the card ultimately to a DMV system, the system would inherently
need to read, determine and then forward the license data to the appropriate
server of the issuing state. “It is well settled that a prior art reference may
anticipate when the claim limitations not expressly found in that reference
are nonetheless inherent in it. Under the principles of inherency, if the prior
art necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.” In re Cruciferous Sprout Litigation, 301 F.3d
1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted).
With regard to the last step in claim 1 of making use of the received
data, we find no device tied to the step of making use of the data. This
leaves the step open to performance by human intervention which is only
controlled by human behavior, and not the useful arts for which the patent
laws are intended to cover.
Appellants next argue that “claim 1 is captioned as an ‘airport security
screening method’ so that at least for purposes of anticipation the reference
to ‘speeding ticket’ is clearly different from an airport security screening
method set forth in Claim 1 and its dependent claims.” (Reply Br. 9). We
are not persuaded by Appellants’ argument here because the recitation of
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Application 10/370,421

8
airport security screening is only used in the preamble of the claims and is
not thereafter fully incorporated into the body of the claim. Corning Glass
Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)
(An element initially recited in the preamble, is thereafter fully incorporated
into the body of the claim so as to breathe life and breath into it by setting
forth the complete combination).
Appellants’ arguments to claim 2 merely echo those presented for
claim 1 and since we found the arguments for claim 1 unpersuasive we
likewise find them unpersuasive for claim 2.
Claim 3 recites: caching information received from said remote
computer system in a local store; and when a person checks-in for air travel,
first determining if cached data corresponding to said person is located in
the local store before forwarding said read data to the remote computer
system.
The Examiner found with respect to claim 3 that Sehr discloses data
stored on the passenger card “would be stored (cached) and when a person
checks-in it would be accessed and then forwarded to the remote computer
system.” (FF 2). However, the Examiner’s finding does not address the
limitation of first determining if cached data corresponding to said person is
located in the local store before forwarding said read data to the remote
computer system, and therefore we will not sustain the rejection of claim 3.
We also affirm the rejections of dependent claims 26-29 which
depend from claim 1 since Appellants have not challenged such with any
reasonable specificity (See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
Appeal 2009-009114
Application 10/370,421

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1987)).

CONCLUSIONS OF LAW
We conclude the Appellants have not shown that the Examiner erred
in rejecting claims 1, 2, 26-29 as anticipated by Sehr.
We conclude the Appellants have shown that the Examiner erred in
rejecting claim 3 as anticipated by Sehr.
DECISION
The decision of the Examiner to reject claims 1, 2, 26-29 is
AFFIRMED.
The decision of the Examiner to reject claim 3 is REVERSED.
The decision of the Examiner to reject claims 1, 2, 26-29 is affirmed
but, because our rationale is substantially different from that used by the
Examiner, we denominate this as new grounds of rejection under 37 C.F.R.
§ 41.50(b).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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Application 10/370,421

10
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .
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) (2006).

AFFIRMED IN PART; 37 C.F.R. § 41.50(b)

MP

MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C
ONE FINANCIAL CENTER
BOSTON MA 02111