Ex Parte Cocco

Board of Patent Appeals and Interferences

Apr 24, 2007

09729261 (B.P.A.I. Apr. 24, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MIKAEL COCCO
__________

Appeal No. 2007-1703
Application No. 09/729,261
Technology Center 2800
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Decided: April 24, 2007
__________

Before HUBERT C. LORIN, JENNIFER D. BAHR, and ROBERT E. NAPPI,
Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal from a decision of the Examiner rejecting claims 1-51. 35
U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appeal No. 2007-1703 Page 2
Application No. 09/729,261

We AFFIRM.
Appellant, in the Brief1, argues the claims as a group.2 Pursuant to the rules,
the Board selects representative claim 1 to decide the appeal. 37 C.F.R. §
41.37(c)(1)(vii) (2004). Accordingly, all the claims stand or fall with claim 1.
Claim 1 reads as follows:
1. A transaction card for use with a transaction card sensing device,
comprising:
a transaction card core of a material capable of passing at least some
wavelengths of visible light;
front and back overlaminants of a material also capable of passing at
least some wavelengths of visible light applied to the transaction card core;
and
an infrared filter provided to at least one of the transaction card core,
the front overlaminant, and the back overlaminant which is capable of
passing at least some wavelengths of visible light while preventing passage
of infrared light in a predetermined range of wavelengths emitted by an
infrared light source of the transaction card sensing device, wherein said
infrared filter further comprises an infrared filter material that is embedded
within a supporting substance of said transaction card core and incorporated
as an integral part of said transaction card core.

1 Our decision will make reference to Appellant’s Appeal Brief (“Br.,” filed 17
July 2006) and to the Examiner’s Answer (“Answer,” mailed 17 November 2006).

2 The discussion in the Brief with respect to claims 9-11, 20-31, and 33-50 merely
points out what the claims recite. (Br. 8-9). “A statement which merely points out
what a claim recites will not be considered an argument for separate patentability
of the claim.” 37 C.F.R. § 41.37(c)(1)(vii) (2004).

Appeal No. 2007-1703 Page 3
Application No. 09/729,261

The invention is an electronic transaction card whose presence can be sensed
with an infrared light source. (Specification 1). To assure the card’s presence is
known to the device, the card is provided with an infrared filtering property. This
is accomplished by, for example, incorporating or embedding a dye in the card
core. (Specification 5, ll. 2-5, and 9).
All the claims (1-51) are finally rejected under 35 U.S.C. § 102(e) as being
anticipated by Lasch (U.S. Patent No. 6,581,839).

A. Issue
Appellant contends that Lasch does not anticipate the claimed invention
because it does not describe infrared material embedded in the transaction card
core. The Examiner disagrees, finding otherwise. The issue is whether the
Examiner erred in finding Lasch describes infrared material embedded in the
transaction card core.

B. Facts
The record supports the following findings of fact by a preponderance of the
evidence.
1. The Examiner provides an element-by-element analysis of the claims
showing where in Lasch each claim limitation is described. (Answer 3-4).
2. Appellant argues that Lasch fails to describe the element of embedding the
infrared filter material “within a supporting substance of said transaction card core
and incorporated as an integral part of said card core” as claimed. (Br. 7).
Appeal No. 2007-1703 Page 4
Application No. 09/729,261

4. Appellant submits that Lasch does not embed the ink in the card but applies
infrared ink to the card by printing or coating, or, in the alternative, mixing infrared
compounds in a film to be laminated or adhered to the card instead. (Br. 7).
5. The Examiner responds as follows:
Examiner’s position is that Lasch discloses not only printing and
coating as Appellant acknowledges, but also embedding the infrared ink to
the body of the transaction card. In Lasch (col. 8, lines 1-8), the prepared
films or materials can be mixed with a binder to form infrared compound –
suggesting that film is not the only embodiment disclosed in Lasch. The
embodiments of the material containing infrared compound are film, plastic,
fiber, ink, concentrate, thermoplastic or thermoset matrix, thread, planchette
and/or other medium (col. 7, lines 3-7). The binder material, then is
incorporated in waxes, thermoplastic resins, thermoset resins, rubbers,
natural resins or synthetic resins (col. 8, lines 1-8).
Moreover, in Lasch, Example 1 and 2 disclose infrared film
lamination (col. 9, lines 34-55). As shown in figures 7A-7F, PVCs (shaded
rectangle) make up the core of the transaction card. Another embodiment,
however, is disclosed in Example 3 where that infrared concentrate is
blended with polyvinylchloride (PVC) plastic (col. 9, lines 57-67). The
embodiment shown in Example 3 discloses that the infrared filter material is,
in fact, embedded in the card core. A plurality of layers in figures 7A-7F
including two most outer layers in figure 7A can be interpreted as front
overlaminant and the back overlaminant which can be attached to the card
core via lamination.

(Answer 5).
6. We find, in agreement with the Examiner, that Lasch describes blending
filtering material with plastic and extruding the blend into sheets from which
transaction cards are fabricated (see Example 3).

Appeal No. 2007-1703 Page 5
Application No. 09/729,261

C. Principles of Law
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997).

D. Analysis
The facts show that Lasch describes a process of blending infrared filtering
material with plastic and extruding the blend into sheets from which transaction
cards are fabricated. (FF 6). The resulting transaction card will have the infrared
filtering material incorporated and embedded throughout the card. Accordingly,
the Examiner did not err in finding that Lasch describes infrared material
embedded in the transaction card core.
The rejection is affirmed.

CONCLUSION OF LAW
On the record before us, Appellant has failed to show that the Examiner
erred in rejecting the claims over the prior art.
Appeal No. 2007-1703 Page 6
Application No. 09/729,261

DECISION
The Examiner’s rejection of claims 1-51 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2004).
AFFIRMED

hh

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