Ex Parte Concilio et al

Board of Patent Appeals and Interferences

Feb 28, 2011

10725193 (B.P.A.I. Feb. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARIANO CONCILIO, FRANCESCO VARONE,
and AMEDEO VENEROSO
____________

Appeal 2010-000524
Application 10/725,193
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R.
MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 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.
Appeal 2010-000524
Application 10/725,193

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 16 to 41, and 43. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 16 is illustrative:
16. A method for executing an event-
driven application in an electronic device including
a smart-card, the application being resident in the
smart-card and being decomposed into a central
module and at least one complementary module,
the method comprising:
managing interaction between the modules
by a framework of the smart-card; and
after at least beginning execution of the
central module by the framework based upon an
external event, generating a new set of internal
events by the framework for managing the at least
one complementary module.

Appellants appeal the following rejections:
1. Claims 16 to 18, 20 to 26, 28 to 34, 36 to 41, and 43 under 35
U.S.C. § 103(a) as unpatentable over Valencia (US Pat. 5,380,991, iss. Jan.
10, 1995) in view of Coutts (US Pat. 6,311,165 B1, iss. Oct. 30, 2001).
2. Claims 19, 27, and 35 under 35 U.S.C. § 103(a) as unpatentable
over Valencia in view of Coutts and Applicant’s Admitted Prior Art (App.
No. 10/725,193, Figs. 1 to 3, and Paras. [0001] to [0019]) (hereinafter
“APA”).

Appeal 2010-000524
Application 10/725,193

3
ISSUE
Did the Examiner err in rejecting the claims because the prior art does
not disclose the step of managing interactions between modules of an
application resident in a smart card by a framework of the smart-card?

FACTUAL FINDINGS
Valencia discloses a paperless redemption system which includes a
smart card 2 which has a microcomputer 4, a memory 6, and a plurality of
terminals 8 (col. 4, ll. 8 to 14).
The Examiner finds that the terminal 8 of Valencia reads on the
framework, CPU 10 reads on the central module, and memory component 6
reads on a complementary module of claim 16.

ANALYSIS
The Appellants argue that Valencia does not disclose an application
resident on the smart card. The Examiner has not given the recitation in the
claim regarding the application being resident on a smart card weight
because the recitation is in the preamble of the claim.
The question of whether a preamble constitutes a limitation to a claim
is a matter to be determined by the facts of each case in view of the claimed
invention as a whole. See In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).
The preamble of a claim does not limit the scope of the claim when it merely
states intended use of the invention. In re Pearson, 494 F.2d 1399, 1403
(CCPA 1974). However, terms in a preamble are construed as limitations
when they give life and meaning to the invention claimed. Gerber Garment
Tech., Inc. v. Lectra Sys., Inc., 916 F.2d 683, 688-89 (Fed. Cir. 1990)
Appeal 2010-000524
Application 10/725,193

4
(quoting Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 896
(Fed. Cir.), cert. denied, 469 U.S. 857 (1984)).
In the instant case, the preamble recites that the application on the
smart card is decomposed into a central module and at least one
complementary module. The fist step in the body of the claim recites the
step of managing the modules by a framework of the smart-card. The
recitation of an application on a smart card that is decomposed into modules
in the preamble gives life and meaning to the recitation in the first step in the
body of the claim of managing the modules. Therefore, in our view the
recitation in the preamble of an application resident in the smart-card that is
decomposed into modules must be given weight when the patentability of
claim 16 is determined.
We agree with the Appellants that the CPU 10 and memory 6 are not
decomposed modules of an application on the smart card but rather
components of the smart-card itself. Therefore, we will not sustain the
rejection of claim 16 and claims 17, 18, 20 to 23 dependent thereon under 35
U.S.C. § 103(a).
We will also not sustain the rejections of independent claims 24 and
32 and claims 25, 26, 28 to 34, 36 to 41 and 43 dependent thereon because
claims 24 and 32 likewise recite an application resident on a smart-card that
is separated into modules.
We will also not sustain the Examiner’s rejection of claims 19, 27 and
35 under 35 U.S.C. § 103(a) as being unpatentable over Coutts in view of
Admitted Prior Art (“APA”) because these claims depend on claims 16, 24
and 32 respectfully and thus include the recitation of an application resident
Appeal 2010-000524
Application 10/725,193

5
on a smart card that is decomposed into modules that we found is missing in
Coutts. APA does not cure this deficiency of Coutts.

DECISION
The decision of the Examiner is reversed.

REVERSED

hh

ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST P.A.
1401 CITRUS CENTER 255 SOUTH ORANGE AVENUE
P.O. BOX 3791
ORLANDO, FL 32802-3791