Ex parte Everett

Board of Patent Appeals and Interferences

May 31, 2000

08343540 (B.P.A.I. May. 31, 2000)

1
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(2) is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte DAVID EVERETT
______________
Appeal No. 1998-0085
Application 08/343,540
_______________
HEARD: MAY 15, 2000
_______________
Before FLEMING, GROSS and LEVY, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims
1 through 17, all the claims pending in the present application.
The invention relates to reading data from a smart card.
The independent claim 1 is reproduced as follows:
Appeal No. 1998-0085
Application 08/343,540
2
1. A method of reading data from a smart card, the smart card
having a microprocessor and a memory holding use-variable data, the
method comprising:
Appeal No. 1998-0085
Application 08/343,540
Appellant filed an appeal brief on October 11, 1996. Appellant filed1
a reply brief on July 28,1997. The Examiner stated in a letter dated February
24, 2000, that receipt is acknowledged of the reply brief filed. The Examiner
further stated that the application is provided to the Board of Patent Appeals
and Interferences for further considerations. Although it is not entirely
clear that the Examiner has entered and considered the reply brief, we note
that the Examiner has not made it clear that the reply brief had not been
considered or entered. In view of no clear statement that the reply brief is
not considered or entered, we will treat the reply brief as being entered and
considered and as properly before us for our consideration.
3
coupling a reader to the card to establish a data transmission
path between the reader and the card;
accessing required use-variable data in said memory; and
incorporating said accessed data as part of an answer-to-reset
signal transmitted from the card to the reader.
The Examiner relies on the following reference:
Claus et al. (Claus) 5,310,999 May 10, 1994
Claims 1 through 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over appellant's disclosed prior art in view of
Claus.
Rather than reiterate the arguments of the Appellant and the
Examiner, reference is made to the briefs and answer for the1
respective details thereof.
OPINION
We will not sustain the rejection of claims 1 through 17 under
Appeal No. 1998-0085
Application 08/343,540
4
35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case. It
is the burden of the Examiner to establish why one having ordinary
skill in the art would have been led to the claimed invention by
the express teachings or suggestions found in the prior art, or by
implications contained in such teachings or suggestions. In re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed invention
should be considered as a whole; there is no legally recognizable
'heart' of the invention." Para-Ordnance Mfg. v. SGS Importers
Int'l., 73 F.3d 1085, 1087,
37 USPQ2d 1237, 1239 (Fed. Cir. 1995), cert. denied, 519 U.S. 822
(1996) citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
On pages 6 and 7 of the brief, Appellant argues that the
Examiner has incorrectly read Claus. In particular, Appellant
argues that Claus does not teach an ATR signal having use-variable
data contained therein. To further support the Appellant's
arguments, Appellant has provided a declaration of William Reding,
Appeal No. 1998-0085
Application 08/343,540
5
wherein Mr. Reding indicates that he cannot find a disclosure or
suggestion in the Claus reference that a ATR signal includes
variable data.
Upon our careful review of Claus, we fail to find that Claus
teaches that the ATR signal includes variable data. Furthermore,
we note that independent claim 1 recites “incorporating said
accessed data as part of an answer to reset signal transmitted from
the card to the reader.” Therefore, we find that the Examiner has
failed to show that the prior art teaches this limitation.
We are not inclined to dispense with proof by evidence when
the proposition at issue is not supported by a teaching in a prior
art reference or shown to be common knowledge of unquestionable
demon-stration. Our reviewing court requires this evidence in
order to establish a prima facie case. In re Piasecki, 745 F.2d
1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984); In re Knapp-
Monarch Co.,
296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d
664, 668, 148 USPQ 268, 271-72 (CCPA 1966). Furthermore, our
Appeal No. 1998-0085
Application 08/343,540
6
reviewing court states in In re Piasecki, 745 F.2d at 1472, 223
USPQ at 788 (Fed. Cir. 1984) the following:
The Supreme Court in Graham v. John Deere Co., 383 U.S.
1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966),
focused on the procedural and evidentiary processes in
reaching a conclusion under section 103. As adapted to
ex parte procedure, Graham is interpreted as continuing
to place the “burden of proof on the Patent Office which
requires it to produce the factual basis for its
rejection of an application under sections 103 and 103.”
Citing In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173,
177 (CCPA 1967).
Appeal No. 1998-0085
Application 08/343,540
7
We have not sustained the rejection of claims 1 through 17
under 35 U.S.C. § 103. Accordingly, the Examiner's decision is
reversed.
REVERSED
Michael R. Fleming )
Administrative Patent Judge )
)
)
)
Anita Pellman Gross ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Stuart S. Levy )
Administrative Patent Judge )

MRF/cam
Appeal No. 1998-0085
Application 08/343,540
8
Nixon and Vanderhye
8th Floor
1100 North Glebe Road
Arlington, VA 22201-4714