Ex Parte Kean

Board of Patent Appeals and Interferences

Jun 20, 2011

10900011 (B.P.A.I. Jun. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN THOMAS KEAN
____________

Appeal 2009-011941
Application 10/900,0111
Technology Center 2400
____________

Before HOWARD B. BLANKENSHIP, CAROLYN D. THOMAS, and
DEBRA K. STEPHENS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is First Data Corporation.
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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-42. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates to security arrangements for presentation
instruments, such as credit cards, debit cards, etc. (Spec., ¶ [0002].)
Claim 1 is illustrative:
1. A presentation instrument, comprising:
a first information encoding region, wherein the first
information encoding region has a unique characteristic, the first
information encoding region having stored thereon an account
identifier;
a second information encoding region having a first
security value stored thereon, wherein the first security value relates
to the unique characteristic of the first information encoding region.

Appellant appeals the following rejections:
1. Claims 1, 2, 4-9, 11, 17, 18, 20-24, 27-30, 32-36, and 42 under 35
U.S.C. § 102(b) as anticipated by Wankmueller (US 2003/0121969 A1, Jul.
3, 2003); and
2. Claims 3, 10, 12-16, 19, 25, 26, 31, and 37-41 under 35 U.S.C.
§ 103(a) as unpatentable over Wankmueller.

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FACTUAL FINDINGS
Wankmueller
1. Wankmueller discloses that “payment cards have stored account
information including a first portion readable by a first machine-readable
technology and a second portion readable by a second different machine-
readable technology.” (Abstract.)
2. In Wankmueller, “[t]he bar code is encoded with at least one or
more digits of the payment account number (PAN).” (¶[0017].) “The
remaining account information is stored in the RF chip or circuitry.”
(¶[0018].)
3. Wankmueller discloses that “the RF chip calculates an
authentication code for verification by the issuer using its unique
cryptographic authentication key and the following data . . . PAN digits.”
(¶[0030]-[0031].)
4. Wankmueller discloses that “in addition to bar code and RF
technologies, the machine-readable technologies may be magnetic stripe.”
(¶[0011].)

Specification
5. Appellant’s Specification discloses that “when a purchaser presents
a card having a magnetic stripe to settle a transaction, the account identifier
is read from the magnetic stripe and the magnetic fingerprint of the magnetic
stripe is sensed.” (¶[0005].)

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ANALYSIS
Group I: Appellant argues claims 1, 2, 4-9, 11, and 28 as a group
(App. Br. 4-5). For claims 2, 4-9, 11, and 28, Appellant repeats the same
argument made for claim 1. We will, therefore, treat claims 2, 4-9, 11, and
28 as standing or falling with claim 1.
Group II: Appellant argues claims 17, 18, 20-24, 27, 29, 30, and 32-
36 as a group (App. Br.5). For claims 18, 20-24, 27, 29, 30, and 32-36,
Appellant repeats the same argument made for claim 17. We will, therefore,
treat claims 18, 20-24, 27, 29, 30, and 32-36 as standing or falling with
claim 17.
Group III: Appellant separately argues claim 42. (App. Br. 5-6.)
Group IV: We shall group claims 3, 10, 12-16, 19, 25, 26, 31, and
37-41 together for reasons set forth below.
See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

Group I
Claims 1, 2, 4-9, 11, and 28
Issue 1: Did the Examiner err in finding that Wankmueller discloses
that the first security value relates to the unique characteristic, as set forth in
claim 1?

Appellant contends that Wankmueller “does not teach encoding a
characteristic of an information encoding region into another information
encoding region.” (App. Br. 5.) Appellant further contends that
Wankmeuller’s “authentication code cannot be the claimed first security
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value because it is not derived from a unique characteristic of the first
information encoding region.” (Id.)
The Examiner found that the claim language does not require
“encoding a characteristic of an information encoding region into another
information encoding region.” (Ans. 12.) The Examiner further found that
“the security value does not need to be derived from the unique
characteristic, but it must relate to the unique characteristic in the first
information encoding region as claimed.” (Id.) We agree with the
Examiner.
First, we note that although Appellant argues that the first security
value must be derived from the unique characteristic, Appellant has chosen
to draft the claims, claim 1 in particular, far more broadly. Claim 1 merely
requires that the first security value relates to the unique characteristic. (See
Claim 1.) “Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). During patent
prosecution, claims are construed as broadly as is reasonable. Hence, the
claimed relates to reads on any type of connection between the two
components, not merely derived therefrom as argued by Appellant. Thus,
Appellant’s arguments are not commensurate with the actual scope of instant
claim 1, as claim 1 does not require “deriving” anything.
Secondly, we see no error in the Examiner’s equating the recited “first
security value relates to the unique characteristic” to Wankmueller’s
“authentication code” in the RF chip (i.e., second portion) being related to
the personal account information in the bar code (i.e., first portion) (Ans. 12;
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FFs 1-3), given the scope and breadth of Appellant’s claim 1. The express
language of claim 1 places no requirement on how the security value must
be related to the unique characteristic. Thus, we find the Examiner’s
findings reasonable, as the Examiner has established that Wankmueller’s
authentication code found in the second portion is related to the PAN digits
found in the first portion.
In view of the above discussion, since Appellant has not demonstrated
that the Examiner erred in finding the argued limitations in the disclosure of
Wankmueller, the Examiner’s 35 U.S.C. § 102(b) rejection of representative
independent claim 1, as well as claims 2, 4-9, 11, and 28 not separately
argued by Appellant, is sustained.

Group II
Claims 17, 18, 20-24, 27, 29, 30, and 32-36
Issue 2: Did the Examiner err in finding that Wankmueller discloses
sensing a unique characteristic and comparing the sensed unique
characteristic to the first value, as set forth in claim 17?

Appellant contends that “Wankmueller does not teach a unique
characteristic that is sensed then compared to a first security value.” (App.
Br. 5.)
The Examiner found that Wankmueller discloses a first and second
portion readable by a first and second machine-readable technology,
respectively, and a verification method. (Ans. 3-4.)
Here, Wankmeuller discloses reading the stored information (e.g.,
sensing the information) and verifying an authentication code, which
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includes some level of comparison. (FFs 1-3.) In other words, we find that
the claimed “sensing and comparing” reads on Wankmeuller’s machine-
readable technology and verification mode.
In view of the above discussion, since Appellant has not demonstrated
that the Examiner erred in finding the argued limitations in the disclosure of
Wankmueller, the Examiner’s 35 U.S.C. § 102(b) rejection of claim 17, as
well as claims 18, 20-24, 27, 29, 30, and 32-36 not separately argued by
Appellant, is sustained.

Group III
Claim 42
Issue 3: Did the Examiner err in finding that Wankmueller discloses
that the first security value relates to the magnetic fingerprint of the
magnetic encoding region, as set forth in claim 42?

Appellant contends that “Wankmueller does not teach or suggest that
the authentication codes relates to the magnetic fingerprint of the magnetic
encoding region.” (App. Br. 6.)
The Examiner found that Wankmueller discloses “in addition to bar
code and RF technologies, the machine-readable technologies may be
magnetic stripe.” (Ans. 5.)
Here, the Examiner has shown that Wankmueller’s invention can be
realized using a “magnetic stripe” in addition to a bar code and RF
technologies illustrated above. While Wankmueller does not expressly state
how the magnetic stripe uses a magnetic fingerprint, Appellant’s
Specification admits that it is commonly known that when a magnetic stripe
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is read, the magnetic fingerprint is sensed (FF 5). Thus, we find that the
Examiner has reasonably shown that Wankmueller’s invention can be
realized with a magnetic stripe/magnetic fingerprint, whereby the above
noted reading and sensing techniques are performed, i.e., the first security
value relates to the magnetic fingerprint.
In view of the above discussion, since Appellant has not demonstrated
that the Examiner erred in finding the argued limitations in the disclosure of
Wankmueller, the Examiner’s 35 U.S.C. § 102(b) rejection of claim 42 is
sustained.

Group IV
Claims 3, 10, 12-16, 19, 25, 26, 31, 37-41
Issue 4: Did the Examiner err in finding that Wankmueller discloses
the limitations as set forth in clams 3, 10, 12-16, 19, 25, 26, 31, and 37-41?
Appellant presents no arguments pertaining to the Examiner’s
obviousness rejections of claims 3, 10, 12-16, 19, 25, 26, 31, 37-41 (Ans. 7-
11). Accordingly, we summarily sustain these rejections. See Manual of
Patent Examining Procedure (MPEP) § 1205.02, 8th ed., Rev. 8, July 2010
(“If a ground of rejection stated by the examiner is not addressed in the
[A]ppellant's brief, that ground of rejection will be summarily sustained by
the Board.”).

DECISION
We affirm the Examiner’s § 102 and § 103 rejections.

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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) (2010).

AFFIRMED

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