Ex Parte Loughran et al

Patent Trial and Appeal Board

Sep 20, 2016

12708029 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121708,029 02/18/2010
98665 7590 09/20/2016
Otterstedt, Ellenbogen & Kammer, LLP
P.O Box 381
Cox Cob, CT 06807
FIRST NAMED INVENTOR
Margaret Loughran
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P00512-US-UTIL 3685
EXAMINER
SAVUSDIPHOL, PAULTEP
ART UNIT PAPER NUMBER
2876
MAILDATE DELIVERY MODE
09/20/2016 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARGARET LOUGHRAN,
JAMES CARRINGTON, EDWARD OLEBE,
CHARLES BREUEL, and CHARLES UNGER
Appeal 2015-005098
Application 12/708,029
Technology Center 2800
Before TERRY J. OWENS, KAREN M. HASTINGS, and
LILAN REN, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 2, 4-14, and 21-27 under 35 U.S.C. § 103(a) as
unpatentable over at least the basic combination of Webb (Webb et al., US
2005/0194450 Al, published September 8, 2005) and Mullen (Mullen et al.,
US 2009/0159663 Al, published June 25, 2009). 2 We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
1 The real party in interest is MasterCard International Incorporated. (App.
Br. 3).
2 The Examiner also applies additional prior art to dependent claims 6-9 and
14 (Non-Final Action 12-14). Appellants do not present any additional
arguments for these claims (App. Br. 11 ).
Appeal2015-005098
Application 12/708,029
WEAFFIRivL
Claim 1 is illustrative of the claimed subject matter:
1. A payment card comprising:
a generally planar body having a conventional form
factor, a first side and a second side inseparable from and
coextensive with the first side; and
a plurality of acceptance attributes on said second side,
wherein said acceptance attributes comprise a magnetic stripe, a
signature panel, a cardholder name, a card expiration date, and a
card security code;
wherein said first side is formed without any acceptance
attributes thereon and is fully dedicated to issuer use for non-
acceptance card artwork.
App. Br. 13 (Claims Appendix).
Appellants' arguments focus on limitations common to both claims 1
and 23 (App. Br. 6-10). We choose independent claim 1 as representative.
Appellants do not present any arguments to the dependent claims, including
those claims separately rejected (e.g., App. Br. 11).
ANALYSIS
Upon consideration of the evidence on this appeal record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellants' claims is unpatentable over the applied prior art. We sustain the
Examiner's § 103 rejections essentially for the reasons set out by the
Examiner in the Answer.
We add the following for emphasis.
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Appeal2015-005098
Application 12/708,029
Appellants' main arguments are that "Ivlullen does not teach or suggest
that the permanent information of the card is disposed on a single side" (App.
Br. 8) and "Webb does not teach or suggest that the underside 44 of the bank
card portion [is] available for non-acceptance card artwork" (id.). Appellants
also point out that any combination of Mullen with Webb changes the
principle of operation of Webb which provides both an interactive
multimedia smart card with a multimedia card portion releasably attached to
a banking card portion, and thus there is no "generally planar body having a
conventional form factor" as recited in claim 1 (App. Br. 9; also Reply Br.
generally).
Appellants' arguments mainly address the references separately and
do not fully address the rejection and the inferences of these references that
are presented on this record for our review.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed.
Cir. 1992).
Assuming arguendo that Appellants are correct that Webb's backside
34 of the multimedia card may not properly be considered the first side (of
the payment card) as recited in claim 1 (Reply Br. 9, 10), we see no error in
the Examiner's claim construction. As the Examiner has de facto pointed out,
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Appeal2015-005098
Application 12/708,029
Appellants do not direct us to any specific definition in their Specification for
what constitutes "a generally planar body" or a "conventional form factor" 3
as recited in claim 1 (emphasis added) (Ans. 18). As such, the Examiner has
reasonably determined that these claim terms encompass the bank card
portion of Webb which may be used as a standalone card (not withstanding
that it has a small recess on its backside to accommodate the multimedia
card), (e.g., Ans. 18; Webb ,-i 5). In re ICON Health and Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007) (if the specification does not provide a
definition for claim terms, the broadest reasonable interpretation consistent
with the specification is applied).
Appellants have not identified any error in the Examiner's
determination that one of ordinary skill in the art would have appreciated that
the back side 44 of Webb's bank card may be devoid of any acceptance
attributes (e.g., Ans. 3, noting that Webb's barcode is optional)4 . Notably, all
that is required in claim 1 is that the underside of the payment card be blank,
because "dedicated to issuer use for non-acceptance card artwork" does not
positively recite that there is any such artwork thereon. In any event,
Appellants have not identified any error in the Examiner's determination that
it would have been obvious to one skilled in the art, using no more than
ordinary creativity, to have used the underside for artwork of the issuer of the
payment card in light of the well-known use of such on payment cards, as
3 Indeed, what is "conventional" may be different to different people, and
what is conventional may change over time and/or over geographic locations
around the world.
4W e shall assume arguendo that Appellants are correct that the barcode may
not be viewed as "non-acceptance card artwork" (Reply Br 9, 10).
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Appeal2015-005098
Application 12/708,029
exemplified by Ivlullen' s teaching that a logo of the card issuer may be on
either side of a payment card (Mullen 130; e.g., Ans. 16). In re Keller, 642
F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference .... Rather, the test is what the combined
teachings of [those] references would have suggested to those of ordinary
skill in the art."); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
("Combining the teachings of references does not involve an ability to
combine their specific structures.").
Accordingly, we affirm the Examiner's rejections.
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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