Ex Parte Loughran et al

Patent Trial and Appeal Board

Dec 22, 2016

12708029 (P.T.A.B. Dec. 22, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/708,029 02/18/2010 Margaret Loughran P00512-US-UTIL 3685
98665 7590 12/22/2016
Otterstedt, Ellenbogen & Kammer, LLP
P.0 Box 381
Cox Cob, CT 06807
EXAMINER
SAVUSDIPHOL, PAULTEP
ART UNIT PAPER NUMBER
2876
MAIL DATE DELIVERY MODE
12/22/2016 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 REQUEST FOR REHEARING
This is in response to a Request for Rehearing (“Req. Reh’g”), dated
November 21, 2016, of our Decision, mailed September 20, 2016
(“Decision”), wherein we affirmed the Examiner’s § 103 rejections of all
appealed claims.
We have reconsidered our Decision of September 20, 2016, in light of
Appellants’ comments in the Request for Rehearing, and we find no error in
the disposition of the § 103 rejections.
We have reviewed the arguments set forth by Appellants in the
Request. However, we remain of the opinion that the subject matter of the
claims is properly rejected and unpatentable under 35 U.S.C. § 103(a).
Appeal 2015-005098
Application 12/708,029
Appellants argue that the Decision “evidences a misapprehension of
the Examiner’s argument” regarding claim construction (Req. Reh’g 4).1
Appellants point out that the Specification at page 11 lines 17—18 was
particularly identified in the Summary of Claims Subject Matter in the
Appeal Brief and Reply Brief and states “Cards may conform to the ISO/IEC
7810 ID-I format for example (also referred to as ‘full sized’ or
‘conventional form factor’),” (emphasis added) (Req. Reh’g 4).
This is not persuasive of any error in our Decision. As stated therein,
Appellants did not direct us (or the Examiner) in the argument section of
their briefs to any specific definition in their Specification for what
constitutes “a generally planar body” or a “conventional form factor” of the
claimed payment card as recited in independent claims 1 and 23 (Claims
Appendix) (Decision 3,4). In any event, the aforementioned sentence
pointed out by Appellants does not constitute an explicit definition of either
phrase. Furthermore, even assuming arguendo that the ISO/IEC 7810 ID-I
format is limiting, Appellants fail to explain why it would not have been
within the ordinary level of skill for the bank card portion of Webb to satisfy
that format (for example, Appellants do not provide us with any description
of that format; and certainly do not provide us with any definition that
mandates that such a bank card format may not have a shallow recess within
one of its large planar sides therein as in Webb).
1 While Appellants state that our “finding” of a lack of any specific
definition “appears to be an undesignated new ground of rejection” (Req.
Reh’g 3), we do not agree. The Examiner’s rejection was clearly predicted
upon the claim language not excluding the banking card portion of Webb
(e.g., Ans. 17, 18).
2
Appeal 2015-005098
Application 12/708,029
Accordingly, no persuasive merit is present in Appellants’ argument
that our Decision misapprehended the Examiner’s argument (Req. Reh’g 3).
All of the remaining arguments basically repeat the arguments previously set
forth in the Appeal and Reply Briefs and hinge on the aforementioned claim
construction issue (Req. Reh’g 5—10).
Thus, we decline to modify our decision to affirm the Examiner’s
§ 103 rejections of the appealed claims.
In conclusion, based on the foregoing, Appellants’ Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making changes to the final disposition of the rejections therein.
This Decision on the Request for Rehearing incorporates our
Decision, mailed September 20, 2016, and is final for the purposes of
judicial review. See 37 C.F.R. 41.52 (a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v)(2010).
DENIED
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