Ex Parte Marcon

Board of Patent Appeals and Interferences

Aug 12, 2010

10266660 (B.P.A.I. Aug. 12, 2010)

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.
10/266,660 10/08/2002 Robert Victor Marcon CASE-12 6703
7590 08/12/2010
THE LAW OFFICE OF JAMES C. SIMMONS
11 FALMOUTH LANE
WILLIAMSVILLE, NY 14221
EXAMINER
FISCHER, ANDREW J
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
08/12/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT VICTOR MARCON
____________

Appeal 2009-012753
Application 10/266,660
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, 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 2009-012753
Application 10/266,660
2

STATEMENT OF THE CASE
Robert Victor Marcon (Appellant) seeks our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 1, 3, 5-7, 11 and 21-34.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.2

THE INVENTION
The invention is an electronic transaction card with two magnetic
stripes which can be used for various applications. Specification 2:32-37.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A multifunction electronic transaction card
comprising a base card and at l east two
electronically readable magnetic stripes
incorporated therein, indicia on said base card
providing information relative to each of said at
least two magnetic stripes, and wherein said a t
least two magnetic stripes are adapted such that
said at least two magnetic stripes are allocated to
and controlled by different business entities
respectively.

2 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Sep. 27, 2007) and the Examiner’s Answer (“Answer,” mailed Jan. 24,
2008).
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Staats
Marceau
Hopkins
Hazama
US 3,855,033
US 5,491,326
US 5,999,624
US 6,234,902 B1
Dec. 17, 1974
Feb. 13, 1996
Dec. 7, 1999
May 22, 2001
The following rejections3 are before us for review:
1. Claims 1, 3, 5, 6, 11, 21, and 25 are rejected under 35 U.S.C. §102(e)
as being anticipated by Hopkins.
2. Claims 26 and 30-34 are rejected under 35 U.S.C. §102(e) as being
anticipated by Hazama.
3. Claim 7 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Hopkins and Marceau.
4. Claims 22-24 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hopkins and Staats.
5. Claims 27-29 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hazama and Staats.
6. Claims 1, 3, 5, 6, 11, 21, and 25 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Hopkins and Hazama.
7. Claim 7 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Hopkins, Marceau, and Hazama.

3 The Examiner withdrew the rejections of claims 26-24 and 30, under 35
U.S.C. §112, second paragraph. Answer 20. Therefore, those rejections are
not before us for review.
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8. Claims 22-24 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hopkins, Staats, and Hazama.

ISSUES
The first issue is whether claims 1, 3, 5, 6, 11, 21, and 25 are
anticipated under 35 U.S.C. §102(e) by Hopkins. Specifically, the issue is
whether Hopkins describes “at least two magnetic stripes are adapted such
that said at least two magnetic stripes are allocated to and controlled by
different business entities respectively.”
The second issue is whether claims 26 and 30-34 are anticipated under
35 U.S.C. §102(e) as being anticipated by Hazama. Specifically, the issue is
whether Hazama describes a step of allocating and allowing control of, the at
least two magnetic stripes to different business entities, respectively. The
rejection of claims 27-29 under 35 U.S.C. §103(a) as being unpatentable
over Hazama and Staats also turn on this issue.
The third issue is whether claims 1, 3, 5, 6, 11, 21, and 25 are
unpatentable under 35 U.S.C. §103(a) over Hopkins and Hazama.
Specifically, the issue is whether Hopkins and Hazama teaches that “at least
two magnetic stripes are adapted such that said at least two magnetic stripes
are allocated to and controlled by different business entities respectively.”
The rejections of claims 7 and 22-24 under 35 U.S.C. § 103(a) also turn on
this issue.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
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Application 10/266,660
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Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Hopkins, in claims 4, 10, and 13, states: “wherein the information
corresponding to at least one payment account corresponds to
information included in a first or second magnetic stripe of a credit
card.”
2. Hazama, in column 1, lines 22-31 states:
There is utilized such a magnetic card formed with
two magnetic stripes and incorporating two sets of
functions corresponding to the two magnetic
stripes. This is intended to provide[d] the single
magnetic card with the two sets of functions by
differentiating the magnetic card with the two sets
of functions by differentiating the magnetic stripes
read by a card reader when a change in inserting
direction into the card reader. The above-
mentioned two sets of functions may include an
application of a variety of functions. For example,
the single magnetic card can serve as a bank
deposit card and a cashing card.

ANALYSIS
The rejection of claims 1, 3, 5, 6, 11, 21, and 25 are rejected under 35
U.S.C. §102(e) as being anticipated by Hopkins.
The Appellant argued claims 1, 3, 5, 6, 11, 21, and 25 as a group
(Br. 15-20). We select claim 1 as the representative claim for this group,
and the remaining claims 3, 5, 6, 11, 21, and 25 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2009).
The Appellant and the Examiner dispute whether Hopkins anticipates
a card having two magnetic stripes, where that the stripes are adapted such
that said at least two magnetic stripes are allocated to and controlled by
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different business entities. Br. 15-20 and Answer 20-22. The dispute seems
to center upon the appropriate weight to give the functional recitation above.
Id. The Appellant argues that the Examiner has not properly considered this
structural limitation and merely alleges that the card could be used to
perform the claimed function. Br. 15-20. The Appellant argues that
“[w]hen an electronic transaction card is thusly adapted (for example,
programmed), it constitutes a change in structure, i.e., the make-up of the
magnetic stripes is altered by the programming to a different structure, as is
commonly known. Thus, the stripes in such a card are structurally different
from stripes in a card which is not allocated to and controlled by different
business entities respectively. Hopkins (as well as Hazama and other art of
record disclosing two-stripe electronic cards) does not show or disclose such
a structural limitation.” Br. 16.
We agree with the Appellant that the functional language must be
considered and agree that in order to anticipate the prior art structure must
have the capability of functioning in the same manner. In re Schreiber, 128
F.3d 1473, 1477-78 (Fed. Cir. 1997). See also In re Swinehart, 439 F.2d
210, 160 USPQ 226 (CCPA 1971). However, we disagree with the
Appellant that the magnetic stripes described in Hopkins are not capable of
performing the recited function because it does not have specific
programming that allocates the stripe to a business entity or allows the stripe
to be controlled by a business entity.
Claim 1 recites “wherein said at least two magnetic stripes are
adapted such that said at least two magnetic stripes are allocated to and
controlled by different business entities respectively.” We see nothing in
this limitation, or the remainder of claim 1, that requires the magnetic stripes
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be allocated to and controlled by different business entities by programming
the magnetic stripes. Programming of the magnetic stripes to perform this
function is not required by claim 1, as the Appellant seems to argue (See Br.
16-17). Nothing in claim 1 precludes the magnetic stripes from being
allocated to or controlled by different business entities by merely assigning
the different stripes to the different business. In which case, we find no
structural difference between the claimed magnetic stripes and those
described in Hopkins. We note that Hopkins describes a card that has a
structure that includes two magnetic stripes and the magnetic stripes have a
structure that is capable of being encoded with information. FF 1. The
Appellant does not dispute this. See Br. 15. Accordingly, we find that the
Appellant has not overcome the rejection of claim 1, and claims 3, 5, 6, 11,
21, and 25, dependent thereon, under 35 U.S.C. § 102(e) as being anticipated
by Hopkins.

The rejection of claims 26 and 30-34 under 35 U.S.C. §102(e) as
being anticipated by Hazama and the rejection of claims 27-29 under 35
U.S.C. §103(a) as being unpatentable over Hazama and Staats.
Claims 26-29 and 30-32
Claim 26, unlike claim 1, recites a method which includes a step of
“allocating and allowing control of the at least two magnetic stripes to
different business entities respectively.” This step is drawn to an action of
allocating and allowing control of the at least two magnetic stripes to
different business entities and, therefore, in order for claim 26 to be
anticipated, this action must be inherently or expressly describes by Hazama.
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The Examiner relies upon column 1, lines 22-40 of Hazama to teach
this step. Answer 22-23. Column 1, lines 22-31 describes a magnetic card
with two stripes, which each performing a different function such as bank
deposit card or a cashing card. FF 2. The Appellant argues that this passage
of Hazama does not expressly or inherently describe the step at issue. App.
Br. 20-22.
The Examiner responds:
For example, Hazama disclose a first stripe with a
bank deposit card function and a second stripe with
a cashing card function (‘902, column 1, lines 28-
31). Hence, the prior art discloses allocating and
allowing control of the magnetic stripes to two
different entities. More specifically, in order to
read on Appellant’s “allocating” and “allowing” all
that is required of a prior art card is two different
magnetic stripes on the card be usable by two
different entities associated with the magnetic
stripe functions. Recall, Hazama explicitly teaches
allocating distinct functions to distinct magnetic
stripes (‘902, column 1, lines 28-31), therefore the
card of Hazama necessarily accommodates two
different entities (e.g. companies, stores, devices,
people) that provide bank deposit and cashing
services.
Answer 23.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). “Inherent anticipation requires that the missing
descriptive material is ‘necessarily present,’ not merely probably or possibly
present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d
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1292, 1295, 63 USPQ2d 1597, 1599 (Fed. Cir. 2002) (quoting In re
Robertson, 169 F.3d 743, 745,49 USPQ2d 1949, 1950-5 1 (Fed. Cir. 1999)).
We find that the portion of Hazama cited by the Examiner does not
expressly describe the recited step of allocating and allowing control of the
at least two magnetic stripes to different business entities. Further, in as
much as the Examiner may be arguing that Hazama inherently describes the
step at issue, we find that Hazama also does not inherently describe this step
since it is only possibly and not necessarily present that this step is
performed. For example, one bank could control both of the deposit and
cashing functions. We find that Hazama does not expressly or inherently
describe the claimed step of step of allocating and allowing control of the at
least two magnetic stripes to different business entities.
Accordingly, we find that the Appellant has overcome the rejection of
claim 26 and claims 27-29 and 30-32, dependent thereon, under 35
U.S.C. § 102(e) as being anticipated by Hazama.

Claims 33 and 34
Claim 33 also describes a method and includes a step of “allocating
and allowing control of the at least two magnetic stripes to different business
entities respectively which are organized to use the at least two magnetic
stripes to jointly carry out transactions.” To reject claim 33, the Examiner
relies upon the same rationale as used to reject claim 26 (Cf. Answer 6 and
7) and to traverse the rejection of claim 33, the Appellant relies upon the
same argument as to traverse the rejection of claim 26 (Br. 22-25). For the
same reasons as above, we find that the Appellant has overcome the
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rejection of claim 33, and claim 34, dependent thereon, under 35
U.S.C. § 102(e) as being anticipated by Hazama.

The rejection of claims 1, 3, 5, 6, 11, 21, and 25 are rejected under 35
U.S.C. §103(a) as being unpatentable over Hopkins and Hazama and the
rejections of claims 7 and 22-24 under 35 U.S.C. §103(a).
The Appellant argued claims 1, 3, 5-7, 11, and 21- 25 as a group
(Br. 25-27). We select claim 1 as the representative claim for this group,
and the remaining claims 3, 5-7, 11, and 21- 25 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellant argues that “[f]or the reasons as discussed above, with
respect to the anticipation rejection of these same claims . . . over Hopkins,
Hopkins does not disclose or suggest either explicitly or inherently that
magnetic stripes are allocated to and controlled by different business entities
respectively” and also argues that Hazama does teaches or suggest this
limitation for generally the same reasons as discussed with respect to the
anticipation rejection of claim 26. Br. 26-27.
As discussed above with regards the anticipation rejection of claim 1,
we find that Hopkins teaches this limitation. Further, we note that Hazama,
like Hopkins, describes a magnetic card having two magnetic stripes, which
are encoded for different functions. FF 2. For the same reasons as discussed
above with respect to the anticipation rejection of claim 1, we are not
persuaded by the Appellant’s argument as to Hazama and find that Hazama
also teaches this limitation. Accordingly, we find that the Appellant has not
overcome the rejection of claim 1, and claims 3, 5-7, 11, and 21-25,
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dependent thereon, under 35 U.S.C. § 103(a) as being unpatentable over
Hopkins and Hazama.

DECISION
The decision of the Examiner to reject claims 1, 3, 5-7, 11 and 21-25
is affirmed.
The decision of the Examiner to reject claims 26-34 is reversed.
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) (2007).

AFFIRMED-IN-PART

mev

THE LAW OFFICE OF JAMES C. SIMMONS
11 FALMOUTH LANE
WILLIAMSVILLE NY 14221