Ex Parte Pratone

Patent Trial and Appeal Board

Nov 19, 2014

11666553 (P.T.A.B. Nov. 19, 2014)

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.
11/666,553 04/30/2007 Davide Pratone 09952.0458 9909
22852 7590 11/19/2014
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
TAYLOR, NATHAN SCOTT
ART UNIT PAPER NUMBER
2643
MAIL DATE DELIVERY MODE
11/19/2014 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 DAVIDE PRATONE
____________________

Appeal 2012-009026
Application 11/666,553
Technology Center 2600
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-009026
Application 11/666,553

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 21–26 and 28–40. Claims 1–20 and 27 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Exemplary Claim
Exemplary independent claim 21 under appeal, with disputed the
limitations emphasized, reads as follows:

21. A user system comprising:

a first terminal equipment;

an integrated circuit card configured to cooperate with
said first terminal equipment;

a memory card that communicates with the first terminal
equipment through a proprietary protocol that depends on a
memory card type;

a card link application provided in said integrated circuit
card to establish and manage a secure logical connection
between said integrated circuit card and said memory card
through said first terminal equipment; and

a first application programming interface provided in
said first terminal equipment to receive and process commands
from said card link application and to cooperate with said card
link application to establish said secure logical connection
between said integrated circuit card and said memory card
through said first terminal equipment.

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Application 11/666,553

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The Examiner’s Rejection
The Examiner rejected claims 21–26 and 28–40 as being unpatentable
under 35 U.S.C. § 103(a) over Basquin (US 6,925,560 B1; issued Aug. 2,
2005) in view of Chang (US 2003/0093812 A1; issued May 15, 2003). Ans.
4–15.
Appellant’s Contentions
1

Appellant contends (Br. 10–16) that the Examiner erred in rejecting
claims 21–26 and 28–40 under 35 U.S.C. § 103(a) over Basquin and Chang
for numerous reasons, including generally (Br. 11–15) that the combination
of references fails to teach or suggest the salient limitations of a user system,
including: (i) a proprietary protocol; (ii) receive and process commands to
establish a secure logical connection; and/or (iii) a first application
programming interface provided in a first terminal.
Reply Brief
No Reply Brief has been presented. Therefore, Appellant has not
disputed the Examiner’s articulated reasoning and findings found at pages
15–18 of the Answer.
Principal Issue on Appeal
Based on Appellant’s arguments in the Appeal Brief (Br. 10–16), the
following principal issue is presented on appeal:

1
Independent claims 21 and 31, and claims 22–26, 28–30, and 32–40 which
depend therefrom, contain similar disputed limitations and are not separately
argued by Appellant (see Br. 15–16 where Appellant relies on the same
arguments for claim 21 as to claims 21–26 and 28–40). Therefore, we select
claim 21 as representative of claims 21–26 and 28–40 and decide the appeal
of all claims on the basis of representative claim 21.
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Application 11/666,553

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Did the Examiner err in rejecting claims 21–26 and 28–40 under
35 U.S.C. § 103(a) over Basquin and Chang because the combination of
references fails to teach or suggest the disputed limitations of the user
system set forth in representative claim 21, including: (i) a proprietary
protocol; (ii) receive and process commands to establish a secure logical
connection; and/or (iii) a first application programming interface provided in
a first terminal?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief that the Examiner has erred. Br. 10–16. We
disagree with Appellant’s conclusions. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Ans. 4–15), and (2) the reasons set forth by the Examiner in
the Examiner’s Answer (Ans. 15–18) in response to Appellant’s Appeal
Brief. We concur with the conclusions reached by the Examiner.
We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one
cannot show non-obviousness by attacking references individually where the
rejections are based on a combination of references) (citation omitted).
Appellant makes arguments with regard to claim 21 (Br. 10–15)
concerning the individual shortcomings in the teachings of each of the
applied references to Basquin and Chang. These arguments, however, are
not convincing of the non-obviousness of the claimed invention set forth in
independent claim 21.
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For example, Appellant criticizes Chang individually (Br. 15) for not
teaching or suggesting the limitations of claim 21 of receiving and
processing commands (done by the recited first application programming
interface), when the Examiner has relied upon the combination of Basquin
(interface 35 which receives and processes commands) and Chang
(proprietary interface in para. 0037) to teach or suggest this feature (Ans. 6
and 16–18).
Basquin discloses a first application programming interface as set
forth in the last paragraph of claim 21 (Fig. 1, input-output interface 35 and
Fig. 2; col. 4, l. 60–col. 5, l. 27; col. 5, ll. 57–62; col. 6, ll. 9–col. 7, l. 2).
Chang discloses that an interface (e.g., smart card reader 140) uses a
proprietary protocol (see ¶ 0037). Specifically, Chang discloses:
The smart card reader 140 is an ISO7816 smart-card
interface . . . . The smart card reader may use an ISO7816
interface or a Universal Serial Bus (USB) Protocol, or a Serial
Parallel Interface (SPI) or a proprietary system such as Sony’s
Memory Stick Interface and Protocol. It must be understood
that the physical interface, e.g. Smart Card, SPI, or Memory
Stick Interface, could be used with Universal Serial Bus (USB)
protocol.

(Chang, ¶ 0037 (emphasis added)). In view of the above disclosure in
Chang, we agree with the Examiner (Ans. 15–16) that Chang supports and
suggests the use of any protocol, and not necessarily just the Sony Memory
Stick Interface.
Appellant’s argument (Br. 14–15) that Basquin’s input/output
interface 35 is not equivalent to the recited first application programming
interface are not persuasive insofar as being incommensurate with the scope
of the claimed invention. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
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Application 11/666,553

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Cir. 1998) (“[The] proffered facts . . . are not commensurate with the claim
scope and are therefore unpersuasive.”). While the specification can be
examined for proper context of a claim term, limitations from the
specification will not be imported into the claims. CollegeNet, Inc. v.
ApplyYourself Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005). See also In re
Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993).
In the instant case, Appellant contends (Br. 15) that Basquin’s
interface 35 shown in Figure 1 is “transparent” and thus does not receive and
process commands to establish a secure logical connection as recited in
claim 21. First, Basquin discloses that “everything takes place . . . as if
terminal TE – in fact, the microcontroller 32 and the input output interface
35 – were to be transparent to data exchanged between the two cards” (col.
6, ll. 23–27) (italicized emphases added). Thus, we find that Basquin merely
discloses simulating transparency, not actual tranparency. Second, claim 21
does not contain limitations positively requiring a lack of transparency (i.e.,
negatively requiring transparency). Therefore, Basquin’s disclosure of
simulated transparency does not prevent the combination of Basquin and
Chang from being encompassed by the subject matter actually recited in
claim 21. We agree with the Examiner’s claim interpretation and finding
(Ans. 16–17) that Basquin’s input-output interface 35 teaches and fairly
suggests the recited first application programming interface found in claim
21 on appeal.
We are not persuaded by Appellant’s assertion (Br. 11) that Chang
cannot be combined with Basquin because Basquin’s chip cards are not
standard memory cards without processors (i.e., Basquin’s chip cards C1 and
C2 have processors). Appellant’s assertion is based on the premise that “one
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Application 11/666,553

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of ordinary skill in the art would appreciate, a standard memory card, such
as ‘a multimedia card, a secure digital
TM
input/output card, [and] a memory
stick
TM
card’ (Appellant’s specification, p. 1, ll. 24-25), do not include a
microprocessor” (Br. 11). However, because claim 21 only recites “an
integrated circuit card” and “a memory card” connected by an interface, we
find no requirement that the recited card(s) have a processor. Again,
Appellant’s argument is not commensurate in scope with the claim language,
and we will not import limitations from the Specification into the claims.
See CollegeNet v. ApplyYourself, 418 F.3d at 1231; see also Van Geuns, 988
F.2d 1181.
In view of the foregoing, we sustain the Examiner’s obviousness
rejection of representative claim 21, as well as claims 22–26 and 28–40
grouped therewith.

CONCLUSION OF LAW
The Examiner did not err in rejecting claims 21–26 and 28–40 under
35 U.S.C. § 103(a) over Basquin and Chang.

DECISION
The Examiner’s rejection of claims 21–26 and 28–40 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
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