Ex parte Provost

Board of Patent Appeals and Interferences

Sep 25, 2000

08006585 (B.P.A.I. Sep. 25, 2000)

1 Application for patent filed January 21, 1993, entitled
"Plastic Card Personalizer System."
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The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
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Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte DAN PROVOST

Appeal No. 1998-0889
Application 08/006,5851

ON BRIEF

Before THOMAS, BARRETT, and HECKER, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1998-0889
Application 08/006,585
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This is a decision on appeal under 35 U.S.C. § 134 from the
final rejection of claims 1-23 and 41-47. Claims 24-40 stand
allowed.
We affirm-in-part.
BACKGROUND
The disclosed invention is directed to a method and system for
printing personal information on a prepared writing surface of a pre-
manufactured plastic card at the time of issuance.
Claim 1 is reproduced below.
1. A system for electronically recording client personal
information and issuing individually customized
pre-manufactured plastic cards in a single interview with the
card issuing authority, wherein the customized pre-manufactured
plastic cards have a unique card identification affixed to each
card and wherein a permanent record is made of the recorded
client personal information by printing on a prepared writing
surface on the customized pre-manufactured plastic card at the
time of card issuance, comprising:
data entry means for entering the unique card
identification and for entering client personal
information which corresponds to the unique card
identification during a client interview with the card
issuing authority;
means for automatically creating an electronic client
record of the unique card identification and corresponding
client personal information at the time of card issuance;
means for storing the electronic client record at
time of card issuance; and
Appeal No. 1998-0889
Application 08/006,585
2 Our understanding of Otsuka is based on a translation
prepared by the U.S. Patent and Trademark Office, a copy of which
accompanies this decision.
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means for printing a permanent record of the client
personal information at time of card issuance, comprising:
plotting mechanism;
communication means for communicating client
personal information to the plotting mechanism;
a means for holding the customized
pre-manufactured plastic card in printing position;
smudge resistant ink; and
a means for delivering the ink such that the
ink instantly and permanently adheres to the prepared
writing surface.
The Examiner relies on Appellant's admitted prior art (APA)
(specification, p. 1) that cards were made of polyvinyl chloride
(PVC) or polyester and on the following prior art references:
Hyde 4,573,711 March 4, 1986
Cannistra 4,938,830 July 3, 1990
Markoff et al. (Markoff) 5,058,039 October 15, 1991
Hakamatsuka et al. (Hakamatsuka) 0 440 814 August 14, 1991
(European Patent Application)
Otsuka2 4-348996 December 3, 1992
(Japanese Published Unexamined Patent Application (Kokai))
Claims 1, 3, 4, 6-9, 17, 22, 23, and 41-46 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Hakamatsuka and Otsuka.
Appeal No. 1998-0889
Application 08/006,585
3 The Examiner's Answer includes claims 24-40 in this ground of
rejection. However, claims 24-40 were indicated to be allowable in
the Advisory Action (Paper No. 14).
4 For some unknown reason, the Examiner's Answer contains the
following header: "Revision notes for the MPEFP Third Edition,
Revision 1 [12/96]."
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Claims 2, 5, and 10-15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hakamatsuka and Otsuka, further in view of
the APA.
Claims 16 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hakamatsuka and Otsuka, further in view of
Cannistra.
Claims 19-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hakamatsuka and Otsuka, further in view of Hyde.
Claim 47 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hakamatsuka and Otsuka, further in view of
Markoff.3
We refer to the Final Rejection (Paper No. 12), the Examiner's
Answer4 (Paper No. 22) (pages unnumbered, but referred to as "EA__"),
and the Supplemental Examiner's Answer (Paper No. 21) for a statement
of the Examiner's position and to the Brief (Paper No. 21) (pages
referred to as "Br__") and the Reply Brief (Paper No. 20) for
Appellant's arguments thereagainst.
Appeal No. 1998-0889
Application 08/006,585
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OPINION
References not in the statement of rejection are not considered
In the response to the arguments in the Final Rejection, the
Examiner cites the following references as evidence of the facts
Officially Noticed:
Oka et al. 3,897,964 August 5, 1975
Henderson 4,398,202 August 9, 1983
Mitsuyama 5,080,223 January 14, 1992
Hindagolla et al. 5,108,503 April 28, 1992
Venambre et al. 5,283,423 February 1, 1994
Sneed 5,521,002 May 28, 1996
Toda (Japanese abstract) 05-318985 March 4, 1994
The Examiner also refers to Yoshikawa, but we find no record of the
patent number in the file.
Since the references are not applied in the statement of the
rejection they will not be considered. See In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970) ("Where a
reference is relied on to support a rejection, whether or not in a
'minor capacity,' there would appear to be no excuse for not
positively including the reference in the statement of the
rejection."). Introducing references through the "backdoor" to avoid
creating a new ground of rejection or to bolster a rejection that is
deficient is improper. Where references are cited in response to an
Appeal No. 1998-0889
Application 08/006,585
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applicant's challenge to a finding of Official Notice, the references
should be made part of the official rejection. The rejection we
review is the one in the statement of the rejection.
Obviousness
Hakamatsuka discloses a system for issuing ID cards in which
image data (e.g., a person's photograph, signature, etc.) and
attribute data (e.g. name, employee number, address, telephone
number, etc., col. 6, lines 26-28) are printed onto a
pre-manufactured blank card having fixed information such as a
design, the company's mark, etc. (col. 8, lines 46-48; col. 12,
lines 37-57, referring to figure 15). Gradational images such as a
photograph and handwritten signature are printed out by a sublimation
transfer method and non-gradational images such as a name are printed
out by a thermal transfer method to make best use of the properties
of the two methods (col. 6, lines 48-55; figure 10). Hakamatsuka
discloses that a flat transfer apparatus can be used where the cards
are not flexible enough for a roll transfer apparatus (col. 11,
lines 36-41). It is further disclosed (col. 13, lines 17-24):
The processing can be effected directly on a substrate, and no
post-processing is needed. Since recording can be effected
through editing process, it is possible to completely match
each individual identification photograph, code information,
Appeal No. 1998-0889
Application 08/006,585
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e.g., name, post, ID number, etc., magnetic stripe recording
information and emboss information.
The English abstract of Otsuka discloses manufacturing a
plastic ID card from a sheet of synthetic resin using a plotter
attached to a computer. A number of plastic cards are manufactured
from one sheet of the synthetic paper. The translation discloses
that the information is printed using an oil-based ink with a
ballpoint pen, felt tip pen, etc. (translation, p. 8). The
translation discloses (translation, pp. 8-9): "In the above example,
multiple plastic cards were manufactured from one synthetic paper [4]
which was mounted on the plotter [1], but it can be devised to
manufacture one plastic card from one synthetic paper [4] mounted on
the plotter [1]."
The Examiner's rejection finds (EA4) that Hakamatsuka does not
disclose: (1) a plotting mechanism; (2) means for holding the pre-
manufactured card in a printing position; (3) smudge resistant ink;
and (4) means for delivering the ink. The Examiner states (EA4):
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to replace the printer
of Hakamatsuka et al. with the plotter of Otsuka since the
Examiner takes Official Notice of the equivalence use in the
art and the selection of any of these known equivalents to
write information on a plastic card would be within the level
of ordinary skill in the art. . . . Examiner takes Official
Notice that it would have been obvious to one having ordinary
skill in the art at the time the invention was made to use
Appeal No. 1998-0889
Application 08/006,585
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smudge resistant ink, means for delivering ink, and means for
holding the plastic card on a plotting mechanism for printing
information on a plastic card since it was known in the art
that the use of smudge resistant [ink] is [sic, was] widely
use[d] to prevent smudging when writing information on a
substrate, means for delivering ink on a plotting mechanism is
an essential part of a plotter [] to enable the delivery of ink
to the printing area, means for holding the plastic card is a
crucial component to prevent movement of the plastic card while
information is being printed.
Appellants argue that Official Notice is only proper as to
"facts," and that the Examiner misuses Official Notice. It is argued
that it is not proper to take Official Notice of the motivation to
combine or the equivalence of the printer in Hakamatsuka and the
plotter of Otsuka (Br10-12) and that it is improper to use Official
Notice for conclusions of law (Br12-13). It is further argued
(Br14-15) that the Examiner relies on Official Notice as the
"principal evidence" upon which the rejection is based, which is
contrary to In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420-21
(CCPA 1970).
"Assertions of technical facts in areas of esoteric technology
must always be supported by citation to some reference work
recognized as standard in the pertinent art." See Id. at 1091, 165
USPQ at 420; accord In re Pardo, 684 F.2d 912, 917, 214 USPQ 673, 677
(CCPA 1982). See also In re Eynde, 480 F.2d 1364, 1370,
178 USPQ 470, 474 (CCPA 1973) (court will not take judicial notice of
Appeal No. 1998-0889
Application 08/006,585
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the state of the art). Official Notice is intended for facts which
are common knowledge or capable of unquestionable demonstration. See
In re Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961). See also In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966).
The rejection is not well stated. The language of the
rejection clearly misuses the concept of Official Notice. Although
"equivalents" under 35 U.S.C. § 112, sixth paragraph, is a factual
determination, whether a printer and a plotter are "equivalents,"
even if they were in means-plus-function format (which they are not),
is not proper for taking of Official Notice, especially where, as
here, Appellants challenge the finding and provide arguments (Br11).
The Examiner's statement that "Examiner takes Official Notice that it
would have been obvious to one having ordinary skill in the art at
the time the invention was made to use smudge resistant ink, means
for delivering ink, and means for holding the plastic card on a
plotting mechanism for printing information on a plastic card since
[these elements were known in the art]" (EA4) erroneously uses
Official Notice in stating conclusions of law. However, the
statements at the end of the sentence about what was known in the art
are in the form of findings of Official Notice.
Appeal No. 1998-0889
Application 08/006,585
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This is not to say that the combination of Hakamatsuka and
Otsuka is without any merit. Hakamatsuka discloses printing on a
pre-manufactured plastic card using a thermal transfer method to for
non-gradational images, such as a name. Otsuka discloses printing
directly on plastic using an oil-based ink with a plotter to make an
ID card. The plastic has a "prepared writing surface" since the
information can be written directly on its surface. The translation
in Otsuka discloses that the plotter can be used to make one card at
a time (translation, p. 9); thus, both Hakamatsuka and Otsuka
disclose printing a single card. Since both Hakamatsuka and Otsuka
are directed to making cards, one of ordinary skill in the art of
creating customized cards would have considered it obvious to use the
plotter of Otsuka to write on a pre-manufactured card, instead of the
thermal transfer method in Hakamatsuka, because the plotter was a
known alternative way to print a card. The Examiner's taking of
Official Notice of "equivalents" was not required; the reasoning in
the response (EA11-12) is much more persuasive.
The plotter in Otsuka (and, indeed, any conventional plotter)
has a pen which constitutes a "means for delivering the ink." Thus,
it was not necessary for the Examiner to take Official Notice of this
fact. Also, it would have been within the knowledge of one of
Appeal No. 1998-0889
Application 08/006,585
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ordinary skill in the art that there must be some structure for
holding down the material to be printed on in a printing position in
the plotter of Otsuka to keep the material from moving around. No
means-plus-function interpretation has been advanced as to the "means
for holding," so any structure satisfies this function. Thus, we
generally agree with the Examiner's finding that "it was known in the
art that . . . means for holding the plastic card is a crucial
component to prevent movement of the plastic card while information
is being printed" (EA4), although we would use the term "substrate"
instead of the more specific "plastic card." Lastly, although we
agree with the Examiner's finding that "it was known in the art that
the use of smudge resistant [ink] is [sic, was] widely use[d] to
prevent smudging when writing information on a substrate" (EA4), the
reason why one of ordinary of ordinary skill in the art would have
been motivated to use "smudge resistant ink" is because smudge
resistance is a desirable property for ink on cards that will be
handled frequently. Thus, properly argued, the Examiner did not
really need to resort to Official Notice.
This analysis does not address all of the claim limitations.
With respect to claim 1, the rejection does not address the
limitations that "the customized pre-manufactured card have a unique
Appeal No. 1998-0889
Application 08/006,585
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card identification affixed to each card" and "data entry means for
entering the unique card identification." Similar limitations are
found in method claim 41. All limitations in a claim must be
addressed. See In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548
(CCPA 1970) ("every limitation positively recited in a claim must be
given effect in order to determine what subject matter that claim
defines"); In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970) ("All words in a claim must be considered in judging the
patentability of that claim against the prior art."). Accordingly,
the rejection of claims 1, 41, and 42 is reversed. The APA does not
cure the deficiencies with respect to claim 1; thus, the rejection of
claim 2 is also reversed.
With respect to claim 23, the rejection does not address the
limitations of a "host data processing system" and "means for sending
and receiving both data and information from the host data processing
system." The rejection of claim 23 is reversed.
Appellant argues that Hakamatsuka does not disclose issuance of
pre-manufactured plastic cards during a single interview with the
card issuing authority (Br9-10). We have trouble seeing how the
single interview/card issuance limitations provide any structural or
process limitations that distinguish over the references. Although
Appeal No. 1998-0889
Application 08/006,585
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the system in Hakamatsuka appears intended to be a central system,
there is no structural or process reason why it cannot be used to
issue cards during an interview, where the interview in Hakamatsuka
is the time during which the personal information and photograph is
gathered. Nor is there any structural or process reason why Otsuka
cannot be used to issue cards during an interview. The fact that
using the systems in Hakamatsuka or Otsuka would possibly be more
complex and expensive than Appellant's system, and therefore not
practical for a small card-issuing operation, is not a technical
reason indicating nonobviousness. See Orthopedic Equipment Co., Inc.
v. United States, 702 F.2d 1005, 1013, 217 USPQ 193, 200 (Fed. Cir.
1983) ("the fact that the two disclosed apparatus would not be
combined by businessmen for economic reasons is not the same as
saying that it could not be done because skilled persons in the art
felt that there was some technological incompatibility that prevented
their combination. Only the latter fact is telling on the issue of
nonobviousness."); In re Farrenkopf, 713 F.2d 714, 718, 219 USPQ 1, 4
(Fed. Cir. 1983).
Claims 3 and 8 are similar to each other. The limitations of a
"cardholder," "smudge resistant" ink, "means for delivering the ink,"
and card issuance during a client interview have been addressed
Appeal No. 1998-0889
Application 08/006,585
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supra, As previously noted, since Otsuka prints directly on the
plastic card, the card must have a "prepared writing surface," as
broadly claimed. Claim 3 recites a "permanent water resistant ink"
and claim 8 recites "permanent ink." The oil-based ink in Otsuka is
considered to meet these limitations. In addition, however, it would
have been within the level of skill of one of ordinary skill in the
art to select the ink for its intended purpose and one of ordinary
skill would have been motivated to use a permanent water resistant
ink on a card that will be handled frequently so that the card is
more durable and does not have to replaced. A conclusion of
obviousness may be made from common knowledge and common sense of the
person of ordinary skill in the art without any specific hint or
suggestion in a particular reference. See In re Bozek,
416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Claim 3 recites
"means for entering a unique card number" and claim 8 recites "means
for entry of card specific data." These limitations do not require
that the card number or data be part of the card, as manufactured;
compare claim 1, which recites "pre-manufactured plastic cards have a
unique card identification affixed to each card." The unique card
number and card specific data can refer to the ID number in
Hakamatsuka and Otsuka which is printed on the card. For these
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Application 08/006,585
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reasons, the rejections of claims 3 and 8 are sustained. Claims 6
and 7 are not separately argued and fall together with claim 3.
Claims 12-15 and 19-22 are not separately argued and fall together
with claim 8. Thus, the rejections of claims 6, 7, 12-15, and 19-22
are also sustained.
The plotter of claim 4 is taught by Otsuka, as discussed in
connection with claim 1. The rejection of claim 4 is sustained.
Claim 5 recites a dot matrix printer. The Examiner takes
Official Notice of the equivalence of a dot matrix printer to the
printers in Hakamatsuka and Otsuka and concludes that it would have
been obvious to replace the printer of Hakamatsuka with a dot matrix
printer (EA6). The Examiner points to Appellant's statement that the
printing system can take a variety of forms, such as a dot matrix,
bubble jet printer, a laser printer, or a plotter (EA6). Appellant
argues that there is nothing in the record which discloses a dot
matrix printer for printing on a card during a client interview
(Br20). In our opinion, one of ordinary skill in the art, having
been taught in Hakamatsuka to use sublimation transfer and thermal
transfer to print on a card and having been taught in Otsuka to use a
plotter to print on a card, would have been motivated to use other
conventional printing devices, such as a dot matrix printer, to print
Appeal No. 1998-0889
Application 08/006,585
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on a card. We do not rely on Appellant's statement that the printing
device may take a variety of forms because it does not appear to be
an admission as to prior art in the card printing art. The rejection
of claim 5 is sustained.
With respect to claims 9-11, neither Hakamatsuka nor Otsuka
disclose printing on a card having "pre-embossed alphanumeric
characters." While we agree with the Examiner that embossing on
cards is well known, this does not address the claimed invention of
printing on a card that contains embossed characters. Thus, the
Examiner has failed to make a prima facie case with respect to claims
9-11. The rejection of claims 9-11 is reversed.
Claim 16, 17, and 18 are directed to the prepared writing
surface. As to claim 17, the Examiner finds that Hakamatsuka teaches
a writing surface comprising paper at column 10, lines 37-38.
Appellant argues that this disclosure relates to material used in
sublimation printing, not paper to be used for a prepared writing
surface (Br25). The paper base material 22a does not receive the
actual printing and, so, is not a prepared writing surface. Thus,
the rejection of claim 17 is reversed.
As to claims 16 and 18, the Examiner applies Cannistra, which
the Examiner finds to disclose a writing surface comprising foil
Appeal No. 1998-0889
Application 08/006,585
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material and a matted finish at column 4, line 7, and column 3, lines
43+ (EA7). Appellant argues that Cannistra does not disclose
printing on a prepared writing surface, but instead discloses a
coating which is placed over the already printed information (Br22).
We agree with Appellant that the coating and the magnetic foil strip
in Cannistra are not part of a prepared writing surface. While we
believe that at least a matted finish was known for such purposes as
a signature strip, there is no teaching of using it for printing of
information by a printer. The rejection of claims 16 and 18 is
reversed.
Claim 47 describes the structure of the plotter, including an
indentation to hold the card and a finger hole for assisting in
removing the card from the cardholder. The Examiner takes Official
Notice that it would have been obvious to design a finger hole to
facilitate removal of the card (EA8, with respect to claim 24).
Appellant argues that this is inappropriate for Official Notice
(Br26). We agree with Appellant and find no other reasons that could
be relied on. For at least this reason we conclude the Examiner has
failed to establish a prima facie case of obviousness. The rejection
of claim 47 is reversed.
Appeal No. 1998-0889
Application 08/006,585
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The limitations of claims 43-45 have been discussed in
connection with claims 1, 3, 4, and 8. Because independent claim 43
does not contain the limitations of independent claim 1 on which the
rejection was reversed, it does not stand or fall together with
claim 1 as argued by Appellant (Br23). The separate patentability of
claim 46 has not been argued. The rejection of claims 43-46 is
sustained.
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Application 08/006,585
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CONCLUSION
The rejections of claims 1, 2, 9-11, 16-18, 23, 41, 42, and 47
are reversed.
The rejections of claims 3-8, 12-15, 19-22, and 43-46 are
sustained.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
Appeal No. 1998-0889
Application 08/006,585
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Aldo Noto
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