Ex Parte Thomason

Board of Patent Appeals and Interferences

Oct 5, 2006

09916537 (B.P.A.I. Oct. 5, 2006)

The opinion in support of the decision being entered today was not written for publication and is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TAMRA L. THOMASON
__________

Appeal No. 2006-2267
Application No. 09/916,537
___________

ON BRIEF
___________

Before HAIRSTON, JERRY SMITH and BLANKENSHIP, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 through 3, 5, 7 through 15 and 17
through 20.
The disclosed invention relates to a method and system that reads a user data card to
determine a network location at which user information is stored. The retrieved data is used to
complete a form by populating form data fields.

Appeal No. 2006-2267
Application No. 09/916,537

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Claim 1 is illustrative of the claimed invention, and it reads as follows:
1. A method for completing forms, comprising;

reading a user data card to determine a network location at which user information to be
added to a form is stored;

retrieving the user information from the network location;

configuring the user information for merging with the form;

merging the user information into the form by populating form data fields with pieces of
the user information; and

printing a hard copy form that contains at least a portion of the user information.
The references relied on by the examiner are:
Goheen 5,724,520 Mar. 3, 1998
Lynch 5,852,977 Dec. 29, 1998
Berger et al. (Berger) 6,112,986 Sept. 5, 2000
Kennedy et al. (Kennedy) 6,651,217 Nov. 18, 2003
(filed Sept. 1, 1999)

Claims 1 through 3, 5 and 7 through 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kennedy in view of Goheen and Berger.
Claims 14, 15 and 17 through 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kennedy in view of Goheen, Berger and Lynch.
Reference is made to the briefs and the answer for the respective positions of the
appellant and the examiner.

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Application No. 09/916,537

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OPINION
We have carefully considered the entire record before us, and we will reverse the
obviousness rejections of claims 1 through 3, 5, 7 through 15 and 17 through 20.
In Kennedy, a prepopulated data structure 206 is stored for future use in automatically
populating a form with values stored in the data structure (Figure 2; Abstract; column 1, lines 9
through 12; column 6, lines 19 through 67).
The examiner acknowledges (answer, page 4) that Kennedy does not teach the claim 1
steps of “reading a user data card to determine a network location at which user information to
be added to a form is stored,” “retrieving the user information from the network location,” and
“printing a hard copy form that contains at least a portion of the user information.” According to
the examiner (answer, page 4), Goheen teaches the steps missing in Kennedy.
Goheen describes an electronic card that replaces a paper ticket for gaining access to a
carrier (e.g., an airline) (Figures 2A and 2B; Abstract). The encoded information on the card is
scanned by ATM-type machines at the airport (column 2, lines 51 through 66).
The examiner contends (answer, page 4) that Goheen swipes the card at the ATM-type
machine and “retrieves passenger information from the central database across a network and
prints out the passenger travel information at the mobile/ATM location.”
The examiner turned to Berger for “motivation to combine the card identification system
to access more information on a user via a mobile unit (Berger, col. 4, line 50) and completing

Appeal No. 2006-2267
Application No. 09/916,537

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portions of a form, in order to save time and prevent errors in filling out forms (Berger, col. 4,
lines 60-67)” (answer, pages 4 and 5).
Berger places a patient’s medical data on a credit card-like medium 10, and the data
placed on the card can be scanned into a computer (Figure 1; Abstract; column 6, lines 25
through 38). Berger decreases the amount of paperwork needed for a patient, and reduces the
number of errors on printed forms (column 4, lines 52 through 67; column 10, lines 5 through
21).
Appellant argues inter alia (brief, pages 13 and 14; reply brief, page 2) that the applied
references, even if properly combinable, still fail to teach or suggest “reading a user data card to
determine a network location at which user information to be added to a form is stored.”
We agree with the appellant’s argument. In Goheen, the card is used strictly for
validation and identification purposes, and it is not used to locate data for form completion
purposes (column 2, lines 51 through 60). In fact, Goheen specifically states that the electronic
card is used in lieu of a printed paper ticket (column 1, lines 14 through 18; column 4, lines 28
and 29). Although a printed copy can be made of patient data in Berger, the card 10 is not used
to determine “a network location” for data that will populate the printed copy.
In summary, the obviousness rejection of claims 1 through 3, 5 and 7 through 13 based
upon the combined teachings of Kennedy, Goheen and Berger is reversed.

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The obviousness rejection of claims 14, 15 and 17 through 20 is likewise reversed
because the teachings of Lynch fail to cure the noted shortcoming in the teachings of Kennedy,
Goheen and Berger.
DECISION
The decision of the examiner rejecting claims 1 through 3, 5, 7 through 15 and 17
through 20 under 35 U.S.C. § 103(a) is reversed.
REVERSED

)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )

KWH:pgc
Appeal No. 2006-2267
Application No. 09/916,537

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