INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Oct 29, 2021

2021001575 (P.T.A.B. Oct. 29, 2021)

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.
15/586,324 05/04/2017 DOMINIC L. DEMARCO POU920170092US1 2227
46429 7590 10/29/2021
CANTOR COLBURN LLP-IBM POUGHKEEPSIE
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
SHAHABI, ARI ARASTOO
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
10/29/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOMINIC L. DEMARCO, THOMAS D. FITZSIMMONS,
TROY A. FLAGG, and RYAN P. GOLDEN1
Appeal 2021-001575
Application 15/586,324
Technology Center 3600
Before DEBORAH KATZ, JOHN G. NEW, and ROBERT A. POLLOCK,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies International Business Machines as the real
party-in-interest. App. Br. 2.
Appeal 2021-001575
Application 15/586,324

2
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 8–12, 14, 21, and 22. Specifically,
claims 8–12, 14, 21, and 22 stand rejected as unpatentable under 35 U.S.C.
§ 112(a) for failing to meet the written description requirement. Claims 8–
12, 14, 21, and 22 also stand rejected as unpatentable under 35 U.S.C.
§ 112(b) for being indefinite.
Claims 8–12, 14, and 21 also stand rejected as unpatentable under 35
U.S.C. § 103 as being obvious over the combination of Bogosian (US
5,513,272, April 30, 1996) (“Bogosian”), Nuzum et al. (US 2016/0162895
A1, June 9, 2016) (“Nuzum”), and Smith, Sr. (US 6,969,006 B1, November
29, 2005) (“Smith”). Claim 22 stands rejected as unpatentable under 35
U.S.C. § 103 as being obvious over the combination of Bogosian, Nuzum,
Smith, and Siler (US 2008/0154427 A1, June 26, 2008) (“Siler”).2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
The claims are directed to a system for identifying stolen payment
cards, the system including a fingerprint scanner for obtaining fingerprints
from payment cards. Spec. ¶¶ 1, 3.

2 The Examiner provisionally rejected claims 8–12, 14, 21, and 22 on the
ground of nonstatutory double patenting as being unpatentable over claims
1–5, 8, and 9 of Application No. 15/801,333. That application is now
abandoned and the rejection is consequently moot.
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Application 15/586,324

3
REPRESENTATIVE CLAIM
Independent claim 8 is representative of the claims on appeal and
recites:
8. A transaction processing terminal for identifying stolen
payment cards, the transaction processing terminal comprising:

a processor communicatively coupled to a memory;

a card reader configured to receive a payment card;

a fingerprint scanner communicatively coupled to the
processor and the memory, wherein the fingerprint scanner is
configured to scan a surface of the payment card and capture
fingerprints disposed on the surface of the payment card; and

a card cleaner configured to clean the surface of the
payment card after the surface of the payment card is scanned
and prior to dispensing the payment card from the transaction
processing terminal, wherein the processor is configured to:

compare the captured fingerprints to one or more
authorized fingerprints associated with the payment card;

based on detecting that the captured fingerprints are
different than the one or more authorized fingerprints,
determine whether the payment card has been reported
stolen; and

based on a determination that the payment card has
been reported stolen, create and transmit an alert of an
attempted use of the payment card.
App. Br. 8.
Appeal 2021-001575
Application 15/586,324

4
ISSUES AND ANALYSIS
We adopt the Examiner’s findings, reasoning, and conclusion that the
claims on appeal: (1) lack descriptive support; (2) are indefinite; and (3) are
prima facie obvious over the combined cited prior art. We address the
arguments raised by Appellant below.

Issue 1:
Appellant argues that the Examiner errs in finding the amended claims
include new matter and thus fails to comply with the written description
requirement.

Analysis
The Examiner finds that the amended limitations of claim 8, reciting a
“transaction processing terminal” comprising a processor and memory, the
processor configured to “determine whether the payment card has been
reported stolen” and “create and transmit an alert,” have no support in
Appellant’s Specification. Final Act. 6. The Examiner concludes that a
person of ordinary skill in the art would therefore not have recognized in the
Specification a description of the invention as claimed. See id.
Specifically, the Examiner finds that the Specification describes a
“transaction processing system” that is distinct from a “transaction
processing terminal.” Final Act. 6 (citing Spec. ¶¶ 18, 19, 21, Figs. 1, 2).
The Examiner finds that the Specification describes the transaction
processing system, not the terminal, as comprising a processor and memory.
Id. The Examiner finds further that the Specification describes the
transaction processing system, not the terminal, is configured to determine if
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5
the payment card has been stolen and to create and transmit an alert. Id.
(citing Spec. ¶¶ 29, 34).
Appellant responds by arguing that “there is a strong presumption that
an adequate written description of the claimed invention is present in the
specification as filed … unless or until sufficient evidence or reasoning to
the contrary has been presented by the Examiner to rebut this presumption.”
App. Br. 4 (citing MPEP § 2163(II)(A)). Appellant further quotes portions
of the Specification, specifically paragraph 0018 which describes a
“transaction processing terminal 10 that is in communication with a
transaction processing system 14,” and paragraph 0020 which describes
“processing system 100 for use in implementing a system,” using hardware,
software, or a combination thereof. Id.
We do not find Appellant’s argument persuasive. The Examiner set
forth express findings of fact alleging a lack of written description, namely
that the Specification describes the claimed limitations as relating to a
transaction processing system, not a transaction processing terminal.
Accordingly, the Examiner established a prima facie case of a lack of
written description. Appellant fails to address the Examiner’s findings by,
for example, providing evidence that the Specification describes a
transaction processing terminal with the claimed limitations. In the absence
of any substantive argument by Appellant, we have no reason to disbelieve
the Examiner’s fact finding. Furthermore, we determine that the Examiner’s
findings are supported by the record. See Ex Parte Frye, 94 U.S.P.Q.2d
1072, 1075 (BPAI 2010) (precedential). Accordingly, we affirm the
Examiner’s rejection on this ground.

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Issue 2:
Appellant argues that the claims do not refer to multiple statutory
classes and thus are not indefinite hybrid claims.

Analysis
The Examiner finds that claims recite “acts/functions not attributed to
any structural elements or claimed structural elements of the transaction
processing terminal.” Final Act. 7. The Examiner concludes that “the
claims contain limitations that make reference to multiple statutory classes
of invention and as such, are ambiguous and properly rejected under 35
U.S.C. § 112(b) for failing to particularly point out and distinctly claim the
invention.” Id. (citing UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d
816, 826 (Fed. Cir. 2016)).
Appellant argues that “[c]laim 8 is a system claim and contains no
reference or mention of a computer program product or a method.” App. Br.
5.3 Accordingly, Appellant disagrees with the Examiner’s findings as to
multiple statutory classes and “acts/functions not attributed to any structural
elements of the claims.” Id.
We are not persuaded by Appellant’s argument. Our reviewing court
has held that “a single claim covering both an apparatus and a method of use
of that apparatus fails to meet the requirements of § 112 because it is unclear
whether infringement occurs when one creates an infringing system, or
whether infringement occurs when the user actually uses the system in an
infringing manner.” UltimatePointer, 816 F.3d at 826. Accordingly, that

3 The term “system” does not appear in claim 8. See App. Br. 8.
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claim 8 recites a “system” does not preclude the claim from being indefinite
for reciting both an apparatus and method of using that apparatus. Claim 8
recites both an apparatus (terminal) and various functions or steps that may
be performed. See App. Br. 8. Apparatus claims with functional language
may be definite where the claim recites structure capable of performing the
recited function. See UltimatePointer, 816 F.3d at 826. However, Appellant
does not make this argument, and we decline to make the argument on their
behalf. See Frye, 94 U.S.P.Q.2d at 1075; see also 37 C.F.R. § 41.37(c)(1)
(iv) (“A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”).
Accordingly, we affirm the Examiner’s rejection on this ground.

Issue 3:
Appellant argues that the Examiner erred in determining prima facie
obviousness over Bogosian, Nuzum, and Smith because Smith teaches away
from the combination.

Analysis
The Examiner finds that Bogosian teaches a system including a card
reader configured to receive a payment card and a fingerprint scanner
configured to scan the surface of the payment card and capture fingerprints
disposed on that surface. Final Act. 8 (citing Bogosian col. 2, ll. 19–24, 37–
39, col. 4, ll. 16–26, col. 6, ll. 19–67, col. 7, ll. 1–29). The Examiner finds
that Bogosian’s system includes a processor configured to detect whether the
captured fingerprints are authorized fingerprints, and if not, determine
whether the payment card has been reported stolen. Id. (citing Bogosian col.
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2, ll. 53–63, col. 3, ll. 19–24, col 5, ll. 6–34, col. 7, ll. 7–17). The Examiner
finds that Nuzum teaches a processor configured to create and transmit an
alert of an attempted use of a stolen payment card. Id. at 8–9 (citing Nuzum
¶¶ 28–29).
The Examiner finds that Smith teaches “a card cleaner configured to
clean the surface of the payment card after the surface of the payment card is
scanned and prior to dispensing the payment card from the transaction
processing terminal.” Final Act. 9 (citing Smith col. 29, ll. 28–48). The
Examiner finds that in the context of two transactions, Smith teaches
cleaning the card after the first transaction and prior to scanning the card in
the second transaction. See Ans. 6–7. The Examiner finds that a person of
ordinary skill in the art would have modified the combined teachings of
Bogosian and Nuzum with Smith to improve capturing fingerprints from a
payment card. Final Act. 9.
Appellant argues all of the obviousness rejections and claims together.
App. Br. 5. Appellant argues that “Smith teaches away from a card cleaner
configured to clean the surface of the payment card after the surface of the
payment card is scanned and prior to dispensing the payment card from the
transaction processing terminal.” Id. at 6. Appellant argues that Smith
teaches a card reading apparatus that cleans a card prior to reading the card
to improve the accuracy and reliability of reading encoded data. Id. at 6–7
(citing Smith col. 29, ll. 18–28). Appellant argues that Smith explicitly
teaches away from scanning the card before cleaning the card and therefore
a person of ordinary skill in the art would not have combined Bogosian and
Nuzum with Smith. Id. at 7.
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We are not persuaded by Appellant’s argument because we do not
agree that Smith teaches away from the combination. Although Smith
teaches cleaning a card before reading the card to improve accuracy, Smith
does not “criticize, discredit, or otherwise discourage,” combining a card
cleaning device with a fingerprint scanner and card reader. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Smith discloses a reason to
modify the apparatus of Bogosian and Nuzum to improve accuracy of
reading a payment card by cleaning the card after scanning for fingerprints
but prior to processing the card with a card reader. See Smith col. 29, ll. 23–
27, 43–48; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20
(2007) (“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls.… [A]ny need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.”). As identified by the
Examiner, the resulting combination teaches a terminal with a card reader,
fingerprint scanner, and a card cleaner configured to clean the surface of the
payment card after the surface of the payment card is scanned (for
fingerprints) and prior to dispensing the payment card from the transaction
processing terminal. Accordingly, we affirm the Examiner’s rejection on
this ground.
We consequently conclude that Appellant’s arguments and evidence
are insufficient to overcome the Examiner’s prima facie conclusion that the
claims are obvious over the combined cited prior art, and we affirm the
Examiner’s rejection of claims 8–12, 14, 21, and 22.

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Application 15/586,324

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CONCLUSION
The Examiner’s rejections of claims 8–12, 14, 21, and 22 under 35
U.S.C. §§ 112(a), 112(b), and 103 are 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8–12, 14,
21, 22
112 Written
Description
8–12, 14,
21, 22

8–12, 14,
21, 22
112 Indefiniteness 8–12, 14,
21, 22

8–12, 14, 21 103 Bogosian, Nuzum,
Smith
8–12, 14, 21
22 103 Bogosian, Nuzum,
Smith, Siler
22
Overall
Outcome
8–12, 14,
21, 22