Sonia Reed et al.Download PDFPatent Trials and Appeals BoardMar 31, 202013648142 - (D) (P.T.A.B. Mar. 31, 2020) Copy Citation 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. 13/648,142 10/09/2012 Sonia Reed 079900-0853645 1064 66945 7590 03/31/2020 KILPATRICK TOWNSEND & STOCKTON LLP/VISA Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER CAMPEN, KELLY SCAGGS ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 03/31/2020 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): KTSDocketing2@kilpatrick.foundationip.com ipefiling@kilpatricktownsend.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte SONIA REED, KENNETH SIPPOLA, and JULIAN SCHMIDT1 ________________ Appeal 2018-005574 Application 13/648,142 Technology Center 3600 ________________ Before BRADLEY W. BAUMEISTER, SHARON FENICK, and RUSSELL E. CASS, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–3, 5–7, 10–12, and 21–30, which constitute all claims pending in this application. Appeal Br. 5–16.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Visa International Service Association as the real party in interest. Appeal Brief filed January 8, 2018 (“Appeal Br.”) 2. 2 Rather than repeat the Examiner’s positions and Appellant’s arguments in their entirety, we refer to the above mentioned Appeal Brief, as well as the following documents for their respective details: the Final Action mailed August 8, 2017 (“Final Act.”); the Examiner’s Answer mailed March 9, 2018 (“Ans.”); and the Reply Brief filed May 9, 2018 (“Reply Br.”). Appeal 2018-005574 Application 13/648,142 2 CLAIMED SUBJECT MATTER Appellant describes the present invention as “[a] payment device having identifying numbers configured in aligned segments in order to facilitate use of the payment device.” Abstract. Independent claim 1, which illustrates the appealed claims, reads as follows: 1. A payment device comprising: a substrate comprising a top edge, a bottom edge, and side edges; a user element on the substrate, wherein the user element is configured to identify a user of the payment device; an account identifier on the substrate, wherein the account identifier on the substrate is divided into four segments on the substrate, wherein the four segments are in a vertically stacked relationship, wherein the four segments comprise a first horizontal segment of four numbers, a second horizontal segment of four numbers, a third horizontal segment of four numbers, and a fourth horizontal segment of four numbers, wherein the first horizontal segment is above the second horizontal segment, the second horizontal segment is above the third horizontal segment, and the third horizontal segment is above the fourth horizontal segment, and wherein the first horizontal segment is further from the bottom edge than the second, third, and fourth horizontal segments; and an interface element configured to provide and store the account identifier, wherein the account identifier is a 16[-]digit credit or debit card account number. Appeal 2018-005574 Application 13/648,142 3 THE REFERENCES The Examiner bases the prior-art rejection on the following references: Name Reference Date Shomron 5,259,649 Nov. 9, 1993 Finn US 2008/0308641 A1 Dec. 18, 2008 Bona et al. (“Bona”) US 2011/0101109 A1 May 5, 2011 Mayleben, New look for credit cards more than a fancy facelift, John Mayleben Blog, Feb. 11, 2011 (“Mayleben”) STATEMENT OF THE REJECTION Claims 1–3, 5–7, 10–12, and 21–30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Finn, Mayleben, Bona, and Shomron. Final Act. 4–8. STANDARD OF REVIEW The Board conducts a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). DETERMINATIONS AND CONTENTIONS The Examiner finds that Finn discloses most of the limitations of independent claim 1 including a substrate, a user element on the substrate, an interface element, and an account identifier, which entails 16 digits broken into four groups of four digits. Final Act. 4–5. The Examiner finds that Finn does not expressly disclose that the four segments of digits may be arranged in a vertically stacked arrangement, as claimed. Id. at 5. Appeal 2018-005574 Application 13/648,142 4 The Examiner relies on Mayleben for teaching a Visa card that is printed in a vertical, or portrait, orientation instead of the more traditional horizontal, or landscape, orientation. Id. (citing Mayleben ¶ 2). The Examiner relies on Bona for teaching “a series of four stacked vertical numbers.” Id. at 6 (citing Bona ¶ 19). The Examiner relies on Shomron for teaching “a credit card with four stacks of four numbers for an account number.” Id. (citing Shomron Abstract; FIG. 2). The Examiner determines that motivation existed to combine the cited references in the manner recited by independent claim 1. Id. Appellant presents an array of arguments for why the cited references, viewed either alone or in combination, do not teach or suggest providing the digits of the account identifier so as to be arranged in four vertically stacked divided segments of four digits, as claimed (hereafter “a stacked account number”). App. Br. 5–13. Among these reasons, Appellant argues that the Declaration of Kenneth Sippola pursuant to 37 C.F.R. § 1.132 (“the Sippola Declaration”) establishes that embodiments of the invention have non- obvious advantages and that the Examiner erred in failing to consider these secondary considerations of non-obviousness. Id. at 9–13. ANALYSIS Appellant does not dispute whether the cited references teach or suggest the substrate, a user element on the substrate, an account identifier on the substrate, or the interface elements. See generally Appeal Br.; Reply Br. That is, Appellant does not argue whether the cited references teach or suggest any of the claim elements other than the account identifier limitation. Id. Appeal 2018-005574 Application 13/648,142 5 With respect to the account identifier’s digits, Appellant does not argue that arranging the digits “in a vertically stacked relationship” provides any functional or structural relationship to the associated card substrate. Id. For example, this is not a situation in which the account identifier digits are printed on a card so as to be physically raised above the substrate surface in a manner that would allow a credit card reader to take an imprint of the digits. Rather, Appellant only argues that stacked account number improves the card’s ease of use when conducting transactions based on a survey of card users. Appeal Br. 9–10 (citing the Sippola Declaration). Furthermore, we find no disclosure in Appellant’s Specification that reasonably indicates that the stacked account number is functionally or structurally related to the substrate in any manner. See, e.g., Spec. ¶¶ 2–4 (explaining that the invention is directed to overcoming the problem of card users finding it difficult to remember a horizontal string of credit-card account numbers). As such, the visual arrangement of the account identifier as a stacked account number, as claimed, reasonably can be characterized as constituting printed matter. It is well settled that matter printed on a substrate merely constitutes non-functional descriptive material. The Examiner need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1583–84 (Fed. Cir. 1994); Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005), aff’d, slip op. 06-1003 (Fed. Cir. 2006); see also MPEP § 2111.05 (explaining that patentable weight is only given to printed matter when it is in functional relationship to the associated product). Furthermore, our reviewing court has held specifically that printed matter cannot be relied Appeal 2018-005574 Application 13/648,142 6 upon for providing evidence of secondary considerations of non- obviousness. Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024, 1035 (Fed. Cir. 2018) (“[s]uch printed matter cannot be brought within the ambit of patent eligibility by showing that it was surprising. No patentable weight means no patentable weight.”). Accordingly, Appellant has not demonstrated reversible error in the Examiner’s rejection of independent claim 1. We, therefore, affirm the obviousness rejection of claim 1 and of claims 3, 5–7, 10–12, and 21–32, which Appellant does not argue separately. See Appeal Br. 5–16. CLAIM 2 Claim 2 reads as follows: 2. The payment device of claim 1 wherein the account identifier is a first account identifier and wherein the payment device comprises a second account identifier with the two or more segments in a linear format, wherein the second account identifier comprises the same credit or debit card account number as the first account identifier. Dependent claim 2 recites an arrangement of a second account identifier. For the reasons set forth in relation to claim 1, we determine that claim 2, likewise, merely recites printed matter that cannot be relied upon to patentably distinguish the claimed invention over the cited art. We, therefore, affirm the obviousness rejection of claim 2, as well. Appeal 2018-005574 Application 13/648,142 7 DECISION SUMMARY In summary: TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–3, 5–7, 10–12, 21–30 103 Finn, Mayleben, Bona, Shomron 1–3, 5–7, 10–12, 21– 30 Copy with citationCopy as parenthetical citation