CPI Card Group - Colorado, Inc.

Patent Trials and Appeals Board

Nov 12, 2020

14704067 - (D) (P.T.A.B. Nov. 12, 2020)

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.
14/704,067 05/05/2015 Dennis R. Smith P275405.US.04 2303
20686 7590 11/12/2020
DORSEY & WHITNEY LLP - Denver
INTELLECTUAL PROPERTY DEPARTMENT
1400 Wewatta Street
SUITE 400
DENVER, CO 80202-5549
EXAMINER
STINSON, CHELSEA E.
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/12/2020 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):
docketing-dv@dorsey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS R. SMITH
Appeal 2019-002960
Application 14/704,067
Technology Center 3700
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge SCHNEIDER.

Opinion Dissenting filed by Administrative Patent Judge FREDMAN.

SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–26. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as CPI Card
Group – Colorado, Inc. Appeal Br. 1.
Appeal 2019-002960
Application 14/704,067
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CLAIMED SUBJECT MATTER
The claims are directed to an ultrasecure card package designed to
deter theft and unaccountable activation of activatable point of sale cards.
Spec. 1. Claim 11, reproduced below, is illustrative of the claimed subject
matter:
11. A method for producing a secure card package, comprising:
providing a first paperboard panel and a second
paperboard panel each comprising paper stock and having an
inner surface;
locating a point-of-sale activatable card between the inner
surface of the first paperboard panel and the inner surface of the
second paperboard panel;
forming a laminated layer bonding the two paperboard
panels together only in a region around the card to enclose the
card between the paperboard panels, wherein the laminated layer
comprises a first polymer layer adjacent to the first paperboard
panel and a second polymer layer adjacent to the second
paperboard panel, wherein the first polymer layer is extruded
onto the inner surface of the first paperboard panel and the
second polymer layer is extruded onto the inner surface of the
second paperboard panel; and
defining a line of separation in at least one of the first
paperboard panel and the second paperboard panel
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Canamero US 4,720,011 January 19, 1988
Goade, Sr. US 6,109,439 August 29, 2000
Chakiris et al. US 2007/0063021 A1 March 22, 2007

Appeal 2019-002960
Application 14/704,067
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REJECTIONS
The Examiner has rejected the pending claims as follows:
Claims 11–15 and 18–26 have been rejected under 35 U.S.C. § 103(a)
as unpatentable over Goade in view of Chakiris.
Claims 16 and 17 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Goade in view of Chakiris and Canamero.
OPINION
Both rejections are based on the combined teachings of Goade and
Chakiris. Both Appellant and the Examiner have focused their arguments on
these references. See, e.g., Appeal Br. 3–9. In addition, claims 16 and 17
depend from claim 11. Therefore we shall treat the two rejection together.
Issue
The issue on appeal is whether the Examiner has correctly found that
the subject matter of the rejected claims would have been obvious to one of
ordinary skill in the art at the time the invention was made over Goade
combined with Chakiris or Chakiris and Canamero.
The Examiner finds that Goade teaches a method for producing a
secure card package comprising the steps of providing first and second
paperboard panels; locating a point-of-sale activatable card between the two
paperboard panels; forming a laminate bonding between the two paperboard
panels using two polymer layers with one polymer layer extruded on the first
paperboard panel and the second polymer layer extruded on the second
paperboard panel; and defining a line of separation in the paperboard panels.
Final Act. 3. The Examiner finds that Goade does not teach “the step of
forming a laminated layer bonding the two paperboard panels together only
Appeal 2019-002960
Application 14/704,067
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in a region around the card.” Id. The Examiner finds that Chakiris teaches
this limitation. Id. at 4.
The Examiner concludes
Therefore, it would be obvious to one of ordinary skill in
the art at the time of the invention to modify the method as
disclosed by Goade with the step of forming a laminated layer
bonding the two paperboard panels together only in a region
around the card as taught by Chakiris in order to further ensure
that there is no heat damage is [sic] done to the card.
Id.
Appellant contends that Goade, alone or in combination with the other
references, fails to teach or suggest the claimed invention. Appeal Br. 3.
Appellant contends that Goade teaches that the polymer layer adheres the
data card to the paperboard panels in contrast to the present invention where
the polymer layer is only applied around the card to enclose the card
between the paperboard panels. Id. Appellant contends that Goade applies
the polymer to the surface of the card to provide a tamper detection
capability and to secure the card in a non-sliding relationship with the
covering. Id. at 4. Appellant contends that given this teaching of Goade, it
would be improper to modify Goade to form a laminate only around the card
as it would render Goade unsatisfactory for its intended purpose. Id. at 5–6.
Appellant contends that Goade teaches away from the proposed combination
as the proposed modification would not achieve the stated benefits of the
package disclosed in Goade. Id. at 6–7. Finally, Appellant contends that the
Examiner’s motivation to combine is faulty as Goade teaches a method for
overcoming the issue of potential heat damage to the card during the sealing
process. Id. at 7.
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Appellant also contends that none of the references teach or suggest
the limitation of claim 15 calling for a slot that is dimensioned to allow
passage of the card that provides access to the space between the first and
second paperboard panels. Id. at 8.
Legal Principles
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[T]he ‘motivation-suggestion-teaching’ test asks not merely what the
references disclose, but whether a person of ordinary skill in the art,
possessed with the understandings and knowledge reflected in the prior art,
and motivated by the general problem facing the inventor, would have been
led to make the combination recited in the claims.” In re Kahn, 441 F. 3d
977, 988 (Fed. Cir. 2006).
Analysis
We have considered the arguments presented by Appellant and the
Examiner as well as the evidence of record and conclude that the Examiner
has not shown by a preponderance of the evidence that the subject matter of
the rejected claims would have been obvious to one of ordinary skill in the
art at the time the invention was made over Goade combined with Chakiris
alone or Chakiris and Canamero. We agree with Appellant that the Examiner
has failed to establish a motivation to combine the references.
The Examiner finds that one skilled in the art would have been
motivated to combine the teachings of Goade with those of Chakiris “to
further ensure that there is no heat damage to the card.” Final Act. 4. We do
not agree with the Examiner’s finding.
Appeal 2019-002960
Application 14/704,067
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Goade teaches the use of polyethylene as the polymer for the
laminate. Goade, col. 4, ll. 35–39. Goade goes on to teach that to form the
desired seal, “[t]he polyethylene is heated to a range of about 225° F. to 400°
F. It will be appreciated that in this range of temperatures, the polyethylene
will create an effective bond without affecting the shape or integrity of the
plastic coated data card 10.” Id. at col. 5, ll. 10–14. Goade also teaches
The use of polyethylene to effect the bond between the
first and second cover portions 36 and 38 and between the first
and second cover portions 36 and 38 and the data card 10
provides the advantage of providing a non-resealable or tamper
detectable seal without damaging the data card 10 as can result
from use of a pressure sensitive or heat activated adhesive that
can leave an undesirable adhesive residue on the data card upon
removal of the data card from the covering.

Id. at col 5, ll. 15–23. Given Goade’s teaching that the use of polyethylene
as the polymer for the laminate avoids damage to the card, we do not agree
with the Examiner that one skilled in the art would be motivated to seal the
package only along the edges as taught by Chakiris to further prevent
damage to the card. Since the Examiner has not offered any other basis for a
motivation to combine, we find that the Examiner has not made out a prima
facie case of obviousness. See Final Act. 4; Ans. 10.
Having found that the Examiner has failed to demonstrate an adequate
motivation to combine the teaching of the references, we need not address
Appellant’s arguments with regard to claim 15.
CONCLUSION
The Examiner’s rejections are reversed.
More specifically,
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Application 14/704,067
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The Examiner’s rejection of 11–15 and 18–26 claims under 35 U.S.C.
§ 103(a) based on Goade combined with Chakiris is reversed.
The Examiner’s rejection of claims 16 and 17 under 35 U.S.C.
§ 103(a) based on Goade combined with Chakiris and Canamero is reversed
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
11–15, 18–
26
103(a) Goade, Chakiris 11–15, 18–
26
16, 17 103(a) Goade, Chakiris,
Canamero
16, 17
Overall
Outcome
11–26

REVERSED

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS R. SMITH
Appeal 2019-002960
Application 14/704,067
Technology Center 3700
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
Opinion Dissenting filed by Administrative Patent Judge FREDMAN.

I respectfully dissent from the majority’s opinion reversing the
Examiner’s rejection relying on Goade and Chakiris. In my view, the
majority has arrived at an incorrect result in this case by rigid reliance on the
teaching-suggestion-motivation test for obviousness and an inflexible
approach to a poorly explained and written analysis in the rejection.
KSR rejected the rigid application of the teaching, suggestion, and
motivation test (TSM), instead stating that “[w]hen a work is available in
one field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one. If a person of
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Application 14/704,067
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ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
While I agree with the majority that the Examiner’s obviousness
rejection focused on a TSM rationale regarding heat damage to a card that
was inconsistent with Goade, the Examiner does also note that “the
combination of Goade in view of Chakiris would result in the claimed
invention and would be an obvious combination to one of ordinary skill in
the art at the time of the invention to make” (Ans. 10).
I agree with the Examiner that the combination would have been
obvious to the ordinary artisan. I appreciate that Goade teaches “a data card
receiving envelope with the layer of polyethylene of the first and second
cover portions positioned adjacent each other” (Goade 2:4–6). Goade fails
to limit that heat sealing to “only in a region around the card to enclose the
card between the paperboard panels” as required by claim 11.
However Chakiris teaches enclosing a data card in a cardboard
envelope where the envelope assembly “may be fixed in this folded position
by adhesive along the edges, or by staples along the edges, or by heat
treatment along the edges . . . or by any of numerous methods known in the
art” (Chakiris ¶ 36).
Chakiris thus provides express evidence, in the exact same field of
prior art, that the ordinary artisan would have known that data cards may be
sealed into envelopes by any of numerous equivalent methods, including
adhesive along the edges (see Chakiris ¶ 36), and therefore “only in a region
around the card to enclose the card” as recited by claim 11. “[I]t would have
been prima facie obvious to substitute one method for the other. Express
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious.” In re Fout, 675 F.2d 297 (CCPA 1982).
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Application 14/704,067
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In my view, “a combination which only unites old elements with no
change in their respective functions, such as is presented here, obviously
withdraws what already is known into the field of its monopoly and
diminishes the resources available to skillful men.” Great Atlantic & Pacific
Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152–153 (1950).
Heat sealing around the edges in claim 11 is such a combination given the
teachings of Goade and Chakiris.
KSR mandates that “a court must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions.” KSR, 550 U.S. at 417. I find that this improvement
is exactly the predictable application of adhesive sealing around the edges of
a data card, as taught by Chakiris, to the sealing of data cards required by
Goade. And KSR explains “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. I find that no creativity would
have been required to alter the sealing modality of Goade by using the
suggestion of Chakiris. I would therefore have affirmed the Examiner’s
rejection, perhaps designating it a new ground since the reasoning is
different.
For these reasons, I respectfully dissent.