Ex Parte Bank of America Corp. et al

Board of Patent Appeals and Interferences

Jun 29, 2009

95000035 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Patent of BANK OF AMERICA CORP.1
Patent Owner, Appellant

v.

VANGUARD IDENTIFICATION SYSTEMS, INC.2
Requester, Respondent

Appeal 2009-004203
Inter partes Reexamination Control 95/000,035
Patent US 6,471,127 B2
Technology Center 3900

Decided:3 June 30, 2009

Before ROBERT E. NAPPI, SCOTT R. BOALICK, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

1 Bank of America Corp. is the Patent Owner and a real party in interest
(App. Br. 1).
2 Vanguard Identification Systems, Inc. is the Third Party Requester and a
real party in interest (Resp. Br. 1).
3 The two month time period for filing an appeal, as recited in 37 C.F.R.
§ 1.304 (see 37 C.F.R. § 1.983(b)(1)), begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date.

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DECISION ON APPEAL
Appellant, the Patent Owner, appeals4 from the Examiner’s rejection
of claims 1-17, 20-35, 38-54, and 57 in the Right of Appeal Notice (RAN)
mailed June 6, 2007 (App. Br. 1-2). The Respondent, the Third Party
Requester, filed a Respondent’s Brief5 in support of the Examiner’s rejection
and to raise a procedural objection.6 The Examiner responded in the
Examiner’s Answer.7 We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We AFFRIM.

STATEMENT OF THE CASE
This proceeding arose from a request for inter partes reexamination
filed by Vanguard Identification Systems, Inc. on February 9, 2004, of
United States Patent 6,471,127 B2 (‘127 Patent) issued to Jamily Pentz,
Emmet Burns, Richard J. Collins, R. Bruce Montgomery, and A. Allen
Kendle on October 29, 2002, based on United States Application 09/988,151
filed November 19, 2001, where that patent was assigned to Bank of
America Corp.

4 Appellant’s Appeal Brief (App. Br.) was filed October 12, 2007.
5 (Resp. Br.) filed November 8, 2007.
6 Respondent opposed Appellant’s Petition for Revival of Reexamination of
Patent Terminated Unintentionally and argued that the appeal should be
considered null and void (Resp. Br. 2). Appellant’s Petition was granted
December 12, 2007 and Respondent’s Opposition was refused entry as being
an improper paper per the Office Communication mailed December 12,
2007. As such, Respondent’s first issue (Resp. Br. 2) has been resolved and
plays no part in this appeal.
7 (Ans.) mailed February 29, 2008.
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The subject patent is directed to a data card which is reduced in size
from the conventional standard size credit card (Abstract). Data encoded on
the data card can be read by a magnetic stripe reader configured to read
magnetic stripes compliant with ISO/IEC 7811 (col. 10, ll. 6-33).
Independent claim 1, which we take to be representative, reads as
follows:
1. A data card comprising a first face, a second face, and
a magnetic stripe comprising stored encoded data,
wherein the dimensions of the card are in the range of
about 1 inch by about 1 inch to about 17/8 inches by
about 3 inches, and the lengthwise dimension of the
magnetic stripe is in the range of about 1 inch to about 3
inches, and wherein the encoded data can be read by a
magnetic stripe reader configured to read magnetic
stripes compliant with ISO/IEC 7811.

The prior art references relied upon by the Examiner in the prior art
rejections are:
McNeely US 4,443,027 Apr. 17, 1984
Raisleger US 4,645,916 Feb. 24, 1987
Warther US 5,495,981 Mar. 5, 1996 (“Warther ‘981”)
Warther US 5,863,076 Jan. 26, 1999 (“Warther ‘076”)

ISO/IEC Standard 7811 – Identification Cards: Recording Technique, Aug.
15, 1995
Axiohm Model C702E/C712E/C712EHC, Model C702KP/C712KP
Operation Instructions, copyright 1998

Claims 1-57 are subject to reexamination, where claims 18, 19, 36, 37,
55, and 56 were confirmed. The Examiner rejected the claims as follows:
claims 1-4, 10-14, 39-42, 48-51, and 57 under 35 U.S.C. §103(a) in
view of Warther ‘076; and
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claims 20-22, 28-32, and 38 under 35 U.S.C. §103(a) in view of
Warther ‘076 and Warther ‘981. (Ans. 3-13).8
The Third Party Requester had proposed that claims 1-4, 10-14, 39-
42, and 48-51 were anticipated under 35 U.S.C. §102 by Warther ‘076, and
that claims 20-22, 28-32, and 38 were obvious under 35 U.S.C. §103(a) in
view of Warther ‘076 and Warther ‘981, where the former was not adopted
and the latter was adopted (RAN 8-16, 19-23).

ISSUES
Appellant argues that the Examiner has misinterpreted the recitations
found in the claims and has failed to state a prima facie case of obviousness
(App. Br. 4). The Examiner finds that Appellant’s characterization of the
claims does not comport with the actual recitations therein (Ans. 16) and that
the claims are obvious over Warther ‘076 because one of ordinary skill in
the art would have recognized the ISO/IEC 7811 standard to be conventional
and its use for the encoding of data would be obvious in view of the
disclosure of Warther ‘076 (Ans. 20). Respondent adds while the claims
may provide that certain physical characteristics of the magnetic stripe do
not conform to the standard, it does not follow that the data encoded on the
stripe is non-compliant (Resp. Br. 4).
Thus, the following issues have been raised in the present appeal:

8 Claims 5-9, 15-17, 23-27, 33-35, 43-47, and 52-54 were also subject to
prior art rejections, but Appellant’s Brief omits the rejections of those claims
from the grounds of rejection to be reviewed on appeal (App. Br. 3). As
such, we find that Appellant has waived any arguments rebutting those
rejections and we summarily sustain the rejections not argued. See 37
C.F.R. § 41.37(c)(1)(vii).
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1. Whether the Examiner erred in interpreting the claim recitation:
“wherein the encoded data can be read by a magnetic stripe reader
configured to read magnetic stripes compliant with ISO/IEC 7811” to mean
that the magnetic stripes are encoded with data compliant with ISO/IEC
7811?
2. Whether the Examiner erred in finding claims 1-17, 20-35, 38-
54, and 57 obvious over the prior art of record?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. The Specification of the ‘127 Patent discloses a data
card which is reduced in size from the conventional standard
size credit card, where the data encoded on the data card can
be read by a magnetic stripe reader configured to read
magnetic stripes compliant with ISO/IEC 7811 (Abstract,
col. 10, ll. 6-33).
2. The Specification of the ‘127 Patent discloses that
“parameters defining the magnetic stripe are governed by the
International Organization for Standardization (ISO) and the
International Electrotechnical Commission (IEC).” The
ISO/IEC 7811 standard was generally known and used at the
time the application for the ‘127 Patent was filed (col. 2, ll.
35-46).
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3. Warther ‘076 discloses a data card having opposing
sides and a plurality of magnetic stripes, wherein the
dimensions of the data card are no more than 3 inches in
length and 1 inch in width (Abstract, col. 5, ll. 19-29, 51-59,
Fig. 2, elements 14, 16, 31-34).
4. Warther ‘076 discloses that the magnetic stripes
preferably record a plurality of separate data tracks, each of
which is readable with a conventional magnetic stripe swipe
reader/writer (col. 4, ll. 47-59).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
KSR disapproved of a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 550 U.S. 398 at
419 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”).
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims their broadest
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reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Prater, 415 F.2d 1393,
1404 (CCPA 1969); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). This is the standard for claim interpretation in both
original examination and re-examination. See In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). “Absent claim language carrying a narrow
meaning, the PTO should only limit the claim based on the specification or
prosecution history when those sources expressly disclaim the broader
definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004).
The words of the claim must be given their plain meaning unless the
plain meaning is inconsistent with the specification. See In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989). “Though understanding the claim language may
be aided by explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the claim.”
SuperGuide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). “However, claims are not to be read in a vacuum, and limitations
therein are to be interpreted in light of the specification in giving them their
broadest reasonable interpretation.” In re Okuzawa, 537 F.2d 545, 548
(CCPA 1976); In re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983).
Thus, the challenge is to interpret claims in view of the specification
without unnecessarily importing limitations from the specification into the
claims. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003).

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ANALYSIS
Appellant raises arguments with respect to identical elements of
independent claims 1, 20, and 39 and raises no arguments specific to the
subject matter of the dependent claims. We therefore select claims 1 and 20
as representative, and claims 2-4, 10-14, 21, 22, 28-32, 38-42, 48-51, and 57
stand or fall with claims 1 and 20. 37 C.F.R. § 41.37(c)(1)(vii).9
Appellant argues that the Examiner has improperly interpreted the
argued claim recitation, namely “wherein the encoded data can be read by a
magnetic strip reader configured to read magnetic stripes compliant with
ISO/IEC 7811,” and failed to state a prima facie case of obviousness (App.
Br. 3). Appellant argues that the claims define a data card that it not
compliant with ISO/IEC 7811, but that the card can nevertheless be read by
a reader compliant with the same standard (App. Br. 4). Appellant also
argues that “[t]he clear import of the relevant claim language is that the
claimed data card is not compliant with the standard” (App. Br. 5). We do
not agree.
Rather, we agree with the Examiner that the compliance of the data
card itself is not recited in claim 1 (Ans. 16). Claim 1 recites clear
limitations on the form of the encoded data on the claimed data card, but is
silent with respect that card’s compliance to any standard. While Appellant
may be correct, that given the dimensions recited in the claim, and the
disclosure of the Specification, the data card would not be compliant with
the ISO/IEC 7811 standard, that is not positively recited in claim 1. It could

9 A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of that claim.

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be equally true that the claimed data card would also not be compliant with
any other number of standards. A claim must be evaluated in terms of what
it recites and not what it omits. Claim 1 only recites that the encoded data
can be read by readers configured to read compliant stripes. Appellant is not
arguing that the encoded data is not compliant with ISO/IEC 7811. As such,
we find the Examiner's interpretation that the argued claim limitation means
that the magnetic stripes are encoded with data compliant with ISO/IEC
7811 to be reasonable and justified. Thus, we find no error in the
Examiner’s interpretation of the argued claim limitation.
Appellant also argues that Warther ‘076 fails to disclose that its
magnetic stripes can violate the ISO/IEC 7811 standards and still be
readable by compliant card readers (App. Br. 5). Appellant also argues the
Examiner errs when he equates conventional magnetic stripe readers with
card readers configured to read cards compliant with ISO/IEC 7811 (Id.).
We cannot agree with Appellant.
As discussed above, we do not find claim 1 to require that the
magnetic stripes must violate the ISO/IEC 7811 standards, so whether
Warther ‘076 teaches or suggests such a magnetic stripe is immaterial.
Additionally, we do not find the Examiner to be asserting that conventional
and specifically compliant card readers are necessarily the same, merely that
one is obvious over the other (Ans. 18). As acknowledged by Appellant’s
Specification (FF 2), the ISO/IEC 7811 was known and used at the time of
Appellant’s invention. As such, we find no error in the Examiner’s
determination that one of ordinary skill in the art, in view of the disclosure
of Warther ‘076 of conventional card readers (FF 4), could not have made
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such cards compliant with ISO/IEC 7811, which was acknowledged as being
conventionally known (Ans. 18-19). Thus, we find no error in the
Examiner’s rejection of claim 1 as being obvious over Warther ‘076.
With respect to the rejection of claims 20-22, 28-32, and 38 under 35
U.S.C. §103(a) in view of Warther ‘076 and Warther ‘981, Appellant has
raised no arguments specific to this rejection other than the alleged
deficiencies of Warther ‘076 discussed supra. Since we do not find those
arguments to be compelling, we find no error in this latter rejection as well.
Thus, we find no error in the Examiner’s rejections of the claims.

CONCLUSION
Appellant has failed to show that the Examiner erred in rejecting
claims 1-4, 10-14, 39-42, 48-51, and 57 under 35 U.S.C. § 103(a) in view of
Warther ‘076 and claims 20-22, 28-32, and 38 under 35 U.S.C. § 103(a) in
view of Warther ‘076 and Warther ‘981.

ORDER
The Examiner’s rejection of claims 1-17, 20-35, 38-54, and 57 is
AFFIRMED.

REQUESTS FOR REHEARING
The times set forth in 37 C.F.R. § 41.79(a) (2008) for filing a request
for rehearing and in § 41.79(d) for filing a further request for rehearing of a
new decision may not be extended. See 37 C.F.R. § 41.79(e) (“The times for
requesting rehearing under paragraph (a) of this section, for requesting
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further rehearing under paragraph (c) of this section, and for submitting
comments under paragraph (b) of this section may not be extended.”). See
also MPEP § 2682 (8th ed., rev. 7, July 2008), heading “I,” first para. (“The
time period for requesting rehearing under 37 CFR 41.79 is one month and
the one month period may not be extended. 37 CFR 41.79(e).”).

AFFIRMED

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Appellant, Patent Owner:

MOORE & VAN ALLEN, PLLC FOR BOFA
430 DAVIS DRIVE, SUITE 500
POST OFFICE BOX 13706
RESEARCH TRIANGLE PARK, NC 27709

Respondent, Third Party Requester:

LAW OFFICES OF GARY A ROSEN, P.C.
1831 CHESTNUT STREET SUITE 802
PHILIDELPHIA, PA 19103