Ex Parte Di Luoffo et alDownload PDFPatent Trial and Appeal BoardSep 21, 201710443669 (P.T.A.B. Sep. 21, 2017) 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. 10/443,669 05/22/2003 Vincenzo Valentino Di Luoffo AUS920030093US1 7568 37945 7590 09/25/2017 DTTKFW YFF EXAMINER YEE AND ASSOCIATES, P.C. PURI, VENAY P.O. BOX 802333 DALLAS, TX 75380 ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 09/25/2017 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): ptonotifs @yeeiplaw.com mgamez @ yeeiplaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VINCENZO VALENTINO DI LUOFFO and CRAIG WILLIAM FELLENSTEIN Appeal 2015-0033711 Application 10/443,6692 Technology Center 3600 Before TARA L. HUTCHINGS, SHEILA F. McSHANE, and MATTHEW S. METERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 48 and 73—91. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1. Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed June 16, 2014), Reply Brief (“Reply Br.,” filed January 14, 2015), the Examiner’s Answer (“Ans.,” mailed November 26, 2014), and Final Office Action (“Final Act.,” mailed January 15, 2014). 2. Appellants identify International Business Machines Corporation as the real party in interest (Appeal Br. 2). Appeal 2015-003371 Application 10/443,669 CLAIMED INVENTION Appellants’ claims relate “to systems for incorporating targeted marketing into smart card transactions” (Spec. 1,11. 10-11). Claims 48, 79, and 86 are the independent claims on appeal. Claim 48, reproduced below, with added bracketed notations and paragraphing, is illustrative of the subject matter on appeal: 48. A method for updating an application on a smart card that has been read by a first computer, wherein the smart card includes a processor and a memory, the method comprising the steps of: [1] a server authenticating a user of the smart card based on a personal identification number (PIN) entered by the user at the first computer, and in response the server obtaining a unique number that is assigned to the processor of the smart card and stored on the smart card; [2] based on the unique number, the server identifying, from a user profile that is stored in the server for the user, a card profile of the smart card, wherein the card profile includes physical characteristics of the processor and the memory, and identities of a plurality of applications that are currently stored on the smart card and operable by the processor; [3] the server directing the first computer to display a page that includes an identification of the plurality of applications and permitted user actions; and [4] in response to the user performing one of the permitted user actions to modify one of the plurality of applications stored on the smart card (a) the server updating the user profile, (b) the smart card modifying the one of the plurality of applications accordingly and (c) the server sending an advertisement to the first computer for display. 2 Appeal 2015-003371 Application 10/443,669 REJECTIONS Claims 48, 73, 77—80, 84—87, 90, and 91 are rejected under 35 U.S.C. § 103(a) as unpatentable over Zimmerman (US 7,933,968 Bl, iss. Apr. 26, 2011) and Hendrick (US 2001/0023892 Al, pub. Sept. 27, 2001). Claims 74 and 81 are rejected under 35 U.S.C. § 103(a) as unpatentable over Zimmerman, Hendrick, and Fraser (US 6,895,502 Bl, iss. May 17, 2005). Claims 75, 76, 82, 83, 88, and 89 are rejected under 35 U.S.C. § 103(a) as unpatentable over Zimmerman, Hendrick, and Anderson (US 2004/0139018 Al, pub. July 15, 2004). ANALYSIS Independent claim 48 and dependent claims 73, 77, and 78 We are persuaded by Appellants’ argument that the Examiner erred in rejecting independent claim 48 under 35 U.S.C. § 103(a) because Zimmerman, upon which the Examiner relies, fails to disclose or suggest “the server obtaining a unique number that is assigned to the processor of the smart card and stored on the smart card,” as recited by limitation [1] of independent claim 48 (see Appeal Br. 7—9; see also Reply Br. 3 4). More particularly, Appellants argue that Zimmerman discloses “a radio frequency identification (REID) token” (Appeal Br. 8), but does not disclose or suggest “a ‘smart card’ that includes a processor and a memory,” as called for by independent claim 48 (id.). The Examiner maintains that the rejection is proper, and cites Zimmerman, at column 3, lines 15—57 and the Abstract, as disclosing the argued subject matter (see Final Act. 5—6). In the Answer, the Examiner 3 Appeal 2015-003371 Application 10/443,669 also relies on Zimmerman, at column 1, lines 7—12, column 2, lines 25—53, and column 10, line 62 — column 11, line 15 (see Ans. 2—A). We have reviewed the cited portions of Zimmerman and agree with Appellants that the cited prior art fails to disclose or suggest “the server obtaining a unique number that is assigned to the processor of the smart card and stored on the smart card,” as recited by limitation [1] of independent claim 48. In this regard, we agree with Appellants that Zimmerman does not disclose a “smart card [that] includes a processor and a memory” (see Appeal Br. 7—8), and as such, cannot disclose or suggest the argued limitation. Zimmerman clearly discloses that its “RFID token 100 has a non-volatile internal memory 502 for storing data and a transmitter 501” (Zimmerman, col. 7, lines 19—21; see also Fig. 2B). The Examiner does not rely on Hendrick to address this deficiency. In view of the foregoing, we do not sustain the Examiner’s rejection of independent claim 48 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the Examiner’s rejection of claims 73, 77, and 78, which depend therefrom. Independent claims 79 and 86, and dependent claims 80, 84, 85, 87, 90, and 91 Independent claims 79 and 86 include a limitation substantially similar to limitation [1] of independent claim 48, and are rejected based on the same rationale applied with respect to independent claim 47 (see Final Act. 10). Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent claims 79 and 86, and dependent claims 80, 84, 85, 87, 90, and 91 that depend therefrom, for the same reasons set forth above with respect to independent claim 48. 4 Appeal 2015-003371 Application 10/443,669 Dependent claims 74—76, 81—83, 88, and 89 Claims 14—16, 81—83, 88, and 89 depend from independent claims 48, 79, and 86, respectively. The Examiner’s rejections of claims 74 and 81 under 35 U.S.C. § 103(a) based on Fraser, in combination with Zimmerman and Hendrick, and claims 75, 76, 82, 83, 88, and 89 under 35 U.S.C. § 103(a) based on Anderson, in combination with Zimmerman and Hendrick, do not cure the deficiencies in the Examiner’s rejection of independent claims 48, 79, and 86. Therefore, we do not sustain the Examiner’s rejections of claims 74—76, 81—83, 88, and 89 under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to the independent claims. DECISION The Examiner’s rejections of claims 48 and 73—91 under 35 U.S.C. § 103(a) are reversed. REVERSED 5 Copy with citationCopy as parenthetical citation