Ex Parte Macor

Patent Trial and Appeal Board

Nov 18, 2013

11710378 (P.T.A.B. Nov. 18, 2013)

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.
11/710,378 02/23/2007 James J. Macor 39114.00003 (6311-103) 5507
62282 7590 11/19/2013
LAW OFFICE OF PERRY M. FONSECA, PC
12 HAMILTON COURT
LAWRENCEVILLE, NJ 08648
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
11/19/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JAMES J. MACOR
____________________

Appeal 2011-004251
Application 11/710,378
Technology Center 3700
____________________

Before: JAMES P. CALVE, SCOTT A. DANIELS, and JILL D. HILL,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-15 and 17-22. Claim 16 is cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
Claims 1 and 15 are independent. Claim 1 is reproduced below.
1. A protection and authentication device for trading
collectable objects, said device comprising:
a holder formed for assembly with at least one collectable
object to provide protection and preservation of the at least one
collectable object, said holder further being formed so as to
resist disassembly and separation with the at least one
collectable object; and,
an electronic data storage device configured to store at
least one descriptor that identifies at least in part, said at least
one collectable object, and further configured to store at least
one digital image including sufficient detail to record at least
one unique characteristic of the appearance of said collectable
object and at least one electronic link that can fetch a
predetermined external database that stores a copy of said at
least one digital image of the at least one collectable object so
as to assist a user in the authentication of the at least one
collectable object, and may facilitate the ability of the user to
trade the collectable object over a network, wherein the at least
one digital image is readable and displayable by a standard
computer system connectable to said electronic storage device.

REJECTIONS
Claims 1-15 and 17-22 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.1
Claims 1, 3-6, 9-15, 17-19, and 22 are rejected under 35 U.S.C.
§ 102(e) as anticipated by McDowell (US 2007/0113451 A1; pub. May 24,
2007).

1 Although claims 1-22 are rejected on this ground, we treat the inclusion of
claim 16 as a typographical error because claim 16 was cancelled prior to the
appeal and is no longer pending. See Final Rej. Office Action Summary,
section 4 (noting that Claims 1-15 and 17-22 are pending in the application).
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Claims 1, 4-8, 11, 14, 15, and 18-22 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Kernz (US 2004/0039663 A1; pub. Feb. 26, 2004)
or in the alternative are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kernz.
Claims 2, 9, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over one of Kernz or McDowell and Arnold (US 5,841,878;
iss. Nov. 24, 1998).
Claims 3, 10, 13, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kernz and Cook (US 2007/0075861A1; pub. Apr. 5,
2007).
ANALYSIS
Claims 1-15 and 17-22 as being indefinite
The Examiner found that the term “said collectable object” in claims 1
and 15 is indefinite because no “collectable object” comprises part of the
claimed invention. Ans. 3. The Examiner found that it is unclear whether
claim 1 covers a combination of a holder, an electronic data storage device,
and a collectable object or just a holder and an electronic storage device. Id.
For purposes of examination, the Examiner treated such references to
“collectable object” as statements of intended use. Ans. 3.
Appellant argues that the term “collectable object” in claims 1 and 15
is not claimed as a structural feature, but rather as an object or reason for
using the device. App. Br. 12. Appellant asserts that there is no structural
indefiniteness or uncertainty introduced in the claims by use of the term
“collectable object” because the term is defined or used in numerous places
in the drawings and Specification. App. Br. 12. However, in the Reply
Brief, Appellant argues that
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[c]ontrary to the Examiner’s assertion, “a collectable
object” does not merely identify the reason or use of the
claimed invention, but, as stated in Appellant’s Brief, the term
informs actual structural claim limitations, such as “at least
one digital image of said collectable object” and “at least one
unique characteristic of the appearance of said collectable
object.”
Reply Br. 2.
If a claim is amenable to two or more plausible claim constructions,
the USPTO may require an applicant to define the metes and bounds of a
claimed invention more precisely by holding the claim unpatentable under
35 U.S.C. § 112, second paragraph, as indefinite. See Ex parte Miyazaki, 89
USPQ2d 1207, 1211-12 (BPAI 2008) (precedential). We agree with the
Examiner that it is unclear whether claims 1 and 15 are directed to a device
comprising a holder and electronic data storage device, or to a device that
comprises a holder, an electronic data storage device, and a collectable
object. The language of claims 1 and 15 is susceptible to interpretation in
either way. Appellant’s own arguments indicate that either interpretation is
plausible. Appellant argues that there is no structural indefiniteness with the
term “collectable object” because “at least one collectable object” is not a
structural feature of the inventive device, but rather is the object or reason
for using the device. App. Br. 12. Appellant also argues that this term “does
not merely identify the reason or use of the claimed invention,” but, “actual
structural claim limitations.” Reply Br. 2. We sustain the rejection of
claims 1-15 and 17-22 under 35 U.S.C. § 112, second paragraph.

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Claims 1, 3-6, 9-15, 17-19, and 22 as anticipated by McDowell
Appellant argues claims 1, 3-6, 9-15, 17-19, and 22 as a group. App.
Br. 13-16. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii)
(2011). Claims 3-6, 9-15, 17-19 and 22 stand or fall with claim 1.
Appellant argues that McDowell teaches a holder that uses a radio
frequency identification device (RFID) for storing a collectible identification
number, an RFID scanner, and a processor for looking up information
associated with the collectable object in an external data storage whereas
Appellant’s fundamental invention uses a structurally different type of
device such as a flash memory device with sufficient memory capacity to
store one or more digital images of a collectable object including at least one
unique characteristic of the appearance of the object without the use of an
external data storage device. App. Br. 13-14. Appellant also argues that the
claimed invention does away with the need for expensive equipment like
scanners and external data storage whereas McDowell does not teach storing
a digital image on its RFID 262. App. Br. 15-16. Appellant further argues
that the claimed “digital images” must have sufficient detail to show “unique
characteristics” that are defined explicitly in the Specification as visually
detailed characteristics such as strike and luster that require memory
capacity and structure far in excess of McDowell’s RFID. Reply Br. 3-4.
Appellant’s arguments do not persuade us of error in the Examiner’s
findings that McDowell discloses an electronic data storage device as an
RFID that stores a digital image of a collectable object and at least one
unique characteristic of that object such as numbers and letters. Ans. 11.
Appellant discloses that the unique characteristics of a collectable coin 11
can include the color, date, mintmark, and die information of the coin. Spec.
7, ll. 27-31. Nor do Appellant’s arguments persuade us of error in the
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Examiner’s finding that the data storage device of McDowell is capable of
storing such unique information. Ans. 4. Claim 1 does not recite any
particular size of the digital image and we decline to read unclaimed features
from the Specification into claim 1. Moreover, Appellant discloses that a
unique characteristic of a digital image can include strike, luster, color,
defects, abrasions, centering, date, mintmark, and die information of a coin
11 (Spec. 7, ll. 29-31) and does not disclose any particular structural
memory features associated with such characteristics. Appellant discloses
that an RFID transponder label can be used as a data storage device 67 for
collectable object descriptors 63. See Spec. 10, ll. 13-15. Appellant also
discloses that much of the unique identifying characteristics are stored in a
remote external database that can be accessed through an electronic link.
Spec. 10, l. 22 to Spec. 11, l. 26.
We sustain the rejection of claims 1, 3-6, 9-15, 17-19, and 22.
Claims 1, 4-8, 11, 14, 15, and 18-22 as anticipated by or unpatentable over
Kernz
Appellant argues claims 1, 4-8, 11, 14, 15, and 18-22 as a group.
App. Br. 16-18. We select claim 1 as representative. Claims 4-8, 11, 14, 15,
and 18-22 stand or fall with claim 1.
Appellant argues that Kernz discloses a typical tamper-evident coin
case assembly 112 with a certificate 116 that provides information about the
coin 115 such as grade and certificate number, and any unique indicia is
accessed online over the Internet. App. Br. 16-17. Appellant also argues
that Kernz does not include an electronic data storage device with sufficient
structure to record a picture or appearance of a collectable object so that the
unique characteristics can be seen. App. Br. 17. Appellant further argues
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that the claimed “digital image” includes other limitations that distinguish
over the numbers and barcodes of Kernz. Reply Br. 4.
These arguments are not persuasive of error in the Examiner’s
findings that the barcode of Kernz corresponds to the claimed data storage
device where Appellant discloses that the data storage device may be a
barcode that may provide predetermined characteristics of a collectable
object coin including a digital image. Spec. 9, ll. 6-29; Spec. 10, ll. 10-13;
Spec. 10, ll. 23-26, Spec. 12, ll. 23-27 to Spec. 13, ll. 1-5. Nor do these
arguments persuade us of error in the Examiner’s findings that Kernz’s
barcode is capable of containing a digital image of a unique characteristic of
a collectable object as recited in claim 1. Claim 1 does not recite a memory
structure or size, and Appellant discloses unique characteristics that include
a date, a mintmark, or a color of a coin. Spec. 7, ll. 27-31; Spec. 11, ll. 3-7.
We sustain the rejection of claims 1, 4-8, 11, 14, 15, and 18-22.
Claims 2, 9, and 12 as unpatentable over Kernz or McDowell and Arnold
The Examiner relied on Arnold to disclose a data storage device that
is a solid-state flash memory storage device as recited in claim 2. Ans. 9.
The Examiner determined that it would have been obvious to substitute the
CMOS flash memory device of Arnold for the data storage device of either
Kernz or McDowell as a mere substitution of one functionally equivalent
data storage device for another within the same art that would work equally
well in Kernz or McDowell. Id.
The Examiner has not adequately established that a skilled artisan
would view the CMOS flash memory of Arnold as a substitute for the data
storage devices of McDowell and Kernz when Arnold uses the CMOS flash
memory to store large amounts of digital data such as video clips with audio
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segments as collectable items, while McDowell and Kernz use RFID tags
and barcodes to store information about collectable objects. The Examiner
has not adequately explained why a skilled artisan would view a CMOS
flash memory as an equivalent data storage means of RFID tags and
barcodes. We do not sustain the rejection of claim 2 or its dependent claims
9 and 12.
Rejection of claims 3, 10, 13, and 17 as obvious over Kernz in view of Cook
Appellant argues claims 3, 10, 13 and 17 as a group. App. Br. 20.
We select claim 3 as representative of the group. Claims 10, 13, and 17
stand or fall with claim 3. Appellant argues that Kernz and Cook do not
teach a locally stored electronic digital image on a data storage device with
sufficient structure to record a unique characteristic of a collectable object.
App. Br. 20. This argument is not persuasive for the reasons discussed
supra for the rejection of claims 1, 4-8, 11, 14, 15, and 18-22 as anticipated
by Kernz, which discloses this claimed feature. We sustain the rejection of
claims 3, 10, 13, and 17.
DECISION
We AFFIRM the rejection of claims 1-15 and 17-22 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
We AFFIRM the rejection of claims 1, 3-6, 9-15, 17-19 and 22 as
anticipated by McDowell.
We AFFIRM the rejection of claims 1, 4-8, 11, 14, 15, and 18-22 as
anticipated by Kernz.
We REVERSE the rejection of claims 2, 9 and 12 as unpatentable
over McDowell or Kernz and Arnold.
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We AFFIRM the rejection of claims 3, 10, 13 and 17 as unpatentable
over Kernz and Cook.
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)(iv) (2011).

AFFIRMED

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