10266660 (B.P.A.I. Nov. 30, 2010)

Ex Parte Marcon

Board of Patent Appeals and InterferencesNov 30, 2010

10266660 (B.P.A.I. Nov. 30, 2010)

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. 10/266,660 10/08/2002 Robert Victor Marcon CASE-12 6703 7590 11/30/2010 THE LAW OFFICE OF JAMES C. SIMMONS 11 FALMOUTH LANE WILLIAMSVILLE, NY 14221 EXAMINER FISCHER, ANDREW J ART UNIT PAPER NUMBER 3621 MAIL DATE DELIVERY MODE 11/30/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROBERT VICTOR MARCON ____________ Appeal 2009-012753 Application 10/266,660 Technology Center 3600 ____________ Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. FISCHETTI, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-012753 Application 10/266,660 2 STATEMENT OF THE CASE2 Robert Victor Marcon (Appellant) filed a Request for Rehearing of the Decision. The Board had affirmed the Examiner’s decision rejecting claims 1, 3, 5-7, 11 and 21-25 and reversed the Examiner’s decision to reject claims 26-34. In accordance with 37 C.F.R. § 41.52(a)(1), the Request includes certain points, in particular, that the Appellants believe the Board misapprehended or overlooked in reaching its Decision. The Appellants challenge the Board’s construction of the phrase “are adapted such that” in claim 1. According to the Appellant, “[t]he use of the words “are adapted such that” mean that there is an actual structural alteration which claim 1 requires.” Request 2. “Claim 1 requires that the stripes be actually altered to a different structural form, such as by programming, wherein their atomic make-ups are actually changed.” Request 3. We have reviewed the Request in its entirety but do not find that the Appellants have shown the Board to be in error. Our reasons are enumerated in the DISCUSSION section below. DISCUSSION Claim 1 reads as follows: 2 Our decision will make reference to the Appellants’ Request for Rehearing (filed Oct. 12, 2010, “Request”) and the BPAI Decision (mailed Aug. 12, 2010, “Decision). Appeal 2009-012753 Application 10/266,660 3 1. A multifunction electronic transaction card comprising a base card and at least two electronically readable magnetic stripes incorporated therein, indicia on said base card providing information relative to each of said at least two magnetic stripes, and wherein said at least two magnetic stripes are adapted such that said at least two magnetic stripes are allocated to and controlled by different business entities respectively. We have reviewed the Appellant’s Request but do not find that the Appellant has shown the Board to be in error in construing the claim 1 limitation “wherein said at least two magnetic stripes are adapted such that said at least two magnetic stripes are allocated to and controlled by different business entities respectively” as not requiring the magnetic stripes to be allocated to and controlled by different business entities by programming the magnetic stripes. The Brief (p. 16) argued that the claim phrase “wherein said at least two magnetic stripes are adapted such that said at least two magnetic stripes are allocated to and controlled by different business entities respectively” requires the magnetic stripes to be allocated to and controlled by different business entities by programming the magnetic stripes. “When an electronic transaction card is thusly adapted (for example, programmed), it constitutes a change in structure, i.e., the make-up of the magnetic stripes is altered by the programming to a different structure, as is commonly known.” Brief, p. 16. We responded as follows: We agree with the Appellant that the functional language must be considered and agree that in order to anticipate the prior art structure must have the capability of functioning in the same manner. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). See also In Appeal 2009-012753 Application 10/266,660 4 re Swinehart, 439 F.2d 210, 160 USPQ 226 (CCPA 1971). However, we disagree with the Appellant that the magnetic stripes described in Hopkins are not capable of performing the recited function because it does not have specific programming that allocates the stripe to a business entity or allows the stripe to be controlled by a business entity. Claim 1 recites “wherein said at least two magnetic stripes are adapted such that said at least two magnetic stripes are allocated to and controlled by different business entities respectively.” We see nothing in this limitation, or the remainder of claim 1, that requires the magnetic stripes be allocated to and controlled by different business entities by programming the magnetic stripes. Programming of the magnetic stripes to perform this function is not required by claim 1, as the Appellant seems to argue (See Br. 16-17). Nothing in claim 1 precludes the magnetic stripes from being allocated to or controlled by different business entities by merely assigning the different stripes to the different business. Decision 6-7. Our response directly addressed the argument the Appellant made in the Brief; that is, that the two stripes recited in the claim have been altered via programming. The argument the Appellant now makes - that the claim phrase “adapted such that” necessarily requires the two magnetic stripes to be structurally altered per se - is not the same argument that was made in the Brief and the Board addressed in the Decision. The Appellant would have us now read the claim phrase “adapted such that” more broadly but nevertheless still to include a structural alteration requirement. According to the Appellant, the claim phrase “adapted such that” requires the two magnetic stripes to be structurally altered, but not necessarily by programming. We could not have misapprehended or overlooked this argument in reaching our Decision because it was not before us. Appeal 2009-012753 Application 10/266,660 5 Furthermore, the Appellant is advocating a narrow meaning for the word “adapted” that is not expressly provided for in the Specification and which is not the broadest reasonable construction in light of the Specification as it would be interpreted by one of ordinary skill in the art. In that regard, the ordinary and customary meaning of the word “adapt” is “to make fit or suitable by changing or adjusting.” (See Webster’s New World Dictionary 15 (3rd Ed. 1988.)(Entry 1. for “adapt.”) The ordinary and customary meaning of the word “adapt” is not “an actual structural alteration” as the Appellant (see Request 2) would have us narrowly define it. CONCLUSION We have carefully considered the arguments that the Appellant has set forth in the Request but, for the foregoing reasons, we do not find them persuasive as to error in the Board’s decision of August 12, 2010 affirming the decision of the Examiner to reject claims 1, 3, 5-7, 11 and 21-25 and reverse the decision of the Examiner to reject claims 26-34. DENIED mev THE LAW OFFICE OF JAMES C. SIMMONS 11 FALMOUTH LANE WILLIAMSVILLE NY 14221