Ex parte MARCUS

Board of Patent Appeals and Interferences

Feb 19, 1998

07979018 (B.P.A.I. Feb. 19, 1998)

Application for patent filed November 20, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JAMES R. MARCUS
_____________
Appeal No. 95-5039
Application 07/979,0181
______________
HEARD: February 3, 1997
_______________
Before COHEN, ABRAMS and NASE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
Appeal No. 95-5039
Application 07/979,018
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 38
through 42. Claims 2, 4 through 6, 8, 14, 16 through 18, 25, 27,
28, 30, 33, 34, 36, 37, and 51 through 60, the only other claims
remaining in the application, are considered by the examiner to
be allowable over the prior art of record (Paper No. 10, page 2).
Appellant’s invention pertains to an identification
card. An understanding of the invention can be derived from a
reading of exemplary claim 38 as it appears in the application
file (pages 6 and 7 of Paper No. 6).
The following rejection is the sole rejection before us
for review.
Claims 38 through 42 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
The full text of the examiner's rejection and response
to the argument presented by appellant appears in the answer
Appeal No. 95-5039
Application 07/979,018
3
(Paper No. 17), while the complete statement of appellant’s
argument can be found in the substitute brief (Paper No. 16).
In the brief (page 3), appellant indicates that
claims 38 through 42 stand or fall together. Thus, we focus
upon selected independent claim 38.
OPINION
In reaching our conclusion on the indefiniteness issue
raised in this appeal, this panel of the board has carefully
considered appellant’s specification and claim 38, and the
respective viewpoints of appellant and the examiner. As a
consequence of our review, we make the determination which
follows.
We reverse the rejection of claim 38 under 35 U.S.C.
§ 112, second paragraph. It follows that claims 39 through 42
fall therewith.
The sole issue raised by the examiner regarding the
content of claim 38 is its definiteness under 35 U.S.C. § 112,
second paragraph.
Appeal No. 95-5039
Application 07/979,018
4
Under the statutory provision at issue, claims are
required to particularly point out and distinctly claim the
subject matter which is regarded as the invention. In other
words, the metes and bounds of the claimed invention must be
determinable.
In the present case, we share appellant’s point of view
to the effect that the claims would reasonably apprise those
skilled in the art as to the metes and bounds of the subject
matter being claimed.
Like appellant, we readily understand that the claimed
identification card comprises, inter alia, an image of an object
or other entity and a two dimensional barcode representation,
which image and barcode representation are clearly defined
aspects of the claimed card.
Additionally, we consider the claimed recitation of “an
(sic, a) two dimensional barcode representation of an encrypted
signal comprising a compressed representation of said image” to
be definite in meaning, when read in light of the underlying dis-
Appeal No. 95-5039
Application 07/979,018
5
closure. More specifically, the specification (page 3, lines 18
through 21) sets forth that a second signal is encrypted, which
second signal is derived at least in part from a first signal
representative of the image. As subsequently stated in the
specification (page 4, lines 16 through 24), the second signal
(encrypted) includes a compressed form of the first signal. As
indicated, the claim language at issue, understood in light of
the specification, makes it clear to us that the encrypted signal
includes a compressed form (reduction in bytes) of the first
signal (representative of the image). To read the compressed
representation of claim 38 as simply a form of encryption would
be inconsistent with, rather than consistent with, appellant’s
disclosure which describes these terms separately and distinctly,
one from the other (specification, pages 6 and 7; compressor
module 16 and encrypter module 20 of Figure 1). See In re Bond,
910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990).
REMAND TO EXAMINER
U.S. Patent No. 5,471,533 to Wang et al (column 3,
line 51 to column 4, line 35) has come to our attention. A copy
of this patent is appended to our opinion.
Appeal No. 95-5039
Application 07/979,018
The office action dated August 12, 1993 (Paper No. 4)2
lists as attachments: 1. PTO-892 and 2. PTO-1449. While the
referenced PTO-1449 is present in the application file, the
PTO-892 citing the art made of record by the examiner cannot be
found. We note the Leighton et al. patent (column 3, line 33
through 61) cited by appellant on the PTO-1449, and the indi-
cation by appellant in the present specification (pages 2
through 4) that both encryption and signal compression are known.
6

Under the circumstances of this particular case, we
REMAND the application to the examiner for the following
purposes:
to consider and cite upon a FORM PTO-892 the patent to
Wang et al specified above,
to assess the subject matter of all pending claims
(claims 2, 4 through 6, 8, 14, 16 through 18, 25, 27, 28, 30,
33, 34, 36 through 42, and 52 through 61) in light of the newly
discovered patent in conjunction with other known prior art, 2
and to take appropriate action; and
to take appropriate action on the “INFORMATION
DISCLOSURE STATEMENT” (Paper No. 21) in accordance with 37 CFR
§§ 1.97 and 1.98.
Appeal No. 95-5039
Application 07/979,018
7
In summary, this panel of the board has:
REVERSED the examiner’s rejection of claims 38 through
42 under 35 U.S.C. § 112, second paragraph; and
REMANDED the application to the examiner for the
purposes stated, supra.
The decision of the examiner is reversed.
This application has “special” status; MPEP
§ 708.01(d).
REVERSED AND REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 95-5039
Application 07/979,018
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Appeal No. 95-5039
Application 07/979,018
9
Robert H. Whisker
Pitney Bowes, Inc.
Intellectual Property & Technology Law Department
World Headquarters
One Elmcroft Road
Stamford, CT 06926-0700