Ex Parte Phillips

Patent Trial and Appeal Board

Mar 24, 2016

11852739 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111852,739 09/10/2007
28062 7590 03/28/2016
BUCKLEY, MASCHOFF & TALWALKARLLC
50 LOCUST A VENUE
NEW CANAAN, CT 06840
Simon Phillips
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
ATTORNEY DOCKET NO.
P00237-US-UTIL
(MOl.034)
CONFIRMATION NO.
1772
EXAMINER
KELLY, RAFFERTY D
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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):
Martin@BMTP A TENT.COM
szpara@bmtpatent.com
colabella@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITEn STATES PATENT ANn TRA.nEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON PHILLIPS
Appeal2014-004699
Application 11/852,739
Technology Center 2800
Before CARLA M. KRIVAK, JON M. JURGOV AN, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1, 4, 5, 7, 8, 11, 12, 15, 18, 19, 25, 28-32, 34, and 36-40,
which are all pending claims. App. Br. 2. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal2014-004699
Application 11/852,739
STATEMENT OF THE CASE
Introduction
Appellant's disclosure is directed to "technique[s] for making
proximity payment devices." Spec. 1:16-17. Claims 1, 25, and 32 are
independent. Claim 1 is reproduced below for reference:
1. A method comprising:
providing an integrated circuit (IC) card having a first size
and carried as part of a surrounding card having a second size
larger than the first size, the IC card substantially defined by
punching or scoring in the surrounding card and including an IC,
the surrounding card including an antenna coupled to the IC card
via electrically conductive connections at least partially
embedded in at least two bridges in locations where scoring or
punching has not occurred;
performing a personalization of the IC card by
transmitting, via radio frequency to the IC via the antenna, an
account number and information identifying a cardholder for
storage in the IC, the account number to be accessed with use of
the IC card by the cardholder; and
upon completion of the personalization, providing said IC
card and said surrounding card to the cardholder with
instructions to separate the IC card from the surrounding card by
snapping the IC card from the surrounding card at the at least two
bridges to break the bridges and detach the IC from the antenna
of the surrounding card, wherein the IC card is for use by the
cardholder in conducting transactions using the account number.
References and Rejections
Claims 1, 5, 7, 11, 12, 15, 18, 19, 25, 28-30, 32, 34, 36, and 38--40
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Luu (US
2004/0129785 Al; July 8, 2004), Kean (US 2006/0118639 Al; June 8,
2006), and Lee (US 7,337,978 B2; Mar. 4, 2008). Final Act. 2-8.
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Appeal2014-004699
Application 11/852,739
Claims 4, 8, 31, and 37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Luu, Kean, Lee, and Scheybal (US 2008/0089182
Al; Apr. 17, 2008). Final Act. 8.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We adopt the Examiner's findings
and conclusions (see Final Act. 2-9; Ans. 8-10) as our own, and we add the
following primarily for emphasis.
Appellant argues the Examiner erred in rejecting independent claim 1,
because "Luu, Kean and Lee, whether taken alone or in any combination,
simply fail to disclose or even suggest several of the limitations set forth in
the claims on appeal." App. Br. 7. Particularly, Appellant contends: Luu
"teach[ es] away from providing a surrounding card that includes an antenna
coupled to the IC card via electrically conductive connections at least
partially embedded in at least two bridges in locations where scoring or
punching has not occurred" (App. Br. 10); Kean cannot teach or suggest
providing an IC card with instructions as claimed, because "the 'punchout
contactless transaction card' described by Kean does not include an antenna"
(App. Br. 11 ); "Lee is directed towards attaching an IC chip to an antenna
embedding layer, which teaches away from the present method that includes
providing instructions to separate the IC card from a surrounding card"
(App. Br. 12). 1
1 Although Appellant contends the Examiner has failed to comply with the
guidelines of MPEP § 1207.02(A) (Reply Br. 2), such administrative issues
are petitionable matters, and will not be addressed on appeal. See MPEP
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Appeal2014-004699
Application 11/852,739
Appellant's arguments are unpersuasive of error because they focus
on the references individually, and thus fail to address the Examiner's
findings. Where, as here, the rejections are based upon the teachings of a
combination of references, "[ n ]on-obviousness cannot be established by
attacking references individually." In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (citations removed).
We agree with the Examiner's finding that Luu teaches providing an
IC card carried as part of a surrounding card including an antenna, because
Luu discloses "transaction module 10 may be detachably provided on a
carrier card 20" (Luu i-f 42) and "support film 32 having antenna 30 thereon
is adhered onto the carrier card 20" (Luu i-f 53). See Final Act. 2-3; Ans. 8.
We also agree the combination of Luu and Kean teaches or suggests the IC
card is detachable from the surrounding card by snapping at least two
bridges that connect the card where scoring or punching has not occurred.
See Luu Figs. 5, 5A, i-fi-141--42 ("transaction module 10 may be die cut into
the substrate material forming carrier card 20, as shown in FIG. SA, so that
the plug-in sized module can be easily punched out and removed from the
carrier card if desired."); see also Kean i-f 39; Final Act. 3.
The Examiner finds the combination of Luu, Kean, and Lee teaches or
suggests electrical connections embedded in bridges as required by claim 1.
See Ans. 1 O; see also Lee Figs. 1, 2 (disclosing IC chip module 80
electrically connected to antenna 30 through elastic plate 60). Appellant has
§ 1201 ("The Board will not ordinarily hear a question that should be
decided by the Director on petition"). Additionally, Appellant is encouraged
to review the Rules of Practice in Ex Parte Appeals regarding the content of
the Examiner's Answer. See Office Patent Trial Practice Guide, Fed. Reg.,
Vol. 76, No. 225, page 72276 (Tuesday, November 22, 2011).
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Appeal2014-004699
Application 11/852,739
not provided sufficient evidence or reasoning to persuade us that such
combination was "uniquely challenging or difficult for one of ordinary skill
in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007). Thus, we agree with the Examiner that one of ordinary
skill in the art, in light of Lee's teachings, would have electrically connected
the antenna and IC card of Luu through the bridges, in order to "allow[] the
smaller card to communicate with the larger card." See Final Act. 3.
Additionally, we separately find Luu's die cut transaction module,
itself, would at least suggest to one of ordinary skill the recited "antenna
coupled to the IC card via electrically conductive connections at least
partially embedded" in the bridges, because Luu teaches the antenna is
electrically coupled to the detachably die cut transaction module through
antenna ends 34 embedded in film 32 of the surrounding card.2 See Luu
Figs. 4A, 5, 9.
Appellant further argues both Luu and Lee teach away from the
Examiner's combination. See App. Br. 10, 12. We are not persuaded the
Examiner's combination is in error, however, as Appellant has not identified
portions of the cited references that discourage investigation into the claimed
invention rather than merely disclosing alternative inventions. See, e.g.,
2 The proper test for obviousness is not whether the prior art references
expressly suggest all elements of the claimed invention; rather, the "test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA
1981). In such an analysis, precise teachings directed to the specific subject
matter of the challenged claim need not be identified because the inferences
and creative steps that a person of ordinary skill in the art would employ can
be taken into account. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
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Appeal2014-004699
Application 11/852,739
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) ("A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
'criticize, discredit, or otherwise discourage' investigation into the invention
claimed.") (citations removed).
CONCLUSION
Accordingly, we sustain the Examiner's rejection of independent
claim 1, and claims 5, 7, 11, 12, 15, 18, 19, 25, 28-30, 32, 34, 36, and 38--40
not argued separately. See App. Br. 13.
The Examiner relies on the findings in Luu, Lee, and Kean discussed
above for the limitations inherited by dependent claims 4, 8, 31, and 37,
which the Examiner rejects as obvious. See Ans. 10. Accordingly, we
sustain the Examiner's rejection of these claims for the same reasons
discussed above. See App. Br. 13-14.
DECISION
The Examiner's rejection of claims 1, 4, 5, 7, 8, 11, 12, 15, 18, 19, 25,
28-32, 34, and 36--40 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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