Ex Parte Priya et al

Board of Patent Appeals and Interferences

May 30, 2012

11344578 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SURESH C. PRIYA and ROME JETTE
____________

Appeal 2009-012898
Application 11/344,5781
Technology Center 2800
____________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-16, 18-27, and 30.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is Versatile Card Technology, Inc.
2 Claims 17, 28, 29, and 31-34 have been cancelled.
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STATEMENT OF THE CASE
Appellants’ invention concerns a contactless plastic financial
transaction card, specifically a plastic carrier removably supporting a mini
card containing a contactless electronic element. A slot extends through first
and second plastic substrates and at least partially around the electronic
element to define a mini card extending between a boundary of the first and
second plastic substrates. (Spec. 2).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A contactless plastic financial transaction card for
conducting financial transactions, comprising:

a first plastic substrate;

a second plastic substrate operably connected to the first
plastic substrate;

a contactless electronic element comprising an antenna
electrically connected to a chip on a separate transponder
substrate, the separate transponder substrate being laminated
between the first and second plastic substrates, the chip
containing financial information;

a slot extending through the first and second plastic
substrates and at least partially around the electronic element to
define a mini card extending between a boundary of the first
and second plastic substrates; and,

a first clear overlay connected to an outer surface of the
first plastic substrate and a second clear overlay connected to an
outer surface of the second plastic substrate.

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Application 11/344,578

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EVIDENCE RELIED UPON
Luu US 2003/0213849 A1 Nov. 20, 2003
Faenza US 2004/0256469 A1 Dec. 23, 2004

REJECTIONS
Claims 1-16, 18-27, and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Faenza in view of Luu.

ISSUES
Appellants argue that there is no reason to combine Faenza and Luu,
because Faenza discloses a method for removal of the transaction device
from the transporter (App. Br. 6). Thus, Appellants reason, there would be
no need for one skilled in the art to consider Luu for ease of removal of the
mini card from the larger carrier (id.).
Appellants further argue that Faenza and Luu individually lack certain
teachings (App. Br. 7-9).
Appellants’ contentions present us with the following issues:
1. Did the Examiner err in concluding that a person of ordinary skill in
the art would have looked to Luu for a teaching of removing a mini card
from a larger carrier?
2. Does the combination of Faenza and Luu teach or fairly suggest “a
slot extending through the first and second plastic substrates and at least
partially around the electronic element to define a mini card extending
between a boundary of the first and second plastic substrates” as recited in
claim 1?
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Application 11/344,578

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PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when “the
differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407, (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth in the Examiner’s Answer in response to Appellants’ Appeal Brief.
However, we highlight and address specific findings and arguments for
emphasis as follows.
We agree with the Examiner that Luu teaches a plurality of cuts made
through the thickness of the card substrate to provide increased ease of
removing the micro-sized card from the larger carrier card (Ans. 12). Luu
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provides an alternative means of securing the mini card to the carrier
substrate. We do not agree with Appellants’ argument that there would be
no reason to consider the teachings of Luu because Faenza includes a
teaching of one possible way to detach a mini card from a carrier substrate
(App. Br. 6). We agree with the Examiner’s conclusion that it would have
been obvious to modify Faenza to include the plurality of cuts of Luu in
situations, such as use by disabled individuals, where a perforated or
punched-out card would be more difficult to work with (Ans. 12).
Appellants’ arguments against the individual references (App. Br. 7-9)
are not persuasive to show that the Examiner erred in making the
combination. For example, the absence of a micro card having an electronic
element from Luu does not show Examiner error, because the Examiner
relied on Faenza for its teaching of an antenna electrically connected to a
chip (App. Br. 7; Ans. 3). The Examiner has presented a proposed
combination of references teaching all the limitations of the claimed
invention, and has advanced reasons to combine them having a rational
underpinning.
We conclude that the Examiner did not err in rejecting claims 1-16,
18-27, and 30 under § 103 over the combination of Faenza and Luu. We
will sustain the rejection.

CONCLUSIONS
1. The Examiner did not err in concluding that a person of ordinary
skill in the art would have looked to Luu for a teaching of removing a mini
card from a larger carrier.
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2. The combination of Faenza and Luu teaches “a slot extending
through the first and second plastic substrates and at least partially around
the electronic element to define a mini card extending between a boundary
of the first and second plastic substrates” as recited in claim 1.

DECISION
The Examiner’s decision rejecting claims 1-16, 18-27, and 30 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)(1)(iv)(2011).

AFFIRMED

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