Ex Parte Roberts

Patent Trial and Appeal Board

Nov 18, 2014

11601292 (P.T.A.B. Nov. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMIE ROBERTS
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Appeal 2012-008509
Application 11/601,292
Technology Center 3700
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Before: JENNIFER D. BAHR, JAMES P. CALVE, and LEE L. STEPINA,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1–9, 25, 26, and 28–31. Appeal Br. 1. Claims 10–20 and 27 are
cancelled and claims 21–24 are withdrawn. Id. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal 2012-008509
Application 11/601,292

2
CLAIMED SUBJECT MATTER
Claims 1 and 29 are independent. Claim 1 is reproduced below.
1. A gift card carrier, comprising:
a panel for carrying a gift card, the panel comprising a
front surface and a recessed portion sized and dimensioned to
receive an entire gift card therein so that the gift card appears to
be flush mounted with the front surface of the panel when the
entire gift card is positioned inside the recessed portion of the
panel, the recessed portion having a depth substantially equal to
a thickness of the gift card; and
a scan window disposed within the recess, wherein the
scan window has an area smaller than an area of the recess and
wherein the scan window is disposed within a periphery of the
recess.

REJECTION
Claims 1–9, 25, 26, and 28-31 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Waldron (US 2003/0150141 A1; pub. Aug. 14, 2003)
and Cox (US 2003/0028439 A1; pub. Feb. 6, 2003).
ANALYSIS
The Examiner found that Waldron discloses a gift card carrier 10 with
a panel 18/20 for carrying a gift card 14, the panel 18/20 having a recessed
portion (cut out 26) sized and dimensioned to receive a gift card 14 so gift
card 14 appears to be flush mounted with a front surface 30 of panel 18/20.
Ans. 4–5. The Examiner found that Waldron’s recessed portion 26 is not
sized or dimensioned to receive an entire gift card and recess 26 lacks a scan
window, but Cox has a recessed portion 55 for receiving an entire gift card
51 and a scan window 59 with an area that is smaller than an area of the
recessed portion 55 and disposed within a periphery of recessed portion 55,
as recited in claims 1 and 29. Id. 5, 10. The Examiner determined that it
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Application 11/601,292

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would have been obvious to modify the recessed portion 26 of Waldron with
the recessed portion 55 of Cox to prevent damage to the lower end of the gift
card and allow the card to be scanned without being removed from the
carrier. Id. at 5 (citing Cox, para. 37; Figs. 10–12).
Appellant argues that the embodiment of Figures 11 and 12 of Cox
does not disclose a scan window (window 59) “disposed within the recess”
as recited in claims 1 and 29, because window 59 is disposed on a different
panel than the panel that includes the die cut card and recess. Appeal Br. 8,
22; Reply Br. 1–2. Appellant also argues that there is no way to form a scan
window in the alleged recess of Cox because the card is formed from a die
cut and therefore any scan window formed within that alleged recess would
result in a hole in the card of Cox. Appeal Br. 8, 22
The Examiner has not established by a preponderance of evidence that
Cox teaches a scan window that is “disposed within the recess, . . . wherein
the scan window is disposed within a periphery of the recess,” as recited in
claims 1 and 29.1 The window 59 of Cox is disposed on a different panel

1 Appellant discloses an embodiment in Figures 5A-5C in which a gift card
carrier 50 includes a panel 52 having a recess or depression 54 for receiving
a gift card 56. Spec., para. 52. The recess 54 includes a base portion 58 for
supporting the backside of the gift card 56 and side walls 60 that surround
the outer edge of gift card 56. Id.; Fig. 5A. Recess 54 may be formed in a
variety of ways including being embossed or shaped into panel 52 or formed
by coupling various layers together with at least the top layer including an
opening that forms side walls 60 and a bottom layer that forms the base
portion 58 of the recess. Id., para. 53. The gift card carrier 50 may include a
scan window 64 that is disposed within the recess 54. Id., para. 56. The
scan window 64 is typically a small opening formed in the base portion 58 to
provide access to the back surface of the gift card 56 when the gift card 56 is
placed within the recess 54. Id. We construe the limitation “a scan window
disposed within the recess” to mean “an aperture formed in a portion of the
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than the panel containing the gift card and alleged recess. Appeal Br. 8.
Cox discloses a gift card carrier with a front panel 52 and a rear panel 60.
Cox, Fig. 12. A card 51 is die cut in front panel 52. A window 59 is cut
through rear panel 60. Id., para. 37; Figs. 10–11. The Examiner has treated
the die cut card 51 as forming and being within a recess on front panel 52.
When packet 50 is closed, a bar code 61 on a rear surface of card 51 is
visible through the window 59 in rear panel 60. Id., Fig. 11. The scan
window 59 is not disposed within the recess formed on the front panel 52 by
die cut card 51.
Figures 10–12 of Cox are reproduced below.

panel that forms the recess such as a portion of the panel that forms a base
portion of the recess.”
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Application 11/601,292

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Figure 10 is a plan view of an integrated gift card packet wherein the
card is formed in the front panel of the packet. Figure 11 is a plan view of
the outer face of the rear panel of the packet of Figure 10 showing a window
cut into the back panel to expose the bar code on the rear surface of the card
formed in the front panel. Cox, para. 22. Figure 12 is a perspective view of
the gift card packet of Figure 10 in its open condition.
The Examiner has not established, by evidence or technical reasoning,
a sufficient factual basis to reasonably support the conclusion that a skilled
artisan would have had a reason to include a scan window 59 of Cox in the
recess cut out 26 of Waldron. Cox disposes scan window 59 on a rear panel
60 of a gift card carrier so a gift card 51 in a front panel 52 can be scanned.
Cox, para. 37; Figs. 11, 12. The Examiner has not explained why a skilled
artisan would have had a reason to modify Cox’s configuration to place a
scan window 59 within the recess (on the same panel as the recess) when
Cox already allows a gift card to be scanned using a window not within the
recess. Moreover, it is unclear how a window 59 of Cox could be disposed
within a recess 26 of Waldron, when Waldron’s recess 26 is a space where
the front panel 18 is cut out and removed entirely. See Waldron, para. 18;
Figs. 1–4; see also Reply Br. 2.
We do not sustain the rejection of claims 1 and 29 or their respective
dependent claims 2–9, 25, 26, 28, 30, and 31.
DECISION
We REVERSE the rejections of claims 1–9, 25, 26, and 28–31.

REVERSED
Ssc