Ex Parte Voice et al

Patent Trial and Appeal Board

Jul 22, 2016

13242729 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/242,729 09/23/2011
27268 7590 07/26/2016
Faegre Baker Daniels LLP
300 NORTH MERIDIAN STREET
SUITE 2700
INDIANAPOLIS, IN 46204
FIRST NAMED INVENTOR
Christopher Brian Voice
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. CONFIRMATION NO.
10500.16.0427 7061
EXAMINER
MIKELS, MATTHEW
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
07/26/2016 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):
inteas@faegrebd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER BRIAN VOICE,
MICHAEL CHIVIENDACZ, and EDWARD PILLMAN
Appeal2015-001915
Application 13/242,729
Technology Center 2800
Before TERRY J. OWENS, JEFFREY T. SMITH, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a transaction card. Claim 1 is illustrative:
1. A transaction card comprising:
transaction card serial number information thereon that
identifies the transaction card;
sender authentication information thereon identifiable by
location information;
the location information arranged on the transaction card
with respect to the sender authentication information; and
Appeal 2015-001915
Application 13/242,729
account information on the transaction card.
Van Ness
Kokubu
Matsumoto
Lasch
The References
us 4,085,313
us 5,710,421
US 2002/0066042 Al
US 2003/0141373 Al
The Rejections
Apr. 18, 1978
Jan.20, 1998
May 30, 2002
July 31, 2003
The claims stand rejected as follows: claims 1 and 2 under
35 U.S.C. § 102(b) over Matsumoto, claim 3 under 35 U.S.C. § 103 over
Matsumoto in view of Lasch, claim 4 under 35 U.S.C. § 103 over
Matsumoto in view of Lasch and Van Ness, and claim 5 under
35 U.S.C. § 103 over Matsumoto in view of Lasch and Kokubu.
OPINION
We reverse the rejections. We need address only the independent
claims (1 and 3). 1 Those claims require a transaction card comprising
transaction card=identifying serial number information and sender
authentication information identifiable by location information, wherein the
location information is arranged on the transaction card with respect to the
sender authentication information.
"Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
1 The Examiner does not rely upon Lasch, Van Ness or Kokubu for any
disclosure that remedies the deficiency in Matsumoto as to the independent
claims, and in the rejections under 35 U.S.C. § 103 the Examiner does not
rely upon any obviousness rationale with respect to independent claim 1 's
subject matter (Ans. 3-5).
2
Appeal 2015-001915
Application 13/242,729
art reference." Corning Glass Works v. Sumitomo Elec. US.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Matsumoto discloses "a card settlement method and system capable of
wirelessly settling a purchase price or a usage price by using a mobile
information terminal capable of a read/write operation with respect to an
integrated circuit (IC) card" (i-f 2). "After the authentication of the card, the
authorization server 22 requests the input of the personal identification
number of the IC card 4 from the mobile telephone 1 of the customer to
verify the identity of the customer" (i-f 53).
The Examiner asserts that Matsumoto's personal identification
number corresponds to the Appellants' transaction card serial number
information on the card (Ans. 2-3).
Matsumoto's personal identification number is data sent from a
customer's mobile telephone to an authentication server (i-f 53), not serial
number information on the customer's transaction card.
Matsumoto discloses that authentication information stored in the
customer's IC card (4) and a business establishment IC card (31) is input to
the authorization server (22) which authenticates those cards (i-f 85), and
"[a ]fter the authentication of the card, the authorization server 22 requests
the input of the personal identification number of the IC card 4 and the
personal identification number of the business establishment IC card 31
from the customer's mobile telephone 1 to verify the identity of the user and
the staff of the business establishment" (i-f 86).
The Examiner asserts that Matsumoto's business establishment's
location corresponds to the Appellants' location information arranged on the
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Appeal 2015-001915
Application 13/242,729
transaction card with respect to the sender authentication information
(Ans. 2-3, 6-7).
The Examiner has not established that Matsumoto's business
establishment location is on the customer's IC card (4) (which corresponds
to the Appellants' transaction card).
Thus, the Examiner has not established that Matsumoto anticipates the
transaction card claimed in the Appellants' claim 1 by disclosing, expressly
or inherently, every limitation in that claim. Nor has the Examiner set forth
a factual basis which is sufficient to support a prima facie case of
obviousness of the transaction card claimed in the Appellants' claim 3. See
In re Warner, 379 F .2d 1011, 1017 (CCP A 1967) ("A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art"). Accordingly, we reverse the rejections as to those claims and their
dependent claims.
DECISION/ORDER
The rejections of claims 1 and 2 under 35 U.S.C. § 102(b) over
Matsumoto, claim 3 under 35 U.S.C. § 103 over Matsumoto in view of
Lasch, claim 4 under 35 U.S.C. § 103 over Matsumoto in view of Lasch and
Van Ness, and claim 5 under 35 U.S.C. § 103 over Matsumoto in view of
Lasch and Kokubu are reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
4