Ex parte YOSHA

Board of Patent Appeals and Interferences

Oct 30, 1998

08566008 (B.P.A.I. Oct. 30, 1998)

Application for patent filed December 1, 1995.1
1
Paper No. 9
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte VICTOR J. YOSHA
______________
Appeal No. 97-4096
Application 08/566,0081
_______________
ON BRIEF
_______________
Before COHEN, PATE and STAAB, Administrative Patent Judges.
PATE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 through 16. These are the only claims in the application.
The claimed invention is directed to a unitary data
credit card and money holder wherein the user need only carry
Appeal No. 97-4096
Application 08/566,008
2
one article in the user’s pocket that contains both a credit
card
and money in the clip. The claimed subject matter can be
considered in more detail by reference to the appealed claims
appended to the appellant’s brief.
The references of record relied upon as evidence of
obviousness are:
Barnes 4,937,963 July 3,
1990
Hoyt 5,184,375 Feb.
9, 1993
THE REJECTION
The examiner has rejected claims 1 through 16 under
35 U.S.C. § 103 as unpatentable over Hoyt in view of Barnes.
The examiner states the rejection thusly:
Hoyt teaches a clip comprising flat portion 12
having top and bottom edges and top and back
surfaces and clip portion 14 (Fig. 2) formed along
the top edge and engaging the top surface at tip 34.
Clip 14 is attached to the “data portion” 12 at edge
16 to form an integral unit. The device is made
from ABS plastic (col. 2, lines 50-52).
Hoyt does not teach a data encoded element in
the device, however, this is well known in the art.
Barnes teaches a holder including magnetic strip 29
on a flap thereof (col. 2, lines 57-60). It would
have been obvious to a person having ordinary skill
Appeal No. 97-4096
Application 08/566,008
3
in the art to utilize such a strip on the device of
Hoyt to provide machine-readable information which
is easily accessible and which will not be
misplaced, as is common when cards containing such
information must be removed from a holder. (Answer,
pages 3-4).
OPINION
We have carefully reviewed the rejection on appeal in
light of the arguments of the appellant and the examiner. As
a result of this review, we have determined that the applied
prior art does not establish a prima facie case of obviousness
with respect to the claimed subject matter. Therefore, the
rejection of the claims on appeal is reversed. Our reasons
follow.
We are in agreement with the examiner’s finding of fact
that Hoyt teaches a unitary plastic device with a clip and a
flat portion. We are further in agreement with the examiner’s
finding that Hoyt does not teach a data encoded element. With
respect
to Barnes, we are in agreement with the examiner that Barnes
teaches a magnetic strip which is a data encoded element on
Appeal No. 97-4096
Application 08/566,008
4
the inside of flap 29. We are further of the view that the
examiner has correctly construed the claim limitation of “data
encoded element” to be, for example, a semi-conductor chip or
a magnetic strip containing machine-readable data as such is
defined on page 2 of appellant’s specification. This,
however, is the limit of our agreement with respect to the
examiner. We are in agreement with the appellant that there
is no teaching, incentive, or suggestion for modifying the
device of Hoyt to include a data encoded element. It is
incumbent upon the examiner to provide a rational basis for
the examiner’s statement that it would have been obvious to
utilize such a data encoded strip on the device of Hoyt. No
readily apparent reason or purpose for such a device on the
score card carrier of Hoyt comes to mind. In this instance,
it is clear that the only incentive for placing the magnetic
strip on the score card holder of Hoyt would have been to
satisfy the claimed subject matter. Of course, a sustainable
rejection cannot be based on such an example of impermissible
hindsight.
REVERSED
Appeal No. 97-4096
Application 08/566,008
5
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
WILLIAM F. PATE, III ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )

WFP/cam
Appeal No. 97-4096
Application 08/566,008
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Earl C. Hancock
HOLLAND & HART
555 17th Street
P. O. Box 8749, Suite 2900
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