James J. Macor (Assignee) et al.

Patent Trials and Appeals Board

Dec 16, 2021

2021005529 (P.T.A.B. Dec. 16, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/014,536 06/22/2020 8376133 1824-002.901 3680
62282 7590 12/16/2021
LAW OFFICE OF PERRY M. FONSECA, PC
12 HAMILTON COURT
LAWRENCEVILLE, NJ 08648
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/16/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES J. MACOR et al.
Patent Owner and Appellant

Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B21
Technology Center 3900
BEFORE DANIEL S. SONG, JEREMY M. PLENZLER, and
JANE E. INGLESE, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL

1 The subject patent issued from Application No. 11/493,312, which is the
parent of continuation-in-part Application No. 12/928,280, which was the
subject of Ex parte Macor, 2015 WL 1325419, Appeal No. 2012-011836
(PTAB 2015), aff’d In re Macor, 742 Fed.Appx. 510 (Fed. Cir. 2018), cert.
denied, Macor v. U.S. Patent and Trademark Office, 139 S.Ct. 1566 (2019),
and Ex parte Macor, Appeal No. 2016-003949 (PTAB 2017).
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(b) and 306, James J. Macor (Appellant)2
appeals from the final rejection of claims 1, 2, 4–8, and 13. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a protection, authentication, and
identification device for a collectable object. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A protection, authentication, identification device for a
collectable object, said device comprising:
a holder housing formed for assembly with the collectable
object to provide protection and preservation of said collectable
object, said collectable object being one selected from the group
consisting of coins and currency, said holder housing further
being formed so as to be nondetachably secured to said
collectable object to resist disassembly and separation with said
collectable object; and
an electronic data storage device containing at least one
predetermined external database link to an external database
comprising at least one digital image of at least one unique
appearance characteristic of said collectable object, and said
electronic data storage device being nondetachably secured to
said protection, authentication, identification device and
configured to store at least one digital image of said collectable
object, said at least one digital image including sufficient detail
to record at least one unique characteristic of the appearance of
said collectable object; wherein said electronic data storage

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as
Goldfinch Design Studio LLC. Appeal Br. 1.
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

3
device is a solid-state flash memory storage device configured
and having sufficient storage capacity to record unique
characteristics of the appearance of said collectable object, and
at least one digital image is readable and displayable by a
standard computer system connectable to said electronic storage
system.
Appeal Br. 29 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Yu US 5,359,571 Oct. 25, 1994
DeFabio, Jr. US 6,250,549 B1 June 26, 2001
Jones US 6,438,638 B1 Aug. 20, 2002
McWilliam US 6,839,453 B1 Jan. 4, 2005
McDowell US 2007/0113451 A1 May 24, 2007
REJECTIONS
1. Claims 1, 2, 4–8, and 13 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over DeFabio in view Yu, McDowell, and
McWilliam, and optionally, Jones. Final Act. 3; Ans. 3.
2. Claims 1, 2, 4–8, and 13 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over McDowell in view DeFabio and
McWilliam, and optionally, Jones. Final Act. 17; Ans. 3.
OPINION
Rejection 1
The Examiner rejects claims 1, 2, 4–8, and 13 under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over DeFabio in view Yu, McDowell,
and McWilliam, and optionally, Jones. Final Act. 3; Ans. 3. The Examiner
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

4
finds that DeFabio discloses a protection, authentication, identification
device for a collectable object substantially as claimed, but fails to
specifically disclose the object as being a coin or currency, or that its holder
housing is nondetachably secured to the collectable object. Final Act. 3–4.
The Examiner finds that McDowell “teaches, in the same field of endeavor,
nondetachably securing a holder housing to a collectible object, such as a
coin or currency” for security and preventing counterfeiting, and concludes
that it would have been obvious to one of ordinary skill in the art “to have
made the DeFabio housing nondetachably secured to the collectible in order
to adopt these explicit benefits and to have secured any known protectable
object, such as coins and currency, as taught by McDowell, as a mere
substitution of known collectibles prone to counterfeiting.” Final Act. 4
(citing McDowell ¶ 7). In that regard, the Examiner also explains that “it is
not uncommon to have signed currency as a means for capturing an
autograph.” Final Act. 4 (citing various websites).
The Examiner also finds that DeFabio does not disclose that its
electronic data storage device is a solid-state flash memory storage device,
but concludes that the use of a flash memory storage device, such as that
disclosed in Yu and Jones, would have been an obvious substitution that
merely yields a predictable result. Final Act. 6, 8–9 (citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007); Yu, col. 1, ll. 39–47; Jones col. 1, ll.
21–27).
The Examiner further finds that DeFabio, as modified, does not
disclose the recited external database link, but relies on McWilliam for
disclosing “a system for certifying the authenticity of autographed
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

5
collectable objects such as sports memorabilia or more notably, coins,” and
which uses a computer readable storage medium that includes a hyperlink
“that can be activated to connect the owner’s computer 8 to a website where
the owner can access images and information related to the collectable
object.” Final Act. 10–11 (citing McWilliam, col. 5, ll. 1–20). Based
thereon, the Examiner concludes that it would have been obvious to provide
an electronic link as taught in McWilliam on the non-volatile memory to
allow for “a way to obtain further information about the collectable object
and verify its authenticity.” Final Act. 11.
The Appellant submits numerous arguments directed to the rejection,
which we address below. We select independent claim 1 as representative.

Number of References
The Appellant initially argues that the rejection appears to be based on
impermissible hindsight because “it is based on five different prior art
references from diverse arts.” Appeal Br. 7. However, the Examiner is
correct that “the courts have found that reliance on a large number of
references in a rejection does not, without more, weigh against the
obviousness of the claimed invention.” Ans. 4; In re Gorman, 933 F.2d 982
(Fed. Cir. 1991). In that regard, as discussed below, we agree with the
Examiner that “the prior art uses the elements of the references for the same
purposes” as the claimed invention (Ans. 4), and we find that the Examiner
has articulated reasons with rational underpinnings to combine the
references in the manner suggested, which are sufficient to support the
conclusion of obviousness. KSR v. Teleflex, 550 U.S. at 418.
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

6
DeFabio is Non-Analogous
The Appellant argues that DeFabio is non-analogous because DeFabio
“does not indicate that coins or currency are among his memorabilia, and, in
fact, coins and currency are never autographed.” Appeal Br. 10; see also
Reply Br. 7. According to the Appellant, DeFabio “is directed to the field of
authentication of autographs on memorabilia,” and that “[t]he field of
authenticating autographs has nothing to do with the field of preserving,
protecting and authenticating coins,” such that “[o]ne of ordinary skill in the
art of inventing protection, authentication, identification devices for coins
and currency would . . . not look to the art of authenticating autographs.”
Appeal Br. 10–11.
Just because DeFabio does not explicitly state that coins or currency
“are among his memorabilia” does not mean that DeFabio is not within the
Appellant’s field of endeavor. We also disagree with the Appellant’s
characterization of the field of endeavor. The field of endeavor of DeFabio
is in protection and authentication of collectable objects of which signed
objects and memorabilia, as well as coins and currency, are a part. The
Appellant does not substantiate its assertion that separate fields of endeavor
exist for signed collectable objects versus collectable coins and currency.
Coins and currency are simply specific types of collectable objects, a fact
which is confirmed by the evidence of record applied in this rejection. See
McDowell, Abst., Fig. 1 (identifying coin and currency as collectible, along
with stamps, sports cars, and comic books); McWilliam, Abst., col. 1, ll. 46–
56 (identifying coins as autographed memorabilia, along with “sports
memorabilia items, trading cards . . ., photographs, motivational prints,
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

7
standees, lithographs, mini-jersey replicas, plaques, plates, trophies,
autographed sports apparel, autographed sports equipment, magazine covers,
pins, medallions, eels, figurines, steins, tankards, . . . signed art works,
signed book editions, and musical and cinematic memorabilia (e.g., album
covers, t-shirts, posters, etc.).”).
In addition, although the Appellant objects to the Examiner’s
reference to websites establishing the fact that currency is sometimes signed
(Final Act. 4) because these websites were not explicitly cited in the
rejection, the Appellant’s objection is not dispositive. As noted above,
McWilliam that is relied upon in the rejection, which is directed to a system
for authentication of an autograph, discloses “authenticating unique
autographed items, such as . . . coins.” McWilliam, col. 1, ll. 46–55; Final
Act. 10 (“McWilliam, which is directed to a method and apparatus for
authenticating unique items . . . discloses a system for certifying the
authenticity of autographed collectable objects such as sports memorabilia or
more notably, coins.”).
Additionally, Appellant’s Specification identifies the field of endeavor
as being broader than now asserted so as to encompass collectable objects
other than coins and currency. See Spec. col. 1, ll. 7–9 (under the heading
“FIELD OF THE INVENTION,” the Specification states “[t]he present
invention relates to the protection, authentication and identification of
collectable objects such as coins, stamps, currency and baseball cards”;
under the heading “BACKGROUND OF THE INVENTION,” the
Specification states “An industry for authentication, identification and
certification of collectables has gained prominence and certification
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

8
companies such as the Professional Coin Grading Service (PCGS) and the
Numismatic Guaranty Corporation (NGC) have developed protective
collectable holders to protect collectable objects such as coins, stamps,
currency, and baseball cards.”). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004) (determining the field of endeavor “for analogous art requires the PTO
to determine the appropriate field of endeavor by reference to explanations
of the invention’s subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention.”).
A skilled artisan must be presumed to know something about the art
apart from what the references expressly disclose. See In re Jacoby, 309
F.2d 513, 516 (CCPA 1962); c.f. Airbus S.A.S. v. Firepass Corp., 941 F.3d
1374, 1381 (Fed. Cir. 2019) (“[T]he knowledge of a person of ordinary skill
in the art, as demonstrated by particular prior art references, could be
relevant to establishing the scope of the field of endeavor.”). The fact that
DeFabio does not explicitly state that coins or currency “are among his
memorabilia” does not establish that a skilled artisan would understand its
disclosure to exclude coins and currency.
The evidence is sufficiently clear from the record that the claimed
invention, DeFabio, McDowell, and McWilliam, are all in the same field of
endeavor directed to protection and authentication of collectable objects,
including coins. The Appellant’s subsequent amendment during
reexamination to limit the claims to coins and currency does not somehow
narrow or redefine the field of endeavor. Accordingly, we agree with the
Examiner that “[t]he fact that DeFabio focuses on the autograph does not
negate the fact that it is a collectible holder with storage in the broadest
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

9
sense, as those having ordinary skill in the art would have readily
appreciated.” Ans. 5.
The Appellant also argues the reasonable pertinence prong of the
analogous art test, asserting that DeFabio “is directed to solving a problem
of authenticating a signature by capturing a point in time,” and that DeFabio
“isn’t authenticating the memorabilia, just the autograph.” Appeal Br. 11;
see also id. at 12 (DeFabio is “never concerned about the memorabilia object
itself.”). However, this argument is moot because, as discussed above,
DeFabio is within the same field of endeavor as the claimed invention.
In addition, this argument is unpersuasive because a person of
ordinary skill in the art recognizes that a signature must be placed on some
object such that the authentication of the signature includes authenticating
the object upon which the signature was placed. C.f. Airbus v. Firepass, 941
F.3d at 1382 (“[T]he reasonably pertinent inquiry is inextricably tied to the
knowledge and perspective of a person of ordinary skill in the art at the time
of the invention. For example, the reasonably pertinent inquiry may
consider where an ordinarily skilled artisan would reasonably look, and what
that person would reasonably search for, in seeking to address the problem
confronted by the inventor.”).
Moreover, the Specification undermines the Appellant’s present
assertion that the problem confronting the inventor was limited to
authentication and protection of just coins or currency, instead of collectable
objects more generally. See Spec., col. 1, ll. 44–46 (“Applicant believes that
a better system for the protective housing, 45 authentication and
identification of collectable objects is needed.”); col. 2, ll. 4–8 (“It is an
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

10
important objective of the present invention to provide for a commercially
viable certification system and portable holder that provides long-term
protection for valuable collectable objects such as rare coins, currency,
stamps, cards, etc.”); col. 3, ll. 7–10 (“Other collectable objects such as
stamps, currency, baseball cards, etc., are additional examples of collectable
objects that may be applicable to the present invention.”).
Therefore, in view of the above, we agree with the Examiner that
DeFabio is analogous art.

Hindsight
The Appellant also argues that the Examiner’s initial reliance on
DeFabio in the rejection is based on hindsight because a person of ordinary
skill in the art would not “in any way find that any of DeFabio’s teachings
are applicable to collectible coins and currency.” Appeal Br. 12. According
to the Appellant, the suggested combination also is based on hindsight
because “one of ordinary skill in the art cannot find that any of DeFabio’s
teachings, when combined with the other four cited references, are
applicable to collectible coins and currency, much less with all of the
specific elements set forth in the present invention claims.” Appeal Br. 13.
However, such arguments are unpersuasive considering the
knowledge of one of ordinary skill in the art as established by the prior art
references of record. C.f. Airbus v. Firepass, 941 F.3d at 1382 (reversing the
Board for refusing to consider the references of record not applied in the
rejection); Randall Manufacturing v. Rea, 733 F.3d 1355, 1363–64 (Fed.
Cir. 2013) (prior art of record not specifically relied upon in the rejection
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

11
considered as evidence of the state of the art, common knowledge, and
common sense of one of ordinary skill in the art). We agree with the
Examiner that based on the disclosures of both DeFabio and McDowell
regarding various collectible objects, “those having ordinary skill in the art
at the time of the invention would have recognized that coins or currency
would be suitable collectibles for either holder.” Ans. 6; McDowell, Fig. 1;
see also McWilliam, col. 1, l. 55. As such, we see no issue with the
Examiner’s initial reliance on DeFabio in setting forth the rejection, which
accounts for each of the recited elements.
The Appellant further argues that “McDowell expresses no reason or
need to combine with these other references,” and “[t]here is no motivation
to combine these references other than applicant’s own teachings.” Appeal
Br. 13–14. However, the rejection at hand proposes modifying DeFabio in
view of McDowell, and express teachings for such combination need not be
found in the art. What is required is reasoning for the proposed modification
that is supported by a rational underpinnings, which the Examiner has
provided. Final Act. 4, 6, 11; See In re Cree, Inc., 818 F.3d 694, 702 n.3
(Fed. Cir. 2016) (hindsight argument is of no moment where the Examiner
provides a sufficient, non-hindsight reason to combine the references); KSR
v. Teleflex 550 U.S. at 418 (“[T]here must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”). In that regard,
Any judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill in the art at the time the claimed invention was
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

12
made and does not include knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395(CCPA 1971).
As such, we find the Appellant’s argument alleging impermissible
hindsight unpersuasive.

Deficiencies of DeFabio
The Appellant argues that DeFabio fails to disclose “a collectible coin
and currency authentication device involving electronic storage devices that
contain both the coin or currency characteristic image(s), and an electronic
link to an external (remote) database having at least one digital image of at
least one unique characteristic of the collectable coin or currency.” Appeal
Br. 14. However, the Appellant unpersuasively argues DeFabio individually
instead of the rejection as articulated by the Examiner, which relies on a
combination of references. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.” In re Merck, 800 F.2d 1091,
1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner conceded that DeFabio fails to disclose the object being a coin or
currency, and also fails to disclose an electronic link to an external database,
but has relied upon McDowell and McWilliam to remedy these deficiencies
of DeFabio. Final Act. 3–4, 10–11.

Flash Memory
The Appellant also argues that “none of the references alone or in
combination have an internal, secured flash device capable of securing
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

13
unique authenticating characteristic images of the coin or currency and a link
to a remote data[]base with the same or different characteristics of the coin
or currency.” Appeal Br. 14. This argument is unpersuasive because there
is nothing unique about the claimed flash device, which renders it “capable
of securing” the images of the coins/currency, or providing a link to a
remote database, and it is not apparent why conventional flash drives would
be incapable of such function. In fact, the Appellant has admitted that
inventor Mr. Macor “didn’t invent flash drives,” and that “Appellant does
not purport to have invented flash cards or flash drives.” Appeal Br. 16.

Yu
The Appellant argues that Yu is non-analogous and teaches away
from the claimed invention because Yu is directed to EEPROMs and is not
useful to the invention of DeFabio. Appeal Br. 15–16. However, we fail to
see how the disclosure of flash memory of Yu would not be reasonably
pertinent and useful in addressing the problem confronting DeFabio of
storing the recorded video images.3 As the Examiner articulated, it would
have been a mere substitution to replace CD/DVD digital storage media that
is disclosed in DeFabio with flash memory. Final Act. 6 (citing KSR, 550
U.S. at 418).
The arguments of the Appellant as to the propriety of the Examiner’s
reliance on the application of Yu during prosecution of the earlier related

3 Although we do not rely on the following, we observe that McWilliam also
explicitly discloses “SmartMedia card” which is a type of flash memory, and
suggests interchangeability with “compact disk . . . digital video disk
(DVD).” McWilliam, col. 4, ll. 59–60.
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

14
appeals in view of the scope of the present claims, while unpersuasive under
stare decisis,4 are nonetheless moot in view of the above. Appeal Br. 16;
Ans. 7–9; Reply Br. 5. The Appellant also oddly asserts that “[t]he cited
KSR case seems to have been supplanted by the decision in Circuit Check
Inc. v. QXQ Inc. Case No. 15-1155 (Fed Cir., July 28, 2015) (Moore, J.).”
Appeal Br. 16. However, a circuit court’s decision cannot supplant the
Supreme Court’s decision.

Jones
The Appellant argues that Jones fails to remedy the shortcomings of
DeFabio, Yu, and other references. Appeal Br. 16. The Appellant also
argues that “Jones does relate to flash drives, but only as to flashtoasters for
reading multiple flash-memory cards with or without a PC.” Appeal Br. 17.
However, as discussed above, we discern no shortcomings in the Examiner’s
suggested combination of the prior art, and also find no error in the
application of Jones. As the Examiner explains,
Jones is merely cited to establish what those in the art would
have understood for the capabilities of electronic storage
devices in general and more specifically, those of solid-state
flash memories, i.e. to be readable be a standard computer.
Jones is not relied upon for the additional items stored on the
memory, rather the DeFabio and McWilliam references are
relied upon for such teachings.

4 The Board decided this issue in related Ex parte Macor, 2015 WL 1325419
*2. This decision of the Board was further appealed by the Appellant, and
the decision was affirmed by the Federal Circuit. See In re Macor, 742
Fed.Appx. 510 (Fed. Cir. 2018), cert. denied, Macor v. U.S. Patent and
Trademark Office, 139 S.Ct. 1566 (2019).
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

15
Ans. 9.

McDowell
The Appellant argues that although McDowell discloses collectable
coins and currency holders with RFID tags, “McDowell expresses no reason
or need to combine with these other references.” Appeal Br. 17. However,
it is the teachings of McDowell that are applied to the system of DeFabio.
As already noted, the Supreme Court rejected the rigid requirement of a
teaching, suggestion or motivation to combine known elements in order to
establish obviousness. KSR, 550 U.S. at 418–19. What is required is an
articulated reason with a rational basis to support the conclusion of
obviousness, and such reasoning has been provided by the Examiner. Id. at
417–18.
The Appellant further argues that “McDowell does not teach storing
digital images, much less digital images of the coin or currency that shows
unique characteristics of that coin or currency.” Appeal Br 17–18; see also
Appeal Br. 22. However, the Appellant unpersuasively attacks McDowell
individually. DeFabio discloses storing digital images of a collectible
objects. In re Merck, 800 F.2d at 1091; In re Keller, 642 F.2d at 425.

Redundant Security
The Appellant also argues that the claimed invention provides
redundant security in storing information in a remote database, which would
require sophisticated hacking to circumvent, and that “[a]ll prior art systems
do not teach or suggest the dual functionality and redundancy of protection.”
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

16
Appeal Br. 18. However, providing of a hyperlink to a remote database that
holds images of coins is explicitly disclosed in McWilliam, and the
Examiner has articulated a reason supported by rational underpinnings for
further modifying DeFabio to provide such a hyperlink, i.e., “to provide a
way to obtain further information about the collectable object and verify its
authenticity.” Final Act. 11.5 “The fact that appellant has recognized
another advantage which would flow naturally from following the
suggestions of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58,
60 (BPAI 1985).

McWilliams
The Appellant argues that McWilliams is not directed to coins or
currency, and that the websites noted by the Examiner should be disregarded
because they are “not properly cited and . . . postdate the present invention.”
Appeal Br. 19. However, this is simply not correct because as noted above,
McWilliams specifically discloses coins. McWilliams, col. 1, l. 55. As
noted, the Examiner’s reliance on the noted websites is unnecessary and
arguments directed thereto are moot.
In addition, as further explained by the Examiner, “coins are not
limited to currency in the broadest sense and can therefore include coins

5 Although we do not rely on the following, we note that provision of such a
link to a remote data base is also suggested in DeFabio itself, which in
addition to providing video on a CD or DVD, also discloses “making the
image available electronically . . . from a remote data base.” DeFabio, col.
8, ll. 23–25.
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

17
such as sports coins . . . Further, other forms of currency such as promissory
notes, would actually require a signature. Thus this argument fails on
multiple levels.” Ans. 12. Moreover, as discussed above, other art of record
such as McDowell, also establishes that coins are collectable objects.
Finally, the Appellant argues that “dual functionality is missing and is
not suggested, except through hindsight by the Examiner.” Appeal Br. 20;
see also Appeal Br. 23–24. However, as noted above, recognition of another
advantage “cannot be the basis for patentability when the differences would
otherwise be obvious.” Ex parte Obiaya, 227 USPQ at 60.
Therefore, in view of the above considerations, we affirm the
Examiner’s rejection of independent claim 1. The Appellant does not
submit arguments directed to the limitations of dependent claims 2, 4–8, and
13. Thus, these claims fall with claim 1 from which they ultimately depend.

Rejection 2
The Examiner rejects claims 1, 2, 4–8, and 13 under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over McDowell in view DeFabio and
McWilliam, and optionally, Jones. Final Act. 17. The Examiner finds that
McDowell discloses a protection, authentication, identification device for a
collectable object substantially as claimed, including the recited coin and
flash memory, but fails to specifically disclose an external database with the
digital image. Final Act. 17–20. However, the Examiner relies on
McWilliam for its disclosure that purchasers of the collectable objects may
be provided with a computer readable storage medium “containing
identifying information unique to the object and also instructions that
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

18
provide the owner access to images and related information about the
object.” Final Act. 21–22 (citing McWilliam, col. 4, ll. 57–66, col. 5, ll. 1–
20). The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to provide a hyperlink to such images and
information so as to provide a way to obtain information about the
collectable object and to verify its authenticity. Final Act. 22.
The Appellant unpersuasively relies on the same arguments as
discussed above relative to Rejection 1 in support of patentability. Appeal
Br. 22–24. In addition, the Appellant argues that McDowell “does not show
the present invention’s dual use flash memory device (1) to have storage for
one or more unique characteristics of a collectable coin or currency; and (2)
to include a link to a remote database that has stored one or more digital
images.” Appeal Br. 22. However, the Appellant attacks McDowell
individually, and this argument is unpersuasive for reasons similar to those
already discussed above relative to Rejection 1.
The Appellant also asserts that “[n]either Jones nor De[F]abio make
up for those deficiencies and switching the primary reference from
De[F]abio to McDowell does nothing to add to the original rejections.”
Appeal Br. 24–25. However, we find no deficiencies in the rejection based
on McDowell and modification thereof as articulated by the Examiner.
Moreover, “where a rejection is predicated on two references each
containing pertinent disclosure which has been pointed out to the applicant,
we deem it to be of no significance, but merely a matter of exposition, that
the rejection is stated to be on A in view of B instead of on B in view of A,
Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

19
or to term one reference primary and the other secondary.” In re Bush, 296
F.2d 491, 496 (CCPA 1961).
Therefore, we also affirm this rejection of independent claim 1. The
Appellant does not submit arguments directed to the limitations of
dependent claims 2, 4–8, and 13, and thus, these claims fall with claim 1.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–8, 13 103(a) DeFabio, Yu,
McDowell,
McWilliam, Jones
1, 2, 4–8, 13
1, 2, 4–8, 13 103(a) McDowell,
DeFabio,
McWilliam, Jones
1, 2, 4–8, 13
Overall
Outcome
1, 2, 4–8, 13
REQUESTS FOR EXTENSIONS OF TIME
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED

Appeal 2021-005529
Reexamination Control 90/014,536
Patent US 8,376,133 B2

20
For Appellant:

LAW OFFICE OF PERRY M. FONSECA, PC
12 Hamilton Court
Lawrenceville, NJ 08648

For Third Party:

KLEIN, O’NEILL & SINGH, LLP
16755 Von Karman Avenue, Ste. 275
Irvine, CA 92606