Ex Parte Loughran et alDownload PDFPatent Trial and Appeal BoardDec 22, 201612708029 (P.T.A.B. Dec. 22, 2016) Copy Citation 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. 12/708,029 02/18/2010 Margaret Loughran P00512-US-UTIL 3685 98665 7590 12/22/2016 Otterstedt, Ellenbogen & Kammer, LLP P.0 Box 381 Cox Cob, CT 06807 EXAMINER SAVUSDIPHOL, PAULTEP ART UNIT PAPER NUMBER 2876 MAIL DATE DELIVERY MODE 12/22/2016 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 MARGARET LOUGHRAN, JAMES CARRINGTON, EDWARD OLEBE, CHARLES BREUEL, and CHARLES UNGER Appeal 2015-005098 Application 12/708,029 Technology Center 2800 Before TERRY J. OWENS, KAREN M. HASTINGS, and LILAN REN, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is in response to a Request for Rehearing (“Req. Reh’g”), dated November 21, 2016, of our Decision, mailed September 20, 2016 (“Decision”), wherein we affirmed the Examiner’s § 103 rejections of all appealed claims. We have reconsidered our Decision of September 20, 2016, in light of Appellants’ comments in the Request for Rehearing, and we find no error in the disposition of the § 103 rejections. We have reviewed the arguments set forth by Appellants in the Request. However, we remain of the opinion that the subject matter of the claims is properly rejected and unpatentable under 35 U.S.C. § 103(a). Appeal 2015-005098 Application 12/708,029 Appellants argue that the Decision “evidences a misapprehension of the Examiner’s argument” regarding claim construction (Req. Reh’g 4).1 Appellants point out that the Specification at page 11 lines 17—18 was particularly identified in the Summary of Claims Subject Matter in the Appeal Brief and Reply Brief and states “Cards may conform to the ISO/IEC 7810 ID-I format for example (also referred to as ‘full sized’ or ‘conventional form factor’),” (emphasis added) (Req. Reh’g 4). This is not persuasive of any error in our Decision. As stated therein, Appellants did not direct us (or the Examiner) in the argument section of their briefs to any specific definition in their Specification for what constitutes “a generally planar body” or a “conventional form factor” of the claimed payment card as recited in independent claims 1 and 23 (Claims Appendix) (Decision 3,4). In any event, the aforementioned sentence pointed out by Appellants does not constitute an explicit definition of either phrase. Furthermore, even assuming arguendo that the ISO/IEC 7810 ID-I format is limiting, Appellants fail to explain why it would not have been within the ordinary level of skill for the bank card portion of Webb to satisfy that format (for example, Appellants do not provide us with any description of that format; and certainly do not provide us with any definition that mandates that such a bank card format may not have a shallow recess within one of its large planar sides therein as in Webb). 1 While Appellants state that our “finding” of a lack of any specific definition “appears to be an undesignated new ground of rejection” (Req. Reh’g 3), we do not agree. The Examiner’s rejection was clearly predicted upon the claim language not excluding the banking card portion of Webb (e.g., Ans. 17, 18). 2 Appeal 2015-005098 Application 12/708,029 Accordingly, no persuasive merit is present in Appellants’ argument that our Decision misapprehended the Examiner’s argument (Req. Reh’g 3). All of the remaining arguments basically repeat the arguments previously set forth in the Appeal and Reply Briefs and hinge on the aforementioned claim construction issue (Req. Reh’g 5—10). Thus, we decline to modify our decision to affirm the Examiner’s § 103 rejections of the appealed claims. In conclusion, based on the foregoing, Appellants’ Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejections therein. This Decision on the Request for Rehearing incorporates our Decision, mailed September 20, 2016, and is final for the purposes of judicial review. See 37 C.F.R. 41.52 (a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v)(2010). DENIED 3 Copy with citationCopy as parenthetical citation