Ex Parte Smith et al

Patent Trial and Appeal Board

May 6, 2013

10633020 (P.T.A.B. May. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CARL SMITH and TRUDY HILL
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Appeal 2010-011794
Application 10/633,020
Technology Center 2100
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Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and
JOHNNY A. KUMAR, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-11794
Application 10/633,020

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 6 and 11 through 16.
We reverse.
INVENTION
The invention is directed to a method which allows an issuer of a
debit/credit card to tailor the smart card features to their business
requirements. Pages 5 and 6 of Appellants’ Specification. Claim 1 is
representative of the invention and reproduced below:
1. A method for automating the personalization of a batch
of smart cards that originates with a smart card issuer, said
method comprising:
executing a personalization assistant software tool, said
software tool including a default member profile having default
values for smart card features, a smart card feature being a
parameter representing a business requirement of said smart
card issuer dictating smart card usage;
providing a user with a plurality of queries regarding said
smart card features, said queries originating from said software
tool;
receiving from the user, responses to the plurality of
queries, said responses being received by said software tool and
reflecting smart card features desired by said smart card issuer;
matching each of said responses with an output data
value, said matching being performed by said software tool,
each of said output data values representing one of said smart
card features and being suitable for personalizing a smart card;
modifying said default member profile to include said
matched output data values, said output data values replacing
corresponding said default values for smart card features; and
generating a personalization data file from said modified
default member profile, wherein said personalization data file is
suitable for personalizing said batch of smart cards and
provides said smart card features on each smart card in said
batch of smart cards by way of said output data values.

Appeal 2010-11794
Application 10/633,020

3

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 3, 6, 11 through 13 and
16 under 35 U.S.C. § 103(a) as obvious over Tushie (U.S. 6,014,748, Jan.
11, 2000) and Du (U.S. 2001/0042212 A1, Nov. 15, 2001). Answer 4-10.
1

The Examiner has rejected claims 4, 5, 14 and 15 under 35 U.S.C.
§ 103(a) as obvious over Tushie, Du, and Anderson (U.S. 5,884,289 Mar.
16, 1999). Answer 10-11.
ISSUE
Appellants present several arguments on pages 4 through 11 of the
Appeal Brief directed to the Examiner’s rejection of independent claims 1
and 11. The issue raised by these arguments which is dispositive of the
appeal is: did the Examiner err in finding the skilled artisan would combine
Tushie with Du such that the user would be provided with a plurality of
queries regarding the smart card features as claimed?

ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We concur with Appellants’ conclusion the Examiner erred in
finding the skilled artisan would combine Tushie with Du such that the user
would be provided with a plurality of queries regarding the smart card
features as claimed. As an initial matter we concur, with the Examiner’s
findings directed to the teachings of Tushie, and are not persuaded of error
Appeal 2010-11794
Application 10/633,020

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by Appellants’ arguments. However, Appellants’ augment which focuses on
Du not being analogous art and not teaching the claimed querying has
persuaded us of error in the Examiner’s rejection.
The Examiner’s rejection relies upon paragraph 0048 of Du as
teaching the claimed query. Ans. 6, 16. Further, the Examiner considers Du
to be in the same field of endeavor as Tushie since Du deals with smart
cards. Answer 16. While Du discusses queries in paragraph 0048 and the
ensuing paragraphs discuss the results of the queries being used to write data
to the smart card, we do not find that this teaches the claimed querying or
shows that Du is in the same field of endeavor. Further, as argued by
Appellants, Du teaches querying a user regarding the user’s computer
settings and not operations or tools used by a smart card issuer as claimed.
Reply Br. 5. We concur with Appellants; the Examiner has not shown that
the queries discussed in Du are concerned with smart card features as recited
in the independent claims. While Appellants’ claims appear to be the mere
automation of the known interaction of programmers and card issuing
entities (discussed on page 4 of Appellants’ Specification) the Examiner has
not cited a teaching of automating such an interaction. As such, we are
constrained by the Examiner’s rejection based upon the combination of
Tushie and Du, and for the above reasons we will not sustain the Examiners’
rejection of claims 1 through 3, 6, 11 through 13 and 16 under 35 U.S.C.
§ 103(a).

1
Throughout this opinion we refer to the Appeal Brief dated April 6 2010,
Reply Brief dated August 27, 2010, and the Examiner’s Answer mailed on
June 29, 2010.
Appeal 2010-11794
Application 10/633,020

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The Examiner has not found that the additional teachings of Anderson
make up for this deficiency in the rejection of the independent claims.
Accordingly, we similarly will not sustain the Examiner’s rejection of claims
4, 5, 14 and 15 under 35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1 through 6, and 11
through 16 is reversed.

REVERSED

ELD