Ex Parte Smith et alDownload PDFPatent Trial and Appeal BoardMay 6, 201310633020 (P.T.A.B. May. 6, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte CARL SMITH and TRUDY HILL _____________ Appeal 2010-011794 Application 10/633,020 Technology Center 2100 ______________ 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 4 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 5 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 Copy with citationCopy as parenthetical citation