Ex Parte Varone

Patent Trial and Appeal BoardMar 27, 2017

13867214 (P.T.A.B. Mar. 27, 2017)

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. 13/867,214 04/22/2013 FRANCESCO VARONE ST-l 1-MAR-0259US01 1032 102473 7590 03/29/2017 Slater Matsil, LLP - ST-EP 17950 Preston Road, Suite 1000 Dallas, TX 75252 EXAMINER SUMMERS, GEOFFREY E ART UNIT PAPER NUMBER 2669 NOTIFICATION DATE DELIVERY MODE 03/29/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing @ slatermatsil. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STMICROELECTRONICS S.R.L. (INVENTOR: FRANCESCO VARONE) Appeal 2017-000835 Application 13/867,214 Technology Center 2600 Before ALLEN R. MACDONALD, JEREMY J. CURCURI, and BETH Z. SHAW, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 13—24 and 26—38. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). Claims 13—24 and 26—38 are rejected under 35 U.S.C. § 103(a) as obvious over Varga (US 2009/0294543 Al; Dec. 3, 2009), Ito (US 2007/0118822 Al; May 24, 2007), and Alasia (US 2008/0144947 Al; June 19, 2008). Final Act. A-25. We affirm. Appeal 2017-000835 Application 13/867,214 STATEMENT OF THE CASE Appellant’s invention relates to “an IC card for authentication.” Spec. 11. Claim 13 is illustrative and reproduced below: 13. An IC card comprising: a first visible layer comprising a natural material having a unique visual pattern; a second layer on a bottom surface of said first visible layer so as to support said first visible layer; a transparent layer on a top surface of said first visible layer, with the top surface being opposite the bottom surface; a storage device configured to store a reference image of the unique visual pattern to be visually compared with the unique visual pattern for authentication, with the stored reference image being a scan of the unique visual pattern; and said transparent, first visible and second layers laminated together, and with each layer having a same size to define a shape of the IC card. ANALYSIS The Examiner finds Varga, Ito, and Alasia teach all limitations of claim 13. Final Act. 4—8. Appellant contends: “[I]t would not have been obvious to one of ordinary skill in the art at the time of the invention to modify Varga et al. in view of Ito et al. and Alasia et al.” App. Br. 9. In support of this contention, Appellant presents the following principal arguments: i. “[T]here is no teaching or suggestion to use the random pattern of the titanium or stainless steel metal layer [in Varga] to prevent counterfeiting.” App. Br. 9 2 Appeal 2017-000835 Application 13/867,214 ii. Even though FIGS. 7 and 8 [in Ito] disclose that stainless steel has a unique visual pattern, Ito et al. fails to teach or suggest modifying an IC card to include 1) a visible layer comprising a natural material (such as stainless steel) having a unique visual pattern; and 2) a storage device configured to store a reference image of the unique visual pattern to be visually compared with the unique visual pattern for authentication. App. Br. 11. iii. The Appellant submits that a photograph of natural material (a person) [in Alasia] does not make the photograph the natural material as in the claimed invention. In other words, a photograph is not a natural material having a unique visual pattern. Moreover, the photograph in Alasia et al. is in a limited area and cannot correspond to the first visible layer comprising a natural material having a unique visual pattern. Alasia et al. thus teaches a passport with a picture and an image of the picture for verification of the passport. App. Br. 12-13. We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We do not see any error in the findings and reasons of the Examiner. Nor do we see any error in the Examiner’s conclusion of obviousness. The Examiner finds Varga teaches all claim limitations, except for the first visible layer (claim 13) “having a unique visual pattern,” the top layer being (claim 13) “transparent,” and the storage device being (claim 13) “configured to store a reference image of the unique visual pattern to be visually compared with the unique visual pattern for authentication, with the 3 Appeal 2017-000835 Application 13/867,214 stored reference image being a scan of the unique visual pattern.” Final Act. 5. The Examiner finds Varga teaches the first visible layer made of stainless steel, and Ito teaches (claim 13) “articles made from stainless steel have a unique visual pattern.” Final Act. 5. The Examiner finds Ito teaches a transparent layer. Final Act. 6. The Examiner finds Alasia teaches the storage device being (claim 13) “configured to store a reference image of the unique visual pattern to be visually compared with the unique visual pattern for authentication, with the stored reference image being a scan of the unique visual pattern.” Final Act. 7. These findings are not contested, and we adopt these findings as our own. The Examiner reasons: “it would have been obvious to one of ordinary skill in the art to apply the image comparison techniques of Ito to the IC card of Varga in order to improve the IC card with the reasonable expectation that this would result in an IC card that prevented counterfeiting.” Final Act. 6. The Examiner reasons: “it would have been obvious to one of ordinary skill in the art to modify the IC card of Varga with the transparent coating of Ito to improve the IC card with the reasonable expectation that this would result in an IC card that was protected from damage caused by dirt.” Final Act. 6. The Examiner articulates some reasoning, with rational underpinnings, as to why Ito’s image comparison technique and Ito’s transparent layer would have been incorporated into Varga’s IC card. See Final Act. 6. We agree with and adopt this reasoning as our own, and concur with the Examiner’s conclusion. The Examiner reasons: “it would have been obvious to one of ordinary skill in the art to modify the IC card of Varga in view of Ito as 4 Appeal 2017-000835 Application 13/867,214 applied above with the storage device of Alasia to improve the IC card with the reasonable expectation that this would result in an IC card that could be authenticated without requiring difficult and/or inefficient recordkeeping for verification devices.” Final Act. 8. The Examiner articulates some reasoning, with rational underpinnings, as to why Alasia’s storage device would have been incorporated into Varga’s IC card. See Final Act. 8. We agree with and adopt this reasoning as our own, and concur with the Examiner’s conclusion. In short, we agree with the Examiner that the proposed modifications to Varga based on the teachings of Ito and the teachings of Alasia would have been a predictable use of prior art elements according to their established functions—an obvious improvement. As the U.S. Supreme Court has explained: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida [v. Ag Pro, Inc., 425 U.S. 273 (1976)] and Anderson’s-Black Rock[, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are illustrative—a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Regarding Appellant’s arguments (i) and (ii), we agree with the Examiner that “Varga teaches that IC cards are susceptible to counterfeiting ([0007]). Therefore, one of ordinary skill in the art would have been 5 Appeal 2017-000835 Application 13/867,214 motivated to modify the IC card of Varga with features that prevent counterfeiting.” Ans. 24. Further regarding Appellant’s argument (ii), the Examiner finds Alasia teaches the storage device being (claim 13) “configured to store a reference image of the unique visual pattern to be visually compared with the unique visual pattern for authentication, with the stored reference image being a scan of the unique visual pattern.” Final Act. 7. Regarding Appellant’s argument (iii), we agree with the Examiner that “Alasia’s teachings are only relied upon in order to show that it would have been obvious to one of ordinary skill in the art to modify the 1C card of Varga in view of fto to store reference images on the card’s memory, rather than a verification device.” Ans. 26. We, therefore, sustain the Examiner’s rejection of claim 13, as well as claims 14—24 and 26—38, which are not separately argued with particularity. ORDER The Examiner’s decision rejecting claims 13—24 and 26—38 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 6