Ex Parte 6208435 et al

Board of Patent Appeals and Interferences

Oct 29, 2010

90007306 (B.P.A.I. Oct. 29, 2010)

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.
90/007,306 11/19/2004 6208435 103650-5256 7441
46591 7590 10/29/2010
NEXSEN PRUET, LLC
P.O. BOX 10648
GREENVILLE, SC 29603
EXAMINER
WEAVER, SCOTT LOUIS
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/29/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

JAN SCOTT ZWOLINSKI
Patent Owner, Appellant
________

Appeal 2010-009003
Ex parte Reexamination Control 90/007306
United States Patent 6,208,435
Technology Center 3900
____________

Before JAMESON LEE, KARL D. EASTHOM, and KEVIN F. TURNER,
Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL1

1 The one-month time period for filing a request for rehearing, as recited in
37 C.F.R. § 41.79, and the two-month time period for filing an appeal, as
recited in 37 C.F.R. § 1.304 (see 37 C.F.R. § 1.983(b)(1)), both begin to run
from the “MAIL DATE” shown on the PTOL-90A cover letter attached to
this decision.

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Patent Owner (Appellant) appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1, 4-7, 11, 12, and 15-17. (Br. 2.) Claims 2,
3, 8-10, 13, and 14 have been cancelled. (Br. 3.)2
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

STATEMENT OF THE CASE
This proceeding arose from a third party request for ex parte
reexamination (filed November 19, 2004) of United States Patent 6,208,435
B1, titled “Method and Apparatus For Providing A Handheld Scanner-
Dictionary Apparatus” and issued to Jan Scott Zwolinski on March 27, 2001.
The ’435 patent is the subject of co-pending litigation styled as Alphascan
LLC v. Wizcom Techs. Inc. No. 1:04cv5480 (N.D. Ill., filed Aug. 19, 2004).
The litigation was stayed pending the outcome of the reexamination.
The ‘435 patent discloses a handheld scanning dictionary apparatus.
(Abstract.) The apparatus includes a scanning input, a display, a controller,
a program executing on the controller, memory, and an audio output device.
(Abstract; col. 3, ll. 7-18, 43-45.) In operation, the apparatus may scan text
with the scanning input, pass the scanned text to the controller, fetch a
definition or translation of the scanned text from memory, transmit signals to
the display for display of the definition or translation, and transmit signals to

2 This opinion employs the following abbreviations: Examiner’s Answer
(“Ans.”) and Appellant’s Appeal Brief (“Br.”).
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the audio output device for outputting audio of the translation. (Figs.3A &
7.)3
Exemplary claim 1 on appeal reads as follows:
1. A handheld scanning dictionary apparatus, comprising:
(a) a relatively small housing adapted in size to be held in one hand
by a user during use;
(b) a scanning input carried by said housing at a tapered distal end of
said housing which allows text to be scanned as input during a wanding
movement of a scanning input mode of operation with the scanning input in
contact with the text and with the elongated housing held in one hand by
such user and oriented generally transverse to a surface which carries such
text, with said elongate housing out of contact with a surface which carries
such text;
(c) a display carried by said housing in general alignment with a
longitudinal axis of said housing;
(d) a controller disposed within said housing and operatively coupled
to said scanning input, and said display;
(e) a program composed of instructions which are executable by said
controller for receiving as an input text scanned by said scanning input and
for providing as an output on said display text which is logically related to
said input text by being at least one of a dictionary definition and a
translation of the input text, wherein said output text is displayed on said
generally elongated display in an orientation which is in general alignment

3 This description of the disclosed invention constitutes findings of fact
designated hereinafter as (FF 0).
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with said longitudinal axis of said elongated housing with said leftmost
portion of said output text located in a position generally proximate said
scanning input thereby allowing said handheld scanning dictionary to be
read by said user while held in one hand by said user during use;
(f) an audio output device carried by said housing and operatively
coupled to said controller; and
(g) a text-to-speech module coupled between said audio output device
and said controller;
(h) wherein said program includes program instructions for receiving
as an input text scanned by said scanning input and for producing as an
output on said audio output device an audible output which is logically
related to said input text by being at least one of a dictionary definition and a
translation of said input text.
The Examiner relied upon the following prior art references:
Sussman US 4,793,812 Dec. 27, 1988
Tanoshima US 4,890,230 Dec. 26, 1989
Kumar US 5,648,760 July 15, 1997
Anderson US 5,857,156 Jan. 5, 1999
Lipman WO 97/01827 Jan. 16, 1997

The rejections on appeal follow:
Claims 1, 4, 7, and 12 stand rejected under 35 U.S.C. 102(a) as
anticipated by Lipman.
Claims 5, 6, 11, 15, and 17 stand rejected under 35 U.S.C. 103(a) as
obvious based on Lipman and Kumar.
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Claim 16 stands rejected under 35 U.S.C. 103(a) as obvious based on
Lipman and Anderson.
Claims 1, 4-7, 11, 12, 15, and 17 stand rejected under 35 U.S.C.
103(a) as obvious based on Kumar, Tanoshima, and Sussman.
Claim 16 stands rejected under 35 U.S.C. 103(a) as obvious based on
Kumar, Tanoshima, Sussman, and Anderson.
ISSUES
Appellant’s responses to the Examiner’s positions present the
following issues:
1) Did the Examiner err in finding that Appellant has not established
a date of conception prior to the publication of Lipman?
2) Did the Examiner err in combining Kumar, Tanoshima, Sussman,
and Anderson?
FINDINGS OF FACT (FF)
Conception
1. A disclosure document, dated October 10, 1996, filed at the Patent
Office (stamped with the USPTO date Nov. 15, 1996) by the inventor, Jan
Scott Zwolinksi, states the following:
CONCEPT: Build a handheld word optical word reader; that
gives you the definition of a word when passed over a printed
word. The definition will be displayed on a [sic] LCD type
screen. All existing technology other models or options: clock,
day date, alarm, pager, voice activation[,] pen activated push
button keys A to Z; language translation, infrared to computer
voice activated.
(Br. App’x, Exhibit B attached to Exhibit 1 (“First Replacement
Declaration of Jan Scott Zwolinski”).) A drawing showing, inter alia, the
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housing, including the optical reader and an LCD display, is also part of the
disclosure document. (Id.)
Kumar
2. Kumar discloses a handheld scanner apparatus including a scanner,
a display, a controller, and a memory for storing instructions. (Col. 3, l. 62 –
col. 4, l. 2; col. 4, ll. 33-45.) The scanner is for “scanning a strip of printed
material and generating a representative scanning message signal.” (Col. 8,
ll. 65-67.)
Tanoshima
3. Tanoshima discloses a handheld electronic dictionary comprising
an optical reader, a processor/controller, a memory, a translator, and a
dictionary. (Col. 5, ll. 1-31, 34-48; col. 6, ll. 21-32; Fig. 7.)
Sussman
4. Sussman discloses a scanning device with a text to speech module
“to enable manual scanning by the blind or by the print handicapped for the
purpose of converting substantially any printed text into synthesized human
voice.” (Col. 1, ll. 7-15.)
Anderson
5. Anderson discloses a handheld device comprising a scanner and a
pager module to enable a user to communicate scanned information about an
item to a remote device, thereby enabling the user to purchase the item with
minimal effort. (Col. 1, ll. 13-17, 33-38; col. 3, ll. 37-44.)

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PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellant has the burden
on appeal to present arguments contesting the Examiner’s rejections. Failure
to do so may constitute a waiver of potential arguments. See Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to
present arguments on a particular issue — or, more broadly, on a particular
rejection — the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”); Hyatt v. Dudas, 551 F.3d 1307,
1313-14 (Fed. Cir. 2008) (The Board may treat arguments appellant failed to
make for a given ground of rejection as waived); 37 C.F.R.
§ 41.37(c)(1)(vii).
To antedate a prior art reference, a declaration must provide a
showing of facts, in character and weight, sufficient to establish conception
coupled with diligence from prior to the reference date to a reduction to
practice. “Original exhibits of drawings or records, or photocopies thereof,
must accompany and form part of the affidavit or declaration or their
absence must be satisfactorily explained.” 37 C.F.R. §1.131. Mere
statements, standing alone, about what was conceived do not constitute a
showing of facts. See In re Harry, 333 F.2d 920, 922 (CCPA
1964)(discussing diligence, and finding that “[what the appellant submitted]
is not proof or ‘showing of facts’ but mere pleading.”). The declaration
must include objective evidence of conception, diligence, and reduction to
practice. See id.
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“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(citation omitted). Obviousness is determined on the basis of the evidence
as a whole and the relative persuasiveness of the arguments. See Oetiker,
977 F.2d at 1445.
ANAYLSIS
Issue 1 – Claims 1, 4-7, 11, 12, and 15-17
The Examiner rejected claims 1, 4, 7, and 12 as anticipated by Lipman
under 35 U.S.C. 102(a) and claims 5-6, 11, and 15-17 as obvious under 35
U.S.C. 103 based on combinations of Lipman and either Kumar or
Anderson. (Ans. 4-9.) Appellant did not argue that the references did not
disclose the elements of the claim. (Br. 6-19.) Rather, Appellant argued
only that Lipman is not prior art and therefore, that the rejections are not
proper. (Id. at 6.) Specifically, Appellant argued that there was conception
of the invention coupled with diligence from prior to the date of Lipman to a
reduction to practice. (Id.)
A date of conception, however, can only be established with objective
evidence. Appellant provided a disclosure document that was filed at the
Patent Office. (FF 1.) And that document does not disclose each limitation
of claim 1, the only independent claim on appeal. For example, as found by
the Examiner, the document does not disclose the claimed “text-to-speech
module coupled between said audio output device and said controller.”
(Ans. 19; accord FF 1.) As explained by the Examiner, the mere mention of
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voice activation in the disclosure document does not evidence conception of
the claimed “text-to-speech module.” (Ans. 19; accord FF 1.) Rather, voice
activation “is understood to reference operation (for example merely to turn
off or on) by voice input and does not inherently require any audio output.”
(Ans. 19; accord FF 1.)
Appellant also submitted declarations stating that the text-to-speech
module and the other claimed elements were conceived prior to the date of
Lipman. See e.g. Br. App’x: Exhibit 1 (“First Replacement Declaration of
Jan Scott Zwolinski” ¶ 31 (“That prior to January 16, 1997 I discussed with
Mr. Zaccaro my suggestion of utilizing a text-to-speech voice synthesizer so
that a user of the device could hear the translation or dictionary
definition.”)); Exhibit 2 (“Supplemental Declaration of Michael Zaccaro” ¶
3 (“That prior to 16 January, 1997, I discussed with Mr. Zwolinski his
suggestion of utilizing a text-to-speech voice synthesizer so that a user of the
device could hear the translation or dictionary definition.”)); Exhibit 3
(“[Second] Supplemental Declaration of Henry Altman” ¶¶ 2-4, 7-8 (signed
May 1, 2008) ((discussing, inter alia, how text-to-speech modules were
common and would be no problem for this handheld device and discussing
audio output with speech to text as input).) But mere statements about what
was conceived do not constitute a showing of facts, in this case, about the
combination, much less a showing of facts having sufficient character and
weight to establish conception. See In re Harry, 333 F.2d at 922.
The facts do not show how the text-to-speech synthesizer proposed
was to be arranged or used in combination with all the rest of the claim
elements. Appellant must account for the entire combination, not just
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separate claim features in isolation from each other. The testimony indicates
that at most, the function of the text-to-speech synthesizer was discussed as
an audio output with an audio output device (i.e., so that a user could hear
the translation, etc.). However, no discussion is asserted as to the electrical
location of the synthesizer in relation to the claimed device (i.e., “coupled
between said audio output device and said controller.”) For example, since
text is displayed at the display, the text-to-speech module might have been
located between the display and audio output device, rather than as claimed,
between the audio output device and the controller.4 Also no discussion
exists as to the physical location of the device with respect to “the relatively
small housing” (i.e., inside, outside, attached, etc.).
Still further, Appellant argues that the program (see note 4) “is
inherent in the stated function of voice activation.” (Br. 8.) However, the
recited program in step h requires text input, not voice. Any algorithm for
the program and particularly, how it would interact with a text-to-speech
module, is not described at all in the disclosure document or by the
declarants with sufficient facts, if at all. Appellant also asserts that a
controller “is described functionally by the combination.” Id. But even if

4 Step (h) in claim 1 indicates that the programmed controller is “for
producing an output on said audio output device an audible output.”
Broadly read, these program instructions indicate that perhaps a text-to-
speech “program” module is within the controller or somehow associated
therewith – presenting another possible location for the module – i.e., one
embedded as a program module with the other program steps and
“executable by the controller” - see step (e) of claim 1. In any event, the
declarants do not describe with sufficient facts, if any, how or why this
output interacts with the text-to-speech module (which presumably would
not require an audio type of input).
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that assumption is correct, the evidence, including that submitted by the
declarants (who describe a processor) does not show how any
controller/processor was linked to the other claimed elements, such as the
text-to-speech module.5 The disclosure document does not describe or show
the controller, the program, or the text-to-speech synthesizer. As such, it
does not show how they were combined. (See FF 1.)
Further, “[o]riginal exhibits of drawings or records, or photocopies
thereof, must accompany and form part of the affidavit or declaration or
their absence must be satisfactorily explained.” 37 C.F.R. §1.131. But as
found by the Examiner, drawings or records are missing from the
declarations and the declarants do not explain why they are missing. (Ans.
20.) Moreover, as also found by the Examiner, some of the declarations
refer to documents but it is not clear which documents are being referenced.
(Id.) For example, while Mr. Altman describes “drawings attached hereto in
describing his [Mr. Zwolinski’s] invention” (“[First] Supplemental
Declaration of Henry Altman” ¶ 14 (signed Feb. 14, 2008)), no such
drawings appear to be attached in this record and it is not clear what
drawings are being referenced by the statement. Mr. Altman also describes
a “sketch” and other “drawings” he saw but does not indicate if the text-to-
speech module was on the sketch or drawings or what happened to such
drawings. (“[Second] Supplemental Declaration of Henry Altman” ¶ ¶7, 8,

5 See “[First] Supplemental Declaration of Henry Altman” ¶ 11 (mentioning
a “suitable program” in a processor to “decode the output of the read head
and provide a display of the decoded text on the LCD”). See also supra note
4 (it is not clear if the text-to-speech module is part and parcel of the
processor program or how the module interacts with a program associated
with the controller).
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10 (signed May 1, 2008).) Mr. Zwolinski also refers to “one of the drawings
attached to Mr. Altman’s affidavit” as the disclosure document drawing, but
it is not clear what other drawings are referenced here because no other
drawings (besides an advertisement dated after the relevant priority date and
the disclosure document drawing and copy thereof) appear in this record
attached to any of Mr. Altman’s affidavits. (See “First Replacement
Declaration of Jan Scott Zwolinski” ¶¶ 5, 12, 13, 15, 16, 18, 30; see also
“Supplemental Declaration of Jan Scott Zwolinski” ¶¶ 2-6 (mentioning
additional documents and implying some documents may have been
destroyed in a tornado – though it is not clear again, which, if any of the
drawings referenced by the declarants, were destroyed – of course, the
drawings asserted as attached here were not destroyed).)
For these reasons, we find that Appellant has not established a date of
conception of independent claim 1 or dependent claims 4-7, 11, 12, and 15-
17 prior to the date of Lipman, and therefore, we will sustain the Examiner’s
rejections of those claims.6
Issue 2 – Claims 1, 4-7, 11, 12, and 15-17
The Examiner rejected claims 1, 4-7, 11-12, 15, and 17 as obvious
under 35 U.S.C. 103 based on Kumar, Tanoshima, and Sussman. (Ans. 10-
16.) The Examiner also rejected claim 16 as obvious under 35 U.S.C. 103
based on Kumar, Tanoshima, Sussman, and Anderson. (Ans. 16.)

6 Appellant also argues that there is evidence of diligence from the
conception of the invention to the constructive reduction to practice.
Because we find that there is insufficient evidence of conception, it is not
necessary to decide the diligence issue.
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Appellant did not argue that the various combinations of these
references fail to disclose one or more claim elements. (Br. 20-23.) Rather,
Appellant argues only that it is improper to combine the references. (Id.)
Specifically, Appellant argues that there is no motivation to make the
modifications, proposed by the Examiner, to Kumar. (Br. 23.)
As found by the Examiner, however, one of ordinary skill in the art
would have been motivated to add the features disclosed in the references
for the purpose of adding scan-related functions to a similar device as
suggested in the reference disclosures themselves: Tanoshima (providing
known definition and translation functions), Sussman (providing a known
text to speech function to aid the handicapped), and Anderson (providing a
function to communicate scanned information about an item to a remote
device to facilitate a purchase) (See Ans. 24-25; accord FF 3-5.)
Appellant also argues that combining Tanoshima, Sussman, or
Anderson with Kumar would render the prior art device of Kumar
“unsatisfactory for its intended purpose.” (Br. 21-23.) Appellant argues that
“Kumar also specifically recites the desire to provide a device which is easy
to understand, learn and operate.” (Id. at 21.) According to Appellant,
“[f]urther complicating the device by significantly enhancing the capabilities
is contrary to the advantages offered by Kumar thereby rendering the device
unsatisfactory with respect to the intended purpose.” (Id.)
But Appellant has not shown that merely adding known features from
Tanoshima, Sussman, or Anderson to the Kumar device would overly
complicate the Kumar device or make it prohibitively difficult to understand,
learn, or operate. Indeed, it is an object of Kumar to provide a device that is
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both functionally comprehensive and easy to use. (Col. 2, ll. 22-37 (“It is,
therefore, an object of the present invention to provide a portable, device . . .
that receives and plays back messages in a functionally comprehensive
variety of sensory formats. . . . It is still a further object of the present
invention to provide a device, as set forth above, that is easy to understand,
learn and operate.”)
As such, given Kumar’s teachings of desire for functionality and ease
of use, even if there is a trade-off between the two, skilled artisans would
have mitigated any extra difficulties associated with providing more
scanning functions by ensuring ease of use. See KSR, 550 U.S. at 420, 424
(“any need or problem known . . . can provide a reason for combining the
elements in the manner claimed” and “the interaction of multiple
components means that changing one component often requires others to be
modified as well”); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)
(teaching of epoxy as an inferior circuit board product not a sufficient
teaching away where epoxy was employed in known circuit boards having
“relatively acceptable dimensional stability”). Moreover, as found by the
Examiner, adding features from the devices of Tanoshima, Sussman, or
Anderson to the Kumar device would not cause any function of the Kumar
device to become inoperative or to be eliminated. (Ans. 24-25.)
Appellant also argues that Tanoshima would render Kumar
unsatisfactory for its intended purpose of receiving input and reproducing
that input by display or by audible signal. (Br. 22.) This is not persuasive
because as indicated supra, adding a different type of input or output, in this
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case, a translation, only supplements and does not replace or destroy
Kumar’s input/output relationship.
For these reasons, we will sustain the Examiner’s rejections of claims
1, 4-7, 11, 12, and 15-17.
CONCLUSION
The Examiner did not err in finding that Appellant has not established
a date of conception prior to the publication of Lipman. The Examiner also
did not err in combining Kumar, Tanoshima, Sussman, and Anderson.
DECISION
The Examiner’s decision to reject appealed claims 1, 4-7, 11, 12, and
15-17 is affirmed.
AFFIRMED

KMF

Counsel for Patent Owner:
NEXSEN PRUET, LLC
P.O. Box 10648
Greenville, SC 29603

Counsel for Third Party Requester:
Robert J. Hess
GIBBONS DEL DEO DOLAN ET AL
1 Riverfront Plaza
Newark, New Jersey 07102