Ex Parte Balm et al

Patent Trial and Appeal Board

Nov 26, 2013

11873523 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ANDY K. BALM and GEMMA R. LEE1
__________

Appeal 2011-010605
Application 11/873,523
Technology Center 2600
__________

Before ERIC GRIMES, LORA M. GREEN, and ERICA A. FRANKLIN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims related to
user feedback on printing and copying devices, which have been rejected for
obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify the Real Party in Interest as XEROX Corporation
(Appeal Br. 2).
Appeal 2011-010605
Application 11/873,523

2
STATEMENT OF THE CASE
Claims 1-20 are on appeal. Claim 1 is illustrative and reads as follows
(emphasis added2):
1. An apparatus comprising:
a central processing unit;
a printing engine operatively connected to said central processing
unit;
a scanner operatively connected to said central processing unit;
a user interface operatively connected to said central processing unit;
and
an input/output operatively connected to said central processing unit,
wherein said user interface comprises a customer feedback option,
wherein said central processing unit is adapted to cause said printing
engine to print a printed feedback form in response to a user activating said
customer feedback option on said graphic user interface,
wherein at least one of said user interface and said printed feedback
form instruct said user to supply feedback comments on said printed
feedback form and to scan said printed feedback form using said scanner,
wherein said central processing unit is adapted to capture said printed
feedback form as a feedback form image in response to said printed
feedback form being scanned by said scanner, and
wherein said central processing unit is adapted to transmit said
feedback form image to a feedback collection entity through said
input/output.

Each of the other independent claims on appeal (claims 6, 11, 16, and
20) also requires printing a printed feedback form in response to activation
of a customer feedback option.

2 The phrase “said graphic user interface” in the emphasized limitation
appears to lack proper antecedent basis, in that the remainder of the claim
refers only to “a user interface.” Appellants and the Examiner may wish to
address this issue when the application returns to the examining corps.
Appeal 2011-010605
Application 11/873,523

3
DISCUSSION
The Examiner has rejected claims 1-4, 6-9, 11-14, 16-18, and 20
under 35 U.S.C. § 103(a) based on Zuber,3 Beckman,4 and Cody5 (Answer
4). The Examiner has rejected claims 5, 10, 15, and 19 under 35 U.S.C.
§ 103(a) as obvious based on Zuber, Beckman, Cody, and Beck6 (Answer
13).
The Examiner finds that Zuber discloses an apparatus comprising a
CPU connected to: a printing engine, a scanner, a user interface, and an
input/output (id. at 4-5). The Examiner finds that Beckman teaches, among
other things, a “graphic user interface compris[ing] a customer feedback
option . . . wherein a user activating said customer feedback option” (id. at
6) and that Cody teaches a “printing engine . . . to print a printed feedback
form” (id. at 7).
The Examiner concludes that it would have been obvious “to have
modified the apparatus of Zuber reference to apply the known technique of
‘said graphic user interface comprises a customer feedback option, wherein a
user activating said customer feedback option . . . ’ as taught by Beckman
. . . [and] to include ‘to print a printed feedback form’ taught by Cody” (id.
at 8). The Examiner reasons that making the proposed combination would
improve apparatus calibration results and improve the accuracy of the
feedback assessment process (id.).

3 Zuber, US 7,027,187 B1, Apr. 11, 2006.
4 Beckman et al., US 2003/0144904 A1, July 31, 2003.
5 Cody, US 2005/0255439 A1, Nov. 17, 2005.
6 Beck et al., US 5,960,065, Sept. 28, 1999.
Appeal 2011-010605
Application 11/873,523

4
Appellants argue that the cited references do not teach or suggest,
among other limitations, a “central processing unit [that] is adapted to
cause said printing engine to print a printed feedback form in response to a
user activating said customer feedback option on said graphic user
interface,” as required by the claims (Appeal Br. 16). Specifically,
Appellants argue that Beckman discloses a feedback form displayed on a
graphic user interface that is filled out and transmitted without printing (id.
at 17), and also discloses a feedback form that is printed as part of the
publication on which feedback is sought – and therefore in advance of a user
activating a customer feedback option (id. at 18) – but does not disclose
printing a feedback form in response to activation of a customer feedback
option.
We agree with Appellants that the Examiner has not provided an
adequate basis for concluding that the disputed limitation would have been
obvious. The Examiner concedes that Zuber does not disclose a customer
feedback option or printing a feedback form in response to a user activating
a customer feedback option (Answer 5). The Examiner relies on Beckman
and Cody, in combination, to suggest printing a feedback form in response
to a user activating a customer feedback option. We agree with Appellants,
however, that these references – even when considered together – do not
disclose the disputed limitation, and the Examiner has not explained why it
nonetheless would have been obvious.
Beckman describes a publishing network for providing a printed
publication to a user based on ephemeral interests; e.g., a traveler who
wishes to purchase a publication that is specific to the interests of the
Appeal 2011-010605
Application 11/873,523

5
traveler for a particular trip (Beckman 3, ¶ 28). The system includes a client
(contained, e.g., within a kiosk at an airport; id. at 3, ¶ 29) that prints the
publication that is generated by a publishing server (id. at 4, ¶ 41).
Beckman discloses that a traveler may want to provide feedback on
how much they liked the content items that had been included in the
publication (id. at 4, ¶ 43). “To provide such feedback, the traveler may
access a feedback form relating to the printed publication 163 that is
displayed on the display device 133 to enter feedback relative to the content
items 213. In such case, such a form is generated by the feedback system
193 and transmitted to the client 103 for display.” (Id.) “The traveler may
then manipulate the various input devices 136 to indicate their feedback
regarding the content items 213 accordingly. The feedback 273 is then sent
back to the publishing server 106.” (Id. at 5, ¶ 43.)
Beckman discloses that “the publication feedback 273 may also be
entered by scanning a feedback sheet from the printed publication 163 that
was filled out by hand by the traveler. Specifically, the feedback sheet may
be included with the publication 266. . . . To provide feedback, the user may
fill out the feedback sheet associated with the publication and scan it.” (Id.
at 5, ¶ 45.)
Thus, as Appellants have pointed out, Beckman describes two
methods of providing feedback. In the first, a feedback form in provided on
a display, then filled out and transmitted electronically, with no printing
involved. In the second, a feedback form is included as part of the
publication on which feedback is sought, not in response to a customer
feedback option on a user interface.
Appeal 2011-010605
Application 11/873,523

6
Cody discloses “methods and systems for generating elements of an
assessment examination answer sheet” (Cody 1, ¶ 2). The Examiner cites
Cody’s disclosure of “preparing a printable answer sheet . . . includ[ing]
encoding [a] form identifier . . . [that] may differ for each answer sheet for
an assessment examination depending upon the examinee” (id. at 4, ¶ 54).
This “process may create a plurality of encoded printable answer sheets,
which the Processing module may use to determine the assessment
examination and examinee from a scanned image of the answer sheet. The
answer sheets may then be printed.” (Id.)
Thus, the disclosure in Cody cited by the Examiner describes printing
answer sheets that include coding for each examinee, but the Examiner has
not pointed to any disclosure in Cody that describes printing a feedback
form in response to activation of a customer feedback option, or any
analogous step.
In addition, the Examiner has not provided a reasoned basis for
concluding that a person of ordinary skill in the art, viewing the cited
references without the benefit of hindsight, would have considered it
obvious to modify Zuber by “apply[ing] the known technique of ‘said
graphic user interface comprises a customer feedback option, wherein a user
activating said customer feedback option . . . ’ as taught by Beckman”
(Answer 8), and to further modify the result by “includ[ing] ‘to print a
printed feedback form’ taught by Cody” (id.).
The Examiner reasons that doing so would “improve the accuracy of
the feedback assessment process” (id.), because “it provides a process of
correcting a misinterpretation of judgment by examining a printed copy of
Appeal 2011-010605
Application 11/873,523

7
the scanned image” (id.). This reasoning, however, only explains why it
would be obvious to have a paper copy of results that are scanned into a
computer. It does not provide a reason for modifying Beckman (or Zuber)
to include an option to print a feedback form in response to activation of a
customer feedback option, rather than (or in addition to) Beckman’s
disclosed method of including a feedback form as part of a printed
publication.
The Examiner finds that Beck discloses the additional limitations of
dependent claims 5, 10, 15, and 19 (Answer 13-14) but points to no
disclosure in Beck that makes up for the deficiency discussed above. In
summary, the Examiner has not provided an adequate basis for concluding
that a person of ordinary skill in the art would have considered it obvious to
modify Zuber’s apparatus to include printing a feedback form in response to
a user activating a customer feedback option, as required by the claims on
appeal.
SUMMARY
We reverse both of the rejections on appeal.

REVERSED

lp