Ex Parte Boo et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201712706146 (P.T.A.B. Feb. 23, 2017) Copy Citation 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. 12/706,146 02/16/2010 Keng Aik Boo DC-17561 1092 33438 7590 02/27/2017 TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP P.O. BOX 203518 AUSTIN, TX 78720 EXAMINER ROSARIO, DENNIS ART UNIT PAPER NUMBER 2667 NOTIFICATION DATE DELIVERY MODE 02/27/2017 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): tmunoz @ tcchlaw. com kchambers@tcchlaw.com heather@tcchlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENG AIK BOO and WEI MING PAN Appeal 2016-006854 Application 12/706,146 Technology Center 2600 Before CAROLYN D. THOMAS, ERIC B. CHEN, and SHARON FENICK, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1, 2, 4—7, 9-12, 14, and 15, all of the pending claims in the present application. Claims 3, 8, and 13 are canceled. See Claim Appendix. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates generally to a method for biometric reading using an optical scan portion of an All-In-One (AIO) type device. See Abstract. Appeal 2016-006854 Application 12/706,146 Claim 1 is illustrative: 1. A method for performing a biometric scan comprising: providing an all in one device coupled to a host, the all in one device comprising a flatbed scanner portion and an image sensor, the flatbed scanner portion comprising a transparent platen window, the image sensor traversing the transparent platen window from a first side of the transparent platen window to a second side of the transparent platen window, the transparent platen window comprising a biometric scan portion adjacent to the first side of the transparent platen window, the all in one device further comprising an integrated indicia of where the biometric scan portion is located, the integrated indicia of where the biometric scan portion is located being positioned to indicate that the biometric scan portion is located adjacent to the first side of the transparent platen window, the biometric scan portion being implemented as a biometric reader platen window on a covered section of the flatbed scanner portion, the biometric reader platen window being separate from the transparent platen window; performing a biometric scan of a user via the image sensor to provide a biometric image; generating biometric scan information based upon the biometric image; and performing the biometric scan on the biometric scan portion of the transparent platen window. Appellants appeal the following rejections: Rl. Claims 1, 2, 6, 7, 11, and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shimizu (JP 02-047677, Feb. 16, 1990), Mason (US 8,607,059 B2, Dec. 10, 2013), and Waara (US 7,796,788 B2, Sept. 14, 2010); R2. Claims 4, 9, and 14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shimizu, Mason, Waara, and Harmon (US 2009/0047989 Al, Feb. 19, 2009); and 2 Appeal 2016-006854 Application 12/706,146 R3. Claims 5, 10, and 15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shimizu, Mason, Waara, and Shigeta (US 2006/0182318 Al, Aug. 17, 2006). ANALYSIS Issue: Did the Examiner err in finding that Shimizu, Mason, and Waara collectively teach or suggest an integrated indicia of where the biometric scan portion is located, as set forth in claim 1 ? Appellants contend that “nowhere within Waara is there any disclosure or suggestion of an AIO device which comprises a flatbed scanner portion . . . much less where the AIO device comprises an integrated indicia of where the biometric scan portion is located'1'’ (App. Br. 4). Appellants further contend that “Waara teaches away from the present invention as the fingerprint scan is performed through a guard that is hinged to be moved over the platen” (id.) and “Mason teaches away from using the scanner portion for performing a biometric scan. . . . [A] recognition device 250 is disclosed as separate from the scanner 200 of Mason” (id.). As an initial matter, we note that the Examiner finds, and we agree, that “Appellants are using the wrong set of references” (Ans. 10). Specifically, Appellants argue the combination of Waara and Mason (see App. Br. 3) for independent claims 1, 6, and 11, instead of the combination of Shimizu, Mason, and Waara (see Final Act. 5). As pointed out by the Examiner, Appellants “ignore the primary reference Shimizu” (see Ans. 10). As emphasized in the Final Action, and highlighted further in the Answer, the Examiner relies predominantly on Shimizu to teach or suggest the different features of the AIO, i.e., the flatbed scanner portion, transparent 3 Appeal 2016-006854 Application 12/706,146 platen window, image sensor, and biometric scan portion (see Final Act. 5— 6; see also Ans. 10—12). The Examiner merely imports secondary reference Mason to teach connecting to a host (see Final Act. 6) and secondary reference Waara to teach an integrated indicia of where the biometric scan portion is located (id. at 7). Thus, Appellants’ argument against Waara alone, separately from Shimizu, does not persuasively rebut the combination made by the Examiner. One cannot show non-obviousness by attacking references individually, where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,425-26 (CCPA 1981). As for Appellants’ broad teaching away arguments, we note that the Examiner is merely importing Waara to teach the claimed integrated indicia of where the biometric scan portion is located, i.e., Waara discloses “a clear, plastic guard 2 that hinges on a hinge 3 next to the platen glass 1 . . . this plastic guard 2 is proposed to have a green rectangle 4 ... on it to visually indicate where the user is to place their thumb” (2:47—54). We do not find, and Appellants do not establish, that the aforementioned disclosure of Waara criticizes, discredits, or otherwise discourages the use of an integrated indicia adjacent to the first side of a transparent platen window. “[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In other words, the mere use of a hinge does not teach away from the argued limitation, particularly when the Examiner is only importing Waara for teaching an 4 Appeal 2016-006854 Application 12/706,146 integrated indicia. Similarly, Appellants have not shown that Mason criticizes, discredits, or otherwise discourages the use of a biometric scan portion adjacent to the first side of the transparent platen window. In any case, as noted supra, Mason was merely imported to teach a device connected to a host. Furthermore, Appellants’ aforementioned teaching away arguments are silent regarding Shimizu, and thus unavailing. Accordingly, we sustain the Examiner’s rejection of claim 1. Appellants’ arguments regarding the Examiner’s rejection of independent claims 6 and 11 rely on the same arguments as for claim 1, and Appellants do not argue separate patentability for the dependent claims. See App. Br. 3—5. We, therefore, also sustain the Examiner’s rejection of claims 2, 4—7, 9-12, 14, and 15. DECISION We affirm the Examiner’s § 103(a) rejections Rl—R3 of claims 1, 2, 4-7, 9-12, 14, and 15. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation