Ex Parte Brundage et al

Board of Patent Appeals and Interferences

Jul 20, 2010

11244907 (B.P.A.I. Jul. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TRENT J. BRUNDAGE and WILLIAM C. HEIN, III
____________

Appeal 2009-012660
Application 11/244,907
Technology Center 3600
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Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37
C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or
the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-
90A cover letter attached to this decision.

Appeal 2009-012660
Application 11/244,907

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 9-17. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

Claim 9, reproduced below, is representative of the subject matter on appeal.
9. A method comprising:
using an image sensor in a cell phone to capture image data from a printed
document, said document being selected from the group consisting of an invoice,
check, and checking account statement;
decoding from the captured image data certain machine readable data
encoded on said document;
by reference to the decoded machine readable data, establishing a link from
said cell phone to a remote computer; and
presenting information on a display of said cell phone, at least some of said
information being related to data received from the remote computer relating to
said document.

The Examiner relies upon the following as evidence of unpatentability:
Antognini US 2002/0023055 A1 Feb. 21, 2002
Ausems US 6,434,403 B1 Aug. 13, 2002
We rely on the following evidence newly presented in this Decision:
Ogasawara US 6,512,919 B2 Jan. 28, 2003

The Examiner rejected claims 9-17 under § 103 over Antognini in view of
Ausems.
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Appellants argue that neither Antognini nor Ausem teaches the claimed
feature of: by reference to the decoded machine readable data, establishing a link
from said cell phone to a remote computer (Answer 9).
The Examiner found that Ausems discloses this feature at (col. 6, ll. 19-50)
(Answer 9). Ausems however discloses at this section, that a smart-card engine
260 processes encoded information received from a smart-card to establish the
link. A short-range transceiver 265 enables a PDA telephone 100 to establish a
wireless link in order to communicate with other devices (col. 6, ll. 19-50).
According Ausems, the smart card data is not captured image data from a printed
document. Rather, it is contained in an embedded chip (col. 4, ll. 45-50). Thus,
we do not find either Antognini or Ausems teaches using a cell phone to capture
image data from a printed document to create a link as required by the claims.
Since claims 10-17 depend from claim 9, and since we cannot sustain the
rejection of claim 9, the rejection of claims 10-17 likewise cannot be sustained.

Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground
of rejection for claim 9 under 35 U.S.C. § 103(a) over Ogasawara.
Ogasawara discloses using an image sensor in a cell phone to capture
image data from a printed document, said document being selected from the group
consisting of an invoice, check, and checking account statement (cell phone
scanner scans barcode (Ogasawara col. 5, ll. 35-40) and we find that a bar code
printed on a product label is an obvious variant of, e.g., a check or invoice, because
each is a substrate on which image data is printed; by reference to the decoded
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machine readable data, establishing a link from said cell phone to a remote
computer (the cell phone scans a barcode and sends it to the server which links the
SKU to a database to description and price data for the item (col. 6, ll. 46-50) -
similarly, the Specification describes “link” in terms of linking to a database for
related data (Specification 3:10-12); presenting information on a display of said
cell phone (description and price data for the item is displayed on the cell phone 18
(col. 6, ll. 49-53), at least some of said information being related to data received
from the remote computer relating to said document (description and price relate to
the item scanned).

CONCLUSIONS OF LAW
We reverse the rejection of claims 9-17 under § 103 over Antognini in view
of Ausems.
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection of
claim 9 under 35 U.S.C. § 103(a) over Ogasawara.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
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Application 11/244,907

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• (1) Reopen prosecution. Submit an appropriate amendment of the claims
so rejected or new evidence relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which event the proceeding will be
remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .
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)(iv) (2007).
REVERSED; 37 C.F.R. § 41.50(b)

JRG

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