Ex parte Campo et al.

Board of Patent Appeals and Interferences

Jan 16, 1998

07914904 (B.P.A.I. Jan. 16, 1998)

Application for patent filed July 16, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES A. CAMPO, DONALD M. EMBREE,
DONALD I. SLOAN, ROGER H. RAMSEY,
ROBERT G. MARTINEZ, DENNIS M. FLUTO
__________
Appeal No. 95-3998
Application 07/914,9041
__________
ON BRIEF
__________
Before KRASS, JERRY SMITH and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-3998
Application 07/914,904
2
This is a decision on appeal from the final rejection of
claims 1 through 20, all of the claims present in the
application.
The invention relates to a portable, wireless, optical
scanner configured to be held in the palm of one hand with the
thumb or fingers of that hand operating the keys of a keyboard
on the front face of the scanner housing.
The independent claim 1 is reproduced as follows:
1. A portable bar code scanner apparatus comprising:
a housing configured to be held in the palm of one
hand with a front face of the housing facing
upwardly from the palm and with an upper end of the
housing facing outwardly;
a keyboard and a display mounted on the front face
of the housing, the keyboard being oriented with its
upper end nearest the upper end of the housing and
having a full numeric set of keys that are
individually engageable by the thumb or fingers of
the hand holding the housing; and
means disposed within the housing for scanning a bar
code positioned adjacent to the upper end of the
housing.
The Examiner relies on the following references:
Tierney et al. (Tierney) 4,766,299 Aug.
23, 1988
Wakatsuki et al. (Wakatsuki) 5,023,438 Jun.
11, 1991
Metlitsky et al. (Metlitsky) 5,191,197 Mar.
Appeal No. 95-3998
Application 07/914,904
On page 3 of the answer, the Examiner listed Huber, U.S.2
Pat. No. 4,420,682 and Chadima, U.S. Pat. No. 4,570,057.
However, the Examiner rejected the claims in the Final Action
based upon Metlitsky, Tierney and Wakatsuki in view of Main or
Kumar. The Examiner states on page 3 of the answer that no
new art has been applied and on page 5 of the answer that the
answer does not contain any new ground of rejection. Thus,
the record shows that claims 1 through 20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Metlitsky, Tierney
and Wakatsuki in view of Main or Kumar as stated in the Final
rejection. Therefore, Huber and Chadima are not relied upon
by the Examiner for the rejection of the claims.
Appellants filed an appeal brief on January 12, 1995. We3
will refer to this appeal brief as simply the brief.
Appellants filed a reply appeal brief on June 6, 1995. We
will refer to this reply appeal brief as the reply brief. The
Examiner responded to the reply brief with a supplemental
Examiner's answer on August 1, 1996, thereby entering the
reply brief into the record.
The Examiner responded to the brief with an Examiner's4
answer, mailed April 6, 1995. We will refer to the Examiner's
(continued...)
3
02, 1993
Main et al. (Main) 5,216,233 Jun.
01, 1993
Kumar 5,294,782 Mar. 15,
1994
Claims 1 through 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Metlitsky, Tierney and Wakatsuki in
view of Main or Kumar . 2
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the briefs and answers for the3 4
Appeal No. 95-3998
Application 07/914,904
(...continued)4
answer as simply the answer. The Examiner responded to the
reply brief with a supplemental Examiner's answer mailed
August 1, 1996.
4
respective details thereof.
OPINION
We will not sustain the rejection of claims 1 through 20
under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assocs.,
Appeal No. 95-3998
Application 07/914,904
5
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
On page 13 of the brief, Appellants argue that
independent claim 1 defines a portable bar code scanner having
a keyboard oriented so as to allow the keys to be individually
engagable by the thumb or fingers of the hand holding the
housing. Appellants further argue that such a scanner
apparatus is not shown or suggested by any of the references
applied by the Examiner. On page 14 of the brief Appellants
argue that the only other independent claim, claim 13, on
appeal defines a portable bar code scanner having all of the
features set forth in independent claim 1 and that for reasons
set forth with respect to claim 1, the rejection of
independent claim 13 should be reversed as well.
We note that Appellants’ claim 1 recites in part the
following:
a housing configured to be held in the palm of one
hand ...
a keyboard ... having a full numeric set of keys
Appeal No. 95-3998
Application 07/914,904
6
that are individually engageable by the thumb or
fingers of the hand holding the housing.
We note that Appellants’ claim 13 recites in part the
following:
the housing being sized and configured to be
holdable in the palm of a hand such that the thumb
or fingers of the hand holding the scanner can
selectively engage individual keys on the keyboard
while the hand is holding the housing.
Upon a careful review of references relied upon by the
Examiner, we fail to find that the references teach or suggest
the above limitations as recited in Appellants’ claims. We
appreciate that Main does teach in column 4, lines 42-46, that
the actuating button 42 shown in Figure 2 is located so as to
allow the thumb of the hand holding the housing 30B to actuate
button 42. However, Main teaches in column 4, lines 49-58,
that the keys 12 are actuated by the free hand of the user and
not the fingers or thumb of the hand holding the housing.
The Examiner argues on pages 4 and 5 of the answer that
engaging the keys or the keyboard using the thumb or fingers
of the same hand that holds the housing is known in such
things as television remotes. However, the Examiner has not
provided any
Appeal No. 95-3998
Application 07/914,904
7
evidence in the record of showing these television remotes or
that these remotes were known at the time of Appellants'
filing. We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference or shown to be common
knowledge of unquestionable demonstration. Our reviewing
court requires this evidence in order to establish a prima
facie case. In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966).
Furthermore, the Examiner has not provided any evidence
that the prior art would have suggested modifying the Main
housing to allow the user to engage the keys 12 using the
thumb or fingers of the same hand that holds the housing. The
Federal Circuit states that "[t]he mere fact that the prior
art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification." In re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221
Appeal No. 95-3998
Application 07/914,904
8
USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may not be
established using hindsight or in
view of the teachings or suggestions of the inventor." Para-
Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
L. Gore, 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13.
We have not sustained the rejection of claims 1 through
20 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Appeal No. 95-3998
Application 07/914,904
9
Administrative Patent Judge )
Appeal No. 95-3998
Application 07/914,904
10
James R. Brueggemann
Pretty, Schroeder,
Brueggemann & Clark
444 S. Flower Street
Suite 2000
Los Angeles, CA 90071