Ex Parte Dina

Board of Patent Appeals and Interferences

Apr 10, 2012

11855702 (B.P.A.I. Apr. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte DOUG DINA 8
___________ 9
10
Appeal 2010-009771 11
Application 11/855,702 12
Technology Center 3600 13
___________ 14
15
16
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 17
BIBHU R. MOHANTY, Administrative Patent Judges. 18
19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL 21
Appeal 2010-009771
Application 11/855,702
2

STATEMENT OF THE CASE1 1
Doug Dina (Appellant) seeks review under 35 U.S.C. § 134 (2002) of a final 2
rejection of claims 1-8, the only claims pending in the application on appeal. 3
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 4
The Appellant invented a self-service terminal with passport photo 5
processing (Specification ¶ 0003). 6
An understanding of the invention can be derived from a reading of 7
exemplary claim 1, which is reproduced below [bracketed matter and some 8
paragraphing added]. 9
1. A self-service terminal comprising: 10
[1] a camera for capturing an image of a customer; 11
[2] a photo printer for printing a passport photo of the customer 12
based upon the captured image; 13
[3] a payment acceptor for completing customer payment for 14
the passport photo; 15
[4] a receipt printer for printing a receipt reflecting payment for 16
the passport photo; 17
[5] a display for displaying instructions to the customer; 18
[6] an input device for recording customer selections, including 19
[6.1] a camera selection to activate the camera, 20
[6.2] an acceptance selection indicating acceptance of the 21
image, 22

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed November 9, 2009) and the Examiner’s Answer (“Ans.,” mailed
March 16, 2010).
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Application 11/855,702
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and 1
[6.3] a photo printer selection to activate the photo 2
printer; 3
and 4
[7] a processor 5
[7.1] for causing the display to display first instructions 6
informing the customer how to capture the image, 7
[7.2] for activating the camera in response to the camera 8
selection, 9
[7.3] for displaying second instructions informing the 10
customer how to judge the image, 11
[7.4] for recording the acceptance selection, 12
[7.5] for displaying third instructions informing the 13
customer how to print the passport photo, 14
[7.6] for activating the photo printer in response to the 15
printer selection, 16
[7.7] for recording a payment for the passport photo via 17
the payment acceptor, 18
and 19
[7.8] for activating the receipt printer to print the receipt. 20
The Examiner relies upon the following prior art: 21
Fruechtel US 6,175,825 B1 Jan. 16, 2001
Chumbley US 2002/0093568 A1 Jul. 18, 2002
Claims 1-5 and 8 stand rejected under 35 U.S.C. § 103(a) as 22
unpatentable over Chumbley. 23
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable 24
over Chumbley and Fruechtel. 25
Appeal 2010-009771
Application 11/855,702
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ISSUES 1
The issue of obviousness turns primarily on whether it was predictable 2
for Chumbley’s device, which took photo’s for passports, and had the 3
capacity to print photo’s, to print actual hard copy passport photo’s from the 4
photo’s taken for passports. 5
FACTS PERTINENT TO THE ISSUES 6
The following enumerated Findings of Fact (FF) are believed to be 7
supported by a preponderance of the evidence. 8
Facts Related to the Prior Art - Chumbley 9
01. Chumbley is directed to producing a photograph integrated with a 10
postage meter image displaying a particular value of postage on an 11
adhesive- backed postage meter strip. Chumbley’s device is also 12
used for creating passport photo image files, eliminating the need 13
to search for a passport photographer, make an appointment, and 14
then travel to the location for passport photo session. The photo 15
image files are uploaded by the device to Federal Passport 16
Processing Centers by high-speed modem communications and 17
can be imported directly into the Agency's passport processing 18
software without the necessity of subsequent scanning by the 19
Agency. This provides a self-service means whereby, for a 20
nominal charge, consumers can capture a digital photo image of 21
themselves that is suitable for use by a Federal Passport Agency in 22
issuing to them a valid passport. Chumbley ¶’s 0013-0015. 23
02. In operation, the user simply approaches the apparatus, where he 24
or she is prompted with easy-to-follow instructions appearing on 25
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the touch-screen CRT display. After selecting "Passport Photo" or 1
"PhotoStamp," the user deposits the indicated amount of money 2
through the currency receiving and dispensing device. If the user 3
selects "Passport Photo," he or she is then instructed on how to use 4
the remote control device for adjusting the camera lens and 5
capturing the photo image when ready. Within approximately 30 6
seconds after the passport photo image has been captured by the 7
user, duplicate receipts are dispensed by the thermal receipt 8
printer; one copy is retained by the user, the other is given to a 9
passport agency by the user, who in turn attaches the receipt to the 10
passport application in lieu of the customary two-inch by two-inch 11
paper passport photo. The receipt also displays a Passport Agency 12
File Number in Bar Code form, a date/time stamp, location 13
number, and any other pertinent information as may be required 14
by a Federal Passport Agency. At pre-determined intervals, the 15
device logs onto a host computer via high-speed modem and 16
uploads the passport photo image files created since the last 17
upload to a Federal Passport Processing Center or Centers, or to a 18
designated site on the Internet. A particular photo image file is 19
retrieved by its file name, i.e., the Federal Passport Agency file 20
number appearing on the applicant's receipt, which may be read 21
into the Agency's host computer by a bar code reader device. 22
Chumbley ¶’s 0016-0020. 23
03. Chumbley describes how it was known that self-service photo 24
machines may also be useful for obtaining paper passport photos. 25
However, in an attempt to curb fraudulent misuses of its passports, 26
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such as switching passport photographs with that of someone 1
other than the true passport holder, Federal Passport Agencies 2
were developing systems wherein passport photographs would be 3
scanned by a digital camera or flatbed scanner means and 4
combined with the holder's name, address, date of birth, and all 5
other pertinent information as required on passports. The resultant 6
digitized photograph, combined with the pertinent information of 7
the holder, would be printed on an adhesive backed clear plastic 8
film, similar in appearance to an overhead projection cell. This 9
film could then be adhered to the inside of a passport and 10
forwarded to the proper passport applicant. It is because Federal 11
Passport Agencies might have no longer utilized paper 12
photographs for adherence to its issued passports, but instead 13
utilized digital photo image files, Chumbley described a need for a 14
device that produces digital photo image files in such places as 15
post offices, courthouses, etc. In this manner, the digital photo 16
image files could be uploaded to the Passport Agency's central 17
computer by high-speed modem in lieu of scanning a paper 18
photograph in order to create the digitized photograph. Chumbley 19
¶’s 0008-0009. 20
ANALYSIS 21
We are not persuaded by the Appellant’s argument that Chumbley’s 22
device does not print a passport photo. There is no argument that 23
Chumbley’s device fails to take a photo for a passport or that such a photo is 24
not printed out at some point for a passport, or that Chumley’s device fails to 25
print out a copy of the image that was taken for the passport photo. The 26
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entire argument is that the image that Chumbley’s device itself prints out 1
does not meet the regulatory requirements for a passport photo, and that 2
Chumbley’s explicit recitation of sending rather than printing the photo at 3
the device teaches away from printing at the device. 4
This is a rejection under obviousness rather than anticpation. The issue 5
is whether having Chumbley’s device print an actual passport photo was 6
predictable to one of ordinary skill. Because Chumbley explicitly describes 7
such an embodiment being known, we find that it was necessarily 8
predictable. FF 03. Even absent such a teaching, the fact that Chumbley 9
describes printing photo’s at the device and taking photo’s for the purpose of 10
passports, combined with the notoriously old practice of taking hard copy 11
passport photo’s, would equally show that producing actual passport photo’s 12
on Chumbley’s device was predictable. 13
As to the argument that Chumbley teaches away from printing locally, 14
we find Chumbley simply describes an alternative, not that printing locally 15
would be unusable. 16
What a reference teaches or suggests must be examined in the 17
context of the knowledge, skill, and reasoning ability of a 18
skilled artisan. What a reference teaches a person of ordinary 19
skill is not [] limited to what a reference specifically "talks 20
about" or what is specifically "mentioned" or "written" in the 21
reference. Under the proper legal standard, a reference will 22
teach away when it suggests that the developments flowing 23
from its disclosures are unlikely to produce the objective of the 24
applicant's invention. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 25
1994). A statement that a particular combination is not a 26
preferred embodiment does not teach away absent clear 27
discouragement of that combination. In re Fulton, 391 F.3d at 28
1199-1200. [] [A] prior art reference that does not specifically 29
refer to one element of a combination does not, per se, teach 30
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away. If it did, only references that anticipate could be used to 1
support an obviousness analysis. However, prior art references 2
that are capable of rendering an invention obvious under a 3
section 103 analysis are not limited to reference that also 4
anticipate the patent at issue. 5
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). 6
Clearly, Chumbley does not suggest that printing passport photo’s locally 7
would not produce the objective of passport photo’s. Instead, Chumbley 8
simply suggested that, if and when the State Department began adding the 9
described security measures to the passport photos, then it would be more 10
efficient to send a file of the photo than a hard copy to the State Department. 11
This does not negate the idea of sending the hard copy. It merely prescribes 12
an alternative that would save time and resources in a context that was 13
predicted to occur at some future time. 14
CONCLUSIONS OF LAW 15
The rejection of claims 1-5 and 8 under 35 U.S.C. § 103(a) as 16
unpatentable over Chumbley is proper. 17
The rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable 18
over Chumbley and Fruechtel is proper. 19
DECISION 20
The rejection of claims 1-8 is affirmed. 21
No time period for taking any subsequent action in connection with this 22
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 23
§ 1.136(a)(1)(iv) (2007). 24
25
Appeal 2010-009771
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AFFIRMED 1
2
3
4
MP 5