Ex Parte He

Board of Patent Appeals and Interferences

Sep 29, 2009

11290273 (B.P.A.I. Sep. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DUANFENG HE
_____________

Appeal 2009-001703
Application 11/290,273
Technology Center 2800
____________

Decided: September 29, 2009
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Before ROBERT E. NAPPI, JOHN A. JEFFERY,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final
rejection of claims 1-5, 7-10, 12-17, 19-21, 23-28, and 30-34. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Appellant’s claimed invention is directed to a configuration of components
100 that can be used to program a batch of scanners using a 2-D programming bar
code 140 that is generated and printed by a user (Spec. 3, last paragraph; Fig. 1). A
scanner 110 is connected to an interface computer 120 that is accessed by a user to
input parameters (Spec. 3, last paragraph; Fig. 1). The interface computer 120 is
capable of printing one or more programming bar codes 140 that encode scanner
parameter settings (Spec. 3, last paragraph; Fig. 1).
Claim 1, reproduced below, is representative of the subject matter on appeal:
1. A method that programs one or more bar code scanners, the method comprising:
determining available scanner parameters by queries made to one of the one
or more bar code scanners;
providing an interface through which scanner parameter settings selected
from available scanning parameters can be input;
receiving the input parameter settings;
encoding the input parameter settings in a programming bar code; and
scanning the programming bar code with the one or more bar code scanners.

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THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Wang US 5,489,158 Feb. 6, 1996

Wilz US 5,777,315 Jul. 7, 1998

Thuries US 6,776,342 B1 Aug. 17, 2004

The following rejections are before us for review:
1. The Examiner rejected claims 1, 3-5, 7-10, 12, 13, 15-17, 19-21, 23-25,
27, 28, and 30-34 under 35 U.S.C. § 103(a) as unpatentable over Thuries in view
of Wilz.
2. The Examiner rejected claims 2, 14, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Thuries in view of Wilz and further in view of Wang.
Appellant arguments address claims 1, 3-5, 7-10, 12, 13, 15-17, 19-21, 23-
25, 27, 28, and 30-34 as a group (App. Br. 9-15).1 Accordingly, claims 3-5, 7-10,
12, 13, 15-17, 19-21, 23-25, 27, 28, and 30-34 stand or fall with claim 1. See 37
C.F.R. § 41.37 (c)(1)(vii) (2004). We note that simply pointing out what a claim
requires with no attempt to point out how or why the claims patentably distinguish
over the prior art does not amount to a separate argument for patentability. 37
C.F.R. § 41.37(c)(1)(vii) (2004). See also In re Nielson, 816 F.2d 1567, 1572
(Fed. Cir. 1987). Thus, we only address the specific arguments presented, and we

1 Only arguments made by Appellant have been considered in this decision.
Arguments which Appellant could have made but did not make in the Brief have
not been considered and are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(2004).
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do not address Appellant’s mere recitation of claim limitations which are without
any corresponding argument.

OBVIOUSNESS
ISSUE
Regarding the rejection of claims 1, 3-5, 7-10, 12, 13, 15-17, 19-21, 23-25,
27, 28, and 30-34
Appellant asserts that Wilz’s programming process utilizes the function
parameter reading computer system 70 to duplicate the function parameters or
parameter settings of the master bar code symbol reader 2 in the clone bar code
symbol readers 2’ (App. Br. 11). Appellant argues that this teaches away from the
step recited in claim 1 of determining available scanner parameters by queries
made to one of the one or more bar code scanners (App. Br. 11). Appellant also
asserts that Wilz’s function parameters are not the same as “available scanner
parameters” (App. Br. 10).
The Examiner responds that Wilz teaches (see the Abstract, lines 6-9 and
17-23, column 3, lines 51 -54, and column 16, lines 19-23 and 35-40) that the
parameters of a bar code symbol reader can be obtained, or "queried" for, by a
computer-based parameter device running a function parameter configuration
program stored on its hard drive (Ans. 13).
Thus, the issue is whether Appellant has shown that the Examiner erred in
finding that the Thuries and Wilz combination teaches the limitation of
“determining available scanner parameters by queries made to one of the one or
more bar code scanners” as recited in claim 1.
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FINDINGS OF FACT
The following findings of fact (FF) supported by a preponderance of the
evidence primarily for emphasis:
1. The claim language recites the limitation of: “determining available scanner
parameters by queries made to one of the one or more bar code scanners”
(claim 1).
2. Appellant’s Specification describes a scanner 110 connected to an interface
computer 120 that is accessed by a user to input parameters (Spec. 3, last
paragraph; Fig. 1).
3. Appellant’s Specification describes that the available scanner parameters can
be determined by queries made to one of the scanners or can be stored so
that the interface accesses the stored set of parameters (Spec. 3, 4th full
paragraph).
4. Wilz teaches that the parameters of a master bar code symbol reader 2 can
be accessed, or “queried,” by the parameter reading computer system 70
which then stores them in its memory (col. 16, ll. 27-40).
5. Thuries teaches that a user may display the stored commands and assigned
parameters of computer 16, list parameters assigned to each of the
parameterization commands, alter, and select parameters (col. 5, ll. 23-52).

PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that burden is
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met, then the burden shifts to the Appellant to overcome the prima facie case with
argument and/or evidence. (See id.)
The scope of the claims in patent applications are not determined solely on
the basis of the claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004).

ANALYSIS
Regarding the rejection of claims 1, 3-5, 7-10, 12, 13, 15-17, 19-21, 23-25,
27, 28, and 30-34
The claim language recites the limitation of: “determining available scanner
parameters by queries made to one of the one or more bar code scanners” (FF 1).
Appellant’s Specification describes a scanner 110 connected to an interface
computer 120 that is accessed by a user to input parameters (FF 2). Appellant’s
Specification describes that the available scanner parameters can be determined by
queries made to one of the scanners or can be stored so that the interface accesses
the stored set of parameters (FF 3). Thus, in light of the Specification, the term
“queries” means “accessing” either through the scanner or through a memory of
the interface computer. See Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364.
Wilz teaches that the parameters of a master bar code symbol reader 2 can
be accessed, or “queried,” by the parameter reading computer system 70 which
then stores them in its memory (FF 4). Thus, we agree with the Examiner (Ans.
13) that Wilz teaches “determining available scanner parameters by queries made
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to one of the one or more bar code scanners” because the computer system 70
accesses the parameters from scanner 2.
Furthermore, Thuries also teaches that a user may display the stored
commands and assigned parameters of computer 16, list parameters assigned to
each of the parameterization commands, alter, and select parameters (FF 5). Thus,
the combination of Wilz and Thuries, teaches accessing the available parameters or
querying the parameters either through the scanner as taught by Wilz or through
the already stored parameters as taught by Thuries (FF 1-5).
Accordingly, we do not agree with Appellant (App. Br. 11) that Wilz teaches
away from the step recited in claim 1 of determining available scanner parameters
by queries made to one of the one or more bar code scanners. We are also not
persuaded by Appellant’s argument (App. Br. 10) that Wilz’s function parameters
are not the same as “available scanner parameters” because Appellant has not
articulated as to why these parameters are not the same.
For the foregoing reasons, we sustain the rejection of claim 1 and claims 3-5,
7-10, 12, 13, 15-17, 19-21, 23-25, 27, 28, and 30-34, which fall with claim 1.

Regarding the rejection of claims 2, 14, and 26
Claims 2, 14, and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Thuries in view of Wilz and further in view of Wang.
Regarding the obviousness rejections of claims 2, 14, and 26 over Thuries in
view of Wilz and further in view of Wang, we find that Appellant has not
persuasively rebutted the Examiner's prima facie case of obviousness for these
claims, but merely repeated the same arguments supra (App. Br. 16-17).
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Once the Examiner has satisfied the burden of presenting a prima facie case
of obviousness, the burden then shifts to Appellant to present evidence and/or
arguments that persuasively rebut the Examiner’s prima facie case. See Oetiker,
977 F.2d at 1445. Since Appellant did not particularly point out errors in the
Examiner’s reasoning to persuasively rebut the Examiner’s prima facie case of
obviousness, the rejections are therefore sustained.

CONCLUSION
Under 35 U.S.C. § 103, Appellant has not shown that the Examiner erred in
finding that the Thuries and Wilz combination teaches the limitation of
“determining available scanner parameters by queries made to one of the one or
more bar code scanners.”
ORDER
The decision of the Examiner to reject claims 1-5, 7-10, 12-17, 19-21,
23-28, and 30-34 is affirmed.
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).

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AFFIRMED

ELD

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