Ex Parte Holl et al

Patent Trial and Appeal Board

May 27, 2014

11988035 (P.T.A.B. May. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL
AND APPEAL BOARD

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Ex parte NORBERT HOLL and BERND WUNDERER
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Appeal 2012-005603
Application 11/988,035
Technology Center 2800
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Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
10-15, 17, and 18. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We REVERSE.
Appellants’ invention is said to be directed to an apparatus and a
method for testing of sensors for documents of value (Spec. ¶. 0001). The
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apparatus and method include test media (1) that are defined as “aids for
checking the functional ability, adjusting and/or calibrating which have
defined reference properties measurable by the sensors to be tested” (Spec.
¶¶ 0001, 0003).
Claim 10 is illustrative:
Claim 10. A test medium for at least one of testing,
adjusting and calibrating at least one sensor for sensing
documents of value, the sensor having a test device, wherein the
test medium comprises an electronic data memory storing data
for testing the sensor, and wherein the test medium further
comprises a data interface arranged to transfer data from the
electronic data memory to the test device of the sensor, and
wherein the test medium has a card or a sheet-shaped carrier.
Appellants appeal the following rejection:
Claims 10-15, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Liu (US 6,304,826 B1, issued Oct. 16, 2001) in
view of Baldi (US 6,547,151 B1, issued Apr. 15, 2003).
ISSUE
Would modifying Liu’s scanning document to include Baldi’s
teaching to store information in an integrated circuit on a document so that a
sensing device can read such information have frustrated Liu’s purpose of
having a self-calibrating method for the sensors such that one of ordinary
skill in the art would not have made the modification? We decide this issue
in the affirmative.
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FINDINGS OF FACT AND ANALYSES
We agree with Appellants’ arguments relating to this issue (App. Br.
11-14). Appellants primarily argue that one of ordinary skill in the art
would not have combined the teachings of Liu and Baldi because the
proposed combination would have rendered Liu unsatisfactory for its
intended purpose because the self-calibration system of Liu would no longer
be able to self-calibrate its image sensors (App. Br. 11). We add the
following discussion for emphasis.
Liu teaches a self-calibrating method for image sensors in scanning
devices (Liu col. 1, ll. 8-12). Liu discloses using a dark test sheet and a
white test sheet to acquire data about the photodetectors (Liu col. 8, ll. 6-13).
The data acquired from using the test sheets is sent to an analyzing circuit to
determine the gain and offset for each of the photodetectors (Liu, col. 8, ll.
49-54). The gain and offset values for each photodetector acquired from the
analyzing circuit are then stored in the electrically erasable programmable
read-only memory (EEPROM) (Liu col. 8, ll. 55-61).
Baldi discloses currency notes incorporating an identification and/or
authentication element (Baldi col. 1, ll. 10-11). Baldi discloses that the
integrated circuit stores information that can be read by a suitable
authentication apparatus external to the bank note (Baldi col. 2, ll. 25-28).
Based upon these findings, adding Baldi’s integrated circuit to store
calibration information to Liu’s device would have rendered Liu’s device
unsatisfactory for its intended purpose. Liu discloses a different apparatus
and method for calibrating the photodetectors. Liu uses test sheets to self-
calibrate the photodetectors in the device. The gain or offset for each
specific photodetector is determined and stored on the EEPROM. To
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require Liu’s device to use information contained within and provided by
Baldi’s integrated circuit would frustrate the self-calibration feature. As
described in Liu, self-calibration involves having the photodetectors and
device itself sense problems with the signals and determine the gain or offset
based upon the sensed information. However, the modified device proposed
by the Examiner would have been calibrated based upon information stored
on the integrated circuit, which is not self-calibration. The combination of
Liu and Baldi would have changed the basic principle of operation of Liu.
In re Ratti, 270 F.2d 810, 813 (CCPA 1959).

On this record and for the above reasons, we determine that a person
of ordinary skill in the art would not have combined Liu and Baldi in the
manner proposed by the Examiner. We, therefore, reverse the § 103
rejection.
DECISION
The Examiner’s decision is reversed.
ORDER
REVERSED

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