Ex Parte House et al

Board of Patent Appeals and Interferences

Sep 15, 2010

10630863 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RONALD D. HOUSE, DAVID A. ECK, ALAN J. NEWTON,
LANNY D. SMITH, STEVEN L. WHISTLER, TRUNG T. NGUYEN,
JAMES C. BIEBER, DONALD B. AYLER, and GORDON W. JIM
____________________

Appeal 2009-007157
Application 10/630,8631
Technology Center 2600

____________________

Before JOHN C. MARTIN, MARC S. HOFF,
and CARLA M. KRIVAK, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Xerox.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or 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 2009-007157
Application 10/630,863

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 5, 6, 8-10, 12, and 15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention relates to a digital image forming device and
method that enables data from sheet media to be digitized using an image
forming device and stores this digital data on a portable digital storage
media or any external electronic media. The digital image forming device
performs this service at cost to a user through a payment interface.
Additionally, the user may purchase paper and blank electronic media (i.e.,
CD-ROMs, DVD-ROMs, and floppy disks) at the digital image forming
device. Furthermore, the digital data may be transferred from any storage
media controlled by a portable digital device, such as a digital camera, a cell
phone, a portable computer, or a PDA. Moreover, the digital data may be
transferred from a remote storage device accessible through an external
network, such as the Internet (Abstract; Spec. [0008] and [0030-32]).
Claim 5 is exemplary:
5. A method of purchasing a portable digital storage media from a digital
image forming device, comprising:
purchase determining whether to purchase blank media, the purchase
determining comprising selecting a portable digital storage media type;
media transfer determining whether to transfer image data between
physical media,
the media transfer determining comprising transferring the image data
from external media to internal media through a memory;
network transfer determining whether to transfer the image data from
a network,
the network transfer determining comprising determining a remote
target and downloading the image data from a network to the internal media
through the memory;
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upload transfer determining whether to upload the image data to a
network,
the upload transfer determining comprising determining a remote
target and uploading the image data from external media to the network;
transferring a computer image file from a network storage;
dispensing the portable digital storage media;
and selecting a remote target and transferring the computer image file
from the network storage to the portable digital storage media before the
step of dispensing the portable digital storage media at the remote target.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Roe US 5,988,431 Nov. 23, 1999
Wasilewski US 2002/0105665 A1 Aug. 8, 2002

Claims 5, 6, 8-10, 12, and 15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wasilewski in view of Roe.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Appeal Brief (filed November 20, 2008), the Reply
Brief (filed January 1, 2009), and the Examiner’s Answer (mailed December
23, 2008) for their respective details.

ISSUE
Appellants contend Wasilewski and Roe fail to disclose all of the
positively recited features since the disclosed method of Wasilewski requires
that a user or customer make “the decisions (determinations) as prompted on
the touch screen user interface” (App. Br. 12). Appellants assert that
modifying Wasilewski to enable a user to purchase blank portable digital
storage media at a kiosk would impermissibly modify the principle operation
of Wasilewski since one would not purchase blank media from an ATM
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(App. Br. 15-16). Appellants argue that distribution of blank, unmarked,
media from a financial institution may cause a breach in security which is a
cause for concern since Wasilewski discloses many different means for
authenticating the transaction process (App. Br. 16). Appellants contend
that the Examiner in his Office Action has “ignored” the “mandate” of
MPEP § 2143 which “is that ‘[t]he key to supporting any rejection under 35
U.S.C. §103 is the clear articulation of the reasons why the claimed
invention would have been obvious’” (App. Br. 17). Finally, Appellants
assert that the Examiner has presented no objective evidence of record to
support a method of integrating photographic imaging and non-imaging
products and services using an automatic teller machine (App. Br. 18).
Appellants’ contentions present us with the following issue:
Would the skilled artisan have been motivated to combine the
references to include distribution of blank disks as disclosed by Roe in the
digital image kiosk disclosed by Wasilewski?
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Invention
1. The digital image forming device or kiosk 100 includes a
digital media section 120 that enables a user to operate the digital image
forming device. Digital media section 120 includes a keyboard 150 and/or
any other appropriate data input device (Spec. ¶ [0031]).
Wasilewski
2. Wasilewski discloses “a combined kiosk for photographic
image producing image goods and/or service kiosks and non-imaging
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products and/or services such as an Automatic Teller Machine (ATM)
kiosk” (¶ [0001]).
3. Wasilewski discloses that when a customer desires to request an
image product and/or service 200, the customer initiates a request on kiosk
100, following the prompts on the touch screen user interface 102. An
image may be retrieved from a remote location through the network
connection 118, imaging camera 101, image scanner 106, or from a file
stored on media such as a CD, memory card/stick, or disk using the
peripheral options available on a computer 112. The customer is enabled to
make image edits or enhancements (step 206) and to select a particular
image product/service (step 208). The customer pays for the transaction
prior to rending the photographic image using a credit card or a multi-card
reader 116 (step 214). In step 218, the kiosk dispenses the requested image
product or service once the payment method has been approved. Kiosk 100
may dispense small or large size image prints. In the alternative, kiosk 100
may dispense images stored on electronic media such as CD, memory
card/stick, and disk using the computer 112 peripherals. (Figs. 3 and 5; ¶¶
[0058] and [0060]).
Roe
4. Roe discloses a vending machine system for vending computer
storage media, wherein a user selects a disk to be purchased from the
vending machine (Abstract; col. 2, ll. 42-61).

PRINCIPLE OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
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words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416.

ANALYSIS
Rejection of claims 5, 6, 8-10, 12, and 15 under 35 U.S.C. § 103(a)
We select claim 5 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 5 recites “purchase determining whether to
purchase blank media.” Independent claims 8 and 12 recite a claim
limitation similar in scope.
We do not consider Appellants’ arguments to be persuasive to show
Examiner error. Specifically, we do not agree with Appellants’ contention
that modifying Wasilewski to enable a user to purchase blank portable
digital storage media at the kiosk would impermissibly modify the principle
of operation of Wasilewski (App. Br. 15-16). Wasilewski’s stated purpose
is to combine a kiosk for photographic image products and services with a
kiosk for non-imaging products and services (FF 2). Thus, adding the
feature of dispensing blank electronic media, as taught by Roe, would not
impermissibly modify the principle operation of Wasilewski.
Concerning Appellants’ contention of lack of motivation to combine
the references, we agree with the Examiner’s conclusion that it would have
been obvious to a person of ordinary skill in the art to modify the teachings
of Wasilewski to incorporate the sale of a blank portable media storage
devices, as taught by Roe, for the purpose of providing the user with the
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option to purchase blank storage media from a kiosk instead of a retailer
(Ans. 6; App. 17-18). Generally, Wasilewski relates to a kiosk that
combines an ATM with a photographic image producing kiosk (FF 2).
Particularly, Wasilewski discloses that kiosk 100 dispenses an image
product or service such as small and large prints, photo IDs or photo images
stored on CD, memory card/stick, and disk using peripheral options
available on a computer (FF 3). Roe discloses a vending machine system
that dispenses computer storage media (FF 4). Since Wasilewski provides
distribution of electronic media having photographic images stored on the
media, improving Wasilewski by adding distribution of blank electronic
media is a predictable use of prior art elements according to established
functions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 417 (2007).
We find that Appellants’ additional argument that Wasilewski is
directed to a kiosk that requires user or customer interaction is not
commensurate with the scope of the claims (App. Br. 13). We agree with
the Examiner that it “is clearly implied in Applicants’ disclosure and in the
claims that in order for the system and method to work, some sort of input
from a user is necessary” (Ans. 11; FF 1).
Therefore, we find that the Examiner has established a prima facie
case of obviousness because the combination of Wasilewski and Roe
discloses a method of purchasing a portable digital storage media from a
digital image forming device that includes the option of purchasing blank
media. As a result, we will sustain the Examiner’s § 103 rejection of
representative claim 5, independent claims 8 and 12, and that of dependent
claims 6, 8-10, and 15.

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CONCLUSION
The skilled artisan would have been motivated to combine the
references to include the distribution of blank disks as disclosed by Roe in
the digital image kiosk disclosed by Wasilewski.

ORDER
The Examiner’s rejection of claims 5, 6, 8-10, 12, and 15 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

OLIFF & BERRIDGE, PLC.
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
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