Ex Parte Hung

Board of Patent Appeals and Interferences

Mar 23, 2007

09625442 (B.P.A.I. Mar. 23, 2007)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK SIU-YING HUNG
____________

Appeal 2006-3325
Application 09/625,442
Technology Center 3600
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Decided: March 23, 2007
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Before ANITA PELLMAN GROSS, STUART S. LEVY, and ROBERT E.
NAPPI, Administrative Patent Judges.

GROSS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Hung (Appellant) appeals under 35 U.S.C. § 134 from the Examiner's
final rejection of claims 2 through 9, 11 through 13, and 24, which are all of
the claims pending in this application.
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Application 09/625,442

Appellant's invention relates to a configurable portable electronic
communication device for receiving coupon information. Claim 8 is
illustrative of the claimed invention, and it reads as follows:
8. A configurable portable electronic communication device
comprising:

a receiver configured to receive an electronic wireless transmission
containing coupon information;

a processor electronically coupled to the receiver;

an electronic display coupled to the processor;

a memory containing a computer-readable program for generating a
scannable coupon on the electronic display of the configurable portable
electronic communication device from the coupon information and including
instructions for converting the scannable coupon from a first scannable
barcode format to a second scannable barcode format.

The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Gutman 5,221,838 June 22, 1993
Mankovitz 5,523,794 June 04, 1996

Claims 2 through 9, 11 through 13, and 24 stand rejected under
35 U.S.C. § 103 as being unpatentable over Mankovitz.
Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Mankovitz in view of Gutman.
We refer to the Examiner's Answer (mailed April 20, 2006) and to
Appellant's Brief (filed January 30, 2006) and Reply Brief (filed June 19,
2006) for the respective arguments.

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SUMMARY OF DECISION
As a consequence of our review, we will reverse the obviousness
rejection of claims 2 through 9, 11 through 13, and 24 over Mankovitz and
affirm the obviousness rejection of claim 8 over Mankovitz and Gutman.
We also enter a new ground of rejection of claims 5 through 7 under
35 U.S.C. § 103 as being unpatentable over Mankovitz in view of Gutman.

OPINION
Appellant contends (Br. 9-10) that Mankovitz's IR detector is not a
receiver configured to receive an electronic wireless transmission, as recited
in independent claim 8, because IR signals are not considered to be wireless
electronic transmissions. Further, Appellant contends (Br. 10-11) that
substituting an electronic wireless receiver for the IR detector of Mankovitz
would not have been obvious since it "would change the operating principle
of the electronic coupon of Mankovitz and require substantial redesign to
both the electronic coupon and to the controller." Appellant also contends
(Br. 11-12) that Mankovitz fails to suggest instructions for converting the
scannable coupon from a first barcode format to a second barcode format.
Appellant contends that Mankovitz would not need a second barcode format
because the electronic coupons are for local dealers.
The Examiner asserts (Answer 8) that both RF and IR are in the
electromagnetic spectrum and are, therefore, electronic transmissions.
Therefore, the Examiner concludes that Mankovitz's IR detector satisfies the
claimed electronic wireless receiver. Additionally, the Examiner (Answer 4)
asserts that Mankovitz teaches that the portable device includes
programming to convert a single coupon into several formats such as
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Application 09/625,442

alphanumeric and barcode. The Examiner continues that it would have been
obvious to have provided the ability to convert the coupon data between
different barcode formats "so that different . . . POS scanners requiring
various barcode formats can process the coupons, for added flexibility and
universality."
Looking at the barcode issue first, we find Mankovitz discloses
(Mankovitz, col. 5, ll. 46-47) that the coupon information is to be displayed
"in one of several formats" (emphasis ours). Mankovitz gives as one
example of such formats an alphanumeric display. Mankovitz discloses
(Mankovitz, col. 5, ll. 49-53) that a "UPC bar code format is alternatively
presented on the display through predetermined key strokes… for use with
redemption systems employing a laser scanner or similar system." The use
of the word "several" suggests that Mankovitz means to include more than
the two enumerated formats. Further, the use of predetermined key strokes
to switch to the UPC format suggests that the device is programmed to
convert between one format and another when different key strokes are used.
However, the disclosure of further formats ends there. Thus, Mankovitz
falls short of teaching or disclosing programming to convert one barcode
format to another. Since Mankovitz fails to teach or suggest the conversion
between two barcode formats of claim 8, we need not reach the issue of
whether an IR detector satisfies the claim limitation of a wireless electronic
receiver. Thus, we cannot sustain the rejection of claim 8 and its
dependents, claims 2 through 7, 9 through 12, and 24, over Mankovitz.
Regarding claim 13, Appellant contends (Br. 23-25) that Mankovitz
fails to disclose an electronic wireless receiver. Further, Appellant contends
(Br. 25) that Mankovitz fails to disclose the claimed dimension and
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interpixel spacing of the display. The Examiner (Answer 3) relies on
Mankovitz's IR detector for the receiver and (Answer 5) takes Official
Notice that "the visual quality of a barcode is related to the success in
registering an error-free scan" to support the obviousness of the claimed
dimension and interpixel spacing of the display.
As to the receiver, claim 13 recites "a receiver configured to receive a
wireless transmission containing coupon information." Claim 13 does not
specify that the wireless transmission must be electronic. An infrared
transmission is clearly a wireless transmission. However, regarding the
specifics of the display, the Examiner has failed to provide any evidence that
would support the Examiner's conclusion that the particular dimension and
interpixel spacing of the display would have been obvious. Accordingly, we
cannot sustain the obviousness rejection of claim 13 over Mankovitz.
The Examiner (Answer 7) presents an additional rejection of claim 8
over Mankovitz in view of Gutman. The Examiner relies on Gutman for a
suggestion to program conversion between different coupon formats.
Appellant contends (Br. 29) that Gutman fails to teach converting a
displayed barcode from one format to another, and therefore fails to cure the
deficiency of Mankovitz discussed supra. Appellant does not reiterate the
contention that Mankovitz's IR detector does not satisfy the claimed wireless
electronic receiver, but we will address that issue for completeness.
First as to the conversion between two barcode formats, as explained
supra, Mankovitz suggests displaying the coupon information in several
formats, one at a time, including an alphanumeric format and a UPC barcode
format. A given format is displayed by pressing predetermined keys. Thus,
conversion between formats is suggested. However, Mankovitz fails to
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disclose that the additional formats are other barcode formats. Gutman
discloses (col. 5, ll. 13-24) that the UPC barcode is a subset of the EAN or
WPC code, which is used internationally for identifying retail food items
and other general merchandise. Gutman also discloses other barcode
formats as equivalents for the UPC barcode. Thus, it would have been
obvious to the skilled artisan to include as the other of the several formats
the EAN or WPC code to use the electronic coupon internationally,1 or one
of the other equivalent standard formats listed by Gutman.
As to the electronic wireless receiver, Gutman discloses (col. 4, ll. 44-
51) that a wireless message may be communicated via a communication
system (i.e., other than an electronic signal through a physical coupling
means) such as through radio frequency (RF) communication, microwave
communication (e.g., satellite), optical communication (e.g., infrared (IR))
or ultrasonic communication. Thus, Gutman suggests the equivalence of RF
and IR signals for wireless messages. Further, Mankovitz (col. 9, ll. 22-24)
recognizes a drawback of IR is that the portable data coupon must be close
to the controller. Similarly, Appellant admits (Br. 10) and presents evidence
that IR technologies are known to be better suited for short-range
communication channels and that electronic wireless transmissions can
travel over greater distances and do not have to be aligned with the
transmitter. Thus, in view of the known benefits of electronic wireless
receivers over IR receivers, the disadvantage of IR recognized by

1 We disagree with Appellant (Br. 12) that Mankovitz teaches away from the
modification because Mankovitz's is coupon is intended for local dealers.
Mankovitz states (Mankovitz, col. 5, ll. 29-35) that local dealer information
is one type of information that may be transmitted, but does not limit the
coupon to local dealers only.
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Mankovitz, and the equivalence of IR and electronic wireless receivers
suggested by Gutman, it would have been obvious to substitute an electronic
wireless receiver for the IR receiver of Mankovitz, wherein the necessary
modifications for the substitution would have been readily apparent to the
skilled artisan. Accordingly, we will sustain the obviousness rejection of
claim 8 over Mankovitz in view of Gutman.
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection against Appellant's claims 5 through 7 under
35 U.S.C. § 103 over Mankovitz in view of Gutman.
Claims 5 through 7 depend from claim 8, for which we have sustained
a rejection under 35 U.S.C. § 103 over Mankovitz in view of Gutman, supra.
Claims 5 and 6 further recite that the memory contains a data file storing
coupon information and including subfiles including coupon data fields
related to redemption. Mankovitz discloses (Mankovitz, col. 5, ll. 26-41)
that coupon information including value of the discount and expiration date
of the coupon is sent to the portable electronic coupon and stored in the
memory. Accordingly, claims 5 and 6 would have been obvious over
Mankovitz in view of Gutman.
Claim 7 recites that the coupon information is encrypted and the
computer-readable program contains instructions executable by the program
to decrypt the coupon information. Mankovitz discloses (Mankovitz, col. 5,
ll. 36-41) that "[t]he data present in the VBI is further encrypted to avoid use
by systems other than authorized portable data coupons. The encoded data
stripped from the VBI is retransmitted to the portable data coupon where it is
stored in temporary memory as previously described." Thus, the coupon
data is encrypted before being sent to the memory in the electronic coupon.
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Although not explicitly stated, for the information to be used, it must then be
decrypted by the microprocessor in the electronic coupon. Therefore, claim
7 would have been obvious over Mankovitz in view of Gutman.

ORDER
The decision of the Examiner rejecting claims 2 through 9, 11 through
13, and 24 under 35 U.S.C. § 103 over Mankovitz is reversed. The decision
of the Examiner rejecting claim 8 under 35 U.S.C. § 103 over Mankovitz in
view of Gutman is affirmed. Claims 5 through 7 are newly rejected under
35 U.S.C. § 103 over Mankovitz in view of Gutman.
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004). 37 CFR § 41.50(b) provides "[a]
new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review."
37 CFR § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a). See 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

vsh

SCOTT W HEWETT
400 WEST THIRD STREET
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