11587346 (B.P.A.I. Oct. 11, 2011)

Ex Parte Kai

Board of Patent Appeals and InterferencesOct 11, 2011

11587346 (B.P.A.I. Oct. 11, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/587,346 10/24/2006 Akinori Kai 068022-5074 2076 9629 7590 10/11/2011 MORGAN LEWIS & BOCKIUS LLP (WA) 1111 PENNSYLVANIA AVENUE NW WASHINGTON, DC 20004 EXAMINER BORIN, MICHAEL L ART UNIT PAPER NUMBER 1631 MAIL DATE DELIVERY MODE 10/11/2011 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte AKINORI KAI __________ Appeal 2011-004208 Application 11/587,346 Technology Center 1600 __________ Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and STEPHEN WALSH, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a data processing system. The Patent Examiner rejected the claims on the ground of obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-004208 Application 11/587,346 2 STATEMENT OF THE CASE Claims 1 and 2 are on appeal. (App. Br. 4.) Claim 1 is representative and reads as follows: 1. A data processing system at least comprising: a portable measurement apparatus provided with a display screen; a terminal; and a server, wherein the portable measurement apparatus comprises: a measurement portion for obtaining measurement data; a code transforming portion for transforming the measurement data into a bar code, a two- dimensional code or a composite code; a display portion for displaying the code that is obtained by the transformation on the display screen; and a memory portion for storing the measurement data, and the code transforming portion transforms the plural sets of the measurement data, which are stored in the memory portion, into a bar code, a two-dimensional code or composite code at once, the terminal comprises; an image pickup portion for picking up an image on the display screen that displays the code; an analysis portion for generating measurement data for transmission by analyzing the code that is picked up; and a transmission portion for transmitting, to the server, the measurement data for transmission, and the server comprises a memory portion for storing the received measurement data for transmission. (Emphasis added to highlight the disputed timing limitation.) The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Kazutoshi,1 Isao,2 Masanao3 or Katsuhisa,4 Yasukawa,5 Heinonen,6 and Greenwold.7 1 Tokunaga Kazutoshi, JP 2002282217 (Oct. 2, 2002). 2 Takahashi Isao et al., JP2002147081 (May 22, 2002). 3 Kawatahara Masanao, JP2002368907 (Dec. 20, 2002). 4 Tsuchiya Katsuhisa et al., JP2002291705 (Oct. 8, 2002). 5 Naoaki Yasukawa et al., US 5,795,301 (Aug. 18, 1998). 6 Pekka Heinonen et al, US 5,772,586 (June 30, 1998). 7 Douglas J. Greenwold et al., US 4,889,134 (Dec. 26, 1989). Appeal 2011-004208 Application 11/587,346 3 OBVIOUSNESS The Issue Appellant contends that the rejection failed to establish a prima facie case of obviousness because it did not show that the prior art taught or suggested all the claim limitations. (App. Br. 8.) Specifically, Appellant contends that “a transforming portion that transforms the plural sets of stored measurement data into a bar code, a two-dimensional code, or composite code at once” is neither taught nor suggested by the prior art. (Id. at 9.) Findings of Fact 1. The rejection states that Kazutoshi did not “explicitly demonstrate presence of . . . a ‘code transforming portion’ that transforms plural sets of measurement data at once.” (Ans. 6.) 2. The rejection states: “[a]ll the claimed elements of the . . . [‘]code transforming portion’ as claimed were known in the prior art.” (Id. at 7.) Principles of Law When determining whether a claim is obvious, an Examiner must make “a searching comparison of the claimed invention – including all its limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), Appeal 2011-004208 Application 11/587,346 4 cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). Analysis Appellant states: [n]owhere does the December 1, 2009 final Office Action address which of the cited references teaches “the code transforming portion transforms the plural sets of the measurement data, which are stored in the memory portion, into a bar code, a two-dimensional code or composite code at once”, as . . . recited in claim 1. (App. Br. 9.) The rejection acknowledged that at least one reference did not teach the disputed feature (FF 1), and the rejection did not identify a reference that did teach the disputed feature. Although the rejection stated that all the claimed elements were known in the prior art (FF 2), the rejection did not provide evidence or an explanation showing how the disputed feature was taught or suggested by a prior art reference. We therefore agree with Appellant that the rejection failed to make a prima facie case of obviousness. SUMMARY We reverse the rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Kazutoshi, Isao, Masanao or Katsuhisa, Yasukawa, Heinonen, and Greenwold. REVERSED lp