Ex Parte Kaufman et alDownload PDFPatent Trial and Appeal BoardFeb 26, 201611429467 (P.T.A.B. Feb. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 111429,467 97928 7590 Zebra/ Alston & Bird 101 S. Tryon Street Suite 4000 FILING DATE 0510512006 03/01/2016 Charlotte, NC 28280-4000 FIRST NAMED INVENTOR Jeffrey R. Kaufman 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 054054/310985 1975 EXAMINER LETT, THOMAS J ART UNIT PAPER NUMBER 2677 NOTIFICATION DATE DELIVERY MODE 03/01/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): jonathan.thomas@alston.com IP _Legal@zebra.com USPTOmail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFFREY R. KAUFMAN, VICTOR SALMONS, STEVEN P. KING, BRUCE N. ALLESHOUSE, and BRET M. ANNO Appeal2014-002786 1 Application 11/429,467 Technology Center 2600 Before JEAN R. HOMERE, DANIEL J. GALLIGAN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 36-42 and 44--49. App. Br. 20-24. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. Appellants' Invention Appellants invented a bar code printer for printing labels, and tags. Spec. 1: 8-10, Fig. 1. In particular, the printer ( 10) utilizes a microprocessor (110) to convert a bitmap data stream in a first format into a bitmap data 1 Appellants identify the real party in interest as ZIH Corp., a wholly owned subsidiary of Zebra Techs. Corp. App. Br. 2. Claims 1-35 and 43 have been canceled. See Amendment filed April 4, 2012. Appeal2014-002786 Application 11/429,467 stream in a second format to thereby transmit a graphical representation thereof to a handheld device (160, 150, 170) for subsequent display. Spec. 7:18-27, Figs. 2 and 3. Illustrative Claims Independent claims 36-38 are illustrative, and read as follows: 36. A printer comprising: a port configured to receive a data stream according to a first format, the data stream comprising a set of commands representing a bitmap; and at least one processor configured to convert the data stream from the first format to a second format and to generate the bitmap based on the data stream being in the second format, wherein the at least one processor is further configured to transmit a graphical representation of the bitmap generated based on the data stream being in the second format to a remote location, and wherein the graphical representation is formatted by the at least one processor for subsequent display on a handheld device. 37. A system comprising: a first printer and a second printer, the first printer compnsmg: a port configured to receive a data stream according to a first format, the data stream comprising a set of commands representing a bitmap; 2 Appeal2014-002786 Application 11/429,467 at least one processor configured to convert the data stream from the first format to a second format and to generate the bitmap based on the data stream being in the second format; and a memory element storing a program accessible by the at least one processor and storing the bitmap generated based on the data stream being in the second format; wherein the at least one processor is further configured to modify the bitmap according to one or more instructions transmitted by the second printer. 38. A printer comprising: a port configured to receive a data stream according to a first format, the data stream comprising a set of commands representing a bitmap; and at least one processor configured to convert the data stream from the first format to a second format and to generate the bitmap based on the data stream being in the second format; wherein the data stream according to the first format includes variable data and the at least one processor is further configured to: identify the variable data of the data stream in the first format; correlate the variable data with one or more fields of variable data according to the second format; and transmit the bitmap as a webpage. 3 Appeal2014-002786 Application 11/429,467 Sang Vennekens Love Heiney Savitzky Prior Art Relied Upon us 5,317,646 us 5,652,711 us 5,905,852 us 5,983,243 us 6,012,083 Rejections on Appeal May 31, 1994 July 29, 1997 May 18, 1999 Nov. 9, 1999 Jan. 4, 2000 Appellants request review of the following Examiner's rejections: Claims 36 and 37 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Love. Claims 39 and 40 stand rejected under 35 U.S.C. § 103(a) over the combination of Love and Savitzky. Claims 38, 42, 44, 45, 48, and 49 stand rejected under 35 U.S.C. § 103(a) over the combination of Love, Savitzky, and Heiney. Claim 41 stands rejected under 35 U.S.C. § 103(a) over the combination of Love and V ennekens. Claim 46 stands rejected under 35 U.S.C. § 103(a) over the combination of Love, Savitzky, Heiney, and Sang. Claim 47 stands rejected under 35 U.S.C. § 103(a) over the combination of Love, Savitzky, Heiney, and Vennekens. ANALYSIS We consider Appellants' arguments seriatim, as they are presented in the Appeal Brief, pages 4--9, and the Reply Brief, pages 1-2.2 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed June 19, 2013), the Reply Brief (filed 4 Appeal2014-002786 Application 11/429,467 Anticipation Rejection Appellants argue Love does not describe a processor configured to transmit a graphical representation of a generated bitmap, wherein the graphical representation is formatted by the processor for subsequent display on a handheld device, as recited in claim 36. App. Br. 9-12, Reply Br. 1-3. According to Appellants, the recitation "for subsequent display on a handheld device" cannot be ignored as mere intended use because it refers to data formatted by a processor such that the data is displayable on a handheld device. Id. In response, the Examiner finds because "the image output by Love et al. to some arbitrary remote device is inherently capable of being displayed on another type of device such as a handheld device," Love describes the disputed limitations. Ans. 21 (emphasis added). We do not agree with the Examiner. At the outset, we note the Examiner does not dispute that the claim requires a processor configured to format bitmap data into a graphical representation that "is formatted ... for subsequent display on a handheld device." Although the Examiner correctly concludes that the disputed claim language does not preclude the possibility of additional processing of by a subsequent handheld device (Ans. 21), the Examiner has not shown, nor were we able to discern any teaching in Love of a processor configured for December 20, 2013), and the Answer (mailed October 21, 2013) for their respective details. We have considered in this Decision only those arguments Appellants actually raised in the Briefs. Any other arguments Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2013). 5 Appeal2014-002786 Application 11/429,467 formatting bitmap data into a graphical representation that is formatted "for subsequent display on a handheld device," as recited in claim 1. Love discloses a distributed print processing wherein a primary printing mechanism (e.g., laser printer (14)) utilizes a resident controller (24) to convert an input data stream into bitmap data of a first format for use by a resident print engine (26). Love 5:9-13. If necessary, the controller (24) subsequently converts the bitmap data into alternate print data that matches the printing parameters of an alternate printing mechanism (e.g. inkjet printer (16)). Love 8:38--46; 7:35-38. Thus, although Love discloses that the controller is capable of generating alternate print data for use by the alternate print mechanism, Love does not describe that the controller is also capable of formatting the alternative print data into a graphical representation thereof that is in a format for display on a handheld device. "Inherency ... may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." Cont'! Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)); see also Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) ("Inherent anticipation requires that the missing descriptive material is 'necessarily present,' not merely probably or possibly present, in the prior art." (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999))). The disclosure of Love is not simply not concerned with a processor being capable to format data for the purpose of transmitting the formatted 6 Appeal2014-002786 Application 11/429,467 data to a handheld device for subsequent display therein. Because Appellants have shown at least one reversible error in the Examiner's rejection, we need not reach Appellants' remaining arguments. Accordingly, Appellants have shown the Examiner erred in finding Love anticipates claim 36. Regarding the rejection of claim 37, Appellants argue that even if Love discloses converting a data stream into a bitmap, which is then modified into an alternative print data, Love does not describe the initial conversion of the data stream from a first format into a second format. App. Br. 13-15, Reply Br. 3--4. We agree with Appellants. The Examiner has not shown, nor were we able to discern any disclosure in Love that discloses the initial conversion as required by the claim. Instead, the Examiner merely refers to the conversion disclosed above (into alternate print data) without making a showing of the initial conversion, as required by the claim. Ans. 22. Accordingly, we will not sustain this rejection of claim 37. Obviousness Rejections Regarding the rejection of claim 38, Appellants argue the combination of Love, Heiney, and Savitzky does not teach "correlating the variable data with one or more fields of variable data according to the second format." App. Br. 18, Reply Br. 5. According to Appellants, Heiney's disclosure of merging variable data with fixed data does not teach or suggest correlating variable data of a data stream in a first format with variable data according to the second format. Id. (citing Heiney, Fig. 3). This argument is persuasive. As correctly argued by Appellants, Heiney's disclosure of 7 Appeal2014-002786 Application 11/429,467 merging variable data pages in a first format with fixed data pages in a second format does not teach or suggest the disputed limitations, and would not thereby cure the admitted deficiencies of Love. Because Appellants have shown at least one reversible error in the Examiner's rejection, we need not reach Appellants' remaining arguments. Accordingly, Appellants have shown the Examiner erred in finding that combination of Love, Heiney, and Savitzky renders claim 38 unpatentable. Because claims 39--42, and 44--49 also recite commensurate limitations to those of claims 37 and 38 discussed above, we similarly find error in the rejection of those claims. DECISION We reverse the Examiner's rejection of claims 36--42 and 44--49, as set forth above. REVERSED 8 Copy with citationCopy as parenthetical citation