Ex Parte Kaufman et al

Patent Trial and Appeal Board

Feb 26, 2016

11429467 (P.T.A.B. Feb. 26, 2016)

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;
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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.
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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
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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).
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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
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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
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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
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