Ex Parte Langley et al

Patent Trial and Appeal Board

Sep 12, 2016

13083821 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/083,821 04/11/2011
22446 7590 09/13/2016
ICE MILLER LLP
ONE AMERICAN SQUARE, SUITE 2900
INDIANAPOLIS, IN 46282-0200
FIRST NAMED INVENTOR
Blake Martin Langley
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.
P02238US01 8986
EXAMINER
ST CYR, DANIEL
ART UNIT PAPER NUMBER
2876
MAILDATE DELIVERY MODE
09/13/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte BLAKE MARTIN LANGLEY and
WENDELL WAYNE BAGLEY
Appeal2014-005383
Application 13/083,821
Technology Center 2800
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
ROMULO H. DELMENDO, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an encoded identification device and a method
for using it to protect a child. Claims 1 and 9 are illustrative:
1. An encoded identification device, comprising:
a substrate having a surface; and
visual coded information disposed upon said surface;
wherein said visual coded information encodes a
communication address and a unique serial number distinct
from said communication address.
Appeal2014-005383
Application 13/083,821
9. A method for protecting a child who may become lost,
comprising the steps of:
(a) providing an encoded identification device,
compnsmg:
a substrate having a surface; and
visual coded information disposed upon said surface;
wherein said visual coded information encodes a
communication address and a unique serial number;
(b) entering said unique serial number into a database;
and
( c) entering contact information of said child's parent into
said database, said contact information being linked to said
unique serial number in said database.
Bushman
The Reference
US 8,254, 785 B 1
The Rejections
Aug. 28, 2012
The claims stand rejected over Bushman as follows: claims 1, 2, 5-7,
18, 19, and 22-24 under 35 U.S.C. § 102(e) and claims 3, 4, 8-17, 20, 21,
and 25 under 35 U.S.C. § 103.
OPINION
We reverse the rejections and enter a new ground of rejection.
Regarding the reversed rejections we need address only the independent
claims, i.e., claims 1, 9, and 18.
Rejection under 35 U.S. C. § 102(e) (claims 1 and 18)
An examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear,
either expressly or inherently, in a single reference. See In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990); Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989); In re King, 801 F.2d
1324, 1327 (Fed. Cir. 1986).
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Appeal2014-005383
Application 13/083,821
The Appellants' claims 1 and 18 require that visual coded information
encodes a (claim 1) or at least a (claim 18) communication address and a
unique serial number distinct from the communication address.
Bushman discloses a wearable item comprising an image which
encodes a voice message and communication data and can be received
optically by a wireless communication device which, after receipt and
processing of the image, transmits the voice message based on the
communication data (col. 1, 11. 25-32, 56-67). The communication data
"could be a telephone number, email address, uniform resource locator,
Internet address or some other communication code" (col. 2, 11. 1-3 ). The
wireless communication device might call a telephone number specified by
the communication data and then play a voice message over the call
connection or might transfer a voice file containing a voice message to an
Internet address or uniform resource locator specified by the communication
data (col. 2, 11. 61-67).
The Examiner relies upon Bushman's telephone number
communication data (col. 2, 1. 1) as corresponding to the Appellants' unique
serial number (Ans. 4). The Examiner, however, does not establish that
Bushman discloses encoding both the telephone number and a
communication address which is distinct from the telephone number. The
Examiner lists Bushman's communication data types (Ans. 2) but fails to
state that the communication data types are disclosed in the alternative
(col. 2, 11. 1-3). The Examiner does not establish that Bushman discloses
using them in combination. The Examiner also cites to Bushman's
column 4, line 21, et seq. (Ans. 2; Final Act. 2) but does not show that the
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Application 13/083,821
disclosure describes visually coded information encoding a communication
address and a unique serial number, as required by claim 1.
Thus, the Examiner has not established a prima facie case of
anticipation by Bushman of the devices claimed in the Appellants'
independent claims 1 and 18 and their dependent claims.
Rejection under 35 U.S.C. § 103 (claim 9)
Claim 9 requires that "visual coded information encodes a
communication address and a unique serial number" and further requires
entering into a database the unique serial number and, linked thereto, a
child's parent's contact information.
The Examiner asserts that "[ w] ith respect to the specific use
[protecting a child], it has been held that a recitation with respect to the
manner in which a claimed apparatus is intended to be employed does not
differentiate the claimed apparatus from the prior art apparatus satisfying the
claimed structural limitations" (Ans. 3).
That assertion is not well taken because the Appellants' claim 9
claims a method, not an apparatus.
The Examiner asserts that Bushman fails to disclose "additional
communication information (i.e. website address), and the specific method
of use. However, these limitations are well within the imagination of an
ordinary artisan within the art" (Ans. 3).
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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Appeal2014-005383
Application 13/083,821
The Examiner does not establish that Bushman would have provided
one of ordinary skill in the art with an apparent reason to encode a
communication address and a unique serial number or to enter into a
database the unique serial number and a child's parent's contact information
linked thereto. The Examiner's mere assertion that doing so is well within
the imagination of an ordinary artisan (Ans. 3) does not meet that burden.
The Examiner, therefore, has not established a prima facie case of
obviousness of the method claimed in the Appellants' claim 9 or its
dependent claims.
New ground of rejection
Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by
Boswell. 1
Boswell discloses an encoded identification device comprising a
substrate (driver's license or identification card substrate) and visual coded
information on the substrate's surface (2-D bar code including the
cardholder' s information printed on the face of the card), wherein the visual
coded information encodes a communication address (street address) and a
unique serial number (driver's license or identification card number) distinct
from the communication address. Consequently, Boswell anticipates the
device claimed in the Appellants' claim 1. 2
1 Donald L. Boswell, Letter to DMV Stakeholder (Commonwealth of
Virginia Department of Motor Vehicles, May 20, 2009). The Boswell
reference has been added to the official record.
2 We leave it to the Examiner to address the other claims. The Examiner and
the Appellants should consider whether, in view of Bilski v. Kappas, 561
U.S. 593 (2010) and Alice Corp. v. CLS Bank International, 134 S. Ct. 2347
(2014), claim 9 claims patentable subject matter under 35 U.S.C. § 101.
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Appeal2014-005383
Application 13/083,821
DECISION/ORDER
The rejections over Bushman of claims 1, 2, 5-7, 18, 19, and 22-24
under 35 U.S.C. § 102(e) and claims 3, 4, 8-17, 20, 21, and 25 under
35 U.S.C. § 103 are reversed. A new ground of rejection of claim 1 has
been entered.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that the 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 prosecution
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
It is ordered that the Examiner's decision is reversed.
REVERSED
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