Ex Parte Lapstun et al

Patent Trial and Appeal Board

Feb 22, 2016

11124179 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111124, 179 0510912005
24011 7590 02/24/2016
SIL VERBROOK RESEARCH PTY LTD
393 DARLING STREET
BALMAIN, 2041
AUSTRALIA
FIRST NAMED INVENTOR
Paul Lapstun
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.
MCD057US 9582
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
02/24/2016 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):
pair@ sil verbrookresearch. com
patentdept@silverbrookresearch.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL LAPS TUN and KIA SIL VERBROOK
Appeal2013-008692 1
Application 11/124, 1792
Technology Center 3600
Before HUBERT C. LORIN, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1, 4, 5, and 8. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
July 3, 2011), the Examiner's Answer ("Ans.," mailed Oct. 10, 2012), the
Final Action ("Final Act.," mailed Jan. 11, 2011), and the Specification
("Spec.," filed May 9, 2005).
2 According to the Appellants, the real party in interest is "SIL VERBROOK
RESEARCH PTY LTD." Appeal Br. 3.
3 Although the Appellants list claim 9 as being appealed (Appeal Br. 5), the
Appellants state that only the grounds of rejection for claims 1, 4, 5, and 8
are for review (id. at 8), and present no arguments for claim 9. Thus, we
consider only claims 1, 4, 5, and 8 on appeal.
Appeal2013-008692
Application 11/124, 179
STATEMENT OF THE CASE
The Appellants' invention is directed to "a method of producing a
printed business card using a mobile telecommunications device." Spec.
p. 5' 11. 18-19.
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method comprising the steps of:
determining by a processor of a mobile telephone content
of a business card to be printed;
receiving in a media feed path of a printer of the mobile
telephone a print medium, the print medium having pre-printed
coded data tags on a surface thereof and a pre-printed linear data
track extending in a direction of intended printing, each coded
data tag and the linear data track uniquely identifying an identity
of the surface;
sensing by a first sensor in the media feed path of the
printer the linear data track;
determining by the processor a relationship between the
coded data tags and dot data representing the content using the
identity of the surface;
providing by the processor the dot data to the printer of the
mobile telephone m accordance with the determined
relationship;
printing the dot data onto the print medium by the printer;
sensing by a second sensor on an external surface of the
mobile telephone at least one coded data tag; and
retrieving data from a storage device using the identity of
the surface and the determined relationship.
Claims App.
2
Appeal2013-008692
Application 11/124, 179
THE REJECTION
Claims 1, 4, 5, and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fujita (US 6,947,157 Bl, iss. Sept.20, 2005), Goldman
(US 4,546,352, iss. Oct. 8, 1985), and Kamata (US 6,249,652 Bl, iss.
Jun. 19, 2001).
FINDINGS OF FACT
We determine that the findings of fact in the Analysis section below
are supported at least by a preponderance of the evidence. 4
ANALYSIS
The Appellants argue claims 1, 4, 5, and 8 as a group. See Appeal
Br. 9. We select claim 1 as representative. Claims 4, 5, and 8 stand or fall
with claim 1. 37 C.F.R. 41.37 (c) (iv) (2014).
The Appellants contend, in pertinent part, that the Examiner's
rejection is in error because the references do not teach that "a relationship,
which is determined using the unique identity of the surface, is used to both
provide the dot data printed by the printer and retrieve data after sensing a
tag on the surface after printing," as claimed. Appeal Br. 11-12.
Specifically, the Appellants argue "the dot data provided to the printer of
Fujita is independent of the identity of the surface to be printed upon, and
has no determined relationship with any pre-printed tags on the surface," (id.
at 10), that Goldman also does not that teach "that aspect of the claimed
4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
3
Appeal2013-008692
Application 11/124, 179
invention," (id. at 11 ), and "the data [of Kamata] is not retrieved using the
identity of the surface and the same determined relationship used when
printing the dot data on that surface" (id.).
After careful review of the Examiner's findings and reasoning (see
Ans. 12-13), we find the Examiner does not adequately show by a
preponderance of the evidence how the combination of Fujita, Goldman, and
Kamata discloses determining a relationship, providing data in accordance
with the relationship, and retrieving data using the relationship. Although
the Examiner finds Goldman discloses "determining by the processor a
relationship between the coded data and dot data representing the content
using the identity of the surface" as recited (see Final Act. 3--4), the
Examiner does not explain, and one of ordinary skill in the art would not
understand, how Goldman determines a relationship or what that
relationship is. Similarly, the Examiner finds Fujita discloses providing dot
data to the printer in accordance with the determined relationship (see id. at
3), but does not explain, and one of ordinary skill in the art would not
understand, how the disclosing of data is in accordance with any type of
relationship between the coded data and dot data, as required by the claim.
Likewise, the Examiner finds Kamata discloses "retrieving data from a
storage device using the identity of the surface and the determined
relationship," as recited (see id. at 4), but does not explain, and one of
ordinary skill in the art would not understand, how the data are retrieved
using the determining relationship.
Thus, we do not sustain the Examiner's rejection of claim 1. We also
do not sustain the Examiner's rejection of claims 2, 5, and 8 as they stand
with claim 1.
4
Appeal2013-008692
Application 11/124, 179
DECISION
The Examiner's decision rejecting claims 1, 4, 5, and 8 as
unpatentable under 35 U.S.C. § 103(a) is REVERSED.
REVERSED
5