Ex Parte Lapstun et alDownload PDFPatent Trial and Appeal BoardFeb 22, 201611124179 (P.T.A.B. Feb. 22, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation