Ex Parte Moreland et alDownload PDFPatent Trial and Appeal BoardFeb 18, 201511159461 (P.T.A.B. Feb. 18, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD B. MORELAND, RICHARD D. PUCKETT, and MARYANN WEHR ____________ Appeal 2011-002061 Application 11/159,461 Technology Center 2800 ____________ Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and SUSAN L. C. MITCHELL, Administrative Patent Judges. BENOIT, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the rejection of claims 1–11, 13–24, 26, and 28–38, which constitute all the claims pending in the application. Claims 12, 25, and 27 have been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part the Examiner’s rejection of the pending claims. Appeal 2011-002061 Application 11/159,461 2 STATEMENT OF THE CASE Appellants’ invention generally relates to printing information on both sides of a paper receipt in a single pass using opposed print heads. Abstract. Transaction information may be printed on one side of a paper receipt, and different types of information may be printed on the reverse side. Id. Examples of such information include rebate information, contest information, serialized cartoons, conditions of sale, promotional information, and coupon information. Id.; see, e.g., claims 5, 7, 9, and 13–16. The information printed on the reverse side may be based on transaction data or may be transaction data different from the transaction data printed on the other side of the receipt. Abstract, see, e.g., claims 1, 24, and 26. Claims 1, 31, and 36 are illustrative and read as follows, with key limitations emphasized. 1. A method of issuing a receipt which comprises printing on both sides of receipt media in a single pass, using opposed print heads, when the receipt is issued, wherein transaction data is printed on one side of the receipt and customized information based on the transaction data is printed on the other side of the receipt. 31. A method of issuing a ticket, which serves as a receipt, comprising: (1) enabling consummation of a ticket transaction with a customer; (2) enabling thermal printing on both sides of ticket media at the time of the transaction, thereby creating a ticket where ticket transaction data is printed on both sides of the ticket; and (3) enabling issuance of the ticket to the customer. 36. A transaction receipt comprising a substrate sheet material with thermally sensitive color changing coatings on both sides and transaction data thermally printed on Appeal 2011-002061 Application 11/159,461 3 one side and supplemental information thermally printed on the other side. The Rejection The Examiner rejected claims 1–11, 13–24, 26, and 28–38 under 35 U.S.C. § 102(e)1 as anticipated by Vives (U.S. Patent No. 6,663,304 B2). Ans. 3–6. ANALYSIS Claims 1–11 and 13–23 On the record before us, we are not persuaded of error in the Examiner’s finding that Vives discloses every element of independent claim 1. Vives describes technology for simultaneously printing on each side of the same paper. See col. 3, ll. 60–66; see also title (Simultaneously Printing Information on Two Sides of Print Media); Ans. 4 (citing col. 3, ll. 60–66). Vives provides an example in which “tickets for different movies and different shows may have different coupons printed on the backs of the tickets.” Col. 3, ll. 64–67. Appellants contend that the Examiner erred in finding that Vives’ description that tickets for different movies may have different coupons printed on the backs of the tickets does not disclose “customized information based on the transaction data is printed on the other side of the receipt,” as recited in independent claim 1. App. Br. 5; Reply Br. 2. In particular, Appellants contend that Vives does “not state[] that the coupons are printed based on the transaction data” but only discloses that “the same show or 1 Because the instant application was filed on June 23, 2005, and Vives issued on December 16, 2003, the rejection more properly is under 35 U.S.C. § 102(b). We view the Examiner’s erroneous recitation of section 102(e) as harmless. Appeal 2011-002061 Application 11/159,461 4 movie may have different coupons printed[,] and different shows may have the same coupons printed.” Reply Br. 2. First, we note that Appellants’ contention that Vives does not “state[] that the coupons are printed based on the transaction data” is unpersuasive, because although the “elements must be arranged or combined in the same way as in the claim, the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citation and internal quotation marks omitted); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Second, we are not persuaded that printing different coupons on the backs of tickets for different movies does not disclose printing customized information (different coupons) based on the transaction data (different movies), and , therefore, are not persuaded of Examiner error. Nor are we persuaded of Examiner error in finding the movie information printed on the movie tickets represents transaction information because the movie information relates to a business transaction of a movie ticket purchase. Further, neither claim 1 nor Appellants’ Specification defines the recited “customized information based on the transaction data” so as to preclude different coupons printed for different movies. See claim 1; see generally Spec. 3–6. Rather, although Appellants’ Specification provides some examples of custom information, the examples are not set forth with reasonable clarity, deliberateness, and precision to limit the claim. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994); Spec. 3, ¶ 12 (“For example, custom information 90 could include . . . a coupon as shown . . . or other information, e.g., custom information based on . . . transaction data or detail.”); id. at 4, ¶ 14 (“A receipt printed using double-sided thermal paper Appeal 2011-002061 Application 11/159,461 5 with receipt transaction detail printed on one side and a cartoon of a serialized nature printed on the other side could be customized on the fly to include product placement text dependent on the purchases made.”); id. at 6, ¶ 20 (“Supplemental or customized information can be automatically determined and thermally printed based on customer identifications, product information, transaction detail, historical data or the like data as may be captured, recovered or calculated using information technology systems. For example, supplemental or customized information is based on data provided by a computerized database look-up or transaction data entries, e.g., including transaction data scanned or manually entered by a service agent or customer.”). Further, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, claim 1 recites “customized information based on the transaction data is printed on the other side of the receipt,” which is broader than the various examples provided in Appellants’ Specification. Weighing Appellants’ arguments, which do not provide persuasive evidence or support why Vives’ description does not disclose “customized information based on the transaction data is printed on the other side of the receipt,” recited in claim 1, against the Examiner’s findings, we are not persuaded of Examiner error in rejecting claim 1. Thus, we sustain the anticipation rejection of claim 1 and its dependent claims 2–11 and 13–23, not argued separately with particularity. See App. Br. 5; Reply Br. 1–2. Appeal 2011-002061 Application 11/159,461 6 Claim 24 Independent claim 24 recites “enabling printing on both sides of receipt media using opposed print heads in a single pass at the time of the transaction, thereby creating a receipt where transaction data is printed on both sides of the receipt” and “wherein the transaction data printed on one side of the receipt is different from the transaction data printed on the other side of the receipt.” The Examiner finds Vives’ description of technology for simultaneously printing on each side of the same paper discloses the limitations recited in independent claim 24. Ans. 6. Specifically, the Examiner finds that Vives’ description of simultaneously printing a two- sided receipt where “at least some information that is different from information printed” on the other side discloses printing different transaction data on each side. Ans. 7 (citing col. 5, ll. 23, 33, 42–43). Appellants acknowledge that Vives discloses printing different information on each side. App. Br. 5–6; Reply Br. 2. Appellants, however, contend that Vives does not disclose the printed information is transaction data, and so, Vives fails to disclose printing transaction data on one side and different transaction data on the other side, as required by claim 24. In response to Appellants’ argument, the Examiner indicates that the transaction data on one side is a receipt and the transaction data on the other side is a coupon. Ans. 7. Thus, the Examiner relies again on Vives’ description of printing movie tickets simultaneously having coupons printed on the backs of the tickets, as noted with respect to claim 1, as well as a store printing a receipt on one side and a coupon on the other. Ans. 4 (citing col. 3, ll. 60–67); Ans. 7 (citing col. 4, ll. 16–18 (“a store may print a receipt Appeal 2011-002061 Application 11/159,461 7 on one surface of the print medium 242 and coupons on the opposing surface”)). Although Vives does not use the term transaction data, we are not persuaded of Examiner error in finding Vives’ receipts (either movie tickets or store receipts) and coupons are transaction data, as required by claim 24. See Gleave, 560 F.3d at 1334 (noting an ipsissimis verbis test is not required). Notably, Vives’ receipts and coupons are printed simultaneously and both relate to the transaction of the customer—purchasing a ticket for a movie or purchasing an item at a store. Claim 24 does not preclude such a finding. Appellants have not identified any portion of Appellants’ Specification that sets forth a definition of transaction data to preclude such a finding; nor are we aware of any such definition. See Paulsen, 30 F.3d at 1480 (requiring definitions to be set forth with reasonable clarity, deliberateness, and precision to limit the claim). Therefore, we sustain the anticipation rejection of claim 24. Claim 26 Independent claim 26 recites in part “creating a receipt where transaction data is printed on one side of the receipt and promotional information is printed on the other side of the receipt . . . wherein the promotional information is based on transaction data resulting from business with the customer” (emphasis added). The Examiner relies on Vives, citing column 4, lines 16–18 (“a store may print a receipt on one surface of the print medium 242 and coupons on the opposing surface”), as disclosing the identified limitation. Ans. 7–8. Although acknowledging Vives describes a store printing a receipt on one side and a coupon on the other side, Appellants contend that Vives does Appeal 2011-002061 Application 11/159,461 8 not disclose printing promotional information based on transaction data resulting from business with the customer, as required by claim 26. App. Br. 6; Reply Br. 3. Rather, according to Appellants, Vives “never states that any coupon is printed based on the customer’s transaction, only that a coupon is printed.” Reply Br. 3 (emphasis omitted). For reasons similar to those stated with respect to claim 1, we are not persuaded of Examiner error. Rather, we agree with the Examiner that “[t]he coupon provided to the customer is a result of the customer’s purchase” because “the coupon is printed on the receipt of the purchase[] transaction of the customer,” and, thus, the coupon (promotional information) “directly result[s] from conducting business with the customer.” Ans. 8 (emphasis omitted). Moreover, as noted by the Examiner, the “coupon is based on the customer’s transaction, not from someone else’s transaction.” Id. (emphasis omitted). We, therefore, sustain the anticipation rejection of claim 26. Claims 28–30 Independent claim 28 recites, among other limitations, “creating a receipt where transaction data is printed on one side of the receipt and the transaction terms are printed on the other side of the receipt” (emphasis added). The Examiner relies on Vives, citing column 4, lines 16–18 (“a store may print a receipt on one surface of the print medium 242 and coupons on the opposing surface”), as disclosing the identified limitation disputed by Appellants. Appellants assert that the “Examiner has not pointed out, any portion of Vives which teaches printing transaction data on one side of a receipt and the transaction terms on the other side of the receipt.” App. Br. 7 (emphasis Appeal 2011-002061 Application 11/159,461 9 omitted). In response, the Examiner relies on Vives’ description that a receipt may be printed that shows the items and the amount charged and at the same time “a second receipt may be printed . . . that shows the items, amount charged for each item and may include a line for the buyer to sign so that the purchase is charged to a credit card.” Col. 4, ll. 9–16; see Ans. 8 (citing col. 4, ll. 9–11). The Examiner contends that Vives discloses “the same information may be print[ed] on both side[s] of the receipt, wherein the receipt shows the items and the amount charged for each item.” Ans. 8 (citing col. 4, ll. 9–11). The Examiner explains that the amount charged for each item is the transaction term for the total amount charged. Ans. 8. As such, the Examiner maintains that one side of Vives’ receipt has printed transaction data, including the total amount charged, and that the other side of Vives’ receipt has a printed transaction term (the amount charged for each item) for the transaction data of the total amount charged. We agree with the Examiner (Ans. 8) that the amount charged for each item in Vives discloses the recited transaction term for the transaction and that total amount printed discloses the recited transaction data. Appellants contend that their Specification defines “transaction term” in the description “printing on the spot allows the terms and conditions, such as return policies, to be tailored to the item being sold.” Reply Br. 3 (citing Spec. 4, ¶ 15). The Examiner disagrees that the Specification provides a special definition for the recited transaction term. Ans. 8. We agree with the Examiner. The phrase “such as return policies” in Appellants’ Specification does not provide sufficient clarity, deliberateness, and precision to limit the claim term “transaction term.” See Paulsen, 30 F.3d at 1480. Thus, we will not read the particular embodiment of “return policies,” Appeal 2011-002061 Application 11/159,461 10 which appears in the written description, into the broader claim term “transaction term.” See Van Geuns, 988 F.2d at 1184. We, however, do not agree with the Examiner that the relied-upon example in Vives (col. 4, ll. 9–11) discloses printing the amount charged for each item and the total amount charged on two sides of the same receipt. Rather, Vives describes printing at the same time a second receipt that also includes “a line for the buyer to sign so that the purchase is charged to a credit card.” Col. 4, ll. 9–16. This indicates that Vives’ two receipts are printed on separate receipts. As such, Vives’ description of printing two receipts at the same time does not disclose “creating a receipt where transaction data is printed on one side of the receipt and the transaction terms are printed on the other side of the receipt,” recited in claim 28. Therefore, we do not sustain the anticipation rejection of claim 28 and its dependent claims 29 and 30. Claims 31–35 Independent claim 31 recites in part “enabling thermal printing on both sides of ticket media at the time of the transaction, thereby creating a ticket where ticket transaction data is printed on both sides of the ticket” (emphasis added). The Examiner relies on Vives, citing column 2, lines 44– 45 (“A printing unit, for example, may be implemented using inkjet technology with thermal or piezo-electric printheads.”), as disclosing thermal printing. Appellants assert that “a person of ordinary skill in the art would readily appreciate that printing via inkjet technology is not at all the same as thermal printing, let alone thermal printing comprising, for example, direct thermal printing as disclosed by” Appellants’ Specification. App. Br. 7. Appeal 2011-002061 Application 11/159,461 11 Appellants’ Specification describes “dual-sided thermal imaging” that “expands the opportunities by which two-sided receipts might reasonably be commercially printed.” Spec. 1 ¶ 3. Appellants’ Specification also describes “[d]irect thermal printing on both sides of a paper receipt” and “a dual-sided imaging direct thermal printer.” Spec. 1–2 ¶¶ 4, 7, 10. Appellants’ Specification further describes “[d]ual-sided direct thermal printing.” Spec. 3 ¶¶ 10, 11. Based on the references in Appellants’ Specification, Appellants argue that the claim term “thermal printing” must be interpreted as including the additional word “direct.” App. Br. 7; see Reply Br. 4. It is well-established that we apply the broadest reasonable interpretation to the claim language, taking into account any definitions presented in the Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although Appellants have identified examples of direct thermal printing, these examples are not sufficient to provide reasonable clarity, deliberateness, and precision to limit the claim term “thermal printing” to “direct thermal printing.” See Paulsen, 30 F.3d at 1480). Nor will we read the particular embodiment of “direct thermal printing,” which appears in the written description, into the broader claim term “thermal printing.” See Van Geuns, 988 F.2d at 1184. We also note that the Specification includes references to “thermal printing” that are not limited to “direct thermal printing.” For example, the title of the patent application is “Receipts Having Dual-Sided Thermal Printing” (Spec. 1) and “dual-sided thermal imaging . . . expands the opportunities by which two- sided receipts might reasonably be commercially printed” (Spec 1 ¶ 3 (Background)). Moreover, limiting the claim term “thermal printing” to Appeal 2011-002061 Application 11/159,461 12 “direct thermal printing” is inappropriate because Appellants have the ability, while the application is pending, to exercise a procedural option to amend the claims to obtain more precise coverage. See Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364. Thus, we are not persuaded that Vives’ description of a printing unit implemented using inkjet technology with thermal print heads does not disclose “thermal printing,” recited in claim 31. Appellants further argue that Vives does not disclose printing ticket transaction data on both sides, as required by claim 31. App. Br. 7; Reply Br. 4. For this limitation, the Examiner relies on Vives’ description of “simultaneously printing the receipt on both sides” (col. 5, ll. 23–24) and finds a receipt is a ticket. Ans. 8. For the reasons discussed above with respect to claim 28, we are persuaded that Vives’ receipt does disclose transaction data. Further, Appellants do not provide persuasive evidence or argument why the broadest reasonable interpretation of ticket does not include Vives’ receipt. Therefore, we sustain the anticipation rejection of claim 31 and its dependent claims 32–35, not argued separately with particularity. App. Br. 7; Reply Br. 4. Claims 36–38 Independent claim 36 recites in part “transaction receipt comprising a substrate sheet material with thermally sensitive color changing coatings on both sides and transaction data thermally printed on one side and supplemental information thermally printed on the other side” (emphasis added). The Examiner relies on Vives, citing column 5, line 48 (“different colors or types of print media may be utilized”) and column 6, lines 10–14 Appeal 2011-002061 Application 11/159,461 13 (“The colors of ink for the printing units are selectable. That is, any desired color of ink may be utilized in each printing unit. For example, one printing unit may contain black ink, and a second printing unit may contain another color of ink.”), as disclosing the “thermally sensitive color change coatings” limitation. The Examiner also indicates that “colors such as yellow, are thermally sensitive” and that the “structure of Vives et al is useable with different types of media as stated, including the claimed thermal sensitive color changing.” Ans. 8–9. Appellants assert that “Vives [does not] teach[] a substrate sheet material with thermally sensitive color changing coatings . . . and transaction data thermally printed on one side and supplemental information thermally printed on the other side.” App. Br. 8 (emphasis omitted); Reply Br. 4. We agree with Appellants. To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 1371. Vives’ description of selectable ink colors is insufficient to disclose a “transaction receipt comprising a substrate sheet material with thermally sensitive color changing coatings on both sides,” as recited in claim 36. We, therefore, do not sustain the anticipation rejection of independent claim 36 and its dependent claims 37 and 38. Appeal 2011-002061 Application 11/159,461 14 CONCLUSION The Examiner did not err in rejecting claims 1–11, 13–24, 26, and 31– 35 but erred in rejecting claims 28–30 and 36–38. ORDER The Examiner’s decision rejecting claims 1–11, 13–24, 26, and 31–35 is affirmed, and the Examiner’s decision rejecting claims 28–30 and 36–38 is reversed. Accordingly, the final rejection is— AFFIRMED-IN-PART msc Copy with citationCopy as parenthetical citation