Ex Parte Naghshineh et al

Board of Patent Appeals and Interferences

May 2, 2011

10097828 (B.P.A.I. May. 2, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/097,828 03/14/2002 Steve F. Naghshineh 23189-2 1869
24256 7590 05/02/2011
DINSMORE & SHOHL LLP
1900 CHEMED CENTER
255 EAST FIFTH STREET
CINCINNATI, OH 45202
EXAMINER
SHAAWAT, MUSSA A
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
05/02/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVE F. NAGHSHINEH and
RALPH L. ROBERTS
___________

Appeal 2009-011228
Application 10/097,828
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Steve F. Naghshineh et al. (Appellants) seek our review under 35
U.S.C. § 134 (2010) of the final rejection of claims 7-12. We have
jurisdiction under 35 U.S.C. § 6(b) (2010).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
This invention is “a method for transmitting shipping documents or
bills of lading directly from the truck driver to a common point.”
Specification 1:12-14.
Claim 7, reproduced below, is illustrative of the subject matter on
appeal.
7. A device capable of scanning and transmitting
images to a remote processor comprising:
at least one processor;
a memory;
an input device configured to acquire image
data representing a shipping document;
a portable, vehicle-transportable image
transmission device, wherein the processor,
memory, transmission device, and input device are

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Sep. 11, 2008) and the Examiner’s Answer (“Answer,” mailed Dec. 11,
2008).

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configured for mobile transport on a shipping
vehicle and for mobile use by a driver of a
shipping vehicle; and
executable instructions executable by the at
least one processor and configured to access image
data representing a shipping document received
from the input device and stored in the memory, to
convert the image data to a wireless signal
representing the image data, wherein the wireless
signal comprises at least one of a satellite signal, a
radio signal, and a cellular signal, and to cause the
image data to be wirelessly transmitted from the
shipping vehicle’s mobile location using the
portable image transmission device to a remote
processor for further processing of the shipping
document; and further comprising a set of
executable instructions capable of receiving
communications from a remote processor to the
device.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Cukor
Jones

Suzuki
US 5,168,444
US 6,363,323 B1

US 6,643,319 B1
Dec. 1, 1992
Mar. 26, 2002
(filed Sept. 14,
1999)
Nov. 4, 2003
(filed Oct. 20,
1995)
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The Examiner took Official Notice that “it is well known and old in
the art [that] data in general could include image data.” Answer 5.
[Hereinafter, Official Notice I].
The Examiner took Official Notice that “portable image transportation
is well known in the art and one [of] ordinary skill in the art would have no
problem mounting it on a shipping vehicle.” Answer 5. [Hereinafter,
Official Notice II].
The Examiner took Official Notice that “it is old and well known in
the business art that all transportation vehicle[s] would include some form of
attachment means to secure anything being transported to another location.”
Answer 6. [Hereinafter, Official Notice III].
The following rejections are before us for review:
1. Claims 7-12 are rejected under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point out
and distinctly claim the subject matter which applicant regards
as the invention.
2. Claims 7-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cukor, Jones, Suzuki, and Official Notice I-
III.

ISSUES
The first issue is whether the Examiner has established a prima facie
showing that claims 7-12 are indefinite for failing to particularly point out
and distinctly claim the subject matter which applicant regards as the
invention.
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The second issue is whether the Examiner has established a prima
facie showing that claims 7-12 are unpatentable under 35 U.S.C. § 103(a)
over Cukor, Jones, Suzuki, and Official Notice I-III.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Specification states: “Transportation documentation sent by
the [Mobile Data Transmission Device] 530 is preferably received
by the remote processor 640. A set of executable instructions
residing on the remote processor 640 initially receives the
transportation documentation in 680.” Specification 18:3-5. See
also Specification 16:18-23.
2. Cukor discloses a remote station where a shipper can scan
document to create document images, which are then transmitted
to a central processing station. Col. 7, ll. 16-21.
3. Cukor also discloses that the remote stations may receive images
or other data back from the central processing station. Col. 7, ll.
21-25.
4. Cukor states: “Those skilled in the art will recognize that other
forms of communication links, such as switched point-to-point or
multi-point data links, and other communications protocols, such
as SNA, or other communications rates, may also be used to fill the
needs of the present invention.” Col. 7, ll. 33-38.
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5. Jones states: “In this regard, communication device 44 is
preferably a cellular modem configured to transmit and receive
wireless signals to and from a cellular network 48 (FIG. 1). The
communication device 44 can transmit the status message over the
voice channels associated with the cellular network 48, as is done
by most cellular modems of the prior art.” Col. 8, ll. 56-63.
6. Suzuki discloses using a transceiver to convert a data signal to a
wireless-frequency signal for transmission. Col. 5, ll. 47-50.

ANALYSIS
The rejection of claims 7-12 under 35 U.S.C. § 112, second paragraph as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention

The Examiner and the Appellants dispute whether claim 7 is indefinite
under 35 U.S.C. § 112, second paragraph. Answer 7 and Br. 4-6. The test
for compliance with 35 U.S.C. § 112, second paragraph is whether the
claims set out and circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the application disclosure as
they would be interpreted by one of ordinary skill in the art. In re Moore,
439 F.2d 1232, 1235 (CCPA 1971).
The Examiner asserts that the phrase “capable of” in the limitation “a
set of executable instructions capable of receiving communications from a
remote processor to the device” renders claim 7 indefinite. Answer 3. The
Examiner reasons that “[i]t is not clear if the set of instructions are receiving
the communication or if the set of instructions are executed by a device to
receive communication.” Answer 7.
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The difficulty with the Examiner’s reasoning is that it is not rooted in
a claim construction analysis.
The “distinctly claiming” requirement means that
the claims must have a clear and definite meaning
when construed in the light of the complete patent
document. Standard Oil Co. v. American
Cyanamid Co., 774 F.2d 448, 452, 227 USPQ 293,
296 (Fed. Cir. 1985). Section 112 thus ensures
definiteness of claim language. See In re Zletz, 893
F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989). The test for definiteness is whether one
skilled in the art would understand the bounds of
the claim when read in light of the specification.
Orthokinetics, 806 F.2d at 1576. If the claims read
in light of the specification reasonably apprise
those skilled in the art of the scope of the
invention, § 112 demands no more. Hybritech, 802
F.2d at1385. The degree of precision necessary for
adequate claims is a function of the nature of the
subject matter. Id.”
Miles Labs. Inc. v. Shandon Inc., 997 F.2d 870, 874-875 (Fed. Cir. 1993).
The question is: do the claims read in light of the specification reasonably
apprise those skilled in the art of the scope of the invention? Answering that
question “requires a construction of the claims according to the familiar
canons of claim construction. Only after a thorough attempt to understand
the meaning of a claim has failed to resolve material ambiguities can one
conclude that the claim is invalid for indefiniteness.” All Dental Prodx, LLC
v. Advantage Dental Prods. Inc., 309 F.3d 774, 780 (Fed. Cir. 2002). This is
so because:
[t]he requirement to “distinctly” claim means that
the claim must have a meaning discernible to one
of ordinary skill in the art when construed
according to correct principles. Union Pac. Res.
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Co. v. Chesapeake Energy Corp., 236 F.3d 684,
692 (Fed. Cir. 2001); Rosemount, Inc. v. Beckman
Instruments, Inc., 727 F.2d 1540, 1547 (Fed. Cir.
1984). Only when a claim remains insolubly
ambiguous without discernible meaning after all
reasonable attempts at construction must a court
declare it indefinite. Exxon Research & Eng'g Co.
v. United States, 265 F.3d 1371, 1375 (Fed. Cir.
2001).
Metabolite Labs. Inc. v. Laboratory Corp. of Am. Holdings, 370 F.3d 1354,
1366 (Fed. Cir. 2004).
We find that the limitation when read in light of the Specification
reasonably apprises those skilled in the art that of the scope of the limitation.
The phrase “capable above” in the limitation at issue is referring to the
executable instructions. The limitation is directed to the structure of a set of
executable instruction stored in a memory. See Claim 7. The structure is
such that the set of instructions are capable of receiving communications.
The communications are from a remote processor to the device. We note
that this is consistent with the Specification. See FF 1. The Examiner has
failed to establish that claim 7 when read in light of the specification fails to
reasonably apprise those skilled in the art of the scope of the invention. The
rejection of claims 7, and claims 8-12, dependent thereon, under 35 U.S.C. §
112, second paragraph is reversed.

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The rejection of claims 7-12 under §103(a) as being unpatentable over
Cukor, Jones, Suzuki, Official Notice I, and Official Notice II

Claims 7-11
The Appellants argued claims 7-11 as a group. Br. 9-13. We select
claim 7 as the representative claim for this group, and the remaining claims
8-11 stand or fall with claim 7. 37 C.F.R. § 41.37(c)(1)(vii) (2010).
The Appellants argue that: 1) the Examiner has provided no
motivation or reasoning to combine Suzuki with Cukor and Jones (Br. 9-11)
2) that the combination of the prior art does not teach the limitations labeled
D, E, and F above (Br. 11-13).
First, we turn to the Appellants’ first argument. The Appellants
challenge the Examiner’s reasoning or motivation for combining Suzuki
with Cukor and Jones. Br. 9-11. The Appellants seem to argue that because
the systems disclosed in Suzuki, Cukor, and Joneshave differences for which
there can be no reasoning or motivation to make the device of the
combination of Cukor and Jones transmit the image data wirelessly. Br. 11.
The mere existence of differences between the prior art and the claim
does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230,
(1976). The issue is "whether the difference between the prior art and the
subject matter in question 'is a difference sufficient to render the claimed
subject matter unobvious to one skilled in the applicable art.'" Dann, 425
U.S. at 228 (citation omitted) (finding system for automatic record keeping
of bank checks and deposits obvious in view of nature of extensive use of
data processing systems in banking industry and "closely analogous" patent
for an automatic data processing system used in a large business
organization for keeping and updating system transaction files for each
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department of the organization). To be nonobvious, an improvement must be
"more than the predictable use of prior art elements according to their
established functions." KSR Int’l v. Teleflex, 550 US 398, 417 (2007). First,
we note that both Cukor and Jones teach a transmission device for
transmitting data. See FF 2-5. Cukor even suggests that other means of
transmitting could be used. FF 4. We find that simply substituting Suzuki’s
wireless transmission means (see FF 6) for those disclosed by Cukor and
Jones (see FF 2-5) is nothing more than the predictable use of prior art
elements according to their established functions. Therefore, we are not
persuaded by the Appellants’ argument.
Next, we turn to the Appellants’ second argument that none of the
prior art discloses limitations D, E, and F above. Br. 11-13. First, we note
that the Appellants merely assert that limitations E and F are not taught by
the prior art and provide no explanation or reasoning to support this
assertion. See Br. 11-12. “It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.” In re Baxter Travenol Labs, 952 F.2d 388,
391 (Fed. Cir. 1991). See also In re Wiseman, 596 F.2d 1019, 1022 (CCPA
1979) (arguments must first be presented to the board). A general allegation
that the art does not teach any of the claim limitations is no more than
merely pointing out the claim limitations. A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii). Therefore, we find
the Appellants’ argument with regards to limitations E and F unpersuasive.
Limitation D recites “a portable, vehicle-transportable image
transmission device, wherein the processor, memory, transmission device,
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and input device are configured for mobile transport on a shipping vehicle
and for mobile use by a driver of a shipping vehicle.” The Appellants argue
that Cukor does not disclose that the remote stations are vehicles but instead
discloses that they are located in buildings. Br. 12-13.
However, we note that the limitation does not require a vehicle per se,
but is instead directed to the structure of the image transmission device. See
In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). It requires that
the structure of the image transmission device be such that it is portable,
vehicle-transportable, and “configured for mobile transport on a shipping
vehicle and for mobile use by a driver of a shipping vehicle.” The
Appellants’ argument is not directed to the structure of the device at the
remote station in Cukor and whether or not the structure of Cukor’s device is
such that it is vehicle-transportable or configured as required by limitation
D. Therefore, we find the Appellants’ argument with regards to limitation D
unpersuasive.
Accordingly, we find that the Appellants have failed to overcome the
rejection of claim 7, and claims 8-11, dependent thereon, under 35 U.S.C. §
103(a) as being unpatentable over Cukor, Jones, Suzuki, and Official Notice
I-III.

Claim 12
In addition to the arguments regarding claim 7 above, which we found
unpersuasive, the Appellants traverse the rejection of claim 12 by asserting
that the Examiner has taken improper official notice with regards to Official
Notice III. Br. 13-16. The Appellants argue that the Examiner failed to
properly take official notice because the Examiner did not explicitly use the
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term “official notice” in the Non-Final Office Action mailed on January 9,
2007 and therefore, they were not notified of the taking of official notice and
deprived of their right to challenge Official Notice III. Id. The Examiner
responds that the Appellants were properly notified and that the Appellants
traversal was inadequate. Answer 11.
First, we note that the Appellants assert that they did raise a traversal
in the Amendment field on November 26, 2007 (Br. 15) and, therefore, we
find that the Appellants were not deprived of their right to challenge the
Examiner’s taking of official notice.
Next, we find that the Appellants’ traversal of Official Notice III in
the Amendment filed on November 26, 2007 on pages 8-9 and in the Appeal
Brief (Br. 13-16) does not appear to traverse what Examiner regards as
knowledge that would have been generally available to one of ordinary skill
in the art at the time the invention was made. Even if one were to interpret
applicants' arguments and comments as constituting a traverse, Applicants'
arguments and comments do not appear to constitute an adequate traverse
because Applicant has not specifically pointed out the supposed errors in the
examiner's action, which would include stating why the noticed fact is not
considered to be common knowledge or well-known in the art. 27 CFR
1.104(d)(2), MPEP 707.07(a).
An adequate traverse must contain adequate information or argument
to create on its face a reasonable doubt regarding the circumstances
justifying Examiner's notice of what is well known to one of ordinary skill in
the art. In re Boon, 439 F.2d 724, 728 (CCPA 1971). While the Appellants
argue that the Examiner has not supplied any evidence to support the taking
of Official Notice II (Br. 13-16), the Appellants do not dispute that “it is old
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and well known in the business art that all transportation vehicle[s] would
include some form of attachment means to secure anything being transported
to another location.” Answer 6. Therefore, we are not persuaded by the
Appellants argument.
Accordingly, we find that the Appellants have failed to overcome the
rejection of claim 12 under 35 U.S.C. § 103(a) as being unpatentable over
Cukor, Jones, Suzuki, and Official Notice I-III.

DECISION
The decision of the Examiner to reject claims 7-12 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED

erc