Ex Parte Pappas et al

Patent Trial and Appeal Board

Oct 29, 2014

12338942 (P.T.A.B. Oct. 29, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/338,942 12/18/2008 Anthony H. Pappas EXAK-50847 6339
26252 7590 10/30/2014
KELLY & KELLEY, LLP
6320 CANOGA AVENUE
SUITE 1650
WOODLAND HILLS, CA 91367
EXAMINER
CHAMPAGNE, LUNA
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
10/30/2014 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 ANTHONY H. PAPPAS, ERIC R. RENKEN,
SCOTT K. PREWETT, VALERIE L. DORAN,
JOHN O’HARA, MYLES CHRISTENSEN,
and JOHN MILLIGAN
___________

Appeal 2012–000422
Application 12/338,942
Technology Center 3600
___________

Before HUBERT C. LORIN, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2012-000422
Application 12/338,942

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STATEMENT OF THE CASE1
Anthony H. Pappas, Eric R. Renken, Scott K. Prewett, Valerie L. Doran,
John O’Hara, Myles Christensen, and John Milligan (Appellants) seek
review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1–
22, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of tracking time and activities of
employees using a hand–held device for selecting from a list of activities
and an electronic time clock which stores a unique code representing
employee information and selected activity data, and related time stamps.
Spec. para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 16, which is reproduced below [bracketed matter and some
paragraphing added].
16. A method for tracking time and activities, comprising the
steps of:
[1] providing a hand–held device
storing a plurality of unique codes,
each code corresponding to
the hand–held device or user identity
as well as
an activity;
[2] selecting an activity

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 13, 2011) and Reply Brief (“Reply Br.,” filed August 19,
2011), and the Examiner’s Answer (“Ans.,” mailed June 21, 2011).
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Application 12/338,942

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from a plurality of activities
using an actuator of the device;
[3] transmitting the selected unique code
to a separate electronic time clock;
and
[4] using the electronic clock
to
create
and
associate a time stamp with the unique code as
a file
and
storing the file on the electronic clock.
The Examiner relies upon the following prior art:
Cramer US 5,606,497 Feb. 25, 1997
Pappas US 2006/0146649 A1 July 6, 2006
Senn US 2006/0152480 A1 July 13, 2006
Ranganath US 2007/0052535 A1 Mar. 8, 2007
Suematsu US 2008/0224932 A1 Sep. 18,2008
Claims 1, 7–12, and 15–21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cramer and Pappas.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Cramer, Pappas, and Senn.
Claims 4–6, 13, 14, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cramer, Pappas, and Official Notice.2

2 Ranganath and Suematsu are also cited as evidence supporting Official
Notice.
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Application 12/338,942

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ISSUES
The issues of obviousness turn on whether Cramer shows it was
predictable to provide a handheld device to alter the codes entered into the
time clock of Pappas.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Cramer
01. Cramer is directed to a data logging device for recording in real
time the elapsed time spent on a particular activity by a particular
service provider for a particular client. It may be contained in a
portable self-contained unit. The device has a selectable data
memory and a memory for storing selected client, user and
activity data along with start and stop times time for such activity,
and allows the user to toggle start and stop times for particular
activities. Cramer 1:48–56.
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02. In operation, the user calls up onto the display the user
identification by depressing the select switch S, which then
accesses a list of users, activities or clients. The user may scan the
list of names accessed. Once the particular user is identified, the
activity may be selected. The control system also calls up the
second list which may contain client information. The user
likewise selects a particular client. Thereafter, the user enters and
moves to the next list thereby again entering that client name and
calling up the activity list which likewise may be scrolled for the
appropriate activity. Once the activity is selected, the user starts
the timing function, which records the selected user, activity and
client in the non–volatile memory along with the current time
obtained from the real time clock unit. Cramer 3:18–49.
Pappas
03. Pappas is directed to a time keeping apparatus specifically
designed for monitoring employee time, such as at a job
construction site or the like. Pappas para. 1.
04. It is common practice for employees to “clock–in” and “clock–
out” when checking in and checking out of work, such as when
arriving at work, taking a lunch break and leaving for the day.
The use of time clocks for tracking the time when an employee
checks in and checks out is common place. Pappas para. 2.
05. There is a continuing need for a time clock apparatus which
automates the time keeping procedure. Pappas para. 10.
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06. Pappas describes a time attendance clock, and related time
attendance system that uses portable touch buttons which include
a passively readable code unique to the holder of the touch button.
The touch button is brought into contact with the time attendance
clock, which reads the touch button and creates a time attendance
record, including the readable code and time of contact. Pappas
para. 11.
07. A touch button contact extends through the front housing member
so as not to be in electrical contact therewith. An electronic
circuit disposed within the housing is electrically connected to the
touch button contact so as to receive signals therefrom as the
touch button interfaces with the touch button contact, typically by
bringing the touch button into physical contact with the touch
button contact detector. Pappas para. 13.
08. When an employee’s touch button is brought into contact with the
touch button contact or detector, the integrated circuit housed
within a stainless steel container of the touch button (illustrated as
the circular end portion thereof), the code is read and relayed to
the microcontroller. Pappas para. 37.
09. Each time a touch button is brought into contact with the touch
button contact detectors, its unique code is relayed to the
microcontroller for storage. At this time, the time of this
occurrence is obtained from a real time clock in the electronic
circuit which is in electronic communication with the
microcontroller. The received and interpreted code as well as the
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Application 12/338,942

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extracted time is saved in a memory as a time attendance record.
Pappas para. 38.
ANALYSIS
Claims 1, 7–12, and 15–21 rejected under 35 U.S.C. § 103(a) as
unpatentable over Cramer and Pappas
As to independent claims 1 and 16, we are not persuaded by the
Appellants’ arguments that Cramer already has an internal clock and
modifying Cramer to use Pappas’s separate clock would render Cramer unfit
for its purpose. App. Br. 10–19 and 30–32; Reply Br. 2–8.
If the Examiner were merely finding it obvious to use Cramer’s device
to feed Pappas’ clock, we would perhaps agree with Appellants. But
instead, the Examiner is substituting the capacity of Cramer to append codes
to a clock on-off signal using a hand held device to trigger time keeping
recording for the triggering apparatus of Pappas.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425, (CCPA 1981) (citation omitted). See also In re
Sneed, 710 F.2d 1544, 1550, (Fed. Cir. 1983) (citation omitted) (“[I]t is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.”); and In re Nievelt, 482 F.2d
965, 968 (CCPA 1973) (“Combining the teachings of references does not
involve an ability to combine their specific structures.”).
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The Examiner is not suggesting that Pappas be physically incorporated
within Cramer, but that Cramer provides the description of and reasoning for
providing some automated way of appending codes to the time keeping of
Pappas using a convenient hand held device, and Pappas already has the
separate clock recited in the claims. The location of the clock, whether
within such a device as in Cramer or centrally located as in Pappas, would
be dictated by the nature of the environment. Pappas shows one such
environment would require a separate clock.
As to independent claim 10, reciting
a data transmitter comprising a conductive member in electrical
connection to the electronic circuit and adapted to be placed
into contact with and transmit the selected activity code and
identification code to a conductive receptor of an electronic
time clock
(claim 10 final limitation), we are not persuaded by the Appellants’
argument that Cramer fails to describe this. Pappas describes making such
electrical contact as an implementation for passing the clock triggering
signal. Appellants argue that it would be improper to modify Cramer, but it
is Pappas’s clock where the connection is made.
Dependent claim 7 has a similar limitation to claim 10 and the
arguments are similar.

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Application 12/338,942

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Claims 2 and 3 rejected under 35 U.S.C. § 103(a) as unpatentable over
Cramer, Pappas, and Senn
These claims are not separately argued.
Claims 4, 5, 6, 13, 14, 22 rejected under 35 U.S.C. § 103(a) as unpatentable
over Cramer, Pappas, and Official Notice
As to independent claim 14, reciting
wherein the conductive transmitter member comprises a
metallic can having an integrated circuit therein and having a
data contact in conductive connection with a lid or base of the
can, and a ground contact in conductive connection with the
corresponding lid or base of the can
(claim 14), we are not persuaded by the Appellants’ argument that Cramer
fails to describe this. Pappas describes its touch button as having such a
configuration.
Claims 5–6 have limitations similar to those in claims 10 and 14.
Claim 4 recites a key ring attachment, which is a notoriously well known
physical accessory for retaining small portable objects. Appellants argue
that Cramer’s box is too large for key ring attachment, but Cramer does not
recite a minimum size and the size of what is attached to a key ring is a
personal decision, not a technical limitation.
Dependent claim 22 has a similar limitation to claim 10 and the
arguments are similar.
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Application 12/338,942

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CONCLUSIONS OF LAW
The rejection of claims 1, 7–12, and 15–21 under 35 U.S.C. § 103(a) as
unpatentable over Cramer and Pappas is proper.
The rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable
over Cramer, Pappas, and Senn is proper.
The rejection of claims 4–6, 13, 14, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Cramer, Pappas, and Official Notice is proper.
DECISION
The rejection of claims 1–22 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED

rvb