Ex Parte Plante et al

Patent Trial and Appeal Board

Sep 21, 2016

12869871 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/869,871 08/27/2010
22879 7590 09/23/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Jean-Frederic Plante
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.
82264982 8688
EXAMINER
OSIFADE, IDOWU 0
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-FREDERIC PLANTE, DAVID EDMONDSON, and
ERIC G. WIESNER
Appeal2015-005324
Application 12/869,871
Technology Center 2600
Before KRISTEN L. DROESCH, JAMES W. DEJMEK, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
.6. .... ,1 .... ,....,-TTr'l.r-"\l\-1,....Al/'\.r'" , .. T"""1 •-, Appeuants' appeal unaer j) u.~.L. s U4~aJ rrom tne bxammer s
final rejection of claims 1, 2, 4, 5, 8-12, 14--17, and 20-26, which constitute
all the claims pending in this application. The remaining claims have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify Hewlett-Packard Development Company, LP, Hewlett-
Packard Company, and HPQ Holdings, LLC as the real parties in interest.
App. Br. 2.
Appeal2015-005324
Application 12/869,871
STATEMENT OF THE CASE
Appellants' invention relates to "interactive wall decor" featuring a
decorative image printed over an interactive pattern readable by a reader
device. Spec. i-fi-f l-3, 11-12. Claims 1, 8, and 14 are independent. Claims
1 and 26 are illustrative of the invention, and read as follows:
1. An interactive decor comprising:
a substrate;
a plurality of separate interactive zones, each of the
interactive zones corresponding to a different executable action
when addressed by a reader device;
an interactive pattern in each of the interactive zones, the
interactive pattern printed on the substrate, the interactive pattern
addressable using the reader device but substantially
indiscernible to a naked eye at a viewing distance;
a decorative image printed over the interactive pattern, the
decorative image being predominant to the naked eye, and the
interactive pattern covered by the decorative image still
addressable using the reader device.
26. The interactive decor of claim 25, wherein the other
information is at least one of time and temperature.
App. Br. 12 (emphases added).
PRIOR ART
The Examiner relies upon the following prior art in rejecting the
claims:
Goldstein et al.
Encrenaz et al.
US 2005/0243369 Al
US 2007/0273917 Al
2
Nov. 3, 2005
Nov. 29, 2007
Appeal2015-005324
Application 12/869,871
THE REJECTIONS ON APPEAL
Claim 26 stands rejected under pre-AIA 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the Appellants regard as the
invention. Final Act. 3-5.
Claims 1, 2, 4, 5, 8-12, 14--17, and 20-26 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Goldstein et al. ("Goldstein")
and Encrenaz et al. ("Encrenaz").2 Ans. 5-15.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments presented in this appeal. Arguments Appellants could have made
but chose not to make in the Briefs are deemed waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). With respect to the indefiniteness rejection of claim 26,
and the obviousness rejection of claim 26, we are persuaded by Appellants'
arguments that the Examiner erred. With respect to the remaining rejections,
however, we agree with the Examiner's findings and conclusions and adopt
them as our own. We provide the following to highlight and address
specific arguments.
2 The Final Action appears to contain a typographical error (at 5) in stating
this rejection pertains to claims "1-20," because several of claims 1-20 had
already been withdrawn, and the Examiner's rejection also addresses claims
21-26. Final Act. 14--15. The Examiner also objects to claim 21, Final Act.
3, but the objection is not before us. See 37 C.F.R. §§ 1.113(a), 1.181.
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Appeal2015-005324
Application 12/869,871
Rejection Under 35U.S.C.§112, second paragraph
Appellants argue the Examiner erred in rejecting claim 26 under 35
U.S.C. § 112, second paragraph because, according to Appellants, the claim
does not recite the elements cited by the Examiner as being indefinite. App.
Br. 6. In the Final Action, the Examiner finds "Applicant's disclosure"
refers to examples of "time" and "temperature" (elements of claim 26) but
that "it is unclear how these factors relate to printing an interactive pattern
using an inkjet printer." Final Act. 4. As Appellants point out, however,
claim 26 and the claims from which it depends do not recite printing using
an inkjet printer. App. Br. 6. The Examiner does not withdraw the rejection
in the Answer, but also does not contest or address Appellants' argument,
nor does the Answer even acknowledge the rejection. For the reasons stated
by Appellants, we do not find sufficient support for the rejection in the
record before us.
Accordingly, we do not sustain the rejection of claim 26 under pre-
AIA 35 U.S.C. § 112, second paragraph.
Rejections of Claims 1, 2, 4, 5, 8-12, 14-17, 20, and 22
Under 35 U.S.C. § 103(a)
Appellants argue the Examiner erred in finding the prior art teaches
"an interactive pattern in each of the interactive zones," as recited in
independent claim 1. App. Br. 6-8. Specifically, Appellants argue that the
interactive patterns cited by the Examiner all lack the additional "interactive
zone" required by the claim. Id. We disagree.
The Examiner finds the disputed limitation is taught or suggested by
Goldstein. Ans. 15-16. The Examiner cites several examples of device-
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Appeal2015-005324
Application 12/869,871
readable "interactive patterns" taught in Goldstein, each of which is within
(and/or surrounded by) a region. Id. at 15. The Examiner finds, "since both
the claims and Applicant's filed Specification fail to further limit the
interactive pattern and interactive zones, any region or area surrounding a
machine readable pattern may be deemed a zone." Id. The record supports
the Examiner's finding.
Goldstein Figure 6 illustrates examples of the "interactive patterns in
interactive zones" as found by the Examiner and is reproduced below.
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Figure 6 of Goldstein illustrates documents containing machine-
readable digital patterns ("low resolution unique identifiers") and human
5
Appeal2015-005324
Application 12/869,871
readable content 150. Goldstein if 219. The digital patterns may be "a
machine readable alphanumeric character or character string 152, a machine
readable dot pattern 152', a bar code 152," or any other" patterns that can be
recognized by a reader. Goldstein if 273 (emphasis omitted). Goldstein
further teaches an "Anoto-type digital pattern ... is printed on other regions
of the sheet." Id. (emphasis added).
The Examiner finds, and we agree, the machine readable codes 152,
152', and 152" teach the claimed "interactive pattern," and the respective
regions in which they are shown teach the claimed "interactive zones."
Ans. 15. As the Examiner explains, Appellants' own disclosure (Spec. if 20)
describes and illustrates an embodiment virtually identical to the teaching of
Goldstein discussed above. That illustration, Figure 3 of the Specification,
is reproduced below.
6
Appeal2015-005324
Application 12/869,871
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Figure 3 shows an interactive Anoto pattern 365 read by a digital pen 300,
and the region 360 surrounding the pattern 365 is referred to by Appellant as
the "interactive zone." Id. Appellants' Figure 3, therefore, illustrates the
"interactive pattern in interactive zone" in the same manner as Goldstein
Figure 6.
Appellants argue in reply that "the Specification is replete with ...
disclosure on how the interactive patterns are ... implemented to create the
interactive zones." Reply Br. at 6. The claim, however, does not recite that
the interactive patterns "create" the interactive zones, but merely that they
are "in" the interactive zones. App. Br. 12.
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Appeal2015-005324
Application 12/869,871
Appellants further argue that the Examiner improperly combined
Goldstein and Encrenaz on the basis of their "being in a related field of
search." App. Br. 7. We disagree. In the Final Action (at 7), the Examiner
explains that both Goldstein and Encrenaz "disclose digital printing
arrangements which involve pattern area definitions which may be read by a
digital pen or reading device." Thus, the Examiner finds it would have been
obvious to one of ordinary skill at the time of the invention "to use the
known technique of the device of Enc[ renaz] to modify the similar and
known device of Gold[ stein] for the desirable purpose of avoiding dot-on-
dot printing," for better print "accuracy" and "uniformity," and for
improving image quality and rendering accuracy. Id. Appellants do not
explain the error in this finding, and we find none. See, e.g., KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007) ("[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.").
For the foregoing reasons, we sustain the rejection of claim 1 under 35
U.S.C. § 103(a) as unpatentable over Goldstein and Encrenaz. For the same
reasons, we also sustain the rejection of independent claims 8 and 14, and
dependent claims 2, 4, 5, 9-12, 15-17, 20, and 22, all of which Appellants
assert include "similar recitations as claim 1" and are "allowable for the
same reasons," as claim 1. App. Br. 8.
Rejections of Claims 21and23-26 Under 35 U.S.C. § 103(a)
Appellants argue the rejection of dependent claims 21 and 23-26
separately from the rejection of the claims discussed above. We address
each argument in tum, below.
8
Appeal2015-005324
Application 12/869,871
Regarding dependent claim 21, Appellants argue the Examiner erred
in finding Goldstein teaches "identify[ing] coordinates of the reader device."
App. Br. 8-9. We disagree. Goldstein states that its readable pattern is
"position-determining" and is adapted to "enable the position of said pen
[i.e., the reader device] on said pattern to be determined." Goldstein i-f 40;
Ans. 17 (citing same); see also Goldstein i-f 282 (referring to the readable dot
pattern as "position determining"). As the Examiner finds, Ans. 17,
Appellants' own disclosure equates "coordinates" with "position data."
Spec. i-f 21 ("The position data may be stored in memory 325 (e.g., as
coordinates)."). Accordingly, Appellants' argument does not persuade us of
error.
Regarding dependent claim 23, Appellants argue the Examiner erred
in finding Goldstein teaches "the reader device causes another device to
execute the action in response to detecting the interactive pattern." App.
Br. 9. As the Examiner finds, however, Goldstein teaches this element in its
description of the digital pen (i.e., reader device) "communicating directly"
with an "application server" (i.e., another device) which in tum runs
"application software" depending upon the position of the dot pattern
detected by the digital pen. Ans. 18 (citing Goldstein i-f 252). 3 Accordingly,
we find no error in the Examiner's findings.
3 The Final Action (at 14) cites a different paragraph in Goldstein, but
Appellants' Appeal Briefs (at 9) mere quotation of the prior art and
assertion it does not teach the disputed element are unpersuasive of error. In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011); see also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) ("the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
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Appeal2015-005324
Application 12/869,871
Regarding dependent claim 24, Appellants argue the Examiner erred
in finding Goldstein teaches "the action is executed in response to a
combination of the reader device detecting the interactive pattern and the
reader device collecting other information." App. Br. 9 (emphasis added).
The Examiner finds this limitation is taught or suggested by Goldstein
paragraphs 252 and 282-284. Ans. 18-19. We discern no error in this
finding. Goldstein teaches the digital pen (reader device) detects a "dot
pattern" (the interactive pattern) as well as other information such as "free-
hand markings" made by the pen, Goldstein i-f 284, and/or a "mark made in a
box, id. i-fi-1251-52. Goldstein further teaches such detection can "trigger the
execution of ... application software," id. i-f 252, i.e., the "action" referenced
above in relation to claim 23. The record, therefore, supports the
Examiner's findings.
Regarding dependent claim 25, Appellants argue the Examiner erred
in finding Goldstein teaches "wherein a different action is executed in a
same one of the interactive zones based on the other information." App.
Br. 10. Appellants, however, do not explain the basis of the Examiner's
error. See supra n.3. Moreover, as the Examiner explains in the Answer,
Goldstein teaches the digital pen is capable of executing different actions.
Ans. 19 (citing Goldstein Fig. 7, i-f 252). On the record before us,
Appellants' argument is insufficient to persuade us of error.
elements were not found in the prior art"); 37 C.F.R. § 41.37(c)(l)(iv) ("A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim."). Moreover,
Appellants' Reply Brief does not address the Examiner's Answer regarding
claim 23.
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Appeal2015-005324
Application 12/869,871
Regarding dependent claim 26, Appellants argue the Examiner erred
in finding Goldstein teaches "wherein the other information is at least one of
time and temperature." App. Br. 10. The Examiner finds Goldstein teaches
the other information is "temperature," specifically, the temperature
sensitivity of the CCD device embodied in the digital pen. Ans. 19-20. The
Examiner finds further it is "well known in the art" that CCD sensing
devices "respond to temperature changes." Id. 20.
The foregoing findings, however, are insufficient to render claim 26
obvious even if such findings are supported in the record. Claim 26 requires
that the "other information" (temperature change, according to the
Examiner) cause execution of the "action" recited in claims 24 and 25 (from
which claim 26 depends). App. Br. 14. Neither the Final Action nor the
Answer explains how the Examiner's finding of temperature sensitivity of
the reader device relates to the "action executed" in response thereto, recited
in the claims. Accordingly, we are persuaded by Appellants' argument the
Examiner erred in rejecting claim 26.
For the foregoing reasons, we sustain the rejection of claims 21 and
23-25, but do not sustain the rejection of claim 26, under 35 U.S.C. § 103(a)
as unpatentable over Goldstein and Encrenaz.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4, 5, 8-12,
14--17, and 20-25 under pre-AIA 35 U.S.C. § 103(a).
We reverse the Examiner's decision rejecting claim 26 under pre-AIA
35 U.S.C. § 112, second paragraph and pre-AIA 35 U.S.C. § 103(a).
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Appeal2015-005324
Application 12/869,871
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
12