Ex Parte Ramberg et al

Board of Patent Appeals and Interferences

Sep 8, 2011

10934064 (B.P.A.I. Sep. 8, 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.
10/934,064 09/03/2004 Jon R. Ramberg 480062.584D1 5153
35243 7590 09/08/2011
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104-7092
EXAMINER
IQBAL, NADEEM
ART UNIT PAPER NUMBER
2114
MAIL DATE DELIVERY MODE
09/08/2011 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 JON R. RAMBERG, JEFFREY M. HUNT, PAUL DAVID
SHOEMAN, and JAMES T. KATSANDRES
____________________

Appeal 2009-008349
Application 10/934,0641
Technology Center 2100
____________________

Before JAY P. LUCAS, DEBRA K. STEPHENS and JAMES R. HUGHES,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 5, 7 to 14, 17 to
21, 29 to 31, 33, and 35 to 37 under authority of 35 U.S.C. § 134(a). Claims
6, 32 and 34 are allowed, and claims 15 and 16 would be allowed if put into

1 Application filed September 3, 2004. Application is a divisional of
09/240,108, filed January 29, 1999. The real party in interest is Intermec IP
Corporation.
Appeal 2009-008349
Application 10/934,064

2
independent form. Claims 22 to 28 are cancelled. The Board of Patent
Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We affirm the rejections.

Appellants’ invention relates to a method and system for remote
diagnosis of a data collection device that may be malfunctioning. In the
words of Appellants:
Automatic Data Collection (“ADC”) device
platforms, such as ADC device platforms equipped
with bar code readers, have received increasing
commercial attention in the past few years. ADC
device platforms, such as hand-held data collection
terminals, or hand-held personal computers, have
been widely implemented in the retail marketplace
and have garnered increasing utilization in a
diverse range of application areas. The ever[]
decreasing cost and size of ADC device platforms
has facilitated their entry into a wide variety of
commercial, institutional, and governmental
settings.
. . . .
ADC device platforms are primarily
intended for technically unsophisticated operators.
The typical ADC device operator has neither
adequate training nor a rudimentary understanding
of the basic principles upon which the ADC device
platform operates. Consequently, when a typical
ADC device operator encounters an anomaly or
apparent anomaly with regard to the ADC device
platform, the typical ADC device operator cannot
diagnose the anomaly and make any required
adjustments to the ADC device platform to restore
its functionality. Some apparent ADC device
platform anomalies result from the typical ADC
Appeal 2009-008349
Application 10/934,064

3
device operator’s unsophistication. Some
manufacturers have found that fully half of the
ADC device platforms returned to them as
defective, in fact, contain no defects at all. ADC
device platform manufacturers are understandably
eager to reduce the number of ADC device
platforms returned to them as inoperable and the
number of on-site service calls, especially when
the ADC device platforms are in proper working
condition.

SUMMARY OF THE INVENTION
Aspects of the invention provides (sic) a
method and system for remotely diagnosing and
reconfiguring a plurality of networked Automatic
Data Collection (“ADC”) device platforms. Each
ADC device platform in the plurality of networked
ADC device platforms contains a communications
device that connects to a communications network
that allows remote access by a service technician.
The service technician sends diagnostic queries to
the ADC device platform over the communications
network. Diagnostic queries passing over the
communications network to the ADC device
platform may arrive in a communications format
different from the format required by the various
subsystems connected to the ADC device platform,
such as the ADC devices.

Aspects of the invention provide a method
and system for retrieving diagnostic and analytical
tools for restoring a plurality of ADC devices to
proper working condition. A service technician
utilizes a web browser in a remote computing
system to access a Hypertext Transfer Protocol
(“HTTP”) server and retrieve from the HTTP
server Hypertext Mark-Up Language (“HTML”)
documents, Dynamic Hypertext Mark-Up
Appeal 2009-008349
Application 10/934,064

4
Language (“DHTML”) documents, Extensible
Mark-Up Language (“XML”) documents, and/or
documents in other data formats over the World
Wide Web, according to one embodiment of the
invention. The service technician’s remote
computing system uses small diagnostic programs,
or applets, contained in the HTML documents,
DHTML documents, and/or XML documents to
perform diagnostic queries on ADC device
platforms, diagnose anomalies, and reconfigure
malfunctioning subsystems on the ADC device
platform. . . .

Aspects of the invention include an anomaly
reporting system on an ADC device platform. The
anomaly reporting system may include a
subsystem for generating anoma1y reporting
electronic mail messages (“e-mails”) that may be
composed by a device operator and sent to the
remote service technician. The ADC device
platform may also include an anomaly reporting
beacon that automatically sends a predetermined
anomaly reporting e-mail to a remote service
technician when activated. The anomaly reporting
beacon may be activated automatically by the
device operator or by the ADC device platform
itself.
(Spec. 1, ll. 9-15; Spec. 2, l. 18 to Spec. 3, l. 22; Spec. 4, ll. 1-8).
The following illustrates the claims on appeal:
Claim 1:
1. A system, comprising:

a computing system remote from a
computing platform having a reportedly
anomalous element, the computing system
including:
Appeal 2009-008349
Application 10/934,064

5
a communications unit that receives
performance data associated with the reportedly
anomalous element of the computing platform;

a diagnostic analysis unit that analyzes the
received performance data and identifies an
anomaly associated with the reportedly anomalous
element; and

a reconfiguration unit that provides
reconfiguration instructions to the communications
unit, wherein the communications unit sends
reconfiguration instructions to the computing
platform to resolve the anomaly, wherein the
remotely located computing platform receives the
reconfiguration instructions and implements the
reconfiguration instructions to reconfigure the
reportedly anomalous element of the remotely
located computing platform.

Claim 11:
11. A method for reporting anomalies in an
automatic data collection device platform having a
plurality of elements to a remotely located
computing system, comprising:

collecting at the automatic data collection
device platform anomaly reporting data for a
reportedly anomalous element of the plurality of
elements of the automatic data collection device;

forwarding the anomaly reporting data as an
anomaly report to a communications unit;

formatting at the automatic data collection
device platform the anomaly report for
transmission over a communications network;

Appeal 2009-008349
Application 10/934,064

6
sending over the communications network
the formatted anomaly report from the automatic
data collection device platform to the remote
computing system; and

selectively enabling and disabling log-on
procedures at the automatic data collection device
platform so as to selectively control access to the
automatic data collection device platform by an
entity remote to the automatic data collection
device platform.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nelson US 3,787,670 Jan. 22, 1974
Collins US 5,493,213 Feb. 20, 1996
Tonozuka US 5,650,940 Jul. 22, 1997
Fawcett US 5,678,002 Oct. 14, 1997
Tracy US 5,979,757 Nov. 09, 1999
Sandifer US 5,987,474 Nov. 16, 1999
Kim US 6,240, 082 B1 May. 29, 2001
(hereinafter “Kim ‘082”)
Kim US 6,473,788 B1 Oct. 29, 2002

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1, 4 and 9 stand rejected under 35 U.S.C. § 102(b) for being
anticipated by Tonozuka.
R2: Claim 2 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Tonozuka in view of Kim ‘082.
R3: Claims 3, 7 and 31 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Tonozuka in view of Kim.
Appeal 2009-008349
Application 10/934,064

7
R4: Claim 5 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Tonozuka in view of Tracy.
R5: Claims 11, 12, 13, 19, 21, 36 and 37 stand rejected under
35 U.S.C. § 103(a) for being obvious over Tonozuka in view of Collins and
Fawcett.
R6: Claim 20 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Tonozuka in view of Collins and Fawcett and Kim ‘082.
R7: Claim 8 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Tonozuka in view of Nelson.
R8: Claims 14 and 17 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Tonozuka in view of Collins and Fawcett and Kim.
R9: Claim 10 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Tonozuka in view of Collins and Nelson.
R10: Claim 18 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Tonozuka in view of Collins and Fawcett and Nelson.
R11: Claims 29, 30 and 33 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Tonozuka in view of Fawcett.
R12: Claim 35 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Tonozuka in view of Collins, Fawcett and Sandifer.

We will review the rejections in the order argued and as grouped in
the Briefs. We have only considered those arguments that Appellants
actually raised in the Briefs. Arguments Appellants could have made but
chose not to make in the Briefs have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2009-008349
Application 10/934,064

8
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).
The issue specifically turns on whether Tonozuka teaches the analysis and
identification elements as claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a system and method for sensing and reporting
anomalies in an Automatic Data Collection (ADC) device, such as a
handheld bar code reader, and for restoring a malfunctioning one of those
devices to working order. (Spec. 3, middle).
2. The Tonozuka reference teaches monitoring, detecting and reporting an
abnormality in a process to supervise personnel in a remote location, both
to a central monitoring facility and to an engineer carrying a laptop. (col.
5, 18 to 68).

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
Appeal 2009-008349
Application 10/934,064

9
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)(“Jung argues
that the Board gave improper deference to the examiner’s rejection by
requiring Jung to ‘identif[y] a reversible error’ by the examiner, which
improperly shifted the burden of proving patentability onto Jung. Decision
at 11. This is a hollow argument, because, as discussed above, the examiner
established a prima facie case of anticipation and the burden was properly
shifted to Jung to rebut it. . . . ‘[R]eversible error’ means that the applicant
must identify to the Board what the examiner did wrong . . . .”).

“It is common sense that familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007).

“A court must ask whether the improvement is more than the
predictable use of prior-art elements according to their established
functions.” Id. at 401.
“A factfinder should be aware, of course, of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” Id. at 421.
References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
Appeal 2009-008349
Application 10/934,064

10
claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed, and,
(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Furthermore, “‘there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

“A reference does not fail as an anticipation merely because it does
not contain a description of the subject matter of the appealed claim in
ipsissimis verbis.” In re May, 574 F.2d 1082, 1090 (CCPA 1978) (citing In
re Schaumann, 572 F.2d 312, 317 (CCPA 1978).

Appeal 2009-008349
Application 10/934,064

11
ANALYSIS

Arguments with respect to the rejection
of claims 1, 4 and 9
under 35 U.S.C. § 102(b) [R1]

The Examiner has rejected the noted claims for being anticipated by
Tonozuka. Appellants emphasize claim 1’s limitation in relevant part
quoting, “Independent claim 1 recites, inter alia, ‘a diagnostic analysis unit
that analyzes the received performance data and identifies an anomaly
associated with the reportedly anomalous element.’ (Emphasis added.).”
(App. Br. 11, middle). Appellants demur to the rejection, contending that
Tonozuka “merely discloses that a supervisor is notified of an occurrence of
an abnormality, which is not the same detail as Appellants’ claim 1.” (App.
Br. 12, top). Appellants argue that the analysis and identification of the
anomaly appears to be missing from Tonozuka.
The Examiner applies Tonozuka to the claim in detail in his rejection.
(Ans. 4). The identification step is further amplified in his response to
arguments:
An identification of an anomaly is disclosed by
Tonozuka in column 5 lines 10-66. As taught by
Tonozuka, upon the occurrence and detecting of an
abnormality (anomaly) by a monitor unit, a
notification (identification) of the abnormality is
passed on to supervising personnel in order to
recover from the abnormality. The “notification”
as taught by Tonozuka is synonymous with the
“identification” as presented in claim 1. There are
no specifics in the claim regarding what exactly is
being identified, how identification is being
undertaken, or the contents of the identification.
(Ans. 21, bottom).
Appeal 2009-008349
Application 10/934,064

12
We have reviewed in detail the Tonozuka reference and the
Examiner’s application of the reference to the Appellants’ claim. We find
that Tonozuka teaches the claimed analysis and identification of the
abnormality, simply describing the activity with different words. (See In re
May, cited above.) Specifically, the claimed identification of the anomaly is
fairly read on the reference’s detection of the abnormality.
We find Appellants’ remaining arguments on this rejection fully
answered by the Examiner. We do not find error in the rejection on this
point.

Arguments with respect to the rejection
of claims 11 and 19
under 35 U.S.C. § 103(a) [R5]

The Examiner has rejected the noted claims for being obvious over
Tonozuka in view of Collins and further in view of Fawcett. Appellants
demur, first arguing that the rejection has not been fully explained in
sufficient detail to establish a prima facie case and to provide the Appellants
with a fair opportunity to meet the Examiner’s objection. (App. Br. 14,
middle; 15, bottom).
We have reviewed the rejection as presented by the Examiner in the
Final Rejection of 11/15/07 (page 9) and as repeated in the Examiner’s
Answer. (Ans. 9). We find a line by line recitation of the application of the
reference to the claims well within the guidelines for a rejection as expressed
by our supervising court. (See Jung, 637 F.3d at 1366.) The Examiner has
provided the column and line reference for each of the Appellants’ limitation
and explained how the art was applied to the claims.
Appeal 2009-008349
Application 10/934,064

13
We have further considered Appellants’ arguments concerning the
vagueness of the term “peripheral process” used by the Examiner. (App. Br.
15-17). The Examiner has explained how the term was used and how it was
discussed in correspondence and interviews with the Appellants. (Ans. 22,
23). We see no error in the Examiner’s use of this term and in the rejection.
The Appellants contend that, with regard to claims 11 and 19, the
Examiner has applied the art using only the Appellants’ own teaching,
engaging in hindsight reconstruction of the claimed invention. (App. Br. 16,
bottom). As all of the references are from the same field of endeavor,
remote monitoring of processes and equipment, we find that the combining
of the references falls well within the guidelines. (See KSR Int’l v. Teleflex
Inc and In re Clay, both cited above.).
We have considered Appellants’ remaining arguments concerning
claims 11 and 19 but find them sufficiently answered by the Examiner with
reference to the combined teachings of Tonozuka, Collins and Fawcett.
(Ans. 25, 26). We find the arguments concerning the identifying of an
anomaly to have been answered above and those concerning the
reconfiguration unit to be answered fully by the Examiner. (Ans. 26).
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown that the Examiner erred in rejecting the claims
on appeal.

Appeal 2009-008349
Application 10/934,064

14
DECISION
We affirm the Examiner’s rejections R1 to R12 of claims 1 to 5, 7 to
14, 17 to 21, 29 to 31, 33, and 35 to 37.

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).

AFFIRMED

peb