Ex Parte Ramberg et alDownload PDFBoard of Patent Appeals and InterferencesSep 8, 201110934064 (B.P.A.I. Sep. 8, 2011) Copy Citation 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 Copy with citationCopy as parenthetical citation