Ex Parte Sikorski

Board of Patent Appeals and Interferences

May 22, 2009

10748992 (B.P.A.I. May. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte STEVEN MAURICE SIKORSKI
________________

Appeal 2009-1371
Application 10/748,992
Technology Center 2600
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Decided:1 May 22, 2009
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Before ALLEN R. MACDONALD, MAHSHID D. SAADAT, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).

Appeal 2009-1371
Application 10/748,992

2

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 18-37. We have jurisdiction under 35 U.S.C. § 6(b).
We Vacate and Enter a New Ground of Rejection.

STATEMENT OF THE CASE
According to Appellant, the invention relates to a mobile scanning
terminal device with automatic display inversion and/or rotation
capabilities.2 After and/or during rotation of the mobile scanning terminal
device, a display can be concurrently inverted and/or rotated in order to
present the display appropriately (e.g., right-side up) with respect to the
user.3
Exemplary Claim
18. A mobile scanning terminal system, comprising:

an image capture component that captures optical signals related to a
product, the capture corresponds to inversion or rotation of the system;

an image analysis component that analyzes and determines product
identity based at least in part upon the optical signals; and

a display that displays information associated with the product and
inverts or rotates the information to an optimal viewing orientation,

2 See Spec. 4:7-10.
3 See Spec. 8:1-3.

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regardless of the orientation of the system, thereby efficiently relaying data
to the user.

Prior Art
The Examiner relies on the following prior art references to show
unpatentability:
Hoon US 2002/0186878 A1 Dec. 12, 2002
Melaku US 2003/0144793 A1 Jul. 21, 2003
Cardno US 2004/0036712 A1 Feb. 26, 2004
(filed May 23, 2003)

Browning US 6,707,581 B1 Mar. 16, 2004
(filed Jun. 27, 2000)

Manchester US 2004/0201595 A1 Oct. 14, 2004
(filed Apr. 11, 2003)

We rely on the following prior art reference to show
unpatentability:

Cheatle US 7,305,146 B2 Dec. 4, 2007
(filed May 20, 2002)

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Examiner's Rejections
1. The Examiner rejected claims 18-21, 23, 24, and 29-37 under
35 U.S.C. § 103(a) as unpatentable over Browning and Manchester.
2. The Examiner rejected claims 22 and 25 under
35 U.S.C. § 103(a) as unpatentable over Browning, Manchester and Hoon.
3. The Examiner rejected claims 26-28 under 35 U.S.C. § 103(a)
as unpatentable over Browning, Manchester, Melaku, and Cardno.

ISSUE
The issue before us is whether the prior art teaches or suggests image
capture that corresponds to inversion or rotation of the system.

FINDINGS OF FACT
1. The Examiner found Browning teaches a mobile device, as
Browning discloses "[t]he software can retrieve information from a remote
source or can be entirely incorporated within the handheld scanner" (Ans. 3).
2.A. The Examiner also found that Browning discloses an analysis
component, as Browning, with reference to Figure 3, discloses "the scan
head (16), decoder, and other integrated circuits are controlled by means of a
microprocessor that is programmed with instructions to carry out the method
of Browning" (Ans. 4).
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2.B. Further, the Examiner found Browning determines product
identity, as Browning discloses (1) "[t]he handheld scanner can work in
conjunction with a separate communications device to provide access to a
remote source and retrieve information that is identified by the scan image,"
and (2) "[i]n a playback mode, the retrieved information is displayed to the
user immediately upon receipt" (Ans. 4).
2.C. The Examiner found that "[t]his information would contain
product information and location associated with the barcode (i.e. image)
obtained by the information-retrieval agent either from a remote source,
such as a personal computer or within the handheld scanner itself."
(See Ans. 4-5).
2.D. We also find Browning discloses "[t]he best known type of
scanner in this category is a bar-code scanner, which might be used to obtain
the identification of a product which carries the bar code image, for instance
to provide inventory control and/or pricing information." "In the case of
scanned text, an image of the text can first be presented to an on-board OCR
engine, allowing user display and verification before the information is
provided to the information retrieval software." (See Browning, col. 1, ll.
26-31, 37-41).
3. We find Cheatle discloses (1) "[a]n image 40 is captured using
an optical lens system 42 that focuses the optical image onto an image array
44”; (2) "[t]he image array 44 produces an electronic signal representative of
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the image”; (3) "[a] tilt sensor 46 is also included in the camera system to
provide indication of the angle at which the camera is held and provides a
signal indicative of the rotation of the camera to an angle input 48 of the
image processor 52”; and (4) "[t]he image processor 52 is arranged to
generate one or more crop boundaries according to the above described
method of the present invention to correct the tilt of the original image" (See
Cheatle, col. 6, ll. 39-50).
4. We also find Cheatle discloses "[t]he corrected output may
either be stored on an image recording means 54, such as a hard disk, ram
card or other storage means, or may alternatively or additionally be
displayed on a display means 56 (See Cheatle, col. 6, ll. 50-54).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Discussing the question
of obviousness of claimed subject matter involving a combination of known
elements, KSR Int’l v. Teleflex, Inc., 550 U.S. 398 (2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
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person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida
v. AG Pro, Inc., 425 U.S. 273 (1976) and Anderson's-
Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57
(1969) are illustrative—a court must ask whether the
improvement is more than the predictable use of prior art
elements according to their established functions.

Id. at 417. If the claimed subject matter cannot be fairly characterized as
involving the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” Id. at 418. Such a showing requires:
“‘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)).
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If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Representative claim 18 recites "an image capture component that
captures optical signals related to a product, the capture corresponds to
inversion or rotation of the system" (App. Br. 9).
Appellant contends, according to the invention, an image capture can
correspond to the inversion and/or rotation of the system (App. Br. 6). Thus,
Appellant argues, "if user A sends the captured image B to another entity,
the image B will be seen as right-side up, regardless of the orientation of the
mobile scanning terminal when image B was captured" (App. Br. 6).
With regard to Browning, Appellant argues "Browning relates to a
handheld PDA or the like that scans text or a barcode and converts the
scanned image into alphanumeric text or other computer-readable
information" (App. Br. 5). Appellant contends that the "Examiner concedes
that Browning is silent with respect to orienting images on a display" (Reply
Br. 3). Further, Appellant argues that the "Examiner cites no passage of
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Browning describing altering orientation, and simply concludes that in order
to function, it must be able to perform this task" (App. Br. 6).
Appellant also argues "Browning indicates that the scanner is in fact
quite unable to perform the task of re-orientation" (App. Br. 6). Appellant
contends "Browning allows a user to reject a scanned image if it is read
unreliably because the scanner was skewed relative to a line of printed text"
(emphasis omitted) (App. Br. 6).
Additionally, Appellant argues "Manchester relates to a method for
orienting a display image which includes sensing at least one characteristic
of an object and determining the orientation of the object from at least one of
the sensed characteristics," and fails to make-up for the deficiencies of
Browning (App. Br. 6; Reply Br. 3).
With regard to representative claim 18, we agree with the Examiner
that Browning teaches or suggests (1) a mobile device that corresponds to
the mobile scanning terminal system (See FF 1); (2) an image analysis
component that analyzes and determines product identity based at least in
part upon the optical signals (See FF 2A-2D).
However, we agree with Appellant’s argument that the "Examiner
cites no passage of Browning describing altering orientation, and simply
concludes that in order to function, it must be able to perform this task"
(App. Br. 6). This argument refers to the claim 18 limitation that “the
capture corresponds to inversion or rotation of the system.”
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While we agree with Appellant that Browning does not describe the
“the capture corresponds to inversion or rotation of the system” limitation of
claim 18, we find that Cheatle discloses "[a]n image 40 is captured using an
optical lens system 42 that focuses the optical image onto an image array
44" (See FF 3). Thus, we find Cheatle teaches or suggests "an image
capture component that captures opticals signals," as recited in
representative claim 18. Further, Cheatle discloses (1) "[a] tilt sensor 46 is
also included in the camera system to provide indication of the angle at
which the camera is held and provides a signal indicative of the rotation of
the camera to an angle input 48 of the image processor 52”; (2) "[t]he image
processor 52 is arranged to generate one or more crop boundaries according
to the above described method of the present invention to correct the tilt of
the original image" (See FF 3); and (3) the corrected output may be stored
on an image recording means 54 (See FF 4). We find a skilled artisan would
have recognized that Cheatle teaches or suggests that "the capture
corresponds to inversion or rotation of the system," as recited in
representative claim 18, as the tilt sensor provides an indication of the angle
at which the camera is held.
Accordingly, we find Cheatle discloses "an image capture component
that captures optical signals related to a product, the capture corresponds to
inversion or rotation of the system," as recited in representative claim 18.
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Not only does Cheatle disclose correcting the tilt of the original image
(See FF 3), but Cheatle also discloses displaying the corrected output
(See FF 4). Thus, we find one of ordinary skill in the art would have
recognized that Cheatle teaches or suggests "a display that displays
information associated with the product and inverts or rotates the
information to an optimal viewing orientation, regardless of the orientation
of the system, thereby efficiently relaying data to the user," as recited in
representative claim 18.
Further, we find that it would have been obvious to one of ordinary
skill in the art at the time of the invention to have (1) oriented the handheld
scanner of Browning, which captured product identity information, in a
rotated or inverted manner, as the system of Cheatle was rotated, and (2)
incorporated the image capture component of Cheatle into Browning, such
that the captured image would have corresponded to the inversion or rotation
of the system; and (3) displayed the corrected image.
We find that the prior art Browning, Manchester, and Cheatle
references describe all the limitations required by claim 18. Further, we find
that a skilled artisan would have recognized that the combination of
Browning, Manchester, and Cheatle was obvious, as the combination would
have simply been an arrangement of old elements with each performing the
same function it had been known to perform, and would have yielded no
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more than one would have expected from such an arrangement (See KSR
at 417).
We vacate the Examiner’s conclusion that claims 18-37 are obvious
and, based on the Examiner’s and our findings, we substitute our own
conclusion, that claim 18 is unpatentable under 35 U.S.C. § 103 as being
obvious over Browning, Manchester, and Cheatle.

Remaining Claims
The Board of Patent Appeals and Interferences is a review body,
rather than a place of initial examination. We have made a rejection above
under 37 C.F.R. § 41.50(b). However, we have not reviewed the remaining
claims 19-37 to the extent necessary to determine whether these claims are
unpatentable under 35 U.S.C. § 103. We leave it to the instant Examiner to
determine the appropriateness of any further rejections based thereon.

37 CFR § 41.50(b)
Section 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
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examiner, in which event the proceeding will be remanded to
the examiner….

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record….

DECISION
1. We have vacated the Examiner's rejection of claims 18-37.
2. We have entered a new ground of rejection under
37 C.F.R. § 41.50(b) for claim 18, as failing to recite patentable
subject matter under 35 U.S.C. § 103(a).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). That section provides that “[a] new ground of
rejection … shall not be considered final for judicial review.”
Since we have entered a new rejection, our decision is not a final
agency action.

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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).

VACATED
37 C.F.R. § 41.50(b)

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