Ex Parte Slutsky et al

Board of Patent Appeals and Interferences

Nov 6, 2007

10034072 (B.P.A.I. Nov. 6, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL SLUTSKY, DANIEL B. DE LAZARI,
JOSEPH CABANA, and DOMINICK SALVATO
____________

Appeal 2007-2272
Application 10/034,072
Technology Center 2800
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Decided: November 6, 2007
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Before MAHSHID D. SAADAT, JAY P. LUCAS, and JOHN A. JEFFERY,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
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Application 10/034,072

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STATEMENT OF THE CASE
Appellants invented a portable data collection device, such as a bar
code reader, that can support multiple functions. Specifically, the portable
device includes an Application Specific Integrated Circuit (ASIC) that can
communicate with multiple image capture devices coupled to the portable
device, such as an imager and a laser scanner.1 Claim 1 is illustrative:
1. A portable electronic device comprising:

an imager coupled to the portable electronic device;

a laser scanner coupled to the portable electronic device; and

an application specific integrated circuit (ASIC) comprising circuitry
for communicating with the imager and laser scanner.

The Examiner relies on the following prior art references to show
unpatentability:
Callaghan US 6,058,304 May 2, 2000
Kunert US 6,109,528 Aug. 29, 2000
Meier US 6,561,428 B2 May 13, 2003
(filed Sep. 17, 2001)

1. Claims 1-7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Callaghan.
2. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Callaghan and Kunert.
3. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Callaghan and Meier.

1 See generally Specification 4:1 – 5:3.
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Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs2 and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

OPINION
The Anticipation Rejection
We first consider the Examiner’s rejection of claims 1-7 under
35 U.S.C. § 102(b) as being anticipated by Callaghan. Anticipation is
established only when a single prior art reference discloses, expressly or
under the principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore and Associates, Inc.
v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).
The Examiner has indicated how the claimed invention is deemed to
be fully met by the disclosure of Callaghan (Answer 4-5). Regarding
independent claim 1, Appellants argue that Callaghan does not disclose
coupling (1) an imager, and (2) a laser scanner to a portable electronic
device as claimed. According to Appellants, Callaghan does not connect
two distinct image capture devices to a portable unit, but merely connects a

2 We refer to the most recent Appeal Brief filed June 5, 2006 and the Reply
Brief filed Oct. 23, 2006 throughout this opinion.
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single image capture device (i.e., a laser scanning assembly) to the portable
unit (Br. 3-5; Reply Br. 3-5).
The Examiner notes that the ASIC processor of Callaghan interfaces
with scan head 14 – a device which comprises a light source and a reflected
light sensor. Although the Examiner acknowledges that these elements are
integrated in the scan head, the Examiner nonetheless notes that claim 1 does
not require separate and independent devices. As such, the Examiner
contends, claim 1 does not preclude integrating separate devices as
component parts of another device (Answer 7-8).
It is undisputed that Callaghan discloses coupling a laser scanner to
the portable unit.3 The issue, therefore, is whether Callaghan also discloses
coupling an imager to the portable electronic device. For the reasons that
follow, we find that Callaghan does.
Callaghan discloses a data entry system including a handheld data
entry unit 10 in the form of a pen. The pen includes a reading head 14
suitable for reading bar codes (e.g., a red or infrared optical reading head
such as a laser diode) (Callaghan, col. 6, ll. 28-42; Fig. 1A, 1B). See also
id., col. 10, ll. 1-2 (noting that the head comprises a red or infrared light
source and a light sensor). Moreover, as shown in Figure 3, the pen
comprises a processor 74 (e.g., an application specific integrated circuit
(ASIC)) that communicates with a number of devices including, among
other things, the reading head 14, a display 20, and an optical interface 86
(Callaghan, col. 8, ll. 36-42; Fig. 3).

3 See Br. 4-5 (“[Callaghan] describes a single image capture device
connected to the portable unit, a laser scanning assembly comprised of an
infra-red light source and a light sensor. This would be the equivalent of the
laser scanner recited in the claim.”); see also Reply Br. 3-4 (same).
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Even if we assume that the reading head 14 solely corresponds to the
“laser scanner” as Appellants contend, we find that the pen’s display
functionality fully meets an “imager” in view of the scope and breadth of the
term. Significantly, claim 1 merely recites the term “imager” without any
further limitation, and Appellants have not specifically defined the term in
the specification. Accordingly, absent a specific definition, we construe the
term with its plain meaning (i.e., the ordinary and customary meaning given
to the term by those of ordinary skill in the art). See Brookhill-Wilk 1, LLC.
v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003); see also
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).
While Appellants indicate that “imagers” are comparable to image
capture devices, no such limitation appears in the claim. In our view, the
scope and breadth of the term “imager” is simply not limited to image
capture devices, but can include other devices, such as devices that facilitate
displaying images.
In this regard, we note that Callaghan’s display screen 20 comprises a
two-dimensional array of pixels which can be selectively activated to display
a wide range of displayable items (Callaghan, col. 6, ll. 51-62).4 The display
screen 20 is connected to a display interface 80 which, in turn, is connected
to bus 84. Thus, the display interface responds to display instructions from
the processor 74 to drive the display in a conventional manner (Callaghan,

4 In addition, a low-cost version can be configured to display only a
predetermined range of characters and symbols (Callaghan, col. 6, ll. 57-62).
In a preferred embodiment, an LCD screen is used (Callaghan, col. 7, ll. 1-
6).
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col. 8, ll. 51-54; Fig. 3).5 Such functionality that facilitates displaying
images, in our view, fully meets an “imager” in light of the term’s ordinary
and customary meaning.6 Therefore, not only does Callaghan couple a laser
scanner to the portable electronic device, but also an imager as well – an
imager that likewise communicates with the ASIC.
For the foregoing reasons, we find that Callaghan discloses all
limitations of independent claim 1.7 Accordingly, we will sustain the
Examiner’s rejection of that claim as well as dependent claims 2-7 which
fall with claim 1.

5 Commensurate display functionality is provided in connection with other
embodiments of Callaghan. See, e.g., Callaghan, at col. 15, ll. 4-5 and Fig.
10 (ASIC controlling display interface functions); see also id., at col. 13, ll.
1-21 and Fig. 8 (processor communicating with touch screen 90 via interface
88).
6 See, e.g., US 2003/0043139 A1 (Engler), at ¶ 0020 (noting that “imagers”
facilitate displaying images on LCD displays by receiving clocking and
configuration signals from a display controller ASIC); see also id. (noting
that the imagers essentially convert light intensity modulation information
contained in an analog drive signal to light energy emitted to an LCD
display); id. at Figs. 2 and 4 (showing connection between ASIC 16, imagers
26, and display 28); US 2003/0020724 (O’Donnell), at ¶¶ 0004 (noting that
each set of common and variable plate electrodes of a cell or pixel in a
display forms an “imager”); id. at ¶ 0029 (noting that the display preferably
comprises at least one “imager” for red, green, and blue, where the imager is
driven by the display driver).
7 In reaching this conclusion, we note in passing that even if the “imager” is
in the form of an image capture device, the scope and breadth of claim 1
would still read on various conventional configurations involving portable
computing devices with attached peripherals. For example, claim 1 is fully
met by a laptop computer (portable electronic device) with an ASIC that
communicates with an imager (digital camera) and a laser scanner (flatbed
or sheetfed scanner) coupled to the computer.
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The Obviousness Rejections
Regarding the Examiner’s rejections under 35 U.S.C. § 103(a) of (1)
claims 8 and 9 as unpatentable over Callaghan and Kunert, and (2) claims 10
and 11 as unpatentable over Callaghan and Meier, we find that the Examiner
has established at least a prima facie case of obviousness of those claims that
Appellants have not persuasively rebutted. Specifically, the Examiner has
(1) pointed out the teachings of Callaghan, (2) noted the perceived
differences between Callaghan and the claimed invention, and (3)
reasonably indicated how and why Callaghan would have been modified to
arrive at the claimed invention (Answer 6-7).
Once the Examiner has satisfied the burden of presenting a prima
facie case of obviousness, the burden then shifts to Appellants to present
evidence or arguments that persuasively rebut the Examiner's prima facie
case. Appellants did not persuasively rebut the Examiner's prima facie case
of obviousness, but merely noted that the addition of Kunert and Meier
respectively fails to cure the deficiencies of Callaghan in connection with
independent claim 1, namely reciting two distinct image capture devices
coupled to the portable electronic device (Br. 6-7; Reply Br. 6-7). For the
reasons previously discussed, however, we find this argument unpersuasive.
The obviousness rejections are therefore sustained.

DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-11 is
affirmed.
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Application 10/034,072

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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).

AFFIRMED

KIS

Himanshu S. Amin
Amin & Turocy, L.L.P.
24th Floor, National City Center
1900 East Ninth Street
Cleveland, OH 44114