Ex parte Tomioka

Board of Patent Appeals and Interferences

Mar 16, 1999

08179779 (B.P.A.I. Mar. 16, 1999)

Application for patent filed January 10, 1994. 1
According to the appellant, the application is a continuation
of Application No. 07/770,713, filed October 3, 1991, now
abandoned, which is a continuation of Application No.
07/362,402, filed July 5, 1989, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MAKOTO TOMIOKA
____________
Appeal No. 96-1480
Application No. 08/179,7791
____________
ON BRIEF
____________
Before HAIRSTON, JERRY SMITH and KRASS, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 6
through 28. In the parent application, the Board in a
Appeal No. 96-1480
Application No. 08/179,779
2
decision (93-1876) dated November 11, 1993, sustained the
obviousness rejection of claims 6 through 22.
Appeal No. 96-1480
Application No. 08/179,779
3
Claim 6 on appeal is as follows:
6. A data code support, such as a card or sheet
comprising a surface having at least one predetermined unit of
surface area delineated thereon, said at least one
predetermined unit of surface area being divided into four
regions having similar dimensions, each region of said four
regions constituting a unitary recording area and portraying a
different binary notation commencing with the lowest order of
binary notations and thereafter successive binary notations,
said lowest order of binary notations being depicted by a
unitary recorded area or region being shaded to represent the
lowest order of a binary notation value of a group of selected
binary notation values, the remainder of said regions
selectively being shaded to depict any one of a predetermined
number of selected binary notation values.
Claim 6 in the parent application is reproduced as
follows:
6. A data code support, such as a card or sheet
comprising a surface having at least one unit of surface area
delineated thereon, said at least one unit of surface area
being divided into at least two regions having similar
dimensions, each region of said at least two regions
portraying a different column of binary notation commencing
with the lowest order column of binary notation and thereafter
the successive columns of binary notation, identical regions
of said at least one unit representing the same column, at
least one region of said at least one unit being shaded to
represent one binary notation value of a group of selected
binary notation values, each binary notation value of said
group of selected binary notation values having a
predetermined number and complementary arrangement of said
shaded regions.
Claim 23 was added in this application, and it reads as
follows:
23. A data code recognition method, said method
comprising the steps of:
Appeal No. 96-1480
Application No. 08/179,779
4
defining a data code support having a surface with at
least one predetermined unit of surface area delineated
thereon, said at least one predetermined unit of surface area
being divided into four equal regions having similar
dimensions, each region of said four regions constituting a
unitary recording area and portraying a different binary
notation commencing with the lowest order of binary notation
and thereafter successive binary notations, said lowest order
of binary notations being depicted by a unitary recording area
or region being shaded to represent the lowest order of a
binary notation value of a group of selected binary notation
values, the remainder of said regions selectively being shaded
to depict any one of a predetermined number of selected
notation values;
placing an apparatus for reading a data code on said
defined data code support adjacent said defined data code
support;
directing light signals onto said data code support from
a light source of said apparatus for reading the data code of
said data code support;
receiving the reflected or transmitted light signals from
said light source directed onto said data code support by said
apparatus for reading the data code;
simultaneous with said receiving step, corresponding said
light signals received by said apparatus for each shaded
region being read by said apparatus as 1, and for each region
being not so shaded as 0, such that said data code on said
data code support is read directly into digital signals.
In response to the examiner’s statement (final rejection,
page 2) that “Claims 6-28 are rejected as set forth
previously,” appellant states (Brief, page 2) that “it is not
clear how new Claims 23 through 28 are rejected ‘as set forth
Appeal No. 96-1480
Application No. 08/179,779
5
previously’ since no specific rejection relative to these
claims has ever been made of record by the Examiner with
respect to any prior art ‘as set forth previously’.” In a
summation of the status of the claims, appellant also states
(Brief, page 3) that “[t]he very general rejection set forth
with respect to Claims 6 through 28 both in the Office Action
of July 1, 1994, and February 1, 1995, does not meet the
burden the CAFC has placed upon the Patent Office in order to
state a 35 U.S.C. 103 rejection.”
In view of the amendments made to claims 6 through 22,
and the newly added claims 23 through 28, we must agree with
appellant that the examiner has not established a prima facie
case of obviousness. As indicated supra, the claims on appeal
are not the claims that were presented in the parent
application. It follows, therefore, that the claims on appeal
can not be rejected “as set forth previously” (final
rejection, page 2) because the claims on appeal are not “the
same as previously adjudicated by the Appellant Forum [sic,
Board] in paper no. 22" (Answer, page 2). If the claims on
appeal are rejected “as set forth previously,” then does the
Appeal No. 96-1480
Application No. 08/179,779
The rejections of claims 6 through 22 under the second2
paragraph of 35 U.S.C. § 112, and 35 U.S.C. § 102(b) were
reversed.
6
appeal also include the two rejections that the Board2
reversed in the prior appeal?
In addition to the lack of a positive statement of the
rejection(s), the Examiner’s Answer lacks a response to
appellant’s extensive analysis of the claimed invention and
the applied prior art under Graham v. John Deere, 383 U.S. 1,
148 USPQ 459 (1966) (Brief, pages 8 through 20).
In summary, a prima facie case of unpatentability of the
claimed invention has not been established by the examiner.
The examiner’s rejection(s), if any, of the claimed invention
are reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
Appeal No. 96-1480
Application No. 08/179,779
7
) INTERFERENCES
)
)
)
JERRY SMITH )
Administrative Patent Judge )
jrg
Appeal No. 96-1480
Application No. 08/179,779
8
Mr. Remy J. VanOphem
REMY J. VANOPHEM, P.C.
755 W. Big Beaver
Suite 1313
Troy, Michigan 48084-4903
JENINE GILLIS
Appeal No. 96-1480

Serial No. 08/179,779
Judge HAIRSTON
Judge JERRY SMITH

Judge KRASS
Received: 03/09/99
Typed: 03/09/99

DECISION: REVERSED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Remanded: Yes No
Brief or Heard
Group Art Unit: 2514
Index Sheet-2901 Rejection(s): ___________
Acts 2: ____
Palm: ____
Mailed: Updated Monthly Disk (FOIA): ____
Updated Monthly Report: ___
Appeal No. 96-1480
Application No. 08/179,779
10