Ex Parte Watkins

Patent Trial and Appeal Board

Oct 16, 2013

10818725 (P.T.A.B. Oct. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte REX D. WATKINS
__________

Appeal 2011-006672
Application 10/818,725
Technology Center 2600
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an input
device for a barcode label/tag printer. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellant identifies the Real Party in Interest as Paxar Americas,
Inc., a subsidiary of the Avery Dennison Corporation (see App. Br.
1).
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Statement of the Case
Background
The input device of the present invention includes two
modes, a first mode for operating the input device in a
conventional manner, for example, as a standard keyboard
with no data processing capabilities and a second mode for
operating the input device in accordance with an application
program to provide, for example, an intelligent keyboard
that is capable of data manipulation and/or data collection

(Spec. 2, ll. 24-30).
The Claims
Claims 23-35 are on appeal. The claims have not been argued
separately and therefore stand or fall together with independent claim 23.
37 C.F.R. § 41.37(c)(1)(iv). Claim 23 reads as follows:
23. An input device for a barcode label/tag printer, the input device
being operable in at least two modes and comprising:
a housing;
a plurality of keys on a surface of the housing;
a display;
at least one communication interface configured to receive and
transmit data to a the barcode label/tag printer and for receiving power
from the barcode label/tag printer to power the input device;
a flash memory configured to store a firmware of the input
device and an application program of the input device, wherein the
flash memory includes a restricted area configured to store the
firmware and an unrestricted area configured to store the application
program;
a random access memory, wherein when the application
program is stored in the unrestricted area of the flash memory, the
application program is loaded into the random access memory by a
routine stored in the restricted area of the flash memory so that the
application program is executed from the random access memory; and
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a processor configured to operate the input device in a first
mode to control the operation of the input device without an
application program to pass data representing actuated keys to the
communication interface for the barcode label/tag printer, wherein in
the first mode the input device is controlled at least in part by a set of
inputs received from the barcode label/tag printer, and for operating
the input device in a second mode to control the operation of the input
device in accordance with an application program,
wherein in the second mode, the input device controls at least in
part the operation of the barcode label/tag printer.

The issues
A. The Examiner rejected claims 23-26, 28, 31, and 32 under 35 U.S.C. §
103(a) as obvious over Fukumoto,2 Vaananen,3 Takasumi,4 and Johnson5
(Ans. 3-8).
B. The Examiner rejected claim 27 under 35 U.S.C. § 103(a) as obvious
over Fukumoto, Vaananen, Takasumi, Johnson, Copeland6 and Engdahl7
(Ans. 8-9).
C. The Examiner rejected claims 29 and 30 under 35 U.S.C. § 103(a) as
obvious over Fukumoto, Vaananen, Takasumi, Johnson, and Christopher8
(Ans. 9).
D. The Examiner rejected claim 33 under 35 U.S.C. § 103(a) as obvious
over Fukumoto, Vaananen, Takasumi, Johnson, and Petteruti9 (Ans. 10).

2 Fukumoto et al., 5,047,615, issued Sep. 10, 1991.
3 Vaananen et al., 2004/0185894 A1, published Sep. 23, 2004.
4 Takasumi et al., 2004/0041913 A1, published Mar. 4, 2004.
5 Johnson, K., 2004/0008361 A1, published Jan. 15, 2004.
6 Copeland et al., 5,650,327, issued Jul. 22, 1997.
7 Tomi Engdahl, Get power out of PC RS-232 port, (1997-2000);
http://www.tkk.fi/misc/electronics/circuits/rspower.html
8 Christopher et al., 5,805,779, issued Sep. 8, 1998.
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E. The Examiner rejected claims 34 and 35 under 35 U.S.C. § 103(a) as
obvious over Fukumoto, Vaananen, Takasumi, Johnson, and Dull10 (Ans.
10-11).
A. 35 U.S.C. § 103(a) over Fukumoto, Vaananen, Takasumi, and
Johnson
The Examiner finds that Fukumoto teaches an “input device for a
barcode label/tag printer . . . the input device being operable in at least two
modes” (Ans. 3-4). The Examiner finds that Fukumoto teaches
wherein in the first mode the input device is controlled at
least in part by a set of inputs received from the barcode
label/tag printer [col 3: lines 57-62 (the computer 1/input
device received error input from CPU 40 of the barcode
printer; and data transfer from the computer 1 to the barcode
printer is also controlled by CPU 40.)], and for operating the
input device in a second mode to control the operation of the
input device in accordance with a program

(id. at 4).
The Examiner finds that “[o]perating an input device with an
application program to control the operation of a printer or other external
devices has been well practiced in the art as prescribed by Vaananen” (id. at
5). The Examiner finds it obvious to “implement an input device for
operating with a label/tag printer in both intelligent and non-intelligent
modes (involving or without involving an application program) for the
benefit of providing more user options including communication with
various multi-media types” (id.).

9 Petteruti et al., 6,010,257, issued Jan. 4, 2000.
10 Dull, D., US 5,676,475, issued Oct. 14, 1997.
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The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Fukumoto, Vaananen, Takasumi,
and Johnson render obvious a barcode printer “input device being operable
in at least two modes” as required by claim 23?
Findings of Fact
1. The Specification teaches “a first mode for operating the input
device in a conventional manner, for example, as a standard keyboard with
no data processing capabilities” (Spec. 2, ll. 25-27).
2. The Specification teaches that the device “when operating in
the first mode can receive inputs from the printer to cause the display of the
input device to depict the information received from the printer” (Spec. 3, ll.
28-30).
3. The Specification teaches that the “displayed information may
provide, for example, a prompt to a user to enter data and wherein the input
device passes data entered for example, via actuation of one or more keys, to
the printer” (Spec. 4, ll. 1-3).
4. Fukumoto teaches “a bar code printing or reading apparatus
comprising a portable terminal and controller unit having a bar code reader
connected to a side thereof and a hand-held bar code printer supporting the
portable terminal and controller unit on the front surface of the hand-held
bar code printer” (Fukumoto, col. 1, ll. 43-49).
5. Fukumoto teaches that the “the bar code printer 3 is also
provided with a CPU 40. The CPU 40 converts data from the portable
computer 1 to bar code signals, transmits error signals to the computer 1,
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controls data transfer from the computer 1 to the printer 3” (Fukumoto, col.
3, ll. 57-61).
6. Fukumoto teaches that “[w]hen a function key is depressed at
the step “n9”, an operational mode corresponding to the function key is set.
Some of the operation modes, are a bar code printing mode, a graph printing
mode, a character printing mode” (Fukumoto, col. 4, ll. 48-53).
7. Fukumoto teaches that the “CPU 40 is connected to a CGROM
[character generator read only memory] 41 for producing signals
representing characters to be printed” (Fukumoto, col. 3, ll. 62-64).
8. Fukumoto teaches that if “a character printing is to be made, the
data from the CGROM 41 are used to be printed” (Fukumoto, col. 5, ll. 11-
13).
9. Fukumoto teaches that “although the interface unit 11 is used to
couple the host computer 12 to the portable computer in the embodiment
shown in FIG. 8, the host computer 12 can also be coupled to the portable
computer 1 only through the bar code printer 3” (Fukumoto, col, 5, ll. 59-
63).
10. Fukumoto teaches that
When a command signal from the portable computer 1 is
received, a corresponding data communication is made at a
step “n25”. At a step “n26”, the kind of print data is
determined. If a bar code printing is required, the print data
are computed to be converted to bar code signals, at a step
“n27”, for each kind of the bar code. At steps “n29” and
“n30”, bar code printing is performed to produce bar code
prints, with the number of the prints being specified by the
data received.

(Fukumoto, col. 4, l. 68 to col. 5, l. 9.)
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11. Figure 7 of Fukumoto is reproduced below:

“FIG. 7 shows a flow chart for depicting the operation of the bar code
printer” (Fukumoto, col. 2, ll. 24-25).
12. Vaananen teaches that the “user can also select that she/he
wishes to use a printer with an application for printing information. The
application can be, for example, a word processor. When the user selects a
printing command, the application begins to activate a printer” (Vaananen
0018).
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Principles of Law
Claim terms are interpreted using the broadest reasonable
interpretation in light of the Specification. See, e.g., In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.”).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
Claim interpretation is at the heart of patent examination because
before a claim is properly interpreted, its scope cannot be compared to the
prior art. In this case, the issue is whether Fukumoto teaches a device which
comprises a
first mode to control the operation of the input device
without an application program to pass data representing
actuated keys to the communication interface for the
barcode label/tag printer, wherein in the first mode the input
device is controlled at least in part by a set of inputs
received from the barcode label/tag printer,

as recited in Claim 23.
During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
art in the light of the Specification. The Specification teaches “a first mode
for operating the input device in a conventional manner, for example, as a
standard keyboard with no data processing capabilities” (Spec. 2, ll. 25-27;
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FF 1). The Specification explains that the device “when operating in the
first mode can receive inputs from the printer to cause the display of the
input device to depict the information received from the printer” (Spec. 3, ll.
28-30; FF 2). The Specification teaches that the “displayed information may
provide, for example, a prompt to a user to enter data and wherein the input
device passes data entered for example, via actuation of one or more keys, to
the printer” (Spec. 4, ll. 1-3; FF 3).
Thus, in light of the Specification, we interpret the “first mode” as
directly transmitting the data of actuated keys on the input device to the
printer, where the input device also accepts some control by inputs from the
printer (FF 1-3).
Fukumoto teaches a mode where “[w]hen a function key is depressed
at the step “n9”, an operational mode corresponding to the function key is
set. Some of the operation modes, are . . . a character printing mode”
(Fukumoto, col. 4, ll. 48-53; FF 6). Fukumoto teaches that the “CPU 40 is
connected to a CGROM [character generator read only memory] 41 for
producing signals representing characters to be printed” (Fukumoto, col. 3,
ll. 62-64; FF 7). Fukumoto teaches that if “a character printing is to be
made, the data from the CGROM 41 are used to be printed” (Fukumoto, col.
5, ll. 11-13; FF 8).
Thus, Fukumoto teaches a “character printing mode” where
depression of a function key causes the printer’s CPU 40 to obtain characters
from the CGROM 41 which are directly sent to the printer without the use of
any application program (FF 6-8).
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In addition, Fukumoto teaches that the “the bar code printer 3 is also
provided with a CPU 40. The CPU 40 converts data from the portable
computer 1 to bar code signals, transmits error signals to the computer 1,
controls data transfer from the computer 1 to the printer 3” (Fukumoto, col.
3, ll. 57-61; FF 5).
This teaching reasonably satisfies the requirement of claim 23 for
“wherein in the first mode the input device is controlled at least in part by a
set of inputs received from the barcode label/tag printer” since the error
signals transmitted by the CPU 40 of the bar code printer partially control
the printing performed by the computer (FF 5).
Appellant contends that “nowhere does Fukumoto ever teach or
suggest that the hand held computer 1 operates in two modes where one of
the modes is essentially a non-intelligent mode, i.e., for merely passing
keystrokes to the printer, and in said first mode the printer 3 at least partially
controls the hand held computer 1” (App. Br. 9).
We are not persuaded. As discussed above, we agree with the
Examiner that the Fukumoto teaches a “non-intelligent” mode satisfying the
requirements of claim 23, where the character printing mode constitutes a
first mode which passes the data representing the actuated keys on the input
device to the printer (FF 6-8) where the printer partially controls the input
device, at least to the extent of transmitting error signals to the input device
and controlling the data transfer between the input device and the printer (FF
5).
Appellant responds that “regarding column 3, line 57-64, while this
passage may arguably indicate that the printer 3 at least partially controls the
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hand held computer 1, there is no indication that this control is executed
while the computer is in a first or non-intelligent mode of operation” (App.
Br. 9).
While we agree that Fukumoto teaches the partial control of the hand
held computer by printer 3 at column 3, lines 57-64, we note that Fukumoto
expressly teaches the use of the CPU 40 and CGROM 41 to produce the
signals for printing characters, where no specific application program is
identified as required for this process (FF 6-8). Consequently, we find that
the Examiner has the more reasonable position, consistent with the teaching
of Fukumoto, that the character printing mode is in a first or “non-
intelligent” mode of operation as required by claim 23.
Appellant contends that “Vaananen does not disclose two distinct
operational modes where one of the modes is essentially a non-intelligent
mode, i.e., for merely passing keystrokes between the devices 1 and 3”
(App. Br. 10).
We agree that Vaananen does not teach a “non-intelligent mode,” but
the Examiner does not rely upon Vaananen for the “non-intelligent mode”
(Ans. 4-5). The Examiner relies upon Vaananen to teach the use of the
second mode or “application program” control mode (Ans. 4-5; FF 12). It is
the combination of Fukumoto and Vaananen which renders the claim
obvious. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
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references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”)
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Fukumoto, Vaananen, Takasumi, and Johnson render obvious a barcode
printer “input device being operable in at least two modes” as required by
claim 23.
B. –E. 35 U.S.C. § 103(a)
Appellant does not separately argue the claims in these obviousness
rejections. Having affirmed the obviousness rejection of Claim 23 over
Fukumoto, Vaananen, Takasumi, and Johnson, we also find that the further
combinations with Copeland, Engdahl, Christopher, Petteruti, and Dull
render the remaining claims obvious for the reasons given by the Examiner
(see Ans. 8-11).
SUMMARY
In summary, we affirm the rejection of claim 23 under 35 U.S.C. §
103(a) as obvious over Fukumoto, Vaananen, Takasumi, and Johnson.
Pursuant to 37 C.F.R. § 41.37(c)(1), we also affirm the rejection of claims
24-26, 28, 31, and 32, as these claims were not argued separately.
We affirm the rejection of claim 27 under 35 U.S.C. § 103(a) as
obvious over Fukumoto, Vaananen, Takasumi, Johnson, Copeland, and
Engdahl.
We affirm the rejection of claims 29 and 30 under 35 U.S.C. § 103(a)
as obvious over Fukumoto, Vaananen, Takasumi, Johnson, and Christopher.
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We affirm the rejection of claim 33 under 35 U.S.C. § 103(a) as
obvious over Fukumoto, Vaananen, Takasumi, Johnson, and Petteruti.
We affirm the rejection of claims 34 and 35 under 35 U.S.C. § 103(a)
as obvious over Fukumoto, Vaananen, Takasumi, Johnson, and Dull.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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