SOCKET MOBILE, INC.

Patent Trials and Appeals Board

Mar 2, 2020

15134384 - (D) (P.T.A.B. Mar. 2, 2020)

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.
15/134,384 04/21/2016 Micheal L. GIFFORD 15820-703.301 5621
21971 7590 03/02/2020
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
MIKELS, MATTHEW
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
03/02/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHEAL L. GIFFORD

Appeal 2019-002561
Application 15/134,384
Technology Center 2800
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 13–23. Appeal Br. 5, 9. Claim 1 is
cancelled, and claims 2–12 are withdrawn from consideration. Id. at 5. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Socket
Mobile, Inc.” Appeal Br. 3.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed October 13, 2018, “Appeal Br.”), the Reply
Brief (filed February 10, 2019, “Reply Br.”), the Examiner’s Answer
Appeal 2019-002561
Application 15/134,384

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CLAIMED SUBJECT MATTER
The claims relate to an optical beam transformer, i.e., aimer, that uses
a smart phone’s flash illumination, controlled by a smart phone software
application, to provide an aimer beam to assist in properly orienting and
distancing the smart phone camera with respect to a printed barcode. Spec.
¶ 10.
CLAIMS
Claims 13 and 18 are independent. An understanding of the invention
can be derived from a reading of illustrative claim 18, which is reproduced
below with some formatting added:
18. A method comprising:
transforming an optical beam via an optical beam
transformer;
maintaining alignment of the optical beam transformer to
a removable enclosure usable to enclose a smart phone;
wherein the smart phone is a standard smart phone not
having any barcode imaging application-specific hardware, is
enabled to support general purpose mobile applications, and has
a built-in flash and a built-in digital camera enabled to support
general purpose photography;
wherein the smart phone is enabled to execute a barcode
software application to control the built-in flash, to control the
built-in digital camera to capture an image of a barcode, to
convert the captured barcode image to an internal form, and to
store the internal form in a data file;

(mailed December 10, 2018, “Ans.”), the Final Office Action (mailed
September 18, 2017, “Final”), and the Specification (filed April 21, 2016,
“Spec.”) for their respective details.

Appeal 2019-002561
Application 15/134,384

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wherein the maintaining alignment is via at least one
surface shaped to be compatible with removable attachment of
the optical beam transformer to an external surface of the
removable enclosure and formed to retain the optical beam
transformer in alignment with an aperture of the built-in flash
when the smart phone is inserted in the removable enclosure;
wherein the optical beam transformer has an optical input
to receive light from the built-in flash aperture and an optical
output to provide a transformation of the received light into an
aiming pattern, the aiming pattern enabling a user to distance
the smart phone in accordance with optimum speed focusing of
the built-in digital camera; and
wherein the aiming pattern assisted distancing enables
the user to more rapidly process the barcode than possible with
the smart phone alone.
Appeal Br. 20 (Claims App.).

REFERENCES
Name Reference Date
Jovanovski et al.
(Jovanovski)
US 2012/0224083 A1 Sept. 6, 2012
Drake et al.
(Drake)
US 2007/0280677 A1 Dec. 6, 2007

REJECTION
Claims 13–23 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Jovanovski and Drake. Final 2–5.

Appeal 2019-002561
Application 15/134,384

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ANALYSIS
CLAIMS 13–23:
OBVIOUSNESS OVER JOVANOVSKI AND DRAKE.
The Examiner relies on Jovanovski for teaching all of claim 13 except
“wherein the maintaining alignment is via at least one surface shaped to be
compatible with removable attachment of the optical beam transformer to an
external surface of the smart phone and formed to retain the optical beam
transformer in alignment with an aperture of the built-in flash,” for which
the Examiner cites Drake. Final 2–4 (citing Jovanovski ¶¶ 21, 22, 24, 43, 50;
Drake Figs. 1, 3); see also id. at 5 (additionally citing Jovanovski ¶¶ 40, 58);
Ans. 5–7 (additionally citing Jovanovski ¶¶ 45, 46, Fig. 3).
Appellant disputes the Examiner’s findings (Appeal Br. 10–15; Reply
Br. 2–3), including those for claim 13’s requirement of a smart phone that
“is a standard smart phone not having any barcode imaging application-
specific hardware, is enabled to support general purpose mobile applications,
and has a built-in flash and a built-in digital camera enabled to support
general purpose photography.” See, e.g., Appeal Br. 13–15; Reply Br. 3.
The burden is on the Examiner to set forth a prima facie case of
obviousness. See, e.g., In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002).
We determine the Examiner’s evidence does not adequately support a prima
facie case of obviousness. “[O]bviousness requires a suggestion of all
limitations in a claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
In particular, the Examiner has not provided adequate evidence that
the cited prior art teaches or suggests a smartphone that is “a standard smart
phone not having any barcode imaging application-specific hardware.”
Appeal 2019-002561
Application 15/134,384

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Appeal Br. 13; Reply Br. 3. To the contrary, Jovanovski describes its indicia
reading device (“smartphone”) as containing an imaging module (“barcode
imaging application-specific hardware”) for reading indicia (“barcode”) on a
substrate. See, e.g., Jovanovski ¶¶ 17–23, Fig. 1 (showing smartphone
including imaging module 299), Fig. 2 (showing the hardware components
of imaging module 299), Fig. 3 (showing how imaging module 299 may be
used to capture image of barcode). The cited disclosures of Drake, which
pertain to a portable photographic lens, similarly do not teach or suggest the
disputed limitation. See Final Act. 4–5 (citing Drake Figs. 1, 3). Nor does
the Examiner provide any persuasive reasoning or rationale to fill the gaps
of the rejection.
Therefore, on this record, we determine the Examiner failed to
establish a prima facie case of obviousness over Jovanovski and Drake for
independent claim 13. Accordingly, we decline to sustain the Examiner’s
rejection of independent claim 13. We likewise decline to sustain the
Examiner’s rejection of independent claim 18, which recites a similar
limitation for which the Examiner relies on the same deficient findings and
reasoning. See Final 2–4. For similar reasons, we also decline to sustain the
Examiner’s § 103 rejections of dependent claims 14–17 and 19–23, for
which the Examiner fails to provide any finding or reasoning that cures the
above deficiency. See id. at 4–5.

CONCLUSION
We reverse the Examiner’s rejection of claims 13–23 under pre-AIA
35 U.S.C. § 103(a).

Appeal 2019-002561
Application 15/134,384

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In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
13–23 103(a) Jovanovski,
Drake
13–23

REVERSED