Ex Parte DeFore et al

Patent Trial and Appeal BoardJan 11, 2019

13174912 (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/174,912 07/01/2011 Daniel Dean DeFore 52835 7590 01/15/2019 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 South Seventh Street Suite 2700 MINNEAPOLIS, MN 55402-1683 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 02968.0439US01 1638 EXAMINER DOTTIN, DARRYL V ART UNIT PAPER NUMBER 2676 NOTIFICATION DATE DELIVERY MODE 01/15/2019 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): PTOMail@hsml.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL DEAN DEFORE, SCOTT ROBERT HAGSTROM, CHRISTOPHE JACQUES MARIE BIEHLMANN, and PETER WILLIAM THORSEN Appeal2018-005765 Application 13/174,912 1 Technology Center 2600 Before ALLEN R. MacDONALD, NABEEL U. KHAN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the Final Rejection of claims 1-15 and 21-26, all of the pending claims on appeal. 2 See Appeal Br. 1. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Appellants state that the real party in interest is ENTRUST DAT A CARD CORPORATION. See Appeal Br. 2. 2 Claims 16-20 are cancelled. See Appeal Br. 8. Appeal 2018-005765 Application 13/174,912 STATEMENT OF THE CASE Invention Appellants' invention relates to a customized personalization document printer and "a user interface for [the] ... personalization document printer" Spec. 2: 1-2. 3 Exemplary Claims Claims 1, 10, 15, and 23 are independent. Claims 1 and 15 are illustrative and are reproduced below with the dispositive disputed limitation ( the "disputed limitation") in each claim italicized: 1. A customized personalization document printer for an instant issuance system that allows a customized personalization document for a document holder to be issued while the document holder is present, the printer comprising: a personalization component that performs a printing function on a customized personalization document; a network component that is connectable to a server computer of the instant issuance system, wherein the server computer is separate from and external to the customized personalization document printer; a memory component that stores a remote user interface (RUI); a processor that runs the RUI; a display and an input device that allow a user to view and interact with the RUI, 3 Our Decision refers to: (1) Appellants' Specification filed July 1, 2011 ("Spec."); (2) the Final Office Action mailed May 26, 2017 ("Final Act."); (3) the Appeal Brief filed October 30, 2017 and amended Appeal Brief filed December 5, 2017 ("Appeal Br."); (4) the Examiner's Answer mailed March 12, 2018 ("Ans."); and (5) the Reply Brief filed May 14, 2018 ("Reply Br."). 2 Appeal 2018-005765 Application 13/174,912 wherein the R UI allows a user to interact with and control printer functionality of the printer and allows a user to interact with and control server functionality of the server computer including at least one of controlling R UI configuration, and locking and unlocking access to supplies and/or personalization documents in the personalization document printer, wherein the server computer is separate from and external to the customized personalization document printer. 15. A non-transitory computer readable storage medium of a customized personalization document printer storing one or more programs, the one or more programs comprising instructions, which when executed by a processor of the customized personalization document printer, cause the processor to run a remote user interface (RUI) that allows a user, via a display and an input device of the customized personalization document printer, to control and interact with an instant issuance system, the RUI comprising: a printer functionality component that allows a user to control a display of customized personalization document supply information, control printer option settings, control progress information for a current or pending print job, and control a print preview for displaying an image of the customized personalization document with image data and personalization account data; and a server functionality component that allows a user to update a server that is separate from and external to the customized personalization document printer so as to control user authentication to use the printer, control print queues of the printer, control print worliflows of the printer, control R UI configuration, control remote access to printer user functions and a print preview displaying an image of the customized personalization document with image data and personalization account data, control storage and rendering of data to be placed on a customized personalization document, lock and unlock access to supplies and/or personalization documents in the 3 Appeal 2018-005765 Application 13/174,912 personalization document printer, access administrative functions, and provide quality assurance functions. Appeal Br., Claims App., 3, 7-8. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal includes: Forest Lenz et al. ("Lenz") Yokoyama Cameron et al. ("Cameron") Burbank et al. ("Burbank") us 5,367,362 US 2003/0090712 Al US 2006/0232811 Al US 2009/0219574 Al US 2009/0222671 Al REJECTIONS Nov. 22, 1994 May 15, 2003 Oct. 19, 2006 Sep.3,2009 Sep.3,2009 Claims 1-7, 10-14, and 21-23 stand rejected under 35 U.S.C. Â§ 103 (a) as being unpatentable over Cameron, Yokoyama, and Burbank. Final Act. 3-17. Claims 8 and 9 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Cameron, Yokoyama, Burbank, and Forest. Final Act. 17-19. Claim 15 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Cameron and Lenz. Final Act. 20-25. Claim 25 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Cameron, Yokoyama, and Burbank. Final Act. 26-27. Claims 24 and 26 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Cameron, Yokoyama, Burbank, and Lenz. Final Act. 27- 29. 4 Appeal 2018-005765 Application 13/174,912 Our review in this appeal is limited only to the above rejections and issues raised by Appellants. Arguments not made are waived. See 37 C.F.R. Â§ 4I.37(c)(1)(iv)(2015). CONTENTIONS AND ANALYSIS Rejection Under 35 US.C. Â§ 103(a) of Claim 1 In support of the rejection of claim 1, the Examiner finds Burbank's discussion of using locking part 40 to lock medical device 10 teaches or suggests the disputed limitation. Final Act. 9-11 ( citing Burbank Fig. 1, ,r,r 24, 25). Specifically, the Examiner relies on locking part 40 to teach the claimed remote user interface ("RUI"), which allows for "locking and unlocking access to supplies ... in the personalization document printer" because Burbank discloses that locking part 40 may include "a user interface or component interface" for locking the medical device 10. See Final Act. 10 ( quoting Burbank ,r 25); see Burbank Fig. 1. Appellants argue Burbank does not teach a RUI as claimed because claim 1 requires that the RUI allow a user to control server functionality including "locking and unlocking access to supplies and/or personalization documents in the personalization document printer." Specifically, Appellants argue: Burbank merely teaches a locking or lockable part 40 attached to the medical device 10. Nowhere does Burbank teach, suggest or contemplate that a server computer (including the information server 55) has functionality that includes locking and unlocking access to the medical device 10. Burbank also does not teach, suggest or contemplate that the medical device 10 includes a RUI that allows a user to interact with and control functionality of a server computer (including the information 5 Appeal 2018-005765 Application 13/174,912 server 55) including locking and unlocking access to the medical device via the locking or lockable part 40. Appeal Br. 12. In response, the Examiner clarifies that "[ t ]he Office action relies on the lockable/locking part 40 (See Fig. 1 of Burbank above) [to teach] ... the server computer of the claims," rather than on Burbank's server 55. Ans. 31. Appellants argue the Examiner's finding in the Answer is erroneous because the "locking part 40 is not a server computer. Rather, the movable or stationary locking or lockable part 40 is a part that is locked or a device, such as an actuator, that actually effects locking ... includ[ing] solenoids, simple mechanical locks, software state machines with locked states." Reply Br. 2. We find Appellants' arguments persuasive. The Examiner does not, on the record before us, show that Burbank's locking device 40 teaches or suggests both the claimed server and the claimed RUI. See Final Act. 9--11; Ans. 29--31. Rather, with respect to the locking part 40/lockable part 30, Burbank discloses, Examples of a lockable part 30 include an access panel, hatch, door or other mechanical security component or mechanical interface such as a slot for receiving consumable components; a component controller, power supply, or a crucial component such as a pump or other prime mover; a user interface or component interface. Burbank ,r 25. Even for Burbank's locking part 40 embodiment that includes a user interface to perform the locking function, the Examiner does not explain, nor is it apparent, how the locking part teaches both the claimed server and the claimed user interface. See Final Act. 9--11; Ans. 31. 6 Appeal 2018-005765 Application 13/174,912 Accordingly, the Examiner has not shown how Burbank, alone or in combination with the other cited references, teaches or suggests the disputed limitation. Because we agree with at least one of the dispositive arguments advanced by Appellants for claim 1, we need not reach the merits of Appellants' other arguments. We, therefore, do not sustain the Examiner's 35 U.S.C. Â§103(a) rejection of claim 1. We also do not sustain the rejection of independent claims 10 and 23, which recite limitations commensurate in scope with claim 1. We, likewise, do not sustain the rejections of dependent claims 2-9, 11-14, 21, 22, and 24--26. Rejection Under 35 USCÂ§ 103(a) of Claim 15 In support of the rejection of claim 15, the Examiner finds the combination of Cameron and Lenz teaches or suggests the disputed limitation. Final Act. 22-25 ( citing Cameron Fig. 4, Step 421, ,r,r 31, 34; Lenz Fig. 3, ,r,r 39, 40). The Examiner notes that "Cameron fails to explicitly teach ... the RUI comprising: a server functionality component that allows a user to ... lock and unlock access to supplies and/or personalization documents in the personalization document printer" (Ans. 23), but finds Lenz teaches this limitation (Ans. 24--25 ( citing Lenz Fig. 3, i139). Appellants argue "[t]he combination of Cameron and Lenz does not teach or suggest these features," including, among other features, the lock and unlock feature. Appeal Br. 16. In particular, Appellants argue "Lenz does not overcome these deficiencies of Cameron ... [because] Fig. 3 [ of Lenz] merely shows different hardware and software layers in a personal computer and identification card printer. Also, paragraph [0039] of Lenz 7 Appeal 2018-005765 Application 13/174,912 teaches that a personal computer 152 is used to create an identification card using applications 158 and 160 and/or browser 162." Appeal Br. 17. In response, the "Examiner references the Final Office Action dated 05/26/2017" and discusses the motivation for combining the references, without specifically clarifying the findings in the Final Action or responding to Appellants' arguments. Ans. 35. We find Appellants' arguments persuasive. The Examiner does not, on the record before us, show that Cameron or Lenz, alone or in combination, teaches a RUI that "allows a user to update a server that is separate from and external to the customized personalization document printer so as to ... lock and unlock access to supplies and/or personalization documents in the personalization document printer," as recited in claim 15. See Final Act. 20-25; Ans. 35. Nor does the Examiner explain why these specific limitations would have been obvious over the cited combination. Accordingly, the Examiner has not shown how the combination of Cameron and Lenz teaches or suggests all of the limitations of claim 15. Because we agree with at least one of the dispositive arguments advanced by Appellants for claim 15, we need not reach the merits of Appellants' other arguments. We, therefore, do not sustain the Examiner's 35 U.S.C. Â§ 103(a) rejection of claim 15. DECISION We reverse the Examiner's rejections of claims 1-15 and 21-26. REVERSED 8