Ex Parte Einman et al

Patent Trial and Appeal BoardMar 11, 2019

13626821 (P.T.A.B. Mar. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/626,821 09/25/2012 Ian Jeffrey Einman 26389 7590 03/13/2019 CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC 1201 Third Avenue Suite 3600 Seattle, WA 98101 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. SEGS139704 9821 EXAMINER ST CYR, DANIEL ART UNIT PAPER NUMBER 2876 NOTIFICATION DATE DELIVERY MODE 03/13/2019 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): efiling@cojk.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IAN JEFFREY EINMAN and HAN BA DANG Appeal2018-003480 Application 13/626,821 1 Technology Center 2800 JEFFREY T. SMITH, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the final rejection of claims 1-28. We have jurisdiction under 35 U.S.C. Â§ 6(b). 1 The real party in interest and Appellant is Seagull Scientific, Inc. (App. Br. 3). Appeal2018-003480 Application 13/626,821 The claimed invention relates to a computer implemented method and computer-readable storage media having stored thereon computer- executable instructions configured to cause a computer to perform the steps of the method. Independent claims 1, 9, and 14 are representative of the appealed subject matter. Independent claim 1 is reproduced below: 1. A computer-implemented method comprising: by a printer driver residing on a computing device that is separate from a printing device, receiving first data configured to cause the printing device to print on a surface of a smart card and second data configured to cause a smart card encoder to encode the smart card with computer-readable data; by the printer driver residing on the computing device that is separate from the printing device, generating an integrated data stream comprising the first data and the second data; and by a command coordinator, extracting a printer command and a smart card encoder command from the integrated data stream. Claims Appendix to App. Br. Appellant (see App. Br., generally) requests review of the following rejections: 2 I. Claims 1-5, 9, 12, 14--17, 19-21, 23-24 under 35 U.S.C. Â§ I03(a) as unpatentable over Bradley (US 5,771,071, issued June 23, 1998) in view of Lenz (US 2003/0090712 Al, published May 15, 2003); II. Claims 6-8 and 25-28 under 35 U.S.C. Â§ I03(a) as unpatentable over Bradley, Lenz, and Kubota (US 2008/0156883 Al, published July 3, 2008). 2 The rejections of claim 10, 11, and 13 under 35 U. S. C. Â§ 103 have been withdrawn. (Ans. 2). 2 Appeal2018-003480 Application 13/626,821 The complete statement of the rejections on appeal appear in the Final Office Action. (Final Act. 2---6). OPINION After review of the respective positions provided by Appellant and the Examiner, we REVERSE the appealed rejections. Our reasons follow: The Examiner found Bradley discloses a computing device comprising a printer driver for coupling multiple data sources onto a printed document. The Examiner determined "a printer driver or a print processor is a piece of software that convert the data to be printed to the form specific to a printer, its purpose is to allow applications to do printing without being aware of the technical details of the printer model." (Final Act. 2 ( emphasis omitted)). The Examiner found Bradley discloses a computing device comprising the software residing therein (printer driver) for receiving first data configured to cause the printing device to print on a surface of a card (bar coded/magnetic stripe cards) and second data configured to cause the magnetic card encoder to encode the magnetic card with computer-readable data. (Final Act. 2; Bradley col. 19, 1. 17 to col. 20, 1. 54). The Examiner found Bradley teaches a bar code unit and magnetic stripe unit for incorporating data onto the identification cards, but fail to disclose that the card is a smart card. (Final Act. 3). The Examiner found Lenz teaches an identification card printer comprising a host device that generates first data configured to cause a printing device to print on a surface of a smart card and second data configured to cause a smart card encoder to encode the smart card with computer-readable data. (Final Act. 3 Fig. 2, ,r,r 17-19). The Examiner found Lenz also teaches a language monitor to translate the data 3 Appeal2018-003480 Application 13/626,821 into a form specific to the printer as required by independent claim 14. (Final Act. 4; Lenz ,r 37). The Examiner determined it would have been obvious to incorporate a smart card encoding unit of Lenz into the system of Bradley for printing smart cards. (Final Act. 3). Appellant argues the Examiner erred in rejecting independent claims 1, 9, and 14 because Bradley does not have an explicit or inherent disclosure of the claimed printer driver functionality. (App. Br. 14; Reply Br. 2-3). Appellant argues the Examiner has provided no plausible explanation as to why Bradley's printer driver, if present, would necessarily function as claimed by Appellant, and not in some other way that is more akin to traditional printer drivers. (App. Br. 14; Reply Br. 2-3). Appellant argues Lenz' s intended purpose is to provide a printer with additional software to avoid the use of printer drivers on the host PC. (App. Br. 16-17). Based upon Appellant's arguments, the dispositive issue in this appeal 1s: Did the Examiner err in determining that the combination of Bradley and Lenz describes or suggests a computer-implemented method comprising printer drivers that receives first data configured to cause a printing device to print on a surface of a smart card and second data configured to cause a smart card encoder to encode the smart card with computer-readable data as required by independent claims 1, 9, and 14?3 During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "[R]ejections on obviousness grounds cannot 3 We limit our discussion to the independent claims 1, 9, and 14. 4 Appeal2018-003480 Application 13/626,821 be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (alteration in original) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) ("[T]he analysis that 'should be made explicit' refers not to the teachings in the prior art of a motivation to combine, but to the court's analysis."). We agree with Appellant that there is no indication that the system in Bradley would operate by generating the claimed integrated data stream and there is no evidence that any printer driver in Lenz would necessarily include the claimed functionality. (App. Br. 15-17; Lenz ,r 16). The Examiner has failed to adequately explain or identify evidence that establishes that the printer driver in Bradley would necessarily generate the claimed integrated data stream. Thus, the Examiner has not provided evidence that supports the obviousness rejection. For the foregoing reasons, we determine that the Examiner's conclusion of obviousness is not supported by facts. "Where the legal conclusion [ of obviousness] is not supported by facts it cannot stand." In re Warner, 379 F.2d 1011, 1017 (CCP A 1967). Accordingly, we reverse the Examiner's rejection of independent claims 1, 9, and 14 for the reasons presented by Appellant and given above. We likewise reverse the Examiner's decision to reject dependent claims 6-8 and 25-28 since these rejections are premised on the Examiner's unsupported combination of Bradley and Lenz. We need not reach whether the Examiner's reliance on other reference in addition to Bradley and Lenz 5 Appeal2018-003480 Application 13/626,821 for the rejection of the dependent claims was supported by the evidence of record, because the base combination of Bradley and Lenz cannot stand. DECISION The rejections under 35 U.S.C. Â§ 103(a) of claims 1-28 are reversed. REVERSED 6