Ex Parte Hoffman et al

Patent Trial and Appeal BoardMay 27, 2014

11683710 (P.T.A.B. May. 27, 2014)

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. 11/683,710 03/08/2007 Ted M. Hoffman F12.12-0170 1383 93288 7590 05/28/2014 HID Global c/o Westman Champlin & Koehler, P.A 900 Second Avenue South, Suite 1400 Minneapolis, MN 55402 EXAMINER CULLER, JILL E ART UNIT PAPER NUMBER 2854 MAIL DATE DELIVERY MODE 05/28/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte TED M. HOFFMAN and JAMES R. CEDAR ________________ Appeal 2012-005057 Application 11/683,710 Technology Center 2800 ________________ Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and MARK NAGUMO, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-005057 Application 11/683,710 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a credential manufacturing device. Claim 1 is illustrative: 1. A credential manufacturing device comprising: an injection-molded unitary frame formed of plastic comprising: a rear wall; a pair of side walls extending from opposing sides of the rear wall; a top wall extending from a top side of the rear wall and coupled to the side walls; a bottom wall extending from a bottom side of the rear wall and coupled to the side walls, wherein the rear wall, the side walls, the top wall and the bottom wall define an interior cavity and an opening to the interior cavity; a first device registration member; and a second device registration member; a first processing component comprising a first frame registration member configured to cooperate with the first device registration member to place the first processing component in a known position relative to the unitary frame and the second device registration member; and a second processing component comprising a second frame registration member configured to cooperate with the second device registration member to place the second processing component in a known position relative to the unitary frame and the first processing component. The References Weeks US 4,869,455 Sep. 26, 1989 Yoshida US 2005/0095049 A1 May 5, 2005 Appeal 2012-005057 Application 11/683,710 3 The Rejection Claims 1-20 stand rejected under 35 U.S.C. § 103 over Weeks in view of Yoshida. OPINION We reverse the rejection. We need to address only the independent claims (1 and 17). Weeks discloses a printer (10) comprising a frame member (22) which is of unitary construction (preferably molded plastic), includes 4 walls (36, 38, 40, 42) and a plate portion (28), and mounts therein an electric motor (24) (col. 5, ll. 4, 17-22, 31-34, 47-50). For a disclosure of the Appellants’ claim 1’s first and second processing components and the Appellants’ claim 17’s print and transfer ribbon cartridges the Examiner relies upon Yoshida (Ans. 6, 10-11). Yoshida discloses a printer (100) comprising an upper rotary shaft (16A) (which the Examiner relies upon as corresponding to the Appellants’ first device registration member), a left side rotary shaft (31A) (which the Examiner relies upon as corresponding to the Appellants’ second device registration member), a first detachable unit (U1) (which the Examiner relies upon as corresponding to the Appellants’ first processing component and print ribbon cartridge), a circular recess portion (9A) (which the Examiner relies upon as corresponding to the Appellants’ first frame registration member), a second detachable unit (U2) (which the Examiner relies upon as corresponding to the Appellants’ second processing component and transfer ribbon cartridge) and a circular recess portion (19A) Appeal 2012-005057 Application 11/683,710 4 (which the Examiner relies upon as corresponding to the Appellants’ second frame registration member) (Ans. 6, 10-11). The Examiner argues that it would have been obvious to one of ordinary skill in the art to modify Weeks’ frame member (22) to accommodate Yoshida’s rotary shafts (16A, 31A) and first and second detachable units (U1, U2) “to better protect and support the components in the apparatus” (Ans. 6, 11). Establishing a prima facie case of obviousness of an invention comprising a combination of known elements requires “an apparent reason to combine the known elements in the fashion claimed . . . .” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Yoshida supports the rotary shafts (16A, 31A) and first and second detachable units (U1, U2) on a vertical supporting plate (2) at the rear side of a chassis (1) (¶ 0024; Fig. 3). The Examiner has not established that Yoshida would have indicated to one of ordinary skill in the art a need to better protect or support those components. Moreover, the Examiner has not established that Weeks’s disclosure of a frame member (22) containing an electrical motor (24) (col. 5, ll. 17-19; Fig. 5) would have indicated to one of ordinary skill in the art a need to better protect or support Yoshida’s printer components relied upon by the Examiner. Thus, the Examiner has not provided the required apparent reason for combining Weeks’ and Yoshida’s relied-upon components to arrive at the Appellants’ claimed device. Appeal 2012-005057 Application 11/683,710 5 DECISION/ORDER The rejection of claims 1-20 under 35 U.S.C. § 103 over Weeks in view of Yoshida is reversed. It is ordered that the Examiner’s decision is reversed. REVERSED tc