Ex Parte King et al

Patent Trial and Appeal Board

Feb 26, 2019

14164033 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/164,033 01/24/2014 Martin T. King
26192 7590 02/28/2019
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
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.
16113-5183003 9736
EXAMINER
SYED,FARHANM
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN T. KING, DALE L. GROVER,
CLIFFORD A. KUSHLER, and JAMES Q. STAFFORD-FRASER
Appeal2017-005045
Application 14/164,033
Technology Center 2100
Before JUSTIN BUSCH, JAMES W. DEJMEK, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 17-36, constituting all claims pending in the
current application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2017-005045
Application 14/164,033
STATEMENT OF THE CASE
Appellants' invention is directed to establishing an interactive
environment for rendered documents. Spec. ,r 16. In particular, Appellants
seek to associate print documents with their digital counterparts. Id. ,r 18.
Claims 17 and 18, reproduced below, are exemplary of the claimed subject
matter:
1 7. A method performed by data processing apparatus, the method
compnsmg:
receiving (i) a phrase captured from a print version of a
document, and (ii) an indication that the phrase was captured from the
print version of the document;
identifying the document using the phrase;
determining that a request to access supplemental electronic
materials associated with the document is implicit in the phrase;
identifying the supplemental electronic materials associated
with the document in response to determining that the request to
access supplemental electronic materials is implicit in the phrase;
determining that the request satisfies a set of one or more access
rules for the identified supplemental electronic materials based on the
indication that the phrase was captured from the print version of the
document; and
providing the identified supplemental electronic materials for
output in response to determining that the request satisfies the set of
access rules.
18. The method of claim 17, further comprising:
requesting a scan of a particular location of the print version of
the document to receive access to the identified supplemental
electronic materials; and
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Application 14/164,033
receiving data specifying scanned content;
wherein determining that the request satisfies the set of one or
more access rules further comprises determining that the scanned
content matches content located at the particular location.
REJECTIONS 1
Claims 17-36 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being obvious over the combination of Schena et al. (US 2001/0001854 Al;
published May 24, 2001) ("Schena") and Mahoney et al. (US 2003/0179908
Al; published Sept. 25, 2003) ("Mahoney"). Final Act. 5-19.
ANALYSIS
Issue 1: Did the Examiner err in finding the combination of Schena
and Mahoney teaches or suggests "determining that the request satisfies a set
of one or more access rules for the identified supplemental electronic
materials based on the indication that the phrase was captured from the print
version of the document," as recited in independent claim 17 and similarly
recited in independent claims 25 and 33?
The Examiner relies on Schena to teach or suggest the disputed
limitation. Final Act. 6 ( citing Schena ,r 39); Adv. Act. 2 ( citing Schena
,r,r 16, 33, 39, 50); Ans. 2-5 (citing Schena ,r,r 16, 33, 39, 50). Appellants
argue Schena's "general discussion of needing 'proper identification' if 'the
1 In the Final Action, the Examiner rejected claims 17-36 on the grounds of
nonstatutory double patenting as being unpatentable over claims 1-13 of
U.S. Patent No. 8,799,303 and claims 1-7 of U.S. Patent No. 7,707,039.
Final Act. 4. Appellants filed a terminal disclaimer on April 14, 2016. As
such, these rejections are not on appeal.
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Application 14/164,033
user is requesting access to personal or confidential information, or to
information for which a fee is payable, or is initiating a commercial
transaction'" does not teach or suggest the disputed limitation. App. Br. 4.
Appellants further argue "Schena's discussion of 'link information' that
'may be alphanumeric sequence printed in form of the machine-readable
code' and that 'may be assigned to the printed medium' in paragraph [0033]
does not teach or suggest using an 'indication that [a] phrase was captured
from [a] print version of [a] document' to determine 'that [a] request
satisfies a set of one or more access rules."' Id. (brackets in original).
According to Appellants, "simply because 'machine-readable code' may be
assigned to 'printed medium' does not mean that an 'indication that [a]
phrase was captured from [a] print version of [a] document' is ever received
by a component of Schena, much less used by Schena to determine 'that [a]
request satisfies a set of one or more access rules."' Id. at 4--5 (brackets in
original).
We are not persuaded by Appellants' arguments and agree with the
Examiner's findings and conclusions. See Final Act. 6; Ans. 2-5. Schena is
generally directed to "bridging the gap between the virtual multimedia-based
Internet world and the physical world of tangible object media, such as print
media." Schena, Abstract. Schena's methods include, inter alia, scanning a
machine-readable code from a printed medium in order to ultimately select a
multimedia sequence or initiate another desired transaction. Id., Abstract,
,r 30. The machine-readable code may contain link information, as well as
other information, corresponding to provider information. Id. ,r,r 31, 36.
The link information may be an alphanumeric sequence, assigned by the
provider, and printed in the form of machine-readable code. Id. ,r 33. The
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Application 14/164,033
link information, along with optional user input information, is used by a
portal server to select a multimedia sequence or another desired transaction
corresponding to the link and user input information. Id., Abstract, ,r,r 38,
39. The user input information depends on the nature of the scan. Id. ,r 39.
If the user is requesting freely-available information, no more personal
information may be required. Id. However, if the user is requesting access
to personal or confidential information, then proper identification, such as,
for example, a PIN, may be needed before the selected multimedia sequence
or desired transaction is permitted to proceed. Id.
Schena describes an embodiment relating to a commercial transaction.
Id. ,r,r 16, 97, 98. In this embodiment, there is a written record of a
transaction, such as an invoice, receipt, or other record, that includes a
machine-readable code that identifies the transaction and a database
containing records or details of the transaction. Id. ,r,r 16, 97. A user scans
the machine-readable code using a scanner, which stores the machine-
readable code in memory and may also obtain and store user input
information. Id. The scanner sends the machine-readable code and user
identifying information, such as a PIN, to the portal server, which receives
the information and permits the user to access the records of the transaction
in the database. Id. These records may include, for example, warranty
registration and maintenance contract registration details "so that the user,
simply by scanning in a single code 10 applied or attached to the product or
on the associated paperwork, and appending personal details if those are not
already stored in the scanner 100, can download the purchase details for
accounting purposes, register for warranty support," etc. Id. ,r 98.
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Appellants have not sufficiently explained why the foregoing
disclosure fails to teach or suggest the disputed limitation. Specifically,
Schena teaches "determining that the request satisfies a set of one or more
access rules for the identified supplemental electronic materials" ( e.g.,
transaction records associated with the transaction are accessible via PIN)
"based on the indication that the phrase was captured from the print version
of the document" (machine-readable code on the paperwork associated with
the transaction).
Accordingly, we are not persuaded the Examiner erred. We,
therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of
independent claims 17, 25, and 33. For the same reasons, we sustain the
Examiner's 35 U.S.C. § 103(a) rejection of dependent claims 19-24, 27-32,
35, and 36, which were not separately argued.
Issue 2: Did the Examiner err in finding the combination of Schena
and Mahoney teaches or suggests the limitations in dependent claims 18, 26,
and 34?
The Examiner relies on Schena to teach or suggest the limitations in
dependent claims 18, 26, and 34. Final Act. 14--15 (citing Schena ,r,r 31, 33,
55); Ans. 5---6 ( citing Schena ,r,r 31, 33, 55). Appellants argue "presenting
'information asking whether the person is interested in advertisements,
transactions, or both' is not the same as 'requesting a scan of a particular
location of the print version of the document' and 'determining that the
scanned content matches content located at the particular location."' App.
Br. 6. Appellants further argue the "'location information' provided by a
scanner and used as a 'location of the user' is not the same as a 'particular
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location of the print version of the document' from which a scan was
requested." Reply Br. 3.
We are not persuaded by Appellants' arguments. As discussed above,
Schena discloses receiving machine-readable code and user input
information. Schena, Abstract, ,r,r 30, 31, 33, 36. Schena describes that
location may be included in the user input information sent to the portal
server. Id. ,r,r 53, 55. Because the user is performing the scan (see Schena,
Abstract, ,r,r 55, 98), it is reasonable that the user is in the same location as
the print version of the document. As discussed above, Schena discloses
that the user input information may be used to select the multimedia
sequence or transaction. Id. ,r 39. Schena describes that with the location
information, "the portable server may supply information about suppliers
near to the indicated location of the scanner." Id. ,r 54. Schena states that
"[i]f the scanner 100 and receiver 180 are mobile, and the scanner provides
location information, then the possibilities for customized information are
almost limitless." Id. ,r 55.
Appellants have not sufficiently explained why the foregoing
disclosure fails to teach or suggest the disputed limitation. Specifically,
Schena teaches "requesting a scan of a particular location of the print
version of the document to receive access to the identified supplemental
electronic materials" ( e.g., machine-readable code and user input
information, including location) "receiving data specifying scanned content"
(receiving machine-readable code and user input information) "wherein
determining that the request satisfies the set of one or more access rules
further comprises determining that the scanned content matches content
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located at the particular location" ( e.g., supplying information pertinent to,
or near, the indicated location).
Accordingly, we are not persuaded the Examiner erred. We,
therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of dependent
claims 18, 26, and 34.
DECISION
We affirm the Examiner's 35 U.S.C. § 103(a) rejection of claims
17-36.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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