Ex Parte Roquemore

Patent Trial and Appeal Board

May 29, 2014

11930308 (P.T.A.B. May. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN PETER ROQUEMORE
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Appeal 2012-003207
Application 11/930,308
Technology Center 2800
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Before CHARLES F. WARREN, ROMULO H. DELMENDO, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge

DECISION ON APPEAL

The Appellant1 seeks our review of a final rejection of claims 1, 3, 5,
6, and 24-30. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
We affirm.

1 The Appellant identifies the real party in interest as “NCR Corporation.”
Appeal Brief filed June 20, 2011 (“App. Br.”) 1.
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BACKGROUND

The invention relates to “a bar code scanner configured to support the
use of external devices as clients of the scanner, including the use of a
portable data storage device . . . , with the portable storage device having
been preprogrammed to communicate data and settings to, and receive data
from, a bar code scanner.” Specification (“Spec.”) 1.
Representative claim 1 is reproduced below:
1. A bar code scanner, comprising:
an internal collection of elements for receiving bar code
data that can be processed to extract bar code information;
internal data processing elements for receiving and
processing information including the bar code information and
information received from and to be communicated to external
devices;
an internal storage medium for storing control software
executable by the data processing elements; and
internal communication interface elements for
communicating with the external devices, including a universal
serial bus (USB) host controller and USB host interface
allowing connection of external client devices to the data
processing elements, the external client devices to be operated
under control of the data processing elements;
wherein the data processing elements automatically
recognize an external storage medium connected to the USB
host interface as a client and copy new control software from
the external storage medium to the internal storage medium.
App. Br. 13 (Claims App’x) (italics added to show disputed claim
limitations).
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The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1, 3, 5, 24, 25, and 27-292 as unpatentable over Fandel3
and Zhan.4
II. Claims 6 and 26 as unpatentable over Fandel, Zhan, and
Collins.5
III. Claim 30 as unpatentable over Fandel, Zhan, and Keppeler.6
Examiner’s Answer entered September 1, 2011 (“Ans.”) 5-11.

DISCUSSION
The Appellant focuses the arguments against Rejections I–III solely
on independent claim 1. App. Br. 7-10. Therefore, for Rejection I, we
confine our discussion to claim 1, which we select as representative pursuant
to 37 C.F.R. § 41.37(c)(1)(vii). Because the Appellant’s arguments against
Rejections II and III are the same as Rejection I, our ruling on the rejection
of claim 1 is dispositive for all claims on appeal.

2 Claim 29 was not included in the heading of this rejection in the Final
Rejection dated January 18, 2011 (‘FOA’). However, upon presenting this
rejection, the Examiner addressed the limitations of claim 29 on page 6, ll.
8-15 of the FOA.
3 U.S. Patent No. 7,232,063 B2, issued June 19, 2007.
4 U.S. Patent Appl. Publ. No. 2008/0244567 A1, published October 2, 2008.
5 U.S. Patent No. 7,093,760 B1, issued August 22, 2006.
6 U.S. Patent Appl. Publ. No. 2006/0224791 A1, published October 5, 2006.

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The Examiner found that Fandel discloses all the elements of the bar
code scanner of claim 1 except that it does not explicitly describe data
processing elements that automatically recognize an external storage
medium connected to the Universal Serial Bus (“USB”) host interface as a
client and copy new control software from the external storage medium to an
internal storage medium. Ans. 5-6. The Examiner found, however, that
Zhan teaches data processing elements that automatically recognize an
external storage medium when connected to a USB host interface, and that
further copy new control software from the external storage medium to an
internal storage medium. Id. at 6 (citations omitted). The Examiner
concluded that in view of the combined teachings of Fandel and Zhan, it
would have been obvious to one of ordinary skill in the art to configure
Fandel’s scanner so that it copies new control software from an external
storage medium. Id.
The Appellant contends that the Examiner’s analysis is “clearly
erroneous” in that Fandel’s scanner does not disclose communication
interface elements for communicating with external devices that are
“internal to the bar code scanner” including a USB controller and USB host
interface “to allow ‘connection of external client devices’ as claimed in
claim 1.” [Italics added.] App. Br. 8. The Appellant argues that it is
Fandel’s POS terminal 100 that contains the USB host controller and USB
interface, and because Fandel’s scanner 110 is “peripheral” and “physically
separate” from the POS terminal, these elements cannot be considered as
internal to the bar code scanner. Id. at 8 and 9. The Appellant further
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contends that combining Fandel with Zhan would simply result in updating
Fandel’s POS terminal but not its bar code scanner. Id. at 9.
Even if we agree with the Appellant that the USB host controller and
USB interface described in Fandel’s Figure 13 are part of POS terminal and
not the bar code scanner, the Appellant’s arguments are insufficient to
justify a reversal of the Examiner’s rejection. In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (explaining that even if the examiner had failed to
make a prima facie case, the Board would not have erred in framing the
issue as one of reversible error because it has long been the Board’s practice
to require an appellant to identify the alleged error in the examiner’s
rejections).
Specifically, we disagree with the Appellant’s argument that Fandel’s
scanner does not contain “internal” communication interface elements
including a USB controller and USB host interface. See App. Br. 8. The
Examiner specifically referred to Fandel’s Figure 8. Ans. 11. Fandel’s
Figure 8 discloses a scanner containing interface 814, which can be line
interface 416 that, in turn, facilitates data communication with external
components over, for example, a USB connection. (Col. 14, ll. 40-46; see
also, Fig. 4 and col. 7, ll. 56-64.) As shown in Fandel’s Figure 13, cited on
page 13 of Answer, a USB interface is commonly used together with a USB
host controller and a USB root hub to handle communications via a USB
interface. Therefore, we conclude that a person of ordinary skill in the art
would have been prompted to provide a USB host controller together with
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the disclosed USB interface as part of Fandel’s scanner in order to facilitate
communication with other external devices by USB cable.
With respect to the limitation regarding the scanner containing data
processing elements “automatically recogniz[ing] an external storage
medium connected to the USB host interface” and “copy[ing] control
software from the storage medium,” we construe this limitation as referring
to a functional capability of the claimed scanner. The Examiner found that
the data memory scanner in Figure 8 can store configuration information that
“may be stored when the scanner is constructed or, through the use of an
appropriate utility program, at some other time.” Ans. 13 and 16 (emphasis
added) (citing Fandel, col. 14, ll. 28-32.) In addition, Fandel teaches that
interface 814 allows the scanner to communicate with external devices.
Although Zhan’s disclosure relates to a printer driver, it informs one of
ordinary skill in the art that the updating process may be performed by using
a USB portable printer driver that is automatically uploaded and installed
when coupled with a host computer. Zhan’s Abst.; ¶¶ [0016]-[0019]; Figs. 1
and 3. According to Zhan, the printer driver “is portable and easily and
automatically removed from the host, such that files and/or other fixed
indications of usage do not remain on the host.” Id. ¶ [0008]. In view of
these teachings, we conclude that a person of ordinary skill in the art would
have been prompted to modify Fandel’s scanner to permit updating of the
scanner firmware using an external storage medium (e.g., a USB memory
stick) through its USB interface in order to obtain the advantages described
in Zhan. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a
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technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”).
For these reasons, we uphold the Examiner’s rejections.

SUMMARY

The Examiner’s Rejections I-III are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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