Ex Parte RoquemoreDownload PDFPatent Trial and Appeal BoardMay 29, 201411930308 (P.T.A.B. May. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN PETER ROQUEMORE ____________ Appeal 2012-003207 Application 11/930,308 Technology Center 2800 ____________ 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. Appeal 2012-003207 Application 11/930,308 2 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). Appeal 2012-003207 Application 11/930,308 3 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. Appeal 2012-003207 Application 11/930,308 4 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 Appeal 2012-003207 Application 11/930,308 5 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 Appeal 2012-003207 Application 11/930,308 6 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 Appeal 2012-003207 Application 11/930,308 7 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 llw Copy with citationCopy as parenthetical citation