Ex Parte Simske et alDownload PDFPatent Trial and Appeal BoardJul 11, 201613100925 (P.T.A.B. Jul. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/100,925 05/04/2011 22879 7590 07113/2016 HP Inc. 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Steven J. Simske 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. 82587462 3946 EXAMINER KELLY, RAFFERTY D ART UNIT PAPER NUMBER 2876 NOTIFICATION DATE DELIVERY MODE 07/13/2016 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): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN J. SIMSKE and A. MARIE VANS Appeal2015-000782 Application 13/100,925 Technology Center 2800 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. PERCURIAM. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants2 filed an appeal under 35 U.S.C. § 134 from the Examiner's decision finally rejecting claims 1-20 under 35 U.S.C. § 103(a) 1 Our decision refers to Appellants' Specification filed May 4, 2011 (Spec.), Appellants' Appeal Brief filed Feb. 19, 2014 (Appeal Br.), the Examiner's Answer mailed Aug. 8, 2014 (Ans.), and Appellants' Reply Brief filed Oct. 8, 2014 (Reply Br.). 2 Appellants identify the real party in interest as Hewlett-Packard Development Company, LP. Appeal Br. 2. Appeal2015-000782 Application 13/100,925 as being unpatentable over the combination of Feuerman3 in view of Morgana. 4 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). We AFFIRM-IN-PART. The claims on appeal are directed to systems, methods, and non- transitory, computer-readable mediums comprising code for generating an incremental information object with an embedded information region (see, e.g., claims 1, 14, and 18). Appellants disclose that during its lifecycle a product, such as a physical product or an information-containing item, progresses through a workflow (e.g., from a manufacturer, through distributors, and to a customer). Spec i-f 1. Although one may associate a bar code with the product to identify the product, a bar code does not permit monitoring of the workflow. Spec. i-fi-1 1 and 2. To address this, Appellants disclose an incremental information object (IIO) with an embedded information region (IIOEIR) that provides information as a product progresses through stages of a workflow. Spec. i-fi-116 and 20. Figure 8 is reproduced below: 3 Feuerman et al., US 7,246,748 Bl, issued July 24, 2007 ("Feuerman"). 4 Morgana et al., US 2010/0025472 Al, published Feb. 4, 2010 ("Morgana"). 2 Appeal2015-000782 Application 13/100,925 812. 812 812 { ~-HI"'-Hl"l-fl'! 802 ------·}812 ~Q~ - 806- - - :"~' • ..... "' "' ', :~< • ;,• "" .. " '"" ·." · .. ",. .. ""' :/, ~ ·~ ·, / ~: :~ ~ ~: ~.~ ·.~· .... 800 FIG. 8 Figure 8 schematically depicts changes to an IIOEIR during a workflow. Figure 8 depicts a blank IIOEIR 808 with blank tiles 802, and a fully written IIOEIR 810 with tiles 802 holding either a "1" or a "2" to illustrate a first code region 804 for a first code (represented by "2"s) and a second code region 806 for a second code (represented by "l"s). Spec. iii! 67 and 68. Bits ("1 "sand "2"s) are written to blank IIOEIR 808 to create an initial IIOEIR 814, which is provided to a first workflow stage 814. Spec. if 69. Once the first workflow stage is complete, more bits are written to the first code region 804 and the second code region 806 to create a first stage IIOEIR 816. Spec. if 69. This process is repeated at second and third stages of the workflow to create second and third stage IIOEIRs 818, 820. Spec. i170. 3 Appeal2015-000782 Application 13/100,925 Independent claim 1 is illustrative of the subject matter on appeal. Claim 1 is reproduced from the Claims Appendix of the Appeal Brief with limitations at issue in the appeal italicized: 1. A system for generating an incremental information object (IIO) with an embedded information region (IIOEIR), compnsmg: a processor; and a memory, wherein the memory comprises computer readable code configured to direct the processor to: analyze an IIOEIR, wherein the IIOEIR comprises a plurality of tiles, wherein a first region of the plurality of tiles comprises a first code and a second region of the plurality of tiles comprises a second code; confirm the first code, and, if the confirmation succeeds: generate a new first code comprising a bitstream; and overwrite the bitstream onto the first region; generate a new second code; and overwrite the new second code onto the second region. Appeal Br. 11 (emphasis added). OPINION Claims 1-6, 8-10, and 12-20 Claims 1---6, 8-10, and 12-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Feuerman in view of Morgana. The dispositive issue on appeal is whether Appellants have identified a reversible error in the Examiner's finding that Morgana discloses a second code region of a plurality of tiles that comprises a second code, as recited in claim 1. 4 Appeal2015-000782 Application 13/100,925 The Examiner finds F euerman discloses a processor and a memory having computer readable code configured to direct the processor to analyze an IIOEIR. Ans. 2. The IIOEIR disclosed by Feuerman comprises a plurality of tiles, including a first region comprising a first code. Ans. 2. The Examiner finds Feuerman does not disclose a second region of tiles but finds Morgana discloses a plurality of tiles including a second region comprising a second code. Ans. 2. The Examiner further finds Morgana discloses generating the second code and overwriting the second code on to the second region, citing Figure 1 of Morgana. Ans. 2. The Examiner concludes it would have been obvious to combine Feuerman and Morgana to provide greater information density in a barcode region. Ans. 3. Appellants contend Morgana does not teach that a first region of a plurality of tiles comprises a first code, that a second region of the plurality tiles comprises a second code, or overwriting a new second code onto the second region, as recited in claim 1. Appeal Br. 7. Appellants argue Morgana is directed to a process in which multiple barcodes are overprinted in a one-dimensional barcode space with each of the barcodes printed in substantially the same location. Appeal Br. 7 and Reply Br. 1-2. Moreover, Appellants assert one of ordinary skill in the art would interpret the first and second regions of claim 1 "as corresponding with distinct, mutually- exclusive sets of tiles" in view of Appellants' disclosure and that Morgana does not disclose such regions because the barcodes of Morgana overlap and do not occupy separate regions. Appeal Br. 8 and Reply Br. 2-3. We first consider whether claim 1 requires the first region and second region to be "distinct, mutually-exclusive sets of tiles," as asserted by Appellants. Claim 1 recites "the IIOEIR comprises a plurality of tiles, 5 Appeal2015-000782 Application 13/100,925 wherein a first region of the plurality of tiles comprises a first code and a second region of the plurality of tiles comprises a second code." This language does not require the first and second regions to be "distinct, mutually-exclusive sets of tiles." Indeed, the language states a first region of tiles "comprises a first code" and a second region of tiles "comprises a second code." This comprising language does not exclude the first region from including tiles for at least a portion of the second code and the second region from including tiles for at least a portion of the first code. "In the patent claim context the term 'comprising' is well understood to mean 'including but not limited to."' CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007). As noted above, Appellants assert the Specification and Figure 8 support defining the "first region" and "second region" as "distinct, mutually-exclusive sets of tiles." Appeal Br. 8 and Reply Br. 2-3. However, such an interpretation extends beyond the broadest reasonable interpretation of the claims in view of the Specification. "During examination, 'claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art."' In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) ). "Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim." Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Therefore, we conclude the language of claim 1 does not require the first and 6 Appeal2015-000782 Application 13/100,925 second regions to be "distinct, mutually-exclusive sets of tiles," as asserted by Appellants. Appellants are free to amend the claims to give them a narrower meaning supported by the written description. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). In response to Appellants' arguments, the Examiner refers to Figure 5 of Morgana. Ans. 4--5. The Examiner finds that because some areas of barcodes 520, 530, 540 do not overlap, a space containing one barcode (e.g., barcode 540) can be considered one region and a space containing another barcode (e.g., barcode 520) can be considered a second region. Ans. 5. Morgana discloses a barcode 510 can be formed by overprinting three disparate barcodes 520, 530, and 540, which may overlap in some locations and not overlap in other locations. Morgana i-fi-1 40 and 51 and Figure 5. As stated above, the comprising language of claim 1 does not exclude the first region from including tiles for at least a portion of the second code, or the second region from including tiles for at least a portion of the first code. Therefore, the record supports the Examiner's finding that although Morgana discloses barcodes that overlap in some regions, the regions are not exactly the same and can be considered separate regions. As a result, Appellants have not identified a reversible error in the Examiner's finding that Morgana discloses a second code region of a plurality of tiles that comprises a second code, as recited in claim 1. Appellants further argue the barcodes of Morgana do not include a first region of the plurality of tiles and a second region of the plurality of tiles because the location of Morgana's barcodes is not divided into tiles. Reply Br. 3. This argument is not persuasive of reversible error because the Examiner finds the barcode of Feuerman comprises a plurality of tiles. Ans. 7 Appeal2015-000782 Application 13/100,925 2. Appellants do not dispute this finding. The barcodes disclosed by Morgana, which include vertical lines like the barcode of Feuerman, would also have a plurality of tiles. To the extent Appellants contend Morgana does not disclose overwriting a new second code onto the second region, 5 the Examiner finds Feuerman discloses a plurality of tiles, with a first region of the tiles comprising a first code, and overwriting onto the first region. Ans. 2. Appellants provide no specific reasons to dispute the Examiner's finding regarding Feuerman. Therefore, an argument that Morgana does not disclose overwriting a new second code onto the second region is not persuasive in view of the Examiner's finding that Feuerman discloses overwriting. "[T]he test for combining references is not what the individual references themselves suggest but rather what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art." In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). For the reasons discussed above and those set forth in the Examiner's Answer, we sustain the Examiner's rejection of claims 1---6, 8-10, and 12-20 over the combination of F euerman and Morgana. Claim 7 Claim 7 depends from claim 1 and further recites "wherein the second code comprises an indicator of the amount of information stored in the first code." In the rejection over the combination of Feuerman and Morgana, the Examiner finds Morgana discloses a second code that indicates the amount 5 Appeal Br. 7. 8 Appeal2015-000782 Application 13/100,925 of information stored in the first code. Ans. 3, citing Morgana if 16. Appellants contend Morgana does not disclose the recitations of claim 7 and any information one may deduce from the existence of a code is not the same as information within the code. Appeal Br. 8-9. In response, the Examiner determines the existence of a second barcode indicates the amount of information in a first barcode, citing paragraph 16 of Morgana. Ans. 5. Paragraph 16 of Morgana discloses the determination of the number of barcodes required to map a character string and includes an example in which a character string of eighty-four characters is divided into three barcodes each representing twenty-eight characters. Thus, a second code in a second barcode of Morgana indicates the amount of information for a first code of a first barcode because each barcode in the example disclosed in paragraph 16 of Morgana represents the same number of characters (i.e., when the number of characters for the second barcode is known, the number of characters for the first barcode is also known). Appellants contend "the phrase 'the second code comprises an indicator' means that the indicator is explicitly included in the barcode as coded data," and that "[i]nformation that one might deduce from the existence of a code is not the same as information included in the code." Reply Br. 4. But Appellants cite to no particular definition in the Specification or other evidence showing that "indicator" would be interpreted by one of ordinary skill in the art as limited to coded data in the bar code. The word "indicator" is much broader and merely requires the second code indicate, in any manner, what information is in the first code. 9 Appeal2015-000782 Application 13/100,925 Therefore, the disclosure of Morgana supports the Examiner's finding and Appellants' arguments do not present a reversible error. For the reasons discussed above and those set forth in the Examiner's Answer, we sustain the Examiner's rejection of claim 7 over the combination of F euerman and Morgana. Claim 11 Claim 11 depends from claim 1 and further recites "wherein the IIOEIR comprises a third code that defines the relationship between the first code and the second code." In the rejection over the combination of Feuerman and Morgana, the Examiner finds Morgana discloses a third code defining a relationship between the first code and the second code, citing Figure 5 of Morgana. Ans. 3. The Examiner determines that when a third barcode is present, such as in Figure 5 of Morgana, the existence of the third barcode indicates the other two barcodes are the first two pieces of a character string. Ans. 5-6. Appellants argue Morgana merely depicts three barcodes in Figure 5 and does not disclose that a third barcode defines a relationship between first and second barcodes. Appeal Br. 9. Appellants further argue Morgana discloses the data of a barcode is independent of data for other barcodes and deducing information from the existence of a code is not the same as information included in a code. Appeal Br. 9 and Reply Br. 5. Appellants' arguments are persuasive. Morgana discloses that multiple barcodes, such as three barcodes can be printed, and that a color is assigned to each barcode to distinguish the barcodes. Morgana i-fi-133 and 34. However, knowing that a third barcode is represented by a particular 10 Appeal2015-000782 Application 13/100,925 color does not provide a relationship between a first code of a first barcode and a second code of a second barcode. For example, if a third color is assigned the color yellow, as in the example disclosed in paragraph 34 of Morgana, the yellow color merely indicates which barcode is the third barcode without indicating any relationship between codes of a first barcode and a second barcode. Moreover, although the existence of the third barcode may signify the existence of two other barcodes, it does not define a relationship between codes contained in the two other barcodes, as recited in claim 11. Therefore, the record does not support the Examiner's finding that Morgana discloses a third code defining a relationship between the first code and the second code. As a result, we do not sustain the Examiner's rejection of claim 11 over the combination of F euerman and Morgana. DECISION On the record before us, we: A. sustain the Examiner's decision to reject claims 1-10 and 12- 20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Feuerman in view of Morgana; and B. do not sustain the Examiner's decision to reject claim 11 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Feuerman in view of Morgana. We affirm-in-part the decision of the Examiner to reject the claims. 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). 11 Appeal2015-000782 Application 13/100,925 AFFIRMED-IN-PART 12 Copy with citationCopy as parenthetical citation