Ex Parte Simske et al

Patent Trial and Appeal Board

Jul 11, 2016

13100925 (P.T.A.B. Jul. 11, 2016)

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").
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Appeal2015-000782
Application 13/100,925
812. 812
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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.
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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.
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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,
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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
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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.
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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.
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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.
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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
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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).
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Appeal2015-000782
Application 13/100,925
AFFIRMED-IN-PART
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