Ex Parte Terwilliger et al

Patent Trials and Appeals Board

Mar 20, 2019

13233376 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/233,376 09/15/2011 Kevin Terwilliger
154702 7590 03/22/2019
Zagorin Cave LLP (Dell)
4101 Parkstone Heights Drive
Suite 350
Austin, TX 78746
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.
DC-19319 8647
EXAMINER
MAI, THIENT
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
03/22/2019 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):
docket279@atxiplaw.com
rholland@atxiplaw.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN TERWILLIGER and SCOTT LAUFFER
Appeal2018-005084
Application 13/233,376
Technology Center 2800
Before LINDA M. GAUDETTE, LILAN REN, and JANE E. INGLESE,
Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
Sept. 15, 2011 ("Spec."); Final Office Action dated June 27, 2017 ("Final");
Appeal Brief filed Nov. 22, 2017 ("Appeal Br."); Examiner's Answer dated Feb.
14, 2018 ("Ans."); and Reply Brief filed Apr. 16, 2018 ("Reply Br.").
Appeal2018-005084
Application 13/233,376
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-22. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
"The ... invention relates in general to the field of information handling
system service, and more particularly to multidimensional barcodes for
information handling system service information." Spec. ,r 3. Claims 1 and 18 are
representative of the claims on appeal, and are reproduced below.
1. A system to aid service of an information handling
system, the system comprising:
a service label presented at the information handling system and
having a two-dimensional barcode, the two dimensional
barcode having a service identifier that includes at least a
universal resource locater and a unique identifier;
a portable information handling system having a processor, a
camera and a barcode application interfaced with the
camera, the camera operable to take an image of the two-
dimensional barcode, the processor running the barcode
application, the barcode application operable to analyze
the image to retrieve the service identifier;
a service application interfaced with the barcode application
and operable to apply the service identifier to retrieve
service information from a network location through a
network interface that provides service for the
information handling system, the retrieved service
information including at least a visual image retrieved
from the network location of plural components disposed
on a motherboard that match the plural components of
the information handling system, the visual image
presented in a browser and providing a display
presentation at the portable information handling system
having images of the plural components disposed on the
2 The Appellants identify the real party in interest as Dell Products L.P. Appeal Br.
1.
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Application 13/233,376
motherboard, the images of the plural components
individually selectable to obtain service information of an
associated of the plural components including at least a
video that depicts replacement for the associated one of
the plural components that is selected.
18. A portable information handling system comprising:
a processor;
a network interface;
a camera operable to take an image of an information handling
system having a service identifier, the service identifier
including at least a model number for the information
handling system and plural LEDs individually
illuminated to provide a diagnostics code;
a service application executing on the processor and operable to
apply the service identifier to retrieve service information
through the network interface that provides service for
the information handling system in response to the
diagnostics code, the service information including at
least a video of replacement of a component associated
with the diagnostic code.
Appeal Br. 8, 12 (Claims Appendix).
The Examiner relies on the following references as evidence of
unpatentability of the appealed claims.
Allen
Scheibe
Koshiba et al.
Martin-Cocher et al.
Bilbrey et al.
Tsongas et al.
Dugan et al.
Johnson et al.
US 6,233,408 Bl
US 2003/0128174 Al
US 2010/0149355 Al
US 2010/0261502 Al
US 2011/0164163 Al
US 2012/0026530 Al
US 2012/0131416 Al
US 2012/0194547 Al
3
May 15, 2001
July 10, 2003
June 17, 2010
Oct. 14, 2010
July 7, 2011
Feb.2,2012
May 24, 2012
Aug. 2, 2012
Appeal2018-005084
Application 13/233,376
The claims stand finally rejected under 35 U.S.C. § 103(a) as follows (see
Final 2-8):
1. claims 1, 7, and 10-14 over Bilbrey in view of Tsongas and Johnson;
2. claims 2--4, 15, 18, and 19 over Bilbrey in view of Tsongas, Johnson,
Koshiba, and Scheibe;
3. claims 20-22 over Bilbrey in view of Tsongas, Johnson, Koshiba,
Scheibe, and Dugan;
4. claim 5 over Bilbrey, Tsongas, Johnson, and Dugan;
5. claim 6 over Bilbrey, Tsongas, Johnson, and Martin-Cocher;
6. claims 9, 16, and 17 Bilbrey, Tsongas, Johnson, Martin-Cocher, and
Dugan; and
7. claim 8 over Bilbrey, Tsongas, Johnson, and Allen.
Claims 1-17, 21, and 223
Independent claim 1 recites
a service application interfaced with the barcode application and
operable to ... retrieve service information from a network location ..
. , the retrieved service information including at least a visual image
retrieved from the network location of plural components disposed on
a motherboard ... , the visual image presented in a browser.
Appeal Br. 8 (Claims Appendix). Independent claim 10 is a method claim that
requires a step of sending service information, including an image of plural
components disposed on a motherboard, from a service network location to a
portable information handling system, and presenting the image with a browser. Id.
3 The Appellants erroneously identify claims 21 and 22 as depending from claim
18 and request reversal of the rejections of claims 21 and 22 on the basis of
arguments presented in support of claim 18. Appeal Br. 6. We view this as an
inadvertent error and consider patentability of claims 21 and 22 on the basis of the
arguments made in support of patentability of claims 1 and 10, respectively.
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Appeal2018-005084
Application 13/233,376
at 10. The Examiner finds Bilbrey teaches or suggests these claim 1 and claim 10
limitations. Final 2-3.
The Appellants argue "Bilbrey presents an image captured by a video
camera, not an image retrieved from a service location," as required by claims 1
and 10. Appeal Br. 3, 6; see also id. at 5 ("[T]he claims recite that service
information including a visual image of the system are downloaded from a network
location. This recited feature is not found in the prior art, which uses images
captured live by a camera on a mobile phone.").
The Appellants' argument is persuasive of reversible error in the Examiner's
rejection of independent claims 1 and 10, and the rejections of their dependent
claims 2-9, 11-17, 21, and 22. Bilbrey discloses that an information layer retrieved
from a network information source is overlayed onto live video such that
annotations are aligned to the components shown in the live video. Bilbrey ,r 19;
see also id. ,r 23. The Examiner has not provided sufficient explanation and/or
evidence to support a finding that any images, schema, or the like provided in
Bilbrey' s information layer would amount to an image of plural components
disposed on a motherboard. See, e.g., Final 3; Ans. 3--4.
Accordingly, we do not sustain the rejections of claims 1-17, 21, and 22.
Claims 18-20
Claim 18 recites "a camera operable to take an image of an information
handling system having a service identifier, the service identifier including at least
a model number for the information handling system and plural LEDs individually
illuminated to provide a diagnostics code." Appeal Br. 14 (Claims Appendix). The
Appellants present arguments in support of claim 18 only. See Appeal Br. 6.
The Examiner finds the combination of Bilbrey and Tsongas discloses an
information handling device display that includes a quick response (QR) code with
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Appeal2018-005084
Application 13/233,376
device address and service information. Final 5. The Examiner acknowledges
Bilbrey and Tsongas are silent as to the QR code including a model number, but
finds the ordinary artisan would have modified the QR code to include the model
number to facilitate retrieval of appropriate diagnostic information. See id. at 5---6.
The Examiner finds Koshiba discloses a mobile information handling device
capable of taking an image of a diagnostic code from a light emitting display of an
information handling apparatus and decoding the diagnostic code to enable making
a service contact. Id. at 5. The Examiner finds the ordinary artisan would have
incorporated this feature into Bilbrey's system "to enable determining the health
state of controlled devices." Id. The Examiner cites Scheibe as evidence that
Koshiba's light emitting display "contain[s] millions of LEDs individually
illuminated to provide a multi-color display." Id.
The Appellants argue "the art cited by the Examiner fails to teach, suggest or
disclose 'individually illuminated' LEDs that provide a diagnostics code and that
are captured in an image with a service identifier to provide 'service for the
information handling system in response to the diagnostics code."' Appeal Br. 6.
The Appellants argue "Koshiba relates to a television that presents images, not
individual LEDs." Id. In their Reply Brief, the Appellants urge that "display pixels
are not individually illuminated, but illuminated as a population from a graphics
processor to present a visual image." Reply Br. 3.
The Appellants' arguments are not persuasive of reversible error in the
Examiner's obviousness determination. The evidence of record supports the
Examiner's finding that Koshiba discloses the diagnostic error code may be
displayed on a computer monitor which is a light emitting device. Ans. 10 ( citing
Koshiba ,r 46, Fig. 1 ). The Appellants have not explained with sufficient clarity
how the claim 18 language requiring a plurality of individually illuminated LEDs
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Application 13/233,376
patentably distinguishes over a population of illuminated pixels. See Scheibe ,r 3
("An LED display is typically made up of various dots arranged in a matrix pattern
having rows and columns. The dots are usually called pixels where the pixels are
made up of several LEDs.").
In their Reply Brief, the Appellants also argue "[t]he Examiner reads a
display with plural pixels as being plural LEDs individually illuminated, but fails
to explain how a display would fit in the recited 'service identifier."' Reply Br. 3.
We decline to consider this argument because the Appellants have not shown good
cause why this argument was not raised in their Appeal Brief. See Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly interpreted,
the Rules do not require the Board to take up a belated argument that has not been
addressed by the Examiner, absent a showing of good cause.").
Secondary Considerations of Nonobviousness
The Appellants cite Declarations under 37 C.F.R. § 1.132 as providing
secondary indicia of nonobviousness. Appeal Br. 3-5; see id. at 6 (Evidence
Appendix). According to the Appellants, the declarations provide evidence of
commercial success, long-felt need, and skepticism of experts in the field. Id. at 4.
It is unclear whether the Appellants intended to rely on these declarations as
evidence of nonobviousness as to claim 18. Out of an abundance of caution, we
have reviewed the declarations, but determine they do not provide persuasive
evidence of nonobviousness because the evidence is not commensurate in scope
with the claims.
The declarations and supporting evidence indicate the alleged commercial
success, long-felt need, and skepticism relate to the use of QR codes to retrieve
information including a visual image from a service network location and the
presentation of the visual image in a browser. Claim 18, however, does not require
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Application 13/233,376
the use of a QR code. See Claims 19, 20 ("The portable information handling
system of Claim 18 wherein the service identifier comprises a network address and
a unique identifier embedded in a multidimensional barcode ... "); Joy Techs., Inc.
v. Manbeck, 751 F. Supp. 225,229 (D.D.C. 1990), ajfd, 959 F.2d 226,228 (Fed.
Cir. 1992) (concluding that features responsible for commercial success were
recited only in dependent claims, and therefore the evidence of commercial success
was not commensurate in scope with the broad claims at issue).
In sum, having considered the totality of the evidence, including the
Appellants' secondary considerations of nonobviousness, we determine a
preponderance of the evidence favors the Examiner's conclusion of obviousness as
to claims 18-20. Therefore, we sustain the rejections of claims 18-20.
ORDER
We AFFIRM the rejections of claims 18-20, but REVERSE the rejections of
claims 1-17, 21, and 22.
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-IN-PART
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