Ex Parte Tischer

Patent Trial and Appeal BoardMay 30, 2013

11022531 (P.T.A.B. May. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/022,531 12/22/2004 Steven Tischer 040229 (BLL0266US) 6054 36192 7590 05/30/2013 AT&T Legal Department - CC Attn: Patent Docketing Room 2A-207 One AT&T Way Bedminster, NJ 07921 EXAMINER NGUYEN, HIEP VAN ART UNIT PAPER NUMBER 3686 MAIL DATE DELIVERY MODE 05/30/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEVEN TISCHER ____________ Appeal 2011-000953 Application 11/022,531 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. MOHANTY, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000953 Application 11/022,531 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134 of the Examinerâ€™s final decision rejecting claims 1 to 20, 30, and 31. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We REVERSE. Claim 1 is illustrative: 1. A method for providing personalized information services, comprising: generating, via an application executing on a computer processor device, an instance of personalized information including time-sensitive elements; and outputting, via the application, the personalized information onto a medium comprising at least one of a bandage and a temporary tattoo, the medium affixable to a subject with which the personalized information is associated; wherein the subject is a human and at least a portion of personalized information output to the medium self-destructs over a time period that is commensurate with the time-sensitive elements. Appellant appeals the following rejection: 1. Claims 1 to 20, 30, and 31 under 35 U.S.C. Â§ 103(a) as unpatentable over Berryman (US 2002/0114764 A1; pub. Aug. 22, 2002) and Bradley (US 2004/0177032 A1; pub. Sep. 9, 2004). ANALYSIS The Appellant argues that the prior art does not disclose outputting personalized information having time sensitive elements to a medium wherein the information self-destructs over a time period commensurate with the time-sensitive elements. We agree. Appeal 2011-000953 Application 11/022,531 3 The Examiner relies on Berryman for disclosing the temporary application of a tattoo which includes a bar code, but recognizes that Berryman does not disclose a portion of personalized information output to a medium that self-destructs over a time period. The Examiner relies on Bradley for disclosing personalized information output (i.e., bar code) that can be printed on self-destructing material over a time period. However, the Examiner does not direct our attention to a disclosure in either Bradley or Berryman related to information which self-destructs over a time period commensurate with the time sensitive-elements. In fact, Bradley discloses that the self-destruction of the information occurs because of physical action taken in regard to the tag on which the information is contained, not because of anything related to time. We note that in response to Appellantâ€™s argument, the Examiner only recites the standard of claim interpretation before the Office, rather than make findings as to commensurate time periods. Thus, the Examiner failed to present a prima facie case. Therefore, we will not sustain the rejection of claim 1 and claims 2 to 7 dependent thereon. We will also not sustain the rejection as it is directed to the remaining claims because each of those claims recites a medium wherein the information thereon self-destructs over a time period commensurate with the time-sensitive elements. DECISION The decision of the Examiner is reversed. REVERSED Appeal 2011-000953 Application 11/022,531 4 hh