Ex Parte Zhu et al

Patent Trial and Appeal BoardJan 11, 2019

13501263 (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/501,263 06/21/2012 108134 7590 HONEYWELL/ ADDITON 115 Tabor Road P.O. Box 377 MORRIS PLAINS, NJ 07950 01/15/2019 FIRST NAMED INVENTOR XiaoxunZhu 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. H0023983 1682 EXAMINER MASUD, ROKIB ART UNIT PAPER NUMBER 3687 NOTIFICATION DATE DELIVERY MODE 01/15/2019 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): patentservices-us@honeywell.com docket@ahpapatent.com SPSIP@honeywell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIAOXUN ZHU and ZIY ANG ZHANG Appeal2017-010605 1 Application 13/501,263 Technology Center 3600 Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and SCOTT E. BAIN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the final rejection of claims 1-3, 6-10, and 13-28. Claims 4, 5, 11, and 12 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 According to Appellants, the real party in interest is Honeywell International, Inc. (App. Br. 3.) Appeal2017-010605 Application 13/501,263 STATEMENT OF THE CASE Appellants' invention relates to an indicia reader at a point of transaction (POT) for capturing a digital image with the indicia reader at the POT and archiving the digital image. (Abstract.) Claim 1 is exemplary and reproduced below: 1. A method of completing a transaction, the method compnsmg: upon at least a first instance of a mobile device moving within a communication range of an establishment communication device, automatically authenticating an establishment software application residing on the mobile device; upon said authenticating, wirelessly transmitting, from the establishment communication device, a request to pair with the mobile device via said establishment software application; receiving, at the establishment communication device, an acceptance of the request to pair; responsive to receiving the acceptance, automatically and wirelessly pairing the establishment communication device with the mobile device utilizing a pairing protocol; responsive to the automatic and wireless pairing of the establishment communication device with the mobile communication device, wirelessly transmitting information data from the establishment communication device to the mobile communication device. Claims 1-3, 6-10, 13-22, and 25-28 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Williams (US 2010/0012715 Al; Jan. 21, 2010) and Yue (US 2004/0203354 Al; Oct. 14, 2004). (Final Act. 3-9.) 2 Appeal2017-010605 Application 13/501,263 Claims 23 and 24 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Williams, Yue, and Fuccello (US 2006/0116160 Al; June 1, 2006). (Final Act. 9-10.) The Examiner has withdrawn the rejection of claims 1-3, 6-10, and 13-28 under 35 U.S.C. Â§ 101. (Ans. 2.) ANALYSIS We are persuaded by Appellants' arguments (App. Br. 19) that the Examiner has not provided a sufficient rationale on this record for combining Williams and Yue. The Examiner found that mobile device 106 and mobile module 100 of Williams, in which the two device are paired via display 102, correspond to the limitation "upon at least a first instance of a mobile device ... automatically authenticating an establishment software application residing on the mobile device." (Final Act. 3.) The Examiner further found that remote access device 150 of Yue, which connects Bluetooth devices 110 and 130, corresponds to the limitation "moving within a communication range of an establishment communication device." (Id. at 4.) The Examiner concluded that "it would have been obvious for one of ordinary skill in the art to have modified the method and system of Williams to initiate connection by the mobile device when moving within a communication range of an establishment communication device as taught by Yue" (id.). The Examiner reasoned that "[i]ncorporating such feature would expedite the pairing of the point of sales with devices and generate more revenue by saving time of merchant." (Id. at 5). We do not agree with the Examiner's articulation of the rationale to combine. 3 Appeal2017-010605 Application 13/501,263 Williams relates to "connecting a wireless unit to a point-of-sale terminal." (Abstract.) Figure 7 of Williams illustrates one embodiment, in which "the user positions handheld device 106 into close proximity to mobile module display 102 so that display 102 is within field of view 112 of handheld device camera 110 and the handheld device display is within field of view 104 of mobile module 100." (i-f 43.) Moreover, Figure 8 of Williams illustrates application software, such that "either of mobile module 100 or mobile device 106 initiates a pairing request for connecting to the other device" and "[ t ]he pairing request may contain one or more optical images that are projected on one of mobile module display 102 or on the handheld device display." (i-f 42.) Yue relates to a "remote access device [] configured to communicate with each Bluetooth device within a locale" (Abstract) including, for example, "the initialization information ... communicated each time a communication channel is to be established between two 'paired' Bluetooth devices" (i-f 16). In particular, Yue explains that "[a] user accesses the remote access device 150 and requests a list of available Bluetooth devices," such as devices 110 and 120. (i-f 22; see also Fig. 1.) Although the Examiner proposes to modify Williams with Yue, the Examiner has not provided an articulated reasoning with some rational underpinning as to how and why one of ordinary skill in the art would combine such references. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness"); see also KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 4 Appeal2017-010605 Application 13/501,263 (2007). In particular, the Examiner has not adequately explained why one of ordinary skill in the art would modify Williams, in which pairing is achieved by projecting optical images from mobile module 100 to mobile module display 102, 2 with Yue, in which remote access device 150 communicates and is "paired" with devices 110 and 120 via Bluetooth. The Examiner's conclusory statement that "[i]ncorporating such feature [from Yue] would expedite the pairing of the point of sales with devices and generate more revenue by saving time of merchant," does not address the different pairing mechanisms----optical vs. Bluetooth-taught in the respective references and, therefore, does not articulate one of the rationales provided in KSR with a rational underpinning to support a conclusion of obviousness. (Final Act. 5.) See KSR, 550 U.S. at 415--421. Accordingly, we are persuaded by Appellants' argument that, on this record, "there is no suggestion or motivation for those of ordinary skill in the art to make the proposed modification." (App. Br. 19.) Thus, the Examiner has improperly combined Williams and Yue to reject independent claims 1, 10, and 17 under 35 U.S.C. Â§ 103(a). Accordingly, we do not sustain the rejection of claims 1-3, 6-10, 13- 22, and 25-28 under 35 U.S.C. Â§ 103(a). In addition, we do not sustain the rejections of claims 23 and 24 under 35 U.S.C. Â§ 103(a) over Williams, Yue, and Fuccello for the same reasons discussed previously with respect to the rejection of claims 1-3, 5, 9, 11, 13, 16, 18, and 20 under 35 U.S.C. Â§ 103(a) over Williams and Yue. 2 Although Williams refers to this as "display 102," it teaches that display 102 may "contain[] a screen that allows for bi-directional transmission and receipt of images." (i-f 37 (emphasis added).) 5 Appeal2017-010605 Application 13/501,263 DECISION The Examiner's decision rejecting claims 1-3, 6-10, and 13-28 is reversed. REVERSED 6