Ex Parte DeFore et al

Patent Trials and Appeals Board

Jan 11, 2019

13174912 - (D) (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/174,912 07/01/2011 Daniel Dean DeFore
52835 7590 01/15/2019
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
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.
02968.0439US01 1638
EXAMINER
DOTTIN, DARRYL V
ART UNIT PAPER NUMBER
2676
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):
PTOMail@hsml.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL DEAN DEFORE, SCOTT ROBERT HAGSTROM,
CHRISTOPHE JACQUES MARIE BIEHLMANN,
and PETER WILLIAM THORSEN
Appeal2018-005765
Application 13/174,912 1
Technology Center 2600
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1-15 and 21-26, all of the pending claims on appeal. 2 See Appeal
Br. 1. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants state that the real party in interest is ENTRUST DAT A CARD
CORPORATION. See Appeal Br. 2.
2 Claims 16-20 are cancelled. See Appeal Br. 8.
Appeal 2018-005765
Application 13/174,912
STATEMENT OF THE CASE
Invention
Appellants' invention relates to a customized personalization
document printer and "a user interface for [the] ... personalization
document printer" Spec. 2: 1-2. 3
Exemplary Claims
Claims 1, 10, 15, and 23 are independent. Claims 1 and 15 are
illustrative and are reproduced below with the dispositive disputed limitation
( the "disputed limitation") in each claim italicized:
1. A customized personalization document printer for
an instant issuance system that allows a customized
personalization document for a document holder to be issued
while the document holder is present, the printer comprising:
a personalization component that performs a printing
function on a customized personalization document;
a network component that is connectable to a server
computer of the instant issuance system, wherein the server
computer is separate from and external to the customized
personalization document printer;
a memory component that stores a remote user interface
(RUI);
a processor that runs the RUI;
a display and an input device that allow a user to view and
interact with the RUI,
3 Our Decision refers to: (1) Appellants' Specification filed July 1, 2011
("Spec."); (2) the Final Office Action mailed May 26, 2017 ("Final Act.");
(3) the Appeal Brief filed October 30, 2017 and amended Appeal Brief filed
December 5, 2017 ("Appeal Br."); (4) the Examiner's Answer mailed March
12, 2018 ("Ans."); and (5) the Reply Brief filed May 14, 2018 ("Reply Br.").
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Application 13/174,912
wherein the R UI allows a user to interact with and control
printer functionality of the printer and allows a user to interact
with and control server functionality of the server computer
including at least one of controlling R UI configuration, and
locking and unlocking access to supplies and/or personalization
documents in the personalization document printer, wherein the
server computer is separate from and external to the customized
personalization document printer.
15. A non-transitory computer readable storage
medium of a customized personalization document printer
storing one or more programs, the one or more programs
comprising instructions, which when executed by a processor of
the customized personalization document printer, cause the
processor to run a remote user interface (RUI) that allows a user,
via a display and an input device of the customized
personalization document printer, to control and interact with an
instant issuance system,
the RUI comprising:
a printer functionality component that allows a user to control a
display of customized personalization document supply
information, control printer option settings, control progress
information for a current or pending print job, and control a print
preview for displaying an image of the customized
personalization document with image data and personalization
account data; and
a server functionality component that allows a user to
update a server that is separate from and external to the
customized personalization document printer so as to control
user authentication to use the printer, control print queues of the
printer, control print worliflows of the printer, control R UI
configuration, control remote access to printer user functions
and a print preview displaying an image of the customized
personalization document with image data and personalization
account data, control storage and rendering of data to be placed
on a customized personalization document, lock and unlock
access to supplies and/or personalization documents in the
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Application 13/174,912
personalization document printer, access administrative
functions, and provide quality assurance functions.
Appeal Br., Claims App., 3, 7-8.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal includes:
Forest
Lenz et al. ("Lenz")
Yokoyama
Cameron et al.
("Cameron")
Burbank et al.
("Burbank")
us 5,367,362
US 2003/0090712 Al
US 2006/0232811 Al
US 2009/0219574 Al
US 2009/0222671 Al
REJECTIONS
Nov. 22, 1994
May 15, 2003
Oct. 19, 2006
Sep.3,2009
Sep.3,2009
Claims 1-7, 10-14, and 21-23 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Cameron, Yokoyama, and Burbank.
Final Act. 3-17.
Claims 8 and 9 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Cameron, Yokoyama, Burbank, and Forest. Final
Act. 17-19.
Claim 15 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Cameron and Lenz. Final Act. 20-25.
Claim 25 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Cameron, Yokoyama, and Burbank. Final Act. 26-27.
Claims 24 and 26 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Cameron, Yokoyama, Burbank, and Lenz. Final Act. 27-
29.
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Application 13/174,912
Our review in this appeal is limited only to the above rejections and
issues raised by Appellants. Arguments not made are waived. See
37 C.F.R. § 4I.37(c)(1)(iv)(2015).
CONTENTIONS AND ANALYSIS
Rejection Under 35 US.C. § 103(a) of Claim 1
In support of the rejection of claim 1, the Examiner finds Burbank's
discussion of using locking part 40 to lock medical device 10 teaches or
suggests the disputed limitation. Final Act. 9-11 ( citing Burbank Fig. 1,
,r,r 24, 25). Specifically, the Examiner relies on locking part 40 to teach the
claimed remote user interface ("RUI"), which allows for "locking and
unlocking access to supplies ... in the personalization document printer"
because Burbank discloses that locking part 40 may include "a user interface
or component interface" for locking the medical device 10. See Final
Act. 10 ( quoting Burbank ,r 25); see Burbank Fig. 1.
Appellants argue Burbank does not teach a RUI as claimed because
claim 1 requires that the RUI allow a user to control server functionality
including "locking and unlocking access to supplies and/or personalization
documents in the personalization document printer." Specifically,
Appellants argue:
Burbank merely teaches a locking or lockable part 40 attached
to the medical device 10. Nowhere does Burbank teach,
suggest or contemplate that a server computer (including the
information server 55) has functionality that includes locking
and unlocking access to the medical device 10. Burbank also
does not teach, suggest or contemplate that the medical device
10 includes a RUI that allows a user to interact with and control
functionality of a server computer (including the information
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Application 13/174,912
server 55) including locking and unlocking access to the
medical device via the locking or lockable part 40.
Appeal Br. 12.
In response, the Examiner clarifies that "[ t ]he Office action relies on
the lockable/locking part 40 (See Fig. 1 of Burbank above) [to teach] ... the
server computer of the claims," rather than on Burbank's server 55. Ans. 31.
Appellants argue the Examiner's finding in the Answer is erroneous
because the "locking part 40 is not a server computer. Rather, the movable
or stationary locking or lockable part 40 is a part that is locked or a device,
such as an actuator, that actually effects locking ... includ[ing] solenoids,
simple mechanical locks, software state machines with locked states."
Reply Br. 2.
We find Appellants' arguments persuasive. The Examiner does not,
on the record before us, show that Burbank's locking device 40 teaches or
suggests both the claimed server and the claimed RUI. See Final Act. 9--11;
Ans. 29--31. Rather, with respect to the locking part 40/lockable part 30,
Burbank discloses,
Examples of a lockable part 30 include an access panel, hatch,
door or other mechanical security component or mechanical
interface such as a slot for receiving consumable components; a
component controller, power supply, or a crucial component
such as a pump or other prime mover; a user interface or
component interface.
Burbank ,r 25. Even for Burbank's locking part 40 embodiment that
includes a user interface to perform the locking function, the Examiner does
not explain, nor is it apparent, how the locking part teaches both the claimed
server and the claimed user interface. See Final Act. 9--11; Ans. 31.
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Accordingly, the Examiner has not shown how Burbank, alone or in
combination with the other cited references, teaches or suggests the disputed
limitation. Because we agree with at least one of the dispositive arguments
advanced by Appellants for claim 1, we need not reach the merits of
Appellants' other arguments. We, therefore, do not sustain the Examiner's
35 U.S.C. §103(a) rejection of claim 1. We also do not sustain the rejection
of independent claims 10 and 23, which recite limitations commensurate in
scope with claim 1. We, likewise, do not sustain the rejections of dependent
claims 2-9, 11-14, 21, 22, and 24--26.
Rejection Under 35 USC§ 103(a) of Claim 15
In support of the rejection of claim 15, the Examiner finds the
combination of Cameron and Lenz teaches or suggests the disputed
limitation. Final Act. 22-25 ( citing Cameron Fig. 4, Step 421, ,r,r 31, 34;
Lenz Fig. 3, ,r,r 39, 40). The Examiner notes that "Cameron fails to
explicitly teach ... the RUI comprising: a server functionality component
that allows a user to ... lock and unlock access to supplies and/or
personalization documents in the personalization document printer"
(Ans. 23), but finds Lenz teaches this limitation (Ans. 24--25 ( citing Lenz
Fig. 3, i139).
Appellants argue "[t]he combination of Cameron and Lenz does not
teach or suggest these features," including, among other features, the lock
and unlock feature. Appeal Br. 16. In particular, Appellants argue "Lenz
does not overcome these deficiencies of Cameron ... [because] Fig. 3 [ of
Lenz] merely shows different hardware and software layers in a personal
computer and identification card printer. Also, paragraph [0039] of Lenz
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Application 13/174,912
teaches that a personal computer 152 is used to create an identification card
using applications 158 and 160 and/or browser 162." Appeal Br. 17.
In response, the "Examiner references the Final Office Action dated
05/26/2017" and discusses the motivation for combining the references,
without specifically clarifying the findings in the Final Action or responding
to Appellants' arguments. Ans. 35.
We find Appellants' arguments persuasive. The Examiner does not,
on the record before us, show that Cameron or Lenz, alone or in
combination, teaches a RUI that "allows a user to update a server that is
separate from and external to the customized personalization document
printer so as to ... lock and unlock access to supplies and/or personalization
documents in the personalization document printer," as recited in claim 15.
See Final Act. 20-25; Ans. 35. Nor does the Examiner explain why these
specific limitations would have been obvious over the cited combination.
Accordingly, the Examiner has not shown how the combination of
Cameron and Lenz teaches or suggests all of the limitations of claim 15.
Because we agree with at least one of the dispositive arguments advanced by
Appellants for claim 15, we need not reach the merits of Appellants' other
arguments. We, therefore, do not sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 15.
DECISION
We reverse the Examiner's rejections of claims 1-15 and 21-26.
REVERSED
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