Ex Parte Ericson et al

Patent Trial and Appeal Board

Jan 23, 2013

11084090 (P.T.A.B. Jan. 23, 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.
11/084,090 03/21/2005 Petter Ericson 09059.0057-01 8158
22852 7590 01/23/2013
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
HUYNH, CONG LAC T
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
01/23/2013 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 PETTER ERICSON and STEFAN LYNGGAARD
____________

Appeal 2010-012519
Application 11/084,090
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, DENISE M. POTHIER,
and JAMES B. ARPIN, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 35-47 and 55-60. Claims 1-34 have been withdrawn from
consideration as subject to a restriction requirement. Claims 48-54 have
been objected to by the Examiner as containing allowable subject matter, but
dependent on rejected base claims. An oral hearing was conducted on this
appeal on January 15, 2013. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2010-012519
Application 11/084,090

2
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Appeal Brief (filed Mar. 10, 2010), the Answer
(mailed May 26, 2010), and the Reply Brief (filed July 26, 2010). Only
those arguments actually made by Appellants have been considered in this
decision. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
(see 37 C.F.R. § 41.37(c)(1)(vii)).

Appellants’ Invention
Appellants’ invention relates to the capturing of images of a surface
using an optical detector in a user unit. A position detection process, which
operates on at least a first subset of images, is alternatively activated with a
bar code detection process, which operates on at least a second subset of
images. The position detection process decodes a position-coding pattern to
obtain position data, and the bar code detection process results in the
generation of bar code data. See generally Spec. ¶¶ 010-011.
Claim 35 is illustrative of the invention and reads as follows:
35. A method for detection of position-coding patterns and bar codes in a
user unit, comprising:
capturing images of a surface using an optical detector in the user
unit; and
alternating between activating a position detection process to operate
on at least a first subset of said images and a bar code detection process to
operate on at least a second subset of said images, the position detection
process including decoding a position-coding pattern to obtain position data
and the bar code detection process resulting in bar code data.

Appeal 2010-012519
Application 11/084,090

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The Examiner’s Rejections
The Examiner relies on the following prior art references to show
unpatentability:
Pelton US 5,457,309 Oct. 10, 1995
Andreasson US 2002/0021835 A1 Feb. 21, 2002
Claims 35-42 and 55-60 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Pelton.1
Claims 43-47 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Pelton and Andreasson.

ANALYSIS
Section 102(b) REJECTION
Appellants argue, with respect to independent claims 35, 55, and 56,
that Pelton does not disclose alternating between a position detection process
and a bar code detection process as claimed. According to Appellants,
Pelton, at best, discloses a single process of decoding a bar code by detecting
the edges of a bar code and then determining the width of the bar code.
(App. Br. 11-15; Reply Br. 2-5). In Appellants’ view, therefore, Pelton’s
single bar code detection process cannot be both a position detecting process
and a bar code detection process (App. Br. 11-15; Reply Br. 2-5).
We do not agree with Appellants as our interpretation of the
disclosure of Pelton coincides with that of the Examiner. As explained by

1 As noted by Appellants (App. Br. 18; Reply Br. 2), although the Examiner
in the final Office action (mailed August 28, 2009) objected to alleged
informalities in claims 35 and 55-60, no mention of this objection is made in
the Examiner’s Answer. We conclude, therefore, that this objection has
been withdrawn. See Ex parte Emm, 118 USPQ 180, 181 (BPAI 1957).
Appeal 2010-012519
Application 11/084,090

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the Examiner, Pelton first discloses a position detecting process in which the
location of the edges of the bar code are detected and identified (Ans. 3-4,
11). As described by Pelton, the location of the bar code edges are
determined, and these bar code edges constitute a first portion of the bar
code, i.e., a first subset of images as claimed (col. 3, ll. 7-8, 61-64; col. 4, ll.
24-27). As further explained by the Examiner, after detecting the edges
of the bar code, Pelton uses the detected edge information to activate a bar
code detection process which decodes the data bearing features of the bar
code between the bar code edges (Ans. 11). As disclosed by Pelton, the data
bearing features form a second portion of the bar code, i.e. a second subset
of images as claimed (col. 4, ll. 27-31).
Further, contrary to Appellants’ contention (App. Br. 12-13; Reply Br.
3-4), we find no error in the Examiner’s determination that Pelton discloses
that the bar code detection process is performed alternately with the position
detecting process as claimed. We agree with the Examiner (Ans. 11-12) that
an ordinarily skilled artisan would have recognized from Pelton’s disclosure
that, since the bar code detection process is performed after the edge
detecting position detecting process and the two processes are performed for
each of the bars in the bar code, the two processes will alternate with each
other for each successive bar in the bar code.
Lastly, we are not persuaded by Appellants’ argument (Reply Br. 4-5)
that Pelton does not disclose the decoding of a position-coding pattern that is
distinct from a bar code. We find nothing in the language of independent
claims 35, 55, and 56, which requires the position-coding pattern to be
distinct from the bar code. In other words, there is nothing in the claims
which precludes Pelton’s bar code edges, as construed, from corresponding
Appeal 2010-012519
Application 11/084,090

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to the claimed position coding pattern, i.e., the first subset of images, and the
data bearing features between the bar code edges, as construed, from
corresponding to the claimed second subset of images.
In view of the above discussion, we find that the Examiner did not err
in concluding that every element of independent claims 35, 55, and 56 is
present in the disclosure of Pelton. Accordingly, the Examiner’s § 102(b)
rejection of independent claims 35, 55, and 56, as well as of dependent
claims 36-42 and 57-60 not separately argued by Appellants, is sustained.

Section 103(a) REJECTION
We also sustain the Examiner’s obviousness rejection, based on the
combination of Andreasson and Pelton, of dependent claims 43-47.
Appellants have not argued the rejected claims with any particularity but,
instead, have relied upon arguments asserted against the rejection of
independent claims 35 alleging Pelton’s lack of disclosure of alternating
between a position-detecting process and a bar code detection process (App.
Br. 15-16; Reply Br. 6). We find these arguments unpersuasive as discussed
supra.

CONCLUSION
We conclude that the Examiner did not err in rejecting claims 35-42
and 55-60 under 35 U.S.C. § 102(b) and rejecting claims 43-47 under
35 U.S.C § 103(a).

Appeal 2010-012519
Application 11/084,090

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DECISION
The Examiner’s decision rejecting claims 35-47 and 55-60 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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