Ex Parte FaberDownload PDFPatent Trial and Appeal BoardMar 2, 201713298877 (P.T.A.B. Mar. 2, 2017) Copy Citation 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. 13/298,877 11/17/2011 RICHARD D. FABER COM-048428-US 1608 1726 7590 03/06/2017 INTERNATIONAL PAPER COMPANY 6400 Poplar Avenue Memphis, TN 38197 EXAMINER LELAND III, EDWIN S ART UNIT PAPER NUMBER 2677 NOTIFICATION DATE DELIVERY MODE 03/06/2017 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): patents @ ipaper.com cynthia.bowling @ ipaper.com christel.j effcoats @ ipaper. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD D. FABER Appeal 2015-004307 Application 13/298,877 Technology Center 2600 Before JEFFREY S. SMITH, ADAM J. PYONIN, NABEEL U. KHAN, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-004307 Application 13/298,877 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1,2, 5—24, and 35—38, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1. A system comprising: a computer comprising hardware which includes a processor; an electronic database electronically stored on the computer for entry of an activation code which is an alphanumeric code or a bar code and which is provided with a discrete increment of at least one printable paper substrate sheet; and machine-readable printer controller software which is stored on the computer for use with the printable paper substrate which is remotely accessible by a user and which is activated for remote access by the user after entry by the user of the activation code into the electronic database. “Avery Easy Peel White Address Labels for Laser Printers,” www.avery.com (Aug. 27, 2010), retrieved from the Internet Archive Wayback Machine, https://web.archive.org (“Avery”) Examiner’s Rejections Claims 1, 2, 6—13, 15—18, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fiala and Avery. Illustrative Claim Prior Art Himeno Fiala Meunier Matsumori Osada US 2002/0138754 A1 Sept. 26, 2002 US 2003/0004889 A1 Jan. 2, 2003 US 2003/0016980 A1 Jan. 23, 2003 US 2004/0181456 A1 Sept. 16, 2004 US 2006/0200420 A1 Sept. 7, 2006 2 Appeal 2015-004307 Application 13/298,877 Claims 5,14, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fiala, Avery, and Matsumori. Claims 21—23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fiala, Avery, and Osada. Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Fiala, Avery, and Himeno. Claims 35—38 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fiala, Avery, and Meunier. ANALYSIS We adopt the findings of fact made by the Examiner in the Final Action and Examiner’s Answer, and agree with the decisions reached by the Examiner for the reasons given in the Examiner’s Answer. We highlight the following rebuttal arguments from the Reply Brief for emphasis. Claim 1 recites “an electronic database ... for entry of an activation code . . . which is provided with a discrete increment of at least one printable paper substrate sheet” and “machine-readable printer controller software . . . for use with the printable paper substrate.” Paragraph 15 of Appellant’s Specification discloses that a “printable paper substrate” refers to any paper substrate which may be printed on with a printer colorant. The Examiner finds Fiala teaches “an activation code . . . which is provided with a discrete increment of at least one printable paper substrate sheet” in describing an activation code provided with an instructional booklet that has been printed on with a printer colorant. Final Act. 3; Ans. 24; Fiala Fig. 45. The Examiner finds Avery teaches a “discrete increment of at least one printable paper substrate sheet” in describing a package of printable labels. Final Act. 4; Ans. 24. The Examiner concludes that 3 Appeal 2015-004307 Application 13/298,877 replacing the booklet of Fiala with the labels of Avery is a simple substitution that yields the predictable result of “an activation code . . . which is provided with a discrete increment of at least one printable paper substrate sheet” within the meaning of claim 1. Final Act. 5; Ans. 24—25. Appellant contends the scope of “a discrete increment of at least one printable paper substrate sheet” excludes the instruction booklet of Fiala, because the instruction booklet of Fiala may not be made of paper. Reply Br. 12—13. The Examiner finds that it is probable that the instruction booklet of Fiala is made of paper; additionally the Examiner finds one of ordinary skill would use paper in the instruction booklet of Fiala based on the printable paper teachings of Avery. Ans. 24. We agree with the Examiner. We find, by a preponderance of the evidence that one of ordinary skill in the art would consider the instruction booklet of Fiala is, more likely than not, made of paper. Further, Appellant has not provided persuasive evidence or argument to show that making an instruction booklet out of paper was “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher—Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)). Appellant contends that because Avery does not teach an activation code for remotely accessing its software, nor that its software may be obtained by entering an activation code, the rational underpinning for combining the teachings of Fiala and Avery is nonexistent. Reply Br 14. The Supreme Court has recognized that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than 4 Appeal 2015-004307 Application 13/298,877 yield a predictable result.” KSR, 550 U.S. at 416. Here, the Examiner finds that providing the activation code of Fiala with the labels of Avery, rather than the booklet of Fiala, represents the substitution of the known labels for the known booklet that does no more than yield the predictable result of providing the activation code with a discrete increment of at least one label printable paper substrate sheet. Final Act. 5. Appellant does not provide persuasive evidence or argument to rebut this finding. Cumulative to the Examiner’s findings, we find that Avery teaches the limitations of claim 1, except for including a software activation code along with the URF that is included with the printable paper substrate sheet. Fiala teaches providing the software activation code. Abstract; || 108—109, 132. Adding the activation code of Fiala along with the URF included with the substrate of Avery yields the predictable result of “an activation code . . . which is provided with a discrete increment of at least one printable paper substrate sheet.” A benefit of providing the activation code is allowing a user to register the software, to automatically receive software updates and avoid obsolescence, as taught by Fiala. 9—11, 16, 108—109. Although we find Avery modified by Fiala teaches the claimed activation code provided with the substrate sheet, in addition to Fiala modified by Avery as the Examiner finds, we highlight that “where the relevant factual inquiries underlying an obviousness determination are otherwise clear, characterization by the examiner of prior art as ‘primary’ and ‘secondary’ is merely a matter of presentation with no legal significance.” In reMouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing In re Bush, 296 F.2d 491, 496 (1961) (Rich, J.)). 5 Appeal 2015-004307 Application 13/298,877 Appellant contends Avery is not in the same field of endeavor as Appellant’s invention. Reply Br. 17—18. In particular, Appellant contends the Examiner has not explained why one of ordinary skill would specifically pick Avery out of the many thousands of references that might be relevant. Id. Our reviewing court addressed the issue of determining whether a reference is analogous art: A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. ... A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (internal citations and quotation marks omitted). Here, the Examiner finds Avery (1) is from the same field of endeavor as the claimed invention, namely, distribution of printing products and software for use with those products and (2) is reasonably pertinent to the particular problem with which the inventor was faced, namely, distributing software for use with packaged printing products. Ans. 25—26. Appellant does not persuasively explain an error in the Examiner’s findings of either the field of endeavor or the problem faced by the inventor. 6 Appeal 2015-004307 Application 13/298,877 Appellant contends the Examiner impermissibly relies on Appellant’s Specification to reject the claims. Reply Br. 18. However, Appellant has not persuasively shown any of the Examiner’s findings that are not found in the teachings of the prior art. Appellant contends the Examiner’s reason to combine, namely, substituting one known element for another, is inadequate because it is based on a mischaracterization of the teachings of the references. Reply Br. 18— 20. Appellant does not present persuasive evidence or argument to show the Examiner mischaracterized the teachings of the references. We sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellant presents arguments for the patentability of claims 2, 5—24, and 35—38 similar to those presented for claim 1. See Reply Br. 10-20. We find these arguments unpersuasive for the reasons given in our analysis of claim 1 above, and for the reasons given by the Examiner in the Final Action and Examiner’s Answer. We sustain the rejections of claims 2, 5—24, and 35—38 under 35 U.S.C. § 103. DECISION The rejections of claims 1,2, 5—24, and 35—38 are 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). See 37 C.F.R. § 41.50(f). AFFIRMED 7 Copy with citationCopy as parenthetical citation