Ex Parte Faber

Patent Trial and Appeal Board

Mar 2, 2017

13298877 (P.T.A.B. Mar. 2, 2017)

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
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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
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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
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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.)).
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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.
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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
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