Ex Parte Tsirline et al

Patent Trial and Appeal Board

Jul 18, 2016

11755600 (P.T.A.B. Jul. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
111755,600
97928 7590
Zebra/ Alston & Bird
101 S. Tryon Street
Suite 4000
FILING DATE
0513012007
07/20/2016
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Boris Y. Tsirline
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.
054054/3 21862 9400
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
07/20/2016 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):
jonathan.thomas@alston.com
IP _Legal@zebra.com
USPTOmail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BORIS Y. TSIRLINE, KARL TORCHALSKI,
MARTIN ANDREAS KARL SCHWAN, STEVEN KOVANKO,
ANTHONY BROWN, CHRIS AIELLO, DANIEL F. DONATO,
ROBERT GAWELCZYK, TOM ZWIER, and WILLIAM SHUFF
Appeal2015-000081
Application 11/755,600
Technology Center 2800
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1-10, 15-19, and 21-24 under 35
U.S.C. § 103(a) over at least the basic combination of Cremon (US
6,802,659 B2, issued Oct. 12, 2004) and Elizondo (US 6,967,579 Bl, issued
1 The Real Party in Interest is stated to be ZIH Corp., which is a wholly
owned subsidiary of Zebra Technologies Corporation. App. Br. 2.
Appeal2015-000081
Application 11/755,600
Nov. 22, 2005)2. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We REVERSE.
Claim 1 is illustrative of the claimed subject matter (emphasis added
to highlight key limitations):
1. A media roll comprising:
a core;
a plurality of media units wound about the core, wherein one or more
of the plurality of media units include one or more media unit transponders;
an identification transponder attached to the core and having
retrievable information pertaining to the plurality of media units, wherein:
the retrievable information includes parameters for configuring an
encoding operation of the one or more media unit transponders; and
the parameters differ from that which is stored on the one or more
media unit transponders; and
a RF field insulator positioned between the identification transponder
and the plurality of media units, wherein the RF field insulator is configured
to electromagnetically isolate the identification transponder from the
plurality of media units making the identification transponder less
susceptible to interference from the plurality of media units during retrieval
of the retrievable information.
App. Br. 21 (Claims Appendix).
Appellants argue the claims as a group, and focus on sole independent
claim 1. (App. Br. generally). Accordingly, all the claims stand or fall with
the independent claim. See 37 C.F.R. § 41.37(c)(l)(vii) (2011).
2 While additional prior art is applied to dependent claims 4--8 (Final Action
4 and 5), Appellants' arguments focus on claim 1, such that all other claims
stand or fall with claim 1 (e.g., App. Br. 20).
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Appeal2015-000081
Application 11/755,600
ANALYSIS
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"[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." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval inKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
After review of the respective positions provided by Appellants and
the Examiner, we conclude that the preponderance of the evidence supports
Appellants' position that the Examiner has not met the burden in this case
for substantially the reasons set forth by Appellants in the Briefs.
Accordingly, we reverse the Examiner's rejections of all the claims on
appeal.
We add the following primarily for emphasis.
The Examiner takes the position that the information stored on the
media and identification transponders should not be given any patentable
weight (e.g., Ans. 2 and 4) and relies upon Cremon's disclosure regarding
the option of having both an internal code reader and an external code
reader, stating
Cremon suggests the use of two different code readers at
the same time. Whether the parameters stored on the
transponders are the same or different does not change
the physical structure of these transponders, and
therefore does not change the structure of the claimed
media roll.
(Ans. 5)
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Appeal2015-000081
Application 11/755,600
However, for reasons set forth by Appellants, we agree that the
information/machine-readable code including the relationship of the
information stored on the transponders as required by claim 1 falls within
the realm of functional descriptive material, because the claim features
describe a relationship between the retrievable information and the operation
of the media roll during an encoding operation (App. Br. 4--11; Reply Br. 3
and 4). Thus, the information/machine-readable code and the relationship of
the information/code on the transponders must be considered. The Examiner,
however, does not adequately address Appellants' position that
At no point does Cremon teach, suggest, or imply using
an internal code reader and an external code reader to
access different data types from one another, let alone
using two code readers in concert with one another to
access two different transponders on a single media roll
or a media roll having two different types of
transponders storing different data. As such, Appellant
respectfully submits that the Examiner's ii~ns\'l/er fails to
address the arguments presented in Appellant's Brief.
(Reply Br. 6; emphasis added)
The Examiner does not rely upon any other reference to cure these
deficiencies of Cremon.
A preponderance of the evidence on this record supports the
Appellants' position that the Examiner has not established that the applied
prior art teaches or suggests the arrangement of and relationship between the
media transponder( s) and identification transponder as required by all the
claims on appeal.
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Appeal2015-000081
Application 11/755,600
Furthermore, a preponderance of the evidence supports Appellants'
position that the Examiner is using impermissible hindsight to modify
Cremon so as to possibly result in the media and identification transponders
as claimed so as to need a RF insulator there between (the Examiner relies
upon Elizonda for exemplifying the use of a RF insulator) (App. Br. 13 and
14; Reply Br. 6 and 7). The fact finder must be aware "of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex
post reasoning." KSR, 550 U.S. at 421 (citing Graham v. John Deere Co.,
383 U.S. 1, 36 (1966) (warning against a "temptation to read into the prior
art the teachings of the invention in issue")).
Accordingly, we reverse the rejections of all the claims on appeal.
CONCLUSION
The Examiner's§ 103 rejections of all the claims on appeal are
reversed.
REVERSED
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