Ex Parte Zhu et al

Patent Trials and Appeals Board

Jan 11, 2019

13501263 - (D) (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/501,263 06/21/2012
108134 7590
HONEYWELL/ ADDITON
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
01/15/2019
FIRST NAMED INVENTOR
XiaoxunZhu
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.
H0023983 1682
EXAMINER
MASUD, ROKIB
ART UNIT PAPER NUMBER
3687
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):
patentservices-us@honeywell.com
docket@ahpapatent.com
SPSIP@honeywell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAOXUN ZHU and ZIY ANG ZHANG
Appeal2017-010605 1
Application 13/501,263
Technology Center 3600
Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and
SCOTT E. BAIN, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-3, 6-10, and 13-28. Claims 4, 5, 11, and 12 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 According to Appellants, the real party in interest is Honeywell
International, Inc. (App. Br. 3.)
Appeal2017-010605
Application 13/501,263
STATEMENT OF THE CASE
Appellants' invention relates to an indicia reader at a point of
transaction (POT) for capturing a digital image with the indicia reader at the
POT and archiving the digital image. (Abstract.)
Claim 1 is exemplary and reproduced below:
1. A method of completing a transaction, the method
compnsmg:
upon at least a first instance of a mobile device moving
within a communication range of an establishment
communication device, automatically authenticating an
establishment software application residing on the mobile
device;
upon said authenticating, wirelessly transmitting, from
the establishment communication device, a request to pair with
the mobile device via said establishment software application;
receiving, at the establishment communication device, an
acceptance of the request to pair;
responsive to receiving the acceptance, automatically and
wirelessly pairing the establishment communication
device with the mobile device utilizing a pairing protocol;
responsive to the automatic and wireless pairing of the
establishment communication device with the mobile
communication device, wirelessly transmitting information data
from the establishment communication device to the mobile
communication device.
Claims 1-3, 6-10, 13-22, and 25-28 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Williams (US 2010/0012715 Al;
Jan. 21, 2010) and Yue (US 2004/0203354 Al; Oct. 14, 2004).
(Final Act. 3-9.)
2
Appeal2017-010605
Application 13/501,263
Claims 23 and 24 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Williams, Yue, and Fuccello (US 2006/0116160 Al;
June 1, 2006). (Final Act. 9-10.)
The Examiner has withdrawn the rejection of claims 1-3, 6-10, and
13-28 under 35 U.S.C. § 101. (Ans. 2.)
ANALYSIS
We are persuaded by Appellants' arguments (App. Br. 19) that the
Examiner has not provided a sufficient rationale on this record for
combining Williams and Yue.
The Examiner found that mobile device 106 and mobile module 100
of Williams, in which the two device are paired via display 102, correspond
to the limitation "upon at least a first instance of a mobile device ...
automatically authenticating an establishment software application residing
on the mobile device." (Final Act. 3.) The Examiner further found that
remote access device 150 of Yue, which connects Bluetooth devices 110 and
130, corresponds to the limitation "moving within a communication range of
an establishment communication device." (Id. at 4.) The Examiner
concluded that "it would have been obvious for one of ordinary skill in the
art to have modified the method and system of Williams to initiate
connection by the mobile device when moving within a communication
range of an establishment communication device as taught by Yue" (id.).
The Examiner reasoned that "[i]ncorporating such feature would expedite
the pairing of the point of sales with devices and generate more revenue by
saving time of merchant." (Id. at 5). We do not agree with the Examiner's
articulation of the rationale to combine.
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Appeal2017-010605
Application 13/501,263
Williams relates to "connecting a wireless unit to a point-of-sale
terminal." (Abstract.) Figure 7 of Williams illustrates one embodiment, in
which "the user positions handheld device 106 into close proximity to
mobile module display 102 so that display 102 is within field of view 112 of
handheld device camera 110 and the handheld device display is within field
of view 104 of mobile module 100." (i-f 43.) Moreover, Figure 8 of
Williams illustrates application software, such that "either of mobile module
100 or mobile device 106 initiates a pairing request for connecting to the
other device" and "[ t ]he pairing request may contain one or more optical
images that are projected on one of mobile module display 102 or on the
handheld device display." (i-f 42.)
Yue relates to a "remote access device [] configured to communicate
with each Bluetooth device within a locale" (Abstract) including, for
example, "the initialization information ... communicated each time a
communication channel is to be established between two 'paired' Bluetooth
devices" (i-f 16). In particular, Yue explains that "[a] user accesses the
remote access device 150 and requests a list of available Bluetooth devices,"
such as devices 110 and 120. (i-f 22; see also Fig. 1.)
Although the Examiner proposes to modify Williams with Yue, the
Examiner has not provided an articulated reasoning with some rational
underpinning as to how and why one of ordinary skill in the art would
combine such references. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) ("[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"); see also KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418
4
Appeal2017-010605
Application 13/501,263
(2007). In particular, the Examiner has not adequately explained why one of
ordinary skill in the art would modify Williams, in which pairing is achieved
by projecting optical images from mobile module 100 to mobile module
display 102, 2 with Yue, in which remote access device 150 communicates
and is "paired" with devices 110 and 120 via Bluetooth. The Examiner's
conclusory statement that "[i]ncorporating such feature [from Yue] would
expedite the pairing of the point of sales with devices and generate more
revenue by saving time of merchant," does not address the different pairing
mechanisms----optical vs. Bluetooth-taught in the respective references and,
therefore, does not articulate one of the rationales provided in KSR with a
rational underpinning to support a conclusion of obviousness. (Final Act. 5.)
See KSR, 550 U.S. at 415--421.
Accordingly, we are persuaded by Appellants' argument that, on this
record, "there is no suggestion or motivation for those of ordinary skill in the
art to make the proposed modification." (App. Br. 19.)
Thus, the Examiner has improperly combined Williams and Yue to
reject independent claims 1, 10, and 17 under 35 U.S.C. § 103(a).
Accordingly, we do not sustain the rejection of claims 1-3, 6-10, 13-
22, and 25-28 under 35 U.S.C. § 103(a).
In addition, we do not sustain the rejections of claims 23 and 24
under 35 U.S.C. § 103(a) over Williams, Yue, and Fuccello for the same
reasons discussed previously with respect to the rejection of claims 1-3, 5, 9,
11, 13, 16, 18, and 20 under 35 U.S.C. § 103(a) over Williams and Yue.
2 Although Williams refers to this as "display 102," it teaches that display
102 may "contain[] a screen that allows for bi-directional transmission and
receipt of images." (i-f 37 (emphasis added).)
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Appeal2017-010605
Application 13/501,263
DECISION
The Examiner's decision rejecting claims 1-3, 6-10, and 13-28 is
reversed.
REVERSED
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