Ex Parte Kehoe et al

Board of Patent Appeals and Interferences

Jun 5, 2009

11026829 (B.P.A.I. Jun. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TIMOTHY KEHOE, CHRISTOPHER N. CRAWFORD, ROBERT
K. DESTEFANO, ROBERT J. KOWALSKI, DOMINICK SALVATO,
MICHAEL SASLOFF, JORG SCHLIEFFERS, and GREGORY JONES
____________________

Appeal 2008-004872
Application 11/026,8291
Technology Center 2100
____________________

Decided2: June 5, 2009
____________________

1 Application filed December 30, 2004. Appellants claim the benefit under
35 U.S.C. § 119 of provisional application 60/263,438, filed January 23,
2001, and a Continuation-in-Part application of pending U.S. Patent
Application Serial No. 09/835,733 filed April 16, 2001, which is a
continuation of U.S. Patent Application Serial No. 09/528,239, filed March
17, 2000, and issued as U.S. Patent No. 6,244,513, which is a continuation
of U.S. Patent Application Serial No. 09/436,169, filed November 9, 1999,
and issued as U.S. Patent No. 6,123,265, which is a continuation of U.S.
Patent Application No. 08/883,357. The real party in interest is Symbol
Technologies, Inc.

2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 11/026,829

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Before JOHN C. MARTIN, JAY P. LUCAS, and THU A. DANG,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1-13 and 16-28
under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). Claims 14 and
15 were cancelled.

Appellants’ invention relates to an adapter unit for attaching a scanner
device to a personal digital assistant (PDA). The attachment provides added
functionality to the handheld PDA. In the words of the Appellants:
In a preferred embodiment the invention includes an adapter
unit that connects to PDA via the PDA’s expansion connector. .
. . The adapter easily slides on the PDA and may incorporate a
retainer clip to lock the adapter and the PDA together.
Electronics in the adapter add bar code scanning, imaging
capability, additional power, wireless and other PC card
support.

(Spec. ¶ [0018].)

Claim 1 is exemplary:
1. A system for activating a product identification module
in a personal digital assistant, the system comprising:
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an adapter unit removeably attachable to the personal
digital assistant, the adapter unit comprising a trigger
mechanism that activates a scanning function, an adapter
connector that engages the personal digital assistant to enable
signal sending between the trigger mechanism and the personal
digital assistant, an interrupt generator that sends an interrupt
signal to the personal digital assistant, and an interrupt handler
that determines whether the personal digital assistant is in the
adapter.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Postman US 5,664,231 Sep. 2, 1997

REJECTION
The Examiner rejects the claims as follows:

Claims 1-13 and 16-28 stand rejected under 35 U.S.C. § 102(e)
because the claimed invention is anticipated by Postman.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Final Rejection, the Briefs, and the Answer for their
respective details. Only those arguments actually made by Appellants have
been considered in this opinion. Arguments that 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).

We affirm the rejection.
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ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 102(e). The issue turns on whether
the Postman reference teaches “an interrupt handler that determines whether
the personal digital assistant is in the adapter,” as well as other argued
limitations.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented an adapter unit for attaching a portable
scanning device to a personal digital assistant. (Spec. ¶¶ [0017], [0018].)
The adapter unit sends out a notification to check for an attachment to a
personal digital assistant and receives a reply when a personal digital
assistant is connected. (Spec. ¶ [0094].)
2. The reference Postman discloses a PC Card (corresponding to
Appellants’ adapter unit) that connects a portable scanner to a personal
digital assistant. (See Fig. 1.) The PC Card notifies the PDA when data
await transmittal. (See col. 8, ll. 55-58.) When attached, the PDA sends
back a response. (See col. 8, ll. 24-33; col. 8, l. 64 to col. 9, l. 2; and col.
16, ll. 30-36.) Postman further discloses handshaking lines and a
handshake bus. (See col. 7, ll. 44-47 and Figs 3, 8, and 12.) A person of
ordinary skill in the art would have recognized Postman’s PC Card and
PDA as two devices engaging in a computer handshake process for
purposes of verifying the parties’ connection. (Id.)
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3. “A handshaking protocol consists of a series of steps in which the sender
and receiver proceed to the next step only when both parties agree.”3
PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) that “claims must be interpreted as broadly as their terms reasonably
allow.”

ANALYSIS
From our review of the administrative record, we find that the
Examiner’s reasons for rejecting Appellants’ claims under 35 U.S.C. § 102
are presented on pages 2 to 7 of the Final Rejection and pages 3 to 8 of the
Examiner’s Answer. In opposition, Appellants present a number of
arguments. However, in the Appeal Brief, rather than explaining which

3 David A. Patterson & John L. Hennessy, Computer Organization and
Design: The Hardware/Software Interface 660 (2nd ed. 1998).
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specific claim limitations are not satisfied by Postman and why, Appellants
argued the claims limitations collectively. That is, after providing a brief
description of Postman (Appeal Br. 5), Appellants argued the limitations
collectively in simply asserting that
it is apparent from the above that the cited document does not
teach or suggest an adapter unit comprising a trigger
mechanism that activates a scanning function, an adapter
connector that engages the personal digital assistant to
enable signal sending between the trigger mechanism and
the personal digital assistant, an interrupt generator that
sends an interrupt signal to the personal digital assistant,
and an interrupt handler that determines whether the
personal digital assistant is in the adapter.
Id. This explanation lacks sufficient specificity to satisfy Appellants’ burden
to demonstrate error in the Examiner’s position.
The Examiner has rejected the claims for being anticipated by
Postman. (Ans. 3.)
In the Reply Brief, Appellants separately argue a number of claim
limitations. Specifically, Appellants contend that Postman does not teach
several of the claimed limitations, including “a trigger mechanism that
activates a scanning function,” “an adapter connector that engages the
personal digital assistant to enable signal sending between the trigger
mechanism and the personal digital assistant,” “an interrupt generator that
sends an interrupt signal to the personal digital assistant,” and “an interrupt
handler that determines whether the personal digital assistant is in the
adapter.” (App. Br. 5.) These new arguments in the Reply Brief are entitled
to no consideration because they were not necessitated by a new point in the
Answer, and thus should have been made in the opening Brief. See Optivus
Technology, Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
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2006) (argument raised for the first time in the reply brief that could have
been raised in the opening brief is waived); accord Ex parte Scholl, No.
2007-3653, slip op. at 18 n.13 (BPAI March 13, 2008) (Informative
Opinion). Furthermore, even if we gave weight to those new arguments,
they would be considered unpersuasive for the following reasons.
Regarding the claimed “trigger mechanism,” Appellants contend that
Postman’s microprocessor 196, “manual trigger,” and switch 194 do not
equate with Appellants’ claimed trigger mechanism because Postman’s
“scanning function is not activated by the trigger mechanism, but rather the
microprocessor.” (Reply Br. 3.)
The Examiner points to Postman at column 18, lines 58-63, which
discloses a manual trigger that controls a switch 194 via a microprocessor
196. (See Final Rej. 2; Ans. 3.) Postman says, “If a laser based scanning
engine is coupled to port 210 and the interface is designed for use in a
portable environment as with a PDA, switch 194 is preferred and is
controlled by the microprocessor 196 either through a manual trigger or the
software start-stop mechanism previously described.” (col. 18, ll. 58-63.)
The Examiner reasons that Postman’s manual trigger controls a switch 194
via a microprocessor 196 in the same way that Appellants’ claimed trigger
mechanism starts the scanning function. (See Ans. 9.) We do not find error
in the Examiner’s view that Postman’s elements collectively serve as
Appellants’ trigger mechanism as claimed.
Next, Appellants argue that Postman’s PCMCIA 68-PIN bus is not the
same as the claimed adapter connector. (App. Br. 5.) More specifically,
Appellants argue that the claimed invention includes a signal sent directly
between the trigger mechanism and the PDA, whereas in Postman, data are
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first stored in random access memory on the adapter unit. (Reply Br. 3-4.)
The manner in which the signal travels is not claimed. Therefore,
Appellants’ argument concerning the path the signal travels is ineffective.
In the Examiner’s Answer, the Examiner points out that Postman’s PCMCIA
68-PIN bus serves as a connector between the PC Card and the PDA. (See
Ans. 7; Postman, Fig. 3, reference no. 48.) Thus, the Examiner finds that
Postman’s PCMCIA 68-PIN bus functions in the same manner as
Appellants’ claimed adapter connector. (Id.) Reading exemplary claim 1
broadly but reasonably, In re Zletz, 893 F.2d at 321, Appellants’ claimed
adapter connector does indeed read on Postman’s PCMCIA 68-PIN bus.
Accordingly, we find no error in the Examiner’s analysis.
Appellants further argue that the Examiner has not shown “an
interrupt generator that sends an interrupt signal to the personal digital
assistant.” (App. Br. 5.)
The Examiner points out that Postman teaches sending an interrupt
message from the PC Card to a PDA. (Final Rej. 2; Ans. 3-4.) Postman
discloses that “the PC Card notifies the PDA of the existence of a message
to be picked up by asserting a Level Mode Interrupt signal on the handshake
bus 46.” (See col. 8, ll. 55-58.) Thus, Postman’s interrupt travels from a
first location on the PC Card to a second location (the PDA). (Id.)
Likewise, Appellants’ claimed interrupt generator transmits the interrupt
signal from a first location (Appellants’ claimed adapter unit) to a second
location (a personal digital assistant). (See claim 1.) We thus find no error
in equating Postman’s interrupt signal with Appellants’ claimed interrupt
generator.
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Finally, regarding the claim limitation “an interrupt handler that
determines whether the personal digital assistant is in the adapter,”
Appellants argue that Postman fails to teach the limitation. (App. Br. 5.)
The Examiner pointed to Postman’s interrupt service routine. (See Final
Rej. 4; Ans. 3-4; Postman, col. 8, ll. 24-33; col. 8, l. 64 to col. 9, l. 2; and
col. 16, ll. 30-36.) The Appeal Brief does not address how Postman’s
interrupt service routine fails to anticipate the claim limitation, and we
decline to make arguments on Appellants’ behalf.
However, in the Reply Brief Appellants further contend that “[i]t is
submitted that determining whether the personal digital assistant is in the
adapter [Appellants’ claim 1] is clearly distinguishable from [Postman’s]
detecting whether or not a memory location or register bit is set, or whether
or not an indication that scanning should be commenced has been received.”
(Reply Br. 5.) This argument in the Reply Brief is entitled to no
consideration because it was not necessitated by a new point in the Answer,
and thus should have been made in the opening Brief.
Even if we gave weight to Appellants’ argument, it would not be
considered persuasive for the following reasons.
Our reviewing court has noted that when a single prior art reference
expressly or inherently discloses each claim limitation, the claim is
anticipated. (See Perricone, 432 F.3d at 1375.) We carefully reviewed the
sections of Postman cited by the Examiner in the Answer, and indeed the
entire reference. A person of ordinary skill in the art would have understood
that before running Postman’s interrupt service routine, Postman’s PC Card
confirms the PC Card is connected to the PDA. (FF#2.) An inherent feature
of Postman’s disclosure is that a PDA and Postman’s PC Card must be
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connected, physically or via wireless networking, before any information
passes between them. (See Fig. 1 and col. 2, ll. 57-64.) Absent any
connection, it logically follows that Postman’s PDA would not have been
capable of receiving notifications of a connection from Postman’s PC Card.
Postman’s connection, in turn, relies on the handshaking lines and a
handshake bus disclosed in numerous sections of the reference. (See col. 7,
ll. 44-47 and Figs 3, 8, and 12.) By its ordinary definition, Postman’s
teaching of a computer handshaking protocol simply involves a “series of
steps in which the sender and receiver proceed to the next step only when
both parties agree.” (FF#3.)
In this case, a person of ordinary skill in the art would have
recognized Postman’s PC Card (i.e., the sender) and PDA (i.e., the receiver)
as two such parties engaging in a computer handshake for purposes of
verifying the parties’ connection. (FF#2.) After Postman’s PC Card and the
PDA agree that a connection exists, the parties would have proceeded to the
next step, that is, Postman’s teaching of running an interrupt service routine.
(See col. 8, ll. 24-33; col. 8, l. 64 to col. 9, l. 2; and col. 16, ll. 30-36.) For
all of the reasons stated above, the claim limitation “an interrupt handler that
determines whether the personal digital assistant is in the adapter” reads on
Postman’s interrupt service routine and handshaking features. Accordingly,
we find no error in the rejection on this point.
Appellants contend that the Examiner erred in rejecting claims 1-13
and 16-28 under 35 U.S.C. 102(e). Reviewing the findings of facts cited
above, we find no error.
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CONCLUSION
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1-13 and 16-28.

DECISION
The Examiner’s rejection of claims 1-13 and 16-28 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

erc
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Enclosure: David A. Patterson & John L. Hennessy, Computer Organization
and Design: The Hardware/Software Interface 660 (2nd ed. 1998).