Ex Parte Kennedy et al

Patent Trials and Appeals Board

Mar 29, 2019

13556327 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/556,327 07/24/2012 Benedict John Howard Kennedy
126568 7590 04/02/2019
Zebra Technologies Corporation
3 Overlook Point
Lincolnshire, IL 60069
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.
102267US01 2442
EXAMINER
MIKELS, MATTHEW
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
docketing@zebra.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENEDICT JOHN HOWARD KENNEDY 1
and Michael J. Giannetta
Appeal2018-002879
Application 13/556,327
Technology Center 2800
Before MARK NAGUMO, JENNIFER R. GUPTA, and
DEBRA L. DENNETT, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Benedict John Howard Kennedy and Michael J. Giannetta
("Kennedy") timely appeal under 35 U.S.C. § 134(a) from the Final
Rejection2 of all pending claims 1-20. We have jurisdiction. 35 U.S.C. § 6.
We reverse.
1 The real party in interest is identified as Symbol Technologies, LLC, an
indirect wholly-owned subsidiary of Zebra Technologies Corporation.
(Appeal Brief, filed 13 July 2017 ("Br."), 3.)
2 Office Action mailed 13 December 2016 ("Final Rejection"; cited as
"FR").
Appeal2018-002879
Application 13/556,327
A. Introduction 3
OPINION
The subject matter on appeal relates to a mobile device (independent
claims 1 and 20) and a method (independent claim 12) for displaying an
object on a viewing screen based on information encoded in a barcode.
(Spec. 1 [0003]).
The '327 Specification explains that warehouse workers, for example,
retrieve items from warehouse shelves based on a list that designates an aisle
and shelf that holds the item. In the words of the Specification, "[ o ]nee the
worker is in the general vicinity of the item, the worker is required to scan
the shelves by eye to locate each item." (Id. at [0002].) The Specification
describes a process and a mobile device that are said to improve the
efficiency of such an object retrieval process.
As illustrated in Figure 3, reproduced on the next page, barcode 3044
is placed near object 318, which is to be retrieved. Barcode 304 encodes,
inter alia, the location of object 318 relative to the location of the barcode.
A camera in mobile device 300 captures image 308 ofbarcode 304, and a
processor in device 300 then determines the location 326 of object 318
relative to barcode 304 and displays the "visually accentuated [320]
object [image 322] in a field of view of the camera," thereby assisting the
3 Application 13/556,327, Mobile device for displaying a topographical
area defined by a barcode, filed 24 July 2012. We refer to the
"'327 Specification," which we cite as "Spec."
4 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Application 13/556,327
worker to locate and retrieve the item promptly. In some embodiments, the
known size 306 of bar code 304 is used to calculate the distance 302
between the camera and the barcode, in order to calibrate mobile device 300.
(Spec. 19 [0051]-21 [0055].)
{Figure 3 is shown below.}
304
{Figure 3 shows reader 300 and object 318, which is at location 326 relative
to barcode 304}
Claim 1 is representative and reads:
A mobile device comprising:
a camera capturing an image of a barcode,
the barcode comprising information containing an
object location relative to the barcode 's location,
wherein the barcode' s location is different from the
object location;
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Appeal2018-002879
Application 13/556,327
a processor coupled to the camera, configured to:
decode the barcode,
determine the object location relative to the barcode's
location in response to decoding the barcode,
instruct a display, coupled to the processor, to present
an indicator to visually accentuate the object based on
the determined object location; and
the display configured to display the visually accentuated
object in a field of view of the camera in response to the
instructions.
( Claims App., Br. 11; some formatting, and emphasis added.)
Independent claim 20 claims the mobile device in means-plus-
function format, and remaining independent claim 12 covers a method of
displaying a topographical area defined by the barcode.
The Examiner maintains the following ground of rejection: 5, 6
Claims 1-20 stand rejected under 35 U.S.C. § I03(a) in view of the
combined teachings of MacGregor 7 and Prada Gomez. 8
5 Examiner's Answer mailed 8 November 2017 ("Ans.").
6 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
7 Christopher S.A. MacGregor, Enhanced guidance for electronic devices
having multiple tracking modes, U.S. Patent No. 8,624,725 Bl
(7 January 2014), based on an application filed 22 September 2011.
8 Luis Ricardo Prada Gomez et al., Transitioning a mixed-mode vehicle to
autonomous mode, U.S. Patent No. 2014/0358331 Al (4 December 2014),
based ultimately on an application filed 11 May 2011.
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Application 13/556,327
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
The Examiner finds (FR 2 ,r 4), inter alia, that MacGregor teaches
(at col. 2, 11. 35--40, and col. 3, 11. 43--48) a mobile device having a bar code
reader (camera), "the barcode comprising information relating to an object
location relative to the barcode' s location." The Examiner finds further that
"MacGregor does not explicitly teach the barcode comprising information
containing an object location." (FR 3, 11. 8-9.) However, the Examiner
finds that "Prada Gomez teaches the barcode comprising information
containing an object location (paragraph 0024: the QR code contains address
or position information)." (J d. at 11. 10-11.) The Examiner concludes that it
would have been obvious "to add the location information of Prada Gomez
to MacGregor because having address or position information allows the
code to contain exact global coordinates, increasing the accuracy of the
device," as taught by Prada Gomez in paragraph [0024]. (FR 3, 11. 12-16.)
Kennedy urges (Br. 8, 11. 9-11) the Examiner erred harmfully in
finding that MacGregor teaches or suggests an embodiment in which a
"barcode comprising information containing an object location relative to
the barcode' s location" is imaged, as recited in claim 1. 9
9 Claims 12 and 20 recite similarly that the barcode contains "a location of
the topographical area relative to the barcode's location." (Claims App.,
Br. 12-13, and 14, respectively.) Thus, the same argument applies to these
claims and the corresponding dependent claims.
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Application 13/556,327
Upon review of MacGregor's disclosure, the weight of the evidence
supports Kennedy's arguments. MacGregor does state that "[b ]y enabling
the device to use appropriate location-determining mechanisms in certain
situations, the device of some embodiments may determine and present
accurate position, orientation, and/or directional guidance to the user."
(MacGregor col. 2, 11. 61---64; not cited by the Examiner.) However,
MacGregor does not, as the Examiner finds, "explicitly teach the barcode
comprising information containing an object location" (FR 3, 11. 8-9}-
particularly not relative to the barcode location.
Prada Gomez, paragraph [0024 ], reads in most relevant part:
FIG. 2B depicts an example of a reference indicator 250.
The reference indicator 250 may be read by a reference
sensor 108 on the vehicle. The specific reference
indicator 250 as shown in FIG. 2B is a QR Code, a two-
dimensional barcode containing data. A QR Code may
contain encoded address or position information. The
vehicle will be able to determine its precise location based on
the encoded data in the QR Code. The code could also
contain exact global coordinates (latitude and longitude)
relating to the QR Code location or the landing strip location.
(Prada Gomez 2 [0024].)
Although the Examiner presents adequate reasons to combine the
teachings of Prada Gomez with those of MacGregor, Prada Gomez does not,
in this passage teach or suggest, in the words of claim 1, that the "object
location relative to the barcode' s location" be encoded in the barcode.
In response to Kennedy's criticisms, the Examiner finds that
"MacGregor discloses relative locations of a QR code and another object in
numerous portions of the disclosure." For example, the Examiner (Ans. 5,
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Application 13/556,327
Response to Argument) cites portions of the following passage in
MacGregor, which we reproduce in full:
[M] apping information for a particular area ( e.g., a shopping
mall, an office building, a school, a city) may include
location information of objects ( e.g., mobile devices,
printers/copiers) and locations (e.g., bathrooms, kitchens,
offices, conference rooms, etc.) within the particular area
( e.g., geographical coordinates of objects and locations or the
position of certain items with respect to other items).
(MacGregor col. 6, 11. 23-29; emphasis added.)
While it might be argued that the recitation of "the position of certain
items with respect to other items" includes the position of a desired item
with respect to the location of a barcode (a particular instance of an "item"),
this passage does not "disclose[] relative locations of a QR code and another
object," as determined by the Examiner. (Ans. 5; emphasis added).
Moreover, while it might be argued that it would also have been obvious as a
matter of "common sense" that the barcode could encode to location of an
object relative to the barcode itself, MacGregor does not, as the Examiner
finds in the Final Rejection, make that particular disclosure expressly.
The Examiner's reliance on the general teachings of Prada Gomez in
paragraph [0024 ], that a QR code may comprise information containing an
object location, does not cure the absence of a teaching in the record----other
than Kennedy's own disclosure in the '327 Specification-that the location
of an object may be specified relative to the location of the barcode. To the
extent the Examiner may be relying on "common sense" to supply the
missing limitation, our reviewing court has indicated that "common sense is
typically invoked to provide a known motivation to combine, not to supply a
missing claim limitation." Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355,
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Application 13/556,327
13 61 (Fed. Cir. 2016). The court explained that the use of "common sense"
to provide a limitation admittedly missing from the prior art occurs rarely,
e.g., when "the limitation in question was unusually simple and the
technology particularly straightforward." 10 Id. at 1362. The Federal Circuit
concluded, based on an extensive discussion of precedent,
that while "common sense" can be invoked, even potentially
to supply a limitation missing from the prior art, it must still
be supported by evidence and a reasoned explanation. In
cases in which "common sense" is used to supply a missing
limitation, as distinct from a motivation to combine,
moreover, our search for a reasoned basis for resort to
common sense must be searching. And, this is particularly
true where the missing limitation goes to the heart of an
invention.
Id. at 1363 (emphasis added).
On the present record, in the absence of sufficient evidence
concerning the provision of the relative location of an object with respect to
the barcode, we reverse.
We need not reach the question of the obviousness or not of claims 5
and 16, because the resolution of the further limitation that "the processor
determines a distance between the camera and the barcode based on
comparing a dimension of the barcode determined from the captured image
of the barcode with a known dimension of the barcode" (Claims App.,
Br. 11-12) does not cure the deficiencies of independent claims 1 and 12,
discussed supra. Nonetheless, as Kennedy points out (Br., 10, 11. 1-10), we
10 In Arendi, the missing limitation, step D, "was nothing more than an
instruction to repeat steps A, B, and C until a particular quantity of email
was sent in accordance with the claim." 832 F.3d at 1362.
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find no support in the record the Examiner's findings regarding the
limitations recited in these claims. The passage cited by the Examiner
(FR 4, 1st full para.; Ans., para. bridging 3--4), reads in full:
Due to the drifts inherent to the system, the error in the
estimate increases as the user's moves. Some embodiments
may then use other mechanisms ( e.g., signal triangulation,
QR codes, etc.) to update or reposition a more accurate
estimate of the current location.
(MacGregor col. 9, 11. 40--45.) We do not perceive any disclosure or
reasonably immediate suggestion that the distance between the camera and
the barcode be determined. Nor has the Examiner provided any reasonable
explanation of how the routineer would have understood this passage to
provide such a suggestion.
We also reverse the rejections of claims 5 and 16 for these additional
reasons.
C. Order
It is ORDERED that the rejection of claims 1-20 is reversed.
REVERSED
9