Ex Parte Lee

Patent Trial and Appeal Board

Dec 31, 2013

11253831 (P.T.A.B. Dec. 31, 2013)

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.
11/253,831 10/19/2005 Sang-Ho Lee 678-1837 2618
66547 7590 01/02/2014
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
YEH, EUENG NAN
ART UNIT PAPER NUMBER
2669
MAIL DATE DELIVERY MODE
01/02/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SANG-HO LEE
____________________

Appeal 2011-008435
Application 11/253,831
Technology Center 2600
____________________

Before ELENI MANTIS MERCADER, JOHN A. EVANS, and HUNG H.
BUI, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

1 The Real Party in Interest is Samsung Electronics Co., Ltd.
2 Our decision refers to Appellant’s Appeal Brief filed November 9, 2010
(“App. Br.”); Reply Brief filed April 4, 2011 (“Reply Br.”); Examiner’s
Answer mailed February 2, 2011 (“Ans.”); Final Office Action mailed June
9, 2010 (“Final Rej.”); and the original Specification filed October 19, 2005
(“Spec.”).
Appeal 2011-008435
Application 11/253,831

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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to a data transmission system in which
two separate terminals can perform a direct data transmission at a high speed
without the necessity of an additional device. See Spec., col. 2, ll. 15-18.
Specifically, a first terminal creates an image code from original data. Each
pixel of the image represents a plurality of data bits (e.g., 2 bits for a
black/white pixel, and 8 for a color pixel). Thereafter, this image code is
displayed on the first terminal for direct transmission. A second terminal
captures (e.g., photographs) the transmitted image code and then decodes the
captured image code to restore the original data from the first terminal. As
such, the second terminal can receive a direct data transmission, at a high
speed, from the first terminal, without the necessity of an additional device
(e.g., a base station). Id. at col. 2, ll. 20-25; FIG. 5 and Abstract.
FIG. 5 of Appellant’s disclosure is reproduced below.

FIG. 5 shows a data transmission system including a first terminal to
create an image code from data for a visual display 150, and a second
terminal to receive and photograph the image code for restoration back to
original data.
Id. at FIG. 5.
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Application 11/253,831

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Claims on Appeal
Claims 1 and 13 are the independent claims on appeal. Claim 1 is
illustrative of Appellant’s invention, and is reproduced with disputed
limitations emphasized below:
1. A data transmission system, comprising:
a first terminal having a first memory for storing data, an
encoder for encoding the data and creating an image code, and a
display unit for displaying the image code; and
a second terminal having a sensor for photographing the
image code, a decoder for restoring the data to the original data
by decoding the photographed image code, and a memory for
storing the restored data,
wherein each pixel of the image code represents a
plurality of data bits.

Evidence Considered
Mark US 5,949,874 Sept. 7, 1999
Watanabe US 2002/0160836 A1 Oct. 31, 2002
Fukasawa US 7,410,099 B2 Aug. 12, 2008

Examiner’s Rejections
(1) Claims 1 and 5-13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fukasawa and Watanabe. Ans. 3-11.
(2) Claims 2-4 and 14-16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Fukasawa, Watanabe and Mark. Ans. 11-12.

Issues on Appeal
Based on Appellant’s arguments, the dispositive issues on appeal are:
(1) Whether the Examiner erred in rejecting claims 1 and 5-13
under 35 U.S.C. § 103(a) as being unpatentable over Fukasawa and
Watanabe. In particular, the issue turns on whether the combination of
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Application 11/253,831

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Fukasawa and Watanabe discloses or suggests the disputed limitation:
“wherein each pixel of the image code represents a plurality of data bits” as
recited in independent claims 1 and 13. App. Br. 8-12; Reply Br. 1-2; and
(2) Whether the Examiner erred in rejecting claims 2-4 and 14-16
under 35 U.S.C. § 103(a) as being unpatentable over Fukasawa, Watanabe
and Mark. In particular, the issue turns on whether the combination of
Fukasawa, Watanabe and Mark discloses or suggests “a first control unit of
the first terminal creates key tones that indicate a header, the number of
frames, a data format, a start of data and an end of data, and the key tones
are output as sound through the speaker,” as recited in claim 3, and similarly
recited in claim 15. App. Br. 12-15; Reply Br. 2-3.

ANALYSIS
With respect to independent claims 1 and 13, the Examiner finds
Fukasawa discloses a data transmission system, shown in FIG. 1, including:
(1) an image output device 1 as Appellant’s claimed “first terminal”
equipped with a memory, an encoder and a display unit, shown in FIG. 6, to
create a composite image of 2-D barcode and sign data; and (2) a mobile
station 6A, 6B, or 6C as Appellant’s claimed “second terminal” equipped
with a sensor, a decoder and a memory, shown in FIG. 22, to read and
decode content information from the 2-D barcode. Ans. 3-5 (citing
Fukasawa, col. 2, ll. 25-32; col. 4, ll. 43-54; FIG. 1, FIG. 6 and FIG. 28).
FIG. 1 of Fukasawa is reproduced below.
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FIG. 1 shows a data transmission system using an image output device
1 to create an image code (2-D barcode and sign data) for a visual display
and subsequent transmission to a mobile station 6A-6C.

The Examiner acknowledges Fukasawa discloses a digital camera
equipped at the second terminal (e.g., a mobile phone) capable of reading 2D
barcode, but does not explicitly disclose “the reading is the photographing.”
Id. at 5. The Examiner finds Watanabe discloses a mobile phone equipped
with a CCD camera to photograph an image, i.e., 2-D barcode. Id. (citing
Watanabe ¶¶ [0274-[0275]; FIG. 27 and FIG. 28).
Based on these disclosures, the Examiner concludes that “it would
have been obvious . . . to apply the photographical capability to Fukasawa
second terminal as taught by Watanabe . . . to perform information
processing ” Id. at 7.
Appellant does not dispute the Examiner’s rationale for combining
Fukasawa and Watanabe. Instead, Appellant argues that neither Fukasawa
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nor Watanabe discloses or suggests “wherein each pixel of the image code
represents a plurality of data bits” as recited in independent claims 1 and 13.
App. Br. 8-12; Reply Br. 1-2. According to Appellant, “image data
representing a photo image shot using digital camera 108 as the original sign
data,” as described by col. 17, ll. 15-17 of Fukasawa, does not support and
cannot reasonably be construed by the Examiner to support a disclosure of
Appellant’s disputed limitation, i.e., “‘each pixel of the image code
represents a plurality of data bits,’” as recited in Appellant’s claims 1 and
13. App. Br. 9.
We are not persuaded by Appellant’s arguments. As correctly found
by the Examiner, Fukasawa discloses creation of a composite image of a 2-D
barcode and sign data at an image output device 1 (i.e., Appellant’s claimed
“first terminal”). Ans. 13 (citing Fukasawa, col. 11, l. 35; col. 12, ll. 22 and
49; FIG. 11, FIG. 13 and FIG. 14). According to the Examiner:
“one of ordinary skilled in the art would realize that the
2-D barcode image (i.e. the image code) composited and
encoded by a computer program is a digital type of image
wherein each pixel of the digitized image code represents
composite content of data information (i.e., a plurality of data
bits).”

Id. at 13-14 (emphasis added).
We agree with the Examiner. When the composite image (including
the 2-D barcode and sign data) is digitized, via digital camera 108, shown in
FIG. 22 of Fukasawa, each pixel of a digital image represents data bits, as
recited in Appellant’s claims 1 and 13.
For the reasons set forth above, we sustain the Examiner’s
obviousness rejection of Appellant’s independent claims 1 and 13.
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With respect to dependent claims 2, 4, 5-12, 14, and 16, Appellant
presents no separate patentability arguments apart those presented for claims
1 and 13. For the same reasons discussed, we also sustain the Examiner’s
obviousness rejection of claims 2, 4, 5-12, 14, and 16.
With respect to dependent claims 3 and 15, Appellant acknowledges
Mark discloses that sounds are used to authorize users to use a device. Ans.
13. However, Appellant contends that Mark does not teach using sounds,
i.e., key tones that indicate a header, the number of frames, a data format, a
start of data and an end of data for a different set of transmitted data, i.e., the
data included in the image code. Id. Appellant’s Brief is otherwise silent as
to why this is the case. Appellant’s silence does not persuade us that the
Examiner has erred. Appellant presents no substantive arguments regarding
the claims other than merely restating the limitations called for in the claims.
See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what
a claim recites will not be considered an argument for separate patentability
of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”).
Nevertheless, we disagree with Appellant’s contention. We adopt as
our own the Examiner’s findings regarding Mark as set forth in the
Examiner’s Answer in response to Appellant’s Appeal Brief. Ans. 14-16.
We also note that all elements of a prior art reference need not read on the
claimed invention; rather, the proper test for obviousness is what the
combined teachings would have suggested to a person of ordinary skill in
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the art. See In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). In an
obviousness analysis, it is not necessary to find precise teachings directed to
the specific subject matter claimed because inferences and creative steps that
a person of ordinary skill in the art would employ can be taken into account.
See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard,
"[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id. at 421.
In this appeal, we find one skilled in the art would have had the skill
the know how to deploy key tones as disclosed by Mark as a sound output,
via a speaker, that indicate a header, the number of frames, a data format, a
start of data and an end of data in the manner recited by Appellant’s claims 3
and 15.
For the reasons set forth above, Appellant has not persuaded us of
error in the Examiner’s obviousness rejection of claims 3 and 15.
Accordingly, we also sustain the Examiner’s rejection of claims 3 and 15.

CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1-13 under 35 U.S.C. §103(a).

DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1-13.
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
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