Ex Parte Liguori et al

Patent Trial and Appeal Board

Aug 14, 2017

14720915 (P.T.A.B. Aug. 14, 2017)

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.
14/720,915 05/25/2015 Daniel T. Liguori QRCP-3 1886
7590 08/14/2017
William Propp, Esq.
8149 Santa Monica Boulevard
#245
West Hollyqood, CA 90046
EXAMINER
CHEN, HUO LONG
ART UNIT PAPER NUMBER
2676
MAIL DATE DELIVERY MODE
08/14/2017 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 DANIEL T. LIGUORI and THOMAS A. LIGUORI
____________

Appeal 2017-008932
Application 14/720,915
Technology Center 2600
____________

DENISE M. POTHIER, JOHNNY A. KUMAR, and JASON M. REPKO,
Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–13. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (bracketed matter
and some paragraphing added):
1. A label printer comprising
[a] a keypad and display screen for inputting data from a
user;
[b] a Quick Response Code generator for translating said
data from said keypad into a Quick Response Code;
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[c] a thermal transfer printing system for printing said
Quick Response Code from said Quick Response Code generator
onto a label;
[d] one or more labels releasably attached by an adhesive
to a liner;
[e] a label delivery system having a motor to rotate a drive
roller, said drive roller moving a label to said thermal transfer
printing system and then to an output aperture;
[f] a controller for controlling said keypad, said display
screen, said Quick Response Code generator, said thermal
transfer printing system, and said motor for said label delivery
system;
[g] a battery power supply for supplying power to said
keypad, said display screen, said Quick Response Code
generator, said thermal transfer printing system, said motor for
said label delivery system, and said controller; and
[h] a housing for supporting said keypad and said display
screen on the outer surface of said housing; said housing
supporting said Quick Response Code generator, said thermal
transfer printing system, said labels, said label delivery system,
said controller, and [i] said battery power supply inside said
housing; and [j] said housing being hand-held by said user and
portable by said user.

Rejections on Appeal
Non-Statutory Obviousness-type Double Patenting Rejections1
Claims 1–13 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over copending

1 Appellants contend Terminal Disclaimers have been filed to overcome the
Non-Statutory Obviousness-type Double Patenting Rejections (Br. 18–20).
In response, the Examiner finds the “filed Terminal Disclaimer has been
disapproved by the Office.” Ans. 5. Appellants did not rebut the
Examiner’s findings and, thus, we pro forma affirm the double patenting
rejections. Except for our ultimate decision, the rejections of these claims
are not discussed further herein.

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Application 14/720,910 in view of Yamaguchi (US 6,006,014; iss. Dec. 21,
1999).
Claims 1, 3, 4, and 6–9 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
copending Application 14/720,913 in view of Silverbrook (US
2006/0250469 A1; publ. Nov. 9, 2006) and Yamaguchi.
Claim 2 is provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over copending
Application 14/720,913, Silverbrook, Yamaguchi, and Long (US 4,385,958;
iss. May 31, 1983).
Claim 7 is provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over copending
Application 14/720,913, Silverbrook, Yamaguchi, and Smith (US
2015/0111621 A1; publ. Apr. 23, 2015).
Claims 10, 11, and 13 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
copending Application 14/720,913 in view of Silverbrook, Yamaguchi, and
Long.
Claim 12 is provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over copending
Application 14/720,913, Silverbrook, Yamaguchi, Long, and Smith.
Claims 1–13 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over copending
Application 14/720,916 in view of Yamaguchi.

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Prior Art Rejections
Claims 1–3, 5, and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsukuda (US 2011/0135367 A1; publ. June 9, 2011), and
Silverbrook.
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tsukuda, Silverbrook, and Wernet (US 2004/0199778 A1; publ. Oct. 7,
2004).
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tsukuda, Silverbrook, and Smith.
Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tsukuda, Silverbrook, and Takabatake (US 2010/0247219 A1; publ.
Sept. 30, 2010).
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tsukuda, Silverbrook, and Nishimura (US 2010/0032466 A1; publ.
Feb. 11, 2010).
Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsukuda, and Silverbrook, Wernet, and Takabatake.
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tsukuda, Wernet, Silverbrook, Takabatake, and Smith.
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tsukuda, Wernet, Silverbrook, Takabatake, and Nishimura.

Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
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the Office Action fails to explain how the micro-sized elements
of a mobile phone of Silverbrook ‘469 are compatible with the
normal size elements of the desktop printer of Tsukuda ‘367.
It is basic engineering, elements of different sizes cannot
be combined to form a functional device. Components of mobile
phones can be compatible with other mobile
phones. Components of desktop printers can be compatible with
other desktop printers. But components of mobile phones are not
compatible with components of desktop printers.
. . . .
The two references cannot be combined into a single workable
device.
Br. 21–22.
2. Appellants also contend that the Examiner erred in rejecting claim
1 under 35 U.S.C. § 103(a) because:
Silverbrook '469 is a smartphone. However, the
smartphone uses pre-printed information, as described in
paragraphs 0054 and 0148, or Netpage tags with a scanner
to retrieve information to be later printed, as described in
paragraphs 0008, 0010, 0138, 0141. The keypad and display
screen are not used to input data to be later printed.
Br. 22 (Panel’s emphasis added).
3. Appellants also contend that the Examiner erred in rejecting claim
1 under 35 U.S.C. § 103(a) because “unlike the invention of claim 1, there is
no external smartphone physically separate from the printer in Silverbrook
'469 or Tsukuda ‘367.” Br. 23 (Panel’s emphasis added).

Issue on Appeal
Did the Examiner err in rejecting claims 1–13 as being obvious because
the references fail to teach or suggest the claim limitations at issue?

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. Except as noted herein, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the Final Office Action from which
the appeal is taken (Final Act. 2–15); and (2) the reasons set forth by the
Examiner in the Examiner’s Answer (Ans. 5–14) in response to the
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner. We highlight the following.
The Examiner finds, and we agree, Silverbrook in combination with
Tsukuda teaches claimed elements 1[g] and 1[i] above, whereas the
remaining claimed elements 1[a] to 1[f], 1[h], and 1[j] are taught by
Tsukuda. Final Act. 33–35.
In particular, the Examiner finds:
Silverbrook’469 is being introduced to teach a technology
that a battery can be used as a power source to supply power to
the mobile phone with the printing function which is being
considered as a printer.

Ans. 5.

The Examiner also finds, and we agree:

since the Silverbrook’469 has suggested a mobile and
printer can be combined together (Fig.4), it would have been
obvious to a person of ordinary skill in the art before the effective
filing date of the claimed invention to recognize that a mobile
and a label printer can be combined as well since a label printer
is also a printer.

Ans. 6–7.

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As to Appellants’ above contention 1, we are not persuaded the
Examiner erred. We are not persuaded because essentially Appellants’
argument is premised on a “physical” or “bodily” incorporation of
limitations of one reference into the other. This is not the standard of
obviousness. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is
not necessary that the inventions of the references be physically combinable
to render obvious the invention under review”) (citations omitted); In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . . Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art”). Moreover, “[a] reference must be considered for
everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect.” EWP Corp.
v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis
omitted).
Furthermore, an ordinarily skilled artisan is not compelled to blindly
follow the teaching of one prior art reference over the other without the
exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984). “[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).  
The Examiner has set forth why an ordinary skilled artisan would
have been motivated to combine the teachings of Tsukuda and Silverbrook
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to arrive at the claimed invention. Final Act. 35; see Ans. 6. Appellants
have not presented any persuasive evidence or argument why the ordinary
artisan would not have possessed the knowledge and skills to know how to
combine the prior art references. As such, we find that one of ordinary skill
in the art would have recognized how to adjust Tsukuda to accommodate the
teachings from Silverbrook.   
As to Appellants’ above contention 2, the Examiner relies upon
Tsukuda, rather than Silverbrook for teaching claimed element 1[a]. Final
Act. 33. See also Tsukuda Abstract.
As to Appellants’ above contention 3, Appellants’ arguments are not
commensurate with the scope of the claim because the terms “physically
separate” are not recited in Appellants’ claim 1.
Regarding claims 3–13, although Appellants raise additional
arguments for patentability (Br. 24–38), we find that the Examiner has
established the references teach or suggest their claim limitations by a
preponderance of the evidence and sufficiently rebutted in the Answer each
of the arguments. Ans. 9–15; Final Act. 35–49. For dependent claim 2,
Appellants rely on the arguments presented for claim 1. Br. 24. Therefore,
we adopt the Examiner’s findings and underlying reasoning, which are
incorporated herein by reference. For claim 5, we note the Examiner is
discussing Silverbrook ’469’s Figure 9 and 13 (Ans. 10) and also that the
referred-to moulding has an ergonomic shape. Consequently, Appellants
have failed to show error in the Examiner’s rejections of claims 2–13.
We observe that no Reply Brief is of record to rebut such findings,
including the Examiner’s responses to Appellants’ arguments.

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DECISION
We affirm the Examiner’s rejections of claims 1–13 as being
unpatentable under 35 U.S.C. § 103(a).
We pro forma affirm the Examiner’s rejections of claims 1–13 on
numerous grounds of nonstatutory obviousness-type double patenting.
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