Ex Parte Pedrazzoli Pazos

Patent Trials and Appeals Board

May 6, 2013

10325771 - (R) (P.T.A.B. May. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FERNANDO DANIEL PEDRAZZOLI PAZOS
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Appeal 2011-006980
Application 10/325,771
Technology Center 3600
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Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
JAMES A. TARTAL, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2011-006980
Application 10/325,771

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STATEMENT OF THE CASE
Appellant filed a Request for Rehearing/Reconsideration (“Request”),
dated July 2, 2013, of our Decision mailed May 8, 2013, (“Decision”), in
which we affirmed the Examiner’s rejection of claims 1, 2, 4, 7, 8, 12, and
18-21 under 35 U.S.C. § 103(a). We have jurisdiction over the Request
under 35 U.S.C. § 6(b).1

DISCUSSION
Appellant alleges in the Request that the Board misapprehended the
relationship between method claim 18 and device claim 1 (Request 1), and
more particularly, that the Board misapprehended “what method claim 18
recites, namely active method steps which are not included in device
claim 1” (Id.). Appellant thus maintains that even though Appellant
presented arguments with respect to four active method steps in claim 18,
the Board overlooked Appellant’s arguments for these four active method
steps (Request 1-2).
We disagree. Appellant’s arguments with respect to claim 18 do no
more than substantially repeat Appellant’s arguments with respect to
claim 1, and were neither misapprehended nor overlooked.
Appellant points to the Board’s statements regarding the “configured
to” language of claim 1 at the top of page 6 of the Decision as evidence that
the Board misapprehended Appellant’s argument with respect to the step of
ascertaining . . . that a password entered by a first officer of the
plurality of appointed officers matches the password in the
PSW field in the record in the first database that identifies the

1 This Decision will make reference to Appellant’s Appeal Brief (“App.
Br.”) filed August 30, 2010.
Appeal 2011-006980
Application 10/325,771

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first officer in the ID field, said ascertaining confirming that the
first officer is authorized to use the device to generate physical
contravention notices for vehicles contravening traffic
regulations,
as recited in claim 18 (Request 2). Yet Appellant fails to acknowledge the
Board’s analysis on the preceding page of the Decision in which the Board
addressed the very step that Appellant argues was overlooked in the context
of the substantially similar functional language recited in claim 1, namely,
perform[ing] a verification confirming that a password entered
by each officer matches the password in the PSW field of each
officer, said verification confirming that each officer is
authorized to use the device to generate physical contravention
notices for vehicles contravening traffic regulations
(Decision 5).
The Board also neither overlooked nor misapprehended Appellant’s
arguments with respect to the step of “recording in the Picture field of the
first record of the third database an image of the first vehicle derived from a
first electronic picture of the first vehicle taken by a digital camera,” as
recited in claim 18 (Request 3-4). Appellant argued in the Appeal Brief that
the Examiner failed to establish a prima facie case of obviousness of
claim 18 because the Examiner failed to provide any evidence to support the
Examiner’s assertion that modifying the Ward system to include Ouimet’s
camera, i.e., taking a picture of a license plate rather than manually inputting
the license plate number, would save an officer time and reduce errors.
(App. Br. 35-38).
Yet Appellant did not and, indeed, could not reasonably challenge the
Examiner’s finding that Ouimet discloses that an image of a license plate of
a contravening vehicle can be derived from a picture of the vehicle taken
with a CCD video camera. Appellant also did not challenge the Examiner’s
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Application 10/325,771

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finding that incorporating Ouimet’s camera and OCR system into Ward’s
citation writer system is merely a combination of old elements, with each
element merely performing the same function as it did separately, to yield a
predictable result, i.e., an image capturing means put to use for taking an
electronic image of the contravening vehicle – a finding that fully supports
the obviousness determination. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results”)
This Board reviews appealed rejections for error based on the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. The Board “will not, as a general matter, unilaterally review those
uncontested aspects of [Appellant’s] rejection.” Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential).
Finally, we are not persuaded that the Board overlooked or
misapprehended Appellant’s arguments with respect to the steps of
“receiving . . . the data for the plurality of records of the first database
downloaded from the remote data processing center . . . into the ID and PSW
fields of the first database” and “receiving . . . the data for the plurality of
records of the second database downloaded from the remote data processing
center . . . into the Violation type and Fine Amount fields of the second
database” (Request 3-5). Appellant’s arguments that these features are not
disclosed or suggested by the cited references are directed to the specific
data content of the first and second databases and rely on the recitation that
the content is “downloaded from the remote data processing center” –
neither of which affects how the method is performed.
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As the Board explained at page 4 of the Decision with respect to
claim 1, the specific arrangement of data fields over three databases and the
data content of each of the three databases constitute non-functional
descriptive material that will not distinguish the claimed invention from the
prior art in terms of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed.
Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). That the data is downloaded from the remote data
processing center, rather than from some other source, is similarly non-
functional descriptive material and may not be relied on for patentability.
We are not persuaded that we misapprehended or overlooked any
points in rendering our Decision. Therefore, we decline to modify our
original Decision.

DECISION
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of Appellant’s Request, but is denied in
all other respects.

DENIED

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