Ex Parte Price et al

Patent Trial and Appeal Board

Nov 17, 2014

12604826 (P.T.A.B. Nov. 17, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/604,826 10/23/2009 Stephen Goddard Price 8185P074 9391
76073 7590 11/17/2014
InfoPrint Solutions/ Blakely
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
MIKELS, MATTHEW
ART UNIT PAPER NUMBER
2876
MAIL DATE DELIVERY MODE
11/17/2014 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 STEPHEN GODDARD PRICE, JAMES A. KRACK, and
SAMUEL NEELY HOPPER
____________________

Appeal 2012-006370
Application 12/604,826
Technology Center 2800
____________________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD and
BRUCE R. WINSOR, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006370
Application 12/604,826

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–32. We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claims
Exemplary claims 1, 5, 10, and 11 under appeal read as follows
(emphasis added):
1. A method comprising:
generating a machine readable code having multi-color
marks including each ink color implemented at a printer;
printing the machine readable code on a first side of a
medium;
analyzing the machine readable code printed on the first
side of the medium at a verification unit; and
detecting an error if the verification unit does not verify
that each color of the multicolor marks is readable.

5. The method of claim 1 wherein the machine readable code
comprises a barcode.

10. The method of claim 5 wherein the barcode is printed with
a subset of ink colors available at the printer.

11. The method of claim 10 wherein the subset of ink colors to
be included in the barcode is user selectable.

Appeal 2012-006370
Application 12/604,826

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Rejections on Appeal
1. The Examiner rejected claims 1, 2, 5, 14, 15, 18, 27, 28, and 31
as being unpatentable under 35 U.S.C. § 103(a) over the combination of
Critelli (US 2006/0022050 A1; Feb. 2, 2006), Noguchi (US 2009/0161149
A1; June 25, 2009), and Ueda (US 2005/0219304 A1; Oct. 6, 2005). 1
2. The Examiner rejected claims 3, 4, 16, 17, 29, and 30 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Critelli,
Noguchi, Ueda, and Mitsuo (JP2008-102201; May 1, 2008). 2
3. The Examiner rejected claims 6–13, 19–26, and 32 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Critelli,
Noguchi, Ueda, and Sali (US 2006/0144947 A1; July 6, 2006). 3

Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claims
1–32 under 35 U.S.C. § 103(a) because:
Appellant submits that that Critelli, Noguchi and Ueda
each fail to disclose or suggest generating a machine readable
code having multi-color marks including each ink color
implemented at a printer. For example, Critelli discloses that

1 As to this rejection, separate patentability is not argued for claims 2, 5, 14,
15, 18, 27, 28, and 31. Except for our ultimate decision, the Examiner’s
rejection of these claims is not discussed further herein.
2 As to this rejection, separate patentability is not argued for these claims.
Rather, the appeal for this rejection turns on the underlying § 103 rejection.
Therefore, except for our ultimate decision, the Examiner’s rejection of
these claims is not discussed further herein.
3 As to this rejection, separate patentability is not argued for these claims.
Rather, the appeal for this rejection turns on the underlying § 103 rejection.
Therefore, except for our ultimate decision, the Examiner’s rejection of
these claims is not discussed further herein.
Appeal 2012-006370
Application 12/604,826

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IBI images can be printed in light colored ink. See Critelli at
paragraph [0027]. However, there is no disclosure or suggestion
in Critelli of a machine readable code that includes each ink
color implemented at the printer.
Nonetheless, the Examiner attempts to combine Veda
with Critelli to disclose the process of generating a machine
readable code having multi-color marks including each ink
color implemented at a printer. See Final Office Action at Page
3, lines 11-14. Notwithstanding the Examiner’s construction of
the Ueda reference, Appellant submits Ueda does not disclose
or suggest using each ink color in a machine readable code.
Further, the Examiner has not cited Noguchi as disclosing
machine readable code that includes each ink color
implemented at the printer. Therefore, any possible
combination of Critelli, Noguchi or Veda would necessarily fail
to disclose or suggest machine readable code that includes each
ink color implemented at the printer.
(App. Br. 10)(emphasis omitted).
2. Appellants contend that the Examiner erred in rejecting the
claims under 35 U.S.C. § 103(a) because:
The claims of the present application each recite an
additional element that is not disclosed in Critelli, Noguchi or
Ueda. For instance, each claim in the present application also
recite detecting an error if a verification unit does not verify
that each color of the multi-color marks of the machine readable
code is readable.
Appellant submits that there is no disclosure or
suggestion in Critelli, Noguchi or Ueda of such a process.
However, the Examiner seems to construe Noguchi (i.e.,
detecting an error if machine readable code not verified) and
Ueda (i.e., checking to verify that each ink color at a printer is
readable) as disclosing the process. See Final Office Action at
Page 3, lines 2-14. Appellant again disagrees.
Ueda discloses measuring color values of an image to
detect a color deviation. See Ueda at paragraph [0140].
Appellant submits that measuring color values to detect a color
Appeal 2012-006370
Application 12/604,826

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deviation is not equivalent to detecting an error if each color of
multi-color marks of a machine readable code is not readable.
(App. Br. 11)(emphasis omitted).

Issues on Appeal
Did the Examiner err in rejecting claims 1–32 as being obvious?

ANALYSIS
We agree with the Appellants’ above recited contentions.

NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
10, 11, 23, and 24 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
As to claim 10, it recites “the barcode is printed with a subset of ink
colors available at the printer.” This “subset” (i.e., less than each color
implemented at the printer) contradicts the claim 1 requirement of
“generating a machine readable code having multi-color marks including
each ink color implemented at a printer.” Claim 10 is indefinite for these
reasons. 4
Claim 23 shares the problem of claim 10.
Claims 11 and 24 incorporate the problems of claims 10 and 23,
respectively, by their dependency thereon.

4 Additionally, if read literally, claim 10 would have been obvious given
Appellants’ admitted prior art (Spec. 3). This is because a method using
black ink only was admitted by Appellants to be known in the art and the
claim 10 “subset” is not precluded from being black ink only.
Appeal 2012-006370
Application 12/604,826

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37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1–32 as being unpatentable under 35 U.S.C. § 103(a).
(2) We reject claims 10, 11, 23, and 24 under 35 U.S.C. § 112,
second paragraph.
(3) On this record, claims 1–9, 12–22, and 25–32 have not been
shown to be unpatentable.
(4) Claims 10, 11, 23, and 24 are not patentable.
Appeal 2012-006370
Application 12/604,826

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DECISION
The Examiner’s rejections of claims 1–32 are reversed.

Claims 10, 11, 23, and 24 are newly rejected.

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).

REVERSED
37 C.F.R. § 41.50(b)

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