Ex Parte Reardon

Patent Trial and Appeal Board

Nov 25, 2014

11256421 (P.T.A.B. Nov. 25, 2014)

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.
11/256,421 10/21/2005 David C. Reardon FixedInput 7183
71741 7590 11/26/2014
DAVID REARDON
645 Autumn Oaks Dr
St. Peters, MO 63376
EXAMINER
HESS, DANIEL A
ART UNIT PAPER NUMBER
2876
MAIL DATE DELIVERY MODE
11/26/2014 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 DAVID C. REARDON
____________

Appeal 2013-001616
Application 11/256,421
Technology Center 2800
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and GEORGE C. BEST,
Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
On September 15, 2011, the Examiner finally rejected claims 1–11
and 15–32 of Application 11/256,421 under 35 U.S.C. § 103(a) as obvious.
Appellant seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM-IN-PART.
BACKGROUND
The ’421 Application describes electronic voting systems that provide
for the printing customized ballots at time of voting. Spec. 1. In particular,
the ’421 Application describes methods and apparatus for voting in a manner
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that provides the voter the ability to review the accuracy of the machine-
recorded vote. Id.; see also claims 1, 15.
Claim 1 is representative of the ’421 Application’s claims and is
reproduced below:
1. A voting method enabling verification by voters of their
votes cast during an election comprising the steps of:
(a) providing a listing of voting options, at least one
printer device, at least one electronic input device, and at least
one computing unit configured to receive input codes from at
least one electronic input device, wherein the computing unit
comprises either non-reprogrammable read only memory
containing program steps or application specific integrated
circuitry such that the computing unit has a permanently
unalterable pattern of response to input codes received from the
electronic input device;
(b) assigning a first voting option to a first input code and
a second voting option to a second input code;
(c) permitting each voter to use at least one electronic
input device to select at least one voting option such that
selection of the first voting option will cause the input device to
convey the first input code to the computing unit and selection
of the second voting option will cause the input device to
convey the second input code to the computing unit;
(d) upon the computing unit receiving the first input code
using the printer device to print a record of the vote cast for the
first voting option in indicia that is readable by the voter;
(e) upon the computing unit receiving the second input
code using the printer device to print a record of the vote cast
for the second voting option in indicia that is readable by the
voter; and
(f) offering the voter an opportunity to read and verify
the accuracy of the printed record.
(App. Br. 33 (Claims App’x).)
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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 4, 5, 7, 9, and 10 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of McDermott,1 Kim,2 and
Yi.3 (Ans. 4.)
2. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of McDermott, Kim, Yi, and
Kelly.4 (Ans. 8.)
3. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of McDermott, Kim, Yi, and Johnson.5
(Ans. 10.)
4. Claims 8 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of McDermott, Kim, Yi, and
Beaton.6 (Ans. 11.)
5. Claims 19, 20, 22, 24–27, 29, and 31 are rejected under 35 U.S.C.
§ 103(a)7 as unpatentable over the combination of Kim, Yi, and
McDermott. (Ans. 12‒16.)

1 US Patent No. 6,769,613 B2, issued August 3, 2004.
2 US Patent Application Publication 2006/0196939 A1, published September
7, 2006.
3 US Patent Application Publication 2005/0017957 A1, published January
27, 2005.
4 US Patent Application Publication 2005/0145695 A1, published July 7,
2005.
5 US Patent Application Publication 2005/0218225 A1, published October 6,
2005.
6 US Patent No. 6,340,979 B1, issued January 22, 2002.
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6. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of McDermott, Kim, Yi, and Cummings.8
(Ans. 16.)
7. Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kim, Yi, and Kelly. (Ans. 18.)
8. Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kim, Yi, and McDermott. (Ans. 19.)
9. Claims 15–17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Johnson, Kelly, and Poor.9
(Ans. 20.)
10. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Johnson, Kelly, Poor, and Kim.
(Ans. 22.)
DISCUSSION
Rejections 1‒8. These rejections encompass claims 1‒11 and 19‒32
of the ’421 Application. Claims 1, 19, and 24 are independent. The
remaining claims subject to these rejections ultimately depend from one of

7 The Examiner’s summary of the rejection states that claims 19, 20, 22, 24–
27, 29, and 31 were rejected under 35 U.S.C. § 102(e) as anticipated by Kim
as modified by Yi. (Ans. 12; see also Final Rejection 11 (September 15,
2011).) The body of the rejection, however, discusses and relies upon Kim,
Yi, and McDermott. We have corrected the summary rejection to reflect the
substance of the Examiner’s reasoning for rejecting these claims.
8 US Patent Application Publication 2004/0217168 A1, published November
4, 2004.
9 US Patent Application Publication 2002/0161628 A1, published October
31, 2002.
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these independent claims. Due to our resolution of the appeal of these
rejections, we need only address the independent claims.
Claims 1, 19, and 24 have been rejected as obvious over the
combination of McDermott, Kim, and Yi. (Ans. 4, 12.) The portion of
claim 1 that is relevant for our purposes reads: “wherein the computing unit
comprises either non-reprogrammable read only memory containing
program steps or application specific integrated circuitry such that the
computing unit has a permanently unalterable pattern of response to input
codes received from the electronic input device.” (App. Br. 33 (emphasis
added).) Claims 19 and 24 contain similar language.10
The Examiner found that ¶ 33 of Yi describes this limitation.
(Ans. 6.) Yi describes a touch screen system and a control method therefor.
Yi Abstract. Paragraph 33 describes main storage unit 160 of Yi’s touch
screen as including both a nonvolatile memory device, such as a ROM, that
stores programs and a volatile memory device, such as a RAM for temporary
storage of data. See also Yi Fig. 2, ¶¶ 24‒36. The Examiner found that this
portion of Yi describes the claimed computing unit. (Ans. 6.)

10 We note that the versions of claims 19 and 24 reproduced in the Claims
Appendix do not reflect the language of the claims actually on appeal. The
versions in the Claims Appendix reflect a proposed Amendment that was not
entered. The relevant portion of claim 19 actually reads “wherein the
computing unit comprises either non-reprogrammable read only memory
containing program steps or application specific integrated circuitry such
that the computing unit has a permanently unalterable pattern of response to
each of the input codes transmitted from an input device . . . .” The relevant
portion of claim 24 actually reads: “providing a computing unit with either
non-reprogrammable read only memory containing program steps of
application specific integrated circuitry -which permanently prevents
alteration of the computing unit’s programmed responses . . . .”
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Appellant argues that this finding is erroneous because the ’421
Application’s Specification teaches that a computer touch screen is an input
device and is not a computing unit as that term is used in claims 1, 19, and
24. (App. Br. 22‒23). Thus, Appellant reasons, Yi cannot describe the
structure of the claimed computing unit.
We agree with Appellant. Furthermore, we note that the Examiner
has not provided sufficient reasoning supported by a rational underpinning
to support a finding that Yi’s ¶ 33 would have suggested the claimed
computing unit. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In
particular, the Examiner does not adequately explain why a person of
ordinary skill in the art would have applied Yi’s description of an input unit
to a central computing unit that is connected to the input unit.
We, therefore, reverse the rejection of claims 1, 19, and 24. The
Examiner did not find that any of the additional references cited in the
rejections of various dependent claims cures the error discussed above.
Thus, we also reverse the rejection of claims 2‒11, 20‒23, and 25‒32.
Rejections 9 and 10. The Examiner rejected claims 15‒17 as obvious
over the combination of Johnson, Kelly, and Poor and rejected claim 18 as
obvious over Johnson, Kelly, Poor, and Kim. (Ans. 20‒24.) Claim 15 is the
only independent claim in this group, and claims 16‒18 depend from claim
15.
Appellant only presents specific arguments for the reversal of the
rejection of claim 15. (App. Br. 19‒32.) The dependent claims are alleged
to be patentable by virtue of the patentabilty of their parent independent
claim. (Id.) Thus, we need only address claim 15 in our analysis.
Appellant’s arguments for reversal of the rejection of claim 15 based
upon the following claim language: “an intermediary code which represents
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the combined results of all the voting options selected by the voter in an
encrypted form such that the voter’s selections are not readily readable by
the voter and election officials.” (Id. at 29 (emphasis supplied); see
generally id. at 29-31.) This, however, is not the language of the claim as it
stands on appeal. On appeal, this element actually reads: “an intermediary
code which represents the combined results of all the voting options selected
by the voter in an encoded form.” (See App. Br. Claims App’x (emphasis
added).)
Appellant sought to add the phrase “such that the voter’s selections
are not readily readable by the voter and election officials” in an
Amendment filed after the Examiner had finally rejected claim 15.11
Amendment and Response 7 (October 11, 2011). The Examiner, however,
did not enter the proposed amendment. Advisory Action 1 (October 27,
2011).12
Because Appellant’s arguments rely upon language that is not actually
part of the version of the claim on appeal, we affirm the Examiner’s
rejection of claim 15. We, therefore, also affirm the rejection of claims 16‒
18.
CONCLUSION
We reverse the rejection of claims 1–11 and 19–32 of the ’421
Application. We, however, affirm the rejection of claims 15‒18.

11 The October 11, 2011 Amendment did not propose substituting
“encrypted” for “encoded.”
12 On December 9, 2011, the Examiner entered an Amendment that did not
modify the language of claim 15.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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