Ex Parte Weast et al

Board of Patent Appeals and Interferences

Apr 6, 2010

10925239 (B.P.A.I. Apr. 6, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AARON B. WEAST, STEVEN E. SOAR,
and STEVEN H. WALKER
____________

Appeal No. 2009-007021
Application 10/925,239
Technology Center 2800
____________

Decided: April 06, 2010
____________

Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
CHUNG K. PAK, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
refusal to allow claims 1, 2, 4, and 6 through 13. Claims 15 through 18 and
22, the other claims pending in the above-identified application, stand
withdrawn from consideration. See page 2 of the Appeal Brief (“App Br.”)
filed February 26, 2008 and page 2 of the Supplemental Appeal Brief
Appeal 2009-007021
Application 10/925,239

(“Supp. App. Br.”) filed April 14, 2008. We have jurisdiction under 35
U.S.C. §§ 6 and 134.
STATEMENT OF THE CASE
The subject matter on appeal is directed to a printing system having a
transmissive optical sensing assembly and a method of using the same
(Spec. 2, l. 29 to 3, l. 22). Details of the appealed subject matter are recited
in representative claims 1 and 7 reproduced from the Claims Appendix to
the Appeal Brief as shown below:
1. A method comprising:

providing a printer system that includes a transmissive sensor
assembly configured to emit light and detect the light being transmitted
through a print medium, and wherein the transmissive sensor assembly
comprises a light source element and an optical sensor element;

advancing a portion of a print medium through the transmissive sensor
assembly of the printer system, the portion of the print medium having a
barcode, the barcode being minimally transmissive of a set of light
wavelengths, and the barcode being encoded with at least one type of
information corresponding to the print medium;

transmitting light at the set of light wavelengths substantially
absorbed by the barcode through the print medium, wherein the light is
transmitted from the light source element disposed on a first side of the print
medium;

detecting changes in the light transmitted through the print medium,
the changes being produced by the barcode, wherein the detecting is
conducted using the optical sensor element disposed on a second side of the
print medium opposite the first side of the print medium;

storing the changes detected along the length of the barcode as a data
record;

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decoding the data record to determine the information about the print
medium;

selecting a print mode compatible with the print medium based on the
data record, wherein the print mode is selected without user input; and

printing an ink onto the print medium according to the print mode
selected.

7. A printer system for communicating information about a print
medium, comprising:

a printer selected from: ink-jet printers, dot matrix printers, and dye-
sublimation printers, laser printers, and combinations thereof, wherein the
printer includes a transmissive sensor assembly configured to emit light and
detect the light being transmitted through the print medium having a
barcode, the barcode being minimally transmissive of the light and encoded
with the information corresponding to the print medium, and wherein the
transmissive sensor assembly comprises a light source element and an
optical sensor element.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 3 of the
Answer. (“Ans.”) dated July 11, 2008:
Hanagata 4,839,674 Jun. 13, 1989
Ahlquist 6,095,417 Aug. 1, 2000
Suzuki EP 0 700 786 A2 Mar. 13, 1996
Appellants request review of the following grounds of rejection set
forth in the Answer:
1) Claims 1, 2, and 6 through 13 under 35 U.S.C § 103(a) as
unpatentable over the combined disclosures of Suzuki and Ahlquist; and
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2) Claim 4 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Suzuki, Ahlquist, and Hanagata (App. Br. 5).1
Appellants traverse the Examiner’s § 103(a) rejections, arguing that
one of ordinary skill in the art would not have been led to employ the
transmissive sensor assembly and bar code taught by Ahlquist as the sensor
and barcode used in the printing system taught by Suzuki (App. Br. 5-9 and
20-22 and Reply Brief (“Reply Br.”) filed September 11, 2008, 2-3).
ISSUES AND CONCLUSIONS
The dispositive question is: Would one of ordinary skill in the art
have been led to employ the transmissive sensor assembly and bar code
taught by Ahlquist as a substitute for the sensor and barcode used in the
printing system taught by Suzuki? On this record, we answer this question
in the affirmative.
RELEVANT FACTUAL FINDINGS
The following relevant factual findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office):
1. Appellants do not dispute the Examiner’s finding that Suzuki teaches
a method comprising:
providing a printer system (fig. 4) that includes a sensor
assembly (18) to

1 The Examiner no longer maintains the § 103(a) rejections based on U.S
Patent 6,391,935 issued to Hager et al or U.S. Patent 5,968,993 issued to
Bleys set forth in the final Office action dated Septemer 4, 2007. The
Examiner also inadvertently includes cancelled claim 25 in the rejection
based on Lutter set forth in the Answer.
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read a reflective bar code from a print medium (column 10,
lines 38-51);
advancing a portion of a print medium through the sensor
assembly of the printer system, the portion of the print medium
having a barcode (figs. 4 and 5), the barcode being encoded
with at least one type of information corresponding to the print
medium (column 10, lines 48-51);
selecting a print mode compatible with the print medium based
on the data record, wherein the print mode is selected without
user input (column 10, lines 52-54, column 9, lines 43-49); and
printing an ink onto the print medium according [to] the print
mode selected (column 10, lines 48-51 ). [(Compare Ans. 4
with App. Br. 5-8 and Reply Br. 2-3.)]
2. Nor do Appellants dispute the Examiner’s finding that Suzuki teaches
a printer system for communicating information about a
print medium, comprising:
a printer selected from: ink-jet printers, dot matrix printers, and
dye-sublimation printers, laser printers, and combinations
thereof (column 11, lines 11-19), wherein the printer includes a
sensor assembly (18) configured to read a bar code on a print
medium, the barcode encoded with information corresponding
to the print medium. [(Compare Ans. 4 with App. Br. 8-10 and
Reply Br. 2-3.)]
3. Appellants do not dispute the Examiner’s finding that “Suzuki
discloses a printer and print medium with a reflective bar code that is used to
set a print mode.” (Compare Ans. 8 with App. Br. 5-10 and Reply Br. 2-3.)
4. Ahlquist teaches (col. 1, ll. 21-56) that:
Generally, bar code indicia which includes contrast
changes, typically black bars to white bars and white bars to
black bars, are scanned using reflective illumination techniques.
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. . . Reflectively reading bar codes involves illuminating the
bar code using a light source, typically a light emitting diode
(LED) or laser diode, and collecting indirect scattered
reflections back into a scanning system. The collected
reflections are focused on a photoelectric detector of some kind.
. . .
Scanning a bar code in transmission mode, on the other
hand, involves illuminating one side of a web, having the light
pass through the web, and collected on the other side of the web
into a photoelectric device of some kind. As a dark element in
the bar code passes between the LED and sensor, the amount of
light which transmits through the web is reduced. The bar code
may be applied to the web using any number of printing
methods (for example, wet ink processes, ink jet, thermal
transfer, clear or semi-opaque label, etc.) as long as the dark
elements applied to the web absorb a portion of the light
passing between the LED and sensor.

5. Ahlquist teaches (col. 1, l. 66 to col. 2, l. 59) that
Although some progress has been made in the art for
effectively reading bar codes on web, there persists a need in
the art for an apparatus and method for reading bar codes on a
moving web having a range of optical densities which uses a
controllable light transmissive mode that is reliable, easy to use
and manufacture and that is adaptable to enormously high
production speeds.
. . . .
. . . [A] method of reading bar codes on a moving web
having a range of optical densities includes the steps of
providing a source of web and means for advancing the web
. . . . A light source (described above) is arranged on one side
of the web and a photoelectric scanner means is arranged on an
opposite side of the web as described above. Output signals
from the scanner are converted from analog to digital data and
the digital data is then manipulated by the processing means or
micro-computer . . . .
It is, therefore, an advantageous effect of the invention
that bar code indicia, and the like, can be easily, reliably and
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precisely read on a moving web [such as paper] that has a wide
range of optical densities.

6. Ahlquist teaches that the moving web can be a paper (col. 3, ll. 13-
18).
7. Appellants do not dispute the Examiner’s determination that:
Hanagata et al. discloses detecting markings on the media,
wherein if the markings are not detected, a feed error is
determined to have occurred (column 3, lines 46-50).
It would have been obvious to one having ordinary skill
in the art at the time of the invention to incorporate these
teachings of Hanagata et al. into the invention of Suzuki for the
purpose of notifying an operator of a feed error so that they may
correct the error and re-insert print media [as required by claim
4]. [(Compare Ans. 6 with App. Br. 8-10 and Reply Br. 2-3.)]

PRINCIPLES OF LAW
The Supreme Court of the United States reaffirmed the § 103
obviousness analytical framework set forth in Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966), which requires a determination of: (1) the scope
and content of the prior art; (2) the differences between the claimed subject
matter and the prior art; (3) the level of ordinary skill in the art; and (4)
secondary considerations, if necessary. KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 406 (2007).
The Supreme Court in KSR, 550 U.S. at 417-18 also instructs us that:
[A]nalysis [of whether the subject matter of a claim
would have been obvious under § 103] 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. [(Emphasis added.)]

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KSR further instructs “that when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” KSR, 550 U.S. at 416.
The test of whether a reference is from an analogous art is first,
whether it is within the field of the inventor’s endeavor, and second, if it is
not, whether it is reasonably pertinent to the particular problem with which
the inventor was involved. See In re Wood, 599 F.2d 1032, 1036 (CCPA
1979). “A reference is reasonably pertinent if, even though it may be in a
different field of endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention”
in considering the inventor’s problem. See In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992). “References are selected as being reasonably pertinent to
the problem based on the judgment of a person having ordinary skill in the
art.” In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006).
ANALYSIS
Appellants do not dispute the Examiner’s finding at page 4 of the
Answer that Suzuki teaches
a method comprising:
providing a printer system (fig. 4) that includes a sensor
assembly (18) to read a reflective bar code from a print medium
(column 10, lines 38-51);
advancing a portion of a print medium through the sensor
assembly of the printer system, the portion of the print medium
having a barcode (figs. 4 and 5), the barcode being encoded
with at least one type of information corresponding to the print
medium (column 10, lines 48-51);
selecting a print mode compatible with the print medium
based on the data record, wherein the print mode is selected
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without user input (column 10, lines 52-54, column 9, lines 43-
49); and
printing an ink onto the print medium according [to] the
print mode selected (column 10, lines 48-51).

Nor do Appellants dispute the Examiner’s finding at page 4 of the Answer
that Suzuki teaches
a printer system for communicating information about a
print medium, comprising:
a printer selected from: ink-jet printers, dot matrix
printers, and dye-sublimation printers, laser printers, and
combinations thereof (column 11, lines 11-19), wherein the
printer includes a sensor assembly (18) configured to read a bar
code on a print medium, the barcode encoded with information
corresponding to the print medium. [(Compare Ans. 4 with
App. Br. 8-10 and Reply Br. 2-3.)]

Although Suzuki discloses a printer and a moving print medium, such as
paper, with a reflective bar code that is used to set a print mode, Ahlquist
teaches that the claimed transmissive sensor assembly and bar code are
interchangeable with the reflective sensor assembly and bar code in reading
a bar code on a moving web, such as paper. Specifically, Ahlquist teaches
(col. 1, ll. 21-56) that:
Generally, bar code indicia which includes contrast
changes, typically black bars to white bars and white bars to
black bars, are scanned using reflective illumination techniques.
. . . Reflectively reading bar codes involves illuminating the
bar code using a light source, typically a light emitting diode
(LED) or laser diode, and collecting indirect scattered
reflections back into a scanning system. The collected
reflections are focused on a photoelectric detector of some kind.
. . .
Scanning a bar code in transmission mode, on the other
hand, involves illuminating one side of a web, having the light
pass through the web, and collected on the other side of the web
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into a photoelectric device of some kind. As a dark element in
the bar code passes between the LED and sensor, the amount of
light which transmits through the web is reduced. The bar code
may be applied to the web using any number of printing
methods (for example, wet ink processes, ink jet, thermal
transfer, clear or semi-opaque label, etc.) as long as the dark
elements applied to the web absorb a portion of the light
passing between the LED and sensor.

Ahlquist further teaches (col. 1, l. 66 to col. 2, l. 55) that
Although some progress has been made in the art for
effectively reading bar codes on web, there persists a need in
the art for an apparatus and method for reading bar codes on a
moving web having a range of optical densities which uses a
controllable light transmissive mode that is reliable, easy to use
and manufacture and that is adaptable to enormously high
production speeds.
. . . .
. . . [A] method of reading bar codes on a moving web
having a range of optical densities includes the steps of
providing a source of web and means for advancing the web
. . . . A light source (described above) is arranged on one side
of the web and a photoelectric scanner means is arranged on an
opposite side of the web as described above. Output signals
from the scanner are converted from analog to digital data and
the digital data is then manipulated by the processing means or
micro-computer . . . .

In other words, Ahlquist teaches arranging the claimed transmissive sensor
assembly and barcode in the claimed manner for the purpose of reading the
barcode via detecting changes in the light transmitted through the moving
web, such as paper with the barcode, with the changes being produced by the
barcode due to its absorption of a portion of the light transmitted. According
to Ahlquist (col. 2, ll. 55-59):
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It is, therefore, an advantageous effect of the invention
that bar code indicia, and the like, can be easily, reliably and
precisely read on a moving web [such as paper] that has a wide
range of optical densities.

Given these teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ the claimed
transmissive sensor assembly and bar code in the manner claimed as the
sensor and barcode of the printing system taught by Suzuki, with a
reasonable expectation of successfully reading such bar code on a moving
print medium, such as paper, for Suzuki’s purposes, i.e., selecting a print
mode based on the data provided by the bar code and printing an ink onto
the print medium according to the print mode selected.
In reaching this determination, we have also considered Appellants’
argument that Ahlquist and Suzuki are from nonanalogous art. However
Suzuki, like the claimed invention, is directed to a printing system having a
sensor for reading a bar code on a print medium such as paper, to print an
ink onto the print medium according to the print mode selected based on the
bar code reading. Ahlquist, like the claimed printing system and method,
involves solving the problem associated with reading a bar code on a
moving web, such as moving paper, via the use of the claimed transmissive
sensor assembly and bar code. In other words, Suzuki is within the field of
the inventor’s endeavor, i.e., the printing field, while Ahlquist is reasonably
pertinent to the particular problem with which the inventor and Suzuki were
involved, i.e., improving the bar code reading.
Accordingly, based on the totality of record, including due
consideration of Appellants’ arguments, we determine that the
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preponderance of evidence weighs most heavily in favor of obviousness
within the meaning of 35 U.S.C. § 103.
ORDER
In view of the foregoing, the decision of the Examiner is affirmed.

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

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