Invalidity dossier
US 4593186
Portable laser scanning system and scanning methods
Current assignee: PSC Inc.
Added 9/29/2026, 2:44:18 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll run searches for litigation/docket information on this specific patent number before summarizing.
Let me check for any recent (2026) litigation activity and the full claim set.
Summary: US Patent 4,593,186
Verification note on the number: I interpreted "4593186" literally as US 4,593,186. No other patent number was substituted. Searches for this specific number returned the patent page plus Federal Circuit and district court opinions referencing the "'186 patent." The only unrelated 2026 hit for the string "4593186" was a Florida LLC filing (FEI No. 39‑4593186) — not a patent or docket item.
Bibliographic data
| Field | Value |
|---|---|
| Title | Portable laser scanning system and scanning methods |
| Patent number | US 4,593,186 A |
| Application number | US06/543,878 |
| Inventors | Jerome Swartz; Edward Barkan; Shelley Harrison |
| Original assignee | Symbol Technologies, Inc. (Google Patents currently lists assignee as Symbol Technologies LLC) |
| Filing date | 1983‑10‑20 |
| Issue date | 1986‑06‑03 |
| Priority date | 1980‑02‑29 (claimed from US 06/125,768) |
| Continuity | Continuation of Ser. No. 378,919 (filed 1982‑05‑17, abandoned), itself a division of Ser. No. 125,768 (filed 1980‑02‑29), which issued as US 4,389,297 (the "'297 patent") |
| Classification | G06K 7/10 and related subclasses |
| Legal status | Expired – Lifetime; anticipated expiration 2003‑06‑03 (per the Google Patents record) |
Abstract (as printed)
"An entirely field-portable laser scanning system for reading boar code symbols [sic – as printed] includes a light-weight and small-sized laser scanning head. The laser source, power supply component, optics, scanning elements, sensor circuit, and signal processing circuitry are specially designed for minimal size and weight and volume such that they can all be mounted in the head. The head can be bracket-mounted or hand-held. The housing for the head can be provided with a handle grip, or can be gun-shaped. High-speed oscillating scanning motors and/or penta-bimorph scanners are used as scanning elements. A trigger initiates repetitive scanning of each object bearing a symbol, and an indicator indicates when the scanning of that particular object has been terminated. A body harness supports the remaining scanner system circuitry. A non-bulky, freely-movable cable interconnects the head to the body harness. Methods of scanning the symbol and of operating the system are also disclosed."
Independent claims (plain language)
The Federal Circuit describes the '186 patent as containing apparatus claims 1–10 and method claims 11–15, with the broadest apparatus claim (claim 1) and broadest method claim (claim 11) both requiring a "trigger" and "repetitively" scanning the directed laser beam across each symbol. Based on that, claims 1 and 11 are the independent claims; I do not have authoritative full text of claims 2–10 and 12–15, so I cannot rule out that another claim among them is also independent. Flagging that as a residual uncertainty.
Claim 1 — Apparatus: "A laser scanning system for reading bar code symbols, each in its respective turn." The claim recites:
- (a) a light-weight, hand-held head normally supported by a user in a normally non-contacting relationship with the symbols (i.e., no wand/pen contact), the head containing: (i) means for generating a laser beam and directing it through an outlet port to the symbol; (ii) scanning means for repetitively scanning the beam across each symbol; (iii) sensor means detecting the variable reflected intensity per symbol and generating an electrical signal; and (iv) signal processing means producing a processed electrical signal per symbol;
- (b) decoding means associated with the signal processing means;
- (c) manually actuatable trigger means on the head for initiating reading of each symbol on each manual actuation from one state to another; and
- (d) means for determining a successful decoding and non-manually terminating the reading of that symbol upon that determination.
In substance: an "aim-and-shoot" hand-held laser scanner that, on one trigger pull, repeatedly scans a single symbol until the decoder confirms a good read, then automatically stops — so the user is cued to move to the next symbol. This "read-until-decoded, then auto-stop per symbol" logic is the point the Federal Circuit identified as the invention's advance over the '297 patent.
Claim 11 — Method: "A method of successively sensing and reading bar code symbols, each in its respective turn." Steps (a)–(h) mirror claim 1: generating and directing a laser beam; repetitively scanning it across each symbol; detecting reflected intensity and generating an electrical signal; processing it into a processed signal; performing these steps in a light-weight hand-held head supported by the user in a normally non-contacting relationship with the symbols; decoding the processed signal; initiating reading on each manual actuation of a trigger from one state to another; and determining a successful decode and non-manually terminating reading of that symbol upon success.
Claim 1 and claim 11 therefore cover the same concept in apparatus and method form, with the trigger-initiation and auto-termination limitations appearing in both.
Litigation / docket findings (with caveats)
- USPTO/CAFC 2026 dockets: My searches returned no 2026 CAFC docket activity involving US 4,593,186. I could not directly query Docket Alarm/PACER-equivalent databases from this session, so I cannot state affirmatively that no 2026 filing exists — only that my searches surfaced none. Given the patent expired 2003‑06‑03, current litigation is unlikely.
- Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569 (Fed. Cir. 1991) — the leading case on this patent. The district court (S.D.N.Y. 1990) held Opticon's MSH-840/850/860 devices infringed claims 1–8 and 11–15 of the '186 patent "when used with the decoder with which it was designed to operate," and that the '297 and '186 patents were not invalid or unenforceable; the Federal Circuit affirmed. Notable holdings: § 121 did not make the '297 patent available as a reference against the '186 patent; no inequitable conduct proved; and the claims were construed as means-plus-function limitations under 35 U.S.C. § 112 ¶ 6.
- Symbol v. Spectra-Physics (N.D. Cal., filed Jan. 27, 1984) — resolved by consent judgment Jan. 6, 1986.
- Metrologic / Knowles proceedings are referenced in the Opticon record (Metrologic's Chapter 11 bankruptcy; Knowles testified for Opticon).
- Symbol v. Lemelson (Fed. Cir., 277 F.3d 1361 (2002); 422 F.3d 1378 / 429 F.3d 1051 (2005)) — Symbol as plaintiff on prosecution laches, but the patents at issue there were Lemelson's, not the '186 patent; this is context, not '186 litigation.
- Symbol–PSC licensing dispute — a 1991 agreement licensed the '297 and '186 patents; PSC raised patent misuse/unenforceability as to royalties on those two patents. This was a contract/royalty dispute rather than an infringement merits ruling on '186 claim validity.
Uncertainty disclosure
- I did not fetch the USPTO PatentCenter or CAFC docket pages directly; the status, dates, and legal-history entries above come from the Google Patents record and court opinions, plus my searches. Treat the "Expired – Lifetime / 2003‑06‑03" status as the record's statement, not an independent legal conclusion.
- Full text of dependent claims 2–10 and 12–15 was not in the material I retrieved; my claim-1/claim-11 characterization rests on the patent's own summary and on the Federal Circuit's description of the claim set.
- The abstract's "boar code" is reproduced as printed; it is evidently a typographical error for "bar code," but I have not auto-corrected it.
Generated 9/29/2026, 2:51:04 PM
Cases on file (3)
Group view →Specific litigation cases in our database that name US patent 4593186. The free-form analysis below may also discuss cases beyond this list.
Lawsuits filed per year
- PSC Inc. v. Symbol Technologies, Inc. et al.filed Apr 1, 199696-CV-6152TU.S. District Court, W.D.N.Y.patent misuse/unenforceability holding; patent issues settled
Defendants: Symbol Technologies, Inc., Data General Corp.
Other patents asserted: 4387297
- Symbol Technologies, Inc. v. Metrologic Instruments, Inc. et al.filed Jan 26, 198888-0461U.S. District Court, D.N.J.partial summary judgment; final disposition unverified
Defendants: Metrologic Instruments, Inc., C. Harry Knowles
Other patents asserted: 4387297
- Symbol Technologies, Inc. v. Opticon, Inc. et al.filed Nov 14, 198686-8736U.S. District Court for the Southern District of New York; appeal to U.S. Court of Appeals for the Federal Circuit (No. 90-1409)judgment for plaintiff, affirmed on appeal
Defendants: Opticon, Inc., Opto Electronics Co., Ltd.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US patent 4593186. Let me search multiple sources.
Let me search dedicated litigation databases and related case law.
I have strong leads. Let me verify details and look for additional cases.
Below are the litigation matters I could identify involving U.S. Patent No. 4,593,186 ("Portable laser scanning system and scanning methods," issued June 3, 1986, to Symbol Technologies; expired June 3, 2003). I searched for the exact number 4593186 and excluded similarly numbered patents (e.g., U.S. 9,635,186, D473,186, 4,740,186, which are unrelated).
Important context: the '186 patent is a continuation/division in the same family as U.S. 4,387,297 ("the '297 patent"). Symbol enforced the '186 patent almost exclusively together with the '297 patent, so it rarely appears alone in a docket caption. That is why it is primarily a patent-in-suit in the cases below rather than a standalone cause of action.
1. Symbol Technologies, Inc. v. Opticon, Inc. and Opto Electronics
- Plaintiff: Symbol Technologies, Inc.
- Defendants: Opticon, Inc. and Opto Electronics Co. Ltd. (Japanese parent)
- Jurisdiction: U.S. District Court, S.D.N.Y.
- Case No.: 86-cv-8736
- Filed: November 14, 1986
- Outcome/Status: Symbol prevailed. The district court (Slip Op., May 3, 1990; 1990 WL 58887; 17 U.S.P.Q.2d 1737) held the '186 and '297 patents valid, enforceable, and infringed, and rejected Opticon's double-patenting, inequitable-conduct, and § 103 defenses. On appeal the judgment was affirmed, Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 U.S.P.Q.2d 1241 (Fed. Cir. 1991). The district court found the MSH-840 device infringed claims 1–8 and 11–15 of the '186 patent (when used with its intended decoder) and the MSH-850 device infringed claims 1–9 and 11–15 of the '186 patent. This is the leading reported decision construing the '186 patent (means-plus-function infringement; § 121 safe harbor vs. the '297 patent).
- Sources: https://law.justia.com/cases/federal/appellate-courts/F2/935/1569/[282648](/patent/282648)/ ; https://www.courtlistener.com/opinion/[563215](/patent/563215)/ ; http://www.worldlii.org/us/cases/federal/USCAFED/1991/503.html
2. Symbol Technologies, Inc. v. Metrologic Instruments, Inc. and C. Harry Knowles
- Plaintiff: Symbol Technologies, Inc.
- Defendants: Metrologic Instruments, Inc. and C. Harry Knowles (president/sole owner)
- Jurisdiction: U.S. District Court, D.N.J.
- Case No.: Civ. A. No. 88-0461 (consolidated with 88-4686; related to 90-5053)
- Filed: January 26, 1988
- Outcome/Status: The '186 and '297 patents were asserted against Metrologic's Series '90 hand-held laser scanners (MH-290, etc.). In its August 8, 1991 opinion, 771 F. Supp. 1390 (D.N.J. 1991), the court addressed defendants' equitable-estoppel motion and Symbol's motions for partial summary judgment on validity and infringement; the court also discussed induced infringement under § 271(b). I could not confirm from the available sources the final disposition of this action (the reported opinion is an interlocutory/partial-summary-judgment ruling, not a final judgment). Treat the ultimate outcome as unverified.
- Source: https://www.courtlistener.com/opinion/[1656649](/patent/1656649)/ ; 771 F. Supp. 1390
3. PSC Inc. v. Symbol Technologies, Inc. (consolidated with Data General Corp.)
- Plaintiff/Counterclaim-Defendant: PSC Inc.
- Defendant/Counterclaim-Plaintiff: Symbol Technologies, Inc. (Data General as consolidated defendant)
- Jurisdiction: U.S. District Court, W.D.N.Y.
- Case No.: 96-CV-6152T
- Filed: April 1, 1996
- Outcome/Status: Declaratory-judgment/antitrust action. PSC licensed the '297 and '186 patents from Symbol (1991 and 1995 agreements) and paid royalties on them. In its decision of October 22, 1998, the court held that Symbol engaged in patent misuse with respect to the '297 and '186 patents by collecting royalties from two licensees (PSC and Telxon) for the same product/use, rendering those patents unenforceable until the misuse is purged. The court noted the parties had settled the patent validity and infringement issues, leaving royalties/discovery. (Reported at 1998 U.S. Dist. LEXIS; also at 1998 WL 928402).
- Source: https://storage.courtlistener.com/harvard_pdf/[2406969](/patent/2406969).pdf
Related actions that did NOT involve the '186 patent (checked and excluded)
- Symbol Technologies, Inc. v. Spectra Physics, No. C-84-20051 (N.D. Cal., filed Jan. 27, 1984) — involved the '297 patent; the '186 patent had not yet issued (it issued June 3, 1986, after the Jan. 6, 1986 consent judgment). It appears in the Metrologic opinion only as background.
- Metrologic Instruments, Inc. v. Symbol Technologies, Inc., No. 03-2912 (HAA) (D.N.J., Markman opinion Sept. 29, 2006) — asserted Metrologic's patents (5,260,553; 5,340,971; 5,925,870; 5,939,698), not the '186 patent.
- USITC Section 337 investigation (Symbol v. Metrologic, Inv. No. 337-TA-521 family; pub. 4006) — asserted Symbol's '308 and '889 patents, not the '186 patent.
- Harvard Battery, Inc. v. Symbol Technologies (E.D. Pa.) — involved D473,186 (a design patent), a different patent number. Flagged only because it is a common false hit for "473,186"/"186."
Caveats and verification notes
- The Google Patents page for US4593186 flags "Family has litigation" and links a Darts-IP family record (family=26823931): https://patents.darts-ip.com/?family=26823931 — I was unable to open/parse that licensed database in this session, so it may list additional family lawsuits (including suits on sibling patents '297 and '470) that I could not enumerate.
- I could not access the Unified Patents litigation portal or PACER directly in this session; my results come from CourtListener, Justia, Casetext, WorldLII, and the Google Patents litigation link. There may be additional district-court suits from the 1980s–1990s that are not in the free databases I could reach.
- I did not find any litigation naming the '186 patent after the 1990s (consistent with its June 3, 2003 expiration).
- Consistent with your strict rule, I interpreted the identifier literally as 4,593,186 and did not fold in any of the similarly numbered patents above.
Bottom line: Three matters assert or directly adjudicate U.S. 4,593,186: Symbol v. Opticon (S.D.N.Y. 86-8736, aff'd 935 F.2d 1569), Symbol v. Metrologic/Knowles (D.N.J. 88-0461), and PSC v. Symbol (W.D.N.Y. 96-CV-6152T, patent-misuse/unenforceability holding). If you need a fully verified, exhaustive docket-level list, the reliable next steps are a Darts-IP family pull (family 26823931) and a PACER/RPX or Unified Patents party search on "Symbol Technologies" as assignee.
Generated 9/29/2026, 2:51:06 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: PSC Inc.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll start by verifying the structured data and searching for any PTAB activity on this patent.
Let me run additional targeted searches to rule out CBM/PGR filings and any district-court or ITC history that might have spawned proceedings.
Let me check whether the patent was ever asserted in litigation (context for why no IPR exists) and confirm no PTAB docket.
Proceedings overview
Total AIA trial proceedings on file: 0 — 0 active, 0 with claims invalidated, 0 with claims sustained, 0 settled, 0 institution denials. The structured "PTAB proceedings on file" block (USPTO Open Data Portal) is the canonical list and it is empty, and my independent web searches across PTAB E2E/PTAB Decisions, CBM petition sets, and litigation-reporting sources surfaced no IPR, PGR, or CBM naming US 4,593,186. The bottom-line defensive posture is not "hardened by PTAB" but something stronger and simpler: the patent is expired (anticipated expiration 2003-06-03, status "Expired - Lifetime"), so there is nothing left to assert and nothing left to invalidate. A demand letter citing 4,593,186 today is citation to a dead patent, not to a hardened one.
No proceedings to report — and the absence needs explaining
AIA trials only became available on 2012-09-16. US 4,593,186 issued 1986-06-03 and expired 2003-06-03. No IPR, PGR, or CBM could have been filed during the patent's enforceable life, because the statutory vehicles did not yet exist. Even under the transitional CBM program (AIA § 18, available 2012-09-16 through 2020-09-16), a petitioner had to have "been sued for infringement of the patent or . . . charged with infringement" (AIA § 18(a)(1)(B)) — impossible against a patent that expired in 2003. This is an expiration explanation, not evidence that the claims are strong and have survived attack.
For completeness, here is what the post-grant and litigation record actually shows:
| Item | Detail |
|---|---|
| IPR / PGR / CBM | None found in ODP structured data; none found via web search |
| Ex parte reexamination | Family data on Google Patents lists the parent as "US4387297B1" (a reexamination certificate for U.S. 4,387,297). I found no evidence of a reexamination certificate for the '186 itself. Flagging rather than asserting. |
| District court | Symbol Technologies, Inc. v. Opticon, Inc., No. 86-8736 (S.D.N.Y.), judgment 1990; aff'd, 935 F.2d 1569 (Fed. Cir. 1991) |
| District court | Symbol Technologies, Inc. v. Metrologic Instruments, Inc. / Knowles, Civ. No. 88-0461 (D.N.J. 1988) |
| ITC | Inv. No. 337-TA-551, Certain Laser Bar Code Scanners and Scan Engines (Symbol as complainant) — I could not confirm from the retrieved record that the '186 was among the asserted patents; treat as related context only |
| Licensing | The '186 was licensed and litigated commercially (e.g., the 1991 Symbol–PSC agreement; the Symbol–Telxon agreement), |
Claim-level picture from the litigation record (not from any FWD)
Because there is no FWD, the only claim-level adjudication of record is the Opticon infringement/validity findings, as recited in the Federal Circuit opinion:
- The '186 contains apparatus claims 1–10 and method claims 11–15.
- The district court found infringement: MSH-840 → claims 1–8 and 11–15; MSH-850 → claims 1–9 and 11–15; MSH-860 → claims 1–9 and 11–15. (935 F.2d at 1571–72, 1583–84.)
- Claim 10 does not appear in any of the three infringement findings — as far as the public record shows it was never adjudicated.
- The Federal Circuit affirmed that the '297 and '186 patents "were not proved invalid or unenforceable." That is a 1991 validity judgment between Symbol and Opticon; it does not bind non-parties, and it is probative of nothing today given expiration.
Source: CourtListener, Symbol Techs. v. Opticon, 935 F.2d 1569 · Justia
Strategic summary
Claim status. No claim of US 4,593,186 is "canceled" — PTAB never touched it. No claim is "sustained" either, in the IPR sense. All claims 1–15 simply expired on 2003-06-03. The practical taxonomy for a defendant is therefore not canceled/sustained/untested but all claims unenforceable by expiration. Within that, the public record shows claims 1–9 and 11–15 were adjudicated infringed (by one or another Opticon device) and claim 10 was never adjudicated. If a demand letter asserts claims 1–9 or 11–15, the right response is not an IPR petition but a one-line letter: the asserted patent's term ended 2003-06-03.
Estoppel landscape. There is no § 315(e)(2) estoppel against anyone, because there has never been an IPR or PGR. That cuts both ways and is mostly moot: expired-patent assertion liability is barred by § 271 (no infringing acts after expiration) and damages recovery is separately capped by § 286's six-year lookback — which from 2026-09-29 reaches back only to 2020-09-29, more than seventeen years after the patent died. There is no window in which infringement or recoverable damages can exist. Note the asymmetry on preclusion: the 1991 Fed. Cir. affirmance of validity does not bind non-parties, whereas an invalidating judgment would have been defensively available under Blonder-Tongue.
Pattern signals. No repeat-petitioner pattern (no petitioners at all). The patent owner (Symbol Technologies LLC, successor to Symbol Technologies, Inc.) was an aggressive enforcer in the 1980s–1990s — Spectra-Physics, Opticon, Metrologic, ITC actions, plus the PSC/Telxon licensing disputes — but that enforcement predates the AIA by two decades. There is no defensive aggregator (Unified Patents or similar) in the chain, because there was never a modern assertion campaign to respond to.
Recommended next steps
- If you are a defendant facing an assertion of 4,593,186: the dispositive fact is expiration. Per the bibliographic record, status is "Expired - Lifetime" with anticipated expiration 2003-06-03 (Google Patents US4593186A). No infringement under 35 U.S.C. § 271 can occur after the term ends, and no damages can reach back to any period of enforceability under § 286. Do not spend money on an IPR petition — there is no live claim to cancel, and the PTAB has no useful remedy to give you.
- Preserve the record of the absence of activity. If you need a procedural-history certificate for a motion or a letter, the ODP structured data showing zero AIA trials is your exhibit; PTAB E2E should be queried by patent number for a formal "no proceedings" printout.
- If a plaintiff asserts claims 1–9 or 11–15 specifically (the claims with Opticon infringement findings), the strongest responsive authorities are § 271 and § 286 plus the expiration date — not invalidity. There is no § 315(e)(2) estoppel to worry about, and there is no pending trial-stage milestone to diary because no proceeding exists.
- If, notwithstanding all of the above, a live IPR exists that ODP has not yet ingested (the last ingest may lag), search PTAB E2E by patent number before relying on this memo. My web searches found none, but I flag that I could not exhaustively query PTAB E2E directly from here.
Confidence and caveats: High confidence on the zero-AIA-trial finding (consistent between the structured ODP data and independent searches) and on the 2003-06-03 expiration. Moderate confidence on the details of the Opticon claim-by-claim findings (drawn from the Fed. Cir. opinion text, not the district court record itself); lower confidence on whether the '186 was asserted in ITC Inv. No. 337-TA-551, and on whether the '186 ever received a reexamination certificate — those two points are flagged, not asserted.
Generated 9/29/2026, 2:51:14 PM
Ownership chain (3)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · recorded 1988-11-14 · Security Agreement
Symbol Technologies, Inc.National Westminster Bank USA
securitization
? · recorded 1990-07-13 · Release
National Westminster Bank USASymbol Technologies, Inc., a corporation of Delaware
? · recorded 1990-12-07 · Merger
Symbol Technologies, Inc.Symbol Technologies, Inc., a corporation of Delaware
internal reorg
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll attempt to pull the recorded assignment/security-interest entries and reel-frame data before reconstructing the chain.
Let me try to retrieve the actual assignment records (reel/frame) for this patent.
Let me corroborate the corporate-chain status of the assignee and check for any later recorded transfers.
Ownership & Assignment Analysis — US 4,593,186
Source-status warning (read first): The primary source you specified — USPTO Assignment Center (assignmentcenter.uspto.gov) and its legacy mirror (assignment.uspto.gov/patent/index.html) — is a JavaScript application that I could not query or scrape in this session. My repeated searches did not surface an "Assignment Abstract of Title" page or the underlying assignment PDFs for patent 4,593,186. Consequently:
- I do not have reel/frame numbers or correspondent-of-record data for this patent. I will not invent them. Where the field exists but I could not retrieve it, I say so explicitly.
- The chronology below is reconstructed from the authoritative Google Patents legal-events record in the patent text, which reproduces the same three post-issuance reassignment entries the Assignment Center would show, but without the reel/frame or correspondent columns.
- Treat every reel/frame reference below as "not retrieved" rather than "none."
Inventors
| Inventor | Employer at filing (determinable) | Notes |
|---|---|---|
| Jerome Swartz | Symbol Technologies, Inc. — co-founder; served as Chairman/CEO | The driving inventor-executive behind Symbol's hand-held laser scanner line. |
| Edward Barkan | Symbol Technologies, Inc. — staff engineer | Prolific Symbol scanning-optics inventor; a career Symbol engineer, not a transferee. |
| Shelley Harrison | Symbol Technologies, Inc. — co-founder / early executive | Also a named inventor on the parent '297 patent in this family. |
Unusual-pattern check: No evidence of a "founders-depart-early / portfolio fire-sale" pattern. All three named inventors were inside Symbol personnel at filing, not independent inventors who assigned in and left. Swartz in particular remained with Symbol through its 2007 acquisition by Motorola, which is the opposite of the pre-fire-sale tell. I could not independently verify Harrison's or Barkan's exact tenure dates; that sub-point is unclear, not confirmed either way.
Original assignee
- Entity named (as issued, 1986‑06‑03): Symbol Technologies, Inc., a New York corporation (Holtsville, NY), which became a Delaware corporation via the 1987/1990 merger recorded below.
- Google Patents displays "Symbol Technologies LLC" for both "Original Assignee" and "Current Assignee." That is a later corporate-history label, not the 1986 record; see the timeline.
- Did they ship a product embodying the claims? Yes — squarely. Symbol was an operating manufacturer of hand-held laser bar-code scanners and was the company that commercialized the hand-held moving-beam scanner described in this patent. In Symbol v. Opticon, Symbol asserted the '186 patent against Opticon's MSH-840/850 devices, and in Symbol v. Metrologic against Metrologic's Series '90 scanners — i.e., Symbol was suing actual competitors in the same product market, the classic operating-company posture.
- Primary line of business: bar-code data capture, hand-held laser scanners, RFID, mobile computing, wireless infrastructure.
- Current status: Operating subsidiary, acquired twice over. Symbol Technologies was acquired by Motorola (completed 2007,
$3.9B); its enterprise business (including Symbol) sat within Motorola Solutions; and in **October 2014 Zebra Technologies acquired Motorola Solutions' enterprise business ($3.45B cash)**. Symbol is today a Zebra Technologies subsidiary and is not dissolved or in bankruptcy. (Note: Symbol had a 2002–2004 accounting-fraud scandal that led to executive convictions, but the company was not liquidated — patents were not sold through a bankruptcy estate.)
Assignment timeline
The Google Patents legal-events record shows three post-issuance reassignment entries, all internal/security in nature. No reel/frame or correspondent data was retrievable.
1988‑11‑14 (recorded) / execution date not shown — Reel not retrieved / not retrieved
- Conveyance: Security Interest (security agreement in favor of a lender)
- Assignor: Symbol Technologies, Inc.
- Assignee: National Westminster Bank USA, a national banking association
- Correspondent: Not retrieved. Cannot assess recurrence.
- Context: Securitization — Symbol pledged its patent portfolio as collateral for bank financing. This is a lender lien, not a transfer of ownership.
1990‑07‑13 (recorded) / execution date not shown — Reel not retrieved / not retrieved
- Conveyance: Release by Secured Party
- Assignor: National Westminster Bank USA
- Assignee: Symbol Technologies, Inc., a corporation of Delaware
- Correspondent: Not retrieved.
- Context: Lien release — the 1988 security interest was discharged; ownership concept reposed in Symbol. Paired with the 1988 lien, this is a finance cycle, not an NPE transaction.
1990‑12‑07 (recorded) / effect. 1987‑11‑20 (N.Y.) — Reel not retrieved / not retrieved
- Conveyance: Merger
- Assignor: Symbol Technologies, Inc., (merging corporation)
- Assignee: Symbol Technologies, Inc., a Corp. of Delaware (surviving corporation)
- Correspondent: Not retrieved.
- Context: Internal reorganization — New York → Delaware redomiciliation by merger. The patent's owner of record thus became the Delaware Symbol Technologies, Inc.
What the record does not show: there is no recorded assignment from the inventors to Symbol in the legal-events feed (common for applications filed by the company, where the inventor assignment is recorded pre-issuance and often not exposed), and no post-1990 ownership transfer of this patent at all — even though Symbol was acquired by Motorola in 2007 and the enterprise business went to Zebra in 2014. The absence of a recorded 2007/2014 assignment for this patent is a real finding worth a manual Assignment-Center pull: the corporate acquisitions appear to have moved the stock/entity, not the individual asset, which is why Google Patents still surfaces "Symbol Technologies LLC" as current assignee.
If you need reel/frame and correspondent verification: query the Assignment Abstract of Title directly at https://assignmentcenter.uspto.gov/ (Basic Search → "4,593,186") and cross-check the 1988 NatWest security-interest record. I could not do so here.
Timeline diagram
timeline
title Ownership of US 4593186
1980 : Priority application filed
: Inventors assign to Symbol Technologies Inc
1983 : Continuation application filed
1986 : Patent issued to Symbol Technologies Inc
1988 : Security interest granted to NatWest Bank USA
1990 : NatWest security interest released
: Merger into Symbol Technologies Inc of Delaware
2003 : Patent expired
2007 : Symbol acquired by Motorola
2014 : Enterprise unit acquired by Zebra Technologies
NPE / troll-pattern signals
Shell-entity transfer — Not present. No "IP / Holdings / Licensing / Ventures" transferee appears anywhere in the chain. The only non-operating counterparties are a bank (NatWest, 1988 lien) and a surviving merger corporation (Delaware Symbol, 1990) — neither is a licensing shell. Patent never left the Symbol corporate family.
Known asserter in the chain — Not present. No assignee matches Acacia, Marathon, IV, IPNav, Wi‑LAN, Conversant/Mosaid, Vringo, Pendrell, Round Rock, Erich Spangenberg entities, etc. Both the 1988 and 1990 events involve Symbol Technologies, Inc. and National Westminster Bank USA. The eventual acquirers (Motorola, Zebra) are operating companies, not NPEs.
Repeat correspondent across the chain — Unclear / not assessable. Correspondent-of-record is recorded per assignment but was not retrievable for any of the three entries. I will not guess at an attorney name. This is the one signal a manual Assignment-Center pull could actually resolve.
Cascading transfers — Not present. Only three recorded events ever, spread over 1988→1990, and each is security/reorg in nature. No chained LLCs, no <24-month cascade.
Pre-litigation transfer — Not present. The patent issued 1986‑06‑03 to Symbol, and Symbol filed suit against Opticon on 1986‑11‑14 with the patent already in Symbol's own name as original assignee. There was no assignment in the 6 months before the first suit — the asserter was the original owner, which is the inverse of the arranged-standing tell.
Bankruptcy fire-sale — Not present. Symbol's 2002–2004 accounting scandal did not produce a Chapter 7/11 patent liquidation; Symbol was instead acquired as a going concern by Motorola (2007). No recorded bankruptcy sale touching the '186 patent.
Privateering — Not present. No operating-company-to-NPE transfer of this patent is recorded. Symbol asserted the '186 patent itself, in its own name, against direct competitors (Opticon, Metrologic) — the antithesis of privateering.
Defensive aggregator (anti-NPE) — Not present. The chain does not terminate at RPX, AST, LOT, Unified Patents, or OIN. It terminates (by acquisition) inside Motorola Solutions → Zebra Technologies, an operating manufacturer.
Verdict
Operating-company assertion.
The patent was procured by, owned by, and litigated by Symbol Technologies, Inc. — a hand-held laser-scanner manufacturer that shipped products embodying the claims and sued real competitors (Symbol v. Opticon, S.D.N.Y. No. 86‑cv‑8736, aff'd 935 F.2d 1569 (Fed. Cir. 1991); Symbol v. Metrologic, D.N.J. No. 88‑0461), winning findings that claims 1–8 and 11–15 were infringed. The only recorded post-issuance events are a 1988‑11‑14 security interest to National Westminster Bank USA, its 1990‑07‑13 release, and a 1990‑12‑07 merger redomiciling Symbol NY → Symbol DE — i.e., a lender lien + internal reorg, with zero NPE indicia under signals 1, 2, 4, 5, 7, and 8. Ownership never left the Symbol corporate family, which was later absorbed by Motorola (2007) and then Zebra Technologies (2014). The patent expired 2003‑06‑03, so no assertion is possible today.
Residual uncertainty: reel/frame numbers and correspondents-of-record could not be retrieved in this session, so signal 3 (repeat correspondent) remains genuinely unassessed. Verify at https://assignmentcenter.uspto.gov/ (search "4,593,186"), where the three entries above should appear with their reel/frame and correspondent fields.
Generated 9/29/2026, 2:51:38 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the prior art cited on the face of US 4,593,186. First, let me locate the patent's "References Cited" section, since the full text I have does not include it.
Let me retrieve the front-page "References Cited" for US 4,593,186 directly from several patent databases.
Let me try to pull the actual cited-references list from the patent's front page via FreePatentsOnline and the Google Patents PDF.
Prior Art Analysis — US 4,593,186 ("Portable laser scanning system and scanning methods")
0. Scope and an important limitation up front
What I searched: the specific number 4593186 (interpreted literally; I did not substitute US 9,635,186, D473,186, US 4,740,186, or the IEEE paper "10.1109/WCICA.2008.4593186," all of which surfaced as false hits). I reached: Google Patents (US4593186A), uspto.report/patent/grant/4593186 (a USPTO-data mirror), Justia, FreePatentsOnline, and the patentimages PDF host. I could not directly reach USPTO PatentCenter's own page in this session.
The critical gap I have to disclose: The front-page "[56] References Cited" table for US 4,593,186 — the enumerated list of examiner/applicant-cited U.S. patent documents and non-patent literature — was not present in the authoritative full text supplied to me, and I was unable to retrieve it from the sources I reached. The Google Patents and FreePatentsOnline snippets I obtained returned forward citations (documents citing the '186, e.g., US 4,825,057; US 7,006,849; US 7,111,786) rather than the '186's own backward citation list.
Consequence: I cannot provide the requested "each patent citation for 4593186" enumeration with citations and dates without fabricating them. Per your strict rule, I will not invent reference numbers, dates, or §102 mappings. Below I give (a) the prior art that is verifiably cited inside the patent's own specification, (b) the statutory non-prior-art issue that governs the family, and (c) a claim-by-claim §102 susceptibility framework, with every unverified item explicitly flagged.
1. Prior art cited within the patent's own text (verified against the US4593186 full text)
1.1 The most material reference expressly named in the specification
| Item | Full citation | Date | Description | Potential §102 relevance |
|---|---|---|---|---|
| A | U.S. Pat. No. 4,251,798 (Swartz et al.), filed May 31, 1978 as Ser. No. 911,171 | Filed 1978‑05‑31; issued 1981‑02‑17 | The specification cites this twice: (i) "the various bimorph scanning oscillating elements described in co-pending U.S. patent application Ser. No. 911,171, filed May 31, 1978, now U.S. Pat. No. 4,251,798"; and (ii) "Reference may be had to co-pending application Ser. No. 911,171 … for details of one preferred type of signal processing means." | Its 1981‑02‑17 issue date pre-dates the '186 filing (1983‑10‑20), so on its face it is available as §102(b) art. It is potentially relevant to claim 1 elements (iii)–(iv) (sensor/processing means) and to the bimorph scanning element recited in the "scanning means" structural support of claim 1 and in scan-step (b) of claim 11. However — see §2 below — it is a same-family Swartz patent, so common-ownership/§121 and double-patenting defenses would apply in practice. |
Sources: US4593186 specification text (supplied authority); corroborating date for 4,251,798 in Justia D690296 "Referenced Cited" table (https://patents.justia.com/patent/D690296).
1.2 Prior art described generically in the "Description of the Prior Art" (no patent numbers given)
The Background section characterizes the prior art in categories, without citing any specific patent:
- Contact-type wand/pen bar code readers — manual, contact, one scan per manual sweep; scar the symbol; unusable on wax-coated, soft, reflective, or recessed symbols.
- Non-contact wand/pen readers — no depth of focus; effectively dragged; still one scan per manual movement.
- Stationary "deck"/point-of-sale supermarket scanners (moving-beam or fixed-beam) — large, massive, stationary installations.
- Known hand-held portable laser scanning heads — "weigh over three pounds," too heavy, thick/unwieldy shielded cable to a desk-top console.
§102 assessment: These are admissions about the state of the art, not references. As admissions they are relevant to the level of skill and to the preamble/characterizing language of claims 1 and 11 (e.g., the "light-weight, hand-held head … normally … non-contacting … relationship," the trigger, and the "repetitively scanning" point of novelty). They do not, alone, anticipate any specific claim.
2. The reference that looks like prior art but is not: the '297 patent (verified legal point)
- Parent: US 4,387,297 (Swartz et al.), filed 1980‑02‑29 — the '186 is a continuation of Ser. No. 378,919 (filed 1982‑05‑17, abandoned), itself a division of Ser. No. 125,768 (filed 1980‑02‑29), now US 4,387,297.
- Sibling division: US 4,496,831 (Swartz et al.), filed 1981‑11‑16, issued 1985‑01‑29 — I retrieved its full claim set (claims 1–24), which is a claims-level corroboration of the family's scanning-motor disclosure (oscillating shaft, magnetic centering force, <360° arc, ~100 Hz). Because these share the same 1980‑02‑29 priority and the same inventive entity, they are not standalone §102 art against the '186.
- Verified holding: In Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569 (Fed. Cir. 1991) (aff'g S.D.N.Y. 1990), the court held that 35 U.S.C. §121 did not make the '297 patent available as a reference against the '186 patent. (This is consistent with, and builds on, the litigation summary already generated.)
Contradiction check: None found. The previously-generated section describing the '186 as apparatus claims 1–10 / method claims 11–15 is consistent with the family's structure (compare the division '831, whose apparatus claims are 1–13 and method claims 14–24). Flagging only that the full text of '186 claims 2–10 and 12–15 remains unretrieved, so I cannot exclude that another claim among them is independent.
3. Forward citations (documents citing the '186) — not prior art to the '186
For completeness and to prevent confusion, these appeared in my searches and are later documents that cite the '186 (i.e., not §102 art):
US 4,825,057 and US 4,768,248 (Swartz et al.); US 5,543,609; US 5,684,287; US 5,576,531; US 7,006,849; US 7,111,786; and EP 1,614,056 B1 (which lists US 4,593,186 A at ¶[0004]). These are irrelevant to the prior-art inquiry.
4. Claim-by-claim §102 susceptibility framework
Because I do not have the examiner's actual cited references, I map risk rather than assert specific anticipations. All entries below are analytical, not verified §102 rejections.
| Claim | Character | §102 exposure (analytical) |
|---|---|---|
| 1 (independent, apparatus) | Broadest apparatus claim: hand-held non-contact head + laser + repetitive scanning + sensor + processing + decoder + manual trigger + non-manual termination on successful decode | Highest exposure. Any single pre-1983 reference disclosing a hand-held non-contact laser scanner with a trigger and auto-stop-on-decode would anticipate. The Background's admitted "known portable heads" lack the auto-termination feature, so a bare §102 attack from those admissions would fail on the last limitation. |
| 11 (independent, method) | Mirror of claim 1 in method form | Highest exposure, same reasoning. |
| 2–10 (dependent, apparatus) | Unretrieved | Likely add limitations on the laser source (tube vs. diode), optics/spot shape, scanning element (oscillating motor, penta-bimorph), shock-mounting, or gun-shaped housing, etc. Dependent claims are narrower; §102 risk is lower, but a reference disclosing the added feature in combination with claim 1's elements could anticipate. Unverified. |
| 12–15 (dependent, method) | Unretrieved | Same caveat. |
Where §102 would most plausibly bite, if the examiner's art is what I'd expect for this era: the scanning-motor / bimorph scan element sub-combinations (drawing on the '798/related Swartz art) and the signal-processing elements — not the trigger/auto-terminate inventive point, which the Federal Circuit identified as the advance over the '297.
5. Explicit uncertainty and recommended verification steps
- I did not obtain, and did not fabricate, the '186's [56] References Cited list. To enumerate it with citations/dates/claim mappings, retrieve the front page of the US4593186 PDF (patentimages) or the USPTO PatentCenter "References Cited"/"Patent Family" tab. My attempts to fetch the PDF and PatentCenter pages were cut off by the session step limit.
- Full claim text of claims 2–10 and 12–15 is still unretrieved; §102 claim mapping for those claims cannot be completed without it.
- The '798 (US 4,251,798) is the only reference number verifiably cited inside the '186 specification. Its status as effective §102 art is compromised by same-family/common-inventor-ship, but its 1981‑02‑17 issue date does precede the '186 filing.
- Do not treat §4 as a validity opinion. It is a risk framework keyed to the limitations I can verify from the supplied text.
Bottom line: The single most relevant prior art the patent itself points to is US 4,251,798 (Swartz et al.), relevant to the scanning-element and signal-processing elements of claims 1 and 11. The parent US 4,387,297 is not prior art (§121, per Symbol v. Opticon). The examiner-cited [56] reference list for US 4,593,186 could not be retrieved in this session and is therefore not reproduced here — providing it would require the front-page PDF/PatentCenter pull noted in §5.1.
Generated 9/29/2026, 2:51:43 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll ground the obviousness analysis in the actual prior-art record for this patent. Let me pull the cited references and family art.
Let me pull the actual front-page "References Cited" for the '186 patent and check the key candidate references' content.
Obviousness Analysis — U.S. Patent No. 4,593,186 under 35 U.S.C. § 103
0. Scope, and an important caveat on the "Prior Art section"
The Google Patents page for US4593186 supplies only a thin "Prior Art" area: the prior-art keywords (symbol, scanning, head, reading, decoding), the prior art date 1980‑02‑29, and a single external-priority citation to US4387297B1 ("Portable laser scanning system and scanning methods," Swartz et al.). That last item is the parent of the '186 (Ser. No. 125,768, which issued as US 4,387,297) — i.e., it is same-family, same-inventive-entity art, not a third-party reference.
I was not able to retrieve the face-of-patent "(56) References Cited" list for US 4,593,186 itself in this session (my searches returned the citation lists of other Symbol patents — e.g., US 5,003,164, US 5,124,539 — not the '186's own). So the reference set below is assembled from three verifiable sources:
- references named inside the '186 specification itself (US 4,251,798, via cross-reference to Ser. No. 911,171);
- EPO search reports on same-family/sibling cases (EP 0 085 804 = US 4,409,470; EP 0 194 115 = portable laser-diode head), which list the art the examiner actually treated as relevant, including "X" and "Y" (combination) references;
- the Google Patents "Prior Art" block described above.
I flag this because a § 103 conclusion is only as good as its reference set, and I cannot certify the '186's own examiner-cited art. Treat the mappings below as technically supported but procedurally unverified against the '186 file wrapper.
1. Critical date and what legally can (and cannot) be § 103 art
This is a pre-AIA application (filed 1983‑10‑20; § 103(a) as it read then applies). The '186 is a continuation of Ser. No. 378,919 (1982‑05‑17, abandoned), itself a division of Ser. No. 125,768 (1980‑02‑29). Two consequences dominate any obviousness attack:
- The '297 parent is not § 103 art against the '186. In Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569 (Fed. Cir. 1991), the court held the § 121 "safe harbor" shielded the '186 from the '297 for double-patenting purposes; the same common-ownership/§ 121 reasoning removes the parent (and the common-disclosure US 4,387,297 / US4387297B1) from the § 103 prior-art pool. Pre-AIA § 103(c) independently disqualifies commonly owned art.
- If the '186 claims are entitled to the 1980‑02‑29 priority date, the effective reference date is Feb. 29, 1980. That excludes most of Symbol's own later patents that read most closely on claim 1 — US 4,409,470 (filed 1982‑01‑25), US 4,460,120, US 4,496,831 (filed 1981‑12‑28?) — from the § 102/§ 103 prior art. The strongest candidate combinations therefore must live on or before Feb. 29, 1980, and the centerpiece of any such combination is US 4,251,798 (Swartz et al., filed 1978‑05‑31, issued 1981‑02‑17).
I analyze both ways below: (A) the legally clean pre‑1980 combination, and (B) a hypothetical combination using the 1982‑83 Symbol "narrow-bodied head" art, which only bites if some claim is denied the 1980 date (e.g., the laser-diode/rectangular-spot subject matter that appears new relative to the 1980 disclosure).
2. The reference set actually available
| Ref. | Date / status | What it discloses (as relevant) |
|---|---|---|
| US 4,251,798 (Swartz) | filed 1978‑05‑31; pre‑critical-date; same assignee | The foundational "portable laser scanning head": hand-held housing; laser source + optical train; scanning means including an X-axis and/or Y-axis bimorph and/or "speaker-type" oscillatory element producing single-line, raster, or synchronized multi-line patterns; photodetector detecting reflected intensity and generating an analog signal; signal-processing/decoding circuitry establishing upper/lower thresholds and generating digital pulses whose periods equal bar widths; a console decoder. Cross-referenced in the '186 spec (Ser. No. 911,171, now US 4,251,798). |
| US 4,409,470 (Shepard, Barkan, Swartz) | filed 1982‑01‑25; post‑1980 | Gun-shaped hand-held laser scanning head; light source = miniature laser tube or semiconductor laser diode; optics; scanning means = high-speed scanning motor or mirrored polygon; sensor = a pair of miniature photodiodes; signal processing = analog-to-digital; manually actuatable trigger switch on the head; indicator lamps — one for "laser energized," one for "successful decode"; decode module; and express statements that the laser "might be activated only after a satisfactory read of one symbol and until another symbol is properly read," or "could remain activated until a predetermined period of time passes without a decode." (EP 0 085 804 counterpart.) |
| US 4,387,297 / US4387297B1 (Swartz) | 1980 priority; parent — not art | Same disclosure family. Listed only to show the "obviousness" case would be improper if built on it. |
| US 3,699,312 (Jones); US 4,019,026 (Nakanishi); US 4,158,194 & US 4,072,859 (McWaters); US 3,931,524 (Herrin); GB 1,120,720 (Eastman Kodak); US 3,610,891 (Raciazek); EP 0 067 414 (Nippondenso); GB 2 070 832 A (Symbol) | all pre‑critical-date | Moving-beam optical scanners; beam-deflection/scan-motor control; portable/retriggerable optical readers; rotation/oscillation of a scanning element. These are the "secondary" references the EPO actually used as "Y" art (i.e., as combination art) in the family's search reports. |
3. Element-by-element mapping to claim 1 (and mirror-image claim 11)
| Claim 1 limitation | Primary disclosure |
|---|---|
| light-weight, hand-held head supported by user in non-contacting relationship | US 4,251,798 (portable hand-held head, aimed not dragged); '186 background itself concedes the 3-lb. prior-art heads |
| laser beam generating + directing through outlet port to symbol at exterior reference plane | US 4,251,798 (laser + optical train + window) |
| scanning means for repetitively scanning the beam across each symbol | US 4,251,798 (X/Y bimorph or speaker-type element, cyclic sweep; "start of scan" pulse) |
| sensor means → analog electrical signal | US 4,251,798 (photodetector) |
| signal processing means → processed signal | US 4,251,798 (threshold/digitizing circuit) |
| decoding means associated | US 4,251,798 (console decoder) |
| manually actuatable trigger means on the head, initiating reading on each actuation | US 4,409,470 (trigger switch on the head); broadly, Jones/McWaters-type retriggerable readers |
| determine successful decoding and non-manually terminate reading of that symbol on success | US 4,409,470 (successful-decode lamp + laser-on-until-next-read/timer logic) |
Claim 11 is the same subject matter in method form and rises or falls with claim 1.
4. The combinations, and why a skilled artisan would make them
Combination A (legally clean, pre‑1980): US 4,251,798 + a trigger/auto-stop teaching
- Rationale / motivation. The '186's own "Description of the Prior Art" is, functionally, the motivation statement: prior portable heads were heavy (>3 lb.), tethered by a thick shielded cable to a desk-top decode console, and required the user to sweep until a decode happened. The '798 already supplies the entire optical/electrical architecture (laser, scanning bimorph/speaker element, photodetector, digitizing/decoding). Adding (i) a trigger and (ii) automatic cessation on successful decode is the predictable, conventional automation of what '798 already does manually/continuously. Under KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), where the improvement is the mere automation of a known process using known elements, the combination is obvious absent a teaching away; and here the art supplies not just a reason (labor saving, laser lifetime, power) but the express technique (a decode-success indicator and laser on-time management in '470) and the express problem in the specification.
Combination B: US 4,251,798 + Jones (US 3,699,312) and/or McWaters (US 4,158,194 / US 4,072,859)
- These provide the "secondary" teaching that a moving-beam optical reader is actuated on demand and its scan motion controlled by an operator-initiated or timer signal — the classic "Y"-type combination the EPO used in this family. Motivation: the artisan facing the assembly-line/retail use cases named in the '186 background (operators reading codes all day) would combine a demand-actuated scan with the '798 head to conserve power/laser life and to avoid duplicate reads.
Combination C (only if a claim loses the 1980 date): US 4,251,798 + US 4,409,470 (+ US 4,460,120)
This is the strongest § 103 case because '470 is nearly claim-chart-conclusive on the structural sub‑features:
- gun-shaped housing, handle below barrel — '470;
- semiconductor laser diode with rectangular emission aperture → rectangular/oval spot — '470 (and the '186 spec's Fig. 12 embodiment; a rectangular-emitting laser cavity producing an asymmetric splay is a known property of the diode, so aligning the long axis to symbol height is predictable optimization);
- pair of spaced photodiodes to widen field of view — '470;
- trigger-actuated component turn-on — '470;
- successful-decode indication and termination — '470;
- timer-based laser shut-off — '470's "predetermined period of time passes without a decode."
Under KSR, combining the '798 scanning head with the '470 narrow-bodied, trigger-actuated, gauge-lamp housing is "the use of known elements according to known methods"; the only non-trivial question is the exact "non-manually terminate reading of that symbol on successful decode" step, which '470's decode lamp and stop-scan behavior render an obvious design choice.
Dependent-claim features (2–10, 12–15)
I do not have the authoritative text of claims 2–10 and 12–15 (flagged in the earlier summary section, and consistent with the Federal Circuit's description of the claim set). Mapping from the specification, the likely dependent subject matter is:
- gun-shaped/handlebar housing, low center of gravity (heaviest component in handle) → '470 / GB 2 070 832 A / design choice;
- volume < ~100 in³, weight < ~2.5 lb → mere recitation of result, In re Rose, 220 F.2d 459 (CCPA 1955) (stated result without criticality is not inventive);
- laser tube multimode + negative/positive lens train for depth of field → '798 optics + routine lens selection;
- penta-bimorph scanner → '798 already discloses bimorph elements; the anti-phase/45°-mirror "penta-bimorph effect" is an engineering refinement of a known oscillating element (predictable variation under KSR);
- oscillating scanning motor with dc/ac stator windings, resonance, closed-loop linear tracking → the family's own US 4,496,831 and the cited patent-citation list (e.g., US 5,003,164, which describes the same motor control as "the above prior art scanning head"); beam-deflection/scan-motor control is per se old (EP 0 067 414 Nippondenso, cited "A"/"Y");
- mirror moved to a "shutter position" to block the beam (instead of a solenoid shutter) → seen as an obvious alternative to the admitted solenoid shutters, and as a motor shut-off condition it is a simple re-tasking of an element already driven by the control circuit.
5. Where the obviousness case is weak (and why a real § 103 attack on the '186 failed)
The '186 was upheld valid and infringed at the district court and affirmed in Opticon, 935 F.2d 1569. The reasons map directly onto § 103 defenses a challenger would have to overcome:
- Claim construction narrows the claims. The Federal Circuit treated the "means" limitations as means-plus-function under 35 U.S.C. § 112 ¶ 6. That imports the disclosed structure (specific motor/bimorph, specific optics, specific diode/photodiode arrangement) and equivalents into the claim, so a prior-art reference must disclose the corresponding structure or an equivalent — not merely any "means."
- No admissible primary reference for the full combination on/before 1980‑02‑29. Because '297 is disqualified (§ 121 / § 103(c)) and '470 (1982), '460,120, '496,831 (1981‑82) post-date a 1980‑02‑29 priority, the only clean pre‑1980 primary reference is '798 — and '798, while disclosing the head/scan/detect/digitize architecture, does not itself disclose the trigger-on-head plus automatic per-symbol termination logic in the specific form claimed.
- Secondary considerations. The record reflects real commercial success and copying (the Opticon defendant's MSH‑840/850/860 devices were found to infringe claims 1–8 and 11–15 "when used with the decoder with which it was designed to operate"), and the "read-until-decoded, then auto-stop per symbol" behavior was treated by the court as the point of novelty over the parent — evidence a § 103 challenger must rebut.
- § 112 ¶ 6 + § 121 together made the obviousness attack procedurally awkward: the most tempting reference (the parent '297) is legally unavailable, and the most textually on-point references ('470 et al.) are temporally unavailable if the priority date holds.
6. Bottom line
- On the technically strongest reading (claims denied the 1980 date), claims 1 and 11 are likely obvious over US 4,251,798 in view of US 4,409,470 (with US 4,460,120, US 4,072,859 / US 4,158,194, and US 3,699,312 as secondary "Y" references): every structural element of the head, the repetitive scanning, the decoding, the on-head trigger, and the decode-success/laser-timeout logic is disclosed, and the motivation is supplied by the specification's own statement of the prior-art problems plus the express laser-on-time teaching in '470.
- On the legally correct reading (claims entitled to 1980‑02‑29), the case is much weaker. The parent is disqualified, the closest Symbol art is post-dated, and the pre‑1980 art ('798 plus Jones/McWaters/Nakanishi/Kodak/Herrin/Raciazek and GB 2 070 832 A) supplies the architecture but not the claimed trigger-initiated, auto-terminating "each in its respective turn" logic in the § 112 ¶ 6 structural sense the Federal Circuit adopted. This is consistent with — and explained by — the actual adjudicated outcome in Symbol v. Opticon.
- Dependent claims 2–10 and 12–15: I could not verify their text; my mapping is from the specification and should be treated as provisional. The strongest obviousness positions there are the motor-control/resonance and shutter-position features, both of which are either disclosed in same-family art (US 4,496,831) or conceded as known alternatives in the specification itself.
Verification flags
- I did not obtain the '186's own "(56) References Cited" list; the reference set is inferential (specification citations + sibling EPO search reports + the Google Patents "Prior Art" block).
- Exact publication dates for GB 2 070 832 A, US 4,072 859, and US 4,158,194 were not independently confirmed in this session; I relied on their treatment as pre‑1980 art in the family's EPO reports. Confirm before relying on any of them as § 102(b)/§ 103 art.
- Claim text for 2–10 / 12–15 remains unverified (carried forward from the earlier summary); no auto-correction of any patent number was performed.
Generated 9/29/2026, 2:52:09 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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This patent in court (3)
3 tracked lawsuits name US 4593186.