Ex Parte 7212829 et al

Patent Trial and Appeal Board

Sep 29, 2015

95001896 (P.T.A.B. Sep. 29, 2015)

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.
95/001,896 02/16/2012 7212829 RI3821820 8663
34071 7590 09/29/2015
IPVENTURE, INC.
5150 EL CAMINO REAL
SUITE A-22
LOS ALTOS, CA 94022
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/29/2015 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
____________________

FEDEX CORPORATION, Requester

v.

IPVENTURE INC., Patent Owner
____________________

Appeal 2015-004510
Reexamination Control 95/001,896
Patent No. U.S. 7,212,829
Technology Center 3900
____________________

Before RICHARD M. LEBOVITZ, MARC S. HOFF, and
ERIC CHEN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002)
from the Examiner’s rejection of claims 1-183 as set forth in the Right of
Appeal Notice (RAN) mailed February 7, 2014. Patent Owner,
IpVenture Inc. filed a Brief (“PO App. Br.”) on May 19, 2014. Third Party
Requester FedEx Corporation filed a Brief in Cross Appeal (“Req. Cross
Br.”) on May 19, 2014. Patent Owner then filed a Respondent Brief for
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Cross Appeal on June 19, 2014, and Third Party Requester filed a
Respondent Brief on June 19, 2014. Patent Owner and Requester each filed
a Rebuttal Brief on December 1, 2014. The Examiner mailed an Examiner’s
Answer (“Ans.”) on October 31, 2014 which incorporated the RAN by
reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315. An oral
hearing was held on August 19, 2015.
We affirm.
The ’829 Patent issued to Lau on May 1, 2007. The ’829 Patent
concerns monitoring the status of articles being shipped. Interested parties
may obtain notifications of status information of such articles, or may gain
access to said status information via a website. The status information is
provided by a mobile communication device within or affixed to the article,
and includes at least position information and shipping condition
information (col. 2, l. 40 – col. 3, l. 14). Via a web interface, a user may
configure notifications for themselves or others. The notifications may be
periodic, or may be triggered when an extreme condition occurs, such as
temperature exceeding a threshold (col. 9, l. 65 – col. 10, l. 2; col. 10, ll. 44-
47).
Claim 74 is exemplary of the claims on appeal:
A method for tracking shipment of an article, said method comprising:
providing a web interface that is accessible via a data network
to facilitate configuring one or more notification messages, including
where and when the one or more notification messages are to be sent;
receiving at least one notification criterion that has been
specified via the web interface;
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subsequently receiving status information associated with the
article being shipped, the status information being provided wirelessly
by a handheld mobile communication device provided within the
article, the mobile communication device being capable of sensing
position as well as at least one shipping condition, the status
information including at least position information and shipping
condition information, the shipping condition information being
related to a physical condition of or around the article being shipped,
the mobile communication device including at least one sensor for
acquiring at least a portion of the position information;
determining whether a notification condition exists based on the
status information and the at least one notification criterion; and
producing a notification message when the notification
condition is determined to exist,
wherein said receiving the status information comprises:
receiving sensed shipping condition information sensed by the
at least one sensor in the mobile communication device,
wherein said determining whether the notification condition
exists comprises:
accessing a predetermined threshold that has been previously
configured for the article based on information received via the web
interface; and
determining whether the notification condition exists based on
at least the sensed shipping condition information and the
predetermined threshold,
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wherein the notification condition exists if a shipping condition
of the article being shipped exceeds the predetermined threshold, the
shipping condition being based on the sensed shipping condition
information, and
wherein said method enables separately tracking shipment of
each of a plurality of articles, with each article coupling to a separate
handheld mobile communication device, even while the plurality of
the articles are in a container being shipped.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Hassett et al. U.S. Patent 5,347,274 Sept. 13, 1994
Welles II et al. U.S. Patent 5,686,888 Nov. 11, 1997
Kennedy, III et al. U.S. Patent 5,771,455 June 23, 1998
Keillor et al. U.S. Patent 5,917,433 June 29, 1999
Forster et al. U.S. Patent 6,281,797 Aug. 28, 2001
McGlade PCT Application WO 01/75700 Oct. 11, 2001
Morimoto U.S. Application 2002/0120475 Aug. 29, 2002
Wallace et al. U.S. Patent 6,463,272 Oct. 8, 2002
McDonald, Jr. et al. U.S. Patent 6,496,775 Dec. 17, 2002
Zhou et al. U.S. Patent 6,847,892 Jan. 25, 2005
Jones et al. U.S. Patent 6,952,645 Oct. 4, 2005
Biffar U.S. Patent 7,187,278 Mar. 6, 2007
Joao U.S. Patent 7,253,731 Aug. 7, 2007

Storm, Stephanie, “A Wild Sleigh Ride at Federal Express” The New
York Times (1994).

Fraden, Jacob, “Handbook of Modern Sensors” (1996).

Mainwaring, et al., “Wireless Sensor Networks for Habitat
Monitoring” (2002).
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Claims 2, 30, 49, 69, 73, 125, 175, and 179 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Claims 32, 41, 71-73, 76, 85, 130, and 140 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which Patent
Owner regards as his invention.
Claims 1-183 stand rejected over several thousand different
combinations of prior art references. As these combinations are far too
numerous to list here, the rejections may be found in full at pages 16-68 of
the Right of Appeal Notice.

ISSUE
Patent Owner argues, inter alia, that the rejections adopted for
claims 31-183 are redundant, vague, and confusing. In Patent Owner’s view,
the term “base combinations” used by Requester in setting forth the
proposed rejections has not been defined. Even if “base combinations” was
decipherable, Patent Owner continues, the rejections are redundant and
excessive (PO App. Br. 11-12).
Patent Owner argues generally that the Examiner has failed to clearly
articulate the rejections or provide a reasonable rationale for combining
references (PO App. Br. 13-15).
Patent Owner argues that Morimoto and Joao fail to anticipate, or
render obvious, the claimed invention. Patent Owner further contends that
independent claims 74 and 127 are not obvious over any of the “base
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combination” prior art references in view of Morimoto, Joao, or the admitted
prior art (PO App. Br. 16, 21-29).
Patent Owner contends that neither Morimoto nor Joao disclose the
use of a web interface to set notification criteria that permits thresholds for
shipping conditions to be set for notification messages (PO App. Br. 16–18).
Patent Owner asserts that the adopted obviousness rejections do not
set forth a reasonable rationale for the combination of references (PO App.
Br. 24).
Patent Owner argues that the asserted combinations of references do
not disclose or fairly suggest tracking a package between scanning locations
(PO App. Br. 26).
Patent Owner contends that the asserted combinations of references
fail to disclose or fairly suggest using a web interface to configure
notification messages (PO App. Br. 27).
Patent Owner argues that the asserted combinations of references fail
to disclose or suggest determining whether a notification condition exists,
using a predetermined threshold that was configured using information
provided via the web interface (PO App. Br. 29).
With respect to dependent claim 140, Patent Owner argues that
Morimoto, Joao, and APA fail to disclose or suggest that configuration
information received via the web interface is provided to the mobile
communication device via a cellular network (PO App. Br. 31–32).
With respect to dependent claim 129, Patent Owner asserts that
Mainwaring does not disclose or fairly suggest a temperature sensor that is
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separately enclosed or encapsulated from other circuitry (PO App. Br. 34-
36).
With respect to dependent claims 176 and 177, Patent Owner argues
that Fraden, in combination with the other cited references, fails to disclose
receiving a sensed light signal from a sensor at a mobile communication
device and determining whether the notification condition exists based on
the sensed light signal (PO App. Br. 43-44).
Requester, in its Cross Appeal, argues that the Examiner erred in
entering Patent Owner’s amendments to the specification and drawings
based on a provisional application incorporated by reference (Req. Cross
Br. 10-12). Requester further contends that certain claims should have been
rejected under 35 U.S.C. § 112 (Req. Cross Br. 13-21). Requester argues
that claims 11 and 26 should have been rejected as obvious over Joao (Req.
Cross Br. 23), and that claims 1-3 and 5-30 should have been rejected as
obvious over McGlade in view of Forster and Fraden (Req. Cross Br. 25).
The arguments made by Patent Owner and Requester present us with
the following issues:
1. Does the combination of McGlade and Joao disclose or fairly
suggest the use of a web interface to set notification criteria that permits
thresholds for shipping conditions to be set for notification?
2. Does the Examiner set forth a reasonable rationale for the
combination of McGlade and Joao?
3. Does the combination of McGlade and Joao disclose or fairly
suggest the ability to track a package between scanning locations?
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4. Does the combination of McGlade and Joao disclose or fairly
suggest using a web interface to configure notification messages?
5. Does the combination of McGlade and Joao disclose or fairly
suggest determining whether a notification condition exists, using a
predetermined threshold that was configured using information provided via
the web interface?
6. Does the combination of McGlade and Joao disclose or suggest that
configuration information received via the web interface is provided to the
mobile communication device via a cellular network?
7. Does Mainwaring disclose a temperature sensor that is separately
enclosed or encapsulated from other circuitry within the mobile
communication device?
8. Does Fraden disclose receiving a sensed light signal from a sensor
at the mobile communication device and determining whether the
notification condition exists based on the sensed light signal?
9. Does the Board need to reach Requester’s arguments concerning
amendment entry and concerning grounds of rejection not adopted by the
Examiner?

PRINCIPLES OF LAW
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results. KSR
Int’l v. Teleflex Inc., 550 U.S. 398, 401 (2007) (quoting Great Atlantic &
Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152
(1950)).
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ANALYSIS
CLAIMS 1-73 AND 181-183
Patent Owner does not present argument directed to the prior art
rejections of independent claim 1 (from which claims 2-16 and 181 depend),
or independent claim 17 (from which 18-73, 182, and 183 depend). We
therefore sustain pro forma the numerous prior art rejections of claims 1-73
and 181-183 which may be found in the Right of Appeal Notice.

CLAIMS 74-128, 130-139, 141-175, AND 178-180
We do not agree with Patent Owner that the concept of “base
combinations” used in asserted rejections is unclear (PO App. Br. 11-12).
Requester explicitly defined the term, with reference to independent
claims 74 and 127, as “the original rejections (even if anticipatory) plus the
modifications above. For all dependent claims, the term ‘base combinations’
refers to the combinations proposed for the claim from which the dependent
claim depends” (Req. Comments in Response to PO Amendment and
Response, p. 45). Requester then provided a chart listing each amended
claim and the lettered sections of Requester’s argument in the Response
applicable to that claim (Req. Comments in Response to PO Amendment
and Response, pp. 46-48).
Because Requester provided a definition of “base combinations,” and
gave detailed reasons why the claims should be rejected over the cited
references, in Requester’s Comments in Response to Patent Owner’s
Amendment and Response, filed July 5, 2012, we are not persuaded by
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Patent Owner’s argument that the Examiner, in adopting these proposed
rejections, failed to provide a clear articulation of the rejections, or failed to
provide reasonable rationale for combining references (PO App. Br. 13-15).
From among the combinations of references proposed by Requester,
we select the Examiner’s rejection over McGlade and Joao for discussion
here. The preponderance of the evidence supports the Examiner’s
determination that the combination of McGlade and Joao renders obvious
the invention recited in independent claims 74 and 127. In the interest of the
clearest possible record, we reiterate where disclosure of each of the
elements of representative claim 74 may be found in McGlade and Joao:

Representative claim 74. A method for tracking shipment of an article
(McGlade 6:20, container 10), comprising
providing a web interface that is accessible via a data network
(McGlade 12:7-17:9) to facilitate configuring one or more notification
messages, including where and when the one or more notification messages
are to be sent (Joao col. 18:19-22);
receiving at least one notification criterion that has been specified via
the web interface;
subsequently receiving status information associated with the article
being shipped, the status information being provided wirelessly (McGlade
8:10-21, transmitter 112) by a handheld mobile communication device
provided within the article (McGlade 6:22 – 7:3, tracking device 100),
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the mobile communication device being capable of sensing position
(McGlade 8:1-21) as well as at least one shipping condition (McGlade 3:7-
11, 11:13-15; see pp. 58, 66),
the status information including at least position information
(McGlade 8:1-21) and shipping condition information (McGlade 11:11-15),
the shipping condition information being related to a physical
condition of or around the article being shipped (McGlade 11:11-15),
the mobile communication device including at least one sensor for
acquiring at least a portion of the shipping condition information (McGlade
3:7-11, 8:11-15),
and the mobile communication device including at least a global
positioning system receiver for acquiring at least a portion of the position
information (McGlade 8:1-9, GPS receiver 118);
determining whether a notification condition exists based on the status
information and the at least one notification criterion (McGlade 58:5-59:2,
66:14-16); and
producing a notification message when the notification condition is
determined to exist (McGlade 58:21-59:2, 66:14-16),
wherein said receiving the status information comprises receiving
sensed shipping condition information sensed by the at least one sensor in
the mobile communication device (McGlade 3:7-11, 11:11-15),
wherein said determining whether the notification condition exists
comprises: accessing a predetermined threshold that has been previously
configured for the article (Joao col. 16:40-42, 16:62-64) based on
information received via the web interface; and
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determining whether the notification condition exists based on at least
the sensed shipping condition information and the predetermined threshold
(Joao col. 18:26-31),
wherein the notification condition exists if a shipping condition of the
article being shipped exceeds the predetermined threshold (McGlade 58:5-
59:2),
the shipping condition being based on the sensed shipping condition
information, and
wherein said method enables separately tracking shipment of each of a
plurality of articles (McGlade 6:20-7:7; container 10 is suited for the cargo
hold of an aircraft, and such an aircraft may contain a plurality of containers
10),
with each article (McGlade 6: container 10) coupling to a separate
handheld mobile communication device (McGlade 7: tracking device 100),
even while the plurality of articles are in a container being shipped
(McGlade 7:3-4).

We are not persuaded by Patent Owner’s arguments that McGlade and
Joao fail to disclose a web interface for configuring notifications, or for the
setting of thresholds for shipping conditions to be set for notification
messages (PO App. Br. 16-18, 27-29).
McGlade discloses a host management system 300 that gathers
information concerning containers 10 (McGlade 11:4-5). Host management
system 300 includes a host server 302 that interfaces with a tracking system
308 to receive positioning information and other information concerning the
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container 10 such as the temperature, humidity, or pressure (McGlade 11:1-
14). Host server 302 interacts with authorized client systems 330 to ascertain
container information and provide other functionalities.
The host management system 300 exchanges
information with the client system 330 through use of the
Internet. The host server is capable of transmitting information
to the client system 330 in a mark-up language for reception by
the client system 330. The client system 330 also includes a
client browser that is operatively associated with the client
server 332 for accessing and representation of XML-formatted
data by human interaction.

McGlade 12:10-16.

Based on the findings listed above, the evidence supports the
determination that McGlade thus discloses a web interface that is accessible
via a data network. McGlade inherently discloses notification criteria, for it
is necessarily true that a system that provides notification when a sensed
physical parameter is out of range must contain information concerning the
limits of said ranges, beyond which notification will occur.
We find that Joao discloses an apparatus and method for providing
shipment information, in which a central processing computer can
communicate with shipment conveyance device computers, sender
computer, and receiver computers, over any suitable communication
network or system, including “a telephone network,” “a telecommunication
network,” “a digital communication network,” “a wireless communication
network,” “a personal communication services network,” and “the World
Wide Web” (Joao 2:51–3:2). Joao discloses that the sender of the shipment
enters data concerning the shipment into the shipment conveyance device
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computer 20. This information can include “special instructions regarding
the shipment, handling, carriage, or transportation” of the shipment (Joao
col. 16:40-42, 16:62-64). We find that this disclosure encompasses
configuring a predetermined threshold (e.g., temperature) for the article
based on information received via the web interface.
Joao discloses that shipment conveyance device computer 20 can be
programmed to “generate status messages regarding the shipment regarding
its position or locations, stops made by the carrier, and/or the temperature of
the shipment, impacts received by the shipment conveyance device 10,
and/or other information” (Joao col. 18:19-22). Joao further discloses that
such status messages can be transmitted “at pre-designated time intervals,
and/or upon the occurrence of a pre-specified event (i.e. a stop made by the
carrier, an impact during an accident, an unusual stopping period, a shipment
temperature change, and/or any other event or occurrence relating to the
shipment)” (Joao col. 18:26-31).
Joao discloses that the shipment conveyance device computer 20 can,
during transport of the shipment, await the detection of a processing event.
This processing event can be such things as “deviation, by more than a pre-
designated tolerance amount . . . of the location or position of the shipment
and/or the carrier from a pre-determined transportation route;” the
processing event can also be “the detection of a shipment temperature which
deviates from the shipment temperature requirements, and/or the detection
of an impact or force of impact experienced by the shipment conveyance
device 10” (Joao col. 19:40-58). The shipment conveyance device computer
20 will then generate an appropriate notification message to any one or more
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of the carrier, the sender, the receiver, and/or the administrator, of the
detected processing event (Joao col. 18:61-65). We find that this disclosure
corresponds to the claimed accessing a predetermined threshold that has
been previously configured for the article based on information received via
the web interface, determining whether the notification condition exists
based on at least the sensed shipping condition information and the
predetermined threshold, wherein the notification condition exists if a
shipping condition of the article being shipped exceeds the predetermined
threshold, the shipping condition being based on the sensed shipping
condition information; and producing a notification message when the
notification condition is determined to exist.
We agree with the Examiner that it would have been a logical reason
to modify McGlade to include the web interface disclosed in Joao, including
receiving at least one notification criterion specified via the web interface,
and determining that a notification condition exists if a shipping condition of
the article being shipped exceeds a predetermined threshold in order to
adapt existing electronic processes to incorporate modern internet and web
browser technology to efficiently track shipment of articles (RAN 40-41).
Accordingly, we find that the Examiner did not err in rejecting
claims 74-78, 84, 85, 111-119, 127, 130-132, 137, 139, and 167-173 under
35 U.S.C. § 103 as obvious over McGlade and Joao. We sustain the
rejection.
We further sustain the rejection of claims 79-82, 86-90, 120-123, 128,
133-136, 141-145, 150, and 174 under § 103 over McGlade, Joao, and
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Fraden, not separately argued, for the same reasons given for independent
claims 74 and 127.
We further sustain the rejection of claims 83, 100, 110, 124, 138, 155,
166, and 178 under § 103 over McGlade, Joao, Fraden, and Hill, not
separately argued, for the same reasons given for independent claims 74 and
127.
We further sustain the rejection of claims 91-94 and 146-149 under
§ 103 over McGlade, Joao, and Grimes, not separately argued, for the same
reasons given for independent claims 74 and 127.
We further sustain the rejection of claims 95, 96, 98, 99, 109, 151,
152, 154, and 165 under § 103 over McGlade, Joao, and Mainwaring, not
separately argued, for the same reasons given for independent claims 74 and
127.
We further sustain the rejection of claims 97 and 153 under § 103
over McGlade, Joao, Mainwaring, Kuittinen, and Krasner, not separately
argued, for the same reasons given for independent claims 74 and 127.
We further sustain the rejection of claims 101 and 156 under § 103
over McGlade, Joao, and Zhou, not separately argued, for the same reasons
given for independent claims 74 and 127.
We further sustain the rejection of claims 102 and 157 under § 103
over McGlade, Joao, Krasner, Mainwaring, and Helfenstein, not separately
argued, for the same reasons given for independent claims 74 and 127.
We further sustain the rejection of claims 103, 104, 107, 158-160, and
163 under § 103 over McGlade, Joao, Mainwaring, and Krasner, not
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separately argued, for the same reasons given for independent claims 74 and
127.
We further sustain the rejection of claims 105, 106, 161, and 162
under § 103 over McGlade, Joao, Mainwaring, Krasner, and Snell, not
separately argued, for the same reasons given for independent claims 74 and
127.
We further sustain the rejection of claims 108 and 164 under § 103
over McGlade, Joao, and Krasner, not separately argued, for the same
reasons given for independent claims 74 and 127.
We further sustain the rejection of claim 175 under § 103 over
McGlade, Joao, and Vock, not separately argued, for the same reasons given
for independent claims 74 and 127.
We further sustain the rejection of claims 125 and 179 under § 103
over McGlade, Joao, Fraden, and Mainwaring, not separately argued, for the
same reasons given for independent claims 74 and 127.
We further sustain the rejection of claims 126 and 180 under § 103
over McGlade, Joao, Fraden, Mainwaring, Kuittinen, and Hill, not separately
argued, for the same reasons given for independent claims 74 and 127.

CLAIM 140
We do not agree with Patent Owner’s contention that the Examiner
failed to state a rationale for combining references. We find that the
Examiner stated a rationale for combining one of the references used to
reject parent claim 127 (e.g., McGlade) with Morimoto, Joao, or APA, to
wit, “so as to adapt existing electronic processes to incorporate modern
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internet and web browser technology to efficiently track shipment of
articles” (RAN 40-41).
We also do not agree with Patent Owner that the claim limitations
concerning configuration information provided to the mobile communication
device wirelessly via a cellular network, and status information being
provided from the mobile communication device wirelessly connected to the
cellular network, were not considered by Requester or the Examiner (PO
App. Br. 32). As discussed supra, we agree with Requester and the
Examiner that Joao discloses a web interface for configuring notifications
concerning a shipment, and communicating such notifications from the
mobile communications device via a cellular network. See e.g. Joao col. 2:51
– 3:2.
Accordingly, we find that the Examiner did not err in rejecting
claim 140 under § 103 over McGlade and Joao, and we sustain the rejection.

CLAIM 129
Patent Owner argues that Mainwaring does not teach or suggest a
separately enclosed or encapsulated temperature sensor (PO App. Br. 36-
37), asserting that the claim means that the packaged temperature sensor is at
least partially thermally isolated from the other circuitry in the position
sensing device (PO App. Br. 39).
Patent Owner’s assertions do not persuade us of error. Claim 129 does
not recite the at least partial “thermal isolation” argued by Patent Owner. We
are not persuaded by Patent Owner’s suggested interpretation of the
Specification as so requiring (PO App. Br. 38-39). Rather, the evidence
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supports Requester’s argument that Mainwaring discloses a temperature
sensor (Figure 2, Mica Weather Board) that is separately enclosed or
encapsulated from “some other circuitry” within the mobile communication
device, as the words of the claim require.
Accordingly, we find that the Examiner did not err in rejecting
claim 129 under § 103 over McGlade, Joao, and Mainwaring. We sustain the
rejection.

CLAIMS 176 AND 177
Patent Owner argues that the claimed use of sensed light signals to
determine whether a notification condition exists is not taught or suggested
by the prior art (“base combinations” in view of Fraden) (PO App. Br. 42).
Patent Owner argues that neither the Requester nor the Examiner considered
the precise limitations of claims 176 and 177, and have not made out a prima
facie obviousness rejection (PO App. Br. 43).
Claim 176 further limits parent claim 127 in that the receipt of status
information comprises receiving light signals, rather than (presumably) radio
frequency signals, at a sensor of the mobile communications device. We
agree with Requester that the person having ordinary skill in the art would
have known how to include any combination of sensors as desired for a
particular application (Req. Resp. Br. 16). We further agree with Requester
that known light sensors could be chosen for inclusion in the mobile
communications device, with predictable results based on the cited textbook
and declaratory evidence (Id.). As Requester explains, Fraden discloses a
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plurality of such light sensors from which to choose (Req. Resp. Br. 16,
citing Fraden Ch. 13).
Accordingly, we find that the Examiner did not err in rejecting
claims 176 and 177 under § 103 over McGlade, Joao, and Fraden. We
sustain the rejection.

OTHER REJECTIONS
Because our decision is dispositive regarding unpatentability of all
appealed claims based on McGlade and Joao, we need not reach the merits
of the Examiner’s decision to also reject the appealed claims over the other
permutations of cited prior art references (RAN 40-68). We also need not
reach the merits of the Examiner’s decision to reject claims under 35 U.S.C.
§ 112 (RAN 9-16). See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (approving ITC’s determination based on a single
dispositive issue, and not reaching other issues not decided by the lower
tribunal).

THE CROSS-APPEAL
Requester contests the Examiner’s decision to enter Patent Owner’s
amendments to the specification and drawings of the ’829 patent. Patent
Owner’s amendments constituted the addition of 20 figures and 24 pages of
specification from Provisional Application No. 60/444,198, which the
’829 patent incorporated by reference (’829 Patent col. 1:17-22).
We need not reach the question whether Patent Owner’s amendments
were properly entered. The question, normally a petitionable matter, is only
Appeal 2015-004510
Reexamination Control 95/001,896
Patent No. 7,212,829

21
appealable as it relates to the propriety of the Examiner’s § 112 rejections.
However, we do not reach the issue of the § 112 rejections because we
sustain the rejection of claims 1-183 on prior art grounds. Because we do not
reach the merits of the appealed § 112 rejections, we need not decide
whether the Examiner erred in entering Patent Owner’s amendments.
Requester appeals from the Examiner’s decision not to reject claims 1,
17, 21, 24, 30, 39, 49, 50, 53, 55-57, 73-75, 83, 97, 98, 100, 102, 104-106,
110, 118, 124, 126, 127, 138, 153-155, 157, 159, 161, 162, 166, 178, and
180 under 35 U.S.C. § 112, first and second paragraph (Req. Cross Br. 13-
21). We need not reach the question whether the Examiner’s decision was
erroneous, because we sustain supra the rejection of each of these claims
over prior art.
Requester appeals from the Examiner’s decision not to reject
claims 11 and 26 over Joao (Req. Cross Br. 23). We need not reach this
issue, because we sustain supra the rejection of claims 11 and 26 on other
prior art grounds.
Requester appeals from the Examiner’s decision not to reject
claims 1-3 and 5-30 under 35 U.S.C. § 103 over McGlade in view of Forster
(Req. Cross Br. 25). We need not reach the merits of this decision because
we sustain supra the rejection of claims 1-3 and 5-30 on other prior art
grounds.
CONCLUSIONS
1. The combination of McGlade and Joao discloses the use of a web
interface to set notification criteria that permits thresholds for shipping
conditions to be set for notification.
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Patent No. 7,212,829

22
2. The Examiner sets forth a reasonable rationale for the combination
of McGlade and Joao.
3. The combination of McGlade and Joao discloses the ability to track
a package between scanning locations.
4. The combination of McGlade and Joao discloses using a web
interface to configure notification messages.
5. The combination of McGlade and Joao discloses determining
whether a notification condition exists, using a predetermined threshold that
was configured using information provided via the web interface.
6. The combination of McGlade and Joao discloses that configuration
information received via the web interface is provided to the mobile
communication device via a cellular network.
7. Mainwaring discloses a temperature sensor that is separately
enclosed or encapsulated from other circuitry within the mobile
communication device.
8. Fraden discloses receiving a sensed light signal from a sensor at the
mobile communication device and determining whether the notification
condition exists based on the sensed light signal.
9. The Board need not reach Requester’s arguments concerning
amendment entry, or concerning grounds of rejection not adopted by the
Examiner.

ORDER
The Examiner’s rejection of claims 1-183 is affirmed.
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Patent No. 7,212,829

23
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. § 90.1 and 3 C.F.R. § 1.983.

AFFIRMED

IPVenture, Inc.
5150 El Camino Real
Suite A-22
Los Altos, CA 94022

Third Party Requester:

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
901 New York Avenue, NW
Washington, DC 20001-4413