Ex Parte August et al

Board of Patent Appeals and Interferences

Nov 18, 2009

09818616 (B.P.A.I. Nov. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte KATHERINE G. AUGUST and THEODORE SIZER, II 8
___________ 9
10
Appeal 2009-000686 11
Application 09/818,616 12
Technology Center 3600 13
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Decided: November 18, 2009 16
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
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STATEMENT OF THE CASE 1
Katherine G. August and Theodore Sizer II (Appellants) seek review 2
under 35 U.S.C. § 134 (2002) of a final rejection of claims 1, 6, 8-13, 41, 42, 3
46-54, and 60, the only claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellants invented a wireless communication link which is 10
temporarily established between a customer and a vendor transaction 11
facility, which enables order processing before a customer even arrives at 12
the vendor transaction facility. The temporary wireless communication link 13
which is established between the customer and vendor transaction facility 14
permits the vendor to provide a menu of items or services for selection by 15
the customer, customer selection of desired items or services, and payment 16
transaction processing between the customer and vendor. Since most of the 17

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed January 24, 2008) and Reply Brief (“Reply Br.,” filed June 17,
2008), and the Examiner’s Answer (“Ans.,” mailed April 17, 2008).
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operations associated with the purchase are completed before the customer 1
actually reaches the vendor transaction facility, the only remaining operation 2
is order fulfillment. (Spec. 2:6-16). 3
An understanding of the invention can be derived from a reading of 4
exemplary claim 1, which is reproduced below [bracketed matter and some 5
paragraphing added]. 6
1. A wireless apparatus for processing customer orders 7
comprising: 8
[1] a communications transceiver 9
for broadcasting a wireless signal 10
to establish a wireless communications link with mobile 11
customers 12
within a predetermined distance of a vendor facility, 13
said predetermined distance being such as to 14
assure that a customer's order is fulfilled before the 15
customer arrives at the facility; 16
[2] a control circuit 17
coupled to said transceiver for controlling said 18
transceiver to: 19
[3] establish the communication link with the mobile 20
customers, 21
[4] receive wireless orders from customers, 22
[5] arrange the customer orders in a queue 23
based on customer distances from a fulfillment 24
station, and 25
[6] cause said received order to be processed to 26
fulfillment; and 27
[7] a display device, 28
said control circuit further operable to control said 29
display device to indicate the status and queue of orders 30
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placed by customers communicating with said 1
transceiver. 2
THE REJECTIONS 3
The Examiner relies upon the following prior art: 4
Tracy US 5,979,757 Nov. 9, 1999
Cupps US 5,991,739 Nov. 23, 1999
Ding US 2002/0059111 A1 May 16, 2002
Treyz US 6,587,835 B1 Jul. 1, 2003
Claims 1, 6, 8-9, 11-13, 41, 42, 46-54, and 60 stand rejected under 35 5
U.S.C. § 103(a) as unpatentable over Treyz, Ding, and Cupps. 6
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 7
Treyz, Ding, Cupps, and Tracy. 8
ARGUMENTS 9
The Appellants argue these claims as a group. Accordingly, we select 10
claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) (2008). 11
The Appellants contend that none of the references describe an order 12
that is sent within a predetermined distance of a vendor facility, said 13
predetermined distance being such as to assure that an order is completed 14
before a customer (or user of a device) arrives at the facility. (App. Br. 3-4). 15
16
17
18
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ISSUES 1
The issue of whether the Appellants have sustained their burden of 2
showing that the Examiner erred in rejecting claims 1, 6, 8-9, 11-13, 41, 42, 3
46-54, and 60 under 35 U.S.C. § 103(a) as unpatentable over Treyz, Ding, 4
and Cupps turns on whether any of the references describe, or show that it 5
was predictable to have an order that is sent within a predetermined distance 6
of a vendor facility, said predetermined distance being such as to assure that 7
an order is completed before a customer (or user of a device) arrives at the 8
facility. 9
The issue of whether the Appellants have sustained their burden of 10
showing that the Examiner erred in rejecting claim 10 under 35 U.S.C. 11
§ 103(a) as unpatentable over Treyz, Ding, Cupps, and Tracy turns on the 12
resolution of the issue in the first rejection. 13
FACTS PERTINENT TO THE ISSUES 14
The following enumerated Findings of Fact (FF) are believed to be 15
supported by a preponderance of the evidence. 16
Facts Related to the Prior Art 17
Treyz 18
01. Treyz is directed using handheld computing devices to obtain 19
information, and to order products and services. A shopping 20
assistance service provides users with access to directory 21
information, and with product information and interactive 22
advertisements. Electronic shopping techniques are supported in 23
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which users make financial commitments toward purchases prior 1
to completing purchase transactions. (Treyz 1:41-52). 2
02. Treyz will send messages to a potential customer when within a 3
particular proximity to a vendor. (Treyz 38:39-45). 4
03. Tryeyz will send a message to a customer when an order is 5
ready for pickup. (Treyz 38:56-60). 6
Ding 7
04. Ding is directed to filling orders placed by remote customers 8
and may be placed directly from the customer to a desired vendor 9
via a direct link after the customer location has been identified and 10
the customer is presented with a list of vendors close to the 11
customer location. At the time of the ordering, the customer can 12
make payment arrangements. Once the order is received by the 13
desired vendor, the order is assigned an identification tag so the 14
customer may pick up the order at the desired vendor using an 15
automated delivery system. Ding ¶ 0010. 16
05. When a vendor receives the order from the customer each order 17
is assigned an identification tag. Orders received by the desired 18
vendor are then prioritized according to the time or distance a 19
customer is from the selected vendor as determined using the 20
identified customer location. Ding ¶ 0026. 21
06. The customer location is identified using a global positioning 22
system (GPS) which provides for determining the location of a 23
customer without the customer having to input his or her location 24
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and without the customer having to know exactly where he or she 1
is presently located. Ding ¶ 0020. 2
Cupps 3
07. Cupps is directed to an online ordering machine that manages 4
the distribution of home delivered products over a distributed 5
computer system. The online ordering machine provides the 6
customers with product information from various vendors whose 7
delivery range is within the customer's location or with product 8
information from vendors having take out service within a 9
specified range from the customer's location. (Cupps 2:20-29). 10
Facts Related to Appellants’ Disclosure 11
08. The Appellants state that the claim 1 limitation [1] of “within a 12
predetermined distance of a vendor facility, said predetermined 13
distance being such as to assure that a customer's order is fulfilled 14
before the customer arrives at the facility” was found at (Spec. 15
38:5-10). (App. Br. 2). This portion recites “[a] local temporary 16
communications link is established between a personal 17
communications device carried by a customer and a vendor 18
transaction facility and customer ordering is done over the 19
communications link before the customer reaches the vendor 20
facility, so that an order is placed and a transaction completed 21
before the customer reaches the vendor facility. As a result, only 22
order fulfillment is necessary when the customer reaches the 23
vendor facility.” 24
25
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Facts Related To The Level Of Skill In The Art 1
09. Neither the Examiner nor the Appellants have addressed the 2
level of ordinary skill in the pertinent arts of systems analysis and 3
programming, wireless communications systems, and order 4
fulfillment systems design. We will therefore consider the cited 5
prior art as representative of the level of ordinary skill in the art. 6
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 7
(“[T]he absence of specific findings on the level of skill in the art 8
does not give rise to reversible error ‘where the prior art itself 9
reflects an appropriate level and a need for testimony is not 10
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 11
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 12
Facts Related To Secondary Considerations 13
10. There is no evidence on record of secondary considerations of 14
non-obviousness for our consideration. 15
PRINCIPLES OF LAW 16
Obviousness 17
18
A claimed invention is unpatentable if the differences between it and 19
the prior art are “such that the subject matter as a whole would have been 20
obvious at the time the invention was made to a person having ordinary skill 21
in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 22
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 23
In Graham, the Court held that the obviousness analysis is bottomed 24
on several basic factual inquiries: “[(1)] the scope and content of the prior art 25
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are to be determined; [(2)] differences between the prior art and the claims 1
at issue are to be ascertained; and [(3)] the level of ordinary skill in the 2
pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 U.S. at 3
406. “The combination of familiar elements according to known methods is 4
likely to be obvious when it does no more than yield predictable results.” 5
KSR, 550 U.S. at 416. 6
ANALYSIS 7
The Examiner found that Treyz described the limitations of claim 1 8
except for arranging the customer orders in a queue based on customer 9
distances from a fulfillment station and a display device to indicate the 10
status and queue of orders with a transceiver. The Examiner found that Ding 11
describes arranging the customer orders in a queue based on customer 12
distances from a fulfillment station and prioritizing according to time or 13
distance a customer is from the selected vendor, and that Cupps teaches the 14
display device. The Examiner found one of ordinary skill would have 15
applied Ding’s priority queue with Cupp’s display device to Treyz in order 16
to provide a no-wait mechanism for placing and filling an order and display 17
the order status. (Ans. 4-6). 18
The Appellants contend that none of these findings describe sending the 19
order within a predetermined distance that assures order completion prior to 20
arrival. (App. Br. 4). The Examiner responded that the GPS device used to 21
identify the customer location would compute the distance to the vendor to 22
select a close vendor and thus provide a predetermined distance and that the 23
vendor’s return call of when the order was ready for pickup would assure 24
order completion prior to arrival. (Ans. 10-14). 25
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To this the Appellants contended that the Examiner assumed that the 1
distance was short and that the assurance was based on distance alone, and 2
that the claim did not require this. (Reply Br. 1). 3
As to the Reply Brief arguments, we do not find such assumptions 4
inherent in the Examiner’s findings, nor do we find that the contentions 5
would, even if true, show error on the Examiner’s part. These contentions 6
are not drawn to showing that the art failed to describe an order that is sent 7
within a predetermined distance of a vendor facility, said predetermined 8
distance being such as to assure that an order is completed before a customer 9
(or user of a device) arrives at the facility as in limitation [1]. 10
So we are left with the issue of whether the art as found by the Examiner 11
describes this limitation. Initially, we make two findings as to the scope of 12
this limitation. First, given that unexpected delay in order fulfillment can 13
occur, no absolute assurance of order fulfillment prior to customer arrival is 14
possible, so the limitation must apply to an expected customer arrival time 15
rather than an actual arrival time. Second, the Appellants recited that the 16
support for this limitation in the original disclosure was in the abstract of the 17
Specification at 38:5-10. (FF 08). This portion recites only that an order is 18
placed and transaction completed prior to customer arrival so that only order 19
fulfillment is needed when the customer arrives. Thus the scope of the claim 20
as supported by the original disclosure is that of a fulfillment that occurs at 21
arrival rather than prior to arrival and whose timing is not specified as being 22
caused from there being a predetermined distance. 23
The claim does not recite any particular structure or algorithm for 24
predetermining the distance. Ding describes placing an order in a queue 25
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prioritized by distance (FF 05) where that distance is determined by GPS 1
(FF 06). Thus the distance is determined in advance of placing an order and 2
is accordingly predetermined. 3
As to the assurance that the order is fulfilled before customer arrival, as 4
the Examiner found, Treyz will send messages to a potential customer when 5
within a particular proximity to a vendor (FF 02) and will send a message to 6
a customer when the order is ready for pickup (FF 04). The claims does not 7
specify any particular structure or algorithm for assuring the order is fulfilled 8
prior to customer pickup, only that a predetermined distance is such that it 9
occurs. Thus the claim does not even require a causal connection between 10
the distance and the time, but merely an implication that when the distance 11
implies fulfillment prior to arrival. Certainly Treyz’s sending of a pickup 12
message when the customer is within the distance that such a message may 13
be received meets such an implication. Further, the fact that Treyz finds 14
potential customers within a predetermined distance suggests that such 15
potential customers would be among those that would subsequently receive 16
order pickup messages. 17
We further find that the requirement that the order be fulfilled prior to 18
customer arrival is a requirement for customer delay while the order is 19
fulfilled. Although such a delay would be created by having the customer 20
wait for a pickup message, it would also be created by a customer simply 21
being at a distance such that the time to arrive is sufficiently long for order 22
fulfillment. This would be met by any customer within the range of Treyz’s 23
devices that were also far enough away to cause such a delay. Again, the 24
claim does not require causality, but only coincidence of a predetermined 25
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distance and arrival time. Such a distance is predetermined by the order 1
fulfillment time and the speed of travel. 2
CONCLUSIONS OF LAW 3
The Appellants have not sustained their burden of showing that the 4
Examiner erred in rejecting claims 1, 6, 8-9, 11-13, 41, 42, 46-54, and 60 5
under 35 U.S.C. § 103(a) as unpatentable over Treyz, Ding, and Cupps. 6
The Appellants have not sustained their burden of showing that the 7
Examiner erred in rejecting claim 10 under 35 U.S.C. § 103(a) as 8
unpatentable over Treyz, Ding, Cupps, and Tracy. 9
DECISION 10
To summarize, our decision is as follows. 11
• The rejection of claims 1, 6, 8-9, 11-13, 41, 42, 46-54, and 60 under 12
35 U.S.C. § 103(a) as unpatentable over Treyz, Ding, and Cupps is 13
sustained. 14
• The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable 15
over Treyz, Ding, Cupps, and Tracy is sustained. 16
No time period for taking any subsequent action in connection with this 17
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 18
19
AFFIRMED 20
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