Ex Parte Awiszus

Patent Trial and Appeal Board

Oct 18, 2016

13592612 (P.T.A.B. Oct. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/592,612 08/23/2012
32692 7590 10/20/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Steven T. Awiszus
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
61313US015 1657
EXAMINER
GEORGALAS, ANNE MARIE
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
10/20/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STEVEN T. AWISZUS
Appeal2014-007877 1
Application 13/592,6122
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
January 21, 2014) and Reply Brief ("Reply Br.," filed July 7, 2014), and the
Examiner's Answer ("Ans.," mailed May 8, 2014) and Final Office Action
("Final Act.," mailed September 12, 2013).
2 Appellant identifies 3M Innovative Properties Company as the real party
in interest. App. Br. 1.
Appeal2014-007877
Application 13/592,612
CLAIMED fNVENTION
Appellant's claimed invention "is generally related to order taking
systems and, more particularly, to order taking systems using wireless
intercom systems for commercial establishments" (Spec. i-f 2).
Claims 1, 8, 11, 18, 21, and 22 are the independent claims on appeal.
Claims 1 and 8, reproduced below, are illustrative:
1. An order taking system for an establishment
enabling a customer to place an order for an item from said
establishment, comprising:
order placing equipment located near said establishment
being capable of receiving said order for said item from said
customer;
a local order receiving facility associated with said
establishment;
a first voice communication link between said order
placing equipment and a remote facility; and
a second voice communication link between said order
placing equipment and said local order receiving facility;
said order taking system being operable in a first mode
operatively coupled via said first voice communication link
between said order placing equipment and said remote facility
and in a second mode operatively coupled via said second
communication link between said order placing equipment to
said local order taking facility;
said order taking system allowing said local order
receiving facility to monitor voice communication between said
order placing equipment and said remote facility when operable
in said first mode and allowing said remote facility to monitor
voice communication between said order placing equipment and
said local order receiving facility when operable in said second
mode.
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8. An order taking system for an establishment
enabling a customer to place an order for an item from said
establishment, said establishment having order fulfillment staff,
compnsmg:
order placing equipment located near said establishment
being capable of receiving said order for said item from said
customer;
a local order receiving facility associated with said
establishment; a first voice communication link between said
order placing equipment and said local order receiving facility
allowing two-way voice communication between said customer
and said staff in order to receive said order from said customer;
and
a second communication link with a remote facility
allowing said remote facility to monitor voice communication
between said order placing equipment and said local order
receiving facility.
REJECTIONS
Claims 1-22 are rejected on the ground of non-statutory double
patenting as unpatentable over claims 1-8 of U.S. Patent No. 8,271,340 B2.
Claims 8 and 18 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter that Appellant regards as the invention.
Claims 1-22 are rejected 35 U.S.C. § 103(a) as unpatentable over
Doan (US 2003/0225622 Al, pub. Dec. 4, 2003) and Falcon
(US 2002/0076031 Al, pub. June 20, 2002).
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Application 13/592,612
ANALYSIS
Non-Statutory Double Patenting
Appellant does not present any response to the Examiner's rejection
of claims 1-22 on the ground of non-statutory double patenting. Therefore,
the rejection is summarily sustained.
Indefiniteness
We are persuaded by Appellant's argument that the Examiner erred in
rejecting claims 8 and 18 under 35 U.S.C. § 112, second paragraph (App.
Br. 12-13). Pointing to the limitation, "a second communication link with a
remote facility," as recited in claim 8 (and also in claim 18), the Examiner
notes that the term "link" implies a connection between at least two items,
and the Examiner asserts that "it is unclear [from the claim language] what
this 'link' is between" (Final Act. 13). 3
We agree with Appellant that a person of ordinary skill in the art
would understand what is claimed when claims 8 and 18 are read in light of
the Specification, namely, that a communication link is established that
allows the remote facility to monitor voice communication between the
order placing equipment and the local order receiving facility (App. Br. 12).
A person of skill in the art also would understand that "the claimed
communication link could be between the remote facility and a variety of
specific locations at the local facility ... [or] between the remote facility and
other locations that allow the claimed monitoring to occur" (id. at 12-13).
3 The Examiner indicates that "[ fJor purposes of examination, the Examiner
is interpreting this portion of claim 8 [and claim 18] as reciting 'a second
communication link between said order placing equipment and a remote
facility"' (Final Act. 13).
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That multiple configurations may exist that allow the claimed monitoring to
occur does not render the claim indefinite.
In view of the foregoing, we do not sustain the Examiner's rejection
of claims 8 and 18 under 35 U.S.C. § 112, second paragraph. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second
paragraph is whether "those skilled in the art would understand what is
claimed when the claim is read in light of the specification.").
Obviousness
Independent Claims 1, 8, 11, 18, 21, and 22 and Dependent Claims 2, 5-7,
9, 10, 12, 15-17, 19, and 20
Appellant argues independent claims 1, 8, 11, 18, 21, and 22 as a
group (App. Br. 20). We select claim 1 as representative. The remaining
independent claims stand or fall with claim 1. See 3 7 C.F .R.
§ 41.37(c)(l)(iv).
By way of background, Doan is directed to a method and system for
entering an order into an onsite computer-based sales management system of
a restaurant, and discloses that a communication link is established between
an offsite employee and an order-placing station at the restaurant so that a
customer can communicate his/her order to the offsite employee (Doan,
Abstract, i-f 22). Doan discloses that existing onsite drive-through order-
taking communication systems can be utilized as back-up systems, and
further discloses that one or more onsite employees can utilize existing
headsets to listen to the communication between the customer and the offsite
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Application 13/592,612
employee and take over the order handling responsibility in the event of a
connection interruption (id. i-f 27).
In rejecting claim 1 under§ 103(a), the Examiner cites Doan as
disclosing substantially all of the limitations of claim 1 (Final Act. 14--16)
except the Examiner acknowledges that Doan does not expressly disclose
"allowing said remote facility to monitor voice communication between said
order placing equipment and said local order receiving facility when
operable in said second mode" (id. at 17). The Examiner cites Falcon to
cure the deficiency of Doan (id.). And the Examiner concludes that
[i]t would have been obvious to one of ordinary skill in the art at
the time the invention was made to include in the onsite and off-
site restaurant ordering system and method of Doan the ability of
... allowing said remote facility to monitor voice communication
between said order placing equipment and said local order
receiving facility when operable in said second mode as
disclosed by Falcon since the claimed invention is merely a
combination of old elements, and in the combination each
element merely \~1ould have performed the same fi1nction as it
did separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable.
Id. at 17-18.
Appellant first argues that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because Falcon is not analogous art and, therefore,
not combinable with Doan in an obviousness rejection (App. Br. 13-20).
We disagree.
Whether a prior art reference constitutes analogous art is a question of
fact, see In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004), and depends on
(1) whether the reference is from the same field of endeavor as the claimed
invention, regardless of the problem addressed and (2) if the reference is not
within the field of the inventor's endeavor, whether the reference still is
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reasonably pertinent to the particular problem with which the inventor is
involved. See id.
Falcon is directed to a method for distributing customer-initiated calls
placed with a contact center (which the Examiner compares to a local order
receiving facility that receives a contact from a customer (Ans. 29)) to one
or more remotely located agents (Falcon, Abstract), and discloses a network
coordinator (which the Examiner compares to a remote facility (Ans. 29))
that monitors the communication between the customer and the remote agent
(Falcon i-f 40). We agree with the Examiner that Falcon is within
Appellant's field of endeavor, namely communication links and monitoring
communication links between local and remote facilities, and, therefore,
analogous art that properly can be considered in an obviousness analysis
(Ans. 29).
Appellant next argues that a person of ordinary skill in the art would
not have combined the teaching of Falcon and Doan to arrive at the
currently-claimed technology (App. Br. 20), and that applying Falcon to
Doan is not merely "a combination of old elements that perform the same as
they did separately with predictable results" (id. at 21 ). That argument is
likewise unavailing.
Appellant asserts that the Final Office Action overstates the similarity
of Falcon and Doan in setting forth the obviousness determination because
Falcon's monitoring is of a telephone line in a telephone network between a
customer and a remote agent, not a communication link between order
placing equipment near an establishment and a local order receiving facility
of the establishment (App. Br. 23). Appellant further asserts that "at the
very least" the combination of Doan and Falcon is not merely a combination
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of old elements where each element merely would have performed the same
function as it did separately because "the failure of the remote link in Doan,
which leads to use of the local link as a back-up, precludes the use of the
remote link to monitor the local link, thereby precluding a required
operational mode" (id.). Yet the test for obviousness, as Appellant admits
(id. at 21 ), is not whether the features of one reference may be bodily
incorporated into the structure of another reference. Rather, the test is what
the combined teachings of those references would have suggested to those of
ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review."); In re Nievelt, 482 F.2d 965
(CCPA 1973) ("Combining the teachings of references does not involve an
ability to combine their specific structures." (emphasis omitted)). The
Examiner does not propose any bodily incorporation of Falcon into Doan or
vice versa.
Appellant further argues that Falcon is not readily combinable with
Doan because although Falcon discloses remote monitoring by a network
coordinator of individual calls in a call center phone network, the remote
monitoring is a "constant system configuration that exists by virtue of the
network coordinator being the core of the system, 'integrally tied to every
transaction,' and 'directly tied to the voice and/or data network switch"'
(App. Br. 22 (citing Falcon i-f 40)). That argument is not persuasive at least
because there is nothing in the claim language regarding whether or not any
of the facilities are "integrally tied to every transaction" (Ans. 31 ).
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Appellant asserts that "Falcon additionally does not teach or suggest
any system configuration where there is a local interaction with a customer"
(App. Br. 22). However, we agree with the Examiner that words like "local"
and "remote" are relative terms, and that the contact between the customer
and the contact center (which the Examiner compares to a local order
receiving facility that receives a contact from a customer (Ans. 29)) in
Falcon can reasonably be interpreted as a "local" interaction (Ans. 31 ).
We also are not persuaded of error on the part of the Examiner by
Appellant's argument that Doan teaches away from any monitoring ability
by the remote facility (App. Br. 22-23). Appellant argues that the local
communication link in Doan is used for order-taking only as a back-up when
the remote order communication link has failed and that Doan teaches away
from any monitoring ability by the remote facility because the remote
communication link is the only structure that could presumably have been
used by the remote facility to do such monitoring (id.). But Appellant does
not point to any passage in Doan that criticizes, discredits, or otherwise
discourages providing remote monitoring functionality- which is required
to establish a "teaching away." See In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994) (A teaching away occurs when a reference discourages one skilled in
the art from following the claimed path, or when the reference would lead
one skilled in the art in a direction divergent from the path that was taken by
the applicant); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of the alternatives when the disclosure
does not criticize, discredit, or otherwise discourage the solution claimed).
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Finally, we are not persuaded of Examiner error by Appellant's
argument that the combination of Doan and Falcon does not disclose or
suggest a system having a "first mode" and a "second mode," as called for in
claim 1 (App. Br. 28-30). We agree with the Examiner that the modes, as
recited in claim 1, are defined by which communication link, i.e., local or
remote, is active, and that Doan discloses two modes of operation, i.e., a first
mode in which the link between the offsite personal computer and the order-
placing station is active and a second mode in which the link between the
order-placing station and the onsite employee headsets is active (Ans. 34--35
(citing Doan i-fi-122, 27)). Doan also discloses the monitoring of the
communication link to the remote facility by the local facility (id. at 35
(citing Doan i127)).
Appellant asserts in the Reply Brief that the Examiner's statement,
i.e., that the recited modes are defined by which communication link is
active, "does not appear to be an accurate reflection of the claim language"
(Reply Br. 7). But Appellant does not present any persuasive argument or
technical reasoning to show that the Examiner's interpretation is
unreasonable or unsupported. Instead, Appellant merely comments
"Appellant refers to the Appeal Brief to demonstrate how Doan in view of
Falcon does not render obvious claims 1-7 and 11-17" (id.). 4
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 103(a) of independent claim 1, and independent claims 8, 11,
4 We have considered Appellant's further arguments at pages 23-28 that
one of ordinary skill in the art would not have been motivated to apply the
teaching of Falcon to Doan, and find them unpersuasive for the reasons set
forth by the Examiner at pages 32-34 of the Answer.
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18, 21, and 22, which fall with claim 1. We also sustain the Examiner's
rejection of dependent claims 2, 5-7, 9, 10, 12, 15-17, 19, and 20, which are
not argued separately.
Dependent Claims 3 and 13
Claim 3 depends from independent claim 1, and recites that the "first
mode is operable unless overridden by [the] local order receiving facility."
Claim 13 depends from independent claim 11, and includes substantially
similar language.
In rejecting claims 3 and 13 under§ 103(a), the Examiner cites
paragraph 27 of Doan as disclosing that the local order receiving facility
(i.e., the onsite employees with headsets) can listen (i.e., monitor) the
communication between the customer and offsite employee (i.e., the
communication to the remote facility) and take over the order handling
responsibility in the event of a connection interruption or the like (i.e., the
local order receiving facility overrides the communication with the remote
facility) (Final Act. 18-19; 27; see also Ans. 35-36).
Appellant asserts that "[t]he broadest reasonable interpretation of the
claim language that a 'first mode is operable unless overridden by said local
order receiving facility' does not encompass Doan's teaching of using a pre-
existing system in the event that the inventive system experiences a
connection interruption" (App. Br. 31). But Appellant's assertion is not
persuasive of error on the part of the Examiner at least because it does not
rise to the level of a substantive argument for patentability. Cf In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably
interpreted 37 C.F.R. § 41.37(c)(l)(vii) as requiring "more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
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Application 13/592,612
a naked assertion that the corresponding elements were not found in the
prior art").
Therefore, we sustain the Examiner's rejection of claims 3 and 13
under 35 U.S.C. § 103(a).
Dependent Claims 4 and 14
Claim 4 depends from independent claim 1, and recites that the
"second mode is operable unless overridden by [the] remote facility."
Claim 14 depends from independent claim 11, and includes substantially
similar language.
In rejecting claims 4 and 14 under§ 103(a), the Examiner notes that
Falcon discloses the monitoring of a local facility (i.e., calls to the call
center) by a remote facility (i.e., a network controller) (Final Act. 19; 27-28
(citing Falcon i-fi-147, 55)). The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time of Appellant's
invention to modify Falcon to include "the ability wherein said second mode
is operable unless overridden by said remote facility" and that a person of
ordinary skill in the art would have been motivated to do so "in order to
allow the network coordinator to assist the [call center] agent on a particular
call" (id. at 28).
Appellant argues that the Examiner's rationale for modifying Falcon
is "merely conclusory in nature" and that "the obviousness of claims 4 and
14 is a 'core factual finding' that needs to be supported by evidence on the
record" (App. Br. 32). But Appellant does not present any persuasive
argument or technical reasoning to explain why modifying Falcon as the
Examiner proposes is unreasonable or unsupported.
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Therefore, we sustain the Examiner's rejection of claims 4 and 14
under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 1-22 on the ground of non-
statutory double patenting is affirmed.
The Examiner's rejection of claims 8 and 18 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner's rejection of claims 1-22 under 35 U.S.C. § 103(a) is
affirmed
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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