Ex Parte AwiszusDownload PDFPatent Trial and Appeal BoardOct 18, 201613592612 (P.T.A.B. Oct. 18, 2016) Copy Citation 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. 2 Appeal2014-007877 Application 13/592,612 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). 3 Appeal2014-007877 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). 4 Appeal2014-007877 Application 13/592,612 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 5 Appeal2014-007877 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 6 Appeal2014-007877 Application 13/592,612 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 7 Appeal2014-007877 Application 13/592,612 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 ). 8 Appeal2014-007877 Application 13/592,612 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). 9 Appeal2014-007877 Application 13/592,612 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. 10 Appeal2014-007877 Application 13/592,612 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 11 Appeal2014-007877 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. 12 Appeal2014-007877 Application 13/592,612 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 13 Copy with citationCopy as parenthetical citation