Ex Parte Baltimore

Patent Trial and Appeal Board

May 4, 2017

12319996 (P.T.A.B. May. 4, 2017)

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.
12/319,996 01/14/2009 Jordan Scott Baltimore 08870010.000002 8987
43309 7590 05/08/2017
SILLS CUMMIS & GROSS P.C.
101 Park Avenue, 28th Floor
NEW YORK, NY 10178
EXAMINER
WILDER, ANDREW H
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
05/08/2017 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):
PTO@SILLSCUMMIS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORDAN SCOTT BALTIMORE
Appeal 2015-000244
Application 12/319,9961
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
An oral hearing was held on January 26, 2017.
STATEMENT OF THE CASE
Jordan Scott Baltimore (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1—15. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Jordan S. Baltimore as the real party in interest.
App. Br. 3.
Appeal 2015-000244
Application 12/319,996
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system comprising:
a processor;
a database comprising:
pricing information for products at a physical retail location,
advertising information, and
pattern information relating to shopping patterns at said
physical retail location;
and
an electronic price tag removably mounted to shelving at said physical
retail location for selectively displaying information from said
database at particular times based on said pattern information, said
electronic price tag being substantially the size of a paper price tag
and configurable to display pricing information for a first product
proximate to said electronic price tag and advertising information
relating to a second product.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kayser US 6,089,453 July 18,2000
Swartzel US 2002/0109593 A1 Aug. 15,2002
Angell US 2008/0249859 A1 Oct. 9,2008
The following rejections are before us for review:
1. Claims 1, 2, and 11 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2
Appeal 2015-000244
Application 12/319,996
2. Claims 1, 2, and 11 are 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 applicant regards as the
invention.
3. Claims 2, 7, 9—11, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Swartzel and Kayser.
4. Claims 1, 3—6, 8, 12, and 13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Swartzel, Kayser, and Angell.
ISSUES
Did the Examiner err in rejecting claims 1, 2, and 11 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement?
Did the Examiner err in rejecting claims 1, 2, and 11 under 35 U.S.C.
§112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention?
Did the Examiner err in rejecting claims 2, 7, 9-11, 14, and 15 under
35 U.S.C. § 103(a) as being unpatentable over Swartzel and Kayser?
Did the Examiner err in rejecting claims 1, 3—6, 8, 12, and 13 under
35 U.S.C. § 103(a) as being unpatentable over Swartzel, Kayser, and
Angell?
ANALYSIS
The rejection of claims 1, 2, and 11 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
3
Appeal 2015-000244
Application 12/319,996
The Examiner finds that the claim phrase "substantially the size of a
paper price tag" referring to the "electronic price tag display” does not have
adequate written descriptive support in the Specification as originally filed.
However, the Examiner concedes that the Specification as originally
filed “discloses such ‘electronic displays can display the same information
as that provided by a paper shelf tag’ (Instant Specification: [para.] 0003,
emphasis added).'” Ans. 2.
The claim phrase "substantially the size of a paper price tag" does not
narrow the scope of the claim to any particular size. Nor is it narrowed when
read in light of the Specification. There is nothing in the Specification
indicating or suggesting any particular size. The claim phrase "substantially
the size of a paper price tag" is reasonably broadly construed to broadly
cover substantially the size of a paper price tag — which come in many
different sizes. Thus the question is whether original disclosure provides
adequate written descriptive support for the claim phrase "electronic price
tag being substantially the size of a paper price tag” where the paper price
tag is of no particular size. The question is not, as the Examiner puts it,
whether the original disclosure “disclose[s] anything to the particular size of
the display” (Final Act. 3—4). It does not need to because the claim phrase is
not so limited in scope.
The Appellant, too, argues in favor of narrowly construing said claim
phrase. The Appellant argues:
The "product shelving 10 may be any general type of product
display utilized in a retail environment". Specification as-filed, page
7,1 [0019]. Any person can readily bring to mind such product
shelving. As shown in FIG. 1, the display tag 20 is only slightly wider
than the thickness of the product shelving, and the length of the tag
4
Appeal 2015-000244
Application 12/319,996
20, in proportion to the width of tag 20, can readily be recognized by
persons skilled in the relevant art as illustrating substantially the size
of a paper price tag. The foregoing disclosure stands in contrast to that
of FIG. 4, which includes a laptop computer for display 20. See
Drawings as-filed, FIG. 4. A person skilled in the art would appreciate
the differences between the displays illustrated in FIG. 1 and FIG. 4,
and would understand that the specification uses the term "display tag
20" when describing the illustrated display size of FIG. 1. The nature
of this subject matter is simple and no further description is necessary
for a person skilled in the art to understand the size of an electronic
price tag.
App. Br. 6.
First of all, Figure 1 is an “exemplary” system. See Spec. para. 9. And
second, we do not see where in the Specification draws a contrast between
the size of a laptop computer for display 20 of Figure 4 and the display tag
20 of Figure 1. All that the Specification says is that “[alternative
embodiments also include use of a laptop computer or desktop computer,
monitor and input device to serve as both the product on display for sale or
demonstration by the retailer and as the invention, itself, as depicted in Fig.
4 and Fig 5.” Id. Para. 28. We do not see the Specification leading one of
ordinary skill in the art to size the electronic price tag to any particular size.
The Specification as originally filed must provide adequate written
descriptive support for the subject matter now claimed. What is claimed is a
"electronic price tag being substantially the size of a paper price tag” where
the paper price tag can be of any size. In disclosing "electronic displays
[that] can display the same information as that provided by a paper shelf
tag," the Specification provides adequate support for electronic price tags
“being substantially the size of a paper price tag,” of no particular size.
For the foregoing reasons, the rejection is not sustained.
5
Appeal 2015-000244
Application 12/319,996
The rejection of claims 1, 2, and 11 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
The Appellant argued these claims as a group. See App. Br. 6-7. We
select claim 1 as the representative claim for this group, and the remaining
claims 2 and 11 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Also,
claims 1, 2, and 11 are the independent claims. Necessarily, the rejection
applies as well to claims 3—10 and 12—15 that depend from them.
The Examiner argues that
[t]he term "substantially" in claims 1, 2 and 11 is a relative term
which renders the claim indefinite. The term "substantially" is not
defined by the claim, the specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the art
would not be reasonably apprised of the scope of the invention. The
electronic price tag has therefore been rendered indefinite by the use
of the term substantially, since one of ordinary skill in the art would
not be reasonably apprised of the scope of the invention.
Final Act. 4.
The Appellant responds by arguing that
the meaning of the terms "paper price tag" and "size of a paper price
tag" are well-known from commonplace shopping experience of
persons skilled in the art. Simply saying "paper price tag" brings to
mind an image of it. Paper price tags are so ubiquitous that persons
skilled in the art must understand what they are. The term is not
limited to one particular paper and dimension, but broad scope does
not render the term indefinite.
App. Br. 7. Also, “Applicant disagrees [ ] with the Examiner's position that
a paper price tag can be any size.” Reply Br. 5.
We do not see that the Appellant has shown error in the rejection. To
the contrary, the Appellant’s argument buttresses the Examiner’s finding
6
Appeal 2015-000244
Application 12/319,996
that one of ordinary skill in the art would not be reasonably apprised of the
scope of the invention.
As we stated above in reversing the rejection under § 112 for lack of
adequate written descriptive support, “[t]he claim phrase "substantially the
size of a paper price tag" is reasonably broadly construed to broadly cover
substantially the size of a paper price tag — which come in many different
sizes.” But the Appellant here argues that “a paper price tag can [not] be any
size” (Reply Br. 5). Apparently, according to the Appellant, the size of a
paper price tag is “well-known from commonplace shopping experience”
such that “persons skilled in the art must understand what” size that is. App.
Br. 7. Accordingly, the Appellant takes the view that the claim phrase
"electronic price tag being substantially the size of a paper price tag”
ascribes to the "electronic price tag” a particular size.
The Appellant’s argument that the size of a paper price tag is a well-
known particular size is not supported by sufficient evidence on the record.
Importantly, the Specification makes no mention of any size for the claimed
"electronic price tag” or for a paper shelf tag that would form a basis to
ensure the "electronic display[ ] can display the same information as that
provided by a paper shelf tag" (Spec. para. 3).
Instead, the Appellant’s argument injects further confusion in
resolving the matter of whether the term "substantially" in claims 1, 2, and
11 is a relative term which renders all the claims indefinite.
An argument could be made that the claim phrase "electronic price tag
being substantially the size of a paper price tag” is simply broad. Such an
argument would rest on construing the phrase as reasonably broadly
7
Appeal 2015-000244
Application 12/319,996
covering substantially the size of any paper price tag; that is, a paper price
tag of any size, which comports with our construction of the claims.
But that is not the argument the Appellant is making. It rests on a
narrow construction of the claim. The Appellant is arguing in favor
construing the claim phrase to broadly cover a particular size. In arguing
that the claim phrase "electronic price tag being substantially the size of a
paper price tag” broadly covers a particular size, the Appellant narrows the
scope of the claim. Not knowing what size would satisfy the particular size
the Appellant’s have in mind, the Appellant’s argument that the claim phrase
"electronic price tag being substantially the size of a paper price tag” broadly
covers a particular size buttresses the Examiner’s finding that one of
ordinary skill in the art would not be reasonably apprised of the scope of the
invention.
We observe that the Appellant has stated that “[t]he term ["paper price
tag" and "size of a paper price tag"] is not limited to one particular paper and
dimension, but broad scope does not render the term indefinite” (App. Br.
7), suggesting that the Appellant does indeed construe the claim phrase
"electronic price tag being substantially the size of a paper price tag” to
broadly cover any size. But that is contradicted by more numerous
statements advocating instead for construing said phrase narrowly to cover a
particular size, most notably the argument reproduced above (from App. Br.
6) in the analysis of the rejection under § 112 for lack of adequate written
descriptive support for the claimed subject matter. We assume the Appellant
did not mean to raise the possibility of two different claim constructions. If
that was the intent, the confusion it instills further buttresses the Examiner’s
8
Appeal 2015-000244
Application 12/319,996
finding that one of ordinary skill in the art would not be reasonably apprised
of the scope of the invention.
For the foregoing reasons, the Appellant has not shown error in the
rejection and for that reason the rejection is sustained as to claims 1—15.
The rejection of claims 2, 7, 9—11, 14, and 15 under 35 U.S.C. § 103(a) as
being unpatentable over Swartzel and Kayser.
The rejection of claims 1, 3—6, 8, 12, and 13 under 35 U.S.C. § 103(a) as
being unpatentable over Swartzel, Kayser, and Angell.
We have affirmed the rejection of claims 1—15 as being indefinite for
the reasons discussed above. The rejection of claims 2, 7, 9-11, 14, and 15
under 35 U.S.C. § 103(a) as being unpatentable over Swartzel and Kayser
and claims 1, 3—6, 8, 12, and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Swartzel, Kayser, and Angell must fall, pro forma,
because they necessarily are based on speculative assumptions as to the
meaning of the claims; that is, the claim phrase "electronic price tag being
substantially the size of a paper price tag”. See In re Steele, 305 F.2d 859,
862—63 (CCPA 1962). Accordingly, we reverse these rejections. We make
no comment on the merits of the Examiner’s position regarding the
obviousness of the claimed subject matter given the combined disclosures of
the cited prior art.
CONCLUSIONS
The rejection of claims 1, 2, and 11 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
9
Appeal 2015-000244
Application 12/319,996
The rejection of claims 1,2, and 11, and concomitantly dependent
claims 3—10 and 12—15, under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention is affirmed.
The rejection of claims 2, 7, 9—11, 14, and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Swartzel and Kayser is reversed.
The rejection of claims 1, 3—6, 8, 12, and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Swartzel, Kayser, and Angell is
reversed.
DECISION
The decision of the Examiner to reject claims 1—15 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
10