Ex Parte Baranowski

Board of Patent Appeals and Interferences

Dec 20, 2011

10124175 (B.P.A.I. Dec. 20, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/124,175 04/16/2002 Robert Baranowski 40002-0013 7855
20480 7590 12/21/2011
STEVEN L. NICHOLS
Van Cott, Bagley, Cornwall & McCarthy
36 South State Street
SUITE 1900
SALT LAKE CITY, UT 84111
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
12/21/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT BARANOWSKI
____________

Appeal 2010-002441
Application 10/124,175
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Robert Baranowski (Appellant) seeks our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 1-30. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a new ground of rejection
under 35 U.S.C. § 103(a) pursuant to 37 C.F.R. § 41.50(b).1

THE INVENTION
The invention relates to “the field of conducting trade shows and
conventions.” Spec., para. [0001].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for attending a trade show at a trade show venue,
said method comprising carrying a wireless portable device
with a user interface while attending said trade show, and, with
said portable device, receiving information about said trade
show from a wireless infrastructure that provides a wireless
service area encompassing some or all of said trade show
venue.

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Mar. 4, 2009) and Reply Brief (“Reply Br.,” filed Sep. 23, 2009),
and the Examiner’s Answer (“Ans.,” mailed Jul. 23, 2009).
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Rhoads US 6,311,214 B1 Oct. 30, 2001
The following rejections are before us for review:
1. Claims 21-30 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 1-30 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Rhoads.

ISSUES
Regarding the § 101 rejection, the issue is whether the process recited
in claims 21-30 passes the machine-or-transformation test as a factor in
determining whether the recited process is patent-eligible.
Regarding the § 102(e) rejection, the main issue is whether Rhoads
expressly or inherently describes the claim steps in the context of using
information about a trade show during its attendance.

ANALYSIS
The rejection of claims 21-30 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
We will affirm the rejection.
Although the law on patent-eligibility for process claims under § 101
has undergone significant clarification since the mailing of the Answer
(2009), it remains the case that failing to satisfy the machine-or-
transformation test is a factor weighing against the patent eligibility of a
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process claim. See Interim Guidance for Determining Subject Matter
Eligibility for Process Claims in View of Bilski v. Kappos; 75 Fed. Reg.
43922, 43926 (July 27, 2010/Notice).
The Examiner provided a full explanation as to why the process
recited in the claims fail to pass the machine-or-transformation test. Ans. 4-
5.
In response, the Appellant argues only that:
Appellant believes that claim 21 is a statutory process
because it transforms a particular article into something else….
In the present case, the method receives a list of criteria
that define “a product, service or exhibitor that a prospective
attendee of said trade show desires.” This list of criteria is then
transformed by the method into “a schedule for attending said
trade show for said prospective attendee.”
Consequently, …, claim 21 and its dependent claims are
statutory subject matter because claim 21 transforms a list of
criteria about “a product, service or exhibitor that a prospective
attendee of said trade show desires” into “generating a schedule
for attending said trade show for said prospective attendee."
(Claim 1). For at least this reason, the rejection under § 101 of
claims 21-30 should not be sustained.
Reply Br. 16.
We are not persuaded by the Appellant’s argument that the process
recited in the claims is somehow transforming anything (assuming even if it
were it would be sufficient to render the recited process patent-eligible under
§ 101). The process claimed does no more than “generate” information (i.e.,
a schedule) based on criteria. Nothing is being transformed, let alone an
article into a different state or thing.
The rejection is affirmed.
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The rejection of claims 1-30 under 35 U.S.C. § 102(e) as being anticipated
by Rhoads.
We will reverse the rejection.
“Invalidity on the ground of ‘anticipation’ requires lack of novelty of
the invention as claimed….[,] that is, all of the elements and limitations of
the claim must be shown in a single prior reference, arranged as in the
claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001).
We will focus on the independent claims 1, 19, 20, and 21 as
representative of the 4 groups of claims on appeal (claims 1-18 to a method
of attending a trade show; claim 19 to a trade show venue; claim 20 to a
method of conducting a trade show; and, claims 21-30 to a method of
soliciting attendance at a trade show).
Claim 1 requires “carrying a wireless portable device with a user
interface while attending [a] trade show” and “receiving information about
said trade show from a wireless infrastructure that provides a wireless
service area encompassing some or all of said trade show venue.” The
Examiner found these two limitations to be expressly described at column
30, lines 41-50 and column 32, lines 41-53 of Rhoads. Ans. 5-6. We have
reviewed the passages but find no description there of these steps in the
context of trade shows. In response to the same concern raised by the
Appellant (see App. Br. 9-10), the Examiner adds:
None the less Rhoads discloses in Col 23, lines 12-22 that
objects encoded objects such as brochures can be handed out at
a tradeshow[]. These objects can be presented to a Bedoop
sensor and display a web-based presentation. Thus Rhoads
discloses the ability to carry a wireless portable Bedoop sensor,
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and the ability to attend a trade show that has Bedoop enabled
objects. From the standpoint of intended use the user could
carry the disclosed portable wireless Bedoop sensor while
attending a tradeshow, the user could then pick up a Bedoop
enabled object, scan the object and receive information about
the vendor and its products that are part of the tradeshow.
Ans. 17. The difficulty with this analysis is that Rhoads does not necessarily
describe carrying a portable wireless sensor while attending a tradeshow. A
tradeshow is mentioned in column 23, lines 12-22 but carrying a portable
wireless sensor while attending it is not. It is possible to do so, Rhoads does
not necessarily include doing it. “Inherent anticipation requires that the
missing descriptive material is ‘necessarily present,’ not merely probably or
possibly present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp.,
295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d
743, 745 (Fed. Cir. 1999)). In effect, the Examiner has gone beyond Rhoads
to fill in missing disclosure. “If it is necessary to reach beyond the
boundaries of a single reference to provide missing disclosure of the claimed
invention, the proper ground is not § 102 anticipation, but § 103
obviousness.” Scripps Clinic & Research Found. v. Genentech, Inc., 927
F.2d 1565, 1577 (Fed. Cir. 1991).
For the foregoing reasons, we reverse the rejection of claims 1-18.
We reach the same conclusion as to claim 19 – which calls for “a
controller comprising a database of data specific to a trade show in said trade
show venue, said controller configured to communicate with said network of
wireless base stations to provide said data to wireless portable device in said
service area used by trade show attendees.” The Examiner argued that “the
Rhoads invention can be used [at] a tradeshow without altering the disclosed
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inventive features and without changing the operability of the claimed
invention” (Ans. 19-20). Inherent anticipation requires that the missing
descriptive material is necessarily present, not merely probably or possibly
present, in the prior art.
We reach the same conclusion as to claim 20 which calls for
“providing trade show attendees with a wireless portable device with a user
interface to be carried while attending said trade show” and “transmitting
information about said trade show to said portable devices ... ,” limitations
which Rhoads does not expressly or inherently describe.
Finally, as to claims 21-30, they also involve trade show information.
The Examiner stated that “Rhoads specifically teaches providing
information about a trade show in Col 23, lines 12-23.” Ans. 20. The
Examiner further adds that
Col 23, lines 12-21 specifically state receiving data such as a
presentation or video about the vendor and its products, as well
as the ability of the user to request additional information. Col
27, lines 5-16 discloses the ability to schedule an appointment
with a service provider that is using a Bedoop enable device
thus the ability to generate a schedule (appointment) for both
the service provider and the user is disclosed. Thus, all of the
limitations of the claim as currently written have been
disclosed.
Ans. 21. The difficulty is that Rhoads does not expressly or inherently
describe “receiving criteria that defines a product, service or exhibitor that a
prospective attendee of [a] trade show desires; and automatically generating
a schedule for attending said trade show for said prospective attendee based
on said criteria” as claimed. While the cited disclosure in Rhoads might lead
one of ordinary skill in the art to the claimed invention at the time of the
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invention, the rejection on appeal is one of anticipation pursuant to § 102(e)
rather than § 103(a).
For the foregoing reasons, the rejection of claims 21-30 under §
102(e) over Rhoads is reversed.
NEW GROUND
A new ground of rejection of claims 1-30 is entered under 35 U.S.C.
§ 103(a) pursuant to 37 C.F.R. § 41.50(b) as being unpatentable over the
state of the art at the time of the invention (2002).
We make the following findings as to the state of the art at the time of
the invention, each of which we take Official Notice.
1. Trade shows were known at the time of the invention.
2. Trade show venues with spaces for exhibitors were known at
the time of the invention.
3. Attending trade shows was known at the time of the invention.
4. Wireless portable devices were known at the time of the
invention. See Spec., para. [0025] where, for example, a “Personal Digital
Assistant (PDA or the like” is disclosed.
5. A wireless infrastructure comprising a network of wireless base
stations for providing a wireless area were known at the time of the
invention.
6. Transmitting information to portable devices (e.g., PDAs) from
a wireless infrastructure that provides a wireless service area was known at
the time of the invention.
7. Wireless portable devices (e.g., PDAs) comprising interfaces
for receiving information from a wireless infrastructure that provides a
wireless area were known at the time of the invention.
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8. Controllers comprising a database and configured to
communicate with a network of wireless base stations to provide data from
the database to wireless portable device were known at the time of the
invention.
9. Carrying a wireless portable device (e.g., PDA) was known at
the time of the invention.
10. Providing access to information was known at the time of the
invention.
11. Receiving criteria for selecting a product was known at the time
of the invention.
12. Automatically generating a schedule based on criteria was
known at the time of the invention.
13. Information about trade shows was known in the art at the time
of the invention.
Now to the analysis.
We will focus on the independent claims 1, 19, 20, and 21 as
representative of the 4 groups of claims on appeal (claims 1-18 to a method
of attending a trade show; claim 19 to a trade show venue; claim 20 to a
method of conducting a trade show; and, claims 21-30 to a method of
soliciting attendance at a trade show).
The method of claim 1 includes the act of carrying a wireless portable
device with a user interface for receiving information from a wireless
infrastructure providing a wireless service area. That act was known at the
time of the invention. See FF 4-7 and 9. The method of claim 1 further
requires said known act to take place while attending a trade show.
However, attending trade shows was known at the time of the invention. FF
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3. In our view, the claimed process is a combination of known elements in
the art, the combination of which has not been shown to yield anything other
than what one would expect from such an arrangement. “[W]hen a patent
‘simply arranges old elements with each performing the same function it had
been known to perform’ and yields no more than one would expect from
such an arrangement, the combination is obvious.” KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S.
273, 282 (1976)).
There is also the matter of the information that the wireless portable
device receives from a wireless infrastructure. According to claim 1, that
information is “about said trade show.” Notwithstanding such information
was known at the time of the invention (see FF 13) and it would have been
obvious to those of ordinary skill in the art at the time of the invention to
combine carrying a wireless portable device, attending a trade show, and
receiving information about the trade show as claimed yielding no more than
one would expect from such an arrangement, that aspect of the information
which is “about said trade show” is nevertheless directed to the type of
information being transmitted/received. Patentable weight need not be given
to descriptive material absent a new and unobvious functional relationship
between the descriptive material and the substrate (here, e.g., the interface).
See In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir. 1994); In re Ngai, 367
F.3d 1336, 1338 (Fed. Cir. 2004). In that regard, the Appellant has not come
forward with evidence sufficient to show that the structure of the wireless
portable device/wireless infrastructure is functionally affected by
receiving/transmitting information which is “about said trade show” as
opposed to receiving/transmitting any other type of. Absent such evidence, it
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is reasonable to conclude that the claim limitation requiring the information
to be “about said trade show” is descriptive and not functionally related to
any structure of the wireless portable device/wireless infrastructure the
process employs and as such falls under the category of patentably
inconsequential subject matter. See Ex parte Curry, 84 USPQ2d 1272, 1275
(BPAI 2005) (informative).
Common situations involving nonfunctional descriptive
material are:
- a computer-readable storage medium that differs
from the prior art solely with respect to
nonfunctional descriptive material, such as music
or a literary work, encoded on the medium,
- a computer that differs from the prior art solely
with respect to nonfunctional descriptive material
that cannot alter how the machine functions (i.e.,
the descriptive material does not reconfigure the
computer), or
- a process that differs from the prior art only with
respect to nonfunctional descriptive material that
cannot alter how the process steps are to be
performed to achieve the utility of the invention.
Thus, if the prior art suggests storing a song on a disk,
merely choosing a particular song to store on the disk would be
presumed to be well within the level of ordinary skill in the art
at the time the invention was made. The difference between the
prior art and the claimed invention is simply a rearrangement of
nonfunctional descriptive material.
See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative). Nonfunctional descriptive material cannot render nonobvious
an invention that would have otherwise been obvious. Ngai, 367 F.3d at
1339. Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
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descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability).
As to claim 19 to a trade show venue, it, too, is a combination of
known elements in the art, the combination of which has not been shown to
yield anything other than what one would expect from such an arrangement.
See FF 2, 5, and 8. We reach the same conclusion as to claims 20 to a
method of conducting a trade show (see FF 1-7, 9, and 13, as well as
discussion above on nonfunctional descriptive material regarding
information “about said trade show”) and 21 to a method of soliciting
attendance at a trade show (see FF 10-12).

CONCLUSIONS
The rejection of claims 21-30 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter is affirmed.
The rejection of claims 1-30 under 35 U.S.C. § 102(e) as being
anticipated by Rhoads is reversed.
A new ground of rejection of claims 1-30 is entered under 35 U.S.C.
§ 103(a) pursuant to 37 C.F.R. § 41.50(b) as being unpatentable over the
state of the art at the time of the invention.

DECISION
The decision of the Examiner to reject claims 1-30 is affirmed-in-part.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
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C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record .
. . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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