Ex Parte Berstis et al

Board of Patent Appeals and Interferences

Oct 27, 2003

09239338 (B.P.A.I. Oct. 27, 2003)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte VIKTORS BERSTIS
and LINDA ARNOLD LISLE
____________
Appeal No. 2002-1785
Application No. 09/239,338
____________
ON BRIEF
____________
Before HAIRSTON, BARRETT, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1-19, which are all of the
claims pending in this application.
BACKGROUND
Appellants' invention relates to a store employee locator
system. An understanding of the invention can be derived from a
reading of exemplary claim 1, which is reproduced as follows:
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Application No. 09/239,338
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1. A method for locating store employees, comprising the
steps of:
receiving a set of unique signature transmissions by a set
of receivers on the store, each transmission emanating from a
respective transmitter worn by a store employee;
associating each unique signature with employee biographical
information, including an expertise of an employee;
using the transmissions to locate employees in the store;
and
responsive to a user request for employees having a given
expertise, displaying a store map on an informational kiosk
display wherein a representation of the location of the employees
having the given expertise is shown therein.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Christ 5,977,913 Nov. 2, 1999
(filed: Feb. 5, 1998)
Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Christ. Rather than reiterate the conflicting
viewpoints advanced by the examiner and appellants regarding the
above-noted rejection, we make reference to the examiner's answer
(Paper No. 12, mailed January 23, 2002) for the examiner's
complete reasoning in support of the rejection, and to
appellants' brief (Paper No. 11, filed November 19, 2001) for
appellants' arguments thereagainst. Only those arguments
actually made by appellants have been considered in this
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Application No. 09/239,338
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decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered. See 37 CFR
1.192(a).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejection advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellants' arguments set forth in the brief along with the
examiner's rationale in support of the rejection and arguments in
rebuttal set forth in the examiner's answer. Upon consideration
of the record before us, we reverse, for the reasons set forth by
appellants.
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
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Application No. 09/239,338
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(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings
by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
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We begin with claim 1. As noted by the examiner (Paper No.
3, mailed January 4, 2001), Christ does not specifically show
that responsive to a user request for employees having a given
expertise, the system displays a map on an informational kiosk
wherein a representation of the location of the employees having
the given expertise is shown. The examiner's position is that
Christ shows that the system displays a map of the facility with
the location of a specific transmission highlighted. According
to the examiner (id.), since the method of Christ is applicable
to storage sites and hospitals, one of ordinary skill in the art
would have been motivated to apply the method of locating
employees in a store to include the step of displaying a store
map on an informational kiosk to show the location of the
employee who is an expert in a field in which a customer needs
assistance.
Appellants concede (brief, page 4) that Christ shows a prior
art method for using the unique signature submitted by a
respective transmitter to locate an individual. However,
appellants assert (id.) that Christ fails to provide any
suggestion or incentive to apply this technology to finding
subject matter experts.
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Appellants assert (brief, page 5) that Christ fails to teach
or suggest the associating and displaying steps of claim 1. It
is argued (brief, page 6) that in Christ, it does not matter what
the subject matter expertise of the individual might be, and
(brief, page 8) that there is no teaching or suggestion in Christ
to modify the system to track personnel with a given expertise,
because in Christ, emergency is relevant whereas expertise is
irrelevant. Appellants further assert (id.) that the examiner is
using appellants' own teachings as a blueprint for the rejection,
which is impermissible hindsight.
From our review of Christ, we find that Christ is directed
to a personal security system employing a locating and tracking
device (col. 1, lines 12-14). Christ discloses that security
personnel often place their lives at risk merely by showing up
for work, and that individuals are unable to notify the main
control center that they are in trouble or where they are when
trouble arises. Christ discloses that many organizations would
benefit from the ability to continuously locate the position of
individuals as they move about a facility, such correctional
facilities, hospitals, nuclear power plants, and amusement parks,
as the frequency of violent crime increases (col. 1, lines 15-
32). Christ solves this problem by providing a system of sensors
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for locating within a facility, so that upon activation of an
alarm, the feedback enables differentiation of the location of
the alarm (col. 7, lines 19-23). The system includes a personal
alarm transmitter, central monitoring system, and an array of
sensors. The central monitoring system locates a person carrying
the personal alarm transmitter (col. 7, lines 55-59). If an
alarm occurs, a central mapping computer displays the location
and identification of each active personal alarm (col. 9, lines
54-62). A map of the facility is presented on the display with
the location of the alarm transmission highlighted (col. 12,
lines 7 and 8). In one embodiment of the invention, a map of the
facility is presented on a PC, upon which alarm conditions are
superimposed, and from which an acoustic alarm emits under
alarm/system warning conditions (col. 13, lines 50-52).
From the disclosure of Christ, we find that Christ is
directed to a personal security system for identifying the
location of an individual needing emergency assistance. If
applied to a hospital environment, we find that Christ would
provide a security system that enables determination of the
location of an individual in need of assistance. We find no
teaching or suggestion in Christ, and none has been pointed to by
the examiner, that would suggest associating an identified
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individual with biographical information including an area of
expertise of the individual. Nor do we find any teaching or
suggestion of “responsive to a user request for employees having
a given expertise, displaying a store map on an informational
kiosk display wherein a representation of the location of the
employees having the given expertise is shown therein” as recited
in claim 1. Thus, we agree with appellants (brief, page 9) that
"the Christ system locates the position of an emergency, rather
than locating various personnel to deal with an emergency," and
find that the examiner is using appellants' own teachings as a
blueprint for the rejection. “Obviousness may not be established
using hindsight or in view of the teachings or suggestions of the
inventor.” Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d
1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995)(citing W.L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553,
220 USPQ 303, 311, 312-13 (Fed. Cir. 1983)). “It is
impermissible to use the claimed invention as an instruction
manual or ‘template’ to piece together the teachings of the prior
art so that the claimed invention is rendered obvious.” In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992)(citing In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991)).
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In sum, because Christ does not address the issues of:
associating an individuals signature transmission with the
individual's biographical information including the individual's
expertise; nor of “responsive to a user request for employees
having a given expertise, displaying a store map on an
informational kiosk display wherein a representation of the
location of the employees having the given expertise is shown
therein”, we do not agree with the examiner that teachings of
Christ would have suggested the claimed associating and
displaying limitations. We therefore find that the examiner has
failed to establish a prima facie case of obviousness of claim 1.
Accordingly, the rejection of claim 1 under 35 U.S.C. § 103(a) is
reversed. In addition, because Christ does not teach or suggest
the associating and displaying limitations of independent claims
2, 7, and 15, the rejection of claims 2, 7, and 15, along with
claims 3-6, 8-14, and 16-19, which depend therefrom, under 35
U.S.C. § 103(a), is reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject claims
1-19 under 35 U.S.C. § 103(a) is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
SSL/kis
Appeal No. 2002-1785
Application No. 09/239,338
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JEFFREY S. LABAW
INTERNATIONAL BUSINESS MACHINES
CORPORATION INTELLECTUAL PROPERTY LAW
INTERNAL ZIP 4054 11400 BURNET
AUSTIN, TX 78758