Ex Parte Bonner et alDownload PDFPatent Trial and Appeal BoardSep 28, 201612427012 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/427,012 04/21/2009 Brett Bracewell Bonner 14469 7590 09/30/2016 Pillsbury Winthrop Shaw Pittman LLP(Kroger & Sunr) PO Box 10500 McLean, VA 22102 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. 094176-0392468 6147 EXAMINER ALLEN, AKIBA KANELLE ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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): docket_ip@pillsburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRETT BRACEWELL BONNER, CHIRSTOPHER TODD HJELM, TITUS ARTHUR JONES, MICHAEL AARON JORDAN, and DION BRENT PERKINS Appeal2014-007754 Application 12/427,0121 Technology Center 3600 Before, JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and TARA L. HUTCHINGS, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner's final rejection of claims 17-38. We have jurisdiction under 35 U.S.C. § 6(b ). 1 Appellants identify Sunrise R&D Holdings, LLC as the real party in interest. Br. 2. Appeal2014-007754 Application 12/427,012 We AFFIRM. SUMMARY OF DECISION THE INVENTION Appellants claim a system for managing store associates in a store. (Spec. ii 2). Claim 17 reproduced below, is representative of the subject matter on appeal. 17. A system for managing the completion of tasks in a retail store environment, compnsmg: a wireless, electronic communication network located in a retail store environment; a manager communication device in operative communication with the communication network and associated with at least one store personnel; and a wireless, handheld associate communication device in operative communication with the communication network and associated with at least one other store personnel, wherein the associate communication device receives data associated with a plurality of tasks assigned to the at least one other store personnel, and wherein the data comprises a priority code indicating a priority order in which each of the plurality of tasks is to be performed. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: 2 Appeal2014-007754 Application 12/427,012 Nelken Inaba Tavares Gooch Nissinen US 6,408,277 B 1 US 7 ,257 ,420 B2 US 2005/0172304 Al US 2007/0192157 Al WO 01/74101 Al The following rejections are before us for review. June 18, 2002 Aug. 14, 2007 Aug. 04, 2005 Aug. 16, 2007 Oct. 04, 2001 Claims 17-21 and 32-38 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gooch, Nelken, in view of Tavares. Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gooch, Nelken, Tavares, in view of Inaba. Claims 24--31 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gooch, Nelken, Tavares, in view ofNissinen. FINDINGS OF FACT 1. We adopt the Examiner's findings as set forth on pages 2-16 of the Final Action, and as set forth on pages 2-6 of the Answer. ANALYSIS Claims 17-21, 32-34, and 35-38 Appellants' arguments against the rejection of each of independent claims 17 and 3 5 are based on perceived deficiencies of the combination of Gooch, Nelken, and Tavares. (Appeal Br. 4--9). Inasmuch, as Appellants raise the same issues with respect to each of these claims, we discuss them together, addressing each of Appellants' arguments in tum. Appellants also 3 Appeal2014-007754 Application 12/427,012 group claims 18-21 and 32-34 with independent claim 17 (Appeal Br. 7), and claims 36-38 with independent claim 35 (Appeal Br. 9). Thus, claims 18-21, 32-34, and 36-38 stand or fall with each of independent claims 17 and 35. Appellants argue, ... there is no objective reason why one of ordinary skill in the art would have been motivated at the time of Appellant's [sic] invention to replace the personal computer used by an employee in an office environment [of Gooch] with the wireless phone taught by Tavares, which does not have the functionality provided by the computer system of Gooch. (Appeal Br. 6) The Examiner, however, found motivation for the proposed combination, stating, " ... with the motivation of incorporating a wireless device which operates in a wireless communication system for event management in a retail environment into a system for managing tasks in a business environment." (Final Act. 4). We agree with the Examiner and disagree with Appellants that the Examiner's reasons for motivation are conclusory because it would have been obvious to use a mobile based version of an otherwise stationary employee computer for an employee who is tasked with working "the floor," versus one who sits at a desk, as disclosed by Gooch. We are likewise unpersuaded by Appellants' assertion that the Office has not fulfilled its "initial duty of supplying the factual basis for its 4 Appeal2014-007754 Application 12/427,012 rejection." (Appeal Br. 7). That is, we find no error with the Examiner's prima facie case of obviousness because the Examiner has notified Appellants that the claims are rejected under 35 U.S.C. § 103(a) as unpatentable over the respective combinations of: Gooch, Nelken, and Tavares (Final Act. 2), further in view of Inaba (Final Act. 9,) and further in view ofNissinen (Final Act. 10). In so doing, the Examiner cited specific portions of the references, by column and line numbers and paragraph number, which are the basis for the rejection. (See Final Act. 2-16; see also Answer 2---6). The cited portions of the references together with the accompanying explanations constitute the required factual basis, which Appellants incorrectly allege is lacking. Also, to the extent Appellants seek an explicit suggestion or motivation in the references themselves, this is no longer the law in view of the Supreme Court's recent holding in KSR Int 'l Co. v. Telej1ex Inc., 127 S. Ct. 1727, 1741 (2007). The Examiner has provided some articulated reasoning with some rational underpinning for why a person with ordinary skill in the art would modify Gooch to use wireless communication for the retail worker (Final Act. 4 ), which as we found supra, is a reasonable explanation. Thus, Appellants' argument is not persuasive as to error in the rejection. Appellants further argue that, "[ c Jase law makes clear that an obviousness rejection must be based on all facts and that the Office may not 5 Appeal2014-007754 Application 12/427,012 use hindsight to reconstruct the claimed invention from the prior art." (Appeal Br. 9). We are not persuaded by Appellants' arguments because "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). We find that in the record before us, the Examiner has directed his findings to those which one of ordinary skill in the art would have known and knowledge gleaned from the references themselves (Final Act. 3--4), finding, for example, "each element merely would have performed the same function as it did separately. " (Final Act. 7). Therefore, we find no error with the Examiner's rejection concerning the rejection of independent claims 17 and 35. Claims 22 and 23. Appellants argue, "[ e ]ven if the system of Gooch was modified to be able to receive real-time location data of the staff member's computer, the manager's computer of Gooch would not be able to determine a task status, because the real-time location of the staff member's computer does not change and is independent of the assigned task." (Appeal Br. 10). 6 Appeal2014-007754 Application 12/427,012 That argument is not well taken because the Appellants are attacking the Gooch reference individually when the rejection is based on a combination of references. The Examiner relies on Tavares, not Gooch, to show a wireless mobile retail device used as a staff member computer. (Final Act. 4). See In re Keller, 642 F.2d413, 426(CCPA1981) (non- obviousness cannot be shown by attacking references individually where the rejection is based on a combination of references); In re Young, 403 F.2d 754, 757-58 (CCPA 1968). Claims 24--28 Appellants argue that: The system ofNissinen is not for a retail store environment, and Nissinen does not disclose a wireless, electronic communication network located in a retail store environment or a wireless, handheld associate communication device that includes all of the features recited by claim 17. (Appeal Br. 10). That argument is not well taken because the Appellants are attacking the Nissinen reference individually when the rejection is based on a combination of references and again, the Examiner relies on Tavares for the disclosure of a retail environment and a wireless device (Final Act. 4), and relies on Gooch for disclosing a manager communication device in operative communication with a store communication network (Final Act. 3). Keller, 642 F.2d at 426; Young, 403 F.2d at 757-58. 7 Appeal2014-007754 Application 12/427,012 Appellants also argue," ... that there would have been no objective reason to add a timer to the system of Gooch at the time of Appellants' invention." (Appeal Br. 11). We disagree with Appellants. We find that the Examiner has made findings that Gooch is directed to a task-based performance monitoring system (Final Act. 3), which we find is an objective reason to include a metric for the time taken to perform a task to monitor productivity. KSR, 127 U.S. at 1740. (In making the obviousness determination one "can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.") Claims 29-31 Concerning claim 29 Appellants argue that the system of Gooch presents tasks to the users via a computer screen and users select tasks via the computer. There is no need for a barcode scanner. Moreover, the barcode scanner ofNissinen is not used to scan barcodes of products, as recited by claim 29, but instead is used to scan barcodes associated with different tasks. See Nissinen at page 2, lines 24-27. Appeal Br. 12. We find that one of ordinary skill in the art would understand that a barcode scanner would be part of the staff member computer station in Gooch as a typical peripheral device well known as a standard part of a workstation. A barcode scanner would have applicability in Gooch as disclosed in paragraph 80, for example, when a staff member "books out" of 8 Appeal2014-007754 Application 12/427,012 a job, indicating "work is completed by performing a 'book out' step 30 which notifies the system that the task is completed." As to Appellants' argument that, "Nissinen is not used to scan barcodes of products" (Appeal Br. 12), we find this argument unpersuasive because "inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 939 (CCPA 1963). CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 17-38 under 35 U.S.C. § 103. DECISION The decision of the Examiner to reject claims 17-38 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation