Ex Parte Brignone et al

Patent Trial and Appeal Board

Feb 23, 2015

11389785 (P.T.A.B. Feb. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte CYRIL BRIGNONE,
ALAN MCREYNOLDS, and
JEAN TOURRIHES
___________

Appeal 2013–007762
Application 11/389,785
Technology Center 3600
___________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
1

Cyril Brignone, Alan McReynolds, and Jean Tourrihes (Appellants) seek
review under 35 U.S.C. § 134 of a Final Rejection of claims 1–23, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).

1
Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 4, 2012) and Reply Brief (“Reply Br.,” filed May 29,
2013), and the Examiner’s Answer (“Ans.,” mailed March 29, 2013).
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The Appellants invented an asset management system that uses policies
based on the location of the assets. Specification para. 14.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A method of managing assets using at least one policy, the
method comprising:
[1] storing at least one policy associated with managing assets,
wherein each of the assets
is located in one of a plurality of slots in a rack
and
includes an RFID tag identifying the asset;
[2] reading,
by an RFID reader array,
the RFID tag of each of the assets
to detect which slot in the rack the asset is located;
[3] receiving slot location information of each of the assets;
[4] receiving sensor information indicating a condition of each
of the assets;
[5] determining,
by a processing device,
whether the at least one policy applies to each of the
assets
based at least on
the slot location information
and
the sensor information of the asset;
and
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[6] for each of the assets,
performing a control function
based on a determination that the at least one policy
applies to the asset.
The Examiner relies upon the following prior art:
Schreder US 5,504,482 Apr. 2, 1996
Watts US 2001/0003835 A1 Jun. 14, 2001
Spreisterbach US 2003/0148775 A1 Aug. 7, 2003
Alam US 2004/0193707 A1 Sep. 30, 2004
Brown US 6,845,410 B1 Jan. 18, 2005
Claims 1–8, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Alam, Watts, and Spreisterbach.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Alam, Watts, Spreisterbach, and Schreder.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Alam, Watts, Spreisterbach, and Brown.
Claims 13–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Brown, Watts, and Spreisterbach .
Claims 21–23 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Alam, Watts, Spreisterbach, and Brown.
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ISSUES
The issues of obviousness turn on whether there is an articulated reason
with rational underpinning for combining the pallet locating function of
Spreisterbach with the intelligent component locating function of Alam.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Schreder
01. Schreder is directed to methods to provide a comprehensive
vehicular route guidance, control, and safety system for reducing
travel time, pollution emissions, traffic accidents and road side
emergency care response time. Schreder 1:13–18.
Watts
02. Watts is directed to an environment manager for computing and
control devices. Watts para. 6. Watts describes processing
circuitry for receiving information on environmental factors from
detection circuitry. Watts para. 12. The system uses informant
programs that communicate between themselves and an
environment manager to determine environmental changes. Watts
para. 40. For example, an informant determines that the computer
is being run on an airplane and shuts down unnecessary systems
such as modem or network hardware. Watts para. 97.
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Alam
03. Alam is directed to the location awareness of computer systems
and computer devices. Alam para. 1. Alam describes a method
that receives a request for a location of a computing device,
acquires data associated with the location detecting devices,
reconciles the data, and generates a location for the computing
device. Alam para. 5. The system uses resolvers to translate
device specific location information to rich location information
using data sources to infer new data from existing data. Alam
para. 38. Resolvers follow a policy that determines whether
resolvers can or should contact sources for data. Alam paras. 79
and 213. For example, mobile users can search through resources
available to the user at each site based on location information.
Alam paras. 60–61. If one or more printer networks are
configured to provide a list of printers and their locations to an
application, the application can combine the data to provide a list
of printers that are nearby. Alam para. 61.
Brown
04. Brown is directed to the control and communication of highly
scalable and massively parallel computing systems. Brown 1:16–
19. Brown describes a system that uses controllers to
automatically determine the configuration of the system. Brown
1:66–67 and 2:1–2. Each computer unit is referred to as a “brick”
as a building block of the system. Brown 4:56–60. Bricks are
aggregated and controlled by controllers. Brown 5:11–13. First
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level controllers (“L1”) are physically mounted in the same
housing as a brick. Brown 5:19–22. The L1 controller interfaces
with the main processing, routing, expansion and/or input/output
functionality of the brick. Brown 5:44–49. The L1 controller
further monitors and controls LEDs that indicate specific
operating or failure conditions. Brown 6:40–44.
Spreisterbach1
05. Spreisterbach is directed to the integration of context information
in mobile device applications, and more specifically, to the use of
geographical context information to customize a user interface for
a mobile device, such as a mobile phone or wireless personal
digital assistant (PDA). Spreisterbach para. 2.
06. Spreisterbach describes a need for techniques to simplify user
interfaces for mobile devices. One strategy is to provide more
intelligent, context-aware applications that can tailor data entry
and user interfaces based on various available information, such
as, a user's habits, the location of the device, and available related
data. Spreisterbach para. 18.
07. Spreisterbach describes a location context-aware system that
integrates geographical contextual information. The system
includes a mobile device, a location service operable to determine
a location of the mobile device, a mobile application server
coupled to the mobile device providing a business process
application, and a geographical information service application
coupled to the mobile application server. This location
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information and business process data from the geographical
information service application are used to modify a user interface
provided by the business process application. Spreisterbach para.
11.
08. The environment describes the physical and social surrounding of
the user, such as, the current location, activities in the
environment, and other external properties like temperature and
humidity. Environment context information may be obtained
through devices such as radio frequency identification tags
(RFIDs), radio frequency or infrared beacons, and the global
positioning system (GPS). Spreisterbach para. 31.
09. Radio frequency identification tags (RFIDs) provide a mechanism
for objects to transmit information about themselves. In the sales
representative application, a system could be provided such that
product numbers are obtained by placing the mobile device near a
RFID–tagged product. Spreisterbach para. 72.
10. A warehouse may be made take advantage of location context
information by placing adding RFID tags to each pallet, as well as
a tag reader and a location–aware computer system with backend
integration to each forklift. When a new pallet is filled, the type
of bottles, the production date, and the pallet's RFID tag are stored
in a warehouse management system. Every time a forklift picks
up a pallet, the pallet’s RFID tag is read and a forklift–mounted
computer shows the driver where to place the pallet. When the
forklift drops the pallet, the exact position of the pallet is stored by
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the system. Every time a pallet is picked up or dropped, the exact
location and the pallet ID stored within the pallet’s RFID are
required. This may be accomplished by integrating two additional
sensor modules into the system. One module is responsible for
processing the location data, and the other responsible for reading
the data from the RFID and triggering further processing of the
gained information. Spreisterbach paras. 74–75.
ANALYSIS
This is the second time this application has come for appeal. The claims
are markedly more narrow than the prior appeal, limitations regarding
placement in slots in a rack, receiving such slot information, and using that
slot information having been added to claim 1. Although the prior panel
affirmed the Examiner on the earlier claims, the art then applied would not
be sufficient to make a prima facie case of obviousness against the instant
claims, and so the Examiner also now applies Spriestersbach.
We are persuaded by the Appellants’ argument that
it would not have been obvious to combine the pallet location
disclosed in Spriestersbach with the determination of whether a
computer is located on an airplane disclosed by Watts. A
laptop brought on a plane by a user would not be stored on a
pallet, so the pallet location determination of Spriestersbach is
not applicable to Watts and does not achieve the objective of
Watts to shut down modem and networking hardware so as not
to interfere with the airplane’s electronic systems. Secondly,
the function of the system of Spriestersbach is to determine the
position of the palette and then a web page is transmitted to the
forklift computer to indicate where to move the palette. See
Spriestersbach, paragraph 76. Watts is unconcerned with
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determining where to move a palette but instead is concerned
with improving the user’s interaction with their computer. See
Watts, Abstract. Thus, there is simply no reason to combine the
palette location system of Spriestersbach with Watts. The
examiner states that it would have been obvious to combine the
elements of Alam/Watts with Spriestersbach because the
claimed invention is merely a combination of old elements and
the combination merely would have performed the same
function as it did separately with predictable results. The
examiner's statement is conclusory and unsupported by any
facts or reasoning and thus is Improper. Therefore[,] the
rejection of claim 1 should be reversed because the Examiner
has not provided the necessary “articulated reasoning with
some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (emphasis added).
App. Br. 21–22. The issue in the prior appeal was simply whether the
art showed it was predictable to perform a control function based on a
determination involving asset location that the at least one policy applies to
the asset. The art described intelligent asset discovery capability that was
then used to exercise the assets. The intelligence inherent in the assets so
controlled provided the means for locating and identifying the assets. The
reference added, Spriestersbach, relies on RFID tags for identification and
generic location tracking equipment for locating essentially unintelligent
assets on pallets.
The Examiner does not provide any reason for applying the intelligent
asset locating services to Spriestersbach’s pallets, instead simply stating that
“the claimed invention is merely a combination of old elements, and in the
combination each element merely would have performed the same function
as it did separately with predictable results.” Final Act. 5. This is akin to
combining a software compiler accelerator with an automobile accelerator.
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The components of each are known and perform according to their function,
but the two contexts are so disparate it makes little engineering sense to
combine.

For example Section 2143 of the MPEP is drawn toward exemplifying
how to meet basic requirements of a prima facie case of obviousness. The
first example, viz. § 2143(A), is “[c]ombining prior art elements according
to known methods to yield predictable results.” This example comes from
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The context for this
further stated that where an application
claims a structure already known in the prior art that is altered
by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable
result.
Id. 550 U.S. at 416 (citing United States v. Adams, 383 U.S. 50–51
(1966)) and that where
[t]he subject matter of the patent [] was a device combining two
pre-existing elements [and] did not create some new synergy:
The [one element] functioned just as [it] was expected to
function; and [other element] did the same[, the] two in
combination did no more than they would in separate,
sequential operation. In those circumstances, “while the
combination of old elements performed a useful function, it
added nothing to the nature and quality of the [device] already
patented,” and the patent failed under § 103.
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Id. 550 U.S. at 416–17 (citing Anderson’s-Black Rock, Inc. v. Pavement
Salvage Co., 396 U.S. 57 at 62 (footnote omitted)). But the Court caveated
this with
[a]s is clear from cases such as Adams, a patent composed of
several elements is not proved obvious merely by
demonstrating that each of its elements was, independently,
known in the prior art. Although common sense directs one to
look with care at a patent application that claims as innovation
the combination of two known devices according to their
established functions, it can be important to identify a reason
that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed
new invention does. This is so because inventions in most, if
not all, instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity will be
combinations of what, in some sense, is already known.
id. 550 U.S. at 418–419. Even MPEP 2143(A) says that “it can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” (citing KSR at 418).
The context for MPEP § 2143(A) is a single prior art element (an
automobile accelerator in KSR) that has plural other prior art elements each
individually combined with it (an electronic control and a spatial mechanical
adjustment in KSR). The Court held that the prior known relationship
between the accelerator and each of the electronic control and spatial
adjustment was sufficient reason to combine them for their already known
functions with that same accelerator prior art element.
MPEP § 2143(A) uses the phrase “according to known methods”
purposefully because it is repeating the Court’s reasoning that it was those
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known prior methods of combining the accelerator with an electronic control
and a spatial adjustment individually that tied down the motivation for
combining both the electronic control and spatial adjustment with the
accelerator.
MPEP 2143(A) does not suggest that simply combining plural prior art
elements that are not shown as having been known as being predictable to
combine before in some fashion is itself predictable just because the
combination does no more than provide the known functions. This is
precisely the type of hindsight reasoning KSR cautioned against.
All of the rejections apply Spreisterbach in this manner, and so are
deficient for the same reason.
CONCLUSIONS OF LAW
The rejection of claims 1–8, 10, and 11 under 35 U.S.C. § 103(a) as
unpatentable over Alam, Watts, and Spreisterbach is improper.
The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Alam, Watts, Spreisterbach, and Schreder is improper.
The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable over
Alam, Watts, Spreisterbach, and Brown is improper.
The rejection of claims 13–20 under 35 U.S.C. § 103(a) as unpatentable
over Brown, Watts, and Spreisterbach is improper.
The rejection of claims 21–23 under 35 U.S.C. § 103(a) as unpatentable
over Alam, Watts, Spreisterbach, and Brown is improper.
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DECISION
The rejection of claims 1–23 is REVERSED.

REVERSED
rvb