Ex Parte Brown

Patent Trial and Appeal Board

Jan 26, 2015

12464729 (P.T.A.B. Jan. 26, 2015)

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.
12/464,729 05/12/2009 James Steven Brown FLORA.7900 2151
77037 7590 01/26/2015
The Noblitt Group, PLLC (Floratech)
8800 North Gainey Center Drive
Suite 279
Scottsdale, AZ 85258
EXAMINER
HAQ, NAEEM U
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
01/26/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMES STEVEN BROWN
____________________

Appeal 2012-008003
Application 12/464,729
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, PHILIP J. HOFFMANN, and
SCOTT C. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1–21, which are all of the pending claims.1 We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.

1 Appellant states that the real party in interest is International Flora
Technologies Ltd. Appeal Br. 2.
Appeal 2012-008003
Application 12/464,729

2
Claimed Subject Matter
The claims are directed to a system and method for providing
information about a product to a customer possessing a sample of that
product. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method executable by a server system for
providing information associated with a
particular product to a customer possessing a
particular product, the method comprising:
establishing a connection between the server
system and a client system operated by
the customer over a network;
receiving, by the server system via the
connection, an identifier that is manually
entered at the client system by the
customer, wherein the identifier is
provided with the particular product and
wherein the identifier uniquely identities
the particular product in the customer’s
possession;
obtaining the information associated with
the particular product in the customer's
possession at the server system based
upon the received identifier, wherein the
information comprises safety information
and usage information that are both
associated with the particular product in
the customer’s possession; and
providing the information associated with
the particular product in the customer’s
possession from the server system to the
customer via the network to thereby allow
the customer to use the particular product
that is in the customer’s possession.
Appeal 2012-008003
Application 12/464,729

3
Rejections
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Charlton US 6,161,052 Dec. 12, 2000
Matsumori US 6,854,656 B2 Feb. 15, 2005
Schuller US 6,882,980 B1 Apr. 19, 2005
Inzinna US 2006/0033907 A1 Feb. 16, 2006
Cardin US 2008/0126425 A1 May 29, 2008

Claims 1, 4–10, 16–19, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schuller and Matsumori. Ans. 6.
Claims 2, 3, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schuller, Matsumori, and Charlton. Ans. 10.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schuller, Matsumori, and Inzinna. Ans. 11.
Claims 12–15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schuller, Matsumori, Charlton, and Cardin. Ans. 12.

ANALYSIS
We have reviewed all of Appellant’s arguments that the Examiner
erred in rejecting the claims on appeal. For the reasons set forth below, we
are not persuaded that the Examiner erred in rejecting claims 1–21.
Appellant argues that the Examiner erred in finding that the teachings
of Schuller and Matsumori could be combined by known methods such that
each element would perform the same function as it did separately. Appeal
Br. 16. In particular, Appellant argues that the method of Schuller is
Appeal 2012-008003
Application 12/464,729

4
designed to be used with pre-production products “that are not in the
customer’s possession,” and is specifically “drawn to avoiding the need for
the purchaser to obtain an actual sample of the product before placing an
order.” Id. Thus, Appellant reasons, combining Schuller with the teaching
in Matsumori of retrieving information about a product that is already in a
customer’s possession would require the combined elements to perform
different functions than they did previously. Id. at 18.
Schuller teaches or suggests that the disclosed method is intended to
be performed before the customer actually uses a product. See, e.g., Schuller
1:30–36. However, Appellant does not identify any teaching or suggestion
that the method of Schuller can only be used only with pre-production
products, or products that are not yet in the customer’s possession. For
example, Schuller discloses an embodiment in which the customer uses a
client computer to “communicate a product identifier to the server,” and the
server “quer[ies] a database to retrieve chemical product data” that is then
sent back to the customer. See id. 2:7–10. The fact that the customer
requests data by using a product identifier at least suggests that the
corresponding product is a known, commercially available product that
could already be in the customer’s possession. Appellant cites no evidence
that one of ordinary skill in the art would understand this embodiment as
being limited to pre-production products and/or products not already in the
customer’s possession. Thus, we are not persuaded that using the method of
Schuller to obtain data on a product that is already in the customer’s
possession, as taught by Matsumori, would result in a combination in which
the relevant elements of the prior art references perform different functions
than they did separately.
Appeal 2012-008003
Application 12/464,729

5
Appellant also argues that combining Schuller and Matsumori would
change the principle of operation of Schuller, and that Schuller teaches away
from the modification proposed by the Examiner. Appeal Br. 18–20. These
augments are not persuasive because they are also based on the premise that
the method of Schuller is only applicable to pre-production products. Id.
Appellant has not put forth any persuasive evidence that using the method of
Schuller to obtain data on a product that is already in the customer’s
possession would change the principle of operation of Schuller. Appellant
has similarly failed to put forth any persuasive evidence that Schuller
teaches away from using the disclosed method to obtain data on a product
that is already in the customer’s possession.
Appellant further argues that the Examiner has failed to demonstrate
why one of ordinary skill in the art would have been motivated to combine
the “UPC scanner for off the shelf products” of Matsumori with the system
of Schuller. Appeal Br. 20. In particular, Appellant argues that one of
ordinary skill would recognize that “simply combining a system that
provides test data for new formulations with a scanning system that retrieves
generic product data” would not result in the claimed system. Id. This
argument is not persuasive because it also relies on Appellant’s assertion
that the method of Schuller is limited to pre-production products that could
not be in a customer’s possession.
Appellant additionally argues that the Examiner has relied on
impermissible hindsight and has not “provid[ed] any detail as to how the
cited references suggest their combination” Appeal Br. 20. The Supreme
Court, however, has made clear that the examiner’s rationale for combining
references need not be found in the references themselves. KSR Int’l Co. v.
Appeal 2012-008003
Application 12/464,729

6
Teleflex Inc., 550 U.S. 398, 420 (2007). Appellant also fails to identify any
persuasive evidence that the Examiner’s stated rationale—that a customer
would desire to visually inspect a product, such as the paint disclosed in
Schuller, before obtaining detailed information on that product (see Ans. 7;
Schuller 2:12–13)—is based on impermissible hindsight.
We have reviewed Appellant’s remaining arguments, and find them to
be unpersuasive because they are not supported by persuasive evidence or
technical reasoning.
For the foregoing reasons, we sustain the Examiner’s decision
rejecting claims 1–21 as obvious and unpatentable under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1–21 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)(1)(iv).

AFFIRMED

rvb