Ex Parte Carrender et alDownload PDFPatent Trial and Appeal BoardMay 29, 201510712983 (P.T.A.B. May. 29, 2015) Copy Citation 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. 10/712,983 11/13/2003 Curtis Lee Carrender E-1879 (130105.422) 7339 36977 7590 06/01/2015 SEED INTELLECTUAL PROPERTY LAW GROUP PLLC 701 FIFTH AVENUE, SUITE 5400 SEATTLE, WA 98104-7092 EXAMINER ADE, OGER GARCIA ART UNIT PAPER NUMBER 3687 MAIL DATE DELIVERY MODE 06/01/2015 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 CURTIS LEE CARRENDER, RONALD W. GILBERT, JEFFREY W. SCOTT, and DAVID A. CLARK ____________ Appeal 2012-009698 Application 10/712,983 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, ROBERT L. KINDER, and BRADLEY B. BAYAT, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 3, 5–9, and 11–15. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We AFFIRM. 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed Jan. 25, 2012), Reply Brief (“Reply Br.,” filed June 15, 2012), and the Examiner’s Answer (“Ans.,” mailed Apr. 17, 2012). 2Appellants identify the real party in interest as Battelle Memorial Institute (App. Br. 1). Appeal 2012-009698 Application 10/712,983 2 CLAIMED INVENTION Appellants’ claimed invention relates to “a system and method for delivering articles to a delivery point, including the tracking and routing of the articles from a point of origin to the delivery point” (Spec. 1:10–12). Claim 1, reproduced below, is representative of the subject matter on appeal (App. Br., Claims Appendix). 1. A device for use in delivering articles in conjunction with one or more encoders and with a plurality of transceivers along a delivery route, the transceivers configured to process information stored in the device by the encoders to both sort and route an article associated with the device during delivery, comprising: a passive portable, disposable electromagnetic transponder formed on a flexible substrate and configured to be applied to the associated article and further configured to store information regarding at least delivery cost, routing information, and purchase price of the associated article in response to electromagnetic signals received from one or more of the encoders and to communicate the stored information to the transceivers as the transponder and the associated article move along the delivery route upon query from the transceivers, the stored information received as control signals to control sorting and routing of the article along the delivery route without reference to a database linked to the transceivers. REJECTIONS The following rejections are before us for review. Claims 1, 3, 5–9, and 11–15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Issacman (US 6,127,928, iss. Oct. 3, 2000), Streetman (US 2004/0054570 A1, pub. Mar. 18, 2004), Kato (US 2003/0014143 A1, Appeal 2012-009698 Application 10/712,983 3 pub. Jan. 16, 2003), and De La Huerga (US 2002/0038392 A1, pub. Mar. 28, 2002).3 Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Issacman, Streetman, Kato, and Swift (US 2003/0187796 A1, pub. Oct. 2, 2003). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.4 Appellants’ Contentions Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: 1) “Nowhere do Issacman et al. address the aspect of controlling the routing and delivery of objects” (App. Br. 10). Appellants further contend that “if one were to combine Streetman with Issacman as the Examiner suggests, the combination does not teach or suggest the elements of the claim” (Reply Br. 5). 2) Issacman requires modulating a signal back to a host transceiver, “not to the local exciter” (App. Br. 10, Reply Br. 5). 3) “Issacman et al. provide no teaching or suggestion of using transceivers to sort and route articles for delivery” (App. Br. 10). 3 We note that although the statement of the rejection does not include the Swift reference, both the Examiner (Ans. 11–12) and Appellants (App. Br. 13) acknowledge that Swift is relied upon in rejecting claims 1, 3, 5–9, and 11–15. 4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2012-009698 Application 10/712,983 4 4) “Nowhere does Streetman reference RFID transponders nor does Streetman reference sorting and routing as the article moves along a delivery route” (App. Br. 11, Reply Br. 5). 5) Kato requires a database because “[t]he label readers (304) are directly controlled by the host computer (310) and the instructions stored in a database on the computer, and do not rely solely on the information stored in the labels (20) on the packages” (Reply Br. 6, see also App. Br. 12). 6) “[O]ne of ordinary skill would have no reason to use these descriptions from Streetman as suggested by the Examiner in an attempt to modify Issacman et al.’s document location and tracking system because Issacman et al. are not concerned with document delivery, only document location” (App. Br 12). 7) “Even if one were motivated to combine Kato with Streetman and Issacman et al. as the Examiner suggests, the combination would contravene the express purpose of Issacman et al. to provide a system ‘which is substantially simpler and less complex than present RFID tracking systems’” (App. Br. 12). 8) Appellants also argue that the combined references do not disclose “a purchase price stored in the transponder” (App. Br. 13). ANALYSIS Independent claim 1 We have reviewed the Examiner’s rejections in light of Appellants’ arguments (Appeal Brief and Reply Brief) that the Examiner has erred. As to Appellants’ above contention 1, we are not persuaded of error because the Examiner does not rely solely on Issacman, but rather on the combination of Issacman and Streetman to control routing and delivery of Appeal 2012-009698 Application 10/712,983 5 articles (see Ans. 13–14). Appellants’ arguments fail to adequately address this combination. As to Appellants’ above contention 2, we are not persuaded of error because the Examiner relies on Kato for disclosing the limitation “without reference to a database linked to the transceivers,” for communication between a transponder and a reader (see Ans. 6). As to Appellants’ above contention 3, Appellants attack Issacman individually and fail to address the Examiner’s actual rejection to establish an insufficiency in the combined teachings of the references. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As to Appellants’ above contention 4, Appellants similarly as discussed in contention 3 above, attack Streetman individually and fail to address the Examiner’s actual rejection to establish an insufficiency in the combined teachings of the references (see Ans. 13–15). As to Appellants’ above contention 5, although we agree that the embodiment of Kato cited by Appellants requires a host computer to communicate with each transceiver, we are not persuaded of error because the embodiment cited by the Examiner does not require a database linked to the transceivers (Ans. 6–7). Kato in paragraphs 21 and 22 discloses: Label reader 62, which may be battery powered, transmits a query signal to label 20 for reading the information therein. Label 20 contains a transmitter 22 and a memory for storing the information input by label writer 18. In the preferred embodiment, label 20 has no controller, processor or microprocessor of any kind, and also has no battery, solar cell or any other kind of energy source. Label 20 has the capability Appeal 2012-009698 Application 10/712,983 6 of using the energy of the query signal from label reader 62 or other sources for fetching the information stored in its memory and transmitting the information so fetched by transmitter 22 to the label reader 62. Label 20 may comprise an integrated circuit with memory, an antenna in the form of a coil, so that information may be recorded in the memory, fetched in response to query signals without its own energy source and transmitted by means of the coil… In one embodiment, label reader 62 sends radio frequency query signals to label 20 and label 20 responds by transmitting radio frequency (RF) signals containing the information stored in label 20 to reader 62, using the energy of the query signals from reader 62. The label reader 62 contains a transceiver which transmits the query signals and receives information from the label 20 through wireless communication such as RF signals. As indicated above by Kato, “label reader 62 contains a transceiver which transmits the query signals and receives information from the label 20 through wireless communication such as RF signals,” without requiring a database, and indeed, by relying solely on information from the label. As to Appellants’ above contention 6, we are not persuaded that one of ordinary skill would need a reason to use the descriptions from Streetman in an attempt to modify Issacman’s document location and tracking system because Issacman is not concerned with document delivery, but rather document location. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appeal 2012-009698 Application 10/712,983 7 As to Appellants’ above contention 7, we disagree. We see nothing that contravenes the express purpose of Issacman. Additionally, Appellants have not presented evidence or argument sufficient to show that combining the prior art was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19). Nor have Appellants presented persuasive evidence or argument that any of the appealed claims’ incorporations of known limitations yielded more than expected results. As to Appellants’ above contention 8 that the prior art does not teach a purchase price stored in a transponder, we disagree. The Examiner relied upon Kato as teaching storing information in a transponder (Ans. 7, citing Kato ¶ 7) and Swift for disclosing processing transaction information via a transponder device (see Swift, Abstract). Appellants fail to address the insufficiency of the combination as relied on by the Examiner. Accordingly, we sustain the rejection of claim 1. Independent claims 3, 5, and 8 Independent claim 3, requires, inter alia, “at least one transceiver is configured to communicate with a predetermined group of labels such that the deliverables associated with the predetermined group of labels are sorted and routed to a predetermined delivery path and all other deliverables are routed to a default path” (App. Br., Claims App’x). Appellants argue that the combination of Issacman, Streetman, Kato, and De La Huerga fails to teach or suggest the above recited limitation of claim 3 (Reply Br. 8–9). In particular, Appellants contend that label readers in Kato are controlled by a host computer and the tags in De La Huerga Appeal 2012-009698 Application 10/712,983 8 “store specific information about administration of a fluid through an IV bag” (id. at 9). We are not persuaded by Appellants’ argument because we disagree that Kato requires a host computer as explained above for contention 5. We also disagree that the combination of the references would fail to teach the above recited limitation because the information stored in the tag of De La Huerga is not the same information recited in the claim language. The question under 35 U.S.C. § 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made. We also note that Appellants have merely made conclusory statements that the combination does not render the claimed invention (see App. Br. 14), rather than addressing any insufficiency or error with Examiner’s rationale and reasoning for the combination as presented in the rejection (Ans. 9–10).5 Thus, the rejection of claims 3, 5, and 8 under 35 U.S.C. § 103(a) is sustained. Claims 6, 7, 9, and 11 With regards to claims 6, 7, 9, and 11, Appellants chose to argue the patentability of these claims as a group under claims 3, 5, and 8 in their original brief (App. Br. 14). Appellants indicated “dependent claims 6, 7, 9, and 11 are allowable for the features recited therein as well as for the reasons why their respective independent claims are allowable” (id. at 15). In the Reply Brief, however, Appellants argue the separate patentability of claims 6, 7, 9, and 11 (Reply Br. 9–10.) These arguments, which were presented for the first time in the Reply Brief without showing 5 We note that although the body of the rejection addresses limitations of claim 3, the rejection is mislabeled as claim 11 (see Ans. 9). Appeal 2012-009698 Application 10/712,983 9 good cause, are untimely and will not be considered. In addition, by not presenting separate arguments thereto in the original brief, Appellants elected to have claims 6, 7, 9, and 11 stand or fall with independent claims 3, 5, and 8. Claim 12 With respect to claim 12, inasmuch as Appellants rely on arguments presented with respect to claims 1, 3, 5, and 8 (App. Br. 15, Reply Br. 11), we sustain the rejection of claim 12 for the reasons set forth above. CONCLUSIONS OF LAW We conclude that Appellants have not shown that the Examiner erred in rejecting the claims as listed in the Rejections section above. DECISION The Examiner’s rejections of claims 1, 3, 5–9, and 11–15 are 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)(1)(iv). AFFIRMED mls Copy with citationCopy as parenthetical citation