Ex Parte Catan

Board of Patent Appeals and Interferences

Mar 17, 2008

09823563 (B.P.A.I. Mar. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CAROLYN RAMSEY CATAN
____________

Appeal 2007-4077
Application 09/823,563
Technology Center 2100
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Decided: March 17, 2008
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Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
JEAN R. HOMERE, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-3 and 5-17. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
Appeal 2007-4077
Application 09/823,563

Representative claim 16 reads as follows:

16. A method of identifying a resource from a machine-readable
label (MRL) reader, said method comprising the steps of:
scanning an MRL associated with a first object with an MRL reader
associated with a second object;
matching resources from a resource base based on a result of said step
of scanning; and
when a result of said step of scanning indicates a poor match,
outputting to a user-interface, a message suggesting to a user to use a
different one of said first and second objects.

The Examiner relies on the following references as evidence of
unpatentability.
Gazdzinski 6,615,175 B1 Sep. 2, 2003

Claims 1-3 and 5-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gazdzinski and “Official Notice.”
Claim 4 has been canceled.
In the rejection of claim 16 over Gazdzinski, the Examiner finds that
Gazdzinski “does not explicitly teach a machine-readable label (MRL).”
(Ans. 8.) We disagree.
Machine-readable labels include, inter alia, bar codes, smart cards,
and radio-frequency identifier (RFID) tags. (Spec. 1: 5-11.) Gazdzinski
describes a “smart” elevator system that may contain an RFID
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Application 09/823,563

interrogator/reader for reading RFID tags carried by passengers on the
elevator. Gazdzinski Abstract.
The rejection also asserts “Official Notice” of “both the concept and
advantages” of providing RFID technology, which is apparently considered
to provide scanning from greater distances than bar code scanning. (Ans. 8.)
As noted, however, Gazdzinski describes using RFID technology. The
reference does not appear to discuss bar code scanning.
In any event, the rejection of claim 16 appears to rely on material in
column 9 of the reference for the “matching resources” step, and refers to a
scanning result indicating a “poor match” in columns 3, 4, and 9. (See Ans.
7-8.)
The material in Gazdzinski at columns 3 and 4 relates to data
terminals in the smart elevator from which a user may download data to a
personal electronic device (PED). In Gazdzinski, a user may download
information to a PED (e.g., col. 11, l. 28 - col. 12, l. 22). The configuration
of the data to be downloaded may be determined based on the RFID tag of
the user (Fig. 15). Gazdzinski, col. 12, ll. 17-22.
The “matching” or search described in column 9 of the reference,
however, is not related to scanning of an RFID tag. Gazdzinski describes
the smart elevator as including a building directory sub-system by which, in
response to voice recognition or input devices such as a keypad 116 and
touch display 113, a listing of building occupants may be retrieved from a
data file. Col. 8, l. 20 - col. 10, l. 21; Figs. 2, 4.
Perhaps the rejection of claim 16 proposes to combine the MRL
scanning, as described in column 12 of the reference, with the search
described in column 9 of the reference. Or perhaps the rejection is based on
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Application 09/823,563

the search described in column 9, but holding that it would have been
obvious to use the described search with RFID tag scanning.
In any case, we agree with Appellant that the prima facie obviousness
of claim 16 has not been established on this record. The Examiner has not
provided a persuasive explanation as to why the artisan would have used the
building directory search sub-system described by Gazdzinski with any kind
of MRL scanning. In a rejection on obviousness grounds, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006).
We do not find any reason in the reference itself to combine the
column 9 search system with the RFID scanning. The RFID tags
contemplated by Gazdzinski appear to be unique identifiers that can be used
for building access and security. Gazdzinski col. 18, l. 14 - col. 19, l. 47.
On the other hand, outputting a message to a user interface in the case of a
“poor match,” which Gazdzinski may be considered to describe in column 9,
does not result from scanning an MRL but from verbal or tactile user input,
in helping the user arrive at the search target.
Each of the other independent claims (1, 6, 13, and 17) requires a
combination of MRL scanning and searching that the rejection has not
shown to be unpatentable under § 103.
The decision of the Examiner is reversed.

REVERSED

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Appeal 2007-4077
Application 09/823,563

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