Ex Parte Chermesino

Board of Patent Appeals and Interferences

Dec 3, 2008

10756632 (B.P.A.I. Dec. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN CHERMESINO
____________

Appeal 2008-3759
Application 10/756,632
Technology Center 3600
____________

Decided: December 3, 2008
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John Chermesino (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-7, 9-19, 21, and 22. Claims 8 and 20 have
been cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
“Embodiments of the present invention relate to retail purchase.
More specifically, embodiments of the present invention relate to a self-
service shopping environment.” (Specification 1:4-6.)
Due to the recognized difficulties with current
self-checkout systems, most self-checkout lines are
manned by at least one employee who advises
customers what to do and helps fix any errors or
issues as they arise.
Accordingly, a more efficient way of
progressing a customer through a shopping
experience is desirable.

(Specification 2:20-25.)
In general, embodiments of the present
invention allow customers to buy an item or items at
several locations throughout a store without having
to proceed to a central checkout line. In one
embodiment, a customer logs in to a computing
system prior to shopping and receives a mobile
personal identifier. The system then recognizes the
customer throughout the store. When the customer
is ready to purchase an item, the customer scans an
item at one of the plurality of scanning kiosks
located throughout the store. Prior to, or during the
scanning of the item, the scanning kiosk will also
receive a transfer of data from the mobile personal
identifier carried by the

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jun. 21, 2007) and Reply Brief (“Reply Br.,” filed Nov. 16,
2007), and the Examiner’s Answer (“Answer,” mailed Sep. 13, 2007).
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customer. The mobile personal identifier will
provide the scanning kiosk with the appropriate data
necessary to perform a purchase (e.g., payment
information). In one embodiment, if the customer
has a plurality of items to shop for and desires to
defer payment until the shopping is complete, the
system will also maintain an electronic shopping cart
for the customer. When a customer completes the
shopping and has scanned and accepted all items at
any or all of the plurality of scanning kiosks, and
completes the purchase, the customer then returns
the mobile personal identifier and departs the store
with goods in hand.

(Specification 5:17-34.)
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for self-service shopping, said
method comprising:
receiving a user profile at a mobile personal
identifier, wherein said mobile personal
identifier is a user’s personal handheld mobile
device;
receiving to said mobile personal identifier
directions to an item;
providing an alert from said mobile personal
identifier when said mobile personal identifier has
reached the location of said item;
receiving an item description at one of a plurality
of second computing systems located throughout a
shopping environment;
receiving said user profile at said one of said
second computing systems from said mobile
personal identifier; and
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performing a transaction utilizing said user profile
and said item description at said one of said second
computing systems, wherein said transaction is a
self-service shopping transaction.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Matsumori
O’Hagan
Tracy
Fano
US 6,179,206 B1
US 6,314,406 B1
US 5,979,757
US 6,317,718 B1
Jan. 30, 2001
Nov. 6, 2001
Nov. 9, 1999
Nov. 13, 2001

New Plastic-Payment System Arrives, 6 CTS Accounting Software
Survey 7 (Oct. 13, 1987) (Hereinafter referred to as “New System”).

The following rejections are before us for review:
1. Claims 1, 9-13, 15, 16, 17, 19, and 21 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Matsumori and O’Hagan.
2. Claims 2, 4-7, 14, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Matsumori, O’Hagan, and Tracy.
3. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Matsumori, O’Hagan, and New System.
4. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Matsumori, O’Hagan, and Fano.

ISSUES
The issue is whether the cited prior art suggests or discloses the
claimed “personal handheld mobile device.” The issue turns on the meaning
to be given the “personal handheld mobile device.” Does the claimed
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“personal handheld mobile device” cover the customer ID card described in
Matsumori?

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. Claim 1 calls for a “user’s personal handheld mobile device.”
2. The Specification does not provide a definition for “user’s personal
handheld mobile device.”
3. The ordinary and customary meaning of “user” is “[o]ne that
uses.” (See The American Heritage® Dictionary of the English
Language: Fourth Edition, 2000 (www. Bartleby.com.)(Entry for
“user.”)
4. The ordinary and customary meaning of “personal” is “[o]f or
relating to a particular person.” (See The American Heritage®
Dictionary of the English Language: Fourth Edition, 2000 (www.
Bartleby.com.)(Entry for “personal.”)
5. The ordinary and customary meaning of “handheld” is “[c]ompact
enough to be used or operated while being held in the hand or
hands.” (See The American Heritage® Dictionary of the English
Language: Fourth Edition, 2000 (www. Bartleby.com.)(Entry for
“hand-held.”)
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6. The ordinary and customary meaning of “mobile” is “[c]apable of
moving or of being moved readily from place to place.” (See The
American Heritage® Dictionary of the English Language: Fourth
Edition, 2000 (www. Bartleby.com.)(Entry for “mobile.”)
7. The ordinary and customary meaning of “device” is “[a]
contrivance or an invention serving a particular purpose, especially
a machine used to perform one or more relatively simple tasks.”
(See The American Heritage® Dictionary of the English
Language: Fourth Edition, 2000 (www. Bartleby.com.)(Entry for
“device.”)
8. There is no evidence in the record showing what those of ordinary
skill in the art would understand the phrase “user’s personal
handheld mobile device” to mean.
9. There is no evidence on the record that one of ordinary skill in the
art would attribute to the phrase “user’s personal handheld mobile
device” a meaning different from the one the Examiner has given
it.
The scope and content of the prior art
10. Matsumori relates to an electronic shopping system employing a
customer ID card.
11. O’Hagan relates to a customer information network.
12. Tracy relates to a system for presenting item information using a
portable data terminal.
13. Fano relates to a system using PDA and GPS enabled information
gathering agent to create customized offer information.
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14. New System relates to a method of making transactions involving
the use of a card.
Any differences between the claimed subject matter and the prior art
15. The claimed subject matter appears to combine in a single method
steps and elements separately disclosed in the cited prior art.
The level of skill in the art
16. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of self service shopping. We will
therefore consider the cited prior art as representative of the level
of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings
on the level of skill in the art does not give rise to reversible error
‘where the prior art itself reflects an appropriate level and a need
for testimony is not shown’”) (Quoting Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).
Secondary considerations
17. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
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[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.
367 F.3d at 1364.

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court
in Graham further noted that evidence of secondary considerations “might
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be utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented.” 383 U.S. at 17-18.

ANALYSIS
The rejection of claim 1, 9-13, 15, 16, 17, 19, and 21 under § 103(a) as
being unpatentable over Matsumori and O’Hagan.
The Appellant argued claims 1, 9-13, 15, 16, 17, 19, and 21 as a group
(App. Br. 8-11). We select claim 1 as the representative claim for this
group, and the remaining claims 9-13, 15, 16, 17, 19, and 21 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellant makes a single argument.
Appellant respectfully submits that the “user’s
personal handheld mobile device” words of the
claim must be given their plain meaning. As such,
the words of the present Claims 1, 9 and 17 plainly
and clearly teach away from a customer loyalty
club card, a customer ID card, a driver's license, a
passport or any other form of ID.

(App. Br. 10.)
The Examiner relied on the disclosures at col. 3, ll. 20-24 and 48-56,
col. 4, ll. 13-16, col. 5, ll. 17-25 of Matsumori as evidence that Matsumori
described the claimed “user’s personal handheld mobile device.” (Answer
4.) These disclosures describe a customer ID card.
Accordingly, the Examiner has construed the claim to cover the
Matsumori’s device and Appellant is challenging that. Thus, the issue is
whether, after giving claim 1 the broadest reasonable construction in light of
the Specification as it would be interpreted by one of ordinary skill in the art
at the time the application was filed, the method of claim 1 broadly covers
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using a “user’s personal handheld mobile device” of the kind disclosed in
Matsumori. We have carefully reviewed the record and agree with the
Examiner that Matsumori’s customer ID card meets the claimed “user’s
personal handheld mobile device.” We disagree that the record supports the
Appellant’s view that the claimed method teaches away from Matsumori
when the claim phrase “user’s personal handheld mobile device” is given its
plain meaning.
The Appellant correctly argues that terms in a claim must be
considered and given their plain meaning and must be interpreted as they
would be understood by one of ordinary skill in the art. (App. Br. 8 and
Reply Br. 3.) The Appellant also correctly suggests that terms in a claim
must be interpreted in light of the Specification. (App. Br. 9 and Reply Br.
3.)
[A]s an initial matter, the PTO applies to the
verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary
usage as they would be understood by one of
ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or
otherwise that may be afforded by the written
description contained in the applicant's
specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The Appellant also
correctly argues that appellants can be their own lexicographer. (Reply Br.
3.) (Although in ex parte prosecution, this must be within limits. In re Corr,
347 F.2d 578, 580 (CCPA 1965). To be their own lexicographer, applicants
must place such definitions in the Specification with sufficient clarity to
provide a person of ordinary skill in the art with clear and precise notice of
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the meaning for a term that is to be construed. See also In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the
specific terms used to describe the invention, this must be done with
reasonable clarity, deliberateness, and precision; where an inventor chooses
to give terms uncommon meanings, the inventor must set out any
uncommon definition in some manner within the patent disclosure so as to
give one of ordinary skill in the art notice of the change.)).
However, where, as here, the Appellant provided no definition for the
phrase “user’s personal handheld mobile device” in the Specification and
submitted no evidence of what one of ordinary skill would understand the
phrase to mean, the Examiner was correct to construe the phrase as broadly
as would be reasonable to one of ordinary skill in the art at the time the
application was filed, giving the terms in the phrase their ordinary and
customary meaning. “‘[T]he broadest reasonable interpretation rule “serves
the public interest by reducing the possibility that claims, finally allowed,
will be given broader scope than is justified.’ In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Yamamoto, 740
F.2d 1569, 1571-72 (Fed. Cir. 1984)).” In re Bigio, 381 F.3d 1320, 1324
(Fed. Cir. 2004). In that regard, we find the Examiner’s construction of the
claim so as to broadly encompass using Matsumori’s customer ID card to be
a reasonable one.
The Appeal and Reply Briefs do not explain why Matsumori’s
customer ID card would not qualify as a “user’s personal handheld mobile
device.” The Appellant suggests that there is a substantial difference. But
that difference is never explained. In equating Matsumori’s customer ID
card with a “user’s personal handheld mobile device,” the Examiner has
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taken the position that Matsumori’s customer ID card contains the structure,
characteristics, and functions possessed by the claimed “user’s personal
handheld mobile device.” Nowhere in the briefs does the Appellant explain
in what way Matsumori’s customer ID card cannot fall within the scope of
the claimed “user’s personal handheld mobile device.”
In construing a claim, we first look to the words of the claims, and
these words are generally given their ordinary and customary meaning. See
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
From a layperson’s perspective, it is readily apparent that Matsumori’s
customer ID card is a device which belongs to a user, is personal, is held in
the hand and thus handheld, and is mobile. (See FF 3-7.) Accordingly,
looking at the collection of words “user’s personal handheld mobile device”
and giving each word its ordinary and customary meaning, Matsumori’s
customer ID card would appear to be a “user’s personal handheld mobile
device.” The Appellant has not explained why that would not be so.
The Appellant suggests that those of ordinary skill in the art would
know the difference. But there is no evidence in the record showing what
those of ordinary skill in the art would understand the phrase “user’s
personal handheld mobile device” to mean. (FF 8.) There is no evidence
that one of ordinary skill in the art would attribute to the phrase a meaning
different from the one the Examiner has given it. (FF 9.) We can find no
evidence supporting the Appellant’s suggestion of what one of ordinary skill
would understand elsewhere in the record. See generally, In re Glass, 474
F.2d 1015, 1019 (CCPA 1973). Accordingly, there is no evidence in the
record that one of ordinary skill in the art would understand the phrase
“user’s personal handheld mobile device” to exclude Matsumori’s customer
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ID card. The Appellant’s attorney’s arguments in the briefs to the contrary
cannot take the place of evidence in the record. In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977), cert. denied,
434 US 854 (1977), and In re Schulze, 346 F.2d 600, 602 (CCPA 1965). See
also In re Walters, 168 F.2d 79, 80 (CCPA 1948):
Although it is asserted in the brief of counsel
for appellant that ‘the result of using an oil
modified alkyd resin coating on a loading coil core
was revolutionary’ and that ‘It marked the greatest
advance in loading coil manufacture in many
years, ‘there is no evidence of record to
substantiate that assertion, nor any evidence of
record of comparative tests to show superiority of
the coating compositions claimed here over the
ceramic coating material disclosed in the patent to
Gillis. Furthermore, statements of counsel in a
brief cannot take the place of evidence.

The Appellant further directs our attention to the Specification in
order that we may construe the claim in light of the Specification. The
Appellant argues that the construction the Appellant is urging for the phrase
“user’s personal handheld mobile device,” that is, a construction which
would exclude Matsumori’s customer ID card from the claim’s scope, is
supported in the Specification. The Appellant directs our attention to page
11, line 38 through page 12, line 5 (App. Br. 8-9 and Reply Br. 3) and pages
12 and 13 (Reply Br. 3).
We have reviewed the Specification and the passages therein that the
Appellant has specifically directed us to read. The passage at page 11, line
38 through page 12, line 5, discuss an “embodiment” of the invention.
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“[P]articular embodiments ... in the specification will not generally be read
into the claims.” Constant v. Advanced Micro-Devices, 848 F.2d 1560, 1571
(Fed. Cir. 1988). Furthermore, that passage does not give the phrase “user’s
personal handheld mobile device” a meaning, let alone a meaning
inconsistent with its ordinary and customary meaning. The passage states:
“the mobile personal identifier may be a personal device such as a mobile
phone, GPS receiver, or PDA … .” (Specification 11:39-12:1.)(Emphasis
added.) This passage does not support the Appellant’s position that the
phrase “user’s personal handheld mobile device” should be given a
construction which would exclude Matsumori’s customer ID card from the
claim’s scope. By exemplifying what the phrase may encompass, one of
ordinary skill in the art reading the claim in light of the Specification would
understand the Appellant to be intending to give the claim phrase a broad
scope and not one confined to mobile phones, GPS receivers, or PDAs, or
devices with similar communication capabilities. Moreover, in drafting the
claim, the Appellant chose to use the broader “user’s personal handheld
mobile device” rather than use more narrow terms to clearly refer to these
types of devices. The relevant passages on pages 12 and 13 of the
Specification describe embodiments of the invention and therefore these
passages also fail to support the Appellant’s narrow construction of the
claim phrase “user’s personal handheld mobile device.” We have carefully
reviewed the remaining disclosure of the Specification but have not found a
definition or discussion which would lead one of ordinary skill in the art to
understand the claim phrase “user’s personal handheld mobile” to be of a
scope that would exclude Matsumori’s customer ID card. Although the
Appellant urges us to give the claim phrase “user’s personal handheld
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mobile” a narrow meaning in light of the Specification, we can find nothing
in the Specification to support it.
The appellants urge us to consult the
specification and some of the cited prior art,
including Brown, and interpret the disputed
language more narrowly in view thereof. When
read in light of this material, according to
applicants, the “true” meaning of the phrase
emerges. We decline to attempt to harmonize the
applicants' interpretation with the application and
prior art. Such an approach puts the burden in the
wrong place. It is the applicants' burden to
precisely define the invention, not the PTO's. See
35 U.S.C. § 112 ¶ 2 (“The specification shall
conclude with one or more claims particularly
pointing out and distinctly claiming the subject
matter which the applicant regards as his
invention.”). While it is true that the claims were
not rejected on the ground of indefiniteness, this
section puts the burden of precise claim drafting
squarely on the applicant.
The problem in this case is that the
appellants failed to make their intended meaning
explicitly clear. Even though the appellants
implore us to interpret the claims in light of the
specification, the specification fails to set forth the
definition sought by the appellants. Nowhere in
the technical description of the invention does the
application use or define the phrase “integrally
formed.” The phrase briefly appears in the
“Summary of the Invention” and again in a
description of the “advantages of the present
invention.” In neither case is a drawing referenced
or a precise definition given.

In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
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Accordingly, we do not find that the Appellant has shown error in the
Examiner’s construction of the claim. Given the record, the Examiner’s
construction of the claim appears to be reasonable. In light of that
construction, the Examiner’s reliance on Matsumori as evidence of a prior
art disclosure of a “user’s personal handheld mobile,” as required by the
claim, and notwithstanding that it describes a customer ID card, appears to
be both logical and sound. Accordingly, we find no error in the Examiner’s
claim construction analysis that forms the basis for the Examiner’s prima
facie case of obviousness.
There being no other arguments challenging the rejection, we affirm
the rejection of claim 1. Because claims 9-13, 15, 16, 17, 19, and 21 stand
or fall with claim 1, we affirm the rejection of those claims as well.

The rejection of claims 2, 4-7, 14, and 18 under § 103(a) as being
unpatentable over Matsumori, O’Hagan, and Tracy.
The Appellant (App. Br. 12) relied on the arguments challenging the
rejection of claim 1 in rejecting claims 2, 4-7, 14, and 18. For the same
reasons we found those arguments unpersuasive as to error in the rejection
of claim 1, we reach the same conclusion as to the rejection of these claims.

The rejection of claim 3 under § 103(a) as being unpatentable over
Matsumori, O’Hagan, and New System.
The Appellant (App. Br. 12) relied on the arguments challenging the
rejection of claim 1 in rejecting claim 3. For the same reasons we found
those arguments unpersuasive as to error in the rejection of claim 1, we
reach the same conclusion as to the rejection of this claim.

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The rejection of claim 22 under § 103(a) as being unpatentable over
Matsumori, O’Hagan, and Fano.
The Appellant (App. Br. 12) relied on the arguments challenging the
rejection of claim 1 in rejecting claim 22. For the same reasons we found
those arguments unpersuasive as to error in the rejection of claim 1, we
reach the same conclusion as to the rejection of this claim.

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1, 9-13, 15, 16, 17, 19, and 21 under 35 U.S.C. §
103(a) as being unpatentable over Matsumori and O’Hagan; claims 2, 4-7,
14, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Matsumori,
O’Hagan, and Tracy; claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over Matsumori, O’Hagan, and New System; and, claim 22
under 35 U.S.C. § 103(a) as being unpatentable over Matsumori, O’Hagan,
and Fano.

DECISION
The decision of the Examiner to reject claims 1-7, 9-19, 21, and 22 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) (2007).

AFFIRMED

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hh

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