Ex Parte Church

Board of Patent Appeals and Interferences

Mar 16, 2009

10774372 (B.P.A.I. Mar. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Craig D. Church
____________

Appeal 2008-6282
Application 10/774,372
Technology Center 3600
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Decided: 1 March 17, 2009
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Before HUBERT C. LORIN, DAVID B. WALKER, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-6282
Application 10/774,372

STATEMENT OF THE CASE
Craig D. Church (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1, 4, 7, 10-12, 14-21, 23-26, and 42-49. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE. 2

THE INVENTION
The invention is a system for and a method of requesting and
receiving location information for an item on a portable device.
(Specification [0003].) The portable device determines whether the
portable device is inside a store. (Specification [0034].) If the portable
device is in a store, the portable device displays a main menu, which has a
list of stores. (Specification [0036].) After the user selects a store from the
list, the portable device displays a store menu, which has a list of store items.
Id. The user can then select one or more items and the portable device then
displays the location of the items in the store. Id.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method comprising:
determining whether a portable device is or
is not located within a first site;

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Oct. 9, 2007) and Reply Brief (“Reply Br.,” filed Feb. 26, 2008),
and the Examiner’s Answer (“Answer,” mailed Dec. 26, 2007).
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wherein when the portable device is located
within the first site:
sending a menu of items located at the
first site to the portable device for displaying to a
user,
receiving from the portable device, a
selection by the user of at least one item from the
menu of items located at the first site, and
sending location information
regarding the at least one item selected from the
menu of items at the first site to the portable device
for displaying to the user; and
wherein when the portable device is not
located within the first site:
sending to the portable device a menu
of sites located within a vicinity of the portable
device for displaying to the user, and
receiving from the portable device a
selection of a second site from the menu of sites by
the user.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Fano US 6,317,718 B1 Nov. 13, 2001
Ludtke US 2002/0138372 A1 Sep. 26, 2002
Perkowski US 2002/0194081 A1 Dec. 19, 2002
Malackowski US 2003/0027555 A1 Feb. 6, 2003
Swartz US 6,937,998 B1 Aug. 30, 2005

The following rejections are before us for review:
1. Claims 1, 4, 7, 11-12, 18, 20-21, 23-24, and 42-49 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Fano in view of
Swartz.
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2. Claims 10, 14-15, 19, and 25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fano in view of Swartz and Perkowski.
3. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fano in view of Swartz and Ludtke.
4. Claims 17 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fano in view of Swartz and Malackowski.

ISSUES
The first issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1, 4, 7, 11, 42, and 48-49 under 35 U.S.C.
§ 103(a) as being unpatentable over Fano in view of Swartz. The issue
turns on whether one of ordinary skill in the art would have been led by the
combination of Fano in view of Swartz to the step of determining whether a
portable device is or is not located within a first site. The rejection of
dependent claim 10 also turns on this issue.
The second issue before us is whether the Appellant has shown that
the Examiner erred in rejecting claims 12, 18, 20, 21, 23, 24, and 44-47
under 35 U.S.C. § 103(a) as being unpatentable over Fano in view of Swartz.
The issue turns on whether one of ordinary skill in the art would have
been led by the combination of Fano in view of Swartz to an apparatus
comprising processing logic which determines whether a portable device is
or is not located within a first site. The rejections of dependent claims 14-17,
19, 25, and 26 also turn on this issue.

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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 recites a method comprising the step of “determining
whether a portable device is or is not located within a first site.”
2. Claim 12 recites a portable device including processing logic
which “determines whether the portable device is or is not located
within a first site.”
3. Claim 20 recites a server having a first processing logic which
“determines whether a portable device is or is not located within a
first site.”
4. Claim 45 recites a tangible computer-readable medium having a
plurality of instructions for at least one processor, which causes the
processor to “determine[e] whether a portable device is or is not
located within a first site.”
5. Claim 48 recites a method comprising the step of “determining
whether a portable device is or is not located within a first site.”
6. The Specification does not provide a definition for “site”.
7. The ordinary and customary meaning of “site” is “1 a: the spatial
location of an actual or planned structure or set of structures (as a
building, town, or monuments) b: a space of ground occupied or to
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be occupied by a building.” (See Merriam-Webster’s Collegiate
Dictionary 1097 (10th Ed. 1998.)(Second entry for “site.”)
8. The Specification does not provide a definition for “within”.
9. The ordinary and customary meaning of “within” is “used as a
function word to indicate enclosure or containment.” (See
Merriam-Webster’s Collegiate Dictionary 1359 (10th Ed.
1998.)(Entry for “within.”)

The scope and content of the prior art
Fano
10. Fano describes a personal digital assistant with a system that alerts
a shopper to merchandise of previously specified categories in the
surrounding stores. (Col. 2, ll. 39-51.)
11. Column 47, line 58 – column 48, line 26 of Fano states:
To address the need of many shoppers to visit
malls or shop generally without a particular
destination in mind, FIG. 27 illustrates a display in
accordance with a preferred embodiment of the
invention. The display operates in a browse mode
for use by shoppers as they stroll through the mall.
In browse mode the system suggests items of
interest for sale in stores currently closest to the
shopper. An item is considered to be of interest if
it matches the categories entered in the goals
screen. If there are no items of interest, the general
type of merchandise sold at that store is displayed,
rather than specific items. As the shopper strolls a
map displays his or her precise current location in
the mall. If an item displayed is selected by the
shopper while browsing, the system alerts the
shopper to the local retailer offering the same
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product for the lowest price. This search is
restricted to the local mall, as that is the assumed
radius the shopper is wiling to travel.

12. The system uses a GPS receiver to determine the user’s location.
(Col. 47 ll. 22-24.)
13. The accuracy of smaller, inexpensive receiver is limited to
approximately 75-100 feet, which is all that is necessary to identify
accurately the immediately surrounding stores. (Col. 47, ll. 26-29.)

Swartz
14. Swartz describes using a portable hand held terminal to find
suppliers of products and services based on a customer’s proximity
to the suppliers and the customer’s shopping profile. (Col. 2, ll.
46-56.)
15. Column 9, lines 47-58 states:
If a user selects the clothing icon 104, either by
touching the icon 104 with a stylus, or by
maneuvering a pointer on the icon 104 by use of a
joystick, mouse, voice, or analogous pointing
control device and by thereupon actuating the
device, a first cascading menu 108 having store
icons 110, 112, 114 bearing the identities of
clothing stores in the mall appears on the terminal
screen. By selecting one of the store icons 114, a
second cascading menu 116 having information
icons 118, 120, 122 bearing such labels as
location, hours and sales appears on the screen.
By selecting one of the information icons 118, 120,
122, the requested information will appear on the
screen.

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Perkowski
16. Perkowski describes allowing a user at a kiosk in a shopping mall
to email selected product information to a home account.
(Perkowski [0915].)
17. Perkowski describes using a touch screen to display product
information. (Perkowski [0037-0038].)
Ludtke
18. Ludtke describes a user using a PDA to select a product on a list by
writing a product description using a stylus or touch screen.
(Ludtke [0055].)
Malackowski
19. Malackowski describes a system which allows a user on a cellular
phone to retrieve product information by saying the product name.
(Malackowski [0017]-[0018].)
Any differences between the claimed subject matter and the prior art
20. Fano does not describe determining whether the portable device is
or is not within the first site.
The level of skill in the art
21. Neither the Examiner nor the Appellants have addressed the level
of ordinary skill in the pertinent art of data communications. 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’”) (“[T]he absence of
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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
22. 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,
1369 (Fed. Cir. 2004).
[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.

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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 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 method claims 1, 4, 7, 11, 42, and 48-49 under 35 U.S.C.
§ 103(a) over Fano in view of Swartz.
The Appellant argues that the combination of Fano and Swartz does
not describe the claimed invention since Fano does not describe the step of
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determining whether a portable device is or is not located within a first site.
(App. Br. 14-15.) The Appellant contends that Fano only describes
identifying nearby stores and immediately surrounding stores and not
whether the device is within the store. (App. Br. 15.) The Appellant state that
determining the closest, nearby or immediately surrounding stores is
different than determining when the device is or is not located within the
first site. (Reply Br. 6.)
The Examiner contends that the first site is a store closest to the user
containing items of interest and that the claimed determining step is
analogous to determining when the device is within range of the store
having items of interest in Fano. (Answer 12.) The Examiner states, “To be
clear on the record, the first site is not merely just the immediate or nearby
stores; rather, the first site as found in Fano is a nearby or immediate store
that contains items of interest.” (Answer 12.)
In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the reference
teachings would appear to be sufficient for one of ordinary skill in the
relevant art having the references before him to make the proposed
combination or other modification. See In re Lintner, 9 F.2d 1013, 1016
(CCPA 1972). "[Tlhe Board must not only assure that the requisite findings
are made, based on evidence of record, but must also explain the reasoning
by which the findings are deemed to support the agency's conclusion." In re
Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
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Claim 1 recites a method including the step of “determining whether a
portable device is or is not located within a first site.” (FF 1.) Claim 48 also
recites the same limitation. (FF 5.) “Analysis begins with a key legal
question -- what is the invention claimed ? Courts are required to view the
claimed invention as a whole. 35 U.S.C. § 103. Claim interpretation, in light
of the specification, claim language, other claims, and prosecution history, is
a matter of law and will normally control the remainder of the decisional
process.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561 (Fed. Cir.
1987). The customary and ordinary meaning of “site” is the spatial location
of an actual or planned structure or set of structures (as a building, town, or
monuments) or a space of ground occupied or to be occupied by a building.
(FF 6-7.) The customary and ordinary meaning of “within” is used as a
function word to indicate enclosure or containment. (FF 8-9.) Therefore,
claims 1 and 48 require the step of determining whether a portable device is
or is not enclosed or contained in a first location occupied or to be occupied
by a building.
Fano describes using a GPS receiver to determine the location of
the user (FF 12). The GPS receiver is accurate in a range of 75-100 feet. (FF
13). Further, Fano describes identifying stores currently closest to a shopper
and that some stores contain items of interest to the shopper. (FF 11.)
We find that Fano does not describe determining whether the device is
or is not enclosed or contained in a nearby or immediate store. (FF 20.) We
find that identifying a store containing items of interest currently closest to
a shopper is not expressly or inherently determining whether a portable
device is or is not located within a store. The accuracy of the GPS receiver
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is limited to 75-100 feet (FF 13) and it is not inherent that the receiver would
be located within the closest store.
Swartz also does not describe and the Examiner did not cite Swartz
to teach determining whether a portable device is or is not located within a
store. Further, the Examiner does not provide any explanation as to why one
of ordinary skill in the art would have been led by Fano and Swartz to the
step of determining whether the portable device is or is not located within
the first site besides asserting that Fano describes the limitation.
We find that the Examiner has failed to present a prima facie case
of obviousness, and therefore, we find that the Appellant has shown that the
Examiner erred in rejecting claim 1. Accordingly, the rejection of claim 1 is
reversed. Claims 4, 7, 11, and 42 depend from claim 1 and claim 49
depends from claim 48. The rejections of these claims are likewise reversed.

The rejection of manufacture claims 12, 18, 20, 21, 23, 24, and 44-47 under
35 U.S.C. § 103(a) over Fano in view of Swartz.
Like claim 1, claims 12, 20, and 45 were also rejected under
35 U.S.C. § 103(a) as being unpatentable over Fano in view of Swartz using
the same rationale. (Answer 4.) The Appellant again argues with respect to
each claim that the device in Fano does not determine whether the portable
device is or is not within the first site. See App. Br. 19, 22, and 24-25.
Claim 12 recites a portable device comprising a processing device
which “determines whether the portable device is or is not located within a
first site.” (FF 2.) Claim 20 recites a system with similar processing logic
(FF 3), and claim 45 recites a computer-readable medium similar processing
logic (FF 4).
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For the reasons discussed above, we find that Fano and Swartz would
not lead one of ordinary skill in the art to an apparatus with a processing
logic that determines whether the portable device is or is not within the first
site. Therefore, the Appellant has shown that the Examiner erred in
rejecting claims 12, 20 and 45 and accordingly, the rejection of claims 12,
20 and 45 is reversed.
Claims 18 and 43 depend from claim 12. Claims 21, 23, 24, and 44
depend from claim 20, and claims 46 and 47 depend from claim 45. The
rejection of these claims is likewise reversed.

The rejection of claims 10, 14, 15, 19, and 25 under 35 U.S.C. § 103(a) over
Fano in view of Swartz and Perkowski.
Claims 10, 14, 15, 19, and 25 were rejected under 35 U.S.C. § 103(a)
as unpatentable over Fano, Swartz and Perkowski. Claim 10 depends from
claim 1. Claims 14, 15, and 19 depend from claim 12. Claim 25 depends
from claim 20. The Examiner cited Perkowski to teach providing an option
of having results sent via e-mail and using a touch screen with an electronic
pen, a stylus, or a finger to select an item on a display. (Answer 8). The
Examiner has not provided any additional reasons why Fano, Swartz and
Perkowski would lead one of ordinary skill in the art to the limitations of
claims 1, 12, and 20 discussed above besides contending that Fano describes
these limitations. For the same reasons, we will not sustain the rejection of
claims 10, 14, 15, 19, and 25 over the cited prior art.

The rejection of claim 16 under 35 U.S.C. § 103(a) over Fano in view of
Swartz and Ludtke.
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Claim 16 was rejected under 35 U.S.C. § 103(a) as unpatentable over
Fano, Swartz and Ludtke. Claim 16 depends upon claim 12. The Examiner
cited Ludtke to teach using an electronic pen, a stylus, or a finger to write an
item name on a touch screen. (Answer 9.) The Examiner has not provided
any additional reasons why Fano, Swartz and Ludtke would lead one of
ordinary skill in the art to the limitation of claim 12 discussed above besides
contending that Fano describes this limitation. For the same reasons, we
will not sustain the rejection of claim 16 over the cited prior art.

The rejection of claims 17 and 26 under 35 U.S.C. § 103(a) over Fano in
view of Swartz and Malackowski.
Claims 17 and 26 were rejected under 35 U.S.C. § 103(a) as
unpatentable over Fano, Swartz and Malackowski. Claims 17 and 26 depend
upon claims 12 and 20 respectively. The Examiner cited Malackowski to
teach the user speaking the item name to select an item. (Answer 10.) The
Examiner has not provided any additional reasons why Fano, Swartz and
Malackowski would lead one of ordinary skill in the art to the limitations of
claims 12 and 20 discussed above besides contending that Fano describes
these limitations. For the same reasons, we will not sustain the rejection of
claims 17 and 26 over the cited prior art.

CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting:
claims 1, 4, 7, 11-12, 18, 20-21, 23-24, and 42-49 under 35 U.S.C.
§ 103(a) as being unpatentable over Fano in view of Swartz;
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claims 10, 14-15, 19, and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Fano in view of Swartz and Perkowski;
claim 16 under 35 U.S.C. § 103(a) as being unpatentable over Fano in
view of Swartz and Ludtke; and
claims 17 and 26 under 35 U.S.C. § 103(a) as being unpatentable over
Fano in view of Swartz and Malackowski.

DECISION
The decision of the Examiner to reject claims 1, 4, 7, 10-12, 14-21,
23-26, and 42-49 is reversed.

REVERSED

JRG

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