Ex Parte Collins et al

Patent Trial and Appeal Board

May 19, 2016

13295169 (P.T.A.B. May. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/295, 169 11/14/2011
22045 7590 05/23/2016
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Harry W. Collins
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
VCI0429PUS2 1005
EXAMINER
GATLING, STACIE D
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
05/23/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARRY W. COLLINS, NIGEL MILLS, and
ROBERT J. SCHULLER
Appeal2014-000345
Application 13/295,169
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-25. We affirm.
1 The Appellants identify Valassis In-Store Solutions, Inc. as the real party
in interest. (Appeal Br. 1 ).
Appeal2014-000345
Application 13/295,169
THE CLAIMED INVENTION
Appellants claimed invention "relates generally to in-store scales
utilized for weighing food products and printing labels applied to weighed
products." (Spec. para. 2). Claim 1 is illustrative of the claimed subject
matter:
1. A method of delivering a coupon promotion to a consumer in
a store utilizing a scale system located in a perishables
department of a store, the scale system including a weighing
station, a label printing mechanism, and a display unit having an
integrated database and at least one consumer display, the
method comprising the steps of:
identifying a product being weighed;
based upon identity of the weighed product,
(a) obtaining pricing data for the weighed product;
(b) prior to purchase of the weighed product, obtaining
incentive label data for an incentive product associated with the
weighed product;
( c) prior to purchase of the weighed product; obtaining
video commercial advertisement data for the incentive product
from the integrated database;
( d) during the weighing process of the weighed product,
(1) displaying to the consumer, using the consumer
display, calculated price information for the weighed food
product, and
(2) displaying to the consumer, using the consumer
display, a video commercial advertisement for the incentive
product based on the video commercial advertisement data for
the incentive product;
printing on a label both (i) product price information for
the weighed food product and (ii) coupon information for the
incentive product;
applying the label to a package containing the weighed
food product; and
providing the package to the consumer.
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Appeal2014-000345
Application 13/295,169
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lemon
Degasperi
Hewitt
us 4,674,041
us 5,097 ,981
us 5,578, 797
REJECTIONS
June 16, 1987
Mar. 24, 1992
Nov. 26, 1996
The following rejections are before us for review.
The Examiner rejected claims 1-8, 10-15, 17-22, 24, and 252 under
35 U.S.C. § 103(a) as unpatentable over Hewitt and Lemon.
The Examiner rejected claims 9, 16, and 23 under 35 U.S.C. § 103(a)
over Hewitt, Lemon, and Degasperi.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Hewitt discloses a weighing scale with printer, where a "coupon can be
generated by the weighing scale 20 in accordance with the product
purchased." (Col. 5, 11. 25-27).
2. Hewitt discloses that "[i]f it is not desired to generate a coupon with a
purchased product, an advertising message or recipe can be generated
instead." (Col. 5, 11. 29-31 ).
2 Although we cannot immediately identify any express treatment of claim 5
by the Examiner, Appellants treat claim 5 as rejected by Hewitt and Lemon
(App. Br. 4), so we presume the rejection of claim 5 is subsumed within the
analysis of the rejection of the other claims.
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Application 13/295,169
3. Hewitt discloses the scale also includes "a large bright fluorescent
alphanumeric dot display 34 plus a numeric display 32." (Col. 6, 11. 4--
6).
4. Hewitt discloses the alphanumeric display may be programmed to
display "recipes, ingredients, or coupon labels," "nutritional facts,"
price mark-downs, dates, and "specials for the day, helpful hints or
recipes for preparing an item." (Col. 6, 11. 4--37).
5. Lemon discloses a coupon dispensing terminal where a consumer
display "includes a conventional cathode ray tube 28 for displaying the
video menu of coupons available for selection as well as other video
graphics, such as advertisements." (Col. 5, 11. 8-12).
ANALYSIS
Claims 1-8, 10-15, 17-22, 24, and 25
Initially, we note that the Appellants argue independent claims 1, 12,
and 18 together as a group. (Appeal Br. 4). Correspondingly, we select
representative claim 1 to decide the appeal of these claims, with remaining
claims 12 and 18 standing or falling with claim 1. Appellants do not provide
a substantive argument as to the separate patentability of claims 2-8, 10, 11,
13-15, 17, 19-22, 24, and 25 that depend from claims 1, 12, and 18. Thus,
claims 2-8, 10-15, 17-22, 24, and 25 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(l)(vii).
Appellants argue Hewitt does not disclose a "display capable of being
viewed by a customer." (Appeal Br. 5-6).
We are not persuaded of error by Appellants' argument. Hewitt
discloses a scale that prints, along with the price of the weighed item,
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Appeal2014-000345
Application 13/295,169
coupons or advertisements associated with the weighed item (FF 1, 2), and
includes a display that displays messages. (FF 3). Hewitt is silent as to
whether the display is for an operator, customer, or both. But, given that
Hewitt discloses messages for display may include recipes, ingredients,
nutritional facts, helpful hints, and so on, which are of interest to a customer
(FF 4), we find, by inference, that the display in Hewitt is intended for
display to the consumer. See KSR Int 'l. Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (In making the obviousness determination one "can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.") Even still, we find that one having ordinary skill in the art
would understand that the display can be positioned so a customer and
operator can both view it from the same side.
Notwithstanding, the Examiner also relies on Lemon as disclosing a
video consumer display. (Final Act. 3--4). For purposes of completeness,
we respond as follows. Lemon discloses a video consumer display that
displays advertisements to a customer. (FF 5). Lemon thus meets the claim
language of "displaying to the consumer, using the consumer display, a
video commercial advertisement." (Emphasis added).
Appellants argue there would be no reason to combine Lemon with
Hewitt. (Appeal Br. 6).
We are not persuaded by Appellants' argument, because the Examiner
articulates a credible motivation for the combination, "for the benefit of
displaying the messages to the user, during the weighing process or any
other process." (Final Act. 3--4 (emphasis omitted)). The Examiner thus
sets forth a sufficient "articulated reasoning with some rational underpinning
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Application 13/295,169
to support the legal conclusion of obviousness." See Jn re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006).
Appellants next argue that adding Lemon's consumer display to
Hewitt would not result in the claimed invention because Lemon "does not
display incentive data associated with a weighed product." (Appeal Br. 6-
8).
Appellants' argument is also unpersuasive because it argues
references separately when the rejection is based on a combination of
references. The ordinary artisan would recognize that if Hewitt's display is
situated such that a consumer would not be able to view it, it would be
common sense to include one that is visible to a customer, such as disclosed
by Lemon, to view the advertisements displayed or printed for a consumer in
Hewitt, and linked to a weighed product. (FF 2, 4, 5). At a minimum, the
artisan would recognize that including Lemon's display for ads associated
with weighed items would eliminate the need to print an advertisement
associated with weighed items. Thus, one need not incorporate all of
Lemon's teachings, such as the stand-alone terminal, into Hewitt.
"Combining the teachings of references does not involve an ability to
combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCPA
1973).
Appellants further argue that Hewitt discloses printing an
advertisement for an incentive product, or displaying advertisements not
associated with a weighted product only to a machine operator, and not a
consumer, and that Lemon discloses displaying advertisements to a
customer, but not for an incentive product associated with a weighed
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Application 13/295,169
product. (Reply Br. 2-5). As a result, Appellants argue, the combination
fails to meet the claim language.
We are not persuaded by Appellants' arguments because we find that
the ordinary artisan would recognize that Lemon's video display could be
used in lieu of the line messages used by Hewitt's system to display
advertisements like those which Hewitt prints for incentive products Hewitt
associates with the weighed product. (FF 2, 4, 5). See KSR Int'!. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (In making the obviousness
determination one "can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ.")
Claims 9, 16, and 23
Appellants do not argue dependent claims 9, 16, and 23 separately.
We thus affirm the rejection of these claims on the same basis upon which
we affirm the rejection of claim 1.
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-25 under 35 U.S.C.
§ 103(a).
DECISION
For the above reasons, the Examiner's rejections of claims 1-25 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)(l )(iv).
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AFFIRMED
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