Ex Parte Farkas et al

Board of Patent Appeals and Interferences

Aug 11, 2011

10614856 (B.P.A.I. Aug. 11, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEITH ISTVAN FARKAS,
PARTHASARATHY RANGANATHAN, and
CULLEN E. BASH
____________

Appeal 2010-001437
Application 10/614,856
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Keith Istvan Farkas, et al. (Appellants) seek our review under
35 U.S.C. § 134 (2002) of the final rejection of claims 1-12 and 37-421. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.2

THE INVENTION
The invention “pertains to a system for managing inventory of
components in a room.” Specification 2:2-3.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.

1 Claims 43-54 were subject to a restriction requirement. See Final
Rejection, mailed Sep. 23, 2008. The Examiner decided that “claims 43-54
are withdrawn from consideration as being directed to a non-elected
invention.” Final Rejection 2. See also Answer 2. This is not an appealable
matter. “There are a host of various kinds of decisions an examiner makes
in the examination proceeding-mostly matters of a discretionary, procedural
or nonsubstantive nature-which have not been and are not now appealable to
the board or to this court.... [A] requirement for restriction under § 121 is
now one of those discretionary matters no longer tantamount to a rejection
of the claims, ...” In re Hengehold, 440 F.2d 1395, 1399 (CCPA 1971).
Accordingly, we do not consider the Appellants’ challenge of the
Examiner’s decision to withdraw claims 43-54 from consideration. App. Br.
10-11 and Reply Br. 5-6.

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 23, 2009) and Reply Brief (“Reply Br.,” filed Aug. 11,
2009), and the Examiner’s Answer (“Answer,” mailed Jun. 11, 2009).
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1. A system for managing inventory of components in a room, said
system comprising:
a plurality of identification devices affixed to respective
associated components, said plurality of identification devices being
configured to communicate identification information relating to the
respective associated components and comprising respective digital
displays configured to display the identification information;
a reader device configured to substantially autonomously
receive the identification information from the identification devices;
means for identifying locations of the identification devices
from the identification information received by the reader device from
the plurality of identification devices; and
a controller configured to communicate with the reader device
and compile the identification information received from the reader
device and to communicate with the means for identifying the
locations of the identification devices to maintain an inventory of
the components and their respective locations.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sims US 5,434,775 Jul. 18, 1995
Kleinschnitz
Gelbman
Creager
US 5,546,315
US 2001/0020935 A1
US 2003/0106937 A1
Aug. 13, 1996
Sep. 13, 2001
Jun. 12, 2003
The following rejections are before us for review:
1. Claims 41 and 42 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the
invention.
2. Claims 1-10 and 37-40 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kleinschnitz and Gelbman.
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3. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kleinschnitz, Gelbman, and Sims.
4. Claims 41 and 42 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kleinschnitz, Gelbman, and Creager.

ISSUES
Does Kleinschnitz disclose “a plurality of identification devices
affixed to respective associated components, said plurality of identification
devices being configured to communicate identification information relating
to the respective associated components and comprising respective digital
displays configured to display the identification information” (claim 1)?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 41 and 42 under 35 U.S.C. § 112, second paragraph.
Claim 41, and claim 42 which depends from it, requires “an imaging
device positioned on one of a ceiling and a wall of [a] room.”
The Examiner rejects the claims because “[i]t is not clear if the
imaging device is positioned on the ceiling alone, on the ceiling and one of
the walls of the room, or on a wall of the room above.” Answer 4.
The Examiner has not made the case that the claims are insolubly
ambiguous. By the Examiner’s own construction of the claims, they cover a
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number of different possible embodiments. “The mere fact that the claims
cover a large number of possible process steps and imaging member
materials does not in and of itself make the claims indefinite.” In re Goffe,
188 USPQ 131 (C.C.P.A. 1975), citing In re Skoll, 523 F.2d 1392 (CCPA
1975). “Breadth is not indefiniteness.” In re Gardner, 427 F.2d 786, 788
(1970).

The rejection of claims 1-10 and 37-40 under 35 U.S.C. § 103(a) as being
unpatentable over Kleinschnitz and Gelbman.
The Examiner argues that Kleinschnitz (col. 8, ll. 12-29; col. 4, ll. 33-
44; col. 9, ll. 22-36) discloses all the claimed limitations but for the
identification devices “comprising respective digital displays configured to
display the identification information” ([sole independent] claim 1). Answer
4-5. Gelbman (Abstract, [0010]) is relied upon as showing identification
devices comprising respective digital displays configured to display the
identification information. Answer 5. According to the Examiner one of
ordinary skill in the art would arrive at the claimed invention by combining
Kleinschnitz and Gelbman “for the advantage of providing a human or
machine readable visual display of identification information (Gelbman,
Paragraph [0007]).” Answer 5.
The Appellants argue that Kleinschnitz does not disclose all the
claimed limitations but for the identification devices as the Examiner has
found (App. Br. 12). According to the Appellants, “Kleinschnitz fails to
disclose that the locations of the labels on the media cartridges 305 are
identified based upon the identification information contained on the labels
as claimed in independent Claim 1.” App. Br. 13. Also, “Kleinschnitz fails
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to disclose that the cartridge labels themselves contain location information
that a means for identifying uses to identify the locations of the cartridges.”
Reply Br. 7-8.
Accordingly, the dispute is over the scope and content of
Kleinschnitz.
The Examiner relies on col. 8, ll. 12-29 of Kleinschnitz in finding
that Kleinschnitz discloses “a plurality of identification devices affixed to
respective associated components, said plurality of identification devices
being configured to communicate identification information relating to the
respective associated components and comprising respective digital displays
configured to display the identification information” (claim 1). Answer 4
and 12. That passage describes a bar code reader 404 (Fig. 3) and a bar code
scanner 307 affixed to a robot gripper hand 207 used to create and verify an
inventory of media cartridges in a storage library 100. “Bar code scanner
307 is affixed to robot gripper 207 so that robot gripper hand 207 is
positioned to retrieve a media cartridge, bar code scanner 307 can verify the
identity of the media cartridge by reading the bar code label on the media
cartridge .” Col. 8., ll. 17-21.
The Examiner does not fully explain what elements described in col.
8, ll. 17-21 equate to the claimed plurality of identification devices,
identification information, associated components, and respective digital
displays. Presumably the Examiner means to infer that the identification
devices, as claimed, broadly cover Kleinschnitz’s media cartridges. If that is
the case (and that is the Appellants’ understanding as well), then
Kleinschnitz’s media cartridges must include information for identifying
locations such that it leads to a system comprising a “means for identifying
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locations of the identification devices from the identification information
received by the reader device from the plurality of identification devices”
(claim 1, emphasis added), which the Examiner has stated Kleinschnitz also
discloses (see Answer 5, citing col. 4, ll. 33-44, which describes placing
read/write devices such that it “permits the robotic arm to move media
cartridges between their inventoried locations.”)
However, based on our review of Kleinschnitz, we do not find that the
media cartridges provide such information. At best, the “[b]ar code labels
on each media cartridge 305 are used in part to uniquely identify each media
cartridge.” Col. 7, ll. 44-46. There is no indication that the unique
information on the bar code labels includes location information. The CPU
401 records “the ultimate inventory location for the media cartridge in
memory 414” (col. 14, ll. 47-48; see Fig. 12) and “looks up the inventory
location for the requested media cartridge in memory 414 and controls the
robotic mechanism of storage library 100 to retrieve the media cartridge for
processing ... “ (col. 14, ll. 50-54). But there is no disclosure indicating or
suggesting the inventory location the CPU records is received via the bar
code label. Therefore, the read/write devices that Kleinschnitz discloses do
not correspond to a “means for identifying locations of the identification
devices from the identification information received by the reader device
from the plurality of identification devices” (claim 1, emphasis added) as the
Examiner has characterized them.
For the foregoing reasons, a prima facie case of obviousness for the
subject matter of claims 1-10 and 37-40 has not been made out in the first
instance.

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The rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Kleinschnitz, Gelbman, and Sims.
The rejection of claims 41 and 42 under 35 U.S.C. § 103(a) as being
unpatentable over Kleinschnitz, Gelbman, and Creager.
These rejections are directed to claims 11, 12, 41, and 42 depending
from claim 1, whose rejection we have reversed above. For the same
reasons, we will not sustain the rejections of these claims over the cited prior
art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent
claims are nonobvious if the independent claims from which they depend are
nonobvious.")

DECISION
The decision of the Examiner to reject claims 1-12 and 37-42 is
reversed.

REVERSED

JRG