Ex Parte Garwood

Board of Patent Appeals and Interferences

Apr 28, 2008

10368953 (B.P.A.I. Apr. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte ANTHONY J. M. GARWOOD 8
___________ 9
10
Appeal 2008-1329 11
Application 10/368,953 12
Technology Center 3600 13
___________ 14
15
Decided: April 28, 2008 16
___________ 17
18
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 19
STEVEN D.A. McCARTHY, Administrative Patent Judges. 20
21
FETTING, Administrative Patent Judge.22
DECISION ON APPEAL 23
24
STATEMENT OF CASE 25
26
Anthony J. M. Garwood (Appellant) seeks review under 35 U.S.C. § 134 27
of a final rejection of claims 1, 2, 4-7, and 9-12, the only claims pending in 28
the application on appeal. 29
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2
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 1
(2002). 2
3
We AFFIRM. 4
5
The Appellant invented a way of processing and packaging under 6
conditions of reduced oxygen for substantially decontaminating and 7
prolonging the shelf life of perishable goods, such as beef (Specification 8
1:22-25). Part of this process, to which the claims in this application are 9
directed, includes a way of tracing a good that includes associating 10
information pertaining to an animal on a carrying means for the animal or 11
any of its divisions. This information could be stored on an RFID tag, and 12
include such information as country of origin, place or originating location 13
of the animal. In this way, a label can be prepared by being able to trace the 14
origin of the packaged good through the disassembly process (Specification 15
16:1-15). 16
17
An understanding of the scope of the invention as claimed can be 18
derived from a reading of exemplary claim 1, which is reproduced below 19
[bracketed matter and some paragraphing added]. 20
1. A method of labeling goods comprising the steps of: 21
[1] placing goods in a tray; 22
[2] acquiring information relating to the goods placed in said 23
tray; 24
[3] marking said tray with indicia unique to said goods; 25
[4] storing the information relating to the goods in said tray 26
in a memory keyed to said indicia; 27
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[5] relaying the information stored in the memory 1
to a remote location over a communication system; 2
[6] grouping one or more trays loaded with goods in a 3
container; 4
[7] associating a read/write device with said container; and 5
[8] applying information relating to said goods 6
on said read/write device 7
for each tray stored therein. 8
9
This appeal arises from the Examiner’s final Rejection, mailed June 1, 10
2005. The Appellant filed an Appeal Brief in support of the appeal on May 11
30, 2006. An Examiner’s Answer to the Appeal Brief was mailed on July 12
16, 2007. A Reply Brief was filed on September 7, 2007. 13
PRIOR ART 14
The Examiner relies upon the following prior art: 15
Caveney US 5,038,283 Aug. 6, 1991
Goldsmith US 5,306,466 Apr. 26, 1994
REJECTION 16
Claims 1, 2, 4-7, and 9-12 stand rejected under 35 U.S.C. § 103(a) as 17
unpatentable over Caveney and Goldsmith. 18
ISSUES 19
The issue pertinent to this appeal is whether the Appellant has sustained 20
its burden of showing that the Examiner erred in rejecting claims 1, 2, 4-7, 21
and 9-12 under 35 U.S.C. § 103(a) as unpatentable over Caveney and 22
Goldsmith. 23
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The pertinent issue turns on whether the combination of Caveney and 1
Goldsmith suggest coding a container with information related to its goods; 2
placing goods in a separate tray and marking the tray with indicia unique to 3
the goods, storing the information keyed to the indicia, and relaying the 4
information to a remote location; grouping one or more trays in a container; 5
and applying information related to the goods to a read/write device 6
associated with the container. 7
FACTS PERTINENT TO THE ISSUES 8
The following enumerated Findings of Fact (FF) are believed to be 9
supported by a preponderance of the evidence. 10
Caveney 11
01. Caveney is directed to a shipping method for facilitating the 12
efficient distribution of goods (Caveney 1:5-6). 13
02. Caveney provides bar code labels on each of the individual 14
items to be shipped and a unique bar code for each of the 15
containers within which the individual items are packed for 16
shipping (Caveney 2:16-20). 17
03. The bar codes for the items and the containers are chosen to 18
uniquely identify identical items and each packing container and 19
thus act as identification indicia (Caveney 2:20-23). 20
04. The bar codes are positioned on the outside of the container and 21
item packages at a location that allows easy access by a bar code 22
reader (Caveney 2:23-25). 23
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05. As individual bar coded items are packed within a container, 1
they are scanned into a database of container packing records, and 2
a unique bar coded container label is printed to record each bar 3
code with the bar code identifying the container as a grouped set 4
of information comprising a container packing record (Caveney 5
2:30-40). 6
06. The packer affixes the container label to the container. The 7
container packing record includes a shipment indicia uniquely 8
identifying the specific means of shipment, for example the 9
specific truck used to deliver the container to the shipping 10
destination (Caveney 2:41-45). 11
07. The container packing records of individual containers are 12
transmitted from the shipping location to the shipping destination 13
of the containers. The shipping destination computer enters the 14
transmitted container packing record into a data base accessible by 15
the computer (Caveney 2:50-57). 16
08. Included within the shipping destination computer's data base 17
are previously recorded outstanding customer order lists 18
containing quantities of items ordered by individual customers 19
including identifying indicia or bar code information for each 20
item. A bar code cross reference list is stored in the shipping 21
destination computer and used to match customer codes 22
identifying individual items ordered with the corresponding bar 23
code used on the package of each item (Caveney 2:58-68). 24
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09. The shipping destination computer identifies from the container 1
packing records the shipping containers that are shipped together 2
in a single shipment and compares the bar codes of shipping 3
containers as they are actually received with the list of containers 4
shipped in a single shipment and provides an output either 5
confirming the receipt of all of the containers previously shipped 6
in the single shipment or providing an output listing the containers 7
lost in shipment (Caveney 3:58-67). 8
Goldsmith 9
10. Goldsmith is directed to a food contamination detector 10
comprised of a tray, for holding a food product, and a bar code 11
detector with a toxin printed onto a substrate and an indicator 12
bound to the toxin to form a bar code. When the bar code detector 13
is contacted with a toxin, the indicator is removed from the 14
substrate destroying the bar code (Goldsmith 2:5-13). 15
Facts Related To Differences Between the Claims and the Prior Art 16
11. Neither Caveney nor Goldsmith describe setting prices or shelf 17
lives. However, Goldsmith describes selling food such as meat 18
and Caveney describes shipping goods to a different location. 19
One of ordinary skill, and indeed most grocery customers, knew 20
that meat packaged as in Goldsmith was priced and had a shelf 21
life, and that both the price and shelf life were dependent upon the 22
market conditions and food processing regulations of the location 23
in which food was sold. 24
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12. Neither Caveney nor Goldsmith describe RFID devices. One of 1
ordinary skill, and indeed most customers, knew that the tags that 2
are RFID devices are used commonly in place of bar codes. One 3
of ordinary skill also knew that such tags were capable of storing 4
data dynamically, and therefore of greater value than bar codes 5
where additional data might need to be added. 6
Facts Related To The Level Of Skill In The Art 7
13. Neither the Examiner nor the Appellant has addressed the level 8
of ordinary skill in the pertinent arts of packaging information 9
systems. We will therefore consider the cited prior art as 10
representative of the level of ordinary skill in the art. See Okajima 11
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he 12
absence of specific findings on the level of skill in the art does not 13
give rise to reversible error ‘where the prior art itself reflects an 14
appropriate level and a need for testimony is not shown’”) 15
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 16
F.2d 158, 163 (Fed. Cir. 1985). 17
Facts Related To Secondary Considerations 18
14. There is no evidence on record of secondary considerations of 19
non-obviousness for our consideration. 20
PRINCIPLES OF LAW 21
Claim Construction 22
During examination of a patent application, pending claims are 23
given their broadest reasonable construction consistent with the 24
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specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 1
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, (Fed. Cir. 2004). 2
Limitations appearing in the specification but not recited in the claim are 3
not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 4
1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 5
specification” without importing limitations from the specification into the 6
claims unnecessarily) 7
Although a patent applicant is entitled to be his or her own lexicographer 8
of patent claim terms, in ex parte prosecution it must be within limits. In re 9
Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing 10
such definitions in the Specification with sufficient clarity to provide a 11
person of ordinary skill in the art with clear and precise notice of the 12
meaning that is to be construed. See also In re Paulsen, 30 F.3d 1475, 1480 13
(Fed. Cir. 1994) (although an inventor is free to define the specific terms 14
used to describe the invention, this must be done with reasonable clarity, 15
deliberateness, and precision; where an inventor chooses to give terms 16
uncommon meanings, the inventor must set out any uncommon definition in 17
some manner within the patent disclosure so as to give one of ordinary skill 18
in the art notice of the change). 19
Obviousness 20
A claimed invention is unpatentable if the differences between it and 21
the prior art are “such that the subject matter as a whole would have been 22
obvious at the time the invention was made to a person having ordinary skill 23
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 24
1727 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 25
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In Graham, the Court held that that the obviousness analysis is 1
bottomed on several basic factual inquiries: “[(1)] the scope and content of 2
the prior art are to be determined; [(2)] differences between the prior art and 3
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 4
in the pertinent art resolved.” 383 U.S. at 17. See also KSR Int’l v. Teleflex 5
Inc., 127 S.Ct. at 1734. “The combination of familiar elements according to 6
known methods is likely to be obvious when it does no more than yield 7
predictable results.” KSR, 127 S.Ct. at 1739. 8
“When a work is available in one field of endeavor, design incentives 9
and other market forces can prompt variations of it, either in the same field 10
or a different one. If a person of ordinary skill can implement a predictable 11
variation, § 103 likely bars its patentability.” Id. at 1740. 12
“For the same reason, if a technique has been used to improve one 13
device, and a person of ordinary skill in the art would recognize that it would 14
improve similar devices in the same way, using the technique is obvious 15
unless its actual application is beyond his or her skill.” Id. 16
“Under the correct analysis, any need or problem known in the field 17
of endeavor at the time of invention and addressed by the patent can provide 18
a reason for combining the elements in the manner claimed.” Id. at 1742. 19
Obviousness and Nonfunctional Descriptive Material 20
Nonfunctional descriptive material cannot render nonobvious an 21
invention that would have otherwise been obvious. In re Ngai, 367 F.3d 22
1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. 23
Cir. 1983) (when descriptive material is not functionally related to the 24
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substrate, the descriptive material will not distinguish the invention from the 1
prior art in terms of patentability). 2
ANALYSIS 3
Claims 1, 2, 4-7, and 9-12 rejected under 35 U.S.C. § 103(a) as 4
unpatentable over Caveney and Goldsmith. 5
6
Claims 1 and 6 7
Claim 1 is the sole independent claim. The Appellant does not 8
separately argue claim 6 and so we treat it as grouped with claim 1. 9
37 C.F.R. § 41.37(c)(1)(vii) (2007). 10
The Examiner found that Caveney described all of the limitations of 11
claim 1 except for the items being in a tray, for which the Examiner applied 12
Goldsmith. The Examiner found that Goldsmith’s application toward foods 13
such as meats and vegetables suggested using Goldsmith’s trays to one of 14
ordinary skill with Caveney to provide the benefits of Caveney’s packaging 15
to such foods (Answer 3). 16
The Appellant contends that Caveney does not suggest coding a 17
container with information related to its goods (Br. 10:First full ¶); placing 18
goods in a separate tray and marking the tray with indicia unique to the 19
goods, storing the information keyed to the indicia, and relaying the 20
information to a remote location; grouping one or more trays in a container 21
and applying information related to the goods to a read/write device 22
associated with the container (Br. 10:Bottom ¶). 23
We disagree with the Appellant’s contentions. 24
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Goldsmith describes step [1] placing goods in a tray and step [3] 1
marking said tray with indicia unique to said goods by placing food in a tray 2
with a bar code which is indicia unique to the food, since it identifies the 3
food (FF 10). 4
Caveney is directed to a shipping method for facilitating the efficient 5
distribution of goods (FF 01). Caveney describes steps [2] acquiring 6
information relating to the goods placed in a package and [3] marking said 7
package with indicia unique to said goods by placing goods in a package 8
with a bar code which is indicia unique to the goods, since it identifies the 9
goods with bar codes for the items chosen to uniquely identify identical 10
items and thus act as identification indicia (FF 02 & 03). The only 11
difference is that Caveney does not use a tray. Goldsmith is applied to show 12
that a tray may be an instance of Caveney’s package. 13
Caveney describes steps [4] storing the information relating to the goods 14
in the package in a memory keyed to said indicia and [5] relaying the 15
information stored in the memory to a remote location over a 16
communication system by storing the bar codes from the packages in a 17
database (FF 05) and transmitting to the destination computer (FF 07). 18
Since the bar codes are identifiers, and data base entries are keyed by 19
identifiers, the database records must be keyed to the bar codes. 20
Caveney describes steps [6] grouping one or more trays loaded with 21
goods in a container; [7] associating a read/write device with said container; 22
and [8] applying information relating to said goods on said read/write device 23
for each tray stored therein by packing the packages in its container (FF 05), 24
and printing a bar coded packing record. The bar coded packing record is 25
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written and susceptible to reading, and therefore is a read/write device (FF 1
05). 2
The Appellant’s argument that Caveney does not use a tray and the tray 3
is not marked with indicia is simply attacking the rejection piecemeal, since 4
Goldsmith is applied to describe the tray and its indicia. Nonobviousness 5
cannot be established by attacking the references individually when the 6
rejection is predicated upon a combination of prior art disclosures. See In re 7
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 8
The Appellant’s argument that Caveney does not describe the other 9
limitations is unpersuasive, as we found that Caveney describes all of the 10
remaining limitations supra. The Appellant argues that Caveney does not 11
describe storing information such as weight (Br. 11:First full ¶). This is not 12
commensurate with the scope of claim 1, as claim 1 merely requires that the 13
information relate to the goods, which Caveney’s bar code clearly does. 14
Thus, the Appellant has not convinced us of error on the part of the 15
Examiner. 16
Claims 4, 5, and 9-11 17
Claims 4 and 10 require retrieving information at the destination to set a 18
price; claims 5 and 11 require retrieving information at the destination to set 19
a shelf life; and claim 9 requires comparing the information from a 20
read/write device on the container with a database. The Appellant argues 21
that none of these are described by Caveney or Goldsmith. The Examiner 22
found that Caveney described claim 9’s comparison, and that the 23
information required by claims 4, 5, 10, and 11 were well known types of 24
information collected for items such as food (Answer 6). 25
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We agree with the Examiner that Caveny explicitly describes comparing 1
the information on the container label with that stored at the destination data 2
base (FF 09). We also agree that although neither Caveney nor Goldsmith 3
describe setting prices or shelf lives, Goldsmith describes selling food such 4
as meat and Caveney describes shipping goods to a different location. One 5
of ordinary skill, and indeed most grocery customers, knew that meat 6
packaged as in Goldsmith was priced and had a shelf life, and that both the 7
price and shelf life were dependent upon the market conditions and food 8
processing regulations of the location in which food was sold (FF 11). 9
These would depend on data that had to be supplied by the shipper, such as 10
weight and date of origination, and so would necessarily be based on the 11
retrieved information. 12
Claims 2, 7, and 12 13
Claims 2 and 7 require storing the weight or other data. The Examiner 14
found this was non-functional descriptive material. The Appellant argues 15
that the data relate to the underlying substrate in the form of the tray. 16
As we found supra, such data would be required for pricing and safety 17
regulation and were at least predictable types of data for storage. “The 18
combination of familiar elements according to known methods is likely to be 19
obvious when it does no more than yield predictable results.” KSR, 127 S. 20
Ct. at 1739. 21
Further, we agree with the Examiner that such data are non-functional 22
descriptive material and given no patentable weight, In re Ngai, 367 F.3d at 23
1339. The Appellant’s argument that the data written on the tray is related 24
to the contents is misplaced, because there is no functional relationship 25
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within the claim between the contents of the label and the contents of the 1
tray. The label contents, even if weight, are still only descriptive, and 2
provide no functional relationship between the contents and tray. 3
Claim 12 requires that the read/write device be an RFID device. The 4
Examiner found that RFID devices were art recognized equivalents to 5
Caveney’s bar codes (Answer 4). The Appellant argued that the additional 6
benefits of RFID devices negated such equivalence (Br. 13-14). We agree, 7
that for the purposes of application to Caveney, an RFID device is 8
equivalent to a bar code. While neither Caveney nor Goldsmith describe 9
RFID devices, one of ordinary skill, and indeed most customers, were 10
familiar with RFID devices as being used commonly in place of bar codes. 11
One of ordinary skill also knew that such tags were capable of storing data 12
dynamically, and therefore of greater value than bar codes where additional 13
data might need to be added (FF 12). Thus, substitution of an RFID device 14
for a bar code in Caveney was no more than routine substitution in the 15
package marking arts. 16
The Appellant has not sustained its burden of showing that the Examiner 17
erred in rejecting claims 1, 2, 4-7, and 9-12 under 35 U.S.C. § 103(a) as 18
unpatentable over Caveney and Goldsmith. 19
CONCLUSIONS OF LAW 20
The Appellant has not sustained its burden of showing that the Examiner 21
erred in rejecting claims 1, 2, 4-7, and 9-12 under 35 U.S.C. § 103(a) as 22
unpatentable over the prior art. 23
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DECISION 1
To summarize, our decision is as follows: 2
• The rejection of claims 1, 2, 4-7, and 9-12 under 35 U.S.C. § 103(a) as 3
unpatentable over Caveney and Goldsmith is sustained. 4
No time period for taking any subsequent action in connection with this 5
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 6
7
AFFIRMED 8
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