Ex Parte Glynn

Board of Patent Appeals and Interferences

Apr 24, 2010

10940868 (B.P.A.I. Apr. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH P. GLYNN
____________

Appeal 2009-001510
Application 10/940,868
Technology Center 2800
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Decided: April 24, 2010
____________

Before ROBERT E. NAPPI, CARLA M. KRIVAK, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 27-50. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellant’s claimed invention is a product and method for obtaining
product use instructions separate and apart from reading product containers
or printed product inserts (Spec. 2:20-22).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.

27. A product identifier reading, product use instructions
speaking system, which comprises:

(a.) a user read and speak unit having hardware and software to:

(i.) read a product identifier of a product to obtain a
product identification;

(ii.) communicate said product identification via a
communication link to a server wherein said communication
link includes a wireless communication link;

(iii.) in response to said communicated product
identification, receive product use instructions for said product
from said server;

(iv.) convert said product use instructions to speech; and

(v.) speak said product use instructions;

(b.) a server having hardware and software to:

(i.) receive said product identification from said user read
and speak unit;

(ii.) store separate product use instructions for a plurality
of different product identifications;

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(iii.) match said product identification to a specific stored
set of product use instructions;

(iv.) communicate said product use instructions to said
user read and speak unit via said communication link; and,

(c.) a communication link adapted to communicatively connect
said user read and speak unit to said server.

REFERENCES
Swartz US 6,243,447 B1 Jun. 5, 2001
Nakano US 2002/0059175 A1 May 16, 2002
Reed US 6,394,278 B1 May 28, 2002
Matsumoto US 2002/0067811 A1 Jun. 6, 2002
Zellner US 2006/0105784 A1 May 18, 2006

The Examiner rejected claims 27-30, 34, 36-42, 46, and 48-50 under
35 U.S.C. § 103(a) based upon the teachings of Nakano and Matsumoto.1
The Examiner rejected claims 27, 31-33, 39, and 43-45 under 35
U.S.C. § 103(a) based upon the teachings of Swartz and Zellner.
The Examiner rejected claims 35 and 47 under 35 U.S.C. § 103(a)
based upon the teachings of Swartz, Zellner, and Reed.
Appellant contends the user in Nakano does not read product
information and does not control the actual functional processing of the
product (App. Br. 9). Appellant further contends Matsumoto is non-
analogous art and therefore cannot be combined with Nakano (App. Br. 9).
Appellant also contends Swartz is not directed to a system that retrieves

1 The Examiner noted that claims 35 and 47 were incorrectly included in
this rejection based upon the teachings of Nakano and Matsumoto, however
they remain rejected over Swartz, Zellner, and Reed (Ans. 4).
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product instructions for post-purchase product use and Zellner is directed to
non-analogous art (App. Br. 11).

ISSUES
Does the combination of Nakano and Matsumoto render obvious
Appellant’s claimed invention?
Does the combination of Swartz and Zellner render obvious
Appellant’s claimed invention?

FINDINGS OF FACT
1. Nakano discloses a food information management system that
includes an information storage medium 20, 20a attached to a food package
21a that contains processed food 21 and ID information specifying the food.
A read means reads the ID information. A database 11 retrieves information
about the food specified by the ID information. An output means receives
and displays the information. (Abstract; ¶ [0016])
2. In Nakano inquiries to the database can be made through a
home server 33 via cable or wireless communications (¶ [0055]).
3. The information in Nakano’s database includes cooking
conditions (¶ [0017]).
4. Matsumoto discloses a microwave oven or other digital device
communicating via a network so images and sounds showing a recipe, etc.,
are downloaded and displayed on a display or provided aurally through a
speaker (¶ [0068]).
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5. Swartz discloses a computer 73 contains information about
each product within a store. The information includes, for example, price,
expiration date, and recipes. (Col. 7, ll. 37-40)
6. Zellner discloses the content of a message in digital text format
can be converted to speech (¶ [0056]).
7. Reed discloses speaking information into a microphone,
transmitting the information to a workstation, and using it to search a
database (Abstract).

PRINCIPLES OF LAW
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing
Graham v. John Deere Co., 383 U.S. 1, 12 (1966)), reaffirmed principles
based on its precedent that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results. . . If a person of ordinary skill can implement
a predictable variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill. Sakraida [v. AG Pro, Inc., 425 U.S.
273 (1976)] and Anderson's-Black Rock [, Inc. v. Pavement Salvage Co.,
396 U.S. 57 (1969)] are illustrative—a court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established functions. Id. at 417.

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ANALYSIS
Claims 27-30, 34, 36-42, 46, and 48-50
Appellant contends Nakano is directed to a food information
management system where every food packaging product has an information
medium attached thereto having a memory storage and retrieval chip that
includes a food database stored therein (App. Br. 8). The information
medium is read and displayed, or stored data or information is retrieved,
from a remote database and displayed (App. Br. 7). Appellant argues this is
not the same as a user scanning a product bar code or other identifier with a
user read and speak unit that wirelessly communicates with a server to
provide audio information, as claimed (App. Br. 7). Appellant further
asserts this allows a user to obtain assembly instructions or other product
information, such as recipes, any time or place where the product is situated
(App. Br. 8).
The Examiner finds Nakano teaches all the features of Appellant’s
invention except for including a server and providing a spoken output (FF 1;
Ans. 4-5). Although Nakano does have an information medium attached to
each food package, and not just a bar code, food ID information is stored
therein, is read and sent to a food information center that retrieves
information about a food specified by the food ID, and outputs the
information (¶ [0016]). The food ID information is sent via the Internet N
(FF 2; Fig. 1) to the food database. The food database is queried for food
information including cooking information such as cooking methods, times,
and methods (FF 3; ¶ [0047]; ¶ [0055]). The food information is then
displayed (¶ [0048]). Matsumoto was relied on to show a communications
device, built in a microwave or other type of device, for downloading and
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displaying on a display or providing aurally through a speaker, multimedia
data such as images and sounds showing a cooking recipe (FF4; ¶ [0068]).
Thus, combining information showing recipes or product information, as
taught by Matsumoto, with Nakano’s food management system would be a
combination of familiar elements according to known methods, contrary to
Appellant’s assertions (App. Br. 9-10), and would yield no more than
predictable results.
Appellant urges that because claim 38 recites the term “preparation
recipe,” and Nakano does not, Nakano does not teach this feature (App. Br.
8). However, Nakano teaches food information stored in the food database
includes cooking conditions and cooking methods (FF 3; ¶ [0038]).
Appellant’s claims merely require a preparation recipe, which, giving this
term its broadest reasonable interpretation, includes instruction for food
preparation (Ans. 8).
Claims 27, 31-33, 39, 43-45
Appellant contends Swartz does not teach or suggest a system for
retrieving post-purchase product use instructions such as recipes, and that
Zellner is non analogous art (App. Br. 11). However, Swartz does teach
retrieving recipes (FF 5). Further, “post-purchase product use instructions”
are not claimed (Ans. 10-11). Zellner discloses a portable device that
converts text-to-speech. Because Swartz teaches a portable phone having a
text feature, combining the text-to-speech feature of Zellner with Swartz’s
text features, would be a combination of familiar elements according to
known methods.

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Claims 35 and 47
Reed was relied on for teaching it was known in the art at the time of
Appellant’s invention to use an audio input for matching information stored
in a database that is retrieved and forwarded to a user (FF 7). Because
Swartz teaches an I/O block for processing audio, visual, or tactile inputs
used to send voice commands during a scan mode (col. 5, ll. 29-39; col. 7, ll.
18-23), it would have been an obvious variation to expand the voice
recognition of Swartz to include retrieving product information via audio as
taught by Reed for ease of use, convenience, and operability (Ans. 11).

CONCLUSION
Nakano, along with various combinations of Matsumoto, Swartz, and
Zellner, renders obvious Appellant’s claimed invention.

DECISION
The Examiner’s decision rejecting claims 27-50 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).

AFFIRMED

gvw

KENNETH P. GLYNN
GLYNN & ASSOCIATES
24 MINE STREET
FLEMINGTON, NJ 08822