Ex Parte Goodwin

Board of Patent Appeals and Interferences

Apr 23, 2004

09099546 (B.P.A.I. Apr. 23, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN C. GOODWIN III
____________
Appeal No. 2003-0006
Application No. 09/099,546
____________
ON BRIEF
____________
Before BARRETT, RUGGIERO, and DIXON, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-15, which are all of the claims pending in the present
application.
The claimed invention relates to a method and system for
dispatching an individual carrying a pager in a transaction
establishment in response to the receipt of a message indicative of
a problem in the transaction establishment. The location of the
problem is recorded and, utilizing the electronic price label
Appeal No. 2003-0006
Application No. 09/099,546
2
system of the transaction establishment, pagers associated with
various individuals are located utilizing signal strength
information determined from responses to query messages addressed
to the pagers. An appropriate individual is chosen to respond to
the problem and a message containing the location of the problem is
sent to the pager carried by the chosen individual to alert the
individual to respond to the problem.
Claim 1 is illustrative of the invention and reads as follows:
1. A method of dispatching an individual in a transaction
establishment comprising the steps of:
(a) receiving a message indicative of a problem in the
transaction establishment;
(b) recording a location of the problem from the message;
(c) locating pagers carried by the individual and other
individuals in the transaction establishment by an electronic price
label system including the substeps of
(c-1) transmitting a query message addressed to the pagers;
(c-2) sending responses to the query message by the pagers;
(c-3) receiving the responses by a plurality of receivers; and
(c-4) determining locations of the pagers using signal
strength information determined from the responses;
(d) choosing the individual to respond to the problem based
upon the locations of the pagers; and

(e) sending a message containing the location of the problem
to the pager carried by the individual to alert the individual to
respond to the problem by the electronic price label system.
Appeal No. 2003-0006
Application No. 09/099,546
1 As indicated at page 7 of the Answer, the Examiner has withdrawn the
35 U.S.C. § 112, second paragraph, rejection of claims 1-9 and 15.
3
The Examiner relies on the following prior art:
Ness 5,767,788 Jun. 16, 1998
Goodwin, III et al. (Goodwin) 5,818,346 Oct. 06, 1998
(filed Feb. 16, 1996)
Claims 1-15 stand finally rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ness in view of Goodwin. Claims 1-15 stand
further finally rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims
1-20 of U.S. Patent No. 5,818,346 (Goodwin) in view of Ness.1
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief (Paper No. 14) and Answer
(Paper No. 17) for the respective details.
OPINION
We have carefully considered the subject matter on appeal, the
rejections advanced by the Examiner, the arguments in support of
the rejections, and the evidence relied upon by the Examiner as
support for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, Appellant’s arguments
set forth in the Brief along with the Examiner’s rationale in
support of the rejections and arguments in rebuttal set forth in
the Examiner’s Answer.
Appeal No. 2003-0006
Application No. 09/099,546
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It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill in
the art the obviousness of the invention as set forth in the claims
1-15. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Appeal No. 2003-0006
Application No. 09/099,546
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Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to the 35 U.S.C. § 103(a) rejection of the
appealed independent claims 1 and 7-10, Appellant’s arguments in
response (Brief, pages 20 and 21) assert a failure by the Examiner
to set forth a prima facie case of obviousness since proper
motivation for the proposed combination of Ness and Goodwin has not
been established. After reviewing the applied Ness and Goodwin
references in light of the arguments of record, we are in general
agreement with Appellant’s position as stated in the Brief.
In our view, the Examiner has combined the electronic price
labeling features of Goodwin with the pager locating system of Ness
in some vague manner without specifically describing how the
teachings would be combined, nor how any such combination would
satisfy the requirements of appealed independent claims 1 and 7-10.
This does not persuade us that one of ordinary skill in the art
having the references before her or him, and using her or his own
knowledge of the art, would have been put in possession of the
claimed subject matter. The mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make the
Appeal No. 2003-0006
Application No. 09/099,546
6
modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
Further, our review of the Ness and Goodwin references reveals
that they are directed to different problems with different
solutions. In other words, while Ness discloses a system for
locating and tracking emergency vehicles, there is no teaching or
suggestion of using such a system in a transaction establishment,
let alone one using an electronic price labeling system as claimed.
Similarly, while Goodwin uses an electronic price labeling system
to locate problem price labels, there is no indication of any
suggestion to use the electronic price labeling in conjunction with
a paging system to locate and dispatch workers to address the
problem. Given the disparity of problems addressed by the applied
prior art references, and the differing solutions proposed by them,
it is our view that any attempt to combine them in the manner
proposed by the Examiner could only come from Appellant’s own
disclosure and not from any teaching or suggestion in the
references themselves.
In view of the above discussion, since the Examiner has not
established a prima facie case of obviousness, the 35 U.S.C.
Appeal No. 2003-0006
Application No. 09/099,546
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§ 103(a) rejection of independent claims 1 and 7-10, as well as
claims 2-6 and 11-15 dependent thereon, is not sustained.
We also do not sustain the Examiner’s obviousness-type double
patenting rejection of appealed claims 1-15 based on the
combination of claims 1-20 of the Goodwin patent (U.S. Patent No.
5,818,346) and Ness. In making this rejection, the Examiner has
looked to Ness to supply the worker dispatching and locating
features missing from the electronic price labeling invention set
forth in the claims of the Goodwin patent. For all of the reasons
discussed supra, however, the Examiner has not established proper
motivation for combining the dispatching and locating system of
Ness with the teachings of an electronic price labeling system used
in a transaction establishment. Further, even assuming, arguendo,
that such a combination could be made, there is no indication that
the resulting system would satisfy the specific combination set
forth in the appealed claims.
In summary, we have not sustained the Examiner’s 35 U.S.C.
§ 103(a) and obviousness-type double patenting rejections of the
Appeal No. 2003-0006
Application No. 09/099,546
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claims on appeal. Accordingly, the decision of the Examiner
rejecting claims 1-15 is reversed.
REVERSED

LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JFR/dal
Appeal No. 2003-0006
Application No. 09/099,546
9
PAUL W. MARTIN
LAW DEPARTMENT, WHQ-4
1700 S. PATTERSON BLVD.
DAYTON OH 45479-0001