Ex Parte Greer et al

Board of Patent Appeals and Interferences

Aug 16, 2010

09788628 (B.P.A.I. Aug. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/788,628 02/14/2001 Patrick Thomas Greer 480062.777 4365
35243 7590 08/17/2010
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104-7092
EXAMINER
NGUYEN, THANH T
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
08/17/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK THOMAS GREER and CHRISTOPHER A. WIKLOF
____________

Appeal 2009-006423
Application 09/788,628
Technology Center 2400
____________

Before JOHN A. JEFFERY, JAMES D. THOMAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 18 and 31-56. Claims 1-17 and 19-30 have been
canceled. See Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006423
Application 09/788,628

2
STATEMENT OF THE CASE
Appellants invented a method for providing access to product and
transactional information over the Internet using encoded data. See
generally Spec. 4. Claim 35 is reproduced below with the key disputed
limitations emphasized:
35. A method of accessing data, comprising:

receiving bar code information encoding a Uniform Code Council
(UCC) company identifier and a UCC item identifier; and

constructing a uniform resource locator (URL) from the received
bar code information, wherein at least a portion of the URL comprises
the UCC company identifier and the UCC item identifier constructed
as at least a "www" followed by at least the UCC company identifier
and the UCC item identifier.

The Examiner relies on the following as evidence of unpatentability:
Nerlikar US 5,629,981 May 13, 1997
Cragun US 5,804,803 Sept. 8, 1998

THE REJECTIONS
1. The Examiner rejected claims 35-562 under 35 U.S.C. § 102(e)3 as
anticipated by Cragun. Ans. 3-7.4

2 The Examiner only included claims 18 and 35-49 in the heading of the
rejection. See Ans. 3. However, since the rejection’s body includes a
discussion of claims 50-56 (see Ans. 6-7), we therefore presume that the
Examiner intended to include these claims in the rejection. Accordingly, we
deem this error harmless.
3 Cragun is also available as a reference under 35 U.S.C. § 102(b). The
Examiner may have intended to refer to paragraph (b), as this paragraph of
§ 102 was quoted in paragraph three. See Ans. 3.
Appeal 2009-006423
Application 09/788,628

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2. The Examiner rejected claims 18 and 31-34 under 35 U.S.C.
§ 103(a) as unpatentable over Cragun and Nerlikar. Ans. 7-9.

THE ANTICIPATION REJECTION OVER CRAGUN
Regarding independent claim 35, the Examiner finds that that Cragun
discloses all the limitations, including constructing a URL as shown in
Figure with: (a) a UCC company identifier, such as 0JPC 310 or
yummy.corp.com, and (b) a UCC item identifier, such as the CID in the
URL http://peanut.food.com/??CID??&??SIP??. Ans. 3, 9. Appellants
argue that these URL examples in Figure 3 do not disclose constructing a
URL having a UCC company identifier and UCC item identifier as recited.
See Br. 11-14.
The issue before us, then, is as follows:

ISSUE
Under § 102, has the Examiner erred in rejecting claim 35 by finding
that Cragun constructs a URL from received bar code information, where at
least a portion of the URL comprises the UCC company identifier and UCC
item identifier?

FINDINGS OF FACT
1. Appellants explain that the Universal Product Code (UPC), the
European Article Numbering (EAN), and the Japanese Article Numbering
(JAN) systems are administered by the Uniform Code Council (UCC). The

4 Throughout this opinion, we refer to the Appeal Brief filed May 6, 2008
and the Examiner’s Answer mailed May 16, 2008.
Appeal 2009-006423
Application 09/788,628

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UCC assigns a five-digit company prefix or company identifier to a
manufacturer. The manufacturers are also free to assign a five-digit product
identifier code to each retail product. Spec. 2:21-3:5.
2. Appellants illustrate a UPC symbol 201 having a first data
component (202) known as the number system. The first data component is
encoded in parity pattern, including encoding a manufacturer’s identification
203 in the left half of the symbol (i.e., “12345”) and encoding a product
identification 204 on the right half of the symbol (i.e., “67890”). Spec. 8:19-
26; Fig. 2.
3. Cragun discloses a scanning device 118 can read a code 117, such
as a UPC, from an object 115 and converts the code 117 into a URL.
Cragun, col. 2, ll. 48-54; col. 3, ll. 56-64; col. 4, ll. 8-9, 15-17, 33-40; col. 5,
ll. 53-58; col. 7, ll. 29-34; Figs. 1A, 2.
4. Cragun explains that the URL can be in abbreviated form 220,
expanded form 230, or data-filled form 240. The data-filled form 240 fills in
the expanded form 230 with actual data. For example, the
??LANGUAGE?? keyword in the expanded form is replaced with
“LANGUAGE=Spanish” in the data-filled form. Cragun, col. 5, l. 53-col. 6,
l. 67; Fig. 2.
5. Cragun discloses a UPC “12345-67890” corresponding to the
URL, http://yummy.corp.com/??LANGUAGE??. Cragun also discloses
UPC “34567-89012” corresponding to the URL,
http://peanut.food.com/??CID??&??SID??&SIP??. Cragun, col. 7, ll. 35-47
and col. 8, ll. 16-30; Figs. 3, 6A.

Appeal 2009-006423
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6. Cragun includes a table listing the abbreviations used for
mapping the abbreviated form 220 to the expanded 230 and data-filled 240
form of a URL. “CID” represents a customer identifier, and “SID”
represents a Store ID. Cragun, col. 2, ll. 31-35, col. 7, ll. 48-59; Fig. 4.

ANALYSIS
We begin by construing a key disputed limitation of claim 35 which
calls for, in pertinent part, constructing a URL from the received bar code
information, wherein at least a portion of the URL comprises the UCC
company identifier and UCC item identifier. While the Specification does
not define the terms, “UCC company identifier” and “UCC item identifier,”
we must still give this limitation its broadest reasonable construction “in
light of the specification as it would be interpreted by one of ordinary skill in
the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (internal citations omitted).
The Specification explains that a bar code encoded using the UCC
system includes a five-digit company identifier assigned to a manufacturer
and a five-digit product or item identifier that the manufacturer is free to
assign. See FF 1. Appellants’ Figure 2 illustrates this 5-digit company
identifier (left five digits) and product identifier (right five digits) encoded
into a UPC symbol. See FF 2. In light of the disclosure, an ordinarily
skilled artisan would have therefore understood, the term “UCC company
identifier” to mean a five-digit company identifier, and the term “UCC item
identifier” to mean a five-digit product identifier. With this construction in
mind, we turn to Cragun.
Appeal 2009-006423
Application 09/788,628

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Cragun discloses a scanning device that reads a code 117, including a
UPC, from an object and converts the code 117 into a URL. FF 3. For
example, Cragun discloses the received UPC (e.g., 12345-67890) is
converted to a URL (e.g., http://yummy.corp.com/??LANGUAGE??). See
FF 5. Cragun also discloses receiving a bar code having a UCC company
identifier (e.g., “12345”) and a UCC item identifier (e.g., “67890”). See FF
2, 5. Cragun thus teaches using a UPC (e.g., “12345-67890”) to generate a
corresponding URL (e.g., http//yummy.corp.com/??LANGUAGE??).
Although this URL includes a company name (i.e., yummy.corp.com), the
URL does not have the recited UCC company and item identifiers (e.g.,
“12345”, “67890”)—a crucial deficiency.
Similarly, the received UPC “34567-89012” in Figure 3 corresponds
to the URL, http://peanut.food.com/??CID??&??SID??&SIP??. See FF 3, 5.
Again, the UPC is used to construct a URL, which may include a company
name (e.g., food.com) and a product name (e.g., peanut). See id. Moreover,
this URL includes “CID” (i.e., a customer identifier), and “SID” (i.e., a Store
ID). See FF 5-6. But none of these portions of the URL constitute a UCC
company and item identifier as recited. Moreover, even if these URLs are
converted to a data-filled form URL (see FF 4), the CID and SID are not the
claimed UCC company and item identifiers. We are therefore constrained to
find that Cragun does not disclose every element of claim 35. See
Verdegaal Bros. v. Union Oil Co. of Calif., 814 F.2d 628, 631 (Fed. Cir.
1987).

Appeal 2009-006423
Application 09/788,628

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Independent claim 48 recites receiving a URL that uses the UCC
company identifier as the domain, and independent claim 50 recites
constructing a URL with the UCC company identifier therein. For the
reasons discussed above, we find that Cragun fails to disclose these
limitations.
For the foregoing reasons, we are therefore persuaded that the
Examiner erred in rejecting (1) independent claim 35; (2) independent
claims 48 and 50 which recite similar limitations; and (3) claims dependent
thereon for similar reasons. Since this issue is dispositive of our reversal, we
need not address Appellants’ other arguments. See Br. 11-18.

THE OBVIOUSNESS REJECTION OVER CRAGUN AND NERLIKAR
Regarding independent claim 18, the Examiner finds that Cragun
discloses constructing a URL having a UCC company identifier and a UCC
item identifier and relies on Nerlikar for the radio frequency (RF) tag
recitation. See Ans. 8-9. Appellants contend that neither Cragun nor
Nerlikar teach constructing a URL having a UCC company and item
identifier. Br. 13. The issue is therefore similar to those in connection with
claim 35. As discussed above, we are persuaded by Appellants’ arguments
that Cragun does not disclose constructing a URL comprising both a UCC
company identifier and a UCC item identifier. Additionally, Nerlikar was
not relied upon (Ans. 8-9)—nor does Nerlikar discuss—generating a URL
using the recited UCC identifiers (see generally Nerlikar) as required by
claim 18.

Appeal 2009-006423
Application 09/788,628

8
We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 18 and (3) claims dependent thereon for similar reasons.
Since this issue is dispositive of our reversal of the Examiner’s rejection, we
need not address Appellants’ other arguments. See Br. 11-15.

CONCLUSION
The Examiner erred in rejecting (1) claims 35-56 under § 102, and (2)
claims 18 and 31-34 under § 103.

ORDER
The Examiner’s decision rejecting claims 18 and 31-56 is reversed.

REVERSED

pgc

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701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104-7092