Ex Parte Holtkamp et al

Board of Patent Appeals and Interferences

Sep 2, 2009

09594829 (B.P.A.I. Sep. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte REINHOLD HOLTKAMP
and JEAN-STEPHAN ROVANI
____________

Appeal 2009-003680
Application 09/594,829
Technology Center 3600
____________

Decided: September 3, 2009
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 15-21, 23-25, and 32-41. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to provide a network
connected delivery box and delivery method that obviates the need for the
customer to be available in order to have the delivery completed. The
delivery box may be added or integrated to houses, offices or buildings and
can be opened only with a valid access code (Spec. 2:23-28). Claim 15,
reproduced below, is representative of the subject matter of appeal.

15. A method of managing purchase, delivery, and user
information in a delivery system comprising a delivery box user, a
delivery company, and a network connected delivery box, the method
comprising the steps of;
receiving a purchase order for goods from a delivery box user;
associating, at a central computer, a valid user code with the
purchase order;
delivering the ordered goods to the network connected delivery
box, the network connected delivery box being connected to the
central computer through a computer network and having an
enclosure configured to store the ordered goods, wherein
delivering the ordered goods comprises:
providing, at the network connected delivery box, a user code
by the delivery company,
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verifying the provided user code by an automated comparison
to the valid user code associated at the central computer, and
providing access to the delivery box if the provided user code is
verified based on the automated comparison to the valid user code.

THE REJECTIONS

The Examiner relies upon the following as evidence in support of the
rejections:
Kamel US 5,937,037 Aug. 10, 1999
Murray US 6,536,189 B1 Mar. 25, 2003
Hartman EP 0902381 A21 Mar. 17, 1999

The following rejections are before us for review:
1. Claims 15-21, 23-25, and 32-41 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hartman and Kamel.
2. Claims 24-25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hartman, Murray, and Kamel.

THE ISSUE
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
With regard to claims 15-21, 23-25, and 32-41 rejected under
Hartman and Kamel this issue turns on whether the broadest reasonable

1 The file contains two references by Hartman, EP 0902381 A2 and EP
0902381 A3. The citation in the Answer at page 4 to col. 1-15 of the
Hartman reference indicates that the EP 0902381 A2 reference was applied
in the rejections of record since the EP 0902381 A3 reference does not
contain such columns.
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interpretation of the term “box” in light of the Specification would include
an electronic queue box.
With regards to claims 24-25 rejected under Hartman, Murray, and
Kamel this issue turns on whether it would have been obvious to combine
the references to meet the claimed limitations.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. In the Specification, Figures 1, 4, and 7 show a conventional physical
rectangular box.
FF2. Dictionary.com provides the following definition for “box” as the
primary definition: 1. a container, case, or receptacle, usually rectangular, of
wood, metal, cardboard, etc., and often with a lid or removable cover.
Obtained from: http://dictionary.reference.com/browse/box on Aug. 26,
2009.
FF3. EP 0902381 A2 (Hartman) is directed to a method of placing a
purchase order on the Internet. A server system receives the request and
combines the purchaser information to generate an order to purchase the
order in accordance with billing and shipping information whereby the
purchaser effects ordering of the product by selection of a button (paragraph
57).
FF4. Kamel is directed to system for delivering promotional messages to
subscribed parties. A message queue having a plurality of electronic queues

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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is provided, each of the electronic queues assigned to at least one subscribed
calling party (Abstract). The system may include an “audio box” (Col.
21:17-22).
FF5. Kamel at col. 2:11-60, col. 3:8-44, and col. 21:23-39 does not describe
the use of a physical box to store goods.
FF6. Murray is directed to a system for delivering perishable groceries in a
cardboard box. The system includes a source of cold or heat to maintain
temperatures (Abstract).

PRINCIPLES OF LAW
Principles of Law Relating Claim Construction
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims their 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). We must be careful not to read a
particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. See Superguide Corp.
v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by explanations contained in
the written description, it is important not to import into a claim limitations
that are not part of the claim. For example, a particular embodiment
appearing in the written description may not be read into a claim when the
claim language is broader than the embodiment.”) The challenge is to
interpret claims in view of the specification without unnecessarily importing
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limitations from the specification into the claims. See E-Pass Techs., Inc. v.
3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415-16, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415, (citing Graham, 383 U.S.
at 12), and 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.” Id. at 416.
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The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”) However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
Rejection of claims 15-21, 23-25, and 32-41
under Hartman and Kamel
The Appellants argue that the rejection of claim 15 is improper
because Hartman and Kamel fail to disclose a physical “delivery box.” The
Appellants argue that the plain meaning of the word “box” is a “rigid typical
rectangular cover with or without a cover” and cites to dictionary definition
to show this (Br. 11). The Appellants further argue that the “message
queue” of Kamel is not a physical “box” for the receipt of tangible goods but
instead an electronic voice mail “box” for storage of electronic data files (Br.
11). In the Reply Brief the Appellants argue that even though the term
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“physical box” does not appear in the claim 15 the phrase “an enclosure
configured to store the ordered goods would define a “physical box” as
opposed to a “voice mailbox” (Reply Br. 2-3).
In contrast the Examiner has determined that Hartman and Kamel
have disclosed the cited limitations in claim 15 and that it would have been
obvious to combine the references to support communications between
end users (Ans. 4-5). The Examiner acknowledges that Hartman does not
disclose a box but has determined that the “message queue” of Kamel serves
as a “box” (Ans. 4). The Examiner notes that the Specification does not
require the box to be a physical box (Ans. 7).
We agree with the Appellants. We first construe the meaning of the
word “delivery box” as used by the appellant in the claims. The
Specification at page 7 describes:
Referring to FIG. 1, a delivery box 100 according to the first
preferred embodiment of the present invention is shown.
The delivery box 100 is a self-contained box which may be
integrated or added to the house, office or building. The
delivery box 100 may or may not be thermally insulated
depending on the intended use of the delivery box 100. The
delivery box 100 can be used together with heating/cooling
means such as a pre-charged gel heat or cold pouch to keep
cold items cold and warm items warm. Thermal insulation
of the delivery box 100 will make the use of the
heating/cooling means more efficient. The delivery box 100
includes a control panel 102 and an electrically controlled
lock 104. (Spec. 7:9-15).
Here, the Specification has stated that the “delivery box”:
1) maybe added to a house, office or building 2) maybe be thermally
insulated, and 3) includes a control panel. In the Specification,
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diagrams (Figures 1, 4, and 7) show a conventional rectangular box
(FF1). Upon giving claims their broadest reasonable construction
in light of the specification as it would be interpreted by one of
ordinary skill in the art we conclude that one of ordinary skill in the
art would consider the term “delivery box” to refer to a conventional
physical box of some kind for storing objects as opposed to some
type of “e-mail or voice box.” While we are aware that the
Specification does state that the box may be added to house or
include heating and cooling means which is not an absolute
requirement, a fair reading of the Specification would not consider
the “box” to be “an e-mail type inbox.” Note further that claim 15
includes limitations which require “delivering the ordered goods to
the network connected delivery box” and for the “delivery box” to
“hav[e] an enclosure configured to store the ordered goods.” Given
that the claims require the “delivery box” to “hav[e] an enclosure
configured to store the ordered goods” one of ordinary skill in the art
would consider this to be a “physical box” of some kind as opposed
to a “computer e-mail or voice inbox” of some kind. The Examiner
has acknowledged that Hartman does not disclose a “delivery box.”
While Kamel does disclose a “message queue” (FF4) as noted by the
Examiner, such a message queue cannot fairly be considered to be a
“box” in the context of the Appellants Specification and disclosure.
As Hartman and Kamel fail to disclose a “delivery box” as claimed
in light of the Specification, the rejection of claim 15 is not
sustained. For these above reasons the rejection of claim 15, and
dependent claims 16-21 and 23-25, is not sustained. Claims 32-37
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contain limitations similar to claim 15 and the rejection of these
claims is not sustained for these some reasons.
Rejection of Claims 24-25 under Hartman, Murray,
and Kamel
The Appellants argue that the rejection of claims 24-25 is
improper because the Murray reference has a § 102 (e) filing date of
August 3, 1999, which is after the filing date of the provisional
application date of the priority application 60/144,692.
The Examiner has asserted that Murray discloses the use of a
box with source of heat and temperature to maintain the temperature
inside the box. The Examiner had determined that it would have
been obvious to modify Hartman by Murray to maintain the desired
temperature levels of goods and to be further modified by Kamel to
support communications by end users (Ans. 5-6).
We agree with the Appellants. We first note that the Appellants
have failed to specifically show where the provisional application
provides support for claims 24-25 and have thus failed to meet their
burden in this regard to show priority in this regard. Regardless, we
find the combination of the references of Hartman, Kamel, and
Murray as presented in the rejection to not be obvious. Hartman and
Kamel are directed to the field of computer systems and Murray is
directed to the divergent field of an isolated, heated or cooled
transport box (FF3, FF4, FF6). There is no articulated reasoning with
some rational underpinning to support the legal conclusion of
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obviousness made with the combination of the references without
impermissible hindsight. For these reasons the rejection of claims 24-
25 is not sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 15-21, 23-25, and 32-41 under 35 U.S.C. § 103(a) as
unpatentable over Hartman and Kamel.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 24-25 under 35 U.S.C. § 103(a) as unpatentable over
Hartman, Murray, and Kamel.

DECISON
Examiner’s rejection of claims 15-21, 23-25, and 32-41 is reversed.

REVERSED

JRG

REINHOLD HOLTKAMP, JR.
6011 MARTINGALE LANE
BRENTWOOD, TN 37027
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