Ex Parte Janda

Board of Patent Appeals and Interferences

Nov 4, 2009

10026965 (B.P.A.I. Nov. 4, 2009)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVEN R. JANDA
____________________

Appeal 2009-010704
Application 10/026,965
Technology Center 3600
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Decided: November 4, 2009
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Before HUBERT C. LORIN, STEVEN D.A. McCARTHY and
BIBHU R. MOHANTY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 (2002) from the 2
Examiner’s decision finally rejecting claims 1, 2, 5-15, 31 and 32 under 35 3
U.S.C. § 101 (2002) as being directed to nonstatutory subject matter; finally 4
rejecting claims 16-18, 20, 21, 29 and 30 under 35 U.S.C. § 102(e) 5
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(2002) as being anticipated by Brown (US 2002/0118111 A1, publ. Aug. 29, 1
2002); and finally rejecting claims 1, 2, 5-15, 19, 22, 31 and 32 under 35 2
U.S.C. § 103(a) (2002) as being unpatentable over Brown. We have 3
jurisdiction under 35 U.S.C. § 6(b) (2002). 4
We AFFIRM. 5
The claimed subject matter relates to systems and methods of 6
managing rental equipment which automates the pick up and return of the 7
equipment. (Spec. 18, ¶ 59). The Appellant asserts that the claimed subject 8
matter is applicable to any rental business. (Spec. 18, ¶ 60). 9
Claim 16 is typical of the claims on appeal: 10
16. A system for managing rental 11
equipment, comprising: 12
a first secure area; 13
a plurality of second secure areas accessible 14
from the first secure area, one of which is assigned 15
to a customer; 16
a rental component that generates a rental 17
list of a plurality of rental equipment items 18
removed from the second secure area assigned to 19
the customer; 20
an access controller that selectively allows 21
the customer to access the second secure area 22
assigned to the customer; 23
a return component that generates a return 24
list of rental equipment items returned to the 25
second secure area by the customer and 26
determined at least one missing rental equipment 27
item listed on the rental list but not listed on the 28
return list; and 29
an invoice component that bills the customer 30
for a cost associated with the missing rental 31
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equipment item. 1
2
ISSUES 3
The Examiner entered a new ground of rejection in the Examiner’s 4
Answer against claims 1, 2, 5-15, 31 and 32 under §101 as being directed to 5
nonstatutory subject matter. (Ans. 2).1 The Examiner properly gave notice 6
of the new ground of rejection. (Id.; Ans. 17-18). The Technology Center 7
Director approved the new ground of rejection. (Ans. 18). As the Answer 8
indicates (Ans. 17-18), the Appellant was required to respond to the new 9
ground within two months in either of two ways: 1) reopen prosecution (see 10
37 CFR § 41.39(a)(2)(b)(1) (2009)); or 2) maintain the appeal by filing a 11
reply brief as set forth in 37 CFR 41.41 (see 37 CFR § 41.39(a)(2)(b)(2) 12
(2009)), “to avoid sua sponte dismissal of the appeal as to the claims 13
subject to the new ground of rejection.” (Ans. 17). According to the record 14
before us, the Appellant does not appear to have exercised either option. 15
Accordingly, we DISMISS the appeal as to the claims subject to the 16
new ground of rejection under §101, namely, claims 1, 2, 5-15, 31 and 32. 17
Given that the appeal as to claims 1, 2, 5-15, 31 and 32 stands 18
dismissed, the rejections before us for review are reduced to the following: 19
the rejection of claims 16-18, 20, 21, 29 and 30 under 20
§ 102(e) as being anticipated by Brown; and 21
the rejection of claims 19 and 22 under § 103(a) as being 22
unpatentable over Brown. 23

1 The abbreviation “Ans.” refers to the Examiner’s Answer mailed
December 9, 2008.
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The Appellant’s sole argument regarding the novelty of independent 1
claim 29 and dependent claim 30 is that claims 29 and 30 are not anticipated 2
for the same reasons discussed with regard to independent claim 16. (App. 3
Br. 14; see generally App. Br. 13-14; Reply Br. 2-3). The Appellant’s sole 4
argument regarding the novelty of claims 17, 18, 20 and 21 is that the claims 5
depend from claim 16. (Id.) Therefore, the Appellant argues claims 16-18, 6
20, 21, 29 and 30 as a group. Independent claim 16 is representative of the 7
group. See 37 C.F.R. § 41.37(c)(1)(vii). 8
The Appellant contends that Brown fails to disclose or suggest a first 9
secure area and one or more second secure areas assigned to customers. 10
(App. Br. 12-13 and 15; Reply Br. 2). The Examiner finds that Brown 11
discloses a secure storage room and that portions of the secure storage room 12
correspond to the first and second secure areas recited in claim 16. (Ans. 9-13
10). The Appellant contends that Brown fails to disclose a return component 14
that determines at least one missing rental equipment item listed on a rental 15
list but not listed on a return list. (App. Br. 13). The Appellant further 16
contends that Brown fails to disclose an invoice component that bills a 17
customer for a cost associated with a missing rental equipment item. (App. 18
Br. 14). The Examiner finds that Brown discloses a database and 19
programming defining rental and invoice components. (Ans. 4 and 5). 20
The Appellant contends that independent claim 19 and dependent 21
claim 22 are patentable over Brown for the same reasons the Appellant 22
contends claim 16 is not anticipated by Brown. (App. Br. 19-20). The 23
Appellant’s arguments regarding claims 19 and 22 do not appear to raise any 24
issues not already raised in connection with the rejection of claim 16. 25
Therefore, the Appellant presents three issues in this appeal: 26
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Has the Appellant shown that the Examiner erred in 1
finding that Brown discloses a first secure area and one or more 2
second secure areas assigned to customers? 3
Has the Appellant shown that the Examiner erred in 4
finding that Brown discloses a return component that 5
determines at least one missing rental equipment item listed on 6
a rental list but not listed on a return list? 7
Has the Appellant shown that the Examiner erred in 8
finding that Brown discloses an invoice component that bills a 9
customer for a cost associated with a missing rental equipment 10
item? 11
12
FINDINGS OF FACT 13
The record supports the following findings of fact (“FF”) by a 14
preponderance of the evidence. 15
1. Brown discloses an inventory control system that allows for the 16
identification of an individual entering a confined space and the association 17
of the individual’s identity with the movement, addition or removal of 18
objects of inventory in that space. (Brown 1, ¶ 0002 and 2, ¶ 0017). 19
2. Brown’s system includes a storage room 110 having a locking 20
mechanism 170 which limits access to the room. When an authorized 21
person 160 is identified to the locking mechanism 170 by means of an access 22
code or an access card, the locking mechanism 170 unlocks to permit the 23
person to enter the storage room 110. (Brown 3, ¶ 0025). 24
3. One of ordinary skill in the art, seeing the layouts of the storage 25
room 110 shown in Figs. 1A, 1B and 2 of Brown, would understand that the 26
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room could be divided into separate areas of arbitrary size and shape. That 1
is, one of ordinary skill in the art would understand that different portions of 2
the floor space of the storage room 110 might be assigned arbitrarily to a 3
“first area” or to “second areas” of the room. The layouts shown in Figs. 4
1A, 1B and 2 of Brown indicate that any such area within Brown’s storage 5
room 110 would be accessible from any separate area within the room. 6
4. Brown discloses monitoring objects of inventory 112, 114, 116 7
stored in the storage room 110 with radio frequency identification [“RFID”] 8
tags 120, 122, 124. (Brown 2, ¶¶ 0020-21). Brown’s RFID system 220 9
communicates with a server 230. (Brown 3, ¶ 0027). 10
5. Brown describes a database management system in the server 11
230 which maintains a record associating the ingress of objects in the 12
storage room, the egress of objects from the storage room or the movement 13
of objects within the storage room, with the identity of the person removing 14
or returning the objects. (Brown, col. 3, ¶ 0029). 15
6. A user may access an entry in this record pertaining to an event 16
in the storage room. In this manner, the user may access information 17
regarding objects in inventory such as to determine the presence or absence 18
of objects in inventory, to determine the location of an object in inventory or 19
to reserve an object in inventory. (Brown 3-4, ¶ 0030). More generally, 20
Brown discloses a method in which a user accesses information regarding 21
the addition, removal, return or other movement of objects to, from or within 22
a controlled space associated with identity information in a server through 23
one or more client computers coupled to the server through a network. 24
(Brown 5, claim 15). 25
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7. One of ordinary skill in the art would have understood the 1
disclosures of FF 5 and 6 to imply that the database management system 2
distinguished between database entries associating the identity of a person 3
with the removal of objects from inventory from database entries associating 4
the identity of a person with the return of objects to inventory. 5
8. Brown discloses the use of the system to automatically bill a 6
party for objects in inventory. (Brown 4, ¶ 0033). That is, Brown discloses 7
automatically notifying a designated person regarding the removal or return 8
of objects of inventory. (Brown, 5, claim 17). Brown’s system 9
automatically bills the customer as a result of the notification. (Brown 5, 10
claim 20). 11
12
PRINCIPLES OF LAW 13
A claim under examination is given its broadest reasonable 14
interpretation consistent with the underlying specification. In re American 15
Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the 16
absence of an express definition of a claim term in the specification or a 17
clear disclaimer of scope, the claim term is interpreted as broadly as the 18
ordinary usage of the term by one of ordinary skill in the art would permit. 19
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In 20
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Properties of preferred 21
embodiments described in the specification which are not recited in a claim 22
do not limit the reasonable scope of the claim. E-Pass Techs., Inc. v. 3Com 23
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Elements recited in a claim 24
presented for examination are not limited to those components capable of 25
performing particular unrecited functions or achieving particular results 26
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merely because the underlying specification describes those functions or 1
results as desirable. 2
A claim reciting a system may be anticipated by a reference disclosing 3
a device which includes each recited structural limitation in the claim and 4
which is capable of performing each recited functional limitation which does 5
not define a structural relationship between elements of the claimed 6
apparatus or system. See, e.g., In re Schreiber, 128 F.3d 1473, 1478-79 7
(Fed. Cir. 1997) (upholding the Board’s affirmance of a rejection under 8
section 102(b) on the basis of a finding that a device disclosed in a prior art 9
reference was capable of performing a function which the appellant alleged 10
to distinguish the appellant’s apparatus from the device). 11
12
ANALYSIS 13
Brown discloses a first secure area and a plurality of second secure 14
areas accessible from the first secure area. Brown’s inventory control 15
system includes a storage room having a locking mechanism which secures 16
any area within the room. (FF 2). Hence, any area within the storage room 17
(such as an area of arbitrary size and shape adjacent the door) constitutes a 18
first secure area. Any separate area within the storage room (such as an area 19
of arbitrary size and shape containing objects which a customer might 20
remove) constitutes a second secure area. The second secure areas would be 21
accessible from the first secure area. (See FF 3). 22
The Appellant uses the terms “first secure area” and “plurality of 23
second secure areas accessible from the first secure area” broadly enough to 24
reasonably include areas within the same secure storage room so long as 25
each second secure area is accessible from the first secure area. The 26
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Appellant does not call our attention to any passage of the Specification 1
defining the term “second secure areas” or clearly disclaiming the broadest 2
ordinary usage of the term. The Appellant specifically fails to identify any 3
claim language or Specification passage clearly requiring that access from 4
the first secure area to any second secure area be selective. (See, e.g., Spec. 5
6, ¶ 25 (“Second secured area 104 may include an access controller 112.” 6
[Emphasis added])). 7
Brown discloses a rental list and a return list. Brown’s system 8
includes a database management system which maintains a record 9
associating the identity of a person with the person’s removal of an object 10
from the storage room or the person’s return of the object to the storage 11
room. (FF 5). The removal of items from the storage room implies removal 12
of those items from the second secure area. Since the database management 13
system is capable of distinguishing database entries associating the identity 14
of a person with the return of objects to inventory (FF 7), it generates a 15
return list of objects returned by a person (for example, a customer) to the 16
second secure area within the storage room. Claim 16 does not limit the 17
format of the return and rental lists within the database: The Appellant’s 18
claim language does not exclude storing both the rental and return lists in a 19
global record of all movements of objects relative to the storage room. 20
Brown discloses a return component. Brown discloses that a user may 21
access entries in the record maintained by Brown’s database management 22
system to determine the absence of an object in inventory. (FF 6). In other 23
words, the programming of Brown’s server includes a process that 24
determines at least one missing item, that is, at least one item which is the 25
subject of an entry indicating the movement of the item out of inventory and 26
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which is not the subject of a corresponding entry indicating movement of the 1
item into the storage room. That process is the return component. 2
Brown also discloses an invoice component that bills the customer for 3
a cost associated with a missing object. The Appellant uses the term “cost 4
associated with the missing rental equipment item” broadly enough to 5
reasonably include a charge for items removed from a rental inventory. The 6
Appellant does not call to our attention any passage of the Specification 7
formally defining the term “cost associated with the missing rental item” or 8
clearly disclaiming the broadest ordinary usage of the term. Brown’s system 9
is capable of automatically billing a customer for objects on a continuous 10
basis when the objects are removed from inventory. Alternatively, Brown 11
discloses automatically billing a customer for objects in inventory on a batch 12
mode (that is, periodic) basis. (FF 8). Although Brown does not disclose 13
the nature of the charge for which the customer is billed, Brown does 14
disclose an invoice component that bills the customer for some cost 15
associated with the missing object. 16
17
CONCLUSIONS 18
The Appellant has not shown that the Examiner erred in finding that 19
Brown discloses a first secure area and one or more second secure areas 20
assigned to customers. 21
The Appellant has not shown that the Examiner erred in finding that 22
Brown discloses a return component that determines at least one missing 23
rental equipment item listed on a rental list but not listed on a return list. 24
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The Appellant has not shown that the Examiner erred in finding that 1
Brown discloses an invoice component that bills a customer for a cost 2
associated with a missing rental equipment item. 3
The Appellant has not shown that the Examiner erred in rejecting 4
claims 16-18, 20, 21, 29 and 30 under § 102(b) as being anticipated by 5
Brown. Neither has the Appellant shown that the Examiner erred in 6
rejecting claims 19 and 22 under § 103(a) as being unpatentable over Brown. 7
8
DECISION 9
We DISMISS the appeal as to the claims subject to the new ground of 10
rejection under §101, namely, claims 1, 2, 5-15, 31 and 32. 11
Upon return of the application to the Examiner, the Examiner should: 12
(1) cancel claims 1, 2, 5-15, 31 and 32; and 13
(2) notify the Appellant that the appeal as to the claims 14
subject to the new ground of rejection under §101 is dismissed 15
and that claims 1, 2, 5-15, 31 and 32 are cancelled. 16
See MANUAL OF PATENT EXAMINING PROCEDURE § 1207.03, 8th ed., Rev. 7, 17
Jul. 2008. 18
We AFFIRM the decision of the Examiner to reject claims 16-22, 29 19
and 30. 20
No time period for taking any subsequent action in connection with 21
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 22
§ 1.136(a)(1)(iv) (2007). 23
24
AFFIRMED 25
26
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mls 1
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CATERPILLAR/FINNEGAN, HENDERSON, L.L.P. 4
901 NEW YORK AVENUE, NW 5
WASHINGTON, DC 20001-4413 6