Ex Parte Jones et alDownload PDFPatent Trial and Appeal BoardDec 29, 201613804772 (P.T.A.B. Dec. 29, 2016) Copy Citation 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. 13/804,772 03/14/2013 Nicholaus A. Jones 8842-130420-US 5254 122573 7590 12/30/2016 Fitch, Even, Tabin & Flannery, LLP/ Walmart 120 South LaSalle Street Suite 1600 Chicago, IL 60603-3406 EXAMINER BARAKAT, MOHAMED ART UNIT PAPER NUMBER 2689 MAIL DATE DELIVERY MODE 12/30/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte NICHOLAUS A. JONES and BRUCE W. WILKINSON Appeal 2016-005271 Application 13/804,7721 Technology Center 2600 Before ST. JOHN COURTENAY III, JENNIFER L. McKEOWN, and JOHN P. PINKERTON, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1, 4, 5, 7—10, 13, 14, and 16—18. Claims 2, 3, 6, 11, 12, and 15 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We note Appellants’ Appeal Brief (2—14) incorrectly refers to “U.S. Patent Application No. 11/738,981” in each page header. The first page of the Appeal Brief references the correct instant “Application No. 13/804,772” on appeal. To prevent mismatched papers, appropriate correction is required in all future correspondence with the USPTO. Appeal 2016-005271 Application 13/804,772 STATEMENT OF THE CASE Appellants’ invention relates to item tracking. More specifically, the invention is directed to maintaining a first historical record that correlates each of a plurality of items that each have a unique identifier with one of a plurality of locations with a facility. Upon then determining that a given one of those items is leaving the facility (for example, by detecting that the item is literally exiting a building that comprises the facility and/or that the item is being purchased), that item’s unique identifier and that first historical record are used to update a second historical record with respect to which locations within the facility are moving which items. By one approach the aforementioned unique identifier can comprise an electronic product code as comprises a part of a corresponding RFID tag. Abstract. Claim 1 is illustrative of the claimed invention and reads as follows: A method comprising: maintaining a first historical record correlating each of a plurality of items that are being offered for sale at retail and that each have a radio-frequency identification (RFID) tag having a unique identifier, such that each of the plurality of items can be individually identified, with one of a plurality of locations within a retail-sales facility; determining that a given one of the plurality of items is leaving the facility; and using the unique identifier for the given one of the plurality of items and the first historical record to update a second historical record with respect to which locations within the facility are moving which items. THE REJECTIONS The Examiner rejected claims 1,4, 8—10, 13, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over Stem (US 8,077,041 Bl; Dec. 13, 2011) and Jones (US 8,332,656 B2; Dec. 11, 2012). Final Act. 2-6. 2 Appeal 2016-005271 Application 13/804,772 The Examiner rejected claims 5 and 14 under 35 U.S.C. § 103(a) as unpatentable over Stem, Jones, and Adamee (US 8,120,469 B2; Feb. 21, 2012). Final Act. 14—15. Final Act. 6—7. The Examiner rejected claims 7 and 16 under 35 U.S.C. § 103(a) as unpatentable over Stem, Jones, Hungerford, III (US 6,684,980 B2; Feb. 3, 2004), and Ulrich (US 2009/101712 Al; Apr. 23, 2009). Final Act. 7-8. ANAFYSIS The Obviousness Rejection Based on Stern and Jones Claims 1, 4, 8—10, 13, 17, and 18 Based on the record before us, we are not persuaded of error in the Examiner’s rejection of claims 1, 4, 8—10, 13, 17, and 18 as unpatentable over Stem and Jones. Appellants assert that the combination of Stem and Jones fails to teach or suggest “determining that a given one of the plurality of items is leaving the facility,” as recited in claim 1. App. Br. 8—10. Appellants, in particular allege that Stem fails to teach this limitation. Id. The Examiner, however, acknowledges that Stem lacks this limitation and instead relies on the teachings of Jones. See Final Act. 3. Appellants similarly recognize in the Reply Brief that Jones describes “A retail store including RFID readers for tracking items entering, within and leaving the retail store” (Reply Br. 2 (quoting Jones col. 8,11. 22-41)) without any further argument. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 3 Appeal 2016-005271 Application 13/804,772 For the first time in the Reply Brief, Appellants contend that Stem and Jones are insufficient because “the information for the item that is leaving the facility is then used, in combination with historical information from a first historical record, to ‘update a second historical record with respect to which locations within the facility are moving which items.’” Reply Br. 3. According to Appellants, both Stem and Jones are directed to maintaining inventory within the retail store, not with respect to which locations within the facility are moving which items. Reply Br. 3. This argument, however, was raised for the first time in the Reply Brief and is therefore waived as untimely. 37 CFR § 41.41(b)(2); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[The reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). In the event our reviewing court might find Appellants’ argument in the Reply Brief (3) to be timely, we find Appellants’ argument unpersuasive. As acknowledged by Appellants, Jones discloses “tracking items entering, within and leaving the retail store” and expressly refers to the items being sold. Reply Br. 3. Stem describes updating database information when an item is sold. Stem col. 6,11. 27—36. Together, Stem and Jones at least suggest updating a database, i.e., second historical record, with information regarding the location within the facility where the item was sold or moved. Further, Appellants have not presented any persuasive argument or evidence that the recited “moving” must be interpreted only as a sale of an item, rather than merely moving the item within the facility, which 4 Appeal 2016-005271 Application 13/804,772 Appellants acknowledge is taught by both Stem and Jones. 2 For example, the Specification uses the term “moves” as referring to movement within the store, rather than a sale of an item. Spec 119 (discussing that “. . . RFID-tag readers can serve to detect when a given RFID-tag moves from one location to another.”). As such, we are not persuaded that the Examiner erred in finding that Jones and Stem teach “using the unique identifier for the given one of the plurality of items and the first historical record to update a second historical record with respect to which locations within the facility are moving which items,” as recited in claim 1. Accordingly, for the reasons discussed above and by the Examiner, we sustain the rejection of claim 1, as well as claims 4, 8—10, 13, 17, and 18 not argued with particularity (see App. Br. 10), as unpatentable over Stem and Jones. See 37 C.F.R. § 41.37(c)(l)(iv). The Remaining Obviousness Rejections Claims 5, 7, 14, and 16 Appellants present no separate arguments of patentability for claims 5, 7, 14, and 16 and, instead, rely on the arguments presented for claim 1. See App. Br. 10. For the reasons discussed above, we find Appellants’ arguments with respect to claim 1 unpersuasive. Accordingly, we sustain the remaining obviousness rejections. 2 Because “applicants may amend claims to narrow their scope, a broad constmction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). 5 Appeal 2016-005271 Application 13/804,772 DECISION We affirm the Examiner’s decision rejecting claims 1, 4, 5, 7—10, 13, 14, and 16-18. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED 6 Copy with citationCopy as parenthetical citation