Ex Parte Kadaba

Board of Patent Appeals and Interferences

Sep 15, 2003

08457732 (B.P.A.I. Sep. 15, 2003)

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publication and is not binding precedent of the Board.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. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NAGESH KADABA
____________
Appeal No. 2002-0419
Application No. 08/457,732
____________
ON BRIEF
____________
Before DIXON, BARRY, and SAADAT, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 2, 3,
7-13, 16-21, 23, 24, 28-31, 33, 40, and 41, which are all of the claims pending in this
application.
We REVERSE.
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Application No. 08/457,732
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The appellant's invention relates to a method and system for preparing an
electronic record for shipping a parcel. An understanding of the invention can be
derived from a reading of exemplary claim 16, which is reproduced below.
16. A system for preparing an electronic shipping record for a parcel, and for
ordering and tracking parcel deliveries, comprising:
(a) a central computer including a tracking database for a
plurality of parcels, and means for a receiving parcel pickup request, said central
computer for downloading a parcel shipping procedure; and
(b) an intelligent telephone, comprising:
(1) an input device for receiving information;
(2) a data transfer device for receiving information from
said central computer;
(3) an information storage device;
(4) a screen device for displaying information; and
(5) a processor coupled to said input device, said data
transfer device, said information storage device, and said screen device, said processor
for:
(A) communicating with said central computer via
a network;
(B) receiving and storing said parcel shipping
procedure from said central computer;
(C) displaying said parcel shipping procedure with
said screen device as a menu of choices for selection;
(D) receiving via said parcel shipping procedure
delivery information relating to a parcel;
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(E) storing said delivery information as a shipping
record of said parcel; and
(F) transmitting said shipping record of said parcel
to said parcel pickup request receiving means and to said tracking database, in
response to receiving said delivery information.
The prior art of record relied upon by the examiner in rejecting the appealed
claims is as follows:
Shavit et al. (Shavit) 4,799,156 Jan. 17, 1989
Dlugos, Sr. et al. (Dlugos) 5,153,842 Oct. 06, 1992
Weiss et al. (Weiss) 5,195,130 Mar. 16, 1993
Balga, Jr. et al. (Balga) 5,278,947 Jan. 11, 1994
Haddock et al. (Haddock) 5,657,378 Aug. 12, 1997
(Filed Apr. 11, 1995)
Claims 2, 3, 7-13, 16-21, 23, 24, 28-31, 33, and 41 stand rejected under
35 U.S.C. § 103 as being unpatentable over Shavit in view of Dlugos further in view of
(Haddock or Weiss). Claim 40 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Shavit in view of Dlugos and (Haddock or Weiss) further in view of
Balga.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 37, mailed Sep. 28, 2001) for the examiner's reasoning in support of
the rejections, and to appellant's brief (Paper No. 36, filed Jul. 6, 2001) and reply brief
(Paper No. 38, filed Nov. 28, 2001) for appellant's arguments thereagainst.
Appeal No. 2002-0419
Application No. 08/457,732
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OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Before addressing the examiner's rejections based upon prior art, it is an
essential prerequisite that the claimed subject matter be fully understood. Analysis of
whether a claim is patentable over the prior art under 35 U.S.C. §§ 102 and 103 begins
with a determination of the scope of the claim. The properly interpreted claim must then
be compared with the prior art. Claim interpretation must begin with the language of the
claim itself. See Smithkline Diagnostics, Inc. v. Helena Laboratories Corp.,
859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988). Accordingly, we will initially
direct our attention to appellant's claim to derive an understanding of the scope and
content thereof.
Before turning to the proper construction of the claims, it is important to review
some basic principles of claim construction. First, and most important, the language of
the claim defines the scope of the protected invention. Yale Lock Mfg. Co. v.
Greenleaf, 117 U.S. 554, 559 (1886) ("The scope of letters patent must be limited to
the invention covered by the claim, and while the claim may be illustrated it cannot be
enlarged by language used in other parts of the specification."); Autogiro Co. of Am. v.
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United States, 384 F.2d 391, 396, 155 USPQ 697, 701 (Ct. Cl. 1967) ("Courts can
neither broaden nor narrow the claims to give the patentee something different than
what he has set forth [in the claim]."). See also Continental Paper Bag Co. v. Eastern
Paper Bag Co., 210 U.S. 405, 419 (1908); Cimiotti Unhairing Co. v. American Fur
Ref. Co., 198 U.S. 399, 410 (1905). Accordingly, "resort must be had in the first
instance to the words of the claim" and words "will be given their ordinary and
accustomed meaning, unless it appears that the inventor used them differently."
Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759, 221 USPQ 473, 477 (Fed.
Cir. 1984). Second, it is equally "fundamental that claims are to be construed in the
light of the specification and both are to be read with a view to ascertaining the
invention." United States v. Adams, 383 U.S. 39, 49, 148 USPQ 479, 482 (1966).
Furthermore, the general claim construction principle that limitations found only in
the specification of a patent or patent application should not be imported or read into a
claim must be followed. See In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA
1978). One must be careful not to confuse impermissible imputing of limitations from
the specification into a claim with the proper reference to the specification to determine
the meaning of a particular word or phrase recited in a claim. See E.I. du Pont de
Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7 USPQ2d 1129,
1131 (Fed. Cir.), cert. denied, 488 U.S. 986 (1988). What we are dealing with is
construction of the limitations recited in the appealed claims.
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Appellant argues that the combination of Dlugos and Shavit does not describe or
suggest preparing a shipping request for a parcel and ordering and tracking parcel
deliveries using a system that includes a central computer capable of initiating a parcel
pickup request and a tracking database entry and an intelligent telephone containing a
processor, for receiving and storing a parcel shipping procedure, storing delivery
information as a shipping record of a parcel, and transmitting delivery information to the
central computer for parcel pickup and tracking. (See brief at page 5 et seq.) We
agree with appellant.
While the examiner labors to explain and rationalize (answer at pages 5-44)
what appears to be his gut belief that the claimed invention is not patentable and
obvious over some prior art, and to force the teachings of Shavit and Dlugos into the
metes and bounds of the claimed invention, we find that even if these two teachings are
combined with either of Haddock or Weiss, the combination still does not teach or fairly
suggest the claimed invention.
First the claimed invention requires “a central computer including a tracking
database for a plurality of parcels, and means for receiving a parcel pickup request, said
central computer for downloading a parcel shipping procedure.” (Emphasis added.)
Second, the claimed invention requires “transmitting said shipping record of said parcel
to said parcel pickup request receiving means and to said tracking database, in
response to receiving said delivery information.” While Shavit teaches the use of a
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centralized computer for processing (on-line interactive concurrent) business
transactions between a plurality of different types of independent users which includes
freight service providers (Shavit abstract and col. 2) and shopping of closing details for
an urgent shipment that has to be coordinated with an agent, a source, and a shipping
company (Shavit at col. 6), we do not find a teaching or suggestion of a central
computer that contains a “means for receiving a parcel pickup request” or an intelligent
terminal that transmits the shipping record to this parcel pickup request receiving
means. Shavit at col. 7 states that a “user may use the system 50 resources for its
processing capability or it may use the system simply as a conduit to translate the
transactions and communicate them to remote computing facilities.” Therefore, Shavit
does not teach or suggest these claim limitations.
Similarly, Dlugos does not teach or suggest these claim limitations. The
examiner maintains (answer at page 5) that a means for receiving a parcel pickup
request were well known as evidenced by Dlugos. While Dlugos teaches that when an
order is packed and prepared for shipment, the information is read from the integrated
circuit package label on the parcel and other information for shipping may be input to
the terminal. This information is then uploaded to a host computer for a central record.
Throughout the remainder of Dlugos, various options for the use of the integrated circuit
package label are discussed along with the use of the integrated circuit package label
for a plurality of parcels and manifesting these parcels and processing thereof. Yet we
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find no express teaching of a request of pickup of the parcel(s) nor a “means for
receiving a parcel pickup request” or a step at an intelligent terminal of “transmitting said
shipping record of said parcel to said parcel pickup request receiving means . . . .”
The examiner maintains throughout the argument section that the manifest data
is stored and the data is transferred to the shipper in one manner or another. (See
answer at page 16 et seq.) While this may be true, it still does not evidence the
existence or suggest a “means for receiving a parcel pickup request” or a step at an
intelligent terminal of “transmitting said shipping record of said parcel to said parcel
pickup request receiving means . . . .” While we agree with the examiner that the
parcels must get to the carrier by some means, Dlugos does not evidence a means or
communication beyond the teaching at col. 13, lines 30-32, that “[t]ypically, this will
occur at a regularly scheduled pick up stop that the carrier’s representative makes each
day at the shipper’s premises.” The only teaching or suggestion we find within the four
corners of Dlugos is a scheduled pickup that would not involve or suggest a “means for
receiving a parcel pickup request” or a step at an intelligent terminal of “transmitting said
shipping record of said parcel to said parcel pickup request receiving means . . .” The
numerous citations by the examiner of the recording of the date and time of delivery or
pickup similarly do not evidence the existence of or suggest a “means for receiving a
parcel pickup request” or a step at an intelligent terminal of “transmitting said shipping
record of said parcel to said parcel pickup request receiving means . . .”
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The examiner does not rely on the teachings of Haddock or Weiss with respect to
teaching or suggesting a “means for receiving a parcel pickup request” or a step at an
intelligent terminal of “transmitting said shipping record of said parcel to said parcel
pickup request receiving means . . .” Therefore, either of these references does not
remedy the noted deficiency in the base combination. Therefore, even if we assume
that the teachings of the references were properly combinable, the combination would
not teach or fairly suggest the invention as recited in independent claim 16 and its
dependent claims 2, 3, 7-13, 17-21.
Independent claim 23 contains similar limitations to a central computer and
transmitting said delivery information and parcel pickup request to said central computer
in response to receiving said delivery information which is not taught or suggested by
the above combination. Therefore, even if we assume that the teachings of the
references were properly combinable, the combination would not teach or fairly suggest
the invention as recited in independent claim 23 and its dependent claims 24, 28-31, 33.
With respect to independent claim 41, claim 41 contains similar limitations to a
central computer and transmitting said delivery information to said central computer in
response to receiving said delivery information which is not taught or suggested by the
above combination. Additionally, independent claim 41 recites that the central computer
is configured to receive a parcel pickup request and to download a parcel shipping
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procedure which is then used to receive the delivery information and transmit the
delivery information as a shipping record back to the central computer. Therefore, even
if we assume that the teachings of the references were properly combinable, the
combination would not teach or fairly suggest the invention as recited in independent
claim 41.
With respect to independent claim 40, claim 40 contains similar limitations to
independent claim 1. Specifically, independent claim 40 recites a “means for receiving
a parcel pickup request” or a step at an intelligent terminal of “transmitting said shipping
record of said parcel to said central computer to said parcel pickup request receiving
means . . .” which are not taught by the above combination and the addition of the
teachings of Balga does not remedy the noted deficiency. Therefore, even if we
assume that the teachings of the references were properly combinable, the combination
would not teach or fairly suggest the invention as recited in independent claim 40.
Independent claim 40 contains additional limitations to displaying of a recipient
list on the screen when preparing said parcel for shipping and disabling non-selected
features. The examiner maintains that it would have been obvious to one of ordinary
skill in the art to receive and store recipient lists and to display them on the screen with
the motivation of providing an indication of the data stored and processed by the
system. Again, the examiner seems to misinterpret the language of independent claim
40. The language of claim 40 requires that the recipient list is received from the central
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computer and displayed “with the screen device when preparing said parcel for
shipping.” Therefore, the examiner’s line of reasoning concerning stored data does not
meet the claimed limitation of “when preparing,” but rather, would go to reviewing after
the parcel is prepared.
With respect to disabling the non-selectable features, the examiner takes Official
Notice and references the operating systems of MACINTOSH and WINDOWS, but has
not related this to whether the intelligent terminals/telephones of Haddock or Weiss use
these operating systems with their limited processing capabilities. (See answer at
pages 12-13.) Appellant argues that the examiner has relied upon hindsight in an
attempt to reconstruct the claimed invention. (See brief at page 16.) We agree with
appellant and do not find that the examiner has appropriately used Official Notice here.
Therefore, for the above reasons and those set forth with respect to independent
claim 1, we cannot sustain the rejection of independent claim 40.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 2, 3, 7-13, 16-21, 23,
24, 28-31, 33, 40, and 41 under 35 U.S.C. § 103(a) is reversed.
REVERSED
JOSEPH L. DIXON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
JLD:clm
Appeal No. 2002-0419
Application No. 08/457,732
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Jeffrey E. Young, Esq.
Alston & Bird LLP
Post Office Drawer 34009
Charlotte, NC 28234