10427128 (B.P.A.I. Mar. 24, 2010)

Ex Parte Lahiri

Board of Patent Appeals and InterferencesMar 24, 2010

10427128 (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte SANDIP LAHIRI ____________________ Appeal 2009-012067 Application 10/427,128 Technology Center 3600 ____________________ Decided: March 24, 2010 ____________________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and KEVIN F. TURNER, Administrative Patent Judges. TURNER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-012067 Application 10/427,128 2 STATEMENT OF CASE Appellant seeks our review under 35 U.S.C. § 134 of the Final Rejection of claim 1. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE.1 THE INVENTION Appellant’s claimed invention relates to a method for processing articles being shipped. The descriptive characteristics of the article are acquired at a first site and the processing and desired disposition of the article is determined at a second site which is physically separate from the first site. (p. 3, ll. 7-21). The pertinent portion of Independent claim 1, reads as follows:2 1. A method for processing an article being transported at a first location by a user located at a second location, said first location being isolated from said second location, said method comprising: . . . said method further including enabling said user to select one of a plurality of article disposal options, one of which is to destroy the article, after viewing said perceptible image of said contents and thereafter disposing of said article at said first location in accordance with said selected article disposal option made by said user at said second location. 1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,” filed Feb. 6, 2009) and the Examiner’s Answer (“Ans.,” mailed Mar. 17, 2009). 2 Remaining portions of Appellant’s Independent claim 1 may be found in Appellant’s Appeal Brief. Appeal 2009-012067 Application 10/427,128 3 THE REJECTION The prior art relied upon by the Examiner in rejecting the claims on appeal is: Owens et al. 5,299,116 Mar. 29, 1994 McClelland et al. 6,707,879 B2 Mar. 16, 2004 The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as being unpatentable over McClelland and Owens. ARGUMENTS The Examiner found that McClelland and Owens described all the method steps of claim 1 except for the step of “. . . enabling said user to select on of a plurality of article disposal options, one of which is to destroy the article . . .” (Ans. 4) (See also Br. 15). To address these limitations, the Examiner first found that, “[l]anguage as to ‘one of which (disposal option) is to destroy the article’ does not require a method step to be performed, and, therefore is given no patentable weight” (Ans. 5) and secondly, went on to find that: McClelland does teach that the image file may be used to analyzed to identify contraband such as drugs. So as it is old and well known that the possession of illegal drugs is prohibited, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the references to include that one of which (disposal option) is to destroy the article, for the benefit of being in compliance with the Law. [sic] (Ans. 5). Further, the Examiner argued that “McClelland discloses [the] same decision algorithm – segregating the item, and selecting to clear the item or Appeal 2009-012067 Application 10/427,128 4 not. Modifying McClelland to include [a] ‘destroy’ option would be obvious in this case.” (Ans. 7). In response, the Appellant argues that contrary to the Examiner’s assertion that enabling a user to “destroy the article” does not require steps to be performed (Ans. 5), indeed the step is a user selected step. (Br. 8). Further, Appellant argues that inter alia, the combination of McClelland and Owens fails to teach or suggest a “. . . user input of one of several options, one of which is to destroy the article, after viewing the contents of the selected article.” (Br. 8-9). ISSUE Would one of ordinary skill have found it obvious to modify the combination of McClelland and Owens to “destroy the article,” as recited in independent claim 1? PRINCIPLES OF LAW “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). Appeal 2009-012067 Application 10/427,128 5 ANALYSIS Appellant argues that contrary to the Examiner’s assertion that enabling a user to “destroy the article” does not require steps to be performed (Ans. 5), indeed the step is a user selected step. (Br. 8). We agree with the Appellant and find that Appellant’s claim language positively recites the user selected step of further enabling a user to destroy the article, thus defining a step or act to be performed as required by MPEP 2106. Therefore, we find that this step further limits the subject matter of the present claim and accordingly give the step weight based on our claim analysis. Next, Appellant generally argues that it would not be obvious to modify McClelland and Owens to “. . . destroy the article, after viewing the contents of the selected article, as recited in claim 1. (Br. 8-9). We agree. While we agree with the Examiner that an operator in McClelland does make a decision as to whether or not to clear an item under inspection (Ans. 3-4), we cannot agree that this decision would lead one of ordinary skill to destroy the item after viewing its contents. Contrary to the Examiner’s contention (Ans. 5), we find that any contraband identified by a baggage screening system would most likely be retained and forwarded to the proper law enforcement agency and then later, after some type of investigation, dealt with accordingly. Similarly, we find no basis to modify the baggage tracing system of Owens based on this same rationale. Rejections 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 Appeal 2009-012067 Application 10/427,128 6 obviousness. KSR, 550 U.S. at 417-418, quoting In re Kahn, 441 F.3d 977, 988 (Fed. 2006). Here, the Examiner has made no findings as to how such a modification to the combination would occur other that to say the addition of a disposal option to destroy the article would be, “. . . for the benefit of being in compliance with the law.” (Ans. 5). As such, we find that the Examiner erred in rejecting claims 1 under 35 U.S.C. § 103(a) as being unpatentable over McClelland and Owens. CONCLUSION OF LAW We conclude that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) as unpatentable over McClelland and Owens. DECISION The Examiner’s rejection of claim 1 before us on appeal is REVERSED. 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. § 1.136(a)(1)(iv) (2007). REVERSED ack cc: Robert V. Wilder Attorney at Law 4235 Kingsburg Drive Round Rock, TX 78681