Ex Parte Martin et al

Patent Trial and Appeal Board

Feb 24, 2017

13109603 (P.T.A.B. Feb. 24, 2017)

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.
13/109,603 05/17/2011 Robert Lee Martin JR. 10431 PUS ;67080-498PUS 1 1755
26096 7590 12/01/2016
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
KEATON, SHERROD L
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
12/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptodocket @ cgolaw. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT LEE MARTIN JR., ZACHARY THOMAS MARTIN,
MATTHEW LESTER DANNENFELDT, JEREMY HECTOR,
DUSTIN JOSEPH DePANFILIS, and JOE DELANEY
Appeal 2015-008004
Application 13/109,603
Technology Center 2100
Before ALLEN R. MacDONALD, IRVIN E. BRANCH, and
JON M. JURGOVAN, Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1—16 and 18—23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.2
1 Appellants identify REHRIG PACIFIC COMPANY as the real party in
interest. (App. Br. 1.)
2 Our Decision refers to the Specification filed May 17, 2011 (“Spec.”), the
Final Office Action mailed June 6, 2014 (“Final Act.”), the Appeal Brief
filed Jan. 6, 2015 (“App. Br.”), the Examiner’s Answer mailed June 30,
2015 (“Ans.”), and the Reply Brief filed Aug. 31, 2015 (“Reply Br.”).
Appeal 2015-008004
Application 13/109,603
CLAIMED INVENTION
The claims are directed to a cart tracking system. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for distributing carts along a route including the
steps of:
a) displaying a list of addresses along a selected route
in response to a user input selecting the selected route from a
plurality of available routes;
b) displaying information about a selected address
from the list of addresses in response to a user input selecting the
selected address, the information including a requested cart type;
and
c) receiving a serial number of a cart to be delivered to
the selected address and associating the serial number with the
selected address.
(App. Br. 8 — Claims App’x.)
REJECTIONS
Claims 1, 6—8, and 13—15 stand rejected under 35 U.S.C. § 103(a)
based on Norgrove (GB 2 404 064 A, pub. Jan. 19, 2005), Stringham
(US 6,856,860 B2, iss. Feb. 15, 2005) and Rehrig Pacific Company,
Container and Service Tracking: Leveraging Data to Efficiently Manage
Four Assets; © 2008) (“RPC”). (Final Act. 2-7.)
Claim 2 stands rejected under 35 U.S.C. § 103(a) based on Norgrove,
Stringham, RPC, and Chaudhuri (US 2006/0265247 Al, pub. Nov. 23,
2006). (Final Act. 7-8.)
Claim 3 stands rejected under 35 U.S.C. § 103(a) based on Norgrove,
Stringham, RPC, Chaudhuri, and Jouvin (US 2008/0290153 Al, pub. Nov.
27, 2008). (Final Act. 8-9.)
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Claim 4 stands rejected under 35 U.S.C. § 103(a) based on Norgrove,
RPC, Stringham, and Scott (US 8,260,647 B2, iss. Sept. 4, 2012). (Final
Act. 9-10.)
Claim 5 stands rejected under 35 U.S.C. § 103(a) based on Norgrove,
RPC, Stringham, and Dearing (US 2007/0094155 Al, pub. Apr. 26, 2007).
(Final Act. 10—12.)
Claim 9 stands rejected under 35 U.S.C. § 103(a) based on Norgrove,
Stringham, and Scott. (Final Act. 12—13.)
Claims 10-12 stands rejected under 35 U.S.C. § 103(a) based on
Norgrove, Stringham, Scott, and RPC. (Final Act. 14—15.)
Claims 16 and 21—23 stand rejected under 35 U.S.C. § 103(a) based
on Norgrove, Oswald, Stringham, RPC, and Chaudhuri. (Final Act. 16—20.)
Claim 18 stands rejected under 35 U.S.C. § 103(a) based on
Norgrove, Oswald (US 2009/0240554 Al, pub. Sept. 24, 2009), Stringham,
RPC, Chaudhuri, and Jouvin. (Final Act. 20-21.)
Claim 19 stands rejected under 35 U.S.C. § 103(a) based on
Norgrove, Oswald, Stringham, RPC, Chaudhuri, and Scott. (Final Act. 21—
22.)
Claim 20 stands rejected under 35 U.S.C. § 103(a) based on
Norgrove, Oswald, Stringham, RPC, Chaudhuri, and Dearing
(US 2007/0094155 Al, pub. Apr. 26, 2007). (Final Act. 22-24.)
ANALYSIS
We address Appellants’ arguments in the order presented in their
Appeal Brief in the following sections of this Decision.
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Application 13/109,603
Claim 1
A. “Teaching Away ” Argument
Appellants argue that Stringham’s distributing mail to houses is not
similar to distributing recycling containers to houses because mail is
addressed to houses whereas recycling containers are fungible (i.e., it does
not matter which container is delivered to which house). (App. Br. 4.)
Appellants also note that a person may get many pieces or no mail on a
particular day in Stringham, whereas everyone gets one recycling container
in Norgrove. (Id.) According to Appellants, mail is delivered almost every
day in Stringham, but people may go years between receiving recycling
containers. Also, Appellants argue the point of Stringham is to create a
route so mail can be sorted for easy delivery (Stringham 7:29-31) but there
is no “sorting” of recycling containers in Norgrove.
Appellants do not specifically mention the legal basis for their
argument, which is unpersuasive for this reason alone. As near as we can
determine, the argument appears to be based on the principle that references
cannot be combined where the references teach away from their
combination. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). “A
reference may be said to teach away when a person of ordinary skill, upon
[examining] the reference, would be discouraged from following the path set
out in the reference, or would be led in a direction divergent from the path
that was taken by the applicant.” Para-Ordnance Mfg., Inc. v. SGS
Importers Int 7, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (citingIn re
Gurley, 27 F.3d 551 (Fed.Cir.1994)). As the Examiner correctly notes,
Appellants have not shown that anything in Norgrove or Stringham
explicitly excludes or negates their combination. (Ans. 3—4.) Merely
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pointing out differences in the references does not amount to discouraging
their combination.
Turning to Appellants’ specific arguments, we find them flawed for
several reasons. Norgrove teaches that the containers are provided with
unique container identities electronically assigned to household addresses.
(Norgrove 2:414, 26—30.) Thus, Norgrove’s containers are not “fungible” as
Appellants assert, but instead are assigned uniquely to each household
address. Although Stringham’s mail may be addressed at the sender’s
location whereas Norgrove’s containers are assigned at household addresses,
we do not agree this distinction forms a basis for the references teaching
away from one another. This is particularly true where Appellants do not
show what bearing “fungible” has to any finding the Examiner made in
connection with the prior art teachings, the stated reason to combine the
references, or how it relates to any feature of the claim.
Furthermore, Appellants have not demonstrated how distributing mail
on a daily basis versus recycling containers less frequently would have
discouraged a person of ordinary skill from combining the references as
indicated by the Examiner. (Final Act. 2-4.) The mere fact that mail may
be distributed daily, and containers less frequently, even if true, does not
amount to discouraging the combination. Moreover, a person of ordinary
skill would have recognized that some kinds of mail, such as periodicals,
catalogs, directories, etc., may be distributed less frequently. A person of
ordinary skill would have understood that such mailings may be replaced
when they become out-of-date or wear out, the same as recycling containers.
We also note that distribution frequency bears no relationship to any
teaching or reason the Examiner relies on to combine the references, nor do
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the claims recite any such feature. For all of these reasons, we do not find
Appellants’ argument persuasive.
We further disagree with Appellants’ argument that Stringham creates
a route so mail can be sorted for easy delivery, whereas Norgrove discloses
no “sorting” of recycling containers. The Examiner neither relies on
Stringham’s mail sorting to teach any claimed feature, nor do the teachings
relied on by the Examiner or the reason to combine the references bear any
connection to sorting. Thus, Appellants’ argument does not establish the
references teach away from one another, particularly not as concerns the
claimed invention. Accordingly, we are not persuaded by Appellants’
arguments.
B. Argument Concerning Information about a Selected Address
Appellants argue that the Examiner errs by relying on Stringham’s
teaching of a signature required for mail delivery as the claimed
“information about a selected address.” (App. Br. 5, Reply Br. 1—2.)
Appellants argue Stringham’s requiring a signature for delivery of a
recycling cart is not applicable to Norgrove’s cart delivery system, and does
not have anything to do with delivering a large number of inexpensive,
fungible items. (Id.) Appellants argue the Examiner is simply looking in the
prior art for “information about a selected address” without regard for
whether it makes any sense in Norgrove. (Id.)
The Examiner finds that Stringham provides information about
addresses as they are selected or approached by a delivery vehicle. (Final
Act. 3, Ans. 3 citing Stringham Fig. 6, 6:1—7:67.) Specifically, Stringham
discloses a wireless device that can be used to capture signatures on
electronic signature slips for mail recipients to accept delivery of mail items
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at selected addresses. (Stringham 7:8—12; 7:53—63.) We agree with the
Examiner that under broadest reasonable interpretation the claimed
“information about a selected address” is taught by Stringham’s signature
that is required to accept a mail delivery at a selected address. In re Am.
Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Furthermore,
we see no reason why Stringham’s electronic signature capability could not
be combined with Norgrove to accept delivery of a recycling container.
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 415—416 (2007). We previously
addressed Appellants’ argument concerning Norgrove’s recycling container
being “fungible” whereas Stringham’s mail is addressed to a recipient. We
do not find this argument persuasive for the reasons explained.
Claim 13
Appellants argue, for reasons previously discussed, it would not make
sense to modify Norgrove in light of Stringham and the RPC brochure.
(App. Br. 5.) For the reasons explained, we are not persuaded the Examiner
errs in the rejection of claim 13.
Claim 2
Appellants state Chaudhuri discloses a prescription delivery system.
(App. Br. 6, Reply Br. 2.) Appellants argue prescriptions must be delivered
to a specific address and only that specific address, which, Appellants argue,
is even more important than Stringham’s mail delivery system. Appellants
argue this is the opposite of Norgrove. (Id.)
Appellants’ argument concerning claim 2 is a reiteration of the
“fungible” argument previously addressed, extended to Chaudhuri. As
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explained, we do not find this argument persuasive. Whether an item is
addressed at a sender’s location or assigned at a delivery address is not such
a distinction as would have precluded a person of ordinary skill in the art
from combining the references as done by the Examiner. This is particularly
true where this supposed distinction is unrelated to any limitation of the
claim or any finding made by the Examiner.
Furthermore, many recipients receive the same types of prescriptions
(e.g., pain killers, statins for high cholesterol, etc.), just as recipients may
receive the same mail items (newspapers, coupon books, catalogs,
periodicals, etc.) or recycling containers. We are not persuaded a person of
ordinary skill in the art would have been discouraged from combining the
teachings concerning delivery of the items mentioned in these references on
the basis of the “fungible” nature of the items delivered. We find no error in
the Examiner’s findings or conclusion of obviousness based on Appellants’
arguments. (Final Act. 7—8, Ans. 4 citing Chaudhuri | 53.)
Claim 3
Appellants extend their “fungible” argument to Jouvin, contending
that this reference deals with specifically-directed deliveries and tracking
those deliveries. (App. Br. 6, Reply Br. 2.) Again, the urged distinction that
some of the references address items for delivery at the senders’ location
whereas Norgrove assigns containers at the delivery address is not such that
a person of ordinary skill in the art would be discouraged from making the
combination, particularly where the distinction has no bearing on the claim
limitations or the Examiner’s findings. (Final Act. 8—9 citing Jouvin 148.)
Appellants also argue claim 3 recites “receiving a user input
indicating the cart was associated with a wrong address.” (App. Br. 6, Reply
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Br. 2.) Appellants argue there are no “wrong addresses” in Norgrove. To
the contrary, the Examiner finds this limitation taught by Jouvin. (Final Act.
8—9, Ans. 4—5 citing Jouvin 148.) Specifically, the Examiner states that
Jouvin’s delivery failure would trigger Norgrove’s corrective action (3:5—10,
20—24.) We find no error in the Examiner’s findings. Thus, we sustain the
rejection.
Claims 16 and 21—23
Appellants argue that it would not be obvious to modify Norgrove and
Chaudhuri for the reasons explained. (App. Br. 6—7.) We are not persuaded
of Examiner error for the reasons previously stated.
Claim 18
Appellants again argue there are no “wrong addresses” in Norgrove
because the carts are fungible. (App. Br. 7, Reply Br. 3.) For the reasons
explained, we sustain the Examiner’s rejection.
Remaining Claims
No separate arguments are presented for the remaining claims, and
accordingly, we sustain their rejection. 37 C.F.R. § 41.37(c)(l)(iv); In re
King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989,
991 (Fed. Cir. 1983).
DECISION
We affirm the rejections of claims 1—16 and 18—23 under 35 U.S.C.
§ 103(a).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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