Ex Parte Mayer et alDownload PDFPatent Trial and Appeal BoardDec 6, 201612666339 (P.T.A.B. Dec. 6, 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. 12/666,339 12/23/2009 Boris Mayer 10836-PT-WO-US(JOST:0076) 8748 69590 7590 International IP Law Group P.O. BOX 691927 HOUSTON, TX 77269-1927 12/08/2016 EXAMINER HASTY, NICHOLAS ART UNIT PAPER NUMBER 2178 NOTIFICATION DATE DELIVERY MODE 12/08/2016 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): docketing @ iiplg. com barry.blount@iiplg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BORIS MAYER and THOMAS OGILVIE Appeal 2016-003875 Application 12/666,339 Technology Center 2100 Before ALLEN R. MacDONALD, MICHAEL M. BARRY and JOHN R. KENNY, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-003875 Application 12/666,339 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 18, 19, 22, 23, 25—28, and 30—35. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claim Exemplary claim 18 under appeal reads as follows (emphasis, formatting, and bracketing added): 18. A shipping system for at least one consignment, comprising: [(A)] a user terminal providing an electronic form to be filled in by a user for entering first data about the consignment, wherein the user terminal comprises a transmitter for electromagnetic waves suitable for storing first data in a transponder; [(B)] a communication device connected to the first user terminal for receiving the first data, wherein the first data is being automatically transmitted electronically from the user terminal; [(C)] physically applying the first data to the consignment by attaching the transponder comprising a consignment identification number onto the consignment, [(D)] a detector that is adapted to acquire additional data about the consignment at a drop-off location, wherein the consignment is physically dropped off at an additional user terminal also connected to the communication device; [(E)] a consolidation server connected to the communication device that stores, administers, processes and/or evaluates the first data, as desired, and returning modified or unmodified data to the communication device, which is connected via an interface to an additional data processing system as a customs clearance system allowing customs clearance; 2 Appeal 2016-003875 Application 12/666,339 [(F)] a transmitter that is adapted to transmit the first data and the additional data to the consolidation server; [(G)] a checker that is adapted to determine whether the additional data about the consignment was received; and [(H)] a transmitter that is adapted to transmit the first data to a data recipient, which is a central computer of a customs authority, [(i)] the transmitter that is adapted to transmit the first data to the data recipient being configured so that it ascertains whether the additional data about the consignment was received so that the transmission of the first data only takes place once the additional data has been received, [(ii)] wherein a position of the consignment is determined by a location finder that is connected to the consignment, and wherein the position of the consignment is associated with the obtained first data. Rejection The Examiner rejected claims 18, 19, 22, 23, 25—28, and 30-35 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kumakawa (US 2005/0071258 Al; Mar. 31, 2005), Hind et al. (US 7,225,167 B2; May 29, 2007), and Del Gallo et al (US 2010/0261458 Al; Oct. 14, 2010).1 1 Separate patentability is not argued for claims 18, 19, 22, 23, 25—28, and 30-35. Except for our ultimate decision, these claims are not discussed further in detail herein. 3 Appeal 2016-003875 Application 12/666,339 Appellants ’ Contention Appellants contend that the Examiner erred in rejecting claim 18 under 35 U.S.C. § 103(a) because: In Del Gallo, a monitoring station and a mobile station have access to a Global Positioning System (GPS) for determining the shortest or fastest route to a mailing address, and the shortest or fastest route connecting several mailing addresses. See Del Gallo, para. [0055]. In Del Gallo, the mobile station “is such as a cellular phone, blackberry, PDA, laptop or the like” and is provided for each deliverer. See id., paras. [0019], [0069]. In other words, the mobile station is with the deliverer, not the consignment. See id., Fig. 3. Thus, the mobile station of Del Gallo is not the same as the position finder recited in the independent claims because the mobile station is not connected to the consignment. App. Br. 8—9, emphasis added. Issue on Appeal Did the Examiner err in rejecting claim 18 as being obvious because a Global Positioning System (GPS) provided for a deliverer does not render obvious a GPS connected to the consignment? ANALYSIS As our analysis below differs from the Examiner’s, we designate our analysis as a new ground of rejection of claims 18, 19, 22, 23, 25—28, and 30-35 under 35 U.S.C. § 103(a). We have reviewed the Examiner’s rejections in light of Appellants’ arguments (Appeal Brief) that the Examiner has erred. We disagree with Appellants’ conclusions. We concur with the conclusions reached by the Examiner. 4 Appeal 2016-003875 Application 12/666,339 Appellants argue Del Gallo’s Global Positioning System (GPS) provided for a deliverer does not render obvious a GPS connected to the consignment being delivered as recited. We disagree. Del Gallo states an exemplary deliverer includes “a postman or a courier who makes his tour to one or more addressees to deliver certain items such as registered mails, parcels or the like.” 113. Del Gallo also states “the monitoring or stationary station and/or the mobile station has access to GPS (Global Positioning System) for determining the shortest or fastest route to a mailing address” and “it is further preferred that the mobile station repeatedly sends information about its current position to the monitoring or stationary station, so that the current position of the deliverer can be monitored at any time.” 1 55. Del Gallo further states “it is advantageously possible to detect the current position (in GPS coordinates and/or in form of an address or place corresponding to such coordinates) of the deliverer upon the filling in or execution of the form by the addressee.” 127. We conclude one of ordinary skill in the art at the time of the invention would have understood that while the deliverer is en route to a mailing address (prior to completing delivery), that the positions of the deliverer, delivery vehicle, delivery container, and item being delivered are all the same. For this reason, we conclude that it would have been obvious to place the GPS tracking on any of the deliverer, the delivery vehicle, the delivery container, or item being delivered.2 2 Although not necessary for our decision, even if we were to accept Appellants’ argument, we note that an artisan would recognize it is well- known in the art to place the GPS tracking on a cargo being delivered. Shapiro (US 2002/0019829 Al; Feb. 14, 2002) “Another example of GSM is Neotracker™, developed and manufactured by NeoPoint, Inc., of San Diego, Calif. Mobile co-presence unit 307 can be carried by a person or 5 Appeal 2016-003875 Application 12/666,339 37 C.F.R. § 41.50(b) This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . can be attached to cars, boats, planes, robots, toys, cargo, briefcase or the like.” 137. Sullivan (US 2002/0025011 A1; Feb. 28, 2002) “Another use for GPS receivers [is] tracking objects. For example, placing a GPS receiver in a truck allows tracking of the truck’s movements. Attaching the receiver to cargo allows precise tracking of the locations of that cargo.” 1 5. Iverson et al. (US 6,806,814 Bl; Oct. 19, 2004) at column 7:13—24. [PJackages in transit can have their position reported to a central remote location, e.g. by scanning packages as they traverse various check points (possibly in a partially or fully automated fashion) and/or may have devices included in or attached to the packages for reporting current position over the Internet. Although, at the present time, costs of such a system would likely limit attachment of Internet nodes only to relatively valuable packages or cargo, as less expensive Internet node hardware and/or GPS hardware becomes available, such Internet-communicating components may be routinely coupled to packages upon shipment. 6 Appeal 2016-003875 Application 12/666,339 CONCLUSIONS (1) The Examiner has not erred in rejecting claims 18, 19, 22, 23, 25— 28, and 30—35 as being unpatentable under 35 U.S.C. § 103(a). (2) Claims 18, 19, 22, 23, 25—28, and 30-35 are not patentable. DECISION The Examiner’s rejection of claims 18, 19, 22, 23, 25—28, and 30—35 is affirmed. 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 37 C.F.R, $ 41.50(b) 7 Copy with citationCopy as parenthetical citation