Ex Parte Mediano

Patent Trial and Appeal Board

May 24, 2016

12606612 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/606,612 10/27/2009
107681 7590 05/26/2016
NCR Corporation
3097 Satelite Boulevard
Building 700, 2nd Floor, Law Department
Duluth, GA 30096
FIRST NAMED INVENTOR
Brian A. Mediano
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
09-270 (500.0430) 3073
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
05/26/2016 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):
PTOMail.Law@ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN A. MEDIANO
Appeal2014-002284 1
Application 12/606,612 2
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1, 3-16, and 18-22. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
July 15, 2013), the Reply Brief ("Reply Br.," filed Nov. 13, 2013), the
Examiner's Answer ("Ans.," mailed Sept. 13, 2013), the Final Office Action
("Final Act.," mailed Feb. 15, 2013), and the Specification ("Spec.," filed
Oct. 27, 2009).
2 According to the Appellant, the real party in interest is NCR Corporation.
Appeal Br. 1.
Appeal2014-002284
Application 12/606,612
STATEMENT OF THE CASE
The Appellant's invention "relates generally to improved systems and
techniques for promotional displays. More particularly, the invention relates
to capturing images of products as they are scanned and presenting displays
of the scanned products in accordance with criteria for promotion of
products." Spec. 1, 11. 8-11.
Claims 1, 12, and 21 are the independent claims on appeal. Claim 1 is
exemplary of the subject matter on appeal and is reproduced below:
1. A server based system for managing presentation of
promotional displays to potential customers including images of
products presented for entry into transactions by purchasers,
compnsmg:
memory storing collected information relating to product
promotions relating to conditions governing selection and
presentation of promotional displays including images of
products captured as the products are presented at a checkout
terminal for entry into transactions;
a communication interface for receiving product
information as the products are presented for entry into
transactions;
a plurality of display monitors arranged in appropriate
locations to catch the attention of potential customers; and
a processor analyzing the product information and the
promotional information to select products for which
promotional displays are to be presented and directing
construction and presentation of one or more promotional
displays including images of the selected products based on the
analysis, wherein the product information for one or more
products presented for entry into transactions includes captured
images of the one or more products taken as the products are
presented, and wherein one or more of the promotional displays
includes an image of a product captured as the product was
2
Appeal2014-002284
Application 12/606,612
presented for entry into a transaction which is concurrently
displayed on at least one of the plurality of display monitors.
Appeal Br. 19, Claims App.
REJECTIONS
Claims 1, 3, and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sleeper (US 2002/0019885 Al, pub. Feb. 14, 2002) and
Humble (US 5,426,282, iss. June 20, 1995).
Claims 4, 5, and 12-15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sleeper, Humble, and Mcintyre
(US 2004/0210477 Al, pub. Oct. 21, 2004).
Claims 6, 7, 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sleeper, Humble, Mcintyre, and Ferreira
(US 2001/0034661 Al, pub. Oct. 25, 2001).
Claims 8 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sleeper; Humble; and Ouimet (US 2005/0273376 Al;
pub. Dec. 8, 2005).
Claims 10 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sleeper, Humble, and Jill Ginsberg and Paul Bloom,
"Choosing the Right Green Marketing Strategy," 2004, MIT Sloan
Management Review (hereafter referred to as "Ginsberg").
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sleeper, Humble, and Appellant's Admitted Prior Art
(AAPA).
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sleeper and Ferreira.
3
Appeal2014-002284
Application 12/606,612
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sleeper, Ferreira, and Mcintyre.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 3
ANALYSIS
Claims 1, 3, and 9
The Appellant argues claims 1, 3, and 9 as a group. See Appeal Br.
12-13. We select claim 1 as representative, and claims 3 and 9 stand or fall
with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv) (2014).
The Appellant contends the rejection of claim 1 is in error because it
is not supported by the prior art and because the Examiner's motivation for
combing Sleeper and Humble is unsupported and constitutes hindsight.
Appeal Br. 14. We do not agree with this contention because we find the
arguments presented in the Appellant's Appeal and Reply Briefs
unpersuasive.
For example, we find unpersuasive the Appellant's argument that
Humble does not disclose "capturing images of items as they are presented
as part of a transaction, such as at checkout, for example, and then
displaying those captured images to other consumers elsewhere in the store
to drive their interest as described by the present application." Appeal
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
4
Appeal2014-002284
Application 12/606,612
Br.13. The Appellant argues against each art, Sleeper and Humble,
individually, when the Examiner relies on the combination to disclose the
claim. The test for obviousness is not what any one reference would have
suggested, but rather what the combined teachings of the references would
have suggested to those of ordinary skill in the art. See In re Keller, 642
F.2d 413, 426 (CCPA 1981). "[O]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of the references." Id.
The Examiner finds that the combination of Sleeper and Humble
discloses the claim in that Sleeper teaches displaying promotional content to
consumers, and "Humble teaches capturing images at time of transaction and
displaying at register," and "a plurality of displays to catch the attention of
customers." Ans. 6, citing Sleeper i-f 44, and Humble, Abstract.
Specifically, the Examiner finds Sleeper discloses a memory storing
information relating to product promotions relating to selection conditions
and presentation of promotional displays, and an interface to receive product
information as products are presented for entry. See Final Act. 5. The
Examiner finds that Humble teaches that the information can be an image of
a product captured at the time of transaction at a checkout terminal. Id. The
Examiner further finds Sleeper discloses a processor to analyze the product
information and promotional information to select products to display and to
direct construction and presentation of the displays including images of the
selected products, wherein the product information includes images of
products (i.e., the barcode), and wherein a promotional display includes
information presented for entry into a transaction (the product available in
other sizes). See id. at 6. The Examiner finds Humble teaches a plurality of
5
Appeal2014-002284
Application 12/606,612
monitors arranged at appropriate locations to catch the attention of potential
customers and that the information of the captured image is concurrently
displayed on at least one of the plurality of monitors. See id. at 5---6.
Thus, the Examiner does not rely solely on either Sleeper or Humble
to teach "capturing images of items as they are presented as part of a
transaction, such as at checkout, for example, and then displaying those
captured images to other consumers elsewhere in the store to drive their
interest as described by the present application." Appeal Br. 13. Rather, the
Examiner relies on Sleeper for capturing images, such as barcodes, of the
items as they are presented for checkout and to display images to potential
customers that may entice them (see Final Act. 5), and on Humble for
capturing images of the products (not simply barcodes) and displaying the
image elsewhere in the store (id. at 5---6).
Further, we note that "to drive [potential customers'] interest" (Appeal
Br. 13) is not recited in the claim. We also note that "to catch the attention
of potential customers" is a statement of intended use that does not
distinguish the invention over the prior art, because the structure of Sleeper
and Humble, i.e., the display of promotional images that can include images
of products as a checkout, is capable of "driv[ing] [the potential customers']
interest" and "catch[ing] the attention of potential customers." See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Moreover, as the
Appellant admits, a promotional display, such as that of Sleeper, is "by its
nature intended to drive the interest of potential customers or to 'drive their
interest."' Reply Br. 2.
We also find unpersuasive the Appellant's argument that the
Examiner's reasoning is based on hindsight because there is no support in
6
Appeal2014-002284
Application 12/606,612
either Sleeper or Humble for the Examiner's stated motivation. Appeal Br.
14. The Examiner is not required to find support for the articulated
reasoning in the cited references, but can rely on "inferences and creative
steps that a person of ordinary skill in the art would employ." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ."). "Any judgement based
on obviousness is in a sense necessarily based on hindsight" but so long as it
does not include only "knowledge gleaned from applicant's disclosure," the
reconstruction is proper. In re McLaughlin, 433 F. 2d 1392, 1395 (CCPA
1971 ). The Appellant does not contend the Examiner's reasoning is based
only on knowledge from the Appellant's disclosure.
We further find unpersuasive the Appellant's argument that the
Examiner's reasoning is based on hindsight because Sleeper addresses
promoting products to a current customer, not a potential customer as
claimed, "so that modification of Sleeper beyond 'display of the captured
image at the time of sale' [as taught by Humble] is required to meet the
terms of the[] claim[]." Appeal Br. 15; see also Reply Br. 2-3. The
Specification does not specifically define a potential customer as excluding a
current customer. See Spec. 1, 11. 22-23 ("Customers recognize that self-
interest is an important motivator for themselves and for other potential
customers") (emphasis added). The Appellant's argument that the claims
clearly distinguish a current customer from a potential customer (Reply Br.
2) is unpersuasive because it is not supported. Claim 1 does not recite any
language that would distinguish a current customer from a potential
7
Appeal2014-002284
Application 12/606,612
customer or that would exclude a current customer from also being a
potential customer, such as for another product. Moreover, the Appellant's
argument that the display of Humble is "typically not viewable by
customers" (Appeal Br. 14) is not persuasive because it is a statement
unsupported by adequate evidence or reasoning. Humble does not disclose
that the monitors cannot be viewed by both customers and personnel.
The Appellant's argument that the claim requires "immediacy" not
taught by Sleeper and Humble (Reply Br. 3) is also not persuasive at least
because "immediacy" is not recited in the claim. Furthermore, Sleeper
discloses that the promotional display is generated within an "immediate"
time period of checking out items. See Sleeper i-f 31.
For the foregoing reasons, we are not persuaded of error on the part of
the Examiner in the rejection of claim 1, and we sustain the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a). We also sustain the
Examiner's rejection of claims 3 and 9, which fall with claim 1.
Claims 4, 5 and 12-15
Claims 4, 14, and 15
We find unpersuasive the Appellant's argument that the Examiner's
rejection of claim 4 is in error because "Mcintyre provides no basis for
modifying Sleeper and Humble" in teaching "directing the images to other
locations in the retail environment." Appeal Br. 15. We also find
unpersuasive the Appellant's arguments that the Examiner's rejection of
claim 14 is in error because the "the reliance upon Mcintyre is improper as
an effort at hindsight reconstruction of the[] claim[]" and that the rejection
of claim 15 is in error because the Examiner's reliance on Sleeper "is
8
Appeal2014-002284
Application 12/606,612
misplaced." Appeal Br. 16.
The Appellant has not identified error in the Examiner's
interpretations of the cited references or the claim language. The Appellant
offers no substantive arguments to rebut the specific underlying factual
findings made by the Examiner in support of the ultimate legal conclusion of
obviousness. And we decline to examine the claims sua sponte, looking for
distinctions over the prior art. Cf In re Baxter Travenol Labs., 952 F.2d
3 8 8, 3 91 (Fed. Cir. 19 91) ("It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art."). The Appellant's statements that Mcintyre
provides no basis, that the reliance on Mcintyre is "hindsight
reconstruction," and the reliance on Sleeper is "misplaced" are not supported
by adequate evidence or technical reasoning.
In the absence of a more detailed explanation, we are not persuaded of
error on the part of the Examiner. See In re Jung, 637 F.3d.1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections," citing Ex Parte Frye,
94 USPQ2d 1072 (BPAI 2010) (precedential)). Thus, we sustain the
Examiner's rejection of claims 4, 14, and 15 under 35 U.S.C. § 103(a).
Claims 5 and 12
We find unpersuasive the Appellant's argument that the Examiner's
rejection of claims 5 and 12 is in error because "the reliance upon Mcintyre
is clearly misplaced" because Mcintyre' s update is from the supplier and not
from contemporary purchases of other customers. Appeal Br. 15. Claims 5
and 12 do not recite that the updates are from purchases of other customers,
9
Appeal2014-002284
Application 12/606,612
but that the processor updates information based on information relating to
sales transactions and presentation of captured images of products. The
Appellant does not provide adequate evidence or technical reasoning why
Mcintyre's teaching of updating promotional information of products (see
Ans. 7-8) does not meet the recited limitation of updating information based
on information relating to sales and presented images.
The Appellant's arguments that the Examiner's rejection of claim 12
is in error for the same reasons the rejection of claim 1 is in error (see
Appeal Br. 13) are unpersuasive for the same reasons discussed above with
reference to claim 1.
Thus we are not persuaded of error on the part of the Examiner in the
rejection of claims 5 and 12, and we sustain the Examiner's rejection of
these claims.
Claim 13
We find unpersuasive the Appellant's argument that the Examiner's
rejection of claim 13 is in error because Sleeper's retailer's agreement does
not identify promotional agreements between retailer and vendor. See
Appeal Br. 15. The Specification provides no specific definition of
"identifying" or the manner in which the agreements are "identified." The
Specification provides "[ v ]arious criteria may be used to determine which
products are to be displayed as they are scanned. For example, a retailer
typically enters into promotional agreements with vendors, and the display
of items may be part of such promotional agreements." Spec. 2, 11. 8-11.
The Examiner finds that Sleeper, at paragraph 43, discloses "the retailer may
agree to display promotional information about a manufacturer's product
10
Appeal2014-002284
Application 12/606,612
line whenever a customer purchases one product manufactured by the
manufacturer." Final Act. 14. Thus, giving the term "identifying" its
broadest reasonable interpretation in light of the Specification, as would be
understood by one of ordinary skill in the art, we find the Examiner's
finding meets the limitation. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004).
Thus, we are not persuaded of error on the part of the Examiner in the
rejection of claim 13, and we sustain the Examiner's rejection of this claim.
Claims 6, 7, 18 and 19
We find unpersuasive the Appellant's argument that the Examiner's
rejection of claims 6, 7, 18, and 19 is in error because "[t ]he reliance upon
Ferreira is misplaced as it simply addresses a virtual e-commerce site and
not a real store where shoppers are concerned with what other shoppers are
contemporaneously buying." Appeal Br. 16. To the extent the Appellant is
arguing that Ferreira is not analogous art, this argument is unpersuasive
because the Appellant does not present arguments and evidence from the
record that refutes both of the two tests for analogous art. See In re Klein,
647 F.3d 1343, 1348 (Fed. Cir. 2011). The Appellant does not identify the
field of endeavor for the invention, nor does the Appellant provide adequate
evidence or reasoning why the Examiner's finding that both Ferreira and the
invention, directed to promotional displays, i.e. advertising (Spec. 1, 11. 8-9),
are in the same field of endeavor of "shopping and advertising," is in error.
Ans. 8; see also Klein at 1348. Further, the Appellant does not identify a
particular problem with which the invention is involved and why Ferreira is
not reasonably pertinent to that problem. See id.
11
Appeal2014-002284
Application 12/606,612
We also find unpersuasive the Appellant's argument that the rejection
of claims 6, 7, 18, and 19 is in error because "the list of most popular items
of Ferreira paragraph [0073] clearly does not constitute the 'current sales
ratings' and assigning 'higher priority for display images featuring products
exhibiting a higher current sales rate' as claimed by claim 6, for example."
Appeal Br. 16. The Examiner finds that Ferreira's most popular items have
further criteria such as being on sale and that "[ d]isplaying items on sale is
equivalent to 'featuring products exhibiting a higher current sales rate' than
those items that are not on sale." Ans. 9 (citing Ferreira i-f 72). The
Appellant does not provide adequate evidence or technical reasoning why
these findings are in error.
Thus, we are not persuaded of error on the part of the Examiner in the
rejection of claims 6, 7, 18, and 19, and we sustain the Examiner's rejection
of these claims.
Claims 8 and 20
The Appellant contends the rejection of claims 8 and 20 is in error
because Ouimet's "general teaching that '[s]ome retailers follow the
seasonal trends and place on promotion those items which are popular or in
demand during the season"' does not teach the "language of these claims
addressing server based analysis (claim 8) or a method of processor based
analysis (claim 20)." Appeal Br. 16. The Examiner finds that "what is
claimed is that the popularity of the product presented for entry into
transaction is measured by current sales transactions of that product. Ouimet
teaches that retailers often take into account how popular the items at
different times, for example seasonally." Ans. 9.
12
Appeal2014-002284
Application 12/606,612
The Appellant's argument is not persuasive at least because it is an
argument against Ouimet individually when the Examiner relies on the
combination of Sleeper, Humble, and Ouimet to disclose the limitation. As
discussed above, Sleeper discloses analyzing product information and
promotional information. See Final Act. 5. The Examiner relies on Ouimet
for the analysis taking into account popularity information. Final Act. 18-
19; Ans. 9. The Appellant argues only that Ouimet does not address server
based or processor based analysis; the Appellant does not provide adequate
evidence or technical reasoning why the Examiner's underlying finding
regarding Ouimet is in error.
Thus, we are not persuaded of error on the part of the Examiner in the
rejection of claims 8 and 20, and we sustain the Examiner's rejection of
these claims.
Claims 10, 11, and 16
We also find unpersuasive the Appellant's argument that the
Examiner's rejection of claims 10, 11, and 16 is in error because the
references cited by the Examiner teach away from the invention, and
because the Examiner relies on hindsight to combine the references. Appeal
Br. 1 7. The Appellant does not provide adequate evidence or technical
reasoning why the Examiner's articulated reason is ineffective to support the
conclusion of obviousness or that the Examiner's reason is based only on
knowledge gleaned from the Appellant's disclosure. The Appellant's
arguments that "the Examiner does not appear to have considered 'where the
references diverge and teach away from the claimed invention,"' (id.) and
that the Examiner does not read the claims as a whole (id.) are not supported
13
Appeal2014-002284
Application 12/606,612
by adequate evidence or technical reasoning. The Appellant's arguments
amount to only an assertion that the references have differences. See In re
Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992).
Thus, we are not persuaded of error on the part of the Examiner in the
rejection of claims 10, 11, and 16, and we sustain the Examiner's rejection
of these claims.
DECISION
The Examiner's rejections of claims 1, 3-16, and 18-22 under
35 U.S.C. § 103(a) are 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
14