Ex Parte Moreno

Patent Trial and Appeal Board

May 25, 2018

14274911 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/274,911 05/12/2014
106500 7590 05/30/2018
Angelo Mikeska PLLC
21 Waterway Avenue, Suite 300
The Woodlands, TX 77380
FIRST NAMED INVENTOR
Aldemar Moreno
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.
01026-000002 us 5789
EXAMINER
HESS, DANIEL A
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
05/30/2018 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@angeloip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALDEMAR MORENO
Appeal2017-007334
Application 14/274,911
Technology Center 2800
Before JEFFREY T. SMITH, DONNA M. PRAISS, and
JEFFREY R. SNAY, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 2, and 4--21. Final Act. 2-8; Br. 5-26. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
The subject matter of this appeal relates to a method for managing
inventory that includes selecting an item criterion, such as a facility time,
1 In explaining our Decision, we make reference to the Specification filed
May 12, 2014 ("Spec."), the Final Office Action entered January 21, 2016
("Final Act."), the Appeal Brief filed June 20, 2016 as corrected September
7, 2016 ("Br."), and the Examiner's Answer entered November 2, 2016
("Ans.").
Appeal2017-007334
Application 14/274,911
and configuring a scanning device to: intercept an item based on the item
criterion, alert a user if a scanned item includes the item criterion, and
prevent the user from scanning additional items if the item includes the item
criterion. Spec. ,r,r 6-8. According to the Specification, a shipper may
select a criterion to manage the item including various information, for
example, a date, an origination date, an expiration date, a final destination
location, information about the item. Id. ,r 21. Claim 1 is illustrative:
1. A method for managing inventory comprising:
selecting an item criterion;
configuring a scanning device to intercept an item based
on the item criterion;
scanning a plurality of items;
determining whether the item comprises the item
criterion;
providing feedback to the scanning device, wherein the
feedback comprises item information in addition to the item
criterion;
alerting a user if the item comprises the item criterion;
and
preventing the user from scanning a second item if the
first item comprises the item criterion.
Br. 27 (Claims Appendix).
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Application 14/274,911
The Examiner maintains, 2 and Appellant3 appeals, the following
rejections:
1. Claims 1, 2, 10, and 18-21 under 35 U.S.C. §§ 102(a)(l) and
102(a)(2) as anticipated by Goncalves;
2. Claims 1 and 4 under 35 U.S.C. § 103 as unpatentable over
0 'Reilly in view of Goncalves;
3. Claims 1, 5, 7, and 11-20 under 35 U.S.C. § 103 as unpatentable
over Nemet in view of Goncalves; and
4. Claims 6, 8, and 9 under 35 U.S.C. § 103 as unpatentable over
Goncalves.
OPINION
After review of the arguments and evidence presented by both
Appellant and the Examiner, we affirm the stated rejections. We address the
claims separately argued by Appellant for each of the rejections.
Rejection 1: Anticipation of Claims 1, 2, 10, and 18-21
It is the Examiner's position that Goncalves anticipates claims 1, 2,
10, and 18-21 for the reasons stated on pages 3--4 of the Final Action and
pages 2--4 of the Answer.
Appellant argues the subject matter of claims 1, 2, and 10 as a group
and claims 18, 19, and 21 as a group. Br. 5. 4 In accordance with 37 C.F.R.
2 The rejection of claims 5, 6, and 10 under 35 U.S.C. § 112(b) as indefinite
has been withdrawn. Ans. 2.
3 Aldemar Moreno is identified in the Brief as the real party in interest. Br.
3.
4 Appellant also groups claim 7 with claims 1, 2, and 10 (Br. 5), however,
claim 7 is not subject to the rejection under Section 102. Instead, claim 7
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Application 14/274,911
§ 4I.37(c)(l)(iv), claims 2 and 10 will stand or fall together with claim 1 and
claims 19 and 21 will stand or fall together with claim 18. We address
below claims 1, 18, and 20 with respect to this rejection.
In the Appeal Brief, Appellant argues that the Examiner erred in
finding that Goncalves teaches the limitation "providing feedback to the
scanning device, wherein the feedback comprises item information in
addition to the item criterion" recited in claim 1 because "Goncalves only
provides a single piece of information in order to verify whether the item in
a checkout matches the last scanned item." Br. 7. According to Appellant,
Goncalves mentions that weight and images are captured, but "[ t ]here is no
way to explicitly know how weight and captured images are used, and as
such, it would be improper to conclude that capturing a weight and an image
constitutes providing feedback to a scanning device" as required by claim 1.
Id. at 8.
Regarding claim 18, Appellant contends that Goncalves discloses
weighing an item and capturing an image of the item then verifies the weight
of the item, but none of these steps requires an "item tag" as claimed ("a
plurality of items comprising an item tag; wherein the item tag comprises the
item criterion and additional item information."). Id. at 24. Regarding claim
20, Appellant contends that Goncalves does not disclose an arrival time or
an expiration time as claimed ("wherein the item criterion comprises at least
one of an arrival time and an expiration time."). Id. at 25.
The Examiner responds that Goncalves uses not just one, but at least
two pieces of information in order to verify an item, weight and physical
stands rejected under Section 103 over Nemet and Goncalves along with
claim 1, and will stand or fall with claim 1 with respect to that rejection.
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Application 14/274,911
appearance, using a UPC scanner that reads a code. Ans. 9 ( citing
Goncalves ,r 25, Figs. 3, 4, 7). The Examiner further finds that the tests of
appearance and weight are two separate tests because they are automated in
Goncalves and are not checked against one another as they are not
comparable values. Id. at 11. Regarding how Goncalves uses the weight
and image capture information, the Examiner finds Goncalves expressly
teaches the measured weight is compared to the known weight retrieved
from the UPC database to judge whether it matches and the image
verification process extracts features and compares against visual data
retrieved from an image database following a UPC lookup. Id. at 12-13
( citing Goncalves ,r,r 21, 23 ).
Regarding the item tag required by claim 18, the Examiner refers back
to the discussion of claims 1, 2, and 10, which includes finding that
Goncalves teaches an item hovers over a UPC scanner bed that reads code.
Id. at 4, 9.
Regarding the arrival time or expiration time required by claim 20, the
Examiner also refers back to the discussion of claims 1, 2, and 10. Id. at 9.
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). We find
Appellant's arguments directed to claims 1 and 18 unpersuasive of
reversible error by the Examiner for the following reasons.
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Appellant does not dispute the Examiner's finding that Goncalves
teaches both weight and product image as item information that are captured
for verification. Br. 7-8. Instead, Appellant argues that Goncalves does not
explicitly describe how weight and captured images are used. Id. at 8.
However, the Examiner's findings (Ans. 9-11) as to how Goncalves uses
this item information to separately verify the product weight and product
image are not rebutted by Appellant and are supported by the preponderance
of the evidence cited in this appeal (Goncalves ,r,r 21, 23, 25, Figs. 3, 4, 7).
Appellant's argument that Goncalves does not disclose an "item tag"
as required by claim 18 is also unpersuasive because Appellant does not
dispute the Examiner's finding that Goncalves teaches using a UPC scanner
that reads a code (Ans. 9). The Examiner's finding is supported by the
record cited in this appeal. Goncalves ,r 25, Figs. 3, 4, 7. Appellant does not
rebut the Examiner's finding that the item code disclosed by Goncalves is an
item tag. Therefore, we are not persuaded by Appellant's argument that
Goncalves does not teach an "item tag" as required by claim 18.
We are persuaded by Appellant that the Examiner erred in rejecting
claim 20 as anticipated by Goncalves because the Examiner makes no
finding that Goncalves discloses an arrival or expiration time as required by
claim 20. Therefore, the Examiner's rejection of claim 20 under 35 U.S.C.
§ 102 is not supported by a preponderance of the evidence.
For the foregoing reasons, we affirm the Examiner's rejection of
claims 1, 2, 10, 18, 19, and 21 under 35 U.S.C. § 102 and reverse the
Examiner's rejection of claim 20 as anticipated by Goncalves.
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Rejection 2: Obviousness of Claims 1 and 4
It is the Examiner's position that O'Reilly in view of Goncalves
suggests the subject matter of claims 1 and 4 for the reasons stated on pages
4--5 of the Final Action.
In the Appeal Brief, Appellant argues that the Examiner's
combination of O'Reilly and Goncalves fails to disclose each and every
element of claim 1 because O'Reilly "does not provide any additional
information to a user of a scanning device after an item is scanned" and
Goncalves fails to disclose what O'Reilly lacks. Br. 9--11. Appellant also
contends that the combination of references is improper because O'Reilly is
concerned with ingestible event markers that may be ingested by humans or
non-human beings whereas Goncalves is concerned with point of sale
terminals in retail locations. Id. at 11. According to Appellant, "[ o ]ne of
ordinary skill in the art would not find the ingestible marker of O'Reilly
when designing a point of sale terminal, such as that of Goncalves." Id.
Regarding claim 4, which depends from claim 1 and recites "wherein
the item criterion comprises shipping data," Appellant further contends that
Goncalves would not be understood to be related to "shipping data" as
Goncalves does not ship anything. Id. at 14. Appellant further contends
"[ w ]hile O'Reilly mentions that medicine can be scanned during a shipping
process, there is no explicit recitation that O'Reilly includes shipping data as
set forth in the present application." Id.
The Examiner responds that O'Reilly and Goncalves involve the same
field of endeavor, automated product tracking, as both disclose scanning,
tracking, and moving products through an automated system. Ans. 13.
Regarding O'Reilly, the Examiner responds that the teachings of O'Reilly
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cure the deficiencies of Goncalves with regard to tracking shipping data as
required by certain dependent claims. Id.
We are not persuaded by Appellant's argument that the Examiner
reversibly erred in rejecting claims 1 and 4. Regarding claim 1, because we
find Goncalves anticipates claim 1 for the reasons discussed above, we
affirm the rejection of claim 1 as obvious in view Goncalves because
anticipation is the epitome of obviousness. See In re Pearson, 494 F .2d
1399, 1402 (CCPA 1974); In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982).
Regarding dependent claim 4, the Examiner's finding (Ans. 13) that
both Goncalves and O'Reilly relate to automated product tracking and
include scanning, tracking, and moving products through an automated
system is supported by the record. Goncalves ,r,r 23-29, 34; O'Reilly ,r 302.
The Examiner's finding that O'Reilly teaches that items can be scanned
during a shipping process in order to intercept those items is also supported
by the record (Final Act. 5; O'Reilly ,r 302) as well as the Examiner's
finding that interception and removal of an item would necessitate at least
pausing the scanning process when an item is scanned that requires
intervention during the shipping process (Final Act. 5; Goncalves ,r,r 25, 26).
Accordingly, we are not persuaded by Appellant's argument that the
combination of references does not disclose shipping and scanning product
information affecting the shipping process. Appellant does not adequately
explain why information affecting the shipping process would not read on
"shipping data" as recited in claim 4. Accordingly, we find the Examiner's
interpretation of "shipping data" as applied to the prior art reasonable and
consistent with Appellant's Specification which states that "shipping
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Application 14/274,911
criterion may include various information including, for example, a date, an
origination, date, an expiration date, a final destination location, information
about the item, etc. The item criterion may be selected based on the
requirements of the shipping operation .... " Spec. ,r 21.
For the foregoing reasons, we affirm the Examiner's rejection of
claims 1 and 4 under 35 U.S.C. § 103.
Rejection 3: Obviousness of Claims 1, 5, 7, and 11-20
It is the Examiner's position that Nemet in view of Goncalves
suggests the subject matter of claims 1, 5, 7, and 11-20 for the reasons stated
on pages 5-7 of the Final Action.
Appellant argues the subject matter of claims 1 and 7 as a group,
claims 11, 12, and 14 as a group, and claims 18, 19, and 20 5 as a group. Br.
5, 24. In accordance with 37 C.F.R. § 4I.37(c)(l)(iv), claim 7 will stand or
fall together with claim 1, claims 12 and 14 will stand or fall together with
claim 11, and claims 19 and 20 will stand or fall together with claim 18. We
address below claims 1, 5, 11, 13, and 15-18 with respect to this rejection.
Claim 1
In the Appeal Brief, Appellant argues that the combination of
Goncalves and Nemet is improper because the references teach away from
the method of claim 1 as well as each other. Br. 12. According to
Appellant, Goncalves teaches a static scanning device and a static tag while
5 We understand Appellant's references to claim 21 on page 24 of the
Appeal Brief to be a typographical error intending to refer to claim 20
because claim 20 depends from claim 18 (indirectly), not claim 21 ( either
directly or indirectly).
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Nemet teaches a barcode that is dynamic throughout the life of a particular
product that is configured to dynamically change as time elapses, therefore
the two approaches are directly opposite and the combination would render
the tag of Nemet inoperable. Id. at 12-13. Appellant further contends that
Goncalves fails to provide additional information to a user and that Nemet
fails to teach that which Goncalves lacks. Id. at 13.
The Examiner responds that a product having Nemet's expiration-
sensitive barcode can be scanned through the checkout of Goncalves and, if
expired, the scan at the checkout would result in a notification. Ans. 14.
We are not persuaded of reversible error in the rejection of claim 1
over the combination of Goncalves and Nemet under 35 U.S.C. § 103
because we find Goncalves anticipates claim 1 for the reasons discussed
above, and anticipation is the epitome of obviousness. See In re Pearson,
494 F.2d at 1402. In addition, Appellant does not adequately rebut the
Examiner's finding (Ans. 14) that Nemet's expiration-sensitive barcode can
be scanned through the checkout of Goncalves prompting a notification.
Claims 5, 11, and 15-17
In the Appeal Brief, Appellant argues the rejections of claims 5, 11,
and 16 are in error because the combination of Goncalves and Nemet is
improper for the reasons discussed in connection with claim 1 and based on
impermissible hindsight because, although Nemet discloses the word
"expired" may be shown on a scanner, there is no disclosure of what data is
supplied to constitute "expiration data" as recited in dependent claim 5. Br.
15. Appellant also argues that Nemet merely shows a product status
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identified as "ok," "quick sale," or "do not sell," rather than the amount of
time the item has been in a facility. Id. at 18, 20-23 ( citing Nemet Fig. 7 A).
The Examiner responds that Nemet' s entire disclosure is focused on
barcode indicators that change to indicate food expiration and time spent on
the shelf with the term "time" appearing 119 times referring in context to
time toward product expiration and/or time sitting on the shelf. Ans. 14.
Because fresh foods that are delivered become stale as a function of time
since arrival, the Examiner also finds that Nemet's disclosures indirectly
teach "arrival time" as recited in claim 16.
We are not persuaded of reversible in the rejection of claims 5, 11,
and 15-17 over the combination of Goncalves and Nemet under 35 U.S.C.
§ 103 because the Examiner's findings regarding Nemet's disclosure of
barcode indicators that change to indicate food expiration and time spent on
the shelf indicating "facility time" and indirectly disclosing "arrival time"
also as an indicator, are supported by the record. Nemet Fig 7 A, ,r,r 210-
222. Appellants do not adequately rebut the Examiner's finding that such
time-sensitive barcode indicators disclose or suggest "expiration data,"
"facility time criterion," "an amount of time the item has been in a facility,"
"arrival time," and "expiration time" as recited in claims 5, 11, 15, 16, and
17, respectively.
Claim 13
In the Appeal Brief, Appellant contends that the Examiner erred in
finding that Goncalves discloses the limitations of claim 13, which depends
from claim 11 and further recites "retrieving the item; and providing
feedback to the scanning device, wherein the feedback comprises item
information data." Br. 19. Appellant concedes that Goncalves discloses
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item checks or alert level increases, but asserts that Goncalves fails to
disclose "retrieving the item." Id.
We are not persuaded by Appellant's arguments that the Examiner
reversibly erred in rejecting claim 13 over Goncalves and Nemet because the
Examiner's finding that Goncalves' paragraphs 24 and 34 disclose the
elements of claim 13 (Final Act. 6) are supported by the record. Paragraph
24 of Goncalves explicitly states "the verification/recognition process
intervenes in the transaction by alerting a cashier of a potential problem or
temporarily stopping the transaction when attendant (e.g., cashier)
intervention is required." Paragraph 34 of Goncalves explicitly describes
removal of an item as such an intervention. As the Examiner explains in the
Answer (Ans. 7), Goncalves exemplifies notifying a person that essentially
necessitates at least pausing the scanning process when an item is scanned
that requires intervention and Nemet also suggests that automated conveyor
belts should be stopped in order to remove items that are being intercepted.
Claim 18
Appellant contends that the Examiner erred in rejecting claim 18 for
the same reasons discussed above in connection with the anticipation
rejection of claim 18 over Goncalves. Br. 24. Because anticipation is the
epitome of obviousness, we find Appellant's argument unpersuasive for the
same reasons discussed above in connection with the anticipation rejection.
Summary
For the foregoing reasons, we affirm the Examiner's rejection of
claims 1, 5, 7, and 11-20 under 35 U.S.C. § 103.
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Rejection 4: Obviousness of Claims 6, 8, and 9
It is the Examiner's position that Goncalves suggests the subject
matter of claims 6, 8, and 9 for the reasons stated on pages 7-8 of the Final
Action.
Appellant argues the subject matter of claims 8 and 9 as a group. Br.
5. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), claim 9 will stand or fall
with claim 8. We address claims 6 and 8 with respect to this rejection.
Claim 6
In the Brief, Appellant argues the Examiner erred in rejecting claim 6
because the Examiner's reasoning that it would have been obvious to include
audio with Goncalves' alerts to effectively alert users who may be visually
impaired or not looking at the screen is not supported by evidence. Br. 16.
Appellant further contends that "it may be beneficial for the point of sale
system in Goncalves to not include audio alerts because the alert may inform
a third party in order to investigate fraud" and "not to inform the user that is
actually using the terminal." Id.
The Examiner responds by pointing out that the reasoning provided
for why it would have been obvious for Goncalves' alerts to be audio,
namely to alert visually impaired users and those not looking at the screen, is
sound and not rebutted. Ans. 15. The Examiner further responds that such
audio alerts are conventional and standard in checkout systems and the
particular sounds emitted for the sake of indication are a matter of design
choice. Id.
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Application 14/274,911
We are not persuaded by Appellant's arguments for the reasons stated
by the Examiner. In addition, we note that Appellant's argument that it may
be beneficial for Goncalves' system to not include audio alerts so as not to
inform the user is inconsistent with the teaching of Goncalves in paragraph
34 which explicitly discloses that the system is interactive with the user
asking the user for a response and to remove an item from a bag. Therefore,
the Examiner's rejection of claim 6 is supported by the preponderance of the
evidence cited in this appeal record.
Claim 8
Regarding claim 8, which recites "alerting the user is a single audible
note" and "alerting the user is a substantially continuous audible note"
depending on whether or not the item comprises the item criterion,
Appellant argues (1) that Goncalves does not disclose the claimed limitation,
(2) that there is no evidence that such alerts would be either necessary,
useful, or beneficial, and (3) such audible alerts "may in fact be detrimental
and frustrate the purpose of Goncalves." Br. 1 7.
The Examiner responds that the fact that Appellant claims opposite
permutations of the audio alert sounds as between claims 8 and 9 indicates
that the audio sounds are interchangeable as an indicator, emitted for the
sake of indication, and are a matter of design choice. Ans. 15.
We are not persuaded by Appellant's arguments essentially for the
same reasons discussed above in connection with claim 6. Appellant's
assertion (Br. 17) that audible alerts may be detrimental to and frustrate the
purpose of Goncalves is not supported by the evidence. The purpose of
Goncalves' alerts is to communicate the results of the verification process
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with the user so that appropriate actions by the user can be taken. Goncalves
,r 34. Appellant does not adequately rebut the Examiner's finding that such
audio alerts would benefit users who are visually impaired, or not looking at
the screen. Accordingly, we affirm the Examiner's rejection of claim 8.
For the foregoing reasons, we affirm the Examiner's rejection of
claims 6, 8, and 9 under 35 U.S.C. § 103.
CONCLUSION
The Examiner's decision rejecting claims 1, 2, and 4--21 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)(v).
AFFIRMED
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