Ex Parte Newton et al

Patent Trial and Appeal Board

Oct 30, 2014

12122043 (P.T.A.B. Oct. 30, 2014)

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.
12/122,043 05/16/2008 Jason M. Newton 477-P021D1 8026
61060 7590 10/30/2014
WINSTEAD PC
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
BUCHANAN, CHRISTOPHER R
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
10/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JASON M. NEWTON and DAVID W. HOPKINS
__________

Appeal 2012-006062
Application 12/122,0431
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jason M. Newton, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 29–41. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.2

1 The Appellants identify American Airlines, Incorporated as the real party
in interest. App. Br. 1.
Appeal 2012-006062
Application 12/122,043

2
THE INVENTION
Claim 29, reproduced below, is illustrative of the subject matter on
appeal.
29. A material cabinet system for use in cooperation with
a plurality of articles stored in a material cabinet, each of the
plurality of articles having a radio frequency identification
(RFID) tag attached thereto, the system comprising:
a material cabinet having a plurality of shelves installed;
a magnetic lock system incorporated within the cabinet;
at least one antenna for tacking the movement of the
plurality of pieces of articles, wherein the at least one antenna
receives a radio frequency identification (RFID) signal for each
of the plurality of articles having the attached radio frequency
identification (RFID) tag when moved from or onto the
plurality of shelves in the material cabinet; and
a computer system in communication with the at least
one antenna and the magnetic lock system, the computer system
having at least one tracking software loaded into a memory of
the computer system.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Harper US 7,337,963 B2 Mar. 4, 2008

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Nov. 7, 2011) and Reply Brief (“Reply Br.,” filed Feb. 27, 2012),
and the Examiner’s Answer (“Ans.,” mailed Dec. 28, 2011).
Appeal 2012-006062
Application 12/122,043

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“[T]the [E]xaminer gives official notice that it is well-known to store
various inventory items in a cabinet.” Ans. 6 (Official Notice).
The following rejection is before us for review:
1. Claims 29–41 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harper in view of Official Notice.

ISSUE
Did the Examiner err in rejecting claims 29–41 under 35 U.S.C. §
103(a) as being unpatentable over Harper in view of Official Notice?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
Claims 29–33
Independent claim 29, and thus also claims 30–33 which depend from
claim 29, include the limitation “a material cabinet having a plurality of
shelves installed.” This claim limitation does not appear to have been
addressed in reaching the conclusion of obviousness. See Ans. 5. We do not
see and the Examiner has not indicated where in Harper “a material cabinet
having a plurality of shelves installed” is disclosed or if not disclosed then
an articulated reasoning with logical underpinning why one of ordinary skill
in the art would have been led to modify Harper and thereby reach “a
material cabinet having a plurality of shelves installed.” Because this has

Appeal 2012-006062
Application 12/122,043

4
not been done, we find that a prima facie case of obviousness has not been
made out in the first instance. Accordingly, we do not sustain the rejection
of claims 29–33.

Claims 34–41
Independent claim 34, and thus also claims 35–41 which depend from
claim 34, include the limitation “a proximity reader attached to said material
cabinet, wherein said proximity reader is configured to control access to said
material cabinet.” This claim limitation does not appear to have been
addressed in reaching the conclusion of obviousness. See Ans. 5. The
Appellants point out that “[t]he Examiner cites element 6 of Harper as
teaching the claimed proximity reader and cites column 5, lines 15-28 of
Harper as teaching the [proximity reader of claim 34]. Office Action
(12/10/2010), page 3; Office Action (7/20/2011), page 3.” App. Br. 13–14.
Assuming this is still the Examiner’s position, it still does not fully address
the limitation. Element 6 of Harper (see Fig. 1) is a “Presence Sensing
Mat,” the purpose of which is “[to] determine[] whether the user and
inventory are entering or exiting the controlled space” (col. 3, ll. 63–65).
We do not see and the Examiner has not explained in what way this
disclosure in Harper of a presence sensing mat meets the claim limitation “a
proximity reader attached to said material cabinet, wherein said proximity
reader is configured to control access to said material cabinet” (emphasis
added) or, if not, why one of ordinary skill in the art would have been led to
modify said presence sensing mat and thereby reach “a proximity reader
attached to said material cabinet, wherein said proximity reader is
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Application 12/122,043

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configured to control access to said material cabinet.” Because this has not
been done, we find that a prima facie case of obviousness has not been made
out in the first instance. Accordingly, we do not sustain the rejection of
claims 34–41.

DECISION
The decision of the Examiner to reject claims 29–41 is reversed.

REVERSED

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