Ex Parte Noonan

Board of Patent Appeals and Interferences

Sep 18, 2008

10624322 (B.P.A.I. Sep. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILLIAM NOONAN
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Appeal 2008-0867
Application 10/624,322
Technology Center 2100
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Decided: September 18, 2008
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Before JAMES D. THOMAS, ALLEN R. MACDONALD, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal 2008-0867
Application 10/624,322

THE INVENTION
The disclosed invention relates generally to retailing devices and
apparatuses. More particularly, the present invention relates to the use of
radio frequency identification (RFID) enabled shelf tags and a wireless
portable personal shopper which are used to manage a database that
describes the location of all items in a store. (Spec. 1).
Independent claim 1 is illustrative:
1. A method for updating a retail planogram comprising the
steps of reading an electronic transmission from at least one
RFID tag in a retail environment located in proximity to a
product, using a personal shopper device having a location
sensing mechanism, a memory, a software means, and an RFID
reader, wherein an initial planogram is stored therein,

collecting said read electronic location information
transmitted from said at least one RFID tag by said shopper
device,

analyzing and comparing said collected location
information by said software means of said shopper device,
with said initial planogram in relation to initial location
information of said product with collected location information
for said product from said collected information,

updating said initial location information for said product
in said initial planogram in response to collected location
information to provide an updated planogram to display current
location information for said product in a current planogram
arrangement in said retail environment.

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THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejections:

Hind US 2002/0174025 A1 Nov. 21, 2002
(filed May 17, 2001)
Hoffman US 2002/0178013 A1 Nov. 28, 2002
(filed May 22, 2001)
Neumark US 6,550,674 B1 Apr. 22, 2003
(filed Aug. 23, 2002)

THE REJECTIONS
1. Claims 1, 3-5, 7-12, 14-16, and 18-20 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Neumark.
2. Claims 2, 6, and 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Neumark in view of Hind.
3. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Neumark, in view of Hoffman.

CONTENTIONS BY APPELLANT
1. Appellant contends that the Examiner erred in rejecting claims
1, 3-5, 7-12, 14-16, and 18-20 as being anticipated by Neumark because
Neumark fails to teach the feature of an initial planogram that is stored in the
personal shopper device, as recited in claim 1. (App. Br. 11).
2. Appellant contends that the Examiner erred in rejecting claims
2, 6, and 13 under 35 U.S.C. § 103(a) as being unpatentable over Neumark
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and Hind because Hind fails to cure the deficiencies of Neumark discussed
infra regarding claims 1 and 10.
3. Appellant contends that the Examiner erred in rejecting claim
17 under 35 U.S.C. § 103(a) as being unpatentable over Neumark and
Hoffman because Hoffman fails to cure the deficiencies of Neumark
discussed infra regarding claim 10.

ISSUES
1. Whether Appellant has shown that the Examiner failed to
establish that Neumark teaches the feature of an initial planogram that is
stored in the personal shopper device, as recited in claim 1?
2. Whether Appellant has shown that the Examiner has failed to
establish that the combination of Neumark and Hind discloses or suggests all
of the limitations recited in claims 2, 6, and 13?
3. Whether Appellant has shown that the Examiner has failed to
establish that the combination of Neumark and Hoffman discloses or
suggests all of the limitations recited in claim 17?

PRINCIPLES OF LAW
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
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‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent protection on
the disputed claim would allow the patentee to exclude the public from
practicing the prior art, then that claim is anticipated, regardless of whether
it also covers subject matter not in the prior art.”) (internal citations
omitted).
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006). Therefore, we look to Appellant’s Brief to show error in the
proffered prima facie case.

Findings of Fact
The following findings of fact are supported by a preponderance of
the evidence.
Specification
1. Appellant defines the claimed “planogram” as how retailers
configure a layout of their respective store. (Spec. 3, ll. 11-12).
Neumark
2. Neumark is directed to a system for inventory control. Neumark’s
system includes a mobile device (R&C) for reading labels and
communication. (Abst).
3. Neumark teaches that a data file is created corresponding to the
label reading which is transmitted to a receiver and a data
processor. (Col. 4 ll. 52-56).
4. Neumark teaches that the data file record stored in the R&C device
includes information such as the item description, serial/stocking
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number, item count, and a time stamp of the reading. (Col. 6 ll.
16-21, 35-38).
5. Neumark teaches using triangulation for locating the mobile R&C
device at a given time. (Col. 4 ll. 60-65).
6. The time stamp of the label reading and the R&C triangulation is
used to determine the location of a given item. (Col. 4, l. 65 – col.
5, l. 3).
7. Neumark teaches that the location information of an item is
processed and stored by the second data processor 70. (Col. 7, ll.
49-54 and Fig. 1).

Anticipation
Claims 1, 3-5, 7-12, 14-16, and 18-20
We consider the Examiner’s rejection of claims 1, 3-5, 7-12, 14-16,
and 18-20 as being anticipated by Neumark.
Appellant contends that Neumark fails to teach the feature of an initial
planogram that is stored in the personal shopper device, as recited in claim 1.
(App. Br. 11). We agree for the reasons discussed infra.
Neumark’s R&C mobile device is a reader that creates a file that
contains information such as the item description, item serial or stocking
number, item count quantity, and item date. This information is obtained
from the item’s label. (FF 3-4). The Examiner contends that this label
information forms a “layout” of the store (i.e., a planogram) that is
“essentially stored in the device as soon as it reads the labels.” (Ans. 12).
We disagree.

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Claim construction
At the outset, we conclude that Appellant’s disclosed and argued
definition of the claim term “planogram” is consistent with the plain,
ordinary, and customary meaning of the term, i.e., a planogram pertains to
how retailers configure a layout of their respective store (see FF 1; see also
App. Br. 14).
Consistent with Appellant’s defined plain meaning for the term
“planogram,” we agree with Appellant’s contention that Neumark is void of
any discussion regarding a planogram (i.e., store layout) that is stored within
the R&C mobile device. As noted by Appellant, the R&C device data
storage capabilities are limited to creating a data file with associated time
stamps. (App. Br. 13; see also FF 4-6). In particular, we do not agree with
the Examiner’s determination that the item information (i.e., item
description, serial/stocking number, item count, and time stamp of the
reading) is a “planogram” as defined and claimed by Appellant. (See FF 1,
FF 4). We find that Neumark’s item information that is stored in the R&C
mobile device does not equate to a store’s layout or plangram, as defined by
Appellant.
Moreover, even assuming arguendo that Neumark’s triangulated
location information describes a store layout, we note that the R&C mobile
device location information is received by a plurality of external transceiver
communication nodes 60 (col. 7, ll. 26-27), and such information is further
processed (i.e., triangulated using information from three communication
nodes) and stored external to the R&C device (FF 5-7).
Therefore, based on the record before us, we conclude that Appellant
has shown error in the Examiner’s finding that Neumark teaches an initial
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planogram stored in the personal shopper device, as recited in claim 1. We
note that “absence from the reference of any claimed element negates
anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).
Because we conclude that Appellant has met the burden of showing
error in the Examiner’s prima facie case of anticipation by a preponderance
of the evidence, we reverse the Examiner’s rejection of independent claim 1
as being anticipated by Neumark.
We further note that the limitation of an initial planogram that is
stored in the personal shopper device is similarly recited in independent
claims 10 and 19. Therefore, we also reverse the Examiner’s rejection of
claims 10 and 19 as being anticipated by Neumark. We likewise reverse the
Examiner’s rejection of dependent claims 3-5, 7-9, 11, 12, 14-16, 18, and 20
as being anticipated by Neumark.

Obviousness Rejections
Claims 2, 6, and 13
The Examiner rejected claims 2, 6, and 13 under 35 U.S.C. § 103(a)
as obvious over Neumark and Hind. Appellant contends that Neumark is
deficient for the reasons set forth regarding claim 1, and Hind failed to cure
these deficiencies. (Br. 20-21).
We conclude that the Examiner has not demonstrated on this record
that Hind cures the deficiencies of Neumark, noted supra regarding
independent claims 1 and 10.
Therefore, we also cannot sustain the rejection of claims 2, 6, and 13
under 35 U.S.C. § 103(a) on appeal.
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Claim 17
The Examiner rejected claim 17 as being unpatentable over Neumark
and Hoffman. Appellant contends that Neumark is deficient for the reasons
set forth regarding claim 10, and Hoffman fails to cure these deficiencies.
(Br. 28).
We conclude that the Examiner has not demonstrated on this record
that Hoffman cures the deficiencies of Neumark, noted supra.
Therefore, we also cannot sustain the rejection of claim 17 under
35 U.S.C. § 103(a) on appeal.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has shown the Examiner erred in rejecting claims 1, 3-5, 7-12,
14-16, and 18-20 under 35 U.S.C. § 102(e) for anticipation. Likewise, we
conclude that Appellant has shown the Examiner erred in rejecting claims 2,
6, 13, and 17 under 35 U.S.C. § 103(a) for obviousness.

DECISION
The decision of the Examiner rejecting claims 1-20 is reversed.

REVERSED

rwk

DUKE W. YEE
YEE & ASSOCIATES, P.C.
P.O. BOX 802333
DALLAS TX 75380
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