Ex Parte O et al

Board of Patent Appeals and Interferences

Apr 5, 2010

10748763 (B.P.A.I. Apr. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte MICHAEL D. O’SHEA,
GREGORY BENRUD,
JOHN A. ANDERLA, and
IVAN SCHRODT
____________________
Appeal 2009-012009
Application 10/748,763
Technology Center 3600
____________________
Decided: April 5, 2010
____________________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012009
Application 10/748,763

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejections of claims 1-19 and 21-27. We have jurisdiction under 35 U.S.C.
§ 6(b).

SUMMARY OF THE DECISION
We REVERSE.1

THE INVENTION
Appellants’ claimed invention relates to a system for providing
crossmarketing and promotional offers to a customer using radio frequency
identification tagged products and a smart cart including a cart-scale. (Spec.
p. 1, ll. 2-4 and p. 10, ll. 18-28).
Independent claims 1 and 18, which are deemed to be representative,
read as follows:
1. A system for providing cross-marketing
promotional offers to a customer, said system
comprising:
at least one product inventory location for holding
distinct products and displaying said distinct products to
customers wherein at least one said distinct product is
associated with at least one electronic tag, and wherein
said at least one electronic tag is configured to convey
product information;
a smart cart defining a customer-storage area used
by a customer to store products while shopping;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Nov. 13, 2008) and Reply Brief (“Reply Br.,” filed Mar. 23,
2009), and the Examiner’s Answer (“Ans.,” mailed Feb. 18, 2009).
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at least one electronic tag reading device
configured to retrieve information from the at least one
electronic tag;
an electronic computing device in communication
with said at least one electronic tag reading device and
configured to accept, process, store and output said
product information;
said electronic computing device further
configured to:
(a) use said at least one electronic tag reading
device to retrieve product information from an electronic
tag associated with a hot-product wherein said hot-
product is at least one of (i) a product being examined by
a customer; and (ii) a product in a customer-storage-area;
(b) use said product information to determine if a
cross-marketing promotional offer is associated with said
hot-product;
(c) to notify said customer of a cross-marketing
promotional offer determined to be associated with said
hot-product; and wherein said promotional offer is one of
a real time promotional offer and a near real time
promotional offer; and
wherein said smart cart further comprises an item
evaluator configured to measure a physical parameter of
said hot-product placed in said customer-storage area and
to cross reference the measured physical parameter with
said product information to verify that the actual hot-
product corresponds to the product referenced in said
product information.

18. A network enabled smart cart comprising:
a customer storage area defined in said smart cart
comprising a scale configured in said customer storage
area;
a customer interface;
at least one electronic tag scanning device
associated with said customer interface and configured to
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receive electronic tag transmissions from electronic tags
associated with hot-products;
a first computer associated with said customer
interface;
wherein said first computer is in communication
with said at least one electronic tag scanning device and
configured to retrieve product information stored in the
electronic tags associated with said hot-products;
a first network operating in accordance with a
predetermined protocol;
a second network comprising a plurality of said
customer interfaces;
a gateway operatively coupled to said first network
and to said second network;
an HTTP server embedded in one of said gateway
and said plurality of customer interfaces; and
wherein said first computer is configured to
establish a communication connection to a third party
computer so that a customer can directly communicate
with a third party via said customer interface.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sloane 5,918,211 B1 Jun. 29, 1999
Humble GB 2,193,000 A Jan. 27, 1988
The Examiner rejected claims 1-9 and 11-13 under 35 U.S.C. § 103(a)
as being unpatentable over Sloane. Additionally, the Examiner rejected
claims 10, 14-19, and 21-27 under 35 U.S.C. § 103(a) as being unpatentable
over Sloane and Humble.

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ISSUES
Appellants argue inter alia that Sloane fails to teach or suggest an
item evaluator that cross-references a measurement of a physical parameter
with the electronic tag data received from a hot product, as generally recited
in independent claims 1 and 11. (App. Br. 14). Additionally, Appellants
argue regarding independent claim 18 that the combination of Sloane and
Humble fails to teach or suggest establishing a communication connection
with a third party computer so that a customer can directly communicate
with a third party via the customer interface, as generally recited in claim 18.
(App. Br. 17).
With regard to Appellants’ first argument, the Examiner finds that
Sloane’s system “. . . explicitly discloses a video camera as a security device
that takes a video image (i.e. a physical parameter) of the product being
placed into the cart and compares it with stored image information about the
scanned product to prevent fraud.” (Ans. 12). Additionally, regarding
independent claim 18, the Examiner finds:
. . . since Sloane explicitly discloses that the consumer
interface is in radio frequency communication with the
store computer and/or the point-of-sale terminals, it is
inherent that connections to other (third-party) computers
could be made through the same radio frequency
communications, as long as the third party computers
have a radio frequency receiving means.
(Ans. 9).
Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants could have made
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but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellants
and the Examiner are:
Have Appellants shown that Sloane fails to teach or suggest an item
evaluator that cross-references a measurement of a physical parameter with
the electronic tag data received from a hot product, as generally recited in
independent claims 1 and 11?
Have Appellants shown that the combination of Sloane and Humble
fails to teach or suggest establishing a communication connection with a
third party computer so that a customer can directly communicate with a
third party via the customer interface, as generally recited in claim 18?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).

Sloane
1. Sloane is directed to a system and method for influencing and
potentially altering a consumer's purchase decisions at the point-of-purchase
in a retail store using a portable bar code in communication with the store’s
computer. (Abs.).
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2. Sloane describes that upon scanning a product’s UPC, product
information is sent from the hand held scanner to a store’s computer and
then in return the hand held scanner receives product description and price
information from the store’s computer. (col. 7, ll. 65-67 and col. 8, ll. 1-12).
3. Sloane describes that its system prevents the theft of products
placed into a shopping cart without the consumer scanning the product by
visually monitoring the consumers’ activity to determine if any theft is
taking place. (col. 4, ll. 10-13 and col. 9, ll. 27-43).
4. Sloane describes that the portable bar code scanner transmits
product information to the retailer’s computer/controller via wireless
transmission medium. (col. 7, ll. 49-56).
5. Sloane describes that the retailer’s computer/controller is
programmed to receive and store promotional information sent by a retailer
or product manufacturer, and can therefore offer the promotions at the
appropriate time and to the appropriate consumer. (col. 7, ll. 4-26).
6. Sloane describes that after scanning a product, a promotional
message is sent to a consumer regarding a discount offered on a
complimentary product elsewhere in the store. (col. 8, ll. 41-49).

Humble
7. Humble is directed to an article checkout system which
incorporates two weighing scales adjacent to a checkout counter having a
UPC scanner. (Abs.).

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PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
Inherency may be established by extrinsic evidence, but “[s]uch
evidence must make clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it would be so
recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Inherency may not be
established by probabilities or possibilities, and "[t]he mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
Id. at 1269 .

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ANALYSIS
Claims 1-9 and 11-13 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sloane.
Independent claims 1 and 11
Appellants argue inter alia that Sloane fails to teach or suggest an
item evaluator that cross-references a measurement of a physical parameter
with the electronic tag data received from a hot product, as generally recited
in independent claims 1 and 11. (App. Br. 14). To address this limitation,
the Examiner found the video camera disclosed in Sloane to be equivalent to
an item evaluator. (Ans. 12). Additionally, the Examiner found that the
video image of the product being placed into the cart of Sloane was a
measurement of a physical parameter. (Ans. 12). The Examiner than further
reasoned that since “. . . the video camera images are used for ‘surveillance
of the scanned products and the products being placed into the cart’, i.e. the
product information retrieved for the scanned product is compared (cross-
referenced) to the product information of the imaged products being placed
into the cart.” [sic] (Ans. 12). We cannot agree.
Even if the video camera disclosed in Sloane meets the limitation of
an item evaluator and the image taken is capable of ascertaining a
measurement of a physical parameter, which Appellants argue otherwise
(App. Br. 13-14), we cannot find that Sloane cross-references that
measurement based on the data received from the product as required by
claims 1 and 11, nor do we find it an obvious modification of Sloane’s
system.
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While Sloane does indeed send product information from the hand
held scanner to a controller and then receives product description and price
information back as a result (FF 2), Sloan does not teach or suggest that this
information is cross-referenced based on the measurement of a physical
parameter to verify that the product scanned is the actual product.
Due to the fact that Sloane’s system uses a bar code scanner, there
would be no reason for Sloane’s system to verify that the product scanned is
the actual product present in the customer-storage area since a promotional
message for a complimentary product is sent as soon as the customer scans
the product (FF 6), not after it has been cross-referenced in the customer-
storage area by an item evaluator, as required by Appellants’ claims. Thus,
since a bar code reads the actual bar code on the product, it does not possess
the same inherent characteristics of a RFID tag which would require cross
referencing a product to verify that the product is actually present within the
customer-storage area as opposed to on a nearby shelf or in another
customer’s cart within range of the customer’s RFID tag reader. Rather, we
find that any video images obtained in Sloane are used to determine if a theft
is occurring when a product is placed in the cart without scanning the item at
all. (FF 3). Thus, we agree with Appellants’ argument that Sloane fails to
teach or suggest an item evaluator that cross-references a measurement of a
physical parameter with the electronic tag data received from a hot product,
as generally recited in independent claims 1 and 11.
Accordingly, we conclude that Appellants have shown that the
Examiner erred in rejecting claims 1 and 11 under 35 U.S.C. § 103(a) as
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obvious over Sloane. As such, we find that the rejection of claims 2-9, 12,
and 13 was also made in error for the same reasons discussed supra.

Claims 10, 14-19 and 21-27 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sloane and Humble.
Independent claim 18
Appellants argue inter alia that the combination of Sloane and
Humble fails to teach or suggest establishing a communication connection
with a third party computer so that a customer can directly communicate
with a third party via the customer interface, as generally recited in claim 18.
(App. Br. 17). To address this limitation, the Examiner found that since
Sloane’s system sends data back and forth from the customer’s scanner
using wireless data transmission, it would be inherent that connections to
third-party computers could be made through the same wireless connection.
We cannot agree.
While we agree with the Examiner that Sloane’s system establishes
communication between the customer and the store (FF 4) and the store may
receive promotional information from a product manufacturer (i.e., third
party) (FF 5), we cannot agree with the Examiner that a direct connection to
a third party through the same wireless medium would be inherent.
Furthermore, we cannot find a teaching or suggestion in the combination of
Sloane and Humble that would make a system where the customer is in
direct communication with the third party as required by Appellants’ claim
18 obvious.
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Thus, we agree with Appellants’ argument that the combination of
Sloane and Humble fails to teach or suggest establishing a communication
connection with a third party computer so that a customer can directly
communicate with a third party via the customer interface, as generally
recited in claim 18.
Accordingly, we conclude that Appellants have shown that the
Examiner erred in rejecting claim 18 under 35 U.S.C. § 103(a) as obvious
over Sloane and Humble. As such, we find that the rejection of claims 19
and 21-27 was also made in error for the same reasons discussed supra.
Additionally, we do not find that the disclosure of Humble cures the
deficiencies in the rejection of claims 1 and 11, as discussed supra. As such,
with regard to claims 10 and 14-17, which depend on claims 1 and 11, we
conclude that the rejection of claims 10 and 14-17 was also made in error for
the same reasons discussed supra.

CONCLUSION OF LAW
We conclude that Appellants have shown that Sloane fails to teach or
suggest an item evaluator that cross-references a measurement of a physical
parameter with the electronic tag data received from a hot product, as
generally recited in independent claims 1 and 11.
We conclude that Appellants have shown that the combination of
Sloane and Humble fails to teach or suggest establishing a communication
connection with a third party computer so that a customer can directly
communicate with a third party via the customer interface, as generally
recited in claim 18.
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DECISION
The decision of the Examiner to reject claims 1-19 and 21-27 is
REVERSED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2007).

REVERSED
ack

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