Ex Parte Peratoner

Board of Patent Appeals and Interferences

May 31, 2002

08827835 (B.P.A.I. May. 31, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 25

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SERGIO PERATONER
_____________
Appeal No. 2000-0259
Application 08/827,835
______________
ON BRIEF
_______________
Before JERRY SMITH, RUGGIERO and DIXON, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 19-36, 38, and 39, which are the only claims remaining in
the application. Claims 1-18 and 37 have been canceled.
The claimed invention relates to a modularized distributed
electronic price display system which includes a central computer
communicating through a hard wired or radio frequency system to
receivers located at each aisle of a retail store or warehouse.
Appeal No. 2000-0259
Application No. 08/827,835
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Each receiver at each aisle is wired into a series of shelving
structures known as gondola units, each gondola unit being
controlled by a single controller or multiple controllers. Each
level of control beyond the receivers at each aisle redistributes
information to the next level down by selectively enabling the
receipt of message information at each subsequent level of
distribution. Each unit connected to a transmitting unit has the
message information transmitted to it, but only a unit that is
enabled to receive the message will logically have access to the
message. According to Appellant (specification, page 5), this
particular system arrangement eliminates wiring and hardware at
the display site which would otherwise be necessary for logical
address verification.
Claim 19 is illustrative of the invention and a copy of the
claim is appended to this decision.
The Examiner relies on the following prior art:
Sundelin 4,002,886 Jan. 11, 1977
Gomersall et al. (Gomersall) 4,500,880 Feb. 19, 1985
Waterhouse et al. (Waterhouse) 5,245,534 Sep. 14, 1993
Briechle et al. (Briechle) 5,348,485 Sep. 20, 1994
Joliey 5,404,149 Apr. 04, 1995
Opoczynski 5,453,737 Sep. 26, 1995
Appeal No. 2000-0259
Application No. 08/827,835
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Claims 19-36, 38, and 39 stand finally rejected under 35
U.S.C. § 103. With respect to claims 19-21, 23-25, and 29-32, as
evidence of obviousness, the Examiner offers, in the alternative,
Sundelin, Waterhouse, or Joliey, each in view of Opoczynski.
Briechle is added to the basic combination with respect to claim
22, and Gomersall is added to the basic combination with respect
to claims 26-28, 33, and 34. As to claims 35, 36, 38, and 39,
the Examiner offers Briechle in view of, in the alternative,
Sundelin, Waterhouse, or Joliey.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief (Paper No. 23) and
Answer (Paper No. 24) for the respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner, the arguments in support
of the rejection and the evidence of obviousness relied upon by
the Examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
Appellant’s arguments set forth in the Brief along with the
Examiner’s rationale in support of the rejection and arguments in
rebuttal set forth in the Examiner’s Answer.
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Application No. 08/827,835
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It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 19-36, 38, and 39. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17-18, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
Appeal No. 2000-0259
Application No. 08/827,835
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776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to independent claims 19 and 29, the Examiner,
as the basis for the obviousness rejection, proposes to modify
the disclosures of any one of Sundelin, Waterhouse, or Joliey,
each of which discloses the transmission of pricing information
through a plurality of routing points eventually to price tag
modules. According to the Examiner (Answer, page 4), “[t]hese
references show all the claimed limitations yet lack in expressly
discussing the verification of addresses occurring in the routing
means.” To address this deficiency, the Examiner turns to
Opoczynski which, in the Examiner’s view (id.), describes a
master-slave communication system in which address comparison is
performed at a routing point to determine message destination.
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As further asserted by the Examiner, signals are generated in
Opoczynski which logically enable a specific slave station to
receive the message, thereby eliminating the need for expensive
address comparators at the slave station locations. The Examiner
concludes (id.):
it would have been obvious to one of ordinary
skill in the art at the time of the invention
to have utilized an address comparison routing
capability in the above systems (Sundelin,
Waterhouse, Joliey) to ensure operation of the
proper price tag module in a system of a vast
number of price tag modules, as suggested by
Opoczynski.
In response, Appellant asserts that the Examiner has not
established proper motivation for the proposed combination of
references so as to set forth a prima facie case of obviousness.
After careful review of the applied prior art references in light
of the arguments of record, we are in agreement with Appellant’s
position as stated in the Brief. As argued by Appellant (Brief,
pages 5-8), the Examiner has pointed to no disclosure in
Opoczynski that would suggest any support for the Examiner’s
assertion that the price tag module systems of Sundelin,
Waterhouse, or Joliey could be modified to incorporate an
address-free price tag module that is selectively enabled to
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Application No. 08/827,835
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accept a signal input. Our interpretation of the disclosure of
Opoczynski coincides with that of Appellant, i.e., a kill signal
is generated to disable a malfunctioning slave system, not to
selectively enable one in an address-free manner as claimed.
We similarly find no disclosure in any of the applied prior
art that would support the Examiner’s position as to the specific
shift register structure set forth in independent claim 29.
Although the Examiner is correct (Answer, page 9) that
Appellant’s argued terminology “barrel shifting” does not appear
in the claims, a specific interconnection of shift register
outputs and inputs is recited, an interconnection which is not
taught or suggested by any disclosure in the applied prior art.
Further, even assuming, arguendo, that the applied
references could be combined, there is no indication as to how
and in what manner the combination would take place to produce
the specific combination set forth in the appealed claims. In
order for us to sustain the Examiner’s rejection under 35 U.S.C.
§ 103, we would need to resort to speculation or unfounded
assumptions or rationales to supply deficiencies in the factual
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Application No. 08/827,835
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basis of the rejection before us. In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968), rehearing denied, 390 U.S. 1000 (1968).
We have also reviewed the Briechle and Gomersall references,
applied by the Examiner against several dependent claims, and
find nothing that would overcome the deficiencies of the prior
art references discussed supra. Accordingly, since the Examiner
has not established a prima facie case of obviousness, the
rejection of independent claims 19 and 29, as well as claims
20-28 and 30-34 dependent thereon, is not sustained.
Turning to a consideration of the Examiner’s obviousness
rejection of independent claim 35, and its dependent claims 36,
38, and 39, in which the Briechle reference is applied in the
alternative to Sundelin, Waterhouse, or Joliey, we do not sustain
this rejection as well. We are in agreement with Appellant
(Brief, page 14) that there is no disclosure in the Briechle
reference, nor any of the other applied prior art, of the details
of the attachment structure which fastens the price tag modules
to the carrier strip as set forth in independent claim 35.
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In summary, we have not sustained the Examiner’s 35 U.S.C.
§ 103 of any of the claims on appeal. Therefore, the decision of
the Examiner rejecting claims 19-36, 38, and 39 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
jfr/vsh
Appeal No. 2000-0259
Application No. 08/827,835
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APPENDIX
Claim 19
19. An electronic price tag system comprising:
a plurality of address-free price tag modules
having means to store and display price information but
no means to either store or decode address information;
central computing means for transmitting an
information signal;
a plurality of signal routing means, each having a
unique address and being connected between said central
computing means and said plurality of address-free
price tag modules to receive said information signal
transmitted by said central computing means, said
information signal containing data corresponding to the
address of a particular one of said plurality of signal
routing means, the location of a particular one of said
plurality of price tag modules, and the price
information to be stored and displayed by said
particular price tag module, said plurality of signal
routing means comparing the respective unique addresses
thereof with the address data contained by said
information signal transmitted by said central
computing means;
a plurality of enable lines that are electrically
distinguishable from one another, said plurality of
signal routing means connected to said plurality of
price tag modules by respective ones of said enable
lines; and
a plurality of data bus lines, each of said data
bus lines respectively connected between one of said
plurality of signal routing means and a number of said
plurality of address-free price tag modules;
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APPENDIX: Claim 19 (cont.)
a selected one of said plurality of signal routing
means whose unique address matches the address
identified by said information signal generating first
and second output signals, a first of said output
signals enabling the particular one of said plurality
of price tag modules via a respective one of said
electrically distinguishable enable lines depending
upon the location identified by said information
signal, and the second output signal being transmitted
on one of said plurality of data bus lines to each of
said number of price tag modules that are connected to
said one data bus line so that the price information
can be stored and displayed by said particular price
tag module that is enabled via the respective one of
said electrically distinguishable enable lines.
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