Ex Parte Peters

Patent Trial and Appeal Board

Apr 19, 2013

11615510 (P.T.A.B. Apr. 19, 2013)

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.
11/615,510 12/22/2006 Johan Christiaan Peters 11884/498601 1010
23838 7590 04/19/2013
KENYON & KENYON LLP
1500 K STREET N.W.
SUITE 700
WASHINGTON, DC 20005
EXAMINER
SAEED, USMAAN
ART UNIT PAPER NUMBER
2169
MAIL DATE DELIVERY MODE
04/19/2013 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 JOHAN CHRISTIAAN PETERS
1

____________________

Appeal 2010-009726
Application 11/615,510
Technology Center 2100
____________________

Before DAVID M. KOHUT, JOHNNY A. KUMAR, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-3, 18-22, 24, and 25. Appellant has previously
withdrawn claims 4-17 and 23 directed to the non-elected invention. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1
The Real Party in Interest is SAP Aktiengesellschaft. (App. Br. 2.)
Appeal 2010-009726
Application 11/615,510

2
STATEMENT OF THE CASE
2

The Invention
Appellant’s invention relates to methods and systems for inventory
data entry, where the data includes identification codes for and status
information about inventory items. Identification codes may be numbers,
characters, symbols, or any combinations thereof that correspond to codes
on pre-printed inventory tracking labels to be affixed to inventory items.
Spec. ¶ [0012].
Exemplary Claim
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added):
1. A computer-implemented data entry method for an
inventory computer system, comprising:
querying, by the inventory computer system, an
operator for identification of a first inventory tracking code
from a collection of pre-printed inventory tracking labels
which have not yet been associated with inventory, the
inventory tracking labels to be physically affixed to inventory
items;
querying, by the inventory computer system, the operator
for status information about a first inventory item;

2
Our decision refers to Appellant’s Appeal Brief (“App. Br.,” filed
Jan 15, 2010); Reply Brief (“Reply Br.,” filed June 9, 2010); Examiner’s
Answer (“Ans.,” mailed Apr. 9, 2010); Final Office Action (“FOA,” mailed
Jul. 21, 2009); and the original Specification (“Spec.,” filed Dec. 22, 2006).
Appeal 2010-009726
Application 11/615,510

3
storing the status information about the first inventory
item in association with the first inventory tracking code in a
memory of the inventory computer system; and
repeatedly,
proposing by the inventory computer system, to the
operator a subsequent inventory tracking code derived from the
first inventory tracking code and previously used tracking
codes,
querying, by the inventory computer system, the operator
for status information about a subsequent inventory item, and
storing the status information about the subsequent
inventory item in association with the subsequent inventory
tracking code in the memory of the inventory computer system,
wherein after the operator enters a portion of the first
inventory tracking code, the computer inventory tracking
system generates a list of unused tracking codes containing the
portion entered by the operator.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Quinn US 2006/0026197 A1 Feb. 2, 2006
Falls US 7,287,001 B1 Oct. 23, 2007
Rejections on Appeal
1. Claims 1-3, 18-21, and 24-25 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Quinn. Ans. 3.
2. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Quinn and Falls. Ans. 8.
Appeal 2010-009726
Application 11/615,510

4
ISSUE
Appellant argues (App. Br. 4-5; Reply Br. 2-3) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 102(e) as being anticipated by Quinn
is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Quinn discloses
Appellant’s claimed computer-implemented data entry method
for an inventory computer system including, inter alia, the step
of “querying, by the inventory computer system, an operator for
identification of a first inventory tracking code from a
collection of pre-printed inventory tracking labels which have
not yet been associated with inventory, the inventory tracking
labels to be physically affixed to inventory items,” as recited in
claim 1?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We agree with Appellant’s
conclusions with respect to claim 1, and we disagree with (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons and rebuttals set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Claim 1 recites “querying, by the inventory computer system, an
operator for identification of a first inventory tracking code from a collection
of pre-printed inventory tracking labels which have not yet been associated
with inventory, the inventory tracking labels to be physically affixed to
inventory items.” Claim 18 recites a similar limitation. In response to
Appellant’s arguments, the Examiner finds that:
Appeal 2010-009726
Application 11/615,510

5
[Quinn] Figure 7 . . . shows a system querying a user/operator
to identify pending/unused labels, where user identifies/enters
the unique identification codes for a label.
Further[,] paragraph[] 0025 teaches that a user is identifying the
appropriate label based on the unique indicia on the labels and
based on this indicia attaching the unique labels to the
particular objects.
Regarding pre-printed labels, examiner interprets the labels
after they are printed as being the pre-printed labels. In
paragraph 0098[,] Quinn further teaches that the pre-printed
UID labels can also be purchased from a third party to be
attached to different objects and can be differentiated based on
UID label types.
Further paragraph 0077 teaches the use of RFID’s which
examiner also interprets as pre-printed labels.
Ans. 11 (emphasis omitted).
Appellant contends that:
Quinn fails to disclose the claimed “querying . . . an operator
for identification of a first inventory tracking code from a
collection of pre-printed inventory tracking labels,” as recited
in claim 1, because the “unique identification labels” of Quinn
are based on a [sic] object information file, which stores
information on the object (i.e., the labels of Quinn are not based
on querying an operator). This distinction may be highlighted
by the fact that Quinn is unrelated to a system using “pre-
printed inventory tracking labels,” because the “identification
labels” are not pre-printed inventory tracking labels, but rather
printed contemporaneously. Further, Figs. 7 & 9 of Quinn,
which the Office Action also relies upon to disclose the claimed
feature, disclose that a user may enter in a “unique
identification code.” However, the “unique identification
code[s]” are codes associated with the objects of Quinn.
Accordingly, the “unique identification codes” of Quinn are not
Appeal 2010-009726
Application 11/615,510

6
“a first inventory tracking code from a collection of pre-printed
inventory tracking labels,” as recited in claim [1].
App. Br. 4 (emphasis in original).
Appellant further contends in the Reply Brief that:
[E]ven if an interpretation of contemporaneously printed labels
being “pre-printed labels” is accepted, Quinn still does not
disclose querying an operator for the identification of a first
label from a collection of the pre-printed labels, as required in
the context of claim 1. There is no querying of pre-printed
labels, since the querying is done when no printed labels exist,
and by the time the labels are erroneously deemed pre-printed
by the Office (i.e. after they are contemporaneously printed),
there is no further querying.
Reply Br. 3. Appellant also contends that the Examiner did not address their
argument regarding Quinn’s labels not disclosing pre-printed inventory
tracking labels “which have not been associated with inventory,” as recited
in claim 1. Further in this regard, and as correctly indicated by Appellant,
the portions of Quinn relied upon by the Examiner in the Final Rejection as
teaching the disputed limitation (i.e., Quinn ¶¶ [0012] and [0017]), actually
disclose labels which already have been associated with inventory, but may
not have been physically affixed to inventory items, rather than the recited
“pre-printed inventory tracking labels which have not yet been associated
with inventory.” Id.
We find Appellant’s arguments that the Examiner erred to be
persuasive. We disagree with the Examiner because Quinn discloses (Quinn
Fig. 7 and ¶¶ [0101] – [0102]) user input of object identification code data to
retrieve data and track objects for which labels have already been generated,
Appeal 2010-009726
Application 11/615,510

7
but does not teach or suggest “querying, by the inventory computer system,
an operator for identification of a first inventory tracking code from a
collection of pre-printed inventory tracking labels,” as recited in claim 1
(emphasis added).
In addition, we disagree with the Examiner’s finding that Quinn’s
disclosure of third-party label templates meets the limitation of “a collection
of pre-printed inventory tracking labels which have not yet been associated
with inventory.” Ans. 11 (citing Quinn ¶ [0098]). We disagree because
Quinn’s pre-printed labels “are defined by a third-party, such as an object
purchaser . . . to have uniquely identifying labels that meet certain
predetermined requirements . . . that must be satisfied for the object
purchaser to effectively track the object.” Quinn ¶ [0098]. We find that
“effectively track[ing] the object” necessarily requires that the pre-printed
labels are already associated with an inventory item, and thus does not
disclose the limitation in dispute.
Thus, based upon the above-cited disclosure of Quinn, we agree with
Appellant’s contention that the Examiner ignored their argument regarding
“a collection of pre-printed inventory tracking labels which have not yet
been associated with inventory.” We also find the Examiner’s interpretation
that “pre-printed” labels may be construed as any “ labels after they are
printed” (Ans. 11) to be unreasonable because “Figs. 7 & 9 of Quinn, which
the Office Action also relies upon to disclose the claimed feature, disclose
that a user may enter in a ‘unique identification code’ . . . [which is]
associated with the objects of Quinn . . . .”. App. Br. 4 (citing Quinn Figs. 7
and 9). Quinn goes on to disclose that a “step of generating, e.g. printing, a
Appeal 2010-009726
Application 11/615,510

8
plurality of unique identification labels [is] based on the at least one object
information file.” Quinn ¶ [0015]. Further, we find that unique
identification labels, based on the object information file, are each associated
with one of the plurality of objects, such that the printed labels of Quinn,
whether we consider them to be “pre-printed” or not, are already associated
with an [inventory] object, and thus does not meet the limitation in dispute,
cited above. Quinn ¶ [0023].
Accordingly, we disagree with the Examiner’s finding that Quinn
discloses Appellant’s method as recited in claim 1. Ans. 4-5, 9-11. Thus,
we agree with Appellant that the Examiner has failed to provide a proper
anticipation rejection of independent claim 1.
For essentially the same reasons argued by Appellant (App. Br. 4-5;
Reply Br. 2-3), we also cannot sustain the Examiner’s rejection of
independent claim 18, which recites the disputed limitations in
commensurate form. For the same reasons, we also reverse the rejections of
all claims that depend therefrom. As such, we cannot sustain the Examiner’s
rejection of claims 1-3, 18-22, 24, and 25.
CONCLUSIONS
(1) The Examiner erred with respect to the rejection of claims 1-3,
18-21, and 24-25 under 35 U.S.C. § 102(e) as being anticipated by Quinn,
and the rejection is not sustained.
(2) The Examiner erred with respect to the rejection of claim 22
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Quinn and Falls, and the rejection is not sustained.
Appeal 2010-009726
Application 11/615,510

9
DECISION
The decision of the Examiner to reject claims 1-3, 18-22, 24, and 25 is
reversed.
REVERSED

ELD