Ex Parte Root et al

Board of Patent Appeals and Interferences

Apr 6, 2012

11035654 (B.P.A.I. Apr. 6, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/035,654 01/14/2005 Steven A. Root 134602.0103 2052
27557 7590 04/09/2012
BLANK ROME LLP
WATERGATE
600 NEW HAMPSHIRE AVENUE, N.W.
WASHINGTON, DC 20037
EXAMINER
JARRETT, SCOTT L
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
04/09/2012 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)
1

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte STEVEN A. ROOT and MICHAEL R. ROOT 8
___________ 9
10
Appeal 2010-009292 11
Application 11/035,654 12
Technology Center 3600 13
___________ 14
15
16
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 17
BIBHU R. MOHANTY, Administrative Patent Judges. 18
19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL 21
22
Appeal 2010-009292
Application 11/035,654
2

STATEMENT OF THE CASE1 1
Steven A. Root and Michael R. Root (Appellants) seek review under 2
35 U.S.C. § 134 (2002) of a final rejection of claims 1-3, 6, 7, 9-14 and 23-3
25, which along with claims 16-22 withdrawn from consideration, are the 4
only claims pending in the application on appeal. We have jurisdiction over 5
the appeal pursuant to 35 U.S.C. § 6(b) (2002). 6
The Appellants invented an interactive advisory system and method of 7
delivering individualized information to remote communicator devices 8
(Specification ¶ 0010). 9
An understanding of the invention can be derived from a reading of 10
exemplary claims 1 and 23, which are reproduced below [bracketed matter 11
and some paragraphing added]. 12
1. A method for transmitting 13
individualized real-time work assignments 14
to a plurality of employees 15
located remotely 16
from a broadcast network, 17
comprising the steps of: 18

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed January 15, 2010) and the Examiner’s Answer (“Ans.,” mailed
March 3, 2010).
Appeal 2010-009292
Application 11/035,654
3

[1] inputting 1
employee user-profile criteria 2
into an analysis unit, 3
the employee user-profile criteria including data 4
indicative of two or more employee communicator 5
devices 6
with each employee associated with at least 7
one employee communicator device; 8
[2] inputting 9
work assignment criteria 10
into the analysis unit, 11
the work assignment criteria including the location 12
of one or more work assignments; 13
[3] monitoring the real-time location 14
of at least one of the employee communicator devices; 15
[4] matching 16
the employee user-profile criteria 17
with 18
the work assignment criteria 19
by the analysis unit 20
to generate a data set 21
for at least one employee 22
located proximate to the location of a work 23
assignment; 24
[5] transmitting the data set 25
to an employer communicator device 26
based upon the matching of 27
the work assignment criteria 28
with 29
the employee user-profile; 30
Appeal 2010-009292
Application 11/035,654
4

[6] reviewing the data set by the employer; 1
[7] assigning an individualized work assignment 2
to an employee using the employer communicator 3
device; 4
and 5
[8] sending the individualized work assignment 6
to the employee 7
using the employer communicator device. 8
23. A method for transmitting 9
individualized real-time work assignments 10
to a plurality of employees 11
located remotely from a broadcast network, 12
comprising the steps of: 13
[1] inputting 14
employee user-profile criteria 15
into a user profile, 16
the employee user-profile criteria including 17
data indicative of an employee communicator 18
device 19
associated with an employee; 20
[2] accessing 21
the user profile 22
via an employer communicator device 23
and 24
an employee communicator device, 25
wherein 26
the employer communicator device accesses the 27
entire user profile 28
and 29
Appeal 2010-009292
Application 11/035,654
5

the employee communicator device accesses a 1
subset of the user profile; 2
[3] inputting 3
work assignment criteria 4
into 5
an analysis unit, 6
the work assignment criteria including the location 7
of one or more work assignments; 8
[4] monitoring 9
the real-time location 10
of the employee communicator device; 11
[5] matching 12
the employee user-profile criteria 13
with 14
the work assignment criteria 15
to generate a data set 16
of at least one individualized work assignment; 17
and 18
[6] transmitting 19
the individualized work assignment 20
to the employee 21
located proximate to the location of a work 22
assignment 23
based upon the matching of 24
the work assignment criteria 25
with 26
the employee user-profile. 27
Appeal 2010-009292
Application 11/035,654
6

The Examiner relies upon the following prior art: 1
Donnelly US 6,049,776 Apr. 11, 2000
Suarez US 6,212,393 B1 Apr. 3, 2001
Ditcharo US 6,587,851 B1 Jul. 1, 2003
Harrison US 6,990,458 B2 Jan. 24, 2006
Jacobs US 2002/0010615 A1 Jan. 24, 2002
Nexterna, Nexterna.com web site 2002-2003. 2
Claims 1-3, 6-7, and 9-11 stand rejected under 35 U.S.C. § 103(a) as 3
unpatentable over Ditcharo, Jacobs, Suarez, and Nexterna. 4
Claims 12-13 stand rejected under 35 U.S.C. § 103(a) as unpatentable 5
over Ditcharo, Jacobs, Suarez, Nexterna, and Harrison. 6
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 7
Ditcharo, Jacobs, Suarez, Nexterna, and Donnelly. 8
Claims 23-25 stand rejected under 35 U.S.C. § 103(a) as unpatentable 9
over Harrison, Suarez, and Nexterna. 10
ISSUES 11
The issues of obviousness as to claims 1-3, 6, 7, and 9-14 turn primarily 12
on whether it was predictable to route work instructions through an 13
employer representative prior to giving such instructions to an employee. 14
The issues of obviousness as to claims 23-25 turn primarily on whether 15
the art described different levels of data access between employer and 16
employee communication devices. 17
Appeal 2010-009292
Application 11/035,654
7

FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Ditcharo 5
01. Ditcharo is directed to a dispatching system that can adjust 6
resources to meet and accommodate real time changes in demand 7
or load. Ditcharo provides a system that notifies technicians of 8
real time changes in their scheduled work and can determine if a 9
real time intervention in a technician's schedule is necessary and 10
can notify the technician in near real time of changes in assigned 11
tasks. In this way, Ditcharo adjusts the allocation of resources to 12
meet real time changes in demand. Ditcharo 3:1-9. 13
02. Ditcharo shows that it was known in the dispatch arts to perform 14
real time modification of tasks and assignments, exemplified by 15
taxicab companies, using real time knowledge of customer 16
demand and actual physical locations of those performing the 17
tasks. Ditcharo 2: 36-46. 18
03. Ditcharo considers the work history of the technician or the 19
number of hours the technician has worked in a pay period, the 20
availability and qualifications of the technician, and suitable 21
locations to which the technician is most beneficially dispatched 22
in matching technician to workload. Ditcharo also monitors 23
problem information and requests for service sent to the system by 24
customers and customer service representatives and analyzes 25
Appeal 2010-009292
Application 11/035,654
8

requests for modifications to existing assignments and determines 1
if a real time intervention is required. If a real time intervention is 2
required, the system sends a message to the technician. Ditcharo 3
4: 8-22. 4
04. Ditcharo collects customer demand into a dispatch unit that in turn 5
communicates work assignments to technicians with an access 6
system that includes a wireless access unit in each technician’s 7
possession. Ditcharo Fig. 2 and related 4:52 – 5:5. 8
05. A dispatch receives problems or requests for service, matches 9
technicians based on the factors mentioned above, then transmits 10
tasks and assignments to a technician’s access unit. Task 11
assignment considers several factors including commitment dates 12
and time, severity of the outage, the revenue generated by the 13
service order, and the availability of a close-by technician, who 14
are assigned based upon geographic regions. Ditcharo 6:15-33. 15
Jacobs 16
06. Jacobs is directed to scheduling work order assignments to 17
members of a mobile workforce when the work order assignments 18
include multiple tasks such that the performance of one task is 19
dependent on the completion of a prior task. Jacobs ¶ 0002. 20
07. A complex work order is a task to be performed by one or more 21
members of a work force, which requires two or more related 22
work orders to be completed typically in a prescribed or preferred 23
order. This coordination ensures that some work orders are 24
completed before other work orders are started at a different 25
Appeal 2010-009292
Application 11/035,654
9

location; that a collection of work orders for the same premise are 1
all done during the same customer visit; or more typically, that the 2
time of start and completion of separate sub-orders for the same 3
premise is accomplished in a productive. Coordination of 4
complex work orders also encompasses resource allocation, 5
scheduling, assignment and/or optimizing the distribution of work 6
orders to members of a workforce. Jacobs ¶ 0010. 7
08. Technicians provide on-site services to fulfill work orders. The 8
technicians are ordinarily in wireless communication with the 9
dispatchers either independently, through the WMS, or both. 10
Jacobs ¶ 0039. 11
09. Dispatchers include human workers and/or automated systems. 12
The basic functions of a dispatcher are to receive work orders and 13
to assign those work to technicians in the field. A dispatcher also 14
receives status reports from the technicians, updates information 15
to the WMS and/or reschedules or modifies work orders. 16
Dispatchers typically assign work orders to particular technicians 17
based upon technician availability, skill level and the appointment 18
time window scheduled for the work order as received from the 19
WMS. The WMS can perform the functions of scheduling, 20
assigning, and communicating work orders to particular 21
technicians, and the functions of the dispatcher are integrated as a 22
component module of the WMS. The scheduling and assignment 23
of work orders is typically also routed to a human dispatcher or 24
supervisor who has the authority to cancel, override and 25
Appeal 2010-009292
Application 11/035,654
10

optionally, to modify the scheduling and/or assignment of work 1
orders. Jacobs ¶ 0040. 2
Suarez 3
10. Suarez is directed to the communication of assignment messages 4
within vehicle dispatch systems. Suarez 1:8-10. 5
11. Today, vehicle dispatch systems are designed to use automatic 6
vehicle locator systems that automatically track the location of 7
managed vehicles and then report this information to a dispatcher. 8
Advanced automatic vehicle locator systems further automatically 9
identify the nearest vehicle to a location to further facilitate the 10
dispatcher's accuracy. Such tracking can be done by a vehicle 11
tracking device, or by tracking a wireless device possessed by the 12
driver or a passenger, effectively tracking the location of the 13
driver or passenger using that wireless device. Suarez 1:62 – 2:8; 14
also 5:35-68; 7:23-26, 60-68; 8:1-13; Figure 1:36; and Figure 15
2:88, 90. 16
Nexterna 17
12. Nexterna describes monitoring the real-time location of at least 18
one employee communicator device (OptiTrack, Clearview, GPS 19
Tracking; Real-Time Service Management Platform; Paragraph 6, 20
Page 3; Paragraphs 3,5; Page 7; Pages 20,22, Paragraph 7, Page 21
30; Paragraph 3, Page 36) for the purposes of responding quickly 22
to customers/work assignments on the fly (Paragraph 2, Page 3) 23
and/or the ability to check on the status, location and progress of 24
employees (Last Paragraph, Page 7). 25
Appeal 2010-009292
Application 11/035,654
11

13. Nexterna shows a copyright date of 2002 alone. 1
Harrison 2
14. Harrison is directed to computer-aided technician dispatch and 3
communication. Harrison 1:22-24. 4
15. Harrison enters technician employee information such as name 5
and phone number. Harrison 5:27-33. The phone number 6
identifies a wireless phone device. 7
16. Harrison describes entering work criteria including location. 8
Harrison 6:17-41. 9
ANALYSIS 10
Claims 1-3, 6-7, and 9-11 rejected under 35 U.S.C. § 103(a) as unpatentable 11
over Ditcharo, Jacobs, Suarez, and Nexterna. 12
Given the number of limitations and arguments, it is helpful to 13
understand what claim 1 is. Claim 1 sends instructions to employees. It 14
does so using automation and electronic communications. The work is 15
assigned based on employee physical location. The employer reviews, 16
corrects, and assigns the work instructions prior to sending those instructions 17
to the employee. To do this is little more than the application of common 18
sense and centuries of techniques in delegation of authority. 19
For this reason, most of the arguments go to very specific contentions 20
regarding how the applied art happens to implement these techniques. The 21
claim does not recite any particular technological technique or tool other 22
than general automation and electronic communication to achieve its end. 23
Appeal 2010-009292
Application 11/035,654
12

We take each of these arguments up next, but we are unpersuaded that any 1
of the art is incompatible with or teaches against these hoary techniques. 2
We are unpersuaded by Appellants’ argument that Ditcharo specifically 3
teaches away from the steps of transmitting, reviewing, assigning and 4
sending as recited in claim 1. Appeal Br. 7-8. 5
While Ditcharo describes automatically sending instruction, it does not 6
criticize, discredit, or otherwise discourage the routing of those instructions 7
through an employer representative to verify the propriety of those 8
instructions. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The 9
prior art's mere disclosure of more than one alternative does not constitute a 10
teaching away from any of these alternatives because such disclosure does 11
not criticize, discredit, or otherwise discourage the solution claimed in the … 12
application.”); see also In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994) 13
(“[A] reference will teach away if it suggests that the line of development 14
flowing from the reference's disclosure is unlikely to be productive of the 15
result sought by the applicant.”). 16
The Examiner applies Jacobs to tell us exactly what one of ordinary skill 17
knows from common sense. Some instructions are sufficiently complex that 18
they ought to be routed through an employer representative to verify their 19
propriety, and modify as needed. 20
We are unpersuaded by Appellants’ argument that Ditcharo does not 21
send the individualized work assignment to the employee using the 22
employer communicator device. Appeal Br. 9. 23
First, Ditcharo’s dispatch unit is used by an employer and so is properly 24
characterized as an employer communication device. Further, as found, 25
Appeal 2010-009292
Application 11/035,654
13

supra, Jacobs is applied for the employer device that reviews the instructions 1
prior to sending to the employee. 2
Although the claim limitation [8] does recite sending … using the 3
employer communication device, the claim does not specify the manner of 4
use, nor does it limit such manner of use. The mere fact that Jacobs relies on 5
a central hub between the employer and employee device does not diminish 6
the fact that transmission from the employer device is an essential 7
prerequisite to reception on the employee device and thus constitutes a use 8
of the employer device in the sending to the employee. This limitation does 9
not even require that the sending be actually received, so long as the sending 10
is directed toward the employee, which Jacob’s employer’s transmission 11
clearly is. 12
We are unpersuaded by Appellants’ argument that Ditcharo fails to 13
teach, and in fact teaches away from the steps of transmitting, reviewing, 14
assigning and sending. Appeal Br. 10. 15
The Appellant responds to the rejection by attacking the references 16
separately, even though the rejection is based on the combined teachings of 17
the references. Nonobviousness cannot be established by attacking the 18
references individually when the rejection is predicated upon a combination 19
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 20
(Fed. Cir. 1986). The Examiner applied Jacobs for these limitations. Ans. 21
6-7; FF 06-09. 22
As to the contention that Jacobs would change the principal of 23
Ditcharo’s operation or render Ditcharo unsuitable for use, this is neither 24
shown nor logical, as both references are generally directed to the same type 25
Appeal 2010-009292
Application 11/035,654
14

of system. The contention is that diverting Dithcaro’s instructions to an 1
employer representative would be harmful to Ditcharo. 2
The reality is that Jacobs merely describes what common sense alone 3
would show, that many jobs are sufficiently complex to require some degree 4
of supervisory coordination. Ditcharo does not in any manner discuss this 5
possibility of harm, much less say doing so would be detrimental. Instead, 6
Jacobs shows that many times, the types of instruction that could be 7
transmitted in Ditcharo would be sufficiently complex that routing them first 8
through an employer representative for review and assignment would be 9
prudent. Certainly nothing in their respective technological communication 10
mechanisms, which are essentially the only use of technology recited in the 11
claim, are incompatible or detrimental with each other. 12
We are unpersuaded by Appellants’ argument that Suarez can only 13
monitor the location of a vehicle when the driver provides the location of the 14
vehicle, concluding that this is not the same thing as "monitoring the real-15
time location of at least one of the employee communicator devices. Appeal 16
Br. 12-14. Suarez also describes relying on a driver or passenger wireless 17
device for such tracking, similar to that claimed. FF 11. We are also 18
unpersuaded by Appellants’ continued arguments regarding teaching away 19
and incompatibility for the same reasons discussed supra. 20
We are also unpersuaded by Appellants’ argument that Nexterna has a 21
2005 copyright date. It clearly shows a 2002 copyright data alone. FF 13. 22
Appellants apparently are looking at the copyright dates for the archivist site 23
rather than that of the actual article itself. 24
Appeal 2010-009292
Application 11/035,654
15

We are unpersuaded by Appellants’ arguments as to claims 2-3, 6-7 and 1
9-11. Appellants object to the Examiner’s official notice, but agree that 2
software to connect remotely was well known. Appeal Br. 16-17. First, the 3
Examiner made factual findings as to each of the limitations in these claims 4
except for the reliance on the employee device in claim 11 and we adopt 5
those findings and related analysis. 6
Thus, the Appellants are relying on their arguments in support of claim 1 7
for claims 2, 3, 6, 7, 9, and 10. Second, given the notoriety of such remote 8
communications and the Appellants’ agreement of such notoriety, one of 9
ordinary skill knew it was possible to use the employee device to enter 10
employee parameters as in claim 11. Third, the Appellants’ argument comes 11
down to the necessity of granting employee rights to update the file in 12
addition to providing remote access. The claim does not specify the manner 13
of access and certainly does not specify granting certain rights. As such, this 14
argument is not commensurate with the scope of the claim. 15
Claims 12-13 rejected under 35 U.S.C. § 103(a) as unpatentable over 16
Ditcharo, Jacobs, Suarez, Nexterna, and Harrison. 17
Claim 14 rejected under 35 U.S.C. § 103(a) as unpatentable over Ditcharo, 18
Jacobs, Suarez, Nexterna, and Donnelly. 19
Appellants repeat their arguments in support of claim 1. These 20
arguments are therefore unpersuasive for the same reasons as supra. 21
Claims 23-25 rejected under 35 U.S.C. § 103(a) as unpatentable over 22
Harrison, Suarez, and Nexterna. 23
We are persuaded by Appellants’ arguments that Harrison fails to 24
describe the divergent access modes recited in limitation [2] of claim 23. 25
Appeal 2010-009292
Application 11/035,654
16

Appeal Br. 21-23. The Examiner apparently relies on the phrase “edit 1
Private information” (Harrison 5:53-54) as suggesting that private 2
information would have differing levels of access. Unfortunately, Harrison 3
is silent as to what it regards as private information other than being 4
miscellaneous. Id. Harrison says nothing regarding how this information is 5
accessed, much less whether the employer and employee devices would 6
have differing levels of access. The Examiner did not respond to this 7
Appellants’ argument in the Answer. 8
CONCLUSIONS OF LAW 9
The rejection of claims 1-3, 6-7, and 9-11 under 35 U.S.C. § 103(a) as 10
unpatentable over Ditcharo, Jacobs, Suarez, and Nexterna is proper. 11
The rejection of claims 12-13 under 35 U.S.C. § 103(a) as unpatentable 12
over Ditcharo, Jacobs, Suarez, Nexterna, and Harrison is proper. 13
The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over 14
Ditcharo, Jacobs, Suarez, Nexterna, and Donnelly is proper. 15
The rejection of claims 23-25 under 35 U.S.C. § 103(a) as unpatentable 16
over Harrison, Suarez, and Nexterna is improper. 17
DECISION 18
The rejection of claims 1-3, 6, 7, and 9-14 is affirmed. 19
The rejection of claims 23-25 is reversed. 20
No time period for taking any subsequent action in connection with this 21
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 22
§ 1.136(a)(1)(iv) (2007). 23
24
Appeal 2010-009292
Application 11/035,654
17

AFFIRMED-IN-PART 1
2
3
4
MP 5