Ex Parte Smith et al

Board of Patent Appeals and Interferences

Jun 28, 2004

09396287 (B.P.A.I. Jun. 28, 2004)

1
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publication and is not binding precedent of the Board.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. 16

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOSEPH D. SMITH,
AUSTIN L. HIGGS and
THIEG K. NGUYEN
_____________
Appeal No. 2003-0768
Application No. 09/396,287
______________
ON BRIEF
_______________
Before KRASS, BARRY and SAADAT, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 14-27, 29, 30 and
33-37. Claims 1-13, 28 and 32 have been indicated by the examiner as being directed
to allowable subject matter and are no longer part of this appeal.
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Application No. 09/396,287
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The invention is directed to a computerized logistical system for coordinating
delivery of a wide range of materials produced by different suppliers going to different
base staging areas for final transport to different delivery locations by various types of
transports over various routes. In particular, computers at delivery and base locations
are utilized to select from materials on a first list stored in a central database and
produce a second list of materials that comprises a manifest for delivery by one of a
plurality of transports.
Representative independent claim 30 is reproduced as follows:
30. A logistics method for a plurality of transports to supply a plurality
of delivery locations from one or more bases using logistics computer
programming, comprising:
providing for respective computers at said one or more bases and
at said plurality of delivery locations;
providing a central database for said respective computers, each of
said respective computers being in communication with said central
database, said logistics computer programming being operable for
providing updated logistics information to said central database from said
respective computers;
storing transport information relating to each of said plurality of
transports in said central database, said transport information including
daily cost and cost/mile information;
storing a list of materials, said materials being selectable-from said
list of materials to produce a second list of materials comprising a manifest
with manifested materials for delivery to one or more of said plurality of
delivery locations by one of said plurality of transports;
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storing delivery location information in said central database related
to each of said plurality of delivery locations; and
storing a list of manifests in said central database relating to
deliveries for said plurality of delivery locations.
The examiner relies on the following references:
Sims et al. (Sims) 5,434,775 Jul. 18, 1995
Wojcik et al. (Wojcik) 5,666,493 Sep. 09, 1997
Bush 5,835,377 Nov. 10, 1998
Kovarik, Jr. (Kovarik) 6,014,628 Jan. 11, 2000
(filed Aug. 17, 1998)
Claims 14, 17, 22, 27, 29, 30 and 33 stand rejected under 35 U.S.C. §102 (e) as
anticipated by Kovarik.
Claims 15, 16, 18-21, 23-26 and 34-37 stand rejected under 35 U.S.C. §103. As
evidence of obviousness, the examiner offers Kovarik with regard to claims 15 and 16,
adding Wojcik with regard to claims 19-21 and 23-26. With regard to claim 18, the
examiner offers Kovarik and Sims. With regard to claims 34-37, the examiner offers
Kovarik and Bush.
Reference is made to the briefs and answer for the respective positions of
appellants and the examiner.
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Application No. 09/396,287
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OPINION
Anticipation is established only when a single prior art reference discloses,
expressly or under principles of inherency, each and every element of a claimed
invention. RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir. 1984), cert. dismissed, 468 U.S. 1228 (1984), citing Kalman
v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984).
Independent claims 14 and 30 each requires materials being selected from a list
of materials to produce a second list of materials for delivery to one or more of a
plurality of locations. Claim 22 does not recite a “second list” but does require
“materials being selectable to produce a manifest with manifested materials for delivery
to one or more of said plurality of delivery locations...”
The examiner contends that this feature is “inherent” in Kovarik in that “it would
only be logical to add another list of materials to the application in order to acknowledge
the addition of materials especially since the application is customizable” (answer-page
5, referring to Kovarik’s teaching of a user customizing a tracking application at column
14, lines 54-56).
We disagree.
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To establish inherency, the extrinsic 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. In re Robertson, 169 F.3d 743,
745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) citing Continental Can Co. v.
Monsanto Co., 948 F.3d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
“Inherency, however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not sufficient.”
Id., at 1269, 20 USPQ2d at 1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981).
The examiner has not shown that Kovarik’s system must require materials to be
selected from a list of materials and that a second list must be produced therefrom.
Therefore, we find that it cannot be said that Kovarik inherently discloses the second list
or the selection of materials to produce a manifest, as claimed. We do not agree with
the examiner that it would be logical to add another list of materials, merely because
Kovarik’s system may be customized by the user. Where is the teaching to produce a
second list from the first list, and why would the skilled artisan have been led to do this
in Kovarik, especially since, in the example given in the patent, Kovarik is dealing with a
luggage tracking system at an airport? Of what possible use would a second list of the
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luggage to be tracked, produced from the first list, be to a user of such a system?
Where is the teaching, in Kovarik, of selecting materials “to produce a manifest with
manifested materials for delivery to one or more of a plurality of delivery locations by
one of said plurality of transports,” as set forth in broader instant claim 22 (which does
not require the second list)? The examiner has not specifically said. The closest the
examiner comes to reaching this claimed limitation is to point to column 11, lines 24-25,
of Kovarik, referring to “AddItem-Adds a TrackedItem 100 to the list of tracked items
currently at the location.” This refers to a “list,” to be sure, but how does this relate to a
stored list of materials, the “materials being selectable to produce a manifest with
manifested materials for delivery to one or more of a plurality of delivery locations by
one of said plurality of transports,” as claimed? The examiner does not explain.
In fact, Kovarik is directed to a tracking system which keeps track of materials
flowing through a process, e.g., tracking luggage at an airport. It is not clear that
Kovarik deals with the supply and delivery of items in the sense of the instant invention,
i.e., Kovarik does not appear to be directed to a logistics method for a plurality of
transports, as claimed. The mere tracking of an item, or a material, through a system is
not the same as providing a logistics system for coordinating delivery of a wide range of
materials produced by different suppliers going to different base staging areas for final
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transport to different delivery locations by various types of transports over various
routes. This is why the examiner is having trouble finding the production of a second list
and the selectivity of materials to produce a manifest in Kovarik. It is simply not there.
If there is some way that the claim language can reasonably be interpreted as being
taught by Kovarik, the examiner has clearly not discovered it.
Merely because Kovarik’s system is customizable by a user, this does not
translate into altering the Kovarik’s system to meet the instant claimed subject matter,
without some specific teaching of doing so. Moreover, even if it would have been
obvious to do this, in view of the customization taught by Kovarik, and we do not believe
that it would have been, the rejection is under 35 U.S.C. §102 (e), so a proper rejection
requires that each and every claimed element be taught, either expressly or inherently,
by the prior art reference.
Accordingly, we will not sustain the rejection of claims 14, 17, 22, 27, 29, 30 and
33 under 35 U.S.C. §102 (e).
We also will not sustain the rejection of claims 15, 16, 18-21 and 23-26 under 35
U.S.C. §103 because these rejections rely on an alleged teaching by Kovarik which, for
the reasons, supra, are simply not there. The secondary references to Wojcik and Sims
do not supply the deficiencies of Kovarik.
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With regard to claims 34-37, independent claim 34 does not include the
limitations of producing a second list from a first list and of materials being selectable
from a list of materials to produce a manifest with manifested materials for delivery to
one or more of a plurality of delivery locations. Rather, claim 34 monitors containers
having cargo therein. Each of the containers has a wireless communications transmitter
for providing container location intelligence and a respective listing of the cargo in that
container.
The examiner contends that Kovarik teaches the claimed subject matter but for
the wireless communication transmitter, and relies on Bush for such a teaching, holding
that it would have been obvious to incorporate the wireless communication transmitter
into Kovarik “because this type of technology is very beneficial for monitoring, tracking
and locating an entity. Wireless communications helps to provide current, real-time
reporting of an entity which is being monitored or tracked” (answer-page 9).
Appellants argue that neither reference discloses the feature whereby each client
could monitor its own container cargo through his/her own computer. This is said to be
claimed in the language, “any one of said plurality of clients being associated with
designated of said plurality of containers and not all of said plurality of containers.”
Specifically, appellants allege that “Although a single database holds information
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related to all of the containers, the clients, through their respective client computers can
determine location information and cargo listings only for the containers for which the
clients are designated” (principal brief-page 19).
The examiner counters that column 16, line 65 through column 17, line 3, of
Kovarik discloses such a limitation. However, when we review that cited portion of
Kovarik, we agree with appellants that the examiner is referring to some “abstruse
language of Kovarik” which does not appear to disclose the simple concept of each
client computer determining location information for its own cargo listings. Kovarik
merely refers to a tracking engine means that provides a set of generic object models.
It is not clear how this disclosure is one of a client “being associated with designated of
said plurality of containers and not all of said plurality of containers” or where a client
can access information from a database to determine container location intelligence and
a respective listing of cargo for each of a plurality of clients only for said containers
designated as being associated with each particular client, as claimed. Bush does not
appear to remedy this deficiency of Kovarik.
Since the examiner clearly has not established a prima facie case of obviousness
with regard to claims 34-37, we also will not sustain the rejection of these claims under
35 U.S.C. §103.
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The examiner’s decision rejecting claims 14, 17, 22, 27, 29, 30 and 33 under
35 U.S.C. §102 (e) and rejecting claims 15, 16, 18-21, 23-26 and 34-37 under 35 U.S.C.
§103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
EAK/vsh
Appeal No. 2003-0768
Application No. 09/396,287
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KENNETH L. NASH
P.O. BOX 680106
HOUSTON, TX 77268-0106