Ex Parte Sobecks et al

Board of Patent Appeals and Interferences

Nov 2, 2007

10123457 (B.P.A.I. Nov. 2, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BRIAN J. SOBECKS,
JAMES F. MACNAMARA, JR., and
DRAGON FILIPOVIC
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Appeal 2007-2070
Application 10/123,457
Technology Center 3600
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Decided: November 2, 2007
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Before HUBERT C. LORIN, LINDA E. HORNER, and ANTON W. FETTING,
Administrative Patent Judges.
FETTING, Administrative Patent Judge.

DECISION ON APPEAL
and
REMAND TO EXAMINER
Appeal 2007-2070
Application 10/123,457

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STATEMENT OF CASE
Brian J. Sobecks, James F. Macnamara, Jr., and Dragon Filipovic (Appellants)
seek review under 35 U.S.C. § 134 of a final rejection of claims 1-66, the only
claims pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).
We REVERSE as to the claims rejected under anticipation and REMAND as to
all of the claims.
The Appellants invented a concise display of products from a product source
positioned at points of retail consumer purchasing decisions (and typically within a
physical retailing establishment that is not owned and operated by the product
source but rather by a third party) and a dynamic display disposed proximal to this
product display. The display conveys information for building a product-source-to-
consumer relationship for a product source. For example, product applications,
product features, product content, product manufacturing information, product
recall information, promotional opportunities, information regarding the product
source, and various kinds of consumer entertainment and diversions may be
conveyed. A representative of the product source can physically visit the display of
products and provide updated informational content to keep the informational
content fresh to maintain an effective marketing presence (Specification 4:9-24).
An understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced in the analysis below.
This appeal arises from the Examiner’s Final Rejection, mailed March 6, 2006.
The Appellants filed an Appeal Brief in support of the appeal on September 25,
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2006. An Examiner’s Answer to the Appeal Brief was mailed on December 12,
2006. A Reply Brief was filed on February 12, 2007.
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PRIOR ART
The Examiner relies upon the following prior art:
Treyz US 6,587,835 B1 Jul. 01, 2003
REJECTIONS 5
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Claims 1-20, 22-42, 45-48, and 51-64 stand rejected under 35 U.S.C. § 102(e)
as anticipated by Treyz.
Claims 21, 43, 44, 49, 50, 65, and 66 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Treyz.
ISSUES
The issues pertinent to this appeal are:
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 1-20, 22-42, 45-48, and 51-64 under
35 U.S.C. § 102(e) as anticipated by Treyz.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 21, 43, 44, 49, 50, 65, and 66 under
35 U.S.C. § 103(a) as unpatentable over Treyz.
The pertinent issue turns on whether claim 1 recites that the handheld
computing device be physically accessed by a representative of the product source
itself, and if so whether Treyz describes it.
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FACTS PERTINENT TO THE ISSUES 1
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The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Treyz
01. Treyz is directed toward system that allows users with handheld
computing devices to obtain information using local and remote wireless
links and to order products and services (Treyz 1:41-44).
02. Treyz’s handheld computing device may have an expansion slot that
accepts accessories such as local wireless communications accessories.
Accessories may include a bar code scanner, a radio-frequency
identification (RFID) unit, a smart card attachment, etc. These
attachments may be integrated into the handheld computing device if
desired (Treyz 1:52-57)).
03. Treyz’s handheld computing device may communicate with a
merchant over a wireless communications link. For example, the
handheld computing device may communicate with the merchant over a
remote wireless link (Treyz 2:11-14).
04. Treyz’s handheld computing device may display price comparison
information for the user while the user is in a store. Product information
may also be displayed by the handheld computing device when the user
is in the store. Product information from multiple manufacturers may be
obtained. If desired, product information may be organized in various
product-categories. The handheld computing device may allow the user
to search for information on products and manufacturers of interest
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while the user is in the store. The handheld computing device may
display product information screens with interactive features (Treyz
2:45-55).
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05. Treyz’s supermarket shopping assistance service may be used to
display information on products available in a supermarket. Targeted
specials and other advertising and promotional material may be
displayed on the handheld computing device. Such promotional material
may be displayed in combination with shopping list information. The
promotional material that is displayed may be targeted based on the
contents of the shopping list. For example, if a shopping list includes a
particular dessert item, logos and advertisements for dessert-related
products may be displayed (Treyz 3:16-25).
06. Treyz’s handheld computing device 12 may include accessories and
expansion components 98. An expansion slot 100 may be used to add
expansion cards or accessories to handheld computing device 12. For
example, a flash card containing software or other content may be added
as an expansion module. Another accessory that may be added is a bar
code scanner or a radio-frequency identification (RFID) unit. Bar code
scanners use light to identify products with bar code labels. RFID units
may identify products by wirelessly communicating with integrated
circuits embedded in or attached to or otherwise associated with
products. These circuits may contain information that uniquely identifies
the products (Treyz 15:35-47).
07. Treyz contains no explicit recitation that a representative of the
products physically accesses a memory interface.
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PRINCIPLES OF LAW 1
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Claim Construction
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003) (claims must be interpreted “in view of the specification” without
importing limitations from the specification into the claims unnecessarily).
Although a patent applicant is entitled to be his or her own lexicographer of
patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to be
construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although
an inventor is free to define the specific terms used to describe the invention, this
must be done with reasonable clarity, deliberateness, and precision; where an
inventor chooses to give terms uncommon meanings, the inventor must set out any
uncommon definition in some manner within the patent disclosure so as to give
one of ordinary skill in the art notice of the change).
Anticipation
"A claim is anticipated only if each and every element as set forth in the claim
is found, either expressly or inherently described, in a single prior art reference."
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Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987). "When a claim covers several structures or compositions, either generically
or as alternatives, the claim is deemed anticipated if any of the structures or
compositions within the scope of the claim is known in the prior art." Brown v.
3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). "The identical invention must be
shown in as complete detail as is contained in the ... claim." Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be arranged
as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
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Obviousness
A claimed invention is unpatentable if the differences between it 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.”
35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007);
Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, at 1739.
“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or in a
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different one. If a person of ordinary skill in the art can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 1740.
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“For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 1742.
Automation of a Known Process
It is generally obvious to automate a known manual procedure or mechanical
device. Our reviewing court stated in Leapfrog Enterprises Inc. v. Fisher-Price
Inc., 485 F.3d 1157 (Fed. Cir. 2007) that one of ordinary skill in the art would have
found it obvious to combine an old electromechanical device with electronic
circuitry “to update it using modern electronic components in order to gain the
commonly understood benefits of such adaptation, such as decreased size,
increased reliability, simplified operation, and reduced cost. . . . The combination
is thus the adaptation of an old idea or invention . . . using newer technology that is
commonly available and understood in the art.” Id. at 1163.
ANALYSIS
Claims 1-20, 22-42, 45-48, and 51-64 rejected under 35 U.S.C. § 102(e) as
anticipated by Treyz.
The Appellants argue these claims as a group.
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Accordingly, we select claim 1 as representative of the group.
37 C.F.R. § 41.37(c)(1)(vii) (2006).
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Claim 1 reads as follows [bracketed matter and some paragraphing added].
1. A method of providing fresh product-source-to-consumer
relationship-building information for a product source at a plurality of
point-of-consumer-purchasing-decision locations at a plurality of
physical retail establishments, which retail establishments are owned
and operated by a plurality of third parties other than the product
source and which retail establishments offer products from product
sources other than the product source at their respective physical retail
establishments, comprising:
- [1] providing at points of retail consumer purchasing decisions:
- [a] a concise display of products from the product source,
which products are available for selection by retail consumers;
-[b] a dynamic display disposed immediately proximal to the
concise display of products;
- [c] at least one memory interface disposed immediately
proximal to the concise display of products;
- [d] a display information processing/presentation unit
[1] disposed immediately proximal to the concise display
of products and
[2] being operably coupled to the dynamic display and
having
an input coupled to at least one memory interface
and
a product-source-to-consumer relationship-
building displayable information output operably
coupled to the dynamic display;
[2] via a representative of the product source:
- [a] physically accessing the at least one memory interface
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to couple at least one physical memory to the at least one
memory interface,
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which at least one physical memory contains fresh
product-source-to-consumer relationship-building
displayable information suitable to display on the
dynamic display.
The Examiner found that that Treyz anticipated claim 1 (Answer 4-5). The
Examiner did not recite any citations to Treyz to support this finding.
The Appellants contend that “[t]here is nothing in Treyz … to suggest that his
handheld computing device be physically accessed by a representative of the
product source itself for any reason whatsoever.” (Br. 6: First para.).
The Examiner responded that “it is noted that the features upon which
applicant relies (i.e., that the ‘handheld computing device be physically accessed
by a representative of the product source’) are not recited in the rejected claim(s).”
(Answer 12: Last para.).
Thus, the issue before us is whether claim 1 recites that the handheld
computing device be physically accessed by a representative of the product source
itself, and if so whether Treyz describes it.
We find that step [2] of claim 1, in its first line, explicitly requires that it be
performed via a representative of the product source. We also find that Treyz
contains no explicit description of a representative of the product source
performing step [2] (FF 07).
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 1-20, 22-42, 45-48, and 51-64 under 35 U.S.C. § 102(e) as
anticipated by Treyz.

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Claims 21, 43, 44, 49, 50, 65, and 66 rejected under 35 U.S.C. § 103(a) as
unpatentable over Treyz.
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The Examiner found by taking official notice that the limitations added by
these claims were notoriously well known in the art, and concluded they were
therefore obvious variations on the teachings of Treyz (Answer 11-12).
The Appellants traversed the official notice (Br. 7).
The Examiner first took such official notice in the Non-Final Rejection mailed
October 3, 2005. The Appellants traversed this in their response to that action filed
January 3, 2006. Although the manner of the Appellants’ traversal was unusual, it
invoked USPTO rules that require the Examiner to provide evidence to support the
official notice. The Examiner has not yet entered such evidence into the record.
Because the Examiner has not yet placed such evidence in the record, and the
Examiner is required to do so to maintain the rejection according to the
requirements of either 37 C.F.R. § 1.104(d)(2) or MPEP 2144.03, the appeal as to
this obviousness rejection is not yet ripe for decision. We therefore remand this
appeal to the Examiner to place such evidence in the record.
REMAND
We remand this appeal to the Examiner pursuant to the provisions of 37 C.F.R.
§ 41.50(a)(1). This remand is for two purposes:
(1) The appeal is remanded to the Examiner to consider whether claims
1-20, 22-42, 45-48, and 51-64 should be rejected under 35 U.S.C.
§ 103(a) as unpatentable over Treyz.
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The Examiner is in error in the finding that claim 1 does not require that the
memory interface be coupled to a physical memory by a representative of the
product source, as we found, supra.
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However, Treyz explicitly recites that the physical memory may be updated
by a flash card (FF 06). Treyz also explicitly describes placing information into
the memory via RFID tags (FF 02 & 06) and that product information may be
provided by multiple manufacturers (FF 04).
The Examiner should consider whether having a representative of a product
source providing such information by inserting Treyz’s flash memory into the
wireless device would have been a predictable variation of Treyz, since “[i]f a
person of ordinary skill in the art can implement a predictable variation, § 103
likely bars its patentability.” KSR at 1740.
The Examiner should similarly consider whether Treyz’s RFID tags are
physical memory that representatives of the product source access to couple with
the wireless device’s memory interface, and if so whether the wireless access of
RFID is simply a predictable variation of the physical access recited in claim 1.
Finally, the Examiner should consider whether claim 1 is simply the
automation of known methods of creating physical product promotion displays.
One of ordinary skill in the art would have found it obvious to combine an old
electromechanical device with electronic circuitry “to update it using modern
electronic components in order to gain the commonly understood benefits of such
adaptation, such as decreased size, increased reliability, simplified operation, and
reduced cost. . . . The combination is thus the adaptation of an old idea or invention
. . . using newer technology that is commonly available and understood in the art.”
Leapfrog at 1163.
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(2) The appeal is remanded to the Examiner to place evidence of the
notoriety of the limitations set forth in claims 21, 43, 44, 49, 50, 65, and
66 in the record.
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The Examiner took official notice of the notoriety of these limitations in the
Non-Final Rejection mailed October 3, 2005. The Appellants traversed this in
their response to that action filed January 3, 2006, and have maintained this
traversal through the Appeal Brief. The Examiner has not yet responded to this
traversal by placing written evidence of the notoriety found by the Examiner in the
record. We therefore remand this appeal for the purpose of having the Examiner
put such evidence in the record.
CONCLUSIONS OF LAW
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 1-20, 22-42, 45-48, and 51-64 under 35 U.S.C. § 102(e) as
anticipated over the prior art.
We do not reach conclusions as to the remaining rejection because of our
remand to the Examiner for further consideration and evidence.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 1-20, 22-42, 45-48, and 51-64 under 35 U.S.C.
§ 102(e) as anticipated by Treyz is not sustained.
• We remand the appeal to the Examiner to
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o Consider whether a rejection of claims 1-20, 22-42, 45-48, and 51-64
under 35 U.S.C. § 103(a) as unpatentable over Treyz should be
entered.
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o Place evidence of the official notice traversed by the Appellants’ into
the record in support of the rejection of claims 21, 43, 44, 49, 50, 65,
and 66 under 35 U.S.C. § 103(a) as unpatentable over Treyz.
This remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) is made for
further consideration of a rejection. Accordingly, 37 C.F.R. § 41.50(a)(2) applies
if a supplemental examiner's answer is written in response to this remand by the
Board.

REVERSED-IN-PART 12
REMAND TO EXAMINER 13
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