Ex Parte Sobecks et alDownload PDFBoard of Patent Appeals and InterferencesNov 2, 200710123457 (B.P.A.I. Nov. 2, 2007) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 ___________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ___________ Ex parte BRIAN J. SOBECKS, JAMES F. MACNAMARA, JR., and DRAGON FILIPOVIC ___________ Appeal 2007-2070 Application 10/123,457 Technology Center 3600 ___________ Decided: November 2, 2007 ___________ 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 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 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, 2 Appeal 2007-2070 Application 10/123,457 2006. An Examiner’s Answer to the Appeal Brief was mailed on December 12, 2006. A Reply Brief was filed on February 12, 2007. 1 2 3 4 PRIOR ART The Examiner relies upon the following prior art: Treyz US 6,587,835 B1 Jul. 01, 2003 REJECTIONS 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 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. 3 Appeal 2007-2070 Application 10/123,457 FACTS PERTINENT TO THE ISSUES 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 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 4 Appeal 2007-2070 Application 10/123,457 while the user is in the store. The handheld computing device may display product information screens with interactive features (Treyz 2:45-55). 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 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. 5 Appeal 2007-2070 Application 10/123,457 PRINCIPLES OF LAW 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 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." 6 Appeal 2007-2070 Application 10/123,457 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). 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 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 7 Appeal 2007-2070 Application 10/123,457 different one. If a person of ordinary skill in the art can implement a predictable variation, § 103 likely bars its patentability.” Id. at 1740. 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 “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. 8 Appeal 2007-2070 Application 10/123,457 Accordingly, we select claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) (2006). 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 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 9 Appeal 2007-2070 Application 10/123,457 to couple at least one physical memory to the at least one memory interface, 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 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. 10 Appeal 2007-2070 Application 10/123,457 Claims 21, 43, 44, 49, 50, 65, and 66 rejected under 35 U.S.C. § 103(a) as unpatentable over Treyz. 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 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. 11 Appeal 2007-2070 Application 10/123,457 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. 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 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. 12 Appeal 2007-2070 Application 10/123,457 (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. 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 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 13 Appeal 2007-2070 Application 10/123,457 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. 1 2 3 4 5 6 7 8 9 10 11 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 14 15 16 17 18 19 20 21 22 23 24 25 vsh FITCH EVEN TABIN & FLANNERY 120 S. 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