Ex Parte Sobecks et al

Board of Patent Appeals and Interferences

Mar 3, 2010

10123457 (B.P.A.I. Mar. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte BRIAN J. SOBECKS, 8
JAMES F. MACNAMARA, JR., and 9
DRAGON FILIPOVIC 10
___________ 11
12
Appeal 2009-013122 13
Application 10/123,457 14
Technology Center 3600 15
___________ 16
17
Decided: March 3, 2010 18
___________ 19
20
Before HUBERT C. LORIN, LINDA E. HORNER, and 21
ANTON W. FETTING, Administrative Patent Judges. 22
FETTING, Administrative Patent Judge. 23
DECISION ON APPEAL 24
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STATEMENT OF THE CASE 1
Brian J. Sobecks, James F. MacNamara, Jr., and Dragon Filipovic 2
(Appellants) seek review under 35 U.S.C. § 134 (2002) of a final rejection of 3
claims 1-66, the only claims pending in the application on appeal. 4
This is the second time this application has come before this panel. We 5
reversed and remanded to the Examiner in the earlier November 2, 2007 6
Decision. Subsequent to that decision, one of the two independent claims 7
was amended. The single reference that was applied in the Final Rejection 8
under the earlier appeal remains applied in the instant Final Rejection under 9
appeal. The rejection under novelty that we reversed in the prior decision is 10
no longer present. The Official Notice that was the subject of the remand in 11
the prior decision is also no longer present. 12
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 13
(2002). 14
SUMMARY OF DECISION1 15
We AFFIRM. 16
THE INVENTION 17
The Appellants invented a concise display of products from a product 18
source positioned at points of retail consumer purchasing decisions and a 19

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed February 4, 2009) and Reply Brief (“Reply Br.,” filed June 15,
2009), and the Examiner’s Answer (“Ans.,” mailed April 13, 2009), and
Final Rejection (“Final Rej.,” mailed September 5, 2008).
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dynamic display disposed proximal to this product display. A representative 1
of the product source can physically visit the display of products and provide 2
updated informational content to keep the informational content fresh to 3
maintain an effective marketing presence. Specification 4:9-24. 4
An understanding of the invention can be derived from a reading of 5
exemplary claim 1, which is reproduced below [bracketed matter and some 6
paragraphing added]. 7
1. A method of providing fresh product-source-to-consumer 8
relationship-building information for a product source at a 9
plurality of point-of-consumer-purchasing-decision locations at 10
a plurality of physical retail establishments, which retail 11
establishments are owned and operated by a plurality of third 12
parties other than the product source and which retail 13
establishments offer products from product sources other than 14
the product source at their respective physical retail 15
establishments, comprising: 16
- [1] providing at points of retail consumer purchasing 17
decisions: 18
- [a] a concise display of products from the product 19
source, which products are available for selection by 20
retail consumers; 21
-[b] a dynamic display disposed immediately proximal 22
to the concise display of products such that the dynamic 23
display appears to comprise a contextual part of the 24
concise display of products;2 25
- [c] at least one memory interface disposed immediately 26
proximal to the concise display of products; 27
- [d] a display information processing/presentation unit 28

2 This limitation differs from that in the prior appeal, having been amended
May 28, 2008. The recitation of claim 1 in the Appeal Brief Appendix is
incorrect in that it omits the amendment. None of the arguments presented
take issue based on the added phrasing.
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[1] disposed immediately proximal to the concise 1
display of products and 2
[2] being operably coupled to the dynamic display 3
and having 4
an input coupled to at least one memory 5
interface and 6
a product-source-to-consumer relationship-7
building displayable information output 8
operably coupled to the dynamic display; 9
[2] via a representative of the product source: 10
- physically accessing the at least one memory interface 11
to couple at least one physical memory to the at least one 12
memory interface, 13
which at least one physical memory contains fresh 14
product-source-to-consumer relationship-building 15
displayable information suitable to display on the 16
dynamic display. 17
THE REJECTION 18
The Examiner relies upon the following prior art: 19
Treyz US 6,587,835 B1 Jul. 01, 2003
Claims 1-66 stand rejected under 35 U.S.C. § 103(a) as unpatentable 20
over Treyz. 21
ISSUE 22
The issue of whether the Examiner erred in rejecting claims 1-66 under 23
35 U.S.C. § 103(a) as unpatentable over Treyz turns on whether it was 24
predictable for Treyz’s device information to be updated via a representative 25
of the product source by physically accessing its memory. 26
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1
FACTS PERTINENT TO THE ISSUES 2
The following enumerated Findings of Fact (FF) are believed to be 3
supported by a preponderance of the evidence. 4
Facts Related to the Prior Art 5
Treyz 6
01. Treyz is directed toward a system that allows users with 7
handheld computing devices to obtain information using local and 8
remote wireless links and to order products and services. Treyz 9
1:41-44. 10
02. Treyz’s handheld computing device may display product 11
information from multiple manufacturers on screens with 12
interactive features, and may be organized in various product-13
categories. Treyz 2:45-55. 14
03. Treyz displays information on products available in a 15
supermarket, including targeted specials and other advertising and 16
promotional material. The promotional material may be targeted 17
based on the contents of the shopping list. Treyz 3:16-25. 18
04. Treyz’s handheld computing device may include a flash card 19
containing software or other content, a bar code scanner, or a 20
radio-frequency identification (RFID) unit. Bar code scanners 21
identify products with bar code labels. RFID units identify 22
products wirelessly by communicating with integrated circuits 23
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embedded in or attached to products. These circuits may contain 1
information that uniquely identifies the products. Treyz 15:35-47. 2
PRINCIPLES OF LAW 3
Obviousness 4
A claimed invention is unpatentable if the differences between it and 5
the prior art are “such that the subject matter as a whole would have been 6
obvious at the time the invention was made to a person having ordinary skill 7
in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 8
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 9
In Graham, the Court held that that the obviousness analysis is 10
bottomed on several basic factual inquiries: “[(1)] the scope and content of 11
the prior art are to be determined; [(2)] differences between the prior art and 12
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 13
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 14
U.S. at 406. “The combination of familiar elements according to known 15
methods is likely to be obvious when it does no more than yield predictable 16
results.” KSR, 550 U.S. at 416. 17
ANALYSIS 18
We need not repeat the background material from the earlier decision. It 19
is helpful to understand that limitation [1] of claim 1 is essentially a dynamic 20
promotional display near the products being promoted. Limitation [2] is 21
then refreshing the memory in the promotional display by having a product 22
source representative physically access the memory. Treyz describes 23
allowing a customer to walk around a retail area with a wireless bar code 24
scanner that has a dynamic screen that displays promotions when in the 25
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vicinity of the products promoted. The scanner also has a flash memory. FF 1
01-04. A flash memory is simply a form of physical memory media. 2
The Appellants contend that Treyz fails to describe limitation [2] of 3
physically accessing the memory interface to refresh product information via 4
a representative of the product source. Appeal Br. 7-9. The Examiner found 5
that there were a finite number of parties who would do so, and a finite 6
number ways to do so. The Examiner found that a product representative 7
was a predictable party and physical access was a predictable manner of 8
access in such groups. Ans. 5. 9
The Appellants respond that merely asserting a finite number is 10
insufficient to show obviousness; the six billion people on earth are a finite 11
set of possible parties, but such a large pool does not show obviousness. 12
Appeal Br. 8. To understand this argument, we surmise that the Examiner 13
appears to have been relying on KSR. 14
When there is a design need or market pressure to solve a 15
problem and there are a finite number of identified, predictable 16
solutions, a person of ordinary skill has good reason to pursue 17
the known options within his or her technical grasp. If this 18
leads to the anticipated success, it is likely the product not of 19
innovation but of ordinary skill and common sense. In that 20
instance the fact that a combination was obvious to try might 21
show that it was obvious under § 103. 22
KSR, 550 U.S. at 421. The Appellants argue that there are too large a finite 23
number of possible parties and methods for any one of them to be obvious. 24
This argument simply ignores the context of Treyz. Treyz places its 25
promotional system within a retail store context. In such a context there are 26
only two sets of parties who have the product data that is required for 27
product promotional campaigns, viz. the retailer and the product source. 28
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Thus, the finite number the Examiner found is two sets of parties rather than 1
six billion individual people. 2
As to the finite number of means of access, Treyz relies on flash 3
memory, which is a physical form of memory media. FF 04. Thus some 4
form of physical access to the flash memory is required to update its 5
contents. So although there may theoretically be a large number of ways to 6
alter the contents of the memory in Treyz, the reliance on a physical memory 7
card narrows the field considerably. 8
The claim does not narrow the manner in which such physical access 9
occurs. Presumably, consistent with the prior argument, both parties could 10
hire any of the earth’s six billion inhabitants to actually perform the access 11
entry on their behalf. But it is certainly at least predictable that either party 12
would rely on one of its own members, if only to assure itself of process 13
integrity. In any event, choice of staff is a business decision based on the 14
specific facts. 15
Absent additional facts, the most predictable choice of staff would be 16
those most familiar with the context involved, which again reduces to a 17
choice of either retailer staff or product source staff. Given the degree of 18
control most product source companies exercise over their promotional 19
campaigns, it is more than merely predictable they would choose one of their 20
own staff. 21
The Appellants introduce an additional argument in the Reply Brief at 2 22
for the first time. This argument contends that one would not expect a 23
product source representative to “wrest Treyz’s device from the hands of the 24
consumer, remove [], install [], and then return that device to the consumer.” 25
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We take this argument to mean that the Examiner’s finding of physical 1
access as the mechanism for updating memory in Treyz would not be 2
efficient and therefore it would be unpredictable. 3
This argument is not commensurate with the scope of the claim. 4
Nothing in limitation [2] requires that the physical access occur at the 5
location of the product in limitation [1], and certainly does not require the 6
access occur while customers are walking around. Rather, it would be 7
predictable that since Treyz relies on physical memory cards, those cards 8
would be changed by physical access whenever convenient. 9
CONCLUSIONS OF LAW 10
The Examiner did not err in rejecting claims 1-66 under 35 U.S.C. 11
§ 103(a) as unpatentable over Treyz. 12
DECISION 13
To summarize, our decision is as follows. 14
• The rejection of claims 1-66 under 35 U.S.C. § 103(a) as unpatentable 15
over Treyz is sustained. 16
No time period for taking any subsequent action in connection with this 17
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 18
19
AFFIRMED 20
21
22
23
mev 24
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