Ex Parte Sussman

Patent Trial and Appeal Board

Sep 8, 2014

12538181 (P.T.A.B. Sep. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LESTER SUSSMAN
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Appeal 2012-004140
Application 12/538,1811
Technology Center 3600
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Before NINA L. MEDLOCK, KEVIN W. CHERRY, and
JAMES A. WORTH, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–20.2 We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We REVERSE.

1 According to Appellant, the real party in interest is Lester Sussman.
(App. Br. 2).
2 Our decision refers to the Appellant’s Appeal Brief (“App. Br.,” filed
Nov. 11, 2011) and Reply Brief (“Reply Br.,” filed Dec. 23, 2011), and the
Examiner’s Answer (“Ans.,” mailed Dec. 9, 2011).
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Introduction
Appellant’s disclosure relates to a method and system for creating a
consumer’s shopping list prior to entering a store using a barcode scanner
(Spec. 11). Appellant’s disclosure teaches that a barcode scanner can track
the frequency of a consumer’s usage to establish an ordering pattern, which
allows the ordering of regular items (id. at 21).
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A method for creating a consumer’s shopping list prior to
entering a store, comprising the steps of:
(a) using a portable barcode scanner;
(b) using a printed product catalog comprising:
(i) a multiplicity of printed product information,
each said product information associated with a product
barcode, said product information relates to at least one
of a product description, a product merchant name, a
product merchant contact information and a first date on
which said product is offered, said first date is a product
offering date;
(c) scanning or entering manually in said barcode scanner
a needed product barcode or a needed product coupon
barcode from said printed product catalog at a second
date and time prior to entering said store, said second
date and time is a product scanned timestamp;
(d) using one or more consumer’s first computers
comprising the steps of;
(i) receiving data from, and transmitting data to,
said portable barcode scanner over a consumer’s
first network infrastructure, wherein said received
data includes said product barcode or said product
coupon barcode and said product scanned
timestamp;
(ii) storing said received data in a memory means
on said first computer as a current shopping list
under control of each said product barcode or each
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said product coupon barcode and under control of
said product scanned timestamp;
(iii) communicating with a second computer
system using said first computer, over a second
network infrastructure to request and to receive
additional shopping list information based on each
said product barcode or each said product coupon
barcode;
(iv) collecting and storing a multiplicity of said
product scanned timestamps;
wherein said collecting and storing of said
multiplicity of said product scanned timestamps
providing a means to learn said consumer’s rate of
consumption of each said product;
wherein said means of learning said consumer’s
rate of consumption of each said product is a
consumption tracking frequency of each said
product; said consumption tracking frequency of
each said product providing a means to predict
when each said product needs to be replaced;
(v) providing a specific notification of previous
shopping list information stored in said first
computer memory without needing a current
scanned or manually entered entry of one or more
barcodes associated with said previous shopping
list information,
wherein said specific notification occurring at a
third date and time when said consumer creates
said current shopping list, said third date and time
is a current shopping list timestamp; said
notification provided by said means to predict
when each said product needs to be replaced;
(vi) adding automatically a list of one or more
products stored in said previous shopping list
information to said current shopping list
commensurate with said means to predict when
each said product needs to be replaced at said
current shopping list timestamp;
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(vii) displaying a multiplicity of said product
barcodes or said product coupon barcodes,
together with said additional shopping list
information, on said consumer’s first computer
display;
(viii) indicating on said first computer display that
said consumer has obtained said current shopping
list in-hand from said consumer’s first computer;
and
(ix) indicating that said data transmitted to and said
data received from said portable barcode scanner
has been successfully sent and received;
(e) transferring each said scanned product barcode or
each said product coupon barcode and said product
scanned timestamp to said consumer’s first computer,
over said first network infrastructure from said portable
barcode scanner;
(f) storing each said transferred product barcode or each
said product coupon barcode and each said product
scanned timestamp in a shopping list database on said
consumer’s first computer, said shopping list database
includes said additional product information,
wherein said additional product information includes: a
product description, a product cost, an indicator for a
required quantity of each said product and said product
scanned timestamp;
(g) obtaining in-hand said stored current shopping list
from said consumer’s first computer in order to go to a
first store and purchase products listed on said current
shopping list, said obtaining in-hand is selected from the
group comprising:
(i) printing said stored current shopping list on a
printing device attached to said consumer’s first
computer,
(ii) transferring said stored current shopping list to
a consumer’s portable computing device, and
(iii) using said portable barcode scanner.
(h) using said first computer comprising an optional step
of either:
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(i) sending said current shopping list from said
consumer’s first computer to a second store
connected to said second network infrastructure,
said second store shipping products listed on said
current shopping list to said consumer, thereby not
requiring said consumer to shop in-store for said
products; or
(ii) sending said current shopping list from said
consumer’s first computer to a second store
connected to said second network infrastructure,
said second store making said products listed on
said current shopping list available to said
consumer for pick up, thereby not requiring said
consumer to shop in-store for said products.

App. Br. 26–29, Claims App.

Prior Art Relied Upon

Ruppert US 5,424,524 June 13, 1995
Suzuki US 6,129,274 Oct. 10, 2000
Petrovich US 2003/0061113 A1 Mar. 27, 2003

Rejections On Appeal
The Examiner maintains, and the Appellant appeals, the following
rejection:
I) Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petrovich, Suzuki, and Ruppert (and in view of Official
Notice); and
II) Claims 2, 9, and 16 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.

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ANALYSIS
Rejection I
Appellant argues that the prior art relied on by the Examiner fails to
disclose or suggest the following claim limitation recited by claim 1:
[(d)(iv)] collecting and storing a multiplicity of said product
scanned timestamps; wherein said collecting and storing of said
multiplicity of said product scanned timestamps providing a
means to learn said consumer’s rate of consumption of each
said product; wherein said means of learning said consumer’s
rate of consumption of each said product is a consumption
tracking frequency of each said product; said consumption
tracking frequency of each said product providing a means to
predict when each said product needs to be replaced;

App. Br. 15. Specifically, Appellant argues that Suzuki does not describe
“collecting and storing a multiplicity of said product scanned timestamps”
(id. at 18–19). The Examiner finds that Suzuki (col. 14, ll. 1–35) describes a
replenishment item recommendation based on a determination that a
“substantial period of time” had passed since the last purchase (Ans. 12–13).
Appellant argues that Suzuki teaches away from the claimed invention
because Suzuki (col. 14, ll. 1–35) describes a single date, i.e., the last
purchase date of a necessity item, as a basis for recommending a
replenishment item rather than recommending replenishment based on a
“multiplicity of . . . product scanned timestamps,” as required by claim 1 (id.
at 19; Reply Br. 3–4).
We have carefully reviewed the cited portion of Suzuki on which the
Examiner relies and we find no disclosure therein of “collecting and storing
a multiplicity of said product scanned timestamps,” as recited by claim 1.
We agree with Appellant that Suzuki’s replenishment recommendation is
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based on a single date, “the last purchase date.” (Suzuki, col. 14, l. 7).
Moreover, there is no evidence that the “substantial period of time” that is
added to the last purchase date in Suzuki is based on previous timestamps or
is otherwise specific to the user. Rather, Suzuki discloses only that the “last
purchase date” is analyzed from the customer’s shopping history information
(col. 14, ll. 1–13). In sum, we find insufficient evidence in the cited portions
of the prior art to support the finding that the cited prior art discloses
“collecting and storing a multiplicity of said product scanned timestamps,”
as recited by claim 1. Accordingly, we do not sustain the rejection of
claim 1 as unpatentable under 35 U.S.C. § 103(a). We reach the same
conclusion as to claims 2–20, which depend from claim 1. Cf. In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992).

Rejection II
Appellant argues that the Examiner erred in rejecting claims 2, 9, and
16 as indefinite under 35 U.S.C. § 112, second paragraph, for using the term
“Bluetooth” in the claims (App. Br. 22–23; Reply Br. 10). Appellant argues
that the Office has a precedent of over 2,700 issued patents using the term
“Bluetooth” in patent claims, even though the term is trademarked (id.). The
Examiner refers to the Manual of Patent Examining Procedure (MPEP) §
608.01(v) which provides that an identification of a product based on a
trademark is an insufficient disclosure (Ans. 16). The Examiner reasons that
the Bluetooth radio frequency standard may be subject to change over time
(id.).
The MPEP provides in pertinent part:
A trademark or trade name may be used in a patent
application to identify an article or product if:
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(A) its meaning is established by an accompanying
definition in the specification which is sufficiently descriptive,
enabling, precise and definite such that a claim including the
trademark or trade name complies with the requirements of
35 U.S.C. [§] 112, or
(B) its meaning is well-known to one skilled in the
relevant art and is satisfactorily defined in the literature.

MPEP § 608.01(v) (9th Ed., Mar. 2014) (citing U.S. Gypsum Co. v. Nat’l
Gypsum Co., 74 F.3d 1209, 1214 n.6 (Fed. Cir. 1996)).
We agree with Appellant that the Specification provides a sufficient
definition of “Bluetooth.” The Specification states: “Bluetooth wireless
technology is a low-cost, low-power, short-range radio frequency (RF) link
for mobile devices and for Local Area Network (LAN) access points. It
offers fast and reliable digital transmissions of data over the globally
available 2.4 GHz ISM (Industrial, Scientific and Medical) bandwidth.”
(Spec. 15). We note that the Specification explains that a barcode
scanner 17 can communicate over an ad-hoc wireless network with a base
station 50 (id.), which would enable the creation of a shopping list. We
disagree with the Examiner that the possibility that the “Bluetooth” standard
may change over time would render the claims at issue indefinite. As used
in the claims and in the Specification, Bluetooth is used to refer to the use of
wireless communication between devices, as set forth above. We, therefore,
do not sustain the rejection of claims 2, 9, and 16 under 35 U.S.C. § 112,
second paragraph.

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DECISION
The decision of the Examiner to reject claims 1–20 is reversed.

REVERSED

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