Ex Parte Thayer

Patent Trial and Appeal Board

Mar 1, 2016

12183316 (P.T.A.B. Mar. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/183,316 07/3112008
24335 7590 03/03/2016
WARNER NORCROSS & JUDD LLP
INTELLECTUAL PROPERTY GROUP
900 FIFTH THIRD CENTER
111 LYON STREET, N.W.
GRAND RAPIDS, MI 49503-2487
FIRST NAMED INVENTOR
Kris Thayer
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
154238.154381 5401
EXAMINER
BOWEN, RICHARD L
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
03/03/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@wnj.com
ckleinheksel@wnj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRIS THAYER
Appeal2014-004901
Application 12/183,3161
Technology Center 2100
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOV AN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4--18, and 21-23. Claims 3, 19, 20, and 24 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Kris Thayer. App. Br.
1.
Appeal2014-004901
Application 12/183,316
Exemplary Claim
Appellant's invention relates to sharing inventory among multiple
parties. Spec. 1:6-7. Exemplary claim 1 under appeal reads as follows:
1. A method for sharing inventories between dealers of a
dealer network, comprising the steps of:
collecting inventory data regarding a plurality of dealers
of a plurality of brands and a plurality of manufacturers of the
plurality of competing brands;
transforming the inventory data into a single computer
data base populated with the competing brands and being
separable by brand and being accessible by individual dealers
of a plurality of specific brands with access being restricted by
credentials established by the manufacturers of the competing
brands;
removing sold product from available inventory
identified in the computer data base by entering a warranty
registration at the time of sale providing real time inventory
data updates;
receiving search criteria from an individual dealer, the
search criteria including;
determining a search scope based on the dealer data and
limited by the credentials established by the manufacturer of the
competing brands; and
generating search results corresponding to the search
scope, credentials and the search criteria wherein the search
results provide, the dealer locations of a specific brand of
products and provide the dealer access to the locations of the
specific brand of products corresponding to the search criteria
provided by the dealer while preventing the individual dealer
from accessing inventory data not corresponding to the specific
brand sold by the individual dealer.
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Application 12/183,316
The Examiner's Rejections2
The Examiner rejected claims 1, 2, 4, 5, 8-10, 12, 13, 16-18, and 21-
23 under 35 U.S.C. § 103(a) as being unpatentable over Chapin et al.
(US 2006/0195563 Al, Aug. 31, 2006 (hereinafter "Chapin")) and
Shemaman et al. (US 2007/0185787 Al, Aug. 9, 2007 (hereinafter
"Shemaman")). Final Rej. 5-17.
The Examiner rejected claims 6, 7, 11, 14, and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Chapin, Shemaman, and Davis et al.
(US 7,039,704 B2, May 2, 2006 (hereinafter "Davis")). Final Rej. 17-20.
Appellant's Contentions3
1. Regarding the rejection of independent claims 1 and 10, Appellant
contends Chapin distinguishes a peer-to-peer system that connects
independent nodes from a system having a single, collective data base of
information, thus Chapin teaches away from the use of a single data base by
teaching the virtue of connecting the independent nodes.4 App. Br. 6.
2. Appellant contends neither Chapin nor Shemaman disclose a step of
transforming inventory data into a single data base populated with
competing brands. Id. Appellant argues the Examiner's assertion of "design
2 Throughout this opinion we refer to the Final Office Action ("Final Act.")
mailed Apr. 30, 2013, and the Examiner's Answer ("Ans.") mailed on Jan.
2, 2014.
3 Throughout this opinion we refer to the Appeal Brief ("App. Br.") dated
Dec. 9, 2013, and the Reply Brief ("Reply Br.") dated Feb. 28, 2014.
4 Separate patentability is not argued for dependent claims 2, 4--9, 11-18,
and 21-23. App. Br. 13. Except for our ultimate decision, these claims are
not discussed further.
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Application 12/183,316
choice" and reliance on Maly to teach a single data base in place of a peer-
to-peer system does not address the full extent of the claimed method steps.
Id. at 11.
3. Appellant contends the combination of Chapin and Shemaman does
not teach removing sold product from inventory by entering a warranty
registration, because transferring electronic data to a manufacturer to register
a warranty as taught by Shemaman cannot adjust available inventory in a
node to node inventory system of Chapin. Id. at 9; 11-12.
4. Appellant contends the combination of Chapin and Shemaman is
based on impermissible hindsight, because there is no need for registration
of warranty information to know if the inventory data base of a peer-to-peer
node is accurate. Id. at 12; Reply Br. 2.
5. Appellant contends Examiner did not properly consider the
Declaration of Mr. Jack Mclnemey, Jr., which provides evidence ofnon-
obvious by showing vehicle manufacturers would not allow inventory data
to be blended into a single data base that includes competing brands, and
therefore the Declaration defeats the rejection based upon design choice.
App. Br. 9-10; Reply Br. 2-3.
6. Appellant contends the secondary evidence of commercial success,
provided by the Declaration of inventor Kris Thayer and the Boating
Industry article that describes the market success of the claimed inventory
system over the prior art, is sufficient to overcome the rejection based on
design choice. App. Br. 10; Reply Br. 2-3.
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Appeal2014-004901
Application 12/183,316
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments (App. Br. 6-14; Reply Br. 1-3) that the Examiner erred. We
disagree with Appellant's above contentions 1---6. We adopt as our own
( 1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Act. 5-20) and (2) the reasons set forth by
the Examiner in the Examiner's Answer (Ans. 3-14) in response to
Appellant's Appeal Brief. We concur with the conclusions reached by the
Examiner. We highlight and address specific findings and arguments for
emphasis as follows.
As to Appellant's contention 1 that Chapin teaches away from using a
single data base, we are not persuaded of Examiner error. "A reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(citations and internal quotation marks omitted). We agree with the
Examiner's finding that, although Chapin is primarily directed to a peer-to-
peer network, the reference does not discourage the use of a single data base.
Ans. 3--4; Final Act. 6-7.
Regarding Appellant's contention 2 that the cited references do not
teach a data base populated by competing brands, we do not find Appellant's
argument persuasive. We agree with the Examiner's findings that Chapin
teaches retailers with a variety of products in their stores, which are broadly
considered "competing brands" (Final Act. 6), and that Davis teaches an
example of a retailer selling competing brands of products (Ans. 5, citing
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Appeal2014-004901
Application 12/183,316
Davis col. 10: 17-20, Saab and Volkswagen cars). Thus, we agree with the
Examiner's conclusion that the combination of Chapin, Maly, and Davis
teaches a single data base populated by competing brands. Id. at 4--5.
As to Appellant's contention 3, Appellant's argument that Shemaman
cannot adjust available inventory in a node-to-node system of Chapin does
not show error in the Examiner's rejection. Appellant attacks Chapin and
Shemaman individually where the rejection is based on the combination of
Chapin, Maly, and Shemaman. The Examiner finds the combination of
Chapin and Maly teaches the use of a single data base populated with
inventory data. Ans. 3--4; Final Act. 6-7. We agree with the Examiner's
finding that Shemaman' s teaching of updating an inventory data base to
reflect which products have a warranty registration, and thus indicating the
products have been sold, in combination with the single data base of Chapin
and Maly, teaches removing sold inventory from a single data base by
entering warranty information. Ans. 6-7; Final Act. 6-9. Appellanf s
challenge to the Chapin, Maly, and Shemaman references individually is not
convincing of error in the Examiner's position. See In re Keller, 642 F.2d
413, 426 (CCPA 1981) (stating that "one cannot show non-obviousness by
attacking references individually where ... the rejections are based on
combinations of references").
Regarding Appellant's contention 4, we are not persuaded that the
Examiner's rejection is an improper hindsight reconstruction. As discussed
with regard to Appellant's contention 3, supra., the Examiner's proposed
combination does not include knowledge gleaned only from the Appellant's
disclosure, but rather takes into account the prior art teachings of Chapin,
Maly, and Shemaman (Ans. 6-7; Final Act. 6-9). See In re McLaughlin,
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Application 12/183,316
443 F.2d 1392, 1395 (CCPA 1971) ("Any judgment on obviousness is in a
sense necessarily a reconstruction based upon hindsight reasoning, but so
long as it takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant's disclosure, such a
reconstruction is proper.").
As to Appellant's contention 5, the Examiner gives the Mclnemey
Declaration due consideration, but finds it constitutes mere opinions of the
expert rather than presenting any evidence to support and substantiate those
opinions. Ans. 7-10. For example, the Examiner finds no factual support
for the expert opinions regarding maintaining separate databases for
competitive brands and not integrating inventory and warranty databases.
Id. Thus, we agree with the Examiner's finding that the Mclnemey
Declaration, when considered in the Graham analysis, is not sufficient to
establish nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966) ("The question of obviousness is resolved on the basis of
underlying factual determinations, including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) where in evidence, so-called
secondary considerations.").
Regarding Appellant's contention 6, we agree with the Examiner's
finding that the evidence of commercial success provided by the Thayer
Declaration, when considered in the Graham analysis, is insufficient to
establish nonobviousness. Id. at 10-11.
Accordingly, we sustain the Examiner's rejection of independent
claims 1 and 10.
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Application 12/183,316
DECISION
The Examiner's rejections of claims 1, 2, 4--18, and 21-23 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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