Ex Parte Vernon

Board of Patent Appeals and Interferences

Aug 8, 2011

11180796 (B.P.A.I. Aug. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM EARL VERNON
____________

Appeal 2010-010545
Application 11/180,796
Technology Center 3600
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Before: HUBERT C. LORIN, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-010545
Application 11/180,796

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 22-56. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to automated managing of physical
assets (Spec. 1:2). Claim 22, reproduced below, is further illustrative of the
claimed subject matter.
22. A system for managing physical assets, the system
comprising:
a computer database to track statuses of physical assets
based on a unique machine-readable code associated with the
physical assets;
a plurality of stations capable of reading the unique
machine-readable identifying codes and for sending status of
the physical assets during management of the physical assets
over a lifecycle of the physical asset, the data being sent over a
communications link between the plurality of stations and the
computer database1.

Claims 22-56 stand rejected under 35 U.S.C. § 102(e) as anticipated
by Lucas (US Pub. 2007/0239569 A1, pub. Oct. 11, 2007) (hereinafter
“Lucas CIP”)2.
We choose independent claim 22 as representative. See 37 C.F.R. §
41.37(c)(1)(vii).

1 The claims set forth in the Claims Appendix of the Appeal Brief appear to
be those pending prior to Appellant’s Preliminary Amendment filed
November 10, 2005. Accordingly, we refer to the claims set forth in the
Amendment filed March 5, 2009, as those are the most recent claim listing
that is consistent with the Preliminary Amendment.
2 Lucas CIP is a continuation-in-part of U.S. Patent Application No.
10/873,108, filed Jun, 23, 2004, which is a continuation of U.S. Patent
Application No. 09/799,879, filed Mar. 7, 2001, now US Patent 6,996,538,
issued Feb. 7, 2006 (hereinafter “Lucas Parent”).
Appeal 2010-010545
Application 11/180,796

3
We AFFIRM.

ANALYSIS
We are not persuaded the Examiner erred in asserting that the Lucas
CIP anticipates the subject matter of independent claim 22, because the
instant application was filed between the effective dates of the Lucas CIP
and the Lucas Parent, and certain portions of the Lucas CIP cited by the
Examiner cannot properly claim priority back to the Lucas Parent (App. Br.
5-7). We agree with and adopt the Examiner’s findings of fact and
reasoning in response to Appellant’s argument, as set on pages 6-8 of the
Examiner’s Answer. To simplify, because the Lucas CIP incorporates the
Lucas Parent by reference, we will treat the Lucas Parent as the relevant
prior art.
In the paragraph bridging pages 7-8 of the Examiner’s Answer, the
Examiner cites certain portions of the Lucas Parent as disclosing “tracking
the status of inventory items in a database, wherein tracking is executed by
detecting an RFID Tag associated with each said inventory item; and
wherein the detection of the RFID tag is executed by one or more RFID
readers.” We agree with the Examiner’s findings and conclusions. And as
these findings and conclusions concerning the cited portions of the Lucas
Parent correspond to, and thus anticipate, the subject matter of independent
claim 22, we sustain the rejection.

Appeal 2010-010545
Application 11/180,796

4
DECISION
The decision of the Examiner to reject claims 22-56 is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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