SNAP-ON INCORPORATED

Patent Trials and Appeals Board

Dec 4, 2020

2020002743 (P.T.A.B. Dec. 4, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/609,722 05/31/2017 Preston PHILLIPS 066396-0904 8691
20277 7590 12/04/2020
MCDERMOTT WILL & EMERY LLP
THE MCDERMOTT BUILDING
500 NORTH CAPITOL STREET, N.W.
WASHINGTON, DC 20001
EXAMINER
FRENEL, VANEL
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
12/04/2020 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):
ipdocketmwe@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PRESTON PHILLIPS, DAVID C. FLY, MATTHEW J. LIPSEY,
JOSEPH CHWAN JR., and FREDERICK J. ROGERS
____________

Appeal 2020-002743
Application 15/609,722
Technology Center 3600
____________

Before NORMAN H. BEAMER, ADAM J. PYONIN, and
GARTH D. BAER, Administrative Patent Judges.

BAER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2020-002743
Application 15/609,722

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 8–12 and 22–31, which are all pending claims.
Appeal Br. 8–11. Claims 1–7 and 13–21 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

BACKGROUND
A. The Invention
Appellant’s invention is directed to an “inventory control system for
monitoring the removal and replacement of objects.” Spec. ¶ 33.
Independent claim 8 is representative and reproduced below with emphasis
added:
8. An inventory control system comprising:
an object storage device including a drawer or a tray
for housing objects;
a sensing device configured to acquire at least one
image including information presence or absence of
objects stored in the object storage device;
a reader configured to read an identifying mark on
a work order; and
a data processor configured to receive the
identifying mark from the reader and associate a current
user of the inventory control system and objects issued or
returned with the work order,
wherein the information associated with the work
order includes at least one selected from a group including:

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Snap-On Incorporated as the real party in interest.
Appeal Br. 1.
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a tool list, work instructions, an inspection form, a
drawing, a photograph, and technical specifications.

Appeal Br. 8 (Claims App.).

B. The Rejection on Appeal
The Examiner rejects claims 8–12 and 22–31 under 35 U.S.C.
§ 103(a) as unpatentable over Weaver (US 2011/0025503 A1; Feb. 3, 2011),
Savage (US 5,205,436; Apr. 27, 1993), and Mohr (US 6,989,749 B2;
Jan. 24, 2006). Final Act. 2.2
ANALYSIS
A. Obviousness Rejection of Claim 8
Appellant argues that “Savage [d]oes [n]ot [t]each [a]ny [c]laim
[l]imitations [r]elated to a ‘Work Order.’” Reply Br. 2. Particularly,
Appellant argues that Savage’s passages cited in the Answer do not teach the
claimed “associate a current user of the inventory control system and
objects issued or returned with the work order.” Reply Br. 2 (emphasis
in original).
Appellant contends Savage’s first passage cited in the Answer
“merely teaches that a work order may be used to gain access to Savage’s
automatic tool dispenser, i.e., used as a form of identification.” Reply Br. 3,
citing Savage 6:12–29. Appellant further contends that Savage’s second
passage cited in the Answer “actually teaches here is to use the identity of
the ‘departments’ performing the work order.” Reply Br. 4, citing Savage
9:10–10:19. Appellant further contends that Savage’s third passage “at best

2 While the heading of rejection omits claims 22–31, these claims are
included in the body of the rejection. See Final Act. 5–7.
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only discloses using a work order as a form of identification to gain access
to the automatic tool dispenser.” Reply Br. 4, citing Savage 4:25–60.
We are not persuaded by Appellant’s argument. The Examiner finds,
and we agree, that Savage teaches
[u]ser identifying indicia, security codes, such as personal
identification numbers, indicia related to tools 46, kits 48 of
tools and related supplies 50, or indicia related to operations to
be performed, machine to be used, equipment to be operated,
shift, time of day, department, job, project, work order, or the
like, may be entered to select tools or kits.

Ans. 3, citing Savage 6:15–20 (emphasis added). Here, Savage teaches
linkages between each of (1) “personal identification numbers,” (2) a “job,”
(3) a “project”, and (4) a “work order,” as indicia that “may be entered to
select tools or kits.” One skilled in the art would consider that such indicia
is not used merely for access to operate Savage’s system, but would consider
the indicia (such as a user identification number) as tied to (or associated
with) work orders and particular tools and kits. Such an interpretation is
further supported by Savage’s teaching that
a tool or kit request may be limited by a programmed, user-
oriented limit allowing a user access to only specific tools 46 or
kits 48, or by a programmed, operation-oriented limit allowing
only specific tools 46 or kits 48 to be selected for an identified
operation or machine.

Savage 6:47–52 (emphasis added). At a minimum, Savage provides the
suggestion3 to “associate a current user of the inventory control system and

3 “[O]bviousness does not require the prior art to reach expressly each
limitation exactly. Rather, obviousness may render a claimed invention
invalid where the record contains a suggestion or motivation to modify the
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objects issued or returned with the work order” as Savage expressly teaches
the “programmed, user-oriented limit” and “programmed, operation-oriented
limit” in order to “protect and limit tool and kit distribution.” Savage 6:31–
32.
This result is further supported by the Examiner’s finding that Savage
teaches
prior to the step of selectively operating the means for delivering
30, it is necessary to perform the further step of entering indicia
related to at least one of the operations (or alternatively indicia
related to equipment to be operated, departments, jobs, projects
and/or work orders, or the like) to identify and quantify tools and
kits which may be delivered by selective operation of said means
for delivering.

Ans. 4, citing Savage 10:4–11. Here again, indicia related to “jobs, projects
and/or work orders” are used to “identify and quantify tools and kits,” and
these indicia are entered after “entering user identifying indicia.” Savage
9:50–51; see also Savage 9:56–9:58.
Accordingly, we affirm the Examiner’s rejection of independent claim
8 and dependent claims 9–12 and 22–31 not argued separately. See Appeal
Br. 5–7.

prior art teaching to obtain the claimed invention.” Beckson Marine, Inc. v.
NFM, Inc., 292 F.3d 718, 727 (Fed. Cir. 2002).
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CONCLUSION

In summary:

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8–12,
22–31
103(a) Weaver, Savage,
Mohr
8–12,
22–31