Ex Parte Bateman et alDownload PDFPatent Trial and Appeal BoardDec 20, 201612154214 (P.T.A.B. Dec. 20, 2016) Copy Citation 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. 12/154,214 05/21/2008 Anita Joy Bateman AUS920050604US2 7744 30449 7590 12/22/2016 SCHMEISER, OLSEN & WATTS 22 CENTURY HILL DRIVE SUITE 302 LATHAM, NY 12110 EXAMINER BUCHANAN, CHRISTOPHER R ART UNIT PAPER NUMBER 3627 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): 30449@IPLAWUSA.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANITA JOY BATEMAN, HUNG THE DINH, and DAVID P. LEE Appeal 2014-006092 Application 12/1 54,2 m1 Technology Center 3600 Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and SHEILA F. McSHANE, Administrative Patent Judges. McSHANE, Administrative Patent Judge. DECISION ON APPEAL The Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision to reject claims 28, 39, 42, 45, 46, 48, 52, and 57— 69. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to the Appellants, the real party in interest is International Business Machines Corporation. Appeal Brief filed December 19, 2013, hereafter “App. Br.,” 1. Appeal 2014-006092 Application 12/154,214 BACKGROUND The invention relates to a system and method for a consumer to obtain information about a commercial product by using a portable electronic device to read information from a tag attached to the commercial product. Specification, hereafter “Spec.” 11. In the invention, a product tag is attached to a commercial item, and a receiver device controlled by the consumer and processing software in the receiver device receives, processes, interprets and outputs the information about a particular product under consideration to the consumer. Id. 130. Representative claim 28 is reproduced from pages 30—31 of the Claims Appendix of the Appeal Brief (Claims App’x) as follows, with emphasis added to relevant claim limitations: 28. A method for electronic retrieval of consumer product information, said method comprising: retrieving a consumer criteria record comprising a criteria field and a first code field, said criteria field comprising a plurality of product description criteria identifying categories of information about a commercial product that a consumer is interested in, said first code field comprising a first identification code for each criterion in the criteria field; retrieving a product information record from a product tag attached to the commercial product by scanning the product tag, said product information record comprising a product information field and a second code field, said second code field comprising second identification codes that match the first identification codes in the consumer criteria record, said product information field comprising an information item about the product for each second identification code in the second code field; for each criterion in the criteria field, ascertaining an associated information item in the product information field by obtaining a match of the first identification code for each criterion with a corresponding second identification code in the second code field, 2 Appeal 2014-006092 Application 12/154,214 wherein for each match of the first and second identification codes, the information item in the product information field is a specific value of the category of information in the criteria field; and outputting, to the consumer, the ascertained information item for each criterion in the criteria field. The Examiner rejects claims 28, 39, 42, 45, 46, 48, 52, and 57—69 under 35 U.S.C. § 103(a) as obvious over Bauer2 and Official Notice. Final Action mailed July 22, 2013, hereafter “Final Act.,” 2-4; see also Examiner’s Answer mailed March 6, 2014, hereinafter “Ans.,” 2. DISCUSSION The Appellants argue the rejections of claims 28, 45, and 52 under § 103 on common issues, using claim 28 as representative. App. Br. 8—17. The rejection of claims 39 and 46 under § 103 is argued separately. Id. at 17—18. The Appellants argue the rejections of claims 42, 48, 57, 58—60, 62— 64, and 66—68 based on common issues for the group, and we will address those claims as a group. Id. at 18—27. Claims 61, 65, and 69 are dependent claims, and the Appellants argue these claims on similar grounds presented for the independent claims. Id. at 27—28. We will address the rejections of these claim groupings as follows. Claims 28, 45, and 52 The Examiner finds that Bauer teaches a method/system/program for electronic retrieval of consumer product information that includes retrieval of a user criteria record having a product description criteria field identifying categories of information about a product that the user is interested in, and the user can generate and view the item information based on the search criteria, where the product information is obtained by product tag scanning. 2 US Publication No. 2002/0216969 Al, published November 20, 2003. 3 Appeal 2014-006092 Application 12/154,214 Final Act. 2—3 (citing Bauer || 24, 31, 32, 35, 36, 86, 87, 89, 94, 191 (Table V)). The Examiner further finds that the information can be organized, searched and mapped by a variety of ways and “associating search criterion with a first code, associating information items with a second code, [and] matching a first code with a second code, etc.[,] would be matters of design choice.” Final Act. at 3. The Examiner also finds that Bauer does not disclose that the user is a consumer, but provides Official Notice “that various entities (consumer, retailer, producer, etc.) are well-known and could use the method/system of Bauer.” Id. The Appellants argue that Bauer does not teach the first and second code fields limitations in claims 28, 45, and 52, and the Examiner acknowledges this failing. App. Br. 10-13. The Appellants also contend that the Examiner’s allegation that these features have no particular purpose is incorrect. Id. at 13—14 (citing Spec.^f 32). The Appellants additionally assert that the features of the claims at issue “[are] not limited to conducting a search and receiving a search result, but also specif[y] a series of three steps by which the search result is obtained,” and Bauer does not disclose these three steps. Id. at 15. The Appellants additionally contend that the Examiner relies upon Bauer’s disclosures of requesting and viewing, for instance, the “results of the inventory process” from Bauer, but its disclosures do not serve to teach the limitation of “the ascertained information item for each criterion in the criteria field” as required by the claims. App. Br. 15—16 (citing Bauer || 89, 94). We find no reversible error with the Examiner’s findings. As the Examiner finds, and we agree, the recited method of matching the 4 Appeal 2014-006092 Application 12/154,214 identification codes to provide product information is little more than using search request criteria to obtain search results. Ans. 3. The Examiner finds that “[i]f there is some novel aspect to the feature of matching first and second identification codes” then further description should have been provided to demonstrate its novelty. Id. On this point, we refer to Figures 2a and 2b of the Specification. In Figure 2a, the “Size” criteria field, for instance, is identified with code field “011,” and the code field is used to retrieve related information as shown in Figure 2b. However, there is no rationale in the Specification explaining why the information could not have been identified by alternatively using the term “Size” in the first place, rather than using the arbitrary surrogate of a “code field.” We also agree with the Examiner that the use of the “code fields” represents a design choice because, as discussed, there are other criteria that can be used for searching and matching the identification of the information sought that could be used without altering the intended function. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated problem and presents no unexpected result and “would be an obvious matter of design choice within the skill of the art”). We also do not agree with the Appellants’ argument that Bauer’s teachings are limited to requests and displays of inventory-related information only. For instance, Bauer teaches that a variety of search fields can be queried and displayed that extend beyond inventory control, such as “Manufacturer” and “Price.” See Bauer 1191 (Table V). The steps in Bauer of querying and matching of selected criteria, along with outputting (display) of the related information, teach the steps of the claims. See id. 5 Appeal 2014-006092 Application 12/154,214 We therefore sustain the rejection of claims 28, 45, and 52 under §103 over Bauer and Official Notice. Claims 39 and 46 The Appellants argue that Bauer and Official Notice fail to teach the feature of claims 39 and 46 of “wherein the consumer criteria record consists of the criteria field and the first code field, and wherein the product information record consists of the product information field and a second code field.” App. Br. 17 (emphasis omitted). The Appellants additionally allege that “the Examiner has ignored the limitation imposed by the closed- ended phrase “consists of.” Id. (emphasis omitted). We do not agree with the Appellants’ argument for reasons similar to those discussed for claims 28, 45, and 52. As discussed, the use of the criteria using the first and second “code fields” is just the use of search request criteria to search a database, and “code fields” in and of themselves are not afforded patentable weight. We therefore sustain the rejections of claims 39 and 46. Claims 42, 48, 57—60, 62—64, and 66—68 The Appellants argue that Bauer and Official Notice fail to teach features of this group of claims, such as, “wherein the product is a food item, and wherein the categories identified in the criteria field comprise name, size, price, calories” of claim 42, “a clothing item” with a criteria field including “name, size, price, color” of claim 48, or criteria fields associated with a “medicine item” of claim 57. App. Br. 18—21. The Examiner finds, and we agree, that details of the criteria fields selected represent design choices and should not be afforded patentable weight. Final Act. 4. 6 Appeal 2014-006092 Application 12/154,214 As to claims 58—60, 62—64, and 66—68, the Appellants also assert that Bauer and Official Notice do not teach the claim elements involving the use of different languages. App. Br. 21—27. The Examiner finds that the use of different languages constitutes design choice, and also that “it is well-known to provide various product information in response to a query and the information is provided in some well-known language, such as English or Spanish.” Final Act. 4. We determine that there is no reversible error in the Examiner’s findings, We therefore sustain the rejections of claims 42, 48, 57—60, 62—64, and 66—68 under § 103 over Bauer and Official Notice. Claims 61, 65, and 69 Claims 61, 65, and 69 are dependent claims, and the Appellants additionally argue that as to these claims, the limitations imposed by close-ended phrase “consists of’ has been ignored. App. Br. 27—28. As discussed above, we determine that there is no reversible error in the Examiner’s findings that the limitations at issue should not be afforded patentable weight, and we therefore sustain the rejections of these claims. SUMMARY The rejection of claims 28, 39, 42, 45, 46, 48, 52, and 57—69 under 35 U.S.C. § 103(a) 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). AFFIRMED 7 Copy with citationCopy as parenthetical citation