Ex Parte CaseyDownload PDFPatent Trial and Appeal BoardJul 12, 201612467816 (P.T.A.B. Jul. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/467,816 05/18/2009 22822 7590 LEWIS RICE LLC ATTN: BOX IP DEPT. 600 Washington Ave. Suite 2500 ST LOUIS, MO 63101 07114/2016 FIRST NAMED INVENTOR Ginger Casey 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. 148/1692US 8741 EXAMINER HAIDER,FAWAAD ART UNIT PAPER NUMBER 3627 NOTIFICATION DATE DELIVERY MODE 07/14/2016 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): IPDEPT@LEWISRICE.COM KDAMMAN@LEWISRICE.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GINGER CASEY Appeal2014--004311 Application 12/467,816 Technology Center 3600 Before ANTON W. PETTING, BIBHU R. MOHANTY, and NINA L. MEDLOCK, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Ginger Casey (Appellant) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1-16, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ). The Appellant invented a way of dealing with virtual markets with fulfillment of orders via product pick-up. Spec., para. 1. 1 Our decision will make reference to the Appellant's Appeal Brief ("App. Br.," filed August 19, 2013) and Reply Brief ("Reply Br.," filed February 5, 2014), and the Examiner's Answer ("Ans.," mailed December 6, 2013), and Final Action ("Final Act.," mailed March 18, 2013). Appeal2014-004311 Application 12/467,816 An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. An Internet-based grocery retail store system comprising: [ 1] a computer network with at least a first and second computer; [2] an Internet-based three-dimensional virtual supermarket interface that a user can access from said first computer configured for said user to order and purchase retail goods; [3] said second computer on said computer network receiving said order of said user placed on said Internet-based three- dimensional virtual supermarket interface, said second computer being located at a retail/warehouse hybrid procurement center, said retail/warehouse hybrid procurement center comprising a fulfillment warehouse and a pick-up bay, wherein said retail/warehouse hybrid procurement center is a retail store in its exterior facade and location with an interior structured as a warehouse with no retail qualities associated therewith; [ 4] means for packaging said order at said fulfillment warehouse to create a packaged order; and [5] means for transferring said packaged order to the vehicle of said user at said pick-up bay. 2 Appeal2014-004311 Application 12/467,816 The Examiner relies upon the following prior art: Waller Cherry Borders Saigh US 2002/0035537 Al US 2007 /0005377 Al US 2007/0174144 Al US 2007/0187183 Al Mar. 21, 2002 Jan.4,2007 July 26, 2007 Aug. 16, 2007 Claims 1-3, 8, 10, and 12-16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Saigh, Waller, and Cherry. Claims 4--7, 9, and 11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Saigh, Waller, Cherry, and Borders. ANALYSIS and NEW GROUND OF REJECTION Before analyzing the patentability of the claims relative to art, we must first ascertain the scope of the claims. Claim 1, the sole independent claim, is nominally directed to a system, i.e., a structure. Of the five recited components, four are structural, viz., a network, virtual supermarket interface, means for packaging, and means for transferring. The middle limitation is not a component, but is instead a step, viz., receiving. That limitation is to a computer receiving, not to a computer capable of receiving or having instructions to receive, but actually performing the step of receiving. Accordingly, claim 1 recites both a system and a method for using that system, i.e., it is a hybrid claim. Because claim 1 "recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2." IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). 3 Appeal2014-004311 Application 12/467,816 Claim l also recites a "means for transferring said packaged order to the vehicle of said user at said pick-up bay." As this is phrased as a means plus function limitation, we must construe what structure is actually covered. "The first step in construing a means-plus-function claim limitation is to define the particular function of the claim limitation." Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004) (citation omitted). "The court must construe the function of a means-plus-function limitation to include the limitations contained in the claim language, and only those limitations." Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002). In re Aoyama, 656 F.3d 1293, 1296-97 (Fed. Cir. 2011). Here the function is transferring the recited packaged order to the user's vehicle where the vehicle is located a pick-up bay. The function is not merely transferring to the pick-up bay, but to the vehicle that is located at the pick-up bay. "The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function." Golight, 355 F.3d at 1334. "Under this second step, structure disclosed in the specification is corresponding structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim." Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003) (internal citation and quotation omitted). Id. at 1297. While claims are still to be given their "broadest reasonable interpretation" during prosecution, "the broadest reasonable interpretation that an examiner may give means- plus-function language is that statutorily mandated in paragraph six." Donaldson, 16 F.3d at 1194-95. In Donaldson, this court explained that "the [Office] may not disregard the structure 4 Appeal2014-004311 Application 12/467,816 Id. disclosed in the specification corresponding to such language when rendering a patentability determination." Id. at 1195. There must be at least one structure actually disclosed, not merely implied as being obvious to one of ordinary skill. The structure must be found only in that portion of the Specification and drawings so clearly linked. "The Board erred by identifying structure that was not clearly linked or associated by the specification or prosecution history with the function actually recited in the claim." Id. at 1298. Here we encounter our second problem in ascertaining the scope of claim 1. Appellant cites Specification paragraphs 88-94 for support. App. Br. 6. Paragraphs 88-90 describe the structure of the pick-up bay itself. Paragraph 91 describes using a computer to manage the process of picking- up. Paragraph 92 describes identity verification for picking up an order. Paragraph 93 appears to be directed to the actual transfer recited, and describes employees or applicable automated technology inside the pick- up bay (8) will pull the order from the applicable storage facilities and the order will be transported (via any applicable, efficient and cost effective transport modality known to those of skill in the art) to the applicable check-out bay (18). The procurement specialist will then bring the order out to the user in their car, verify the user's identity if necessary, and assist the user in loading the order into his or her vehicle. Spec., para. 93. Paragraph 94 describes the user checking order completeness. Thus, the sole description of transferring to the vehicle is performed by people in para. 93. "It is well established that a human being cannot constitute a means within the scope of§ 112, i-f 6." Voter Verified, Inc. v. 5 Appeal2014-004311 Application 12/467,816 Premier Election Solutions, Inc., 698 F.3d 1374, 1383 (2012) (citations omitted); See also, Default Proof Credit Card System, Inc. v. Home Depot, 412 F.3d 1291, 1300 (Fed. Cir. 2005). There is left, then, no structure described corresponding to the recited means for transferring. Accordingly, one of ordinary skill cannot apprehend the scope of this limitation. We further find that even where the means are more broadly construed to cover transfer to the pick-up bay where a vehicle is located, no corresponding structure for that is disclosed either. Instead, the Specification paragraph 93 again says this is accomplished by "applicable automated technology" and "the order will be transported (via any applicable, efficient and cost effective transport modality known to those of skill in the art) to the applicable check-out bay." "[A] bare statement that known techniques or methods can be used does not disclose structure. To conclude otherwise would vitiate the language of the statute requiring 'corresponding structure, material, or acts described in the specification."' Biomedino, LLC v. Waters Technologies Corp, 490 F.3d 946, 953 (Fed Cir 2007). For both of these failures to definitely recite the scope of claim 1, we conclude that claim 1 and its dependent claims 2-16 are indefinite. As a procedural matter, we reverse the rejection of claims 1-16 under § 103. A rejection of a claim, which is so indefinite that "considerable speculation as to meaning of the terms employed and assumptions as to the scope of such claims" is needed, is likely imprudent. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the examiner and the board were wrong in relying on what at best were speculative assumptions as to the meaning of the claims and basing a rejection under 35 U.S.C. § 103 6 Appeal2014-004311 Application 12/467,816 thereon.) We find it imprudent to speculate as to the scope of claims 1-16 in order to reach a decision on the obviousness of the claimed subject matter under§ 103. It should be understood, however, that our reversal is based on the indefiniteness of the claimed subject matter and does not reflect on the merits of the underlying rejection. CONCLUSIONS OF LAW The rejection of claims 1-3, 8, 10, and 12-16 under 35 U.S.C. § 103(a) as unpatentable over Saigh, Waller, and Cherry is reversed pro forma. The rejection of claims 4--7, 9, and 11under35 U.S.C. § 103(a) as unpatentable over Saigh, Waller, Cherry, and Borders is reversed proforma. A new ground of rejection of claim 1-16 is entered under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention. DECISION The rejection of claims 1-16 is reversed proforma. A new ground of rejection of claims 1-16 is entered. We enter a NEW GROUND OF REJECTION of claims 1-16 under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the invention. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: 7 Appeal2014-004311 Application 12/467,816 When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. REVERSED; 37 C.F.R. § 41.50(b) 8 Copy with citationCopy as parenthetical citation