Ex Parte Casey

Patent Trial and Appeal Board

Jul 12, 2016

12467816 (P.T.A.B. Jul. 12, 2016)

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.
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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).
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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
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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.
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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
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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:
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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)
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