Ex Parte GalbraithDownload PDFPatent Trial and Appeal BoardFeb 12, 201511059281 (P.T.A.B. Feb. 12, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT BRUCE GALBRAITH ___________ Appeal 2012-007550 Application 11/059,281 Technology Center 2400 ____________ Before JEAN R. HOMERE, DANIEL N. FISHMAN, and CATHERINE SHIANG, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) of the final rejection of claims 20, 22, 24, 26–31, 33–35, and 37–45, all remaining claims of the application.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 In this Opinion, we refer to the Appeal Brief (“App. Br.,” filed November 23, 2011), the Reply Brief (“Reply Br.,” filed April 11, 2012), the Examiner’s Answer (“Ans.,” mailed February 17, 2012), and the original Specification (“Spec.,” filed February 16, 2005). Appeal 2012-007550 Application 11/059,281 2 STATEMENT OF THE CASE THE INVENTION Appellant’s invention relates to exchange of information, especially proof of delivery information, from logistic providers and their agents to their clients and permitting access to such information through the Internet. Spec. ¶ 2. Claim 20, reproduced below, is illustrative: 20. A method for collaboratively exchanging freight load logistics information, comprising: establishing an information repository and processing center configured to store and process freight load logistics information related to the transportation of product; establishing a plurality of information entry and retrieval centers; coupling said information repository and processing center and said plurality of information entry and retrieval centers together for information transfer; and providing selective information entry and retrieval capabilities for selected ones of the plurality of information entry and retrieval centers wherein selected ones of the plurality of information entry and retrieval centers are configured to transfer an image of a signed bill of lading for shipment of product to the information repository and processing center, providing a specific facsimile number set up on the collaborative logistics information exchange system for paperwork relating to a freight load, the carrier transmitting the signed bill of lading to the information repository and processing center via a facsimile to the specific facsimile number, whereby selected of said plurality of information entry and retrieval centers may retrieve an image of the signed bill of lading for shipment of product. Appeal 2012-007550 Application 11/059,281 3 THE REJECTIONS Claims 20, 28, and 29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dabbiere (US 2002/0013721 A1) and De Roche (US 6,429,810 B1). Ans. 5. Claims 30, 31, 34, 37, 38, and 41–44 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dabbiere, De Roche, and Friend (US 6,497,368 B1). Ans. 8. Claims 39 and 40 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dabbiere, De Roche, Friend, and Kadaba (US 7,647,233 B2). Ans. 11. Claims 22 and 45 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dabbiere, De Roche, Friend, and Capleton (GB 2 053 138 A). Ans. 12. Claims 24 and 33 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dabbiere, De Roche, Friend, Capleton, and Aptekar (US 7,422,149 B2). Ans. 14. Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dabbiere, De Roche, and Hayes (US 2003/0195811 A1). Ans. 15. Claim 35 is rejected under 35 U.S.C. § 103(a) as unpatentable over Dabbiere, De Roche, Friend, and Hayes. Ans. 16. Only those arguments actually made by Appellant have been considered in this Decision. Arguments that Appellant did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2012-007550 Application 11/059,281 4 We have reviewed the Examiner’s rejections in light of Appellant’s arguments the Examiner erred. App. Br. 4–23; Reply Br. 1–3. We are not persuaded by Appellant’s contentions. The Examiner provides a detailed, thorough response to Appellant’s arguments. We adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken and as set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief (see Ans. 16–27). We highlight specific arguments and findings for emphasis as follows. REJECTION OVER DABBIERE AND DE ROCHE Claims 20, 28, and 29 Appellant argues the combination of Dabbiere and De Roche fails to disclose “the carrier transmitting the signed bill of lading to the information repository and processing center via a facsimile to the specific facsimile number,” as recited in claim 20 (hereinafter the “disputed limitation”). App. Br. 4–6, 8–12; Reply Br. 1–2. Specifically, Appellant argues, There is no disclosure in Dabbierre [sic] et al. that the bill of lading was sent via facsimile much less that the carrier signing the bill of lading is the person who sent it. De Roche does not mention a bill of lading anywhere much less transmission of a bill of lading. App. Br. 9. Appellant further contends, “It is important to understand that with respect to Appellant’s claim 20 it is that the ‘carrier’ (vehicle operator) who signed the bill of lading and is transmitting the ‘signed’ bill of lading to ‘the specific facsimile number.’” Id. Appeal 2012-007550 Application 11/059,281 5 We are not persuaded the Examiner erred, at least, because Appellant’s argument improperly attacks the references separately where the rejection is based on the combined teachings of Dabbiere and De Roche. See, e.g., In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck, 800 F.2d 1091 (Fed. Cir. 1986). Furthermore, the Examiner explains Dabbiere is relied on for teaching “accessing the signed bill of lading and also that the delivery carrier sends frequent and real-time updates regarding the shipment status and location.” Ans. 17 (citing Dabbiere ¶¶ 24, 63, 65, 66). We agree and note Dabbiere’s paragraph 66 specifically discloses a bill of lading is one type of information viewed (after being transmitted by the carrier). The Examiner further explains De Roche (in combination with Dabbiere) is relied on for teaching tracking freight shipments where each delivery carrier (ground and air carriers) updates shipping documents via facsimile. Id. (citing De Roche FIG. 1; col. 5, ll. 10–17 and 48–51; col. 6, ll. 32–33). We agree and note columns 5 and 6 of De Roche specifically disclose various exchanges of shipping related information via, for example, “automated faxes.” See, e.g., De Roche col. 5, ll. 3–10; col. 6, ll. 18–19, 32–34, 61–67. Thus, we agree with the Examiner that the combined references teach or reasonably suggest the disputed limitation to the ordinary skilled artisan. Appellant further argues Dabbiere fails to disclose how a bill of lading is created. App. Br. 5. We are not persuaded the Examiner erred. Appellant admits Dabbiere discloses an image of a bill of lading can be viewed (on a computer system). Id. at 5. The Examiner explains the signed bill of lading accessed (viewed) by Dabbiere, when combined with De Roche’s disclosure of transmitting shipping documents by facsimile, discloses to the ordinary Appeal 2012-007550 Application 11/059,281 6 skilled artisan creating an image of the signed bill of lading as it is being sent by facsimile. Ans. 17. We agree. Appellant further contends Dabbiere and De Roche cannot be properly combined because they are not analogous art. App. Br. 6–7; see also Reply Br 2. We are not persuaded the Examiner erred. Whether a reference in the prior art is “analogous” is a fact question. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v. Dennison Mfg., 810 F.2d 1561, 1568 n.9 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987)). Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Id. (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). Appellant narrowly characterizes the field of each reference, focusing on implementation details of each. App. Br. 7. We are not persuaded and instead, we agree with the Examiner (Ans. 18–19) that Dabbiere, De Roche, and the claimed invention are all in the same field of endeavor—namely communication of information related to tracking of shipment/transportation of products/freight. See e.g., Dabbiere Abstract; De Roche Abstract; Spec. ¶ 2. Appellant further contends, for the first time in the Reply Brief, the Examiner’s Answer fails to explain how to combine the teachings of Dabbiere and De Roche and fails to provide “any proper reason[] for modifying Dabb’s [(Dabbiere’s)] electronic tracking by adding facsimile transmission of a signed bill of lading.” Reply Br. 2. We are not persuaded Appeal 2012-007550 Application 11/059,281 7 the Examiner erred. The Examiner’s rejection provides a reason for combining Dabbiere and De Roche. Ans. 7, 20. Appellant’s arguments fail to identify any error in the Examiner’s reasoning. In view of the above discussion, we are not persuaded the Examiner erred in rejecting claims 20 or 28 and 29 dependent from claim 20 and not argued separately with particularity (App. Br. 12). REJECTION OVER DABBIERE, DE ROCHE, AND FRIEND Claims 30, 31, 34, and 37 Independent claim 30 recites a system providing functionality similar to the method of claim 20 discussed supra. In particular, claim 30 recites “a device operable by the carrier for producing and transmitting an image of a signed bill of lading having text and non-text information to said provider server for storage on said storage device.” The Examiner rejects claim 30 relying on Dabbiere and De Roche, as applied to claims 20 and 30 and relies on Friend for disclosing a portable device (operable by a carrier) reading on the recited device used by a carrier (e.g., a portable device as may be used by a cargo handler). See Ans. 8–9. Appellant argues the Examiner erred in relying on the combination of Dabbiere and De Roche for the same reasons presented for claim 20 (App. Br. 14) and thus, for the reasons discussed supra, we are not persuaded the Examiner erred. In addition, Appellant argues the Examiner erred because Dabbiere, De Roche, and Friend are not properly combined. App. Br. 13– 17; Reply Br. 2–3. More specifically, Appellant argues the Examiner erred in rejecting claim 30 because the rejection “does not explain how Friend’s portable data device can be incorporated into either the Dabbiere et al. XML Appeal 2012-007550 Application 11/059,281 8 protocol system . . . and/or the De Roche’s GPS satellite/(PSC) unit tracking.” App. Br. 15; see also Reply Br. 2–3. Appellant further contends Friend’s portable device is not usable with either Dabbiere or De Roche. Id. Still further, Appellant contends the Examiner has failed to identify what components of each of Dabbiere, De Roche, and Friend are combined to disclose the device of claim 30 and further contends “Friend’s portable device is not usable” with Dabbiere and De Roche. Id. Appellant also argues Friend is not analogous art with respect to Dabbiere and De Roche (id.) and argues the Examiner fails to provide a proper reason to combine Friend with Dabbiere and De Roche (id. at 16). We are not persuaded the Examiner erred, at least, because Appellant fails to provide persuasive evidence why Friend is not usable or combinable with Dabbiere and De Roche. Rather, the Examiner has expressed a reason for combining Friend with Dabbiere and De Roche (Ans. 9, 22–23) and Appellant has not provided persuasive evidence of error in the Examiner’s reasoning. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. We conclude the use of a portable device by a carrier (as disclosed by Friend), to transmit shipping documents (as disclosed by Dabbiere), as fax images (as disclosed in De Roche), would have produced a predictable result of the device of claim 30. Appellant has not persuaded us that the combination is “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at Appeal 2012-007550 Application 11/059,281 9 419). Therefore, we conclude the Examiner has articulated a reason for combining Friend with Dabbiere and De Roche based on rational underpinnings. We are also not persuaded Friend is non-analogous art for essentially the same reasons discussed supra regarding the combination of Dabbiere and De Roche. Furthermore, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Appellant’s argument seems to demand physical combination of features of the references rather than addressing what is suggested to the ordinary skilled artisan by the combination of references. We conclude the combination of Dabbiere, De Roche, and Friend reasonably suggests to the skilled artisan “a device operable by the carrier for producing and transmitting an image of a signed bill of lading having text and non-text information to said provider server for storage on said storage device,” as recited in claim 30. In view of the above discussion, we are not persuaded the Examiner erred in rejecting independent claim 30. Appellant presents essentially the same arguments regarding claim 31, dependent from claim 30 (App. Br. 17), Appeal 2012-007550 Application 11/059,281 10 and does not argue claims 34 and 37 separately (id.). Thus, we are similarly not persuaded of Examiner error in the rejection of claims 31, 34, and 37. Claims 38 and 42–44 Independent claim 38 recites a method including steps similar to those of claim 20 and similar to the functions of system claim 30. In particular, claim 38 recites “the carrier electronically providing an image of the signed bill of lading having text and non-text information to the information repository via facsimile to a specific facsimile number.” The Examiner rejects claim 38 for essentially the same reasons as claims 20 and 30, and further finds the combination of Dabbiere and De Roche discloses the text and non-textual information as the image transmitted by facsimile. Ans. 9. Appellant argues “[t]he rejection does not explain where the prior art discloses the ‘non-text information (e.g. image, barcode)’ and it is not apparent that such non-text information is found in the image in the Dabbiere et al. bill of lading.” App. Br. 18. We are not persuaded the Examiner erred. The Examiner explains, Examiner cites Dabb[iere] paragraph 66, Friend col. 2 lines 50- 58, De Roche col. 6 lines 32-33 and explains that the signed bill of lading includes non-text information (e.g. image, barcode) and text information (e.g. addresses, names, products). Shipping documents are sent by facsimile and images of documents are created during the facsimile process. Ans. 24. We agree, because a facsimile transmission of a bill of lading is an image of the bill of lading and such an image would include both textual information and non-textual information (such as images and barcodes) as desired for the bill of lading. Appellant’s Specification provides no definition for type of non-textual information and thus, the Examiner’s Appeal 2012-007550 Application 11/059,281 11 broad, but reasonable, interpretation of non-textual information as including the image of the bill of lading to be transmitted by facsimile. Furthermore, Appellant does not rebut the Examiner’s explanation. Thus, in view of the above discussion and the Examiner’s unrebutted explanation, we are not persuaded the Examiner erred in rejecting claim 38 or claims 42–44, dependent from claim 38 and not argued separately (App. Br. 19). Claim 41 Claim 41 depends from claim 38 and further recites sending a copy of the signed bill of lading to a customer. The Examiner finds, the combination of Dabbiere, De Roche, and Friend discloses automatically sending updates to a sales manager and finds it would be obvious to “extend this idea to allow the customer to receive automatic updates related to their order’s delivery status.” Ans. 10. Appellant argues there is no discussion of sending such updates to a customer in any of the references and contends the Examiner’s conclusion of obviousness is “without proper support from the prior art.” App. Br. 19. We are not persuaded the Examiner erred. Although “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does,” (KSR, 550 U.S. at 418), “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents,” (KSR, at 550 U.S. at 419). The Examiner explains sending a copy of a bill of lading to Appeal 2012-007550 Application 11/059,281 12 update a customer would be an obvious matter of implementation choice (Ans. 25) and Appellant does not persuasively rebut this finding. In view of the above discussion, we are not persuaded the Examiner erred in rejecting claim 41. REJECTION OVER DABBIERE, DE ROCHE, FRIEND, AND KADABA Claims 39 and 40 Claims 39 and 40 depend from claim 38 and further recite specific contents of the signed bill of lading (hand-written information and pickup/delivery dates, respectively). The Examiner rejects claims 39 and 40 for the same reasons as claim 38 as discussed supra, and further relies on Kadaba for disclosing the recited contents of the bill of lading. Ans. 11–12. Appellant argues Kadaba fails to discuss a bill of lading, let alone the specific information recited to be present on the claimed bill of lading, and further argues “Kadaba is non-analogous art with respect to the bill of lading of Dabbiere et al.” App. Br. 20. Initially, we are not persuaded Kadaba is non-analogous art for essentially the same reasons discussed supra regarding the combination of Dabbiere, De Roche, and Friend. Kadaba is in the same field as the other references—namely communication of information related to tracking of shipment/transportation of products/freight. See, e.g., Kadaba Abstract. Furthermore, Appellant improperly attacks the references separately, whereas the rejection is based on the combined teachings of the references. See Ans. 25; see also Keller, 642 F.2d at 425. Appellant argues Kadaba fails to disclose a bill of lading. However, the Examiner relies on Dabbiere, not Kadaba, for disclosing a bill of lading. Appeal 2012-007550 Application 11/059,281 13 In view of the above discussion, we are not persuaded the Examiner erred in rejecting claim 39 or claim 40 not argues separately (App. Br. 20). REJECTION OVER DABBIERE, DE ROCHE, FRIEND, AND CAPLETON Claim 22 Claim 22 depends from claim 20 and further comprises: configuring selected ones of the plurality of information entry and retrieval centers at selected locations to produce a data encoded image on the signed bill of lading, transmitting the data encoded image to the information repository and processing center, and wherein the data encoded image contains at least encoded data representing a product delivery location. The Examiner finds the combination of Dabbiere, De Roche, Friend, and Capleton teaches this feature. Ans. 13. Appellant argues De Roche discloses only applying a barcode to a piece of cargo, which is not the same as applying a barcode to a bill of lading and further argues De Roche fails to disclose the configuring and transmitting steps of claim 22. App. Br. 21. We are not persuaded the Examiner erred. As above, Appellant attacks De Roche separately from the combination of references relied upon by the Examiner’s rejection. See Keller, 642 F.2d at 425. The Examiner explains the rejection is based on the combined teachings of the references and further finds, In order for De Roche's bar code to be included on the shipping documents, configuration must occur when creating the document. Combining De Roche and Dabb[iere] would create a bill of lading with a bar code. And as explained in the above arguments, De Roche discloses transmission via facsimile. This is considered transmission for the transmission step. Appeal 2012-007550 Application 11/059,281 14 Ans. 26. We agree. De Roche discloses barcode tag being generated (i.e., by a properly configured system) and transmitted (i.e., by scanning the barcode for logging and/or for facsimile transmission). When combined with Dabbiere’s teachings regarding a bill of lading as an exemplary shipping document that is transmitted, we find the combination of references teaches or reasonably suggests the additional recited features of claim 22. Appellant does not persuasively rebut this finding. In view of the above discussion, we are not persuaded the Examiner erred rejecting claim 22. Claim 45 Claim 45 depends indirectly from claim 38 and additional recites, “wherein the proof of delivery comprises a label affixed to the bill of lading.” The Examiner rejects claim 45 over the same combination as claim 22. Ans. 13–14. Appellant argues the Examiner has failed to explain how Capleton’s disclosure of a multi-part for mail receipting is combined with the other references. App. Br. 22. We are not persuaded the Examiner erred. The Examiner explains the reliance on each reference (Ans. 26–27) and Appellant does not persuasively rebut the Examiner’s findings. In view of the above discussion, we are not persuaded the Examiner erred in rejecting claim 45. Appeal 2012-007550 Application 11/059,281 15 REMAINING REJECTIONS Claims 24, 26, 27, 33, and 35 Appellant does not separately argue the rejections of these claims with particularity (App. Br. 22–23) and thus, we are not persuaded the Examiner erred in rejecting claims 24, 26, 27, 33, and 35. Appeal 2012-007550 Application 11/059,281 16 DECISION2 For the above reasons, the Examiner’s rejections of claims 20, 22, 24, 26–31, 33–35, and 37–45 are 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)(1)(iv). AFFIRMED tj 2 Should there be further prosecution of this application (including any review for allowance), we suggest the Examiner consider whether various claims recite non-functional descriptive material deserving of little or no patentable weight (e.g., recitations regarding the specific content of a bill of lading). Additionally, should there be further prosecution of this application, the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014. Copy with citationCopy as parenthetical citation