Ex Parte Robinson et alDownload PDFBoard of Patent Appeals and InterferencesFeb 9, 201210943802 (B.P.A.I. Feb. 9, 2012) 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. 10/943,802 09/17/2004 Andrew Robinson 259-P-001US01 2001 23322 7590 02/10/2012 IPLM GROUP, P.A. POST OFFICE BOX 18455 MINNEAPOLIS, MN 55418 EXAMINER LASTRA, DANIEL ART UNIT PAPER NUMBER 3688 MAIL DATE DELIVERY MODE 02/10/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ANDREW ROBINSON and BILL ADAM ____________ Appeal 2011-005337 Application 10/943,802 Technology Center 3600 Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Andrew Robinson, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-24 and 27-50. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2011-005337 Application 10/943,802 2 SUMMARY OF DECISION We AFFIRM.1 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of providing information regarding grocery items, the method comprising: mapping recipes with grocery items via universal product codes; displaying grocery items for sale with a graphic user interface (GUI); providing recipe links on the GUI, each recipe link associated with and displayed with a select grocery item for sale that can be used as an ingredient in a recipe; and displaying related recipes upon activation of one of the recipe links associated with a select grocery item for sale. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Oct. 1, 2010) and Reply Brief (“Reply Br.,” filed Jan. 20, 2011), and the Examiner’s Answer (“Answer,” mailed Nov. 24, 2010). Appeal 2011-005337 Application 10/943,802 3 Owens Fine Swartz US 2003/0004831 A1 US 2003/0171944 A1 US 6,837,436 B2 Jan. 2, 2003 Sep. 11, 2003 Jan. 4, 2005 The following rejections are before us for review: 1. Claim 13 is rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1-4, 6, 8-24, and 27-442 are rejected under 35 U.S.C. §103(a) as being unpatentable over Owens and Swartz. 3. Claims 5 and 7 are rejected under 35 U.S.C. §103(a) as being unpatentable over Owens, Swartz, and Fine. 4. Claims 45-50 are rejected under 35 U.S.C. §102(b) as being anticipated by Owens. ISSUE Regarding the §112 rejection, the issue is whether the Specification describes “indexing recipes based on the universal product codes” (claim 13) in sufficient detail so that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. With respect to the art rejections, the main issue is whether Swartz discloses the step of “mapping recipes with grocery items via universal product codes” (claim 1). 2 Claim 51 was included in the statement of the rejection but was cancelled. Appeal 2011-005337 Application 10/943,802 4 ANALYSIS The rejection of claim 13 under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. The Examiner finds that “[n]owhere in Applicant’s specification is recited indexing recipes on the UPC,” said to be later-claimed in present claim 13. Ans. 3. The Appellants argue that this is shown in [0029] and [0031] of the Specification. App. Br. 9. We have carefully reviewed [0029] and [0031]. Although indexing is disclosed, “indexing recipes based on the universal product codes” as claim 13 calls for is not. The Appellants argue that “[t]he compiler 203 electronically indexes food information and the food data is mapped by its associated universal product code.” App. Br. 9. But distinct indexing and UPC-mapping steps are not the same as what is claimed. Claim 13 calls for “indexing recipes based on the universal product codes”. Emphasis added. “What is claimed by the patent application must be the same as what is disclosed in the specification; otherwise the patent should not issue.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002). While it may be obvious to “index[ ] recipes based on the universal product codes” (claim 13) given the disclosure of distinct indexing and UPC-mapping steps, “[o]ne shows that one is “in possession” of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). For the foregoing reasons, we will sustain the rejection. Appeal 2011-005337 Application 10/943,802 5 The rejection of claims 1-4, 6, 8-24, and 27-44 and under 35 U.S.C. §103(a) as being unpatentable over Owens and Swartz. The independent claims are claims 1 (method), 13 (method), 23 (method), 29 (program product), and 36 (system). The application on appeal (10/943,802) was previously before this panel in appeal 2009-001356. In that prior appeal, we affirmed the Examiner’s decision to reject claims 1-4, 67, 8-11, and 45-50 under §102(e) as anticipated by Owens and claims 5 and 7 under §103(a) as unpatentable over Owens and Fine. We also reversed the rejection of claims 12-15, 17-24, and 27-44 under §102(e) as anticipated by Owens and claim 16 under §103(a) as unpatentable over Owens and Fine. A principle reason for the reversal was that we found that “Owens does not describe expressly or inherently the step of mapping recipes with grocery items via the universal products codes as recited in claim 12” (2009-001356, p. 18). Claim 12 depended from claim 1. The rejection of claims 23, 24, and 27-36 was reversed for the same reasons. Claim 1 in the present appeal (see supra) includes that limitation - mapping recipes with grocery items via the universal products codes. Claim 1 Notwithstanding that claim 1 includes the step of “mapping recipes with grocery items via universal product codes” which was a principle reason for reversing a §102 rejection of claims with that limitation in the prior appeal (2009-001356) over Owens, claim 1 is presently rejected under §103 over Owens and Swartz. Swartz is relied upon as evidence that “it is old and well known in the promotion art to link UPC codes with recipes Appeal 2011-005337 Application 10/943,802 6 where a customer scans a product barcode (i.e. UPC) in order to access a database to provide additional information about said product such as recipes (see col 5, line 65 - col 6, line 5; col 12, lines 30-50; col 13, lines 1- 25).” Answer 4. In response, the Appellants argue that “[t]he use of the "UPC" in the Swartz reference is merely used to retrieve the information entered into the database relating to the product when the UPC is scanned (column 13, lines 14-17 of the Swartz reference). In the Swartz reference, no "mapping" takes place. Only the recipes entered into the database and associated with the product UPC code are retrieved. Hence, the Swartz reference does not teach "mapping recipes with grocery items via universal product codes," as is claimed in claim 1 of the present application.” App. Br. 12. The Appellants’ argument might be persuasive if a patentable distinction exists between “mapping,” as that term in used in claim 1, and Swartz’s use of UPC to retrieve the information entered into the database relating to the product when the UPC is scanned as the Appellants have characterized Swartz as disclosing. In that regard, claims are given the broadest reasonable construction in light of the Specification as it would be interpreted by one of ordinary skill in the art at the time of the invention. The Appellants do not in their Brief explain the distinction between the claim term “mapping” and what Swartz discloses. The Appellants direct our attention to p. 8, ll. 5-6 and 13 of the Specification but those lines simply state that “food data is mapped by its associated [UPC]” (ll. 5-6) and “the consumer may link the product with a recipe” (l. 13). These passages in the Specification provide no express definition for “mapping” but use it in the context of “linking” the UPC to Appeal 2011-005337 Application 10/943,802 7 data. Given this meaning, we see little if any difference between the mapping step as claimed and what Swartz discloses. Accordingly, the Appellants’ argument that a patentable distinction exists between “mapping” as that term in used in claim 1 and Swartz’s use of UPC is unpersuasive as to error in the rejection. No other arguments challenging the rejection having been made, we will affirm the rejection of claim 1 and claims 2-4, 6, 8-12 that depend from it. Claim 13 Two arguments are made challenging the rejection of claim 13. The second argument (App. Br. 15-16) – that a patentable distinction exists between “mapping” as that term in used in claim 1 and Swartz’s use of UPC – is unpersuasive for reasons already discussed. The other argument is that Swartz does not teach “indexing recipes based on the universal product codes” (claim 13). App. Br. 12-15. The argument is unpersuasive. The rejection is under §103, not §102, and in that regard, the Examiner has taken the position that this would have been obvious over the Swartz disclosure of “filtering the recipes provided to said customer based upon said customers’ dietary needs or profile (see col 26, line 65 - col 27, line 10; col 27, lines 60-67).” Answer 7. See also Answer 22. The Appellants do not explain the distinction between “indexing” as that term is used in the claims and Swartz’s filtering procedure and we see none. The ordinary and customary meaning of “indexing” is to make a list as in an alphabetical list. See Webster’s New World Dictionary (3rd Ed. 1988.)(Entry Appeal 2011-005337 Application 10/943,802 8 for “index.”) That is what one of ordinary skill in the art would expect Swartz’s filtering procedure to accomplish. No other arguments challenging the rejection having been made, we will affirm the rejection of claim 13 and claims 14-22 that depend from it. Claim 23 The only argument challenging the rejection of claim 23 (App. Br. 17- 18) is that a patentable distinction exists between “mapping” as that term is used in claim 23 and Swartz’s use of UPC. That argument was addressed above with respect to the challenge of the rejection of claim 1 and, for reasons already discussed, was found unpersuasive. No other arguments challenging the rejection having been made, we will affirm the rejection of claim 23 and claims 24 and 27-29 that depend from it. Claim 29 The only argument challenging the rejection of claim 29 (App. Br. 18- 19) is that a patentable distinction exists between “mapping” as that term is used in claim 29 and Swartz’s use of UPC. That argument was addressed above with respect to the challenge of the rejection of claim 1 and, for reasons already discussed, was found unpersuasive. No other arguments challenging the rejection having been made, we will affirm the rejection of claim 29 and claims 30-35 that depend from it. Appeal 2011-005337 Application 10/943,802 9 Claim 36 The only argument challenging the rejection of claim 36 (App. Br. 19- 20) is that a patentable distinction exists between “mapping” as that term is used in claim 36 and Swartz’s use of UPC. That argument was addressed above with respect to the challenge of the rejection of claim 1 and, for reasons already discussed, was found unpersuasive. No other arguments challenging the rejection having been made, we will affirm the rejection of claim 36 and claims 37-44 that depend from it. The rejection of claims 5 and 7 under 35 U.S.C. §103(a) as being unpatentable over Owens, Swartz, and Fine. We also shall sustain the standing § 103 rejection of dependent claims 5 and 7 as being unpatentable over Owens, Swartz, and Fine since the Appellants have not challenged such with any reasonable specificity, thereby allowing claims 5 and 7 to stand or fall with parent claim 1 (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)). The rejection of claims 45-50 under 35 U.S.C. §102(b) as being anticipated by Owens. The rejection of claims 45-48 and 50 has not been addressed. Accordingly, we will summarily sustain the rejection of those claims. As to claim 49, the Appellants argue that Owens does not teach the controller of claim 45 further “adapted to link recipes based on at least one of UPC barcodes and text strings” (claim 49). App. Br. 22. The Examiner initially took the position that this is described in Fig. 62 of Owens. Figure 62 is reproduced at App. Br. 23. However, according to the Appellants, Appeal 2011-005337 Application 10/943,802 10 while “Figure 62 does show bar codes . . . No recipes are shown.” App. Br. 23. The Examiner has since relied on Fig. 55 of Owens – which shows a link within the text string “Try our new Lemon Chicken recipe.” The Reply Brief does not dispute this. Accordingly, we will sustain the rejection. CONCLUSIONS The rejections of claim 13 under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement; claims 1-4, 6, 8- 24, and 27-44 under 35 U.S.C. §103(a) as being unpatentable over Owens and Swartz; claims 5 and 7 under 35 U.S.C. §103(a) as being unpatentable over Owens, Swartz, and Fine; and, claims 45-50 under 35 U.S.C. §102(b) as being anticipated by Owens are affirmed. DECISION The decision of the Examiner to reject claims 1-24 and 27-50 is affirmed. AFFIRMED Klh Copy with citationCopy as parenthetical citation