Ex Parte Robinson et al

Board of Patent Appeals and Interferences

Feb 9, 2012

10943802 (B.P.A.I. Feb. 9, 2012)

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).
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Application 10/943,802

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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

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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.
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Application 10/943,802

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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.

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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
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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
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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
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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.

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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,
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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

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