Ex Parte 6298332 et al

Patent Trial and Appeal Board

May 16, 2013

90011244 (P.T.A.B. May. 16, 2013)

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.
90/011,244 09/20/2010 6298332 124838.00035 1684
28049 7590 05/17/2013
PATE PIERCE & BAIRD
Post Office Box 520812
SALT LAKE CITY, UT 84152-0812
EXAMINER
LEE, CHRISTOPHER E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/17/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ETAGZ, INC.
____________

Appeal 2013-001408
Reexamination Control 90/011,244
Patent 6,298,332 B1
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and DENISE
M. POTHIER, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
Patent owner (Appellant) appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 11 and 16. We have jurisdiction under 35
U.S.C. §§ 134(b) and 306.

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STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
by Michael L. Wokasch on behalf of Flambeau, Inc. of United States Patent
6,298,332 (the ’332 Patent) issued to David R. Montague on October 2,
2001 and filed May 6, 1999. Oral hearing scheduled for February 20, 2013
was waived (Decision on Petition, dated January 22, 2013). Presently,
claims 11 and 16 are rejected.

Claim 11 on appeal reads as follows:
An article comprising:
a label for labeling a product offered for sale;
a computer readable medium integrated with the label for storing
operational and executable data structures, the data structures being
configured to be readable by a first computer, associated with a purchaser of
the product, and comprising;
vendor data associated with a source of a product comprising
instructions executable by the first computer to present to the purchaser a
presentation provided from the vendor;
profiling data comprising instructions executable by the first computer
to obtain information corresponding to the purchaser and relating to the
vendor; and
linking data comprising instructions executable to control
communication of the first computer with a second computer associated with
the vendor.

(App. Br., Claims App’x. 1)

The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Microsoft Corp., Windows 95 CD-ROM, August 24, 1995
(“Windows 95”) and Andrew Schulman, “Inside the Windows 95
Registration Wizard,” September 20, 1995 (“Windows Registration”).
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The Examiner rejects claim 16 under 35 U.S.C. § 102 as anticipated
by U.S. Patent No. 5,153,842 (“Dlugos”).

ISSUE
Did the Examiner err in rejecting claims 11 and 16?

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966).
“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).

ANALYSIS
Claim 11
Appellant argues that the combination of Windows 95 and Windows
Registration Reference fails to disclose or suggest “labeling a product
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offered for sale” (App. Br. 10). We disagree with Appellant for at least the
reasons set forth by the Examiner (Ans. 7-10).
For example, Windows 95 discloses a CD-ROM that is labeled as
“Microsoft Windows 95” (see Windows 95). The CD-ROM depicted in
Windows 95 contains a label and one of ordinary skill in the art would have
understood that the Microsoft Windows 95 operating system, being a
consumer product, would have been offered for sale. In other words, the
Microsoft Windows product is offered for sale and contains a label.
Appellant has not provided a sufficient showing of a difference between a
consumer product that would have been offered for sale to a consumer that
contains a label as disclosed by Windows 95 and the claim feature of
labeling a product offered for sale.
Appellant argues that the combination of Windows 95 and Windows
Registration Reference fails to disclose or suggest that “the ‘article’ [is]
separate and distinct from the ‘product’” (App. Br. 10), that “the operating
system of the Windows 95 Reference cannot be separated from the CD-
ROM” (App. Br. 12), and that no part of the CD-ROM in Windows 95 is a
label because the CD-ROM “is the product itself” (App. Br. 14). Claim 11
recites an “article” that comprises a label for labeling a product and a
computer readable medium integrated with the label. Appellant has not
demonstrated that claim 11 requires that an article be separate from a
product. Nor has Appellant demonstrated that claim 11 requires that an
operating system be separated from a CD-ROM. In any event, we disagree
with Appellant for at least the reasons set forth by the Examiner (see, e.g.,
Ans. 19-25).
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For example, Windows 95 discloses such an “article” that comprises a
label (e.g., the label “Microsoft Windows 95” imprinted on the “product” of
Windows 95 operating system) and a computer readable medium (e.g., a
CD-ROM) that is integrated with the label (i.e., the label is imprinted on the
surface of the CD-ROM and forms an “integrated” unit). Appellant has not
sufficiently demonstrated a difference between a label integrated with (or
imprinted on) a CD-ROM as disclosed by Windows 95 and an article
comprising a label integrated with a computer readable medium.

Claim 16
Appellant argues that Dlugos fails to disclose a product label or “the
use of its label as a product label” (App. Br. 20). Claim 16 recites providing
a label for securing to products. We disagree with Appellant for at least the
reasons set forth by the Examiner (Ans. 25).
For example, Dlugos discloses that a “label 2 is attached to parcel P”
(see e.g., col. 5, ll. 60-61; Figs. 4 and 5). Appellant has not indicated a
difference between a label being attached to a product as disclosed by
Dlugos and a label being secured to a product as recited in claim 16.
Appellant argues that Dlugos fails to disclose “a computer readable
medium as a label” (App. Br. 22). We disagree with Appellant for at least
the reasons set forth by the Examiner (Ans. 25-27).
For example, the Examiner points out that the label of Dlugos
contains “a computer readable medium (i.e., Memory 104 of Fig. 2)” (Ans.
26). Appellant does not indicate a difference between the memory of the
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label of Dlugos and a computer readable medium. In both cases, a memory
component is readable by a computer.
Appellant argues that Dlugos fails to disclose “vendor data” (App. Br.
25-26). We disagree with Appellant for at least the reasons set forth by the
Examiner (Ans. 28-30).
For example, as the Examiner points out, Dlugos discloses
information including “name and address of sender” (col. 1, l. 12) and
“information stored therein by the manufacturer, distributor or owner” (col.
3, ll. 55-56). Appellant does not point out sufficient differences between
vendor data as recited in claim 16 and data (e.g., name and address of sender
or information by the manufacturer) that pertains to a “vendor” (e.g., a
sender or manufacturer).
Appellant argues that Dlugos fails to disclose a label that is readable
(App. Br. 24-25). We disagree with Appellant for at least the reasons set
forth by the Examiner (Ans. 30).
For example, as the Examiner points out, Appellant has not
demonstrated that claim 16 requires that a label be “readable.” Instead,
claim 16 merely recites a label “for securing to products” and that
“comprises the computer readable medium.” As described above, we agree
with the Examiner that Dlugos discloses these features.
Appellant argues that Dlugos fails to disclose a label directed toward
end-user purchasers (App. Br. 26). We disagree with Appellant for at least
the reasons set forth by the Examiner (Ans. 30-31).
For example, as the Examiner points out, Appellant does not
demonstrate that claim 16 recites that the label is “directed toward end-user
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purchasers.” Instead, claim 16 recites a label for securing to products and
that comprises a computer readable medium. Claim 16 also recites
distributing the label and product to a purchaser. As described above, we
agree with the Examiner that Dlugos discloses a label attached (or
“secured”) to a product and that the label comprises a computer readable
medium (e.g., a memory). Dlugos also discloses distributing the label and
product to a purchaser (e.g., “the label accompanies the order to its
destination” (col. 8, ll. 30-31)). Appellant does not indicate a difference
between distributing the label and product to a purchaser and distributing the
label and product to its destination.

CONCLUSION
The Examiner did not err in rejecting claim 11 and 16.

DECISION
The Examiner’s decision to reject claim 11 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Windows 95 and Windows
Registration and claim 16 under 35 U.S.C. § 102 as anticipated by Dlugos is
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).

AFFIRMED

cu

Appeal 2013-001408
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Patent 6,298,332 B1

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Pate Pierce & Baird
P.O. Box 520812
Salt Lake City, UT 84152

Third Party Requester:

Quarles & Brady, LLP
33 E. Main St.
Suite 900
P.O. Box 2113
Madison, WI 53071