Ex parte Begum

Board of Patent Appeals and Interferences

Oct 2, 1998

08090285 (B.P.A.I. Oct. 2, 1998)

Application for patent filed July 12, 1993. According1
to the appellant, this application is a continuation-in-part
of Application 07/821,079, filed January 16, 1992.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PAUL G. BEGUM

_____________
Appeal No. 96-0300
Application 08/090,2851
______________
ON BRIEF
_______________
Before THOMAS, LEE and TORCZON, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0300
Application 08/090,285
Page 2 of the answer lists a reference to Havens, which2
has not been relied on in any rejection stated in the final
rejection and the answer. As such, it has not been listed
here and has not been considered. Note In re Hoch, 428 F.2d
1341, 1342 n. 3, 166 USPQ 406, 407 n. 3 (CCPA 1970).
2
Appellant has appealed to the Board from the examiner’s
final rejection of claims 2 to 11 and 13 to 26, which
constitute all the claims remaining in the application.
Representative claim 8 is reproduced below:
8. An electronic, shopping-cart, informational device
comprising:
an ergonomically designed display handle having two hand
grip portions; a central display unit portion with the hand
grip portions being arranged on each side of the display unit
portion, the hand grip portions having ends connectable to a
shopping cart frame, and the display unit portion having a
display screen and user control means for displaying selected
information on the display screen, wherein the user control
means comprises thumb operated buttons located on each side of
the display screen proximate the hand grip portions for
scrolling information in the display screen using a thumb
while the user is able to maintain a grip on the hand portion
of the display handle with the hand operating thumb; automatic
means for periodically displaying promotional product
advertisements on the display screen; and unobtrusive cue
means apart from the display screen for directing a user’s
attention to the display screen when a promotional product
advertisement is displayed on the display screen.
The following references are relied on by the examiner:2
Hayasaka 4,786,889 Nov. 22,
1988
Appeal No. 96-0300
Application 08/090,285
We note in passing that dependent claim 13 depends from3
canceled claim 12. Some form of claim 12 appears to have been
incorporated into an early version of claim 8 by amendment.
Therefore, we construe claim 13 for purposes of our review as
apparently intended to have been dependent from present claim
8. Additionally, we note that the features recited in
dependent claims 9 through 11 relating to "the non-
informational cue means" does not appear in the present
version of independent claim 8. Therefore, there is no
antecedent basis for the noted language in dependent claims 9
through 11. Again, for purposes of our review, we consider
the noted feature in claims 9 to 11 as relating to the
presently claimed "unobtrusive cue means" of claim 8.
3
Vela et al. (Vela) 4,882,724 Nov. 21,
1989
Malec et al. (Malec) 4,973,952 Nov. 27,
1990
Tannehill et al. (Tannehill) 5,158,310 Oct.
27, 1992
All claims stand rejected under 35 U.S.C. § 103. As to3
claims 5 to 7, 18 to 20 and 22 to 26, the examiner relies upon
Vela alone, with the addition of Tannehill as to claims 2 to 4
and 17. On the other hand, to reject claims 8, 9, 11 and 13
to 16, the examiner relies upon the combination of Tannehill
in view of Vela, with the addition of Hayasaka as to claim 10.
Finally, the examiner considers claim 21 obvious over Malec
alone.
Appeal No. 96-0300
Application 08/090,285
4
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs and the answers for
the respective details thereof.
OPINION
Turning first to the rejection of independent claim 22
and its various dependent claims in light of Vela alone, as
well as the separate rejection of additional dependent claims
of claim 22 in light of Vela and Tannehill collectively, we
reverse the rejection of all these claims.
At the top of page 4 of the examiner’s answer, the
examiner recognizes that Vela does not disclose that the
control means of independent claim 22 is thumb operated while
gripping the hand grip. The examiner considers that it would
have been obvious to the artisan that the size and location of
the display unit, the size of the user’s thumbs and the
location of placement of one’s hands on the hand grip would
have been arbitrary design choices to the extent recited in
independent claim 22, since a user may be capable of operating
the control means while gripping the hand grip if desired.
The examiner further considers the exact location of the
Appeal No. 96-0300
Application 08/090,285
5
display unit to be arbitrary since the location will depend
upon the size and shape of the display device.
With respect to this reasoning we disagree simply because
of the nature of the detailed recitations of the relationship
of the thumb operated control means located on the display
unit proximate at least one side of the display screen and
also proximate the hand grip portion, with further recitations
in claim 22 requiring that the thumb operating hand grip the
hand grip portions for user selection of information and for
all user selectable information functions. Thus, the
examiner’s position must be reversed. The extent and nature
of detailed recitations in claim 22 go well beyond the
examiner’s rationale of arbitrary design choices detailed
earlier.
Figure 10 of Vela shows that the plastic case 245 is
connected to the handle of the cart by means of a mid section
268. To the extent the examiner’s reasoning may be
interpreted such that it would have been obvious to the
artisan to vary the height and/or arrangement of the mid
section 268 of the display case 245 in Fig. 10, we observe
that col. 36, lines 48 through 50 state that "the case 245
Appeal No. 96-0300
Application 08/090,285
6
extends upwardly from the handle 262 so as to avoid
interference during nesting of the shopping carts for storage
purposes." Certainly, without additional teachings from other
references or a more persuasive rationale of the examiner, we
find that based on these teachings the position of the
examiner alternatively would not have been sustainable in the
absence of some other evidence or line of reasoning which
would have indicated a different physical arrangement to
permit or overcome the nesting teaching just noted.
Turning next to the rejection of independent claim 8 and
its respective dependent claims in light of Tannehill in view
of Vela, with additional dependent claim 10 further rejected
on the basis of this combination of references, further in
view of Hayasaka, we reverse the rejection of each of these
claims. As to this rejection the examiner’s analysis begins
with Tannehill with additional complementary teachings urged
to be found in Vela in the same portions just discussed with
respect to this reference alone as to claim 22.
As to independent claim 8, the examiner’s position is
expressed at pages 7 and 8 of the answer. The examiner’s
reasoning appears to make reference to different embodiments
Appeal No. 96-0300
Application 08/090,285
7
shown in Figs. 19-20 and 21-22. The noted "non-informational
cue means" identified by the examiner does not presently
appear in independent claim 8 but presently takes the form of
"unobtrusive cue means". Since it does not matter for our
analytical purposes whether the teachings and suggestions of
Vela and Tannehill are considered in any order, the examiner-
noted teachings and suggestions in Tannehill do not overcome
the deficiencies of Vela and vice versa. Again, there are
significant recitations in independent claim 8 relating to the
thumb operated buttons being located on each side of the
display screen proximate the hand grip portions for operating
display functions with the thumb while the user maintains a
hand grip on the display handle. Even given the teaching
identified by the examiner at col. 14, lines 15 to 25 of
Tannehill that the location of a display means may be placed
in other locations about the cart, to the extent this location
in Tannehill relates to the embodiments shown in Figs. 17 and
18, we conclude that the artisan would not have been led among
the collective teachings and showings of both references to
have arrived at the presently claimed subject matter detailed
Appeal No. 96-0300
Application 08/090,285
8
to the extent we just recited in the identified portion of
claim 8.
Additionally, we note that the further statement at col.
14, lines 51 through 57 indicating that the display unit 260
in Figs. 17 and 18 may be utilized in conjunction with other
types of display units illustrated in earlier Figs. 1 through
16 in this reference, there is no indication how the artisan
would have modified the arrangement depicted in the embodiment
shown in Fig. 11, which depicts a mechanically oriented rotary
display unit integrated into the handle of a shopping cart.
Again, these broad teachings would not have led the artisan to
the subject matter as a whole of independent claim 8 on
appeal.
Finally, as to the rejection of claim 21 under 35 U.S.C.
§ 103 in light of Malec alone, we sustain this rejection as
set forth by the examiner in the answer. As noted by the
examiner at page 13 of the answer, "appellant failed to
present any arguments relevant to the basis of the rejection,"
the details of which have been set forth at pages 10 and 11 of
the answer. Page 3 of the reply brief makes reference to the
discussion in the principal Brief as to this rejection at page
Appeal No. 96-0300
Application 08/090,285
9
12 of the brief. Appellant’s collective arguments as to this
rejection at pages 11 and 12 of the brief do not address the
particulars of the rejection as stated by the examiner, but
instead simply assert that the examiner is mixing two
subsystem portions of the same reference, an unpersuasive
argument.
Appellant’s arguments do recognize that Malec does update
the storage message data, however. This is consistent with
the examiner’s position. Appellant’s position does not argue
that the reference does not teach the claim limitations as
argued by the examiner within 35 U.S.C. § 103. The updating
feature is not recited with any degree of specificity such as
to distinguish over the teachings isolated by the examiner and
generally admitted by appellant to be in the Malec patent.
The updating feature in this reference is consistent with the
teachings of the summary of the invention of Malec, the normal
operations of Figs. 1 through 5 of this reference, and
particularly the edit operation at col. 6, lines 25 through 33
and the ability of the in-store computer to update program and
data segments in the cart-based electronic units 514 depicted
in Fig. 10 and discussed beginning at col. 16, line 11. To
Appeal No. 96-0300
Application 08/090,285
10
the extent recited in claim 21 the updating function may occur
at anytime; it is not recited to be a function of a cart
passing near a message sending unit or relate to any signal
received from a message sending unit proximate the location of
a promoted product.
Since we have reversed the rejection of independent claim
8 and its respective dependent claims and reversed the
rejection of independent claim 22 and its respective dependent
claims, we have reversed the rejection of claims 2 through 11,
13 through 20 and 22 through 26. Since we have sustained the
rejection of independent claim 21, the decision of the
examiner is therefore affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 96-0300
Application 08/090,285
11
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMESON LEE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
sd
Richard Esty Peterson
BIELEN, PETERSON & LAMPE
1990 North California Blvd.
Suite 720
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