Ex Parte Bonner et al

Patent Trial and Appeal Board

Feb 28, 2017

12481816 (P.T.A.B. Feb. 28, 2017)

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.
12/481,816 06/10/2009 Brett Brace well Bonner 094176-0392467 5932
14469 7590 03/02/2017
Pillsihnrv Winthrnn Shaw Pittman T T PfFCmap.r Rr Shinrl
EXAMINER
PO Box 10500
McLean, VA 22102
DESAI, RESHA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
03/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRETT BRACEWELL BONNER, TITUS ARTHUR JONES,
GREGORY MICHAEL MENZ, JOHN EDWARD OSBORNE II,
DION BRENT PERKINS, and CHRISTOPHER TODD HJELM
Appeal 2014-0085011
Application 12/481,8162
Technology Center 3600
Before ANTON W. FETTING, KEVIN W. CHERRY, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—5, 7—16, and 34—39. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Jan. 31, 2014), Reply Brief (“Reply Br.,” filed July 18,
2014), and Specification (“Spec.,” filed June 10, 2009), and to the
Examiner’s Subsequent Answer (“Ans.,” mailed June 6, 2014) and Final
Office Action (“Final Act.,” mailed Sept. 6, 2013).
2 According to the Appellants, the real party in interest is SUNRISE R&D
HOLDINGS, LLC. Appeal Br. 2.
Appeal 2014-008501
Application 12/481,816
STATEMENT OF THE CASE
The Appellants’ invention relates generally to “acquiring shopper
insights upon use of purchased products from a store” and, more
particularly, to “acquiring shopper insights[,] . . . influencing shoppers by
receiving product feedback from shoppers[,] and transmitting influential
messages to shoppers after the shoppers have used and experienced a
product.” Spec. 12.
Claim 1 (Appeal Br. 10, Claims App.) is the only independent claim
on appeal, is representative of the subject matter on appeal, and is
reproduced below (bracketing and paragraphing added for reference):
1. A system of tracking a shopper’s use of purchased
products from a store, said system comprising:
[(a)] a shopper profile for each said shopper using said
system;
[(b)] an out-of-store communication network having an
Internet connection;
[(c)] a wireless transportable handheld end device
attachable to said out-of-store communication network,
[(cl]) the wireless transportable handheld end
device including a product scanning device configured to be used
outside of the store to scan readable media associated with each
of said purchased products so as to produce scanned product
data; and
[(d)] a commerce server in operative communication with
said wireless transportable handheld end device through said
Internet and through said out-of-store communication network,
[(dl)] whereby said commerce server receives a
shopper’s feedback about said shopper’s use of said purchased
products,
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[(d2)] said shopper's feedback being transmitted by
said shopper through said wireless transportable handheld end
device and
[(d3)] whereby said wireless transportable handheld
end device is used by said shopper to receive information from
said commerce server and to transmit information to said
commerce server.
REJECTIONS
Claims 1—5, 36, and 37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Raimbeault (US 2009/0106085 Al, pub. Apr. 23,
2009), Attia (US 2002/0016750 Al, pub. Feb. 7, 2002), and Brinkerhoff
(US 6,963,848 Bl, iss. Nov. 8, 2005). Final Act. 3.
Claims 7—16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Raimbeault, Attia, Brinkerhoff, and Bonner
(US 2009/0017764 Al, pub. Jan. 15, 2009). Id. at 9.
Claims 34 and 35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Raimbeault, Attia, Brinkerhoff, and Engstrom
(US 2004/0235460 Al, pub. Nov. 25, 2004). Id. at 14.
Claims 38 and 39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Raimbeault, Attia, Brinkerhoff, and Clarke
(US 5,502,636, iss. Mar. 26, 1996). Id. at 16.
ANALYSIS
Claims 1—5, 3 6, and 3 7
The Appellants argue independent claims 1—5, 36, and 37 as a group.
See Appeal Br. 4, 7. We consider claim 1 as representative of the group.
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Claims 2—5, 36, and 37 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Appellants contend that the Examiner’s rejection of claim 1 is in
error because “any reasonable hypothetical combination of Raimbeault,
Attia and Brinkerhoff does not disclose, teach, or suggest the combination of
all of the features recited by claim 1Appeal Br. 4—5. Specifically, the
Appellants argue that:
Brinkerhoff does not disclose, teach, or suggest a commerce
server that “receives a shopper’s feedback about said shopper’s
use of said purchased products, said shopper’s feedback being
transmitted by said shopper through said wireless transportable
handheld end device and whereby said wireless transportable
handheld end device is used by said shopper to receive
information from said commerce server and to transmit
information to said commerce server,” as recited by claim 1.
Id. at 6. The Appellants further argue that Brinkerhoff does not teach
providing feedback wirelessly because “any feedback that is provided by the
customer is provided through a personal computer connected to the
Internet.” Id.
Upon careful review of the Appellants’ arguments in the Appeal and
Reply Briefs, we are not persuaded that the Examiner erred in the rejection
of claim 1 for at least the reasons below.
The Appellants’ arguments are unpersuasive at least because they are
arguments against the art Brinkerhoff individually when the Examiner relies
on the combination of Raimbeault and Brinkerhoff for the limitations. The
test for obviousness is not what any one reference would have suggested, but
rather what the combined teachings of the references would have suggested
to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 426
(CCPA 1981) (“[0]ne cannot show non-obviousness by attacking references
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individually were, as here, the rejections are based on combinations of the
references.”) (citation omitted). The Examiner finds, in relevant part, that
Raimbeault discloses the system of tracking of claim 1 comprising the
wireless handheld end device as recited in limitation (c), the commerce
server as recited in limitation (d), the commerce server receiving a shopper’s
feedback as partially recited in limitation (dl), the shopper’s feedback being
transmitted through the end device as recited limitation (d2), and the end
device being used by the shopper to receive and transmit information to the
commerce server as recited in limitation (d3). See Final Act. 3^4. The
Examiner cites to Brinkerhoff for disclosing receiving shopper’s feedback
about the shopper’s use of purchased products as partially recited in
limitation (dl), finding that one of ordinary skill in the art would modify the
system of Raimbeault to include receiving the feedback of Brinkerhoff “in
order for consumers to provide reviews, so that other consumers may take
these experiences into account when deciding what goods or services to
purchase.” Id. at 5—6 (citing Brinkerhoff, col. 1,11. 44—53). The Examiner
thus establishes a prima facie case of obviousness as the Examiner has
provided articulated reasoning with rational underpinning to support a legal
conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). The Appellants do not provide sufficient evidence or technical
reasoning to rebut these findings (see Appeal Br. 6), with which we agree.
We further find the Appellants’ arguments unpersuasive because the
rejection is not based on the bodily incorporation of Brinkerhoff s system
into Raimbeault’s system. “The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
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be expressly suggested in any one or all of the references.” In re Keller, 642
F.2d at 425; see also 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.”). Here, the Examiner relies on the
specific type of feedback as taught by Brinkerhoff to modify the feedback
received in Raimbeaulf s system.
In the Reply Brief, the Appellants newly argue that
[tjhere would have been no objective reason at the time of
Applicant's invention for one of ordinary skill in the art to have
modified the wireless device of Raimbeault in order for
consumers to provide reviews, as asserted by the Examiner in the
Final Office Action, at least for the reason that the wireless
device of Raimbeault is used by the shopper while still in the
store. Clearly, the shopper has not had a chance to evaluate the
product while still in the store.
Reply Br. 3. We note that this argument was not raised in the Appeal Brief
and is not responsive to an argument raised in the Examiner’s Answer. See
37 C.F.R. § 41.41(b)(2). Nonetheless, we find it unpersuasive at least
because Raimbeault specifically discloses that a wireless order entry feature
enables the user to shop anywhere via a portable wireless device such as a
cell-phone or PDA (personal digital computer) and that the user can shop
from home for pickup in a store (Raimbeault ]f]f 26, 27), and Brinkerhoff
specifically discloses that customers can use any general purpose computer
that has access to the Internet (Brinkerhoff, col. 9,11. 1 4). The Appellants
do not dispute that a cell-phone or PDA is a computer. Furthermore,
Raimbeault discloses that through the cell-phone or PDA, a customer can
enter such data so as to create, customize, and manage their personal profiles
including managing their accounts, preference histories, and alerts
(Raimbeault || 20, 22), and view historic data including purchases and
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shopping experiences (id. 123). Raimbeault does not discourage or
discredit a shopper from entering data comprising feedback in the form of
reviews nor does Raimbeault prevent a shopper from providing feedback on
products already purchased while in the store or while shopping at home.
Therefore, we are not persuaded that the Examiner’s reasoning is
unreasonable.
Thus, we are not persuaded the Examiner’s rejection of claim 1 is in
error, and we sustain the Examiner’s rejection of independent claims 1 and
dependent claims 2—5, 36, and 37, which fall with claim 1.
Claims 7—16, 34, and 35
The Appellants contend that the Examiner’s rejections of claims 7—16,
34, and 35 are in error because Bonner and Engstrom do not cure the
deficiencies of the rejection of claim 1. Appeal Br. 7—8. Because we find
no deficiencies in the Examiner’s rejection of claim 1, we are not persuaded
the Examiner’s rejections of claims 7—16, 34, and 35 are in error.
Thus, we sustain the Examiner’s rejections of claims 7—16, 34, and 35
for the same reasons we sustain the Examiner’s rejection of claim 1.
Claims 38 and 39
The Appellants contend that the Examiner’s rejection of claims 38 and
39 is in error because Clarke does not cure the deficiencies of the rejection
of claim 1. Appeal Br. 8. Because we find no deficiencies in the
Examiner’s rejection of claim 1, we are not persuaded by this argument.
However, we are persuaded by the Appellants’ argument that the
combination of the prior art
does not disclose, teach, or suggest a wireless transportable
handheld end device that includes a product scanning device that
is configured to scan product coupons to produce scanned
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coupon data, as recited by claim 38, or a shopper profile that
includes the scanned coupon data, as recited by claim 39.
Id. at 8—9.
The Examiner finds that Raimbeault discloses a shopper profile, as
recited in limitation (a) of claim 1, and Attia discloses a wireless
transportable handheld device including a product scanning device
configured to scan readable media, as recited in limitation (cl) of claim 1.
Final Act. 4—5. The Examiner relies on Clarke for the scanning device to
scan product coupons to produce scanned data and wherein the shopper
profile includes the scanned product and coupon data, finding that one of
ordinary skill in the art would modify the device of Raimbeault and Attia to
include the scanning feature of Clarke “in order to determine normal
operational variation from ideal system behavior in order to allow additional
market research into the reasons for redemption or failure to redeem the
personalized coupons.” Id. at 16—17 (citing Clarke, col. 2,1. 65—col 3,1. 10).
Clarke discloses that, as consumers redeem coupons, the redemption
information/data is communicated to the coupon dispensing source and
collated and collected in a redemption database. Clarke, col. 2,1. 65—col. 3,
1. 2. The data can then be compared to the coupon database and the profile
database. Id. col. 3,11. 2—6.
However, we do not see, and the Examiner does not adequately
explain, where or how Clarke discloses that scanned media can include
product coupons or including the scanned data in a profile. Furthermore, we
do not see, and the Examiner does not adequately explain, how Clarke’s
redeeming of coupons, and communicating, collating, collecting, and
comparing of the redemption information would configure or modify the
scanning device of Attia to scan coupons, would modify the scanned media
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of Attia to include coupons and coupon data, or would modify the shopper
profile of Raimbeault to include the scanned coupon data.
Thus, we are persuaded the Examiner’s rejection of claims 38 and 39
is in error, and we do not sustain the Examiner’s rejection of claims 38 and
39.
DECISION
The Examiner’s rejections of claims 1—5, 7—16, and 34—37 under
35 U.S.C. § 103(a) are AFFIRMED.
The Examiner’s rejection of claims 38 and 39 under 35 U.S.C.
§ 103(a) is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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