Ex Parte Brown et al

Board of Patent Appeals and Interferences

Jun 25, 2009

10210079 (B.P.A.I. Jun. 25, 2009)

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS M. BROWN, RICHARD T. EVANS, and
MARY B. WILCOXEN
____________________

Appeal 2009-000556
Application 10/210,079
Technology Center 3600
____________________

Decided:1 June 25, 2009
____________________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000556
Application 10/210,079

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 (2002) from a Final
Rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
Appellants invented inventory control systems for a material handling
system having both automatic and manual controls (Spec., p. 1, ll. 10-12).
Claim 1, reproduced below, is further illustrative of the claimed
subject matter:
1. A system for managing staged material in
a processing facility, the system scanning material
entering and exiting the system, comprising:
an inventory database containing data
structures to record the material entering and
exiting a staging area of the processing facility and
to record location assignment data of the material;
and
a staging area controller which accesses the
inventory database for tracking and managing the
material entering and exiting the staging area of
the processing facility,
wherein a substantially accurate inventory of
staged material is maintained by the system.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Radican US 6,148,291 Nov. 14, 2000
Rosenberg US 6,418,416 B1 Jul. 9, 2002
Rash US 2002/0104323 Aug. 8, 2002
Markham US 2003/0158795 Aug. 21, 2003

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The Examiner rejected claims 1-3, 5, 7 and 10-12 under 35 U.S.C.
§ 102(e) as being anticipated by Rosenberg; rejected claim 6 under § 103(a)
as being unpatentable over Rosenberg in view of Rash; rejected claims 4, 8,
9 and 19-23 under § 103(a) as being unpatentable over Rosenberg in view of
Markham; and rejected claims 13-18 under § 103(a) as being unpatentable
over Rosenberg in view of Markham and Radican.

ISSUES
Did the Appellants show the Examiner erred in finding that controller
125 of Rosenberg corresponds to the staging area controller, which accesses
the inventory database for tracking and managing the material entering and
exiting the staging area of the processing facility, as recited in independent
claim 1, because controller 125 does not manage the material entering and
exiting the staging area?
Did the Appellants show the Examiner erred in finding that the sort
option 344 of Rosenberg corresponds to the sorter discharge sensor, for
scanning and sorting the material entering the staging area, as recited in
dependent claim 3?
Did the Appellants show the Examiner erred in finding that cabinet
110 of Rosenberg corresponds to the manual receipt station, for receiving
the material manually into the staging area, as recited in dependent claim 5?
Did the Appellants show the Examiner erred in finding that sort
option 344 using unique identification strings of Rosenberg corresponds to
sorting the material by material ID, as it enters the staging area, as recited in
dependent claim 12?
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Did the Appellants show the Examiner erred in finding that the
maintenance interval table, maintenance status database, and manual
dispatch form of Rash correspond to the manual dispatch station, for
releasing the material manually from the staging area, as recited in
dependent claim 6?
Did the Appellants show the Examiner erred in finding that there was
proper motivation to combine the hand-held scanner of Markham with
Rosenberg to render obvious dependent claim 8?
Did the Appellants show the Examiner erred in finding that there was
proper motivation to combine the belts and wires of Markham with cabinet
110 of Rosenberg to render obvious a system comprising at least one
conveyor for discharging and inducting the material, to and from the staging
area, as recited in dependent claim 9?
Did the Appellants show the Examiner erred by failing to establish a
prima facie case of obviousness that a combination of Rosenberg and
Markham renders obvious the subject matter of dependent claims 22 and 23?

SUMMARY OF THE DECISION
We sustain the rejections of claims 1, 2, 5-8, 10 and 11.
We do not sustain the rejections of claims 3, 4, 9 and 12-23.
We also use our authority under 37 C.F.R. § 41.50(b) to enter a new
grounds of rejection: claim 6 is rejected under 35 U.S.C. § 102(e) as being
anticipated by Rosenberg.

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FINDINGS OF FACT
Specification
Appellants invented inventory control systems for a material handling
system having both automatic and manual controls (p. 1, ll. 10-12).
Materials are transported from overhead conveyors 100 to floor-level
conveyors 108, which are then sorted based on scanned information and
directed to one of several breakouts 110 (p. 7, ll. 6-9).

Rosenberg
Rosenberg discloses system 100 including customer site 105 having
three cabinets 110 each with a number of pockets or compartments that
enclose and secure articles that are dispensed in a controlled manner (Fig. 1;
col. 3, ll. 56-61).
Electronically actuated locks facilitate access to the articles enclosed
within cabinet 110. When actuated, the locks release the doors so that
articles are freely accessible (col. 4, ll. 1-5).
Input mechanisms, such as pressure sensitive switches, disposed near
each compartment 115 of cabinet 110 collect inventory information as
articles are removed from or stocked within cabinet 110. The switches may
be “take” and “return” switches that are actuated each time an article is
removed from or stocked within the cabinet 110. The cabinet 110 may also
include an input device 120 such as a touch screen or a keyboard to track
articles removed or added to the cabinet 110 (col. 4, ll. 10-20).
Controller 125 is used to manage access to cabinet 110, collect
inventory and administrative data, and interface with other nodes that are
accessible through input device 120 or modem to communication with
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communications server 130, server 140 or distributed network 145 (Internet)
(col. 4, ll. 28-41).
One or more databases 155 are used to archive and store
administrative and inventory data and information from controllers 125. The
information may include user identification strings (col. 5, ll. 11-21; 28-37).
A consumption report 340 may be generated by selecting a
consumption report option 340, entering a department or user identification
at 342, and selecting a date range and sort option at 344 (col. 7, ll. 37-40).

Markham
Markham discloses an intelligent manufacturing system, a process
control system including one or more sensors capable of generating an alarm
in response to an event that results in one of waste, machine delay, or
decrease product quality, a data logger associated with the process control
system for obtaining event parameters associated with the event, a database
on a server for recording event parameters obtained by the data logger, and a
reporting system cooperatively associated with the database for reporting
productivity parameters regarding the process derived at least in part from
the event parameters ([0008]).
The system includes a raw materials database where material label
information is transferred to the raw materials database from label bar codes,
located on the raw materials, using bar code scanners ([0082]).
A package or shipment of a raw material is labeled with smart tags
that may emit a radio signal carrying an electronic code which may either
directly convey information about the raw materials, or provide an
identifying code, which may be used to retrieve information about the raw
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materials in a database. The code on the smart tag may be read by a scanner,
which may be a portable device that is brought near to the smart tag to
obtain a reading, or the reader may be a stationary device, which reads the
smart tags as they are brought to the reader ([0153]).
Smart tags may be embedded in wires, belts, or other machine
components to identify papermaking fabric positions that incur waste or
delay, material problems related to the paper web in contact with the
papermaking fabric, or failure or degraded performance due to wear or other
mechanical problems ([0153]-[0154]).

PRINCIPLES OF LAW
Claim Construction
The claims themselves provide substantial guidance as to the meaning
of particular claim terms. The context in which a term is used in the asserted
claim are highly instructive. Phillips v. AWH Corp., 415 F.3d 1303, 1314
(Fed. Cir. 2005) (internal citations omitted).
While the specification can be examined for proper context of a claim
term, limitations from the specification will not be imported into the claims.
CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir.
2005).

Obviousness
Anticipation is the epitome of obviousness. Connell v. Sears Roebuck
& Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (quoting In re Fracalossi, 681
F.2d 792, 794 (CCPA 1982).
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ANALYSIS
Tracking and Managing
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that controller 125 of Rosenberg does not correspond
to the staging area controller, which accesses the inventory database for
tracking and managing the material entering and exiting the staging area of
the processing facility, as recited in independent claim 1, because controller
125 does not manage the material entering and exiting the staging area (App.
Br. 5-8). In addition to tracking the addition or removal of articles from
cabinet 110, controller 125 also collects inventory and administrative data of
the articles, and stores the data on one or more databases 155. These
activities of controller 125 correspond to “managing” the material entering
and exiting the staging area.
Appellants assert that claims 2, 7, 10 and 11 are allowable for the
same reasons independent claim 1 is allowable (App. Br. 8). As the
rejection of independent claim 1 is sustained, the rejection of claims 2, 7, 10
and 11 are also sustained.

Scanning and Sorting
We are persuaded of error on the part of the Examiner by Appellants’
argument that sort option 344 of Rosenberg does not correspond to the sorter
discharge sensor, for scanning and sorting the material entering the staging
area, as recited in dependent claim 3 (App. Br. 8-9). Sort option 344 allows
a user to generate a consumption report option 340 of article inventory data
in a preferred format. Perhaps if “sorting the material entering the staging
area” was recited in a vacuum, Rosenberg’s virtual sorting of data related to
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material entering the staging area via sort option 344 could conceivably
correspond to the aforementioned aspects of claim 3.
However, claim 3 additionally recites that the sorter discharge sensor
also scans the material entering the staging area. Thus, when properly
construed in context of the rest of claim 3, sorting requires physical sorting
of the material entering the staging area. See Phillips v. AWH Corp., 415
F.3d at 1314. This construction is supported by the Appellants’ specification
at p. 7, ll. 6-9 where materials are “sorted” by physically directing them to
one of several breakouts 110. As sort option 344 does not physically sort
material entering the staging area, we do not sustain the rejection of claim 3.
As claim 4 depends from claim 3, we also do not sustain the rejection
of claim 4.

Manual Receipt Station
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that cabinet 110 of Rosenberg does not correspond to
the manual receipt station, for receiving the material manually into the
staging area, as recited in dependent claim 5 (App. Br. 9-10). Appellants
argue that (1) the manual receipt station is used to accept containers that
arrive from other sources other than the incoming conveyor 100 and (2) that
the specification discloses manual receipt station 114 as a computing device.
However, none of these aspects are set forth in the claim. See CollegeNet,
Inc. v. ApplyYourself, Inc., 418 F.3d at 1231.
Claim 5 recites that the manual receipt station receives material
manually into the staging area. Cabinet 110 of Rosenberg receives articles
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manually into pockets or compartments. Thus, the limitations of claim 5 are
satisfied by cabinet 110 of Rosenberg.

Material ID
We are persuaded of error on the part of the Examiner by Appellants’
argument that sort option 344 using unique identification strings of
Rosenberg corresponds to sorting the material by material ID, as it enters the
staging area, as recited in dependent claim 12 (App. Br. 10-12). Rosenberg
does not disclose unique identification strings for materials that would
correspond to the claimed material ID. Rosenberg does disclose a user
identification strings at col. 5, l. 30, however, the user identification strings
are identified with individual users, and not with materials.
As claims 13-18 depend from claim 12, we also do not sustain the
rejections of claims 13-18.

Manual Dispatch Station
The Appellants assert that the maintenance interval table, maintenance
status database, and manual dispatch form of Rash do not correspond to the
manual dispatch station, for releasing the material manually from the staging
area, as recited in dependent claim 6 (App. Br. 12-14). However, for the
same reasons as set forth above with respect to claim 5, cabinet 110 of
Rosenberg does correspond to the claimed manual dispatch station. Thus,
Rosenberg anticipates the subject matter of claim 6 and thus the subject
matter of claim 6 would have been obvious over the teaching of Rosenberg
because anticipation is the epitome of obviousness. Because our rationale
for rejecting claim 6 differs from that set forth by the Examiner, we
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denominate our affirmance of the rejection of this claim as a new ground of
rejection under 37 C.F.R. § 41.50(b).

Hand-Held Scanner
We are not persuaded of error on the part of the Examiner by
Appellants’ argument there was no proper motivation to combine the hand-
held scanner of Markham with Rosenberg to render obvious dependent
claim 8 (App. Br. 15-16). Rosenberg discloses electronically actuated locks,
pressure sensitive switches, and input device 120 to track articles removed
or added to the cabinet 110. Markham discloses portable scanners to update
its database of raw materials. Markham discloses that its scanners may be
preferable because the scanners are capable of generating an alarm in
response to waste, machine delay, or decrease in product quality. These
advantages are generally applicable to all the scanners disclosed in
Markham. Accordingly, one of ordinary skill would be motivated to replace
the locks, switches, and input device 120 of Rosenberg with the portable
scanners of Markham to also realize the advantages disclosed in Markham.

Conveyor
We are persuaded of error on the part of the Examiner by Appellants’
argument that there was no reason to combine the belts and wires of
Markham with cabinet 100 of Rosenberg to render obvious a system
comprising at least one conveyor for discharging and inducting the material,
to and from the staging area, as recited in dependent claim 9 (App. Br. 16-
18). The Examiner asserts that there is motivation to combine by stating as
follows:
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The motivation to combine will direct to an intelligent
manufacturing system, a data logger associated with the process
control system for obtaining event parameters associated with
the event, a database on a server for recording even parameters
obtained by the data logger, and a reporting system
cooperatively associated with the database for reporting
productivity parameters regarding the process derived at least in
part from the even parameters.
(Ex. Ans. 9). However, none of these aspects provide motivation or a reason
for combining belts and wires with a cabinet. For example, it is unclear why
a data logger associated with a process control system for obtaining event
parameters associated with the event would provide any reason for
combining belts and wires with a cabinet. The data logger is directed to a
virtual system, while belts, wires, and cabinets are directed to physical
systems. The same is true for the database on a server and the reporting
system in the intelligent manufacturing system of Markham. None of these
items are related to belts, wires, and cabinets, as their purported benefits,
recording event parameters and reporting productivity parameters, have
nothing to do with combining belts and wires with a cabinet. Indeed, the
alleged motivation does not even mention any of belts, wires, conveyors and
cabinets, the items that are being combined to arrive at the obviousness
rejection.
Accordingly, because the alleged motivation has nothing to do with
belts, wires, and cabinets, a proper prima facie case of obviousness has not
been established with respect to claim 9, and thus the rejection of claim 9
cannot be sustained.
Independent claim 19 recites “entering the material onto an
automation equipment conveyor.” This aspect of independent claim 19 was
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rejected under the same rationale as the subject matter of dependent claim 9
(Ex. Ans. 9-10). Accordingly, for the same reasons as set forth above with
respect to claim 9, we also do not sustain the rejection of independent claim
19.
As claims 20-21 depend from claim 19, we also do not sustain the
rejections of claims 20-21.

Claims 22 and 23
We are persuaded of error on the part of the Examiner by Appellants’
argument that the Examiner has failed to establish a prima facie case of
obviousness that a combination of Rosenberg and Markham renders obvious
the subject matter of dependent claims 22 and 23 (App. Br. 21-22). The
Examiner grouped the rejections of claims 22 and 23 with the rejections of
claims 19-21 (Ex. Ans. 9-10). However, claims 22 and 23 depend from
independent claim 1, not independent claim 19, and recite subject matter
different from the subject matter of claims 19-21. Specifically, claim 22
recites “wherein the managing the material comprises routing the material to
a particular location within a staging area.” Claim 23 recites “wherein the
managing the material comprises displaying a storage location for the
material before the material is moved to the storage location.” Neither of
these aspects are set forth in the purported rejection of claims 19-23, nor are
they set forth anywhere else in the Examiner’s Answer.

CONCLUSION
The Appellants have failed to show that the Examiner erred in
rejecting claims 1, 2, 5-8, 10 and 11.
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The Appellants have shown that the Examiner erred in rejecting
claims 3, 4, 9 and 12-23.

DECISION
The decision of the Examiner to reject claims 1, 2, 5-8, 10 and 11 is
affirmed.
The decision of the Examiner to reject claims 3, 4, 9 and 12-23 is
reversed.
We also use our authority under 37 C.F.R. § 41.50(b) to enter a new
grounds of rejection: claim 5 is rejected under 35 U.S.C. § 102(e) as being
anticipated by Rosenberg.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Regarding the new ground of rejection, Appellants must, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of
the following options with respect to the new ground of rejection, in order to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . [; or]
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a).
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AFFIRMED-IN-PART, 37 C.F.R. § 41.50(b)

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JRG

GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
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