Ex Parte Can et al

Board of Patent Appeals and Interferences

Jan 26, 2009

09944383 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte NECMETTIN CAN, CHARLES K. CROVITZ, 8
DEBBI M. TURNER, and RAYFORD K. WHITLEY 9
___________ 10
11
Appeal 2008-2987 12
Application 09/944,383 13
Technology Center 3600 14
___________ 15
16
Decided: January 26, 2009 17
___________ 18
19
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 20
BIBHU R. MOHANTY, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL 23
STATEMENT OF THE CASE 24
Necmettin Can, Charles K. Crovitz, Debbi M. Turner, and Rayford K. Whitley 25
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 35-26
37, 48, and 51, the only claims pending in the application on appeal. 27
Appeal 2008-2987
Application 09/944,383

2
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 1
We AFFIRM. 2
The Appellants invented a method of using radio frequency identification in 3
retail operations (Specification: paragraph [0002]). 4
An understanding of the invention can be derived from a reading of exemplary 5
claim 35, which is reproduced below [bracketed matter and some paragraphing 6
added]. 7
35. A method for tracking consumer interest in merchandising 8
locations in a retail store, the method comprising: 9
[1] associating a radio frequency identification (RFID) tag with 10
each garment of a plurality of garments in the retail store; 11
[2] associating each RFID tag with style information of its 12
associated garment; 13
[3] scanning the RFID tagged garments to determine their 14
merchandising locations on a sales floor of the retail store; 15
[4] scanning the RFID tagged garments that are taken to a fitting 16
room of the retail store by a plurality of customers; 17
[5] scanning the RFID tagged garments that are purchased after 18
being taken to the fitting room; 19
[6] subtracting the RFID tagged garments that are purchased after 20
being taken to the fitting room from the RFID tagged garments that 21
are taken to the fitting room to yield tried-on-but-not purchased RFID 22
tagged garments; and 23
[7] displaying, for a tried-on-but-not-purchased RFID tagged 24
garment, 25
[a] the frequency with which the tried-on-but-not purchased 26
RFID tagged garment is tried on, 27
[b] style information of the tried-on-but-not-purchased RFID 28
tagged garment, and 29
Appeal 2008-2987
Application 09/944,383

3
[c] the merchandising location of the tried-on-but-not-1
purchased RFID tagged garment. 2
3
This appeal arises from the Examiner’s Final Rejection, mailed July 6, 2006. 4
The Appellants filed an Appeal Brief in support of the appeal on August 13, 2007. 5
An Examiner’s Answer to the Appeal Brief was mailed on November 16, 2007. 6
PRIOR ART 7
The Examiner relies upon the following prior art: 8
DeTemple US 5,572,653 November 5, 1996
Issacman US 6,127,928 October 3, 2000
Suzuki US 6,313,745 B1 November 6, 2001
9
REJECTIONS 10
Claims 35 and 37 stand rejected under 35 U.S.C. § 112, 1st paragraph as failing 11
to comply with the written description requirement. 12
Claims 35-37, 48, and 51 stand rejected under 35 U.S.C. § 103(a) as 13
unpatentable over Suzuki, Issacman, and DeTemple. 14
ISSUES 15
The issues pertinent to this appeal are 16
• Whether the Appellants have sustained their burden of showing that the 17
Examiner erred in rejecting claims 35 and 37 under 35 U.S.C. § 112, 1st 18
paragraph as failing to comply with the written description requirement. 19
Appeal 2008-2987
Application 09/944,383

4
• Whether the Appellants have sustained their burden of showing that the 1
Examiner erred in rejecting claims 35-37, 48, and 51 under 35 U.S.C. 2
§ 103(a) as unpatentable over Suzuki, Issacman, and DeTemple. 3
The pertinent issue turns on whether Suzuki describes a subtracting step that 4
yields a tried-on-by-not-purchased value and whether Suzuki correlates sales 5
information with product location information and fitting room data. 6
FACTS PERTINENT TO THE ISSUES 7
The following enumerated Findings of Fact (FF) are believed to be supported 8
by a preponderance of the evidence. 9
Facts Related to Appellants’ Disclosure 10
01. The present invention contains software for correlating the fitting 11
room data with other data, such as sales data (Specification paragraph 12
[0028] and Original Claim 27). 13
02. The fitting room data can be correlated to sales data to distinguish 14
which products that are tried on are purchased (Specification paragraph 15
[0083]). 16
03. The fitting room data, specifically the tried-on garments data, can also 17
be correlated to the garment’s location within the store as a frequency 18
value (Specification paragraph [0083]). 19
Suzuki 20
04. Suzuki is directed towards a system and method for tracking and 21
recognizing merchandise items carried into a fitting room by a customer 22
for providing more efficient customer assistance (column 1, lines 8-10). 23
Appeal 2008-2987
Application 09/944,383

5
05. Each merchandise item has an electronic tag for storing the item’s 1
product identifier (column 2, lines 29-31 and column 4, lines 24-26). 2
The wireless tag is used to determine the location of the product, 3
including into which fitting room the merchandise has been taken 4
(column 2 lines 30-35 and figure 9). 5
06. The merchandise product information includes a style, color, and size 6
field (column 6, lines 36-39 and figure 4). 7
07. The system maintains a purchase and trial history associated with a 8
customer visit. The customer trial information includes a date/time, 9
fitting room number, and product identification numbers of each of the 10
items the customer tried on. The trial history additionally includes 11
information whether an item taken to the fitting room was purchased 12
(column 8, lines 42-58, column 9 and lines 9-25, and figure 9). 13
08. The system maintains a purchase and trial history associated with a 14
product. The information associated with the product purchase and trial 15
history includes date/time, fitting room number, and customer id 16
(column 9, lines 16-39 and figure 11). 17
09. Popular items in the store are determined by frequency of an item 18
taken to the fitting room. This enables the additional ordering of popular 19
items. Additionally, sales employees are provided with additional sales 20
training based on the popular items data (column 2, lines 66-67 and 21
column 3, lines 1-8). 22
10. A display terminal is provided so that an in-store clerk can view the 23
fitting room data (column 6, lines 11-13). 24
Appeal 2008-2987
Application 09/944,383

6
11. Suzuki is concerned with solving the problem of tracking and 1
analyzing a customer’s behavior, including a customer’s preference, 2
tastes, and shopping habits, in order to recommend products to the 3
customer (column 1, lines 60-66 and column 2, lines 10-15). 4
Issacman 5
12. Issacman is directed towards devices and methods for locating 6
documents and other objects using a computer controlled RF system 7
(column 1, lines 9-13) in order to analyze data regarding the location of 8
objects and the retrieval of these objects (column 1, lines 45-50). 9
13. Issacman uses RFID tags attached to objects and scanners to scan the 10
tags to track the location of objects (column 4, lines 48-60 and column 8, 11
lines 57-60) 12
DeTemple 13
14. DeTemple is directed to an item tracking system which tracks the 14
position of shopping carts and baskets, and displays pricing, advertising, 15
and other information at remote display modules (column 1, lines 20-16
25). 17
15. DeTemple uses a plurality of price display tags that are mounted 18
throughout the store at various merchandise locations (column 3, lines 8-19
10). Each tag is enabled to communicate with a platform computer 20
through a transmitter (column 3, lines 13-15). An IR transceiver grid 21
determines the exact location of the merchandise (column 3, lines 18-22
26). 23
Appeal 2008-2987
Application 09/944,383

7
16. Customers have a card associated with them. The card has 1
information about the customer associated to it, including demographic 2
information and products purchased (column 8, lines 21-30). 3
17. The tracking system includes data on the products purchased and the 4
shopping cart that is used in purchasing the products (column 9, lines 23-5
45). The path of the customer can be tracked based on the tags on the 6
shopping cart and the products purchased by the customer (column 9, 7
lines 10-15 and column 9, lines 29-33). This gives an indication of the 8
traffic areas of the shopping floor (column 9, lines 37-38). Reports 9
based on collected data, including product price, product location, 10
advertising, customer demographics, store and product location, and 11
environment, can be generated to optimize sales (column 9, lines 37-40). 12
18. DeTemple is concerned with solving the problem of analyzing sales 13
data and customer behavior (column 2, lines 54-64). 14
Facts Related To The Level Of Skill In The Art 15
19. Neither the Examiner nor the Appellants has addressed the level of 16
ordinary skill in the pertinent arts of sales and marketing. We will 17
therefore consider the cited prior art as representative of the level of 18
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 19
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill 20
in the art does not give rise to reversible error ‘where the prior art itself 21
reflects an appropriate level and a need for testimony is not shown’”) 22
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 23
158, 163 (Fed. Cir. 1985)). 24
Appeal 2008-2987
Application 09/944,383

8
Facts Related To Secondary Considerations 1
20. There is no evidence on record of secondary considerations of non-2
obviousness for our consideration. 3
PRINCIPLES OF LAW 4
Claim Construction 5
During examination of a patent application, pending claims are given 6
their broadest reasonable construction consistent with the specification. In 7
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. 8
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 9
Limitations appearing in the specification but not recited in the claim are not 10
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. 11
Cir. 2003) (claims must be interpreted “in view of the specification” without 12
importing limitations from the specification into the claims unnecessarily) 13
Although a patent applicant is entitled to be his or her own lexicographer of 14
patent claim terms, in ex parte prosecution it must be within limits. In re Corr, 15
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such 16
definitions in the Specification with sufficient clarity to provide a person of 17
ordinary skill in the art with clear and precise notice of the meaning that is to be 18
construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although 19
an inventor is free to define the specific terms used to describe the invention, this 20
must be done with reasonable clarity, deliberateness, and precision; where an 21
inventor chooses to give terms uncommon meanings, the inventor must set out any 22
uncommon definition in some manner within the patent disclosure so as to give 23
one of ordinary skill in the art notice of the change). 24
Appeal 2008-2987
Application 09/944,383

9
Obviousness 1
A claimed invention is unpatentable if the differences between it and the 2
prior art are “such that the subject matter as a whole would have been obvious at 3
the time the invention was made to a person having ordinary skill in the art.” 4
35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1729-30 5
(2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 6
In Graham, the Court held that that the obviousness analysis is bottomed on 7
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be 8
determined; [(2)] differences between the prior art and the claims at issue are to be 9
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383 10
U.S. at 17. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734. “The 11
combination of familiar elements according to known methods is likely to be 12
obvious when it does no more than yield predictable results.” KSR, at 1739. 13
“When a work is available in one field of endeavor, design incentives and 14
other market forces can prompt variations of it, either in the same field or a 15
different one. If a person of ordinary skill can implement a predictable variation, 16
§ 103 likely bars its patentability.” Id. at 1740. 17
“For the same reason, if a technique has been used to improve one device, 18
and a person of ordinary skill in the art would recognize that it would improve 19
similar devices in the same way, using the technique is obvious unless its actual 20
application is beyond his or her skill.” Id. 21
“Under the correct analysis, any need or problem known in the field of 22
endeavor at the time of invention and addressed by the patent can provide a reason 23
for combining the elements in the manner claimed.” Id. at 1742. 24
Appeal 2008-2987
Application 09/944,383

10
ANALYSIS 1
Claims 35 and 37 rejected under 35 U.S.C. § 112 1st paragraph 2
The Examiner rejected claims 35 and 37 under 35 U.S.C. § 112, 1st paragraph 3
for failing to provide a written description of the present invention (Answer page 4
3). Specifically, the Examiner found that the Specification and the original claims 5
failed to provide a written description of the “subtraction” step such that one of 6
ordinary skill in the art would have recognized that the Appellants had possession 7
of the invention (Answer page 3, last paragraph). 8
The Appellants contend that claims 35 and 37 are fully supported by the 9
Specification (Br. page 6, last paragraph) such that it reasonably conveys to the 10
skilled artisan that the Appellants had possession of the invention. The Appellants 11
point to paragraph [0028] lines 2-8, paragraph [0083] lines 8-13, and original claim 12
27 to provide support that the Appellants had possession of the invention at the 13
time of filing. Specifically, the Appellants contend that from a disclosure of 14
correlating fitting room data and sales data to identify products that are frequently 15
tried on, but seldom purchased (Specification paragraph [0028] lines 2-8), it would 16
be clear to one of ordinary skill in the art that such a correlation would involve 17
subtracting sales data from fitting room data (Br. page 9, first paragraph). 18
We agree with the Appellants. The Specification explicitly describes software 19
for identifying products that are frequently tried on, but seldom purchased (FF 01). 20
From this disclosure, one of ordinary skill in the art would have understood that 21
that a value for items tried-on-but-not purchased would be derived by subtracting 22
the set of items-tried-on-and-purchased from the set of items tried on. This 23
operation is known as set subtraction in the arts of computer science and discrete 24
Appeal 2008-2987
Application 09/944,383

11
mathematics. As such, one of ordinary skill in the art would have recognized that 1
the Appellants had possession of the invention at the time. 2
The Appellants have sustained their burden of showing that the Examiner erred 3
in rejecting claims 35 and 37 under 35 U.S.C. § 112, 1st Paragraph as failing to 4
comply with the written description requirement. 5
Claims 35-37, 48, and 51 rejected under 35 U.S.C. § 103(a) as unpatentable over 6
Suzuki, Issacman, and DeTemple 7
The Appellants argue these claims as a group. 8
Accordingly, we select claim 35 as representative of the group. 9
37 C.F.R. § 41.37(c)(1)(vii) (2007). 10
The Examiner found that Suzuki described all of the limitations of claim 35 11
except for limitation [3], limitation [7a], and limitation [7c] (Answer page 4). The 12
Examiner found that Issacman described limitation [3] (Answer page 5). The 13
Examiner found that it would have been obvious to modify Suzuki to include this 14
teaching of Issacman in order to determine an object’s location (Answer page 5). 15
The Examiner further found that DeTemple described limitations [7a] and [7c] 16
(Answer page 5) and it would have been obvious to modify Suzuki and Issacman 17
to include DeTemple data collecting and manipulation, including correlating 18
products with their store location, in order to better understand customer behavior 19
and increase sales (Answer page 5). 20
The Appellants contend (1) that Suzuki fails to describe the feature of 21
subtracting purchased garments from tried on garments to yield tried-on-but-not-22
purchased garments (Br. page 10, last paragraph) and Issacman and DeTemple fail 23
to cure this deficiency (Br. page 11, first paragraph), (2) the Examiner did not cite 24
Appeal 2008-2987
Application 09/944,383

12
proper motivation to combine Suzuki, Issacman, and DeTemple (Br. page 13-14), 1
(3) Suzuki, Issacman, and DeTemple fail to describe correlating fitting room data 2
and sales data (Br. Page 15, second paragraph), (4) Suzuki, Issacman, and 3
DeTemple fail to describe the displaying step (limitation [7]) (Br. Page 16, first 4
paragraph), (5) Suzuki and DeTemple fail to describe correlation information for a 5
plurality of customers (Br. Page 16, last paragraph and Br. 17, first paragraph), and 6
(6) DeTemple fails to describe any correlation between consumer interest in a 7
product and the product location (Br. page 18, first paragraph). 8
The Appellants first contend that (1) Suzuki fails to describe the feature of 9
subtracting purchased garments from tried on garments to yield tried-on-but-not-10
purchased garments (Br. page 10, last paragraph) and Issacman and DeTemple fail 11
to cure this deficiency (Br. page 11, first paragraph). We disagree with the 12
Appellants. Claim 35 recites the term “subtracting”, which is sufficiently broad to 13
encompass the functionality of set subtraction. Set subtraction is the operation of 14
subtracting the members of one set from another. Suzuki describes the collection 15
of fitting room data, where the fitting room data includes data values for items tried 16
on and a flag for items that were purchased subsequent to being tried on (FF 07). 17
In other words, Suzuki collects both values needed to perform the subtraction step. 18
The flag for items that are purchased effectively subtracts the members that were 19
purchased from those that were not by removing the members that are flagged. 20
The processes of flagging data is itself a set subtraction operation that separates 21
(i.e. subtracts) the flagged members from those not flagged. As such, Suzuki 22
describes subtracting purchased garments from tried on garments to yield tried-on-23
but-not-purchased garments. The Examiner has not relied on Issacman and 24
DeTemple to describe this limitation and, as such, the contention that Issacman and 25
Appeal 2008-2987
Application 09/944,383

13
DeTemple fail to describe this limitation does not persuade us of error on the part 1
of the Examiner. The reason is because the Appellants respond to the rejection by 2
attacking the references separately, even though the rejection is based on the 3
combined teachings of the references. Nonobviousness cannot be established by 4
attacking the references individually when the rejection is predicated upon a 5
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 6
1097, 231 USPQ 375, 380 (Fed. Cir. 1986). 7
Appellants next contend that (2) the Examiner did not cite proper motivation to 8
combine Suzuki, Issacman, and DeTemple (Br. page 13-14). We disagree with the 9
Appellants. DeTemple is concerned with tracking objects and merchandise in 10
order to generate reports to optimize sales (FF 14 and FF 17). DeTemple 11
accomplishes this by tracking merchandise with IR transmitters and an IR 12
transceiver grid to pinpoint the location of merchandise (FF 15). Issacman is also 13
concerned with the tracking of objects in order to analyze data regarding the 14
location of objects and the retrieval of these objects (FF 12). Issacman 15
accomplishes this by attaching radio frequency ID (RFID) tags to objects and using 16
scanners to track the location of the objects (FF 13). Suzuki is concerned with the 17
tracking of merchandise (FF 04 and FF 05) and one of ordinary skill in the art 18
would have been motivated to combine the teachings of DeTemple and Issacman 19
with Suzuki in order to facilitate the tracking of objects in order to analyze data 20
and optimize sales. As such, Suzuki, DeTemple, and Issacman are concerned with 21
the same problem and one of ordinary skill in the art would have been lead to 22
combine their teachings. 23
The Appellants further contend that (3) Suzuki, Issacman, and DeTemple fail 24
to describe correlating fitting room data and sales data (Br. Page 15, second 25
Appeal 2008-2987
Application 09/944,383

14
paragraph). We disagree with the Appellants. Suzuki describes collecting 1
information on items that are tried-on and whether these items are purchased (FF 2
07 and FF 08). Suzuki further correlates this information to sales information by 3
determining which items are popular items and whether sales personnel are 4
adequately trained to sell these popular items (FF 09). Thus, Suzuki is correlating 5
sales data with tried-on data. 6
The Appellants further contend that (4) Suzuki, Issacman, and DeTemple fail 7
to describe the displaying step (limitation [7]) (Br. Page 16, first paragraph). We 8
disagree with the Appellants. As discussed above, Suzuki describes a tried-on-but-9
not-purchased value. Suzuki further describes displaying this information in an in-10
store display panel, including other fitting room data (FF 10). The other fitting 11
room data includes popular items, which are the items that are frequently tried on 12
(FF 09), style information associated with products (FF 06), and merchandise 13
location information such as which room the items are in (FF 05). These values 14
are recited as displayed in limitation [7] and are described by Suzuki. As such, 15
Suzuki describes the displaying step, as recited in limitation [7] of claim 35. 16
Appellants further contend that (5) Suzuki and DeTemple fail to describe 17
correlation information for a plurality of customers (Br. Page 16, last paragraph 18
and Br. 17, first paragraph). We disagree with the Appellants. Suzuki describes 19
maintaining a trial and purchase history for each product (FF 08). This is 20
distinguished from the purchase and trial information maintained for the customer 21
(as discussed above). Suzuki describes maintaining an audit log for product 22
purchase and trial which includes information on a customer id that describes 23
which customer tried-on the product (FF 08). Thus, every customer that takes the 24
item to a fitting room to try on is logged. As such, Suzuki provides trial 25
Appeal 2008-2987
Application 09/944,383

15
information for more than just a single customer and correlates trial information 1
for a plurality of customers. The Appellants further contend that DeTemple fails to 2
describe fitting room data as a measure of consumer interest (Br. page 18, last 3
paragraph). The Examiner does not rely on DeTemple for describing this 4
limitation, as acknowledged by the Appellants (Br. page 18, last paragraph) and, as 5
such, this contention does not persuade us of error on the part of the Examiner 6
because the Appellants respond to the rejection by attacking the references 7
separately, even though the rejection is based on the combined teachings of the 8
references. Again, nonobviousness cannot be established by attacking the 9
references individually when the rejection is predicated upon a combination of 10
prior art disclosures. 11
The Appellants next contend that (6) DeTemple fails to describe any 12
correlation between consumer interest in a product and the product location (Br. 13
page 18, first paragraph). We disagree with the Appellants. DeTemple describes 14
collecting data by placing tags on shopping carts and products (FF 17). Products 15
are tracked from their position in the store through the use of grids (FF 15) and this 16
gives information on the traffic patterns on a shop floor (FF 17). Furthermore, 17
reports can be generated to correlate product location and sales (FF 17). Sales 18
reports indicated consumer interest in a product. As such, DeTemple describes a 19
correlation between product location and consumer interest in a product. 20
The Appellants have not sustained their burden of showing that the Examiner 21
erred in rejecting claims 35-37, 48, and 51 under 35 U.S.C. §103(a) as 22
unpatentable over Suzuki, Issacman, and DeTemple. 23
Appeal 2008-2987
Application 09/944,383

16
CONCLUSIONS OF LAW 1
The Appellants have sustained their burden of showing that the Examiner erred 2
in rejecting claims 35 and 37 under 35 U.S.C. § 112, 1st paragraph as failing to 3
comply with the written description requirement. 4
The Appellants have not sustained their burden of showing that the Examiner 5
erred in rejecting claims 35-37, 48, and 51 under 35 U.S.C. § 103(a) as 6
unpatentable over the prior art. 7
DECISION 8
To summarize, our decision is as follows: 9
• The rejection of claims 35 and 37 under 35 U.S.C. § 112, 1st paragraph as 10
failing to comply with the written description requirement is not sustained. 11
• The rejection of claims 35-37, 48, and 51 under 35 U.S.C. § 103(a) as 12
unpatentable over Suzuki, Issacman, and DeTemple is sustained. 13
No time period for taking any subsequent action in connection with this appeal 14
may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 15
16
AFFIRMED 17
18
vsh 19
20
PAUL, HASTINGS, JANOFSKY & WALKER LLP 21
875 15TH STREET, NW 22
WASHINGTON, DC 20005 23