Ex Parte Connell et al

Patent Trial and Appeal Board

May 9, 2016

11782177 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111782,177 07/24/2007 Jonathan H. Connell II
45092 7590 05/11/2016
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
ALBANY, NY 12207
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920070220US 1 7143
EXAMINER
STANFORD, CHRISTOPHERJ
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
05/11/2016 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN H. CONNELL, II,
MYRON D. FLICKNER, NORMAN HAAS,
ARUN HAMPAPUR, and
SHARATHCHANDRA U. PANKANTI
Appeal2014-008868
Application 11/782, 177
Technology Center 2800
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-008868
Application 11/782, 177
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 4--7, 10-13, and 16-20, which constitute all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to "a secure checkout system." (Abstract.)
Claim 1, reproduced below, is illustrative:
1. A secure checkout method, comprising:
scanning a barcode associated with an item using a dedicated
handheld barcode scanner;
determining an identity of the item based on the barcode;
capturing a plurality of images of the item and an ambient
background using a dedicated image camera device attached to
the handheld barcode scanner, wherein the capturing includes
waiting for a low motion of the item, taking a dark image and a
bright image of the item and segmenting the item from the
ambient background to obtain a captured image of an entirety of
a two dimensional projection of the item, and wherein the
handheld barcode scanner and the image camera device are
separate devices adjacent to each other;
determining whether the identity is consistent with an
appearance of the item as determined from the plurality of
images;
registering a discrepancy if the identity is inconsistent with
the appearance;
1 Appellants identify International Business Machines Corporation as the
real party in interest. (See App. Br. 1.)
2
Appeal2014-008868
Application 11/782, 177
providing a notification of the discrepancy, the notification
being at least one of a visual notification or an audible
notification; and
determining, by a secure checkout system, a true identity of
the item if the identity is inconsistent with the appearance to
determine, by the secure checkout system, whether the
discrepancy is either error or fraud.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jennings et al.
Havens et al.
Rosenbaum
US 6,592,033 B2 July 15, 2003
US 2003/0222147 Al Dec. 4, 2003
US 7,422,147 B2 Sept. 9, 2008
THE REJECTIONS
1. Claims 1, 4--7, 10-13, and 16-20 stand rejected under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. (See Final Act. 2-5.)
2. Claims 1, 4--7, 10-13, and 16-20 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Rosenbaum, Havens, and Jennings.
(See Final Act. 5-13.)
APPELLANTS' CONTENTIONS
Appellants argue that the rejections were improper for the following
reasons:
1. The Specification as filed does support the feature "capturing a
plurality of images of the item." (See App. Br. 6-7.)
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Application 11/782, 177
2. "[T]he Examiner fails, inter alia, to show that the proposed
combination teaches or suggests, 'determining, by a secure checkout system,
a true identity of the item if the identity is inconsistent with the appearance
to determine, by the secure checkout system, whether the discrepancy is
either error or fraud." (See App. Br. 7-14.)
ANALYSIS
Written Description
The written description requirement is satisfied where the disclosure
"reasonably conveys to those skilled in the art that the inventor had posses-
sion of the claimed subject matter as of the filing date." Ariad Pharm., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
Here, the Examiner "assert[ s] that 'capturing a plurality of images of
the item and an ambient background using a dedicated image camera device
attached to the handheld barcode scanner' is not supported by the original
disclosure." (Ans. 3.) We do not agree.
Paragraph 24 of Appellants' Specification states that "an image of
item 11 will be captured by image capture device 16" where "[t]he sequence
of capturing and processing the image is typically as follows: wait for low
motion of item 11; take dark and bright pictures; segment item 11 from
background 20; extract at least one visual feature of item 11 and determine
the identity based on those visual features." (Spec. i-f 24.) The image cap-
ture device 16 is the camera, and the passage describes the use of both dark
and bright pictures. The description of segmenting item 11 from the
background shows that the pictures include both the item and a portion of
the background.
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Application 11/782, 177
Because we conclude that the Specification adequately conveys
possession of the claimed subject matter, we do not sustain the rejections of
claims 1, 4--7, 10-13, and 16-20 under Section 112, first paragraph.
Obviousness
The dispute regarding the Section 103 rejection of claim 1 concerns
the claim language "determining, by a secure checkout system, a true iden-
tity of the item if the identity is inconsistent with the appearance to deter-
mine, by the secure checkout system, whether the discrepancy is either error
or fraud."
Appellants argue that "a physical examination of the bar code and
packaging by an operator, as in Rosenbaum, is not equivalent to Appellants'
claimed method of the system determining the true identity of the item."
(App. Br. 8.) Appellants similarly argue that "Jennings fails to remedy the
above deficiencies of Rosenbaum" because "even Jennings relies upon an
operator to examine the item." (Id. at 9.)
The question is whether the claim excludes human intervention and
we side with the Examiner in finding that it does not. While the determining
in claim 1 is done "by a secure checkout system" nothing in the claim pre-
vents a human from being involved as part of that secure checkout system.
In fact, a review of the Specification reveals that the disclosed embodiment
contemplates human involvement. In particular, Figure 1 depicts "secure
checkout system 1 O" as including Item 18 which, although not mentioned in
the written description, appears to be a human wrist and hand. Appellants'
argument that an operator cannot be part of the "secure checkout system" is
not consistent with the disclosure.
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Application 11/782, 177
For these reasons, we sustain the Section 103(a) rejection of claim 1,
as well as the rejections of claims 4--7, 10-13, and 16-20, for which no
additional arguments are offered. 2
DECISION
The rejections of claims 1, 4--7, 10-13, and 16-20 under 35 U.S.C.
§ 112, first paragraph, are reversed.
The rejections of claims 1, 4--7, 10-13, and 16-20 under 35 U.S.C.
§ 103(a) are 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)(l )(iv).
AFFIRMED3
2 Appellants' repeated, bare assertions that various claims are patentable "as
well due to their own unique features" do not constitute arguments on the
merits. See 37 C.F.R. 41.37(c)(iv) ("A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.").
3 Because we have affirmed at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R.
§ 41.50(a)(l).
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