Ex Parte GUPTA et al

Board of Patent Appeals and Interferences

Sep 15, 1998

07878100 - (D) (B.P.A.I. Sep. 15, 1998)

1 Application for patent filed May 4, 1992. According to
appellants, the application is a continuation-in-part of
Application 07/747,727, filed August 20, 1991.
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(2) is not binding precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte OM P. GUPTA,
ROBERT C. RICKETSON,
JACK F. BAILEY,
CAROL C. SHILEPSKY, and
ARNOLD C. SHILEPSKY
__________
Appeal No. 96-0125
Application 07/878,1001
__________
ON BRIEF
__________
Before JERRY SMITH, FLEMING, and CARMICHAEL, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
Appeal No. 96-0125
Application 07/878,100
2
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-26, which constitute
all the claims in the application. An amendment after final
rejection was filed on February 27, 1995 but was denied entry by
the examiner [Paper #16]. A second amendment after final
rejection was filed on April 13, 1995 and was entered by the
examiner [Paper #19]. This amendment resulted in the withdrawal
of a rejection under the second paragraph of 35 U.S.C. § 112.
The disclosed invention pertains to a method and
apparatus for promoting the sale of products to a customer based
upon the customer’s buying habits. Specifically, the invention
uses a rule-based method for communicating information regarding
products within a store to the customer as the customer is
indicating objects desired for purchase.
Representative claim 1 is reproduced as follows:
1. A system for promoting the sale of products to a
customer, comprising at least one remote unit, said remote unit
comprising:
a) means for inputting identification of a product desired
by a customer;
Appeal No. 96-0125
Application 07/878,100
3
b) means for storing data representative of said product
identification;
c) means for storing product specifications; and
d) processing means operatively connected to said means for
inputting product identification, to said means for storing data
representative of said product identification and to said means
for storing product specifications, said processing means being
programmed to select said identified product, a competing product
to said identified product or a complimentary product to said
identified product for promotion based upon rules for selecting a
product for promotion in response to said data representative of
said product identification wherein said processing means
accesses said stored product specifications and promotes a
product by displaying said store product specifications of said
product selected for promotion to said customer.
The examiner relies on the following references:
Humble 4,825,045 Apr. 25, 1989
Vela et al. (Vela) 4,882,724 Nov. 21, 1989
Schneider 5,083,638 Jan. 28, 1992
(filed Sep. 18, 1990)
“Ads On Wheels Roll Into Supermarkets,” Chain Store Age
Executive, Vol. 64, no. 9, pages 49 and 51 (September 1988)
(Chain Store)
Claims 1-26 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers the basic combination
of Vela in view of Humble with respect to claims 1-3, 5, 7, 8 and
17-25. Chain Store is added to the basic combination with
respect to claims 9-16 and 26. Schneider is added to the basic
combination with respect to claims 4 and 6.
Appeal No. 96-0125
Application 07/878,100
4
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answers for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answers.
It is our view, after consideration of the record before
us, that the examiner has not established the obviousness of the
invention as set forth in claims 1-26. Accordingly, we reverse.
We also enter a new ground of rejection against independent claim
1 using our authority under 37 CFR § 1.196(b). This new
rejection will be set forth in detail below.
We consider first the rejection of claims 1-3, 5, 7, 8
and 17-25 under 35 U.S.C. § 103 as being unpatentable over Vela
in view of Humble. These claims stand or fall together [brief,
Appeal No. 96-0125
Application 07/878,100
5
page 4]. Therefore, we will consider independent claim 1 as
representative of all the claims within this group.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part
Appeal No. 96-0125
Application 07/878,100
6
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
Vela is related to the claimed invention in that a remote
unit is attached to a customer’s shopping cart for providing
information to the customer as the customer traverses the
shopping premises. Vela provides two kinds of information to the
customer. First, in response to the selection of general items
to be purchased as shown in Figure 12, Vela provides a floor
display indicating where the items are located in the store
[Figure 13]. Second, based on the location of the customer
within the store, products are advertized to the customer which
are in the same general area as the customer. The products
promoted in Vela result from the location of the customer and are
not selected based on the products desired by the customer.
Humble suggests a system for providing information and/or
coupons to the customer at the point of checkout. At checkout
the items actually purchased are scanned by a universal product
code (UPC) reader. The products purchased result in the display
of information about the products purchased, competing products
or related products, and may result in the generation of coupons
Appeal No. 96-0125
Application 07/878,100
7
related to any of these products. In Humble, product
identification and message information occur at the point where
the customer is checking out from the store.
The examiner relies on Vela for teaching the invention of
claim 1 except for the failure to teach the selection of
competing or complementary products. The examiner relies on
Humble for providing the motivation to promote other products and
asserts that the modification of Vela to incorporate Humble’s
product promotion ideas would have been obvious to the artisan to
increase flexibility and effectiveness [answer, pages 4-5]. The
examiner also finds the rule-based selection process of claim 1
to be inherent in any computer run by a sequence of instructions.
Appellants argue that Vela does not suggest selecting the
promoted product based upon the products actually selected by the
customer. With respect to Humble, appellants argue that it is
simply a checkout add-on system which provides information too
late to affect the customer’s purchases. Appellants insist that
“[a]bsent the teachings of the Appellants’ disclosure, there is
no suggestion or teaching provided in the references to combine
the references. Even if they were combined, neither teaches a
rule-based system to present messages at the point of selection
Appeal No. 96-0125
Application 07/878,100
8
tailored to the specific purchases of a specific consumer”
[brief, page 7].
Although appellants’ arguments are not exactly
commensurate in scope with the invention of claim 1, and although
the examiner has given a reason why Humble’s product promotion
would be added to Vela’s system, we agree with appellants that
the teachings of Vela and Humble would not have been combined by
the artisan to derive the invention of claim 1 absent a desire to
achieve the claimed invention in hindsight.
The key feature of appellants’ invention is that messages
are sent to the customer promoting products based on rules for
selecting a product in response to the data indicating the
identification of a desired product. Vela never identifies a
specific product and products are promoted only in response to
the customer’s location. The only basis the examiner has for
delivering messages based on the products purchased is Humble’s
conventional system for conveying information to the customer
after the customer is finished shopping. The examiner’s
rationale for incorporating Humble’s teachings into Vela’s system
comes from appellants’ disclosure and not from the suggestions of
Vela or Humble.
Appeal No. 96-0125
Application 07/878,100
9
We note that the examiner has taken the position that any
computer operating under control of a program is rule-based.
Although the disclosure in this application attaches no special
significance to the concept of a rule-based selection of data, it
would be clear to the artisan that a rule-based selection system
cannot refer to the general program under which a computer
operates. Rather, claim 1 refers to the result of its
programming instead of the programming per se. Vela does not use
a rule-based method in delivering messages as asserted by the
examiner.
For all the reasons discussed above, we do not sustain
the rejection of claims 1-3, 5, 7, 8 and 17-25. Since neither
Chain Store nor Schneider makes up for the deficiencies in the
combination of Vela and Humble, we also do not sustain the
rejection of dependent claims 4, 6, 9-16 and 26. Therefore the
decision of the examiner rejecting claims 1-26 under 35 U.S.C.
§ 103 is reversed.
We make the following new ground of rejection using our
authority under 37 CFR § 1.196(b). Claim 1 is rejected under 35
U.S.C. § 103 as being unpatentable over the teachings of Humble
as cited above. Notwithstanding our decision above that the
Appeal No. 96-0125
Application 07/878,100
10
collective teachings of Vela and Humble would not have been
combined as proposed by the examiner, we nevertheless are of the
view that the invention as broadly recited in claim 1 is broad
enough to be suggested by the teachings of Humble by itself. As
we noted above in our consideration of the examiner’s rejection,
appellants’ arguments are not commensurate in scope with the
invention as recited in claim 1. We shall address the breadth of
claim 1 and provide our analysis as to why the invention of claim
1 would have been obvious in view of Humble.
Although claim 1 is written in “means plus function”
form, claims undergoing examination are given their broadest
reasonable interpretation consistent with the specification. In
re Donaldson, 16 F.3d 1189, 1194, 29 USPQ2d 1845, 1850 (Fed. Cir.
1994) (in banc). Based upon the record developed in this case so
far, we find nothing in claim 1 which patentably distinguishes
over what Humble alone suggests.
Appellants apparently rely on the claim term “remote” to
require that the unit be placed on a shopping cart. However,
claim 1 does not require that the remote unit be remote from a
checkout area. Appellants’ argument that “remote” requires that
the remote unit be at the point of selection is not commensurate
Appeal No. 96-0125
Application 07/878,100
11
in scope with claim 1. Claim 1 covers a unit that is remote from
practically anything.
Humble’s unit is contained at a checkout stand. There are
typically a plurality of such units at a plurality of checkout
stands as suggested by Humble. Any one of these units is remote
from all the other units. Given the broadest reasonable
interpretation of “remote,” Humble suggests a remote unit. An
item produced at checkout is an item “desired” by the customer,
and Humble’s device identifies the item. Humble’s data store 16
stores data representative of the identified product. The Humble
storage area also stores product specification information such
as brand name and size. Finally, Humble’s processing means
provides promotional data about the selected product, a competing
product or a complementary product as claimed [column 2, lines
40-65]. Humble also suggests a rule based system as recited in
claim 1 [column 1, lines 49-53; column 3, lines 16-34]. Thus,
Humble would appear to suggest every feature recited in claim 1
when claim 1 is given its broadest reasonable interpretation.
We recognize that the means plus function language of the
claims requires a consideration of factual issues which have not
been briefed in this case. Specifically, the apparatus
Appeal No. 96-0125
Application 07/878,100
12
corresponding to each of the claimed means should be interpreted
from the disclosure and compared to the apparatus of Humble. On
the present record we find that the means of claim 1 appear to be
obvious within the meaning of 35 U.S.C. § 103 in view of the
teachings of Humble. However, the structure which corresponds to
each of the claimed means is a question of fact which can be
disputed by appellants. This decision does not preclude
appellants from submitting additional evidence and/or arguments
which demonstrate that when claim 1 is interpreted consistent
with the last paragraph of 35 U.S.C. § 112 that the corresponding
structure and its equivalents is not rendered obvious by the
teachings of Humble. Thus, our decision presents a rebuttable
presumption that the apparatus of claim 1 is broad enough to be
suggested by the structure of Humble.
We designate this rejection as a new ground of rejection
because it represents a dramatic departure from the obviousness
issue as argued by the examiner and appellants. For purposes of
this new ground of rejection, we apply it only to independent
claim 1 which we view as the broadest claim on appeal before us.
We leave it to the examiner to consider the extent to which any
Appeal No. 96-0125
Application 07/878,100
13
of the other claims in this application may be subject to a
rejection similar to our new rejection of claim 1.
In summary, the rejection of claims 1-26 under 35 U.S.C.
§ 103 as formulated by the examiner is reversed. We have entered
a new ground of rejection of claim 1 under 37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1977)). 37
CFR § 1.196(b) provides that “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment
of the claims so rejected or a
showing of facts relating to the
claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
application will be remanded to the
examiner. . . .
Appeal No. 96-0125
Application 07/878,100
14
(2) Request that the application be
reheard under § 1.197(b) by the
Board of Patent Appeals and
Interferences upon the same record.
. . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
dem
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