Ex Parte Hennessy

Patent Trial and Appeal Board

Aug 18, 2016

13069949 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/069,949 03/23/2011
107681 7590 08/22/2016
NCR Corporation
3097 Satelite Boulevard
Building 700, 2nd Floor, Law Department
Duluth, GA 30096
FIRST NAMED INVENTOR
Orla Hennessy
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.
10-693 1079
EXAMINER
DETWEILER, JAMES M
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
08/22/2016 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):
PTOMail.Law@ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ORLA HENNESSY
Appeal2014-005367 1
Application 13/069 ,9492
Technology Center 3600
Before ANTON W. PETTING, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-14 and 18-23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellant's Appeal Brief
("Appeal Br.," filed Oct. 28, 2013), Reply Brief ("Reply Br.," filed Feb. 28,
2014), and Specification ("Spec.," filed Mar. 23, 2011), and the Examiner's
Answer ("Ans.," mailed Dec. 30, 2013) and Final Office Action ("Final
Act.," mailed Feb. 27, 2013).
2 According to the Appellant, the real party in interest is NCR Corporation.
Appeal Br. 1.
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Application 13/069,949
STATEMENT OF THE CASE
The Appellant's invention is directed to "selecting advertising for
unidentified customers in a shop, which advertising is nevertheless relevant
to the unidentified customers." Spec. 1, 11. 3---6.
Claims 1, 7, and 18 are the independent claims on appeal. Claim 1 is
exemplary of the subject matter on appeal and is reproduced below (with
bracketing added for reference):
1. A system, comprising:
[(a)] a detection system fixed at a location in a retail
establishment which identifies items associated with a customer
located in the retail establishment, using 3-D object recognition;
[ (b)] a classification system which predicts a future
activity of the customer, based on one or more of the items
identified;
[ ( c)] a group of previously prepared advertisements held
in storage; and
[ ( d)] a system which
selects an advertisement from the group, which
promotes a product or service related to the future activity,
and
presents the advertisement to the customer.
Appeal Br. 12 (Claims App.).
REJECTIONS
Claims 1, 2, 7, 8, 13, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Brice (US 2007/0008068 Al, pub. Jan. 11, 2007)
and Goncalves (US 2006/0147087 Al, pub. July 6, 2006).
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Claims 3---6 and 9-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brice, Goncalves, and Skudlark (US 2010/0057560 Al,
pub. Mar. 4, 2010).
Claims 18-20 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brice, Goncalves, and Hind (US 2002/0174025 Al, pub.
Nov. 21, 2002).
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brice, Goncalves, Hind, and Okamoto
(US 2002/0010622 Al, pub. Jan. 24, 2002).
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brice, Goncalves, Hind, Okamoto, and Song
(US 2005/0125309 Al, pub. June 9, 2005).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 3
ANALYSIS
The Appellant contends the rejection of independent claim 1 is in
error because the Examiner fails to establish a prima facie case of
obviousness. The Appellant does not dispute the Examiner's findings, but,
rather, argues that Goncalves teaches away from Brice in that "the proposed
modification of Brice would render Brice unsatisfactory for its intended
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/069,949
purpose," (Appeal Br. 4 (emphasis omitted); see also id. at 5-7), and that
"the proposed modification of Brice would change the principle of operation
of Brice" which is "an all-in-one 'Media Enabled Advertising Shopping Cart
System' (Brice, Title) [with a] key feature of the shopping cart system of
Brice [being] to provide inventory information using the inventory
component affixed to the cart." Id. at 7-8 (emphases omitted).
The Examiner finds, in relevant part, that Brice teaches a system for
presenting advertising comprising an inventory component, i.e., detection
system, which identifies items, as partially recited in limitation (a). See
Final Act. 5---6. The Examiner acknowledges that Brice does not disclose the
detection system being "fixed at a location in a retail establishment," and
identifying items using 3-D object recognition, as partially recited in
limitation (a). Id. at 6-7 (emphases omitted). The Examiner finds
Goncalves discloses a detection system, comprising visual sensors, that is
fixed at a location in the retail establishment such as "affixed to a checkout
counter wall facing the shopping cart," the inventory information obtained
by the sensors being communicated wirelessly to other system components,
and that uses "3-D object recognition to identify the 3D product." Id. at 7
(emphases omitted). The Examiner determines that it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to
modify the system for presenting advertising to an anonymous
customer at a retail store taught by Brice to utilize 3-D object
recognition technology to identify items associated with
customers, and wherein the detection system is fixed at a location
in a retail establishment as taught by Goncalves, because 3-D
object recognition systems are capable of detecting and
identifying objects with a high level of accuracy as compared to
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Application 13/069,949
other detection methods, and operates in a manner that does not
require additional steps or inputs performed by humans (i.e. a
scanning the items barcode ). Furthermore, it would be
advantageous to have a detection system is [sic] fixed at a
location in a retail establishment because it can be placed in a
location where obstructions are minimized, and so that it may
capture a large field of view at an angle that has been determined
to be effective at detecting objects in a cart.
Id. at 7-8.
We have reviewed the Appellant's arguments presented in the Appeal
and Reply Briefs and find them unpersuasive.
Brice is directed to "a system and method for providing information
such as advertising to a consumer as a shopping cart is navigated within a
store." Brice ,-r 4. Brice's invention addresses the needs of advertisers
including to "display ads at the most effective location and time, at the
consumer's point of purchase," of retailers including to increase sales and
share in advertising revenue, and of consumers to "have a pleasant and
efficient shopping experience" and to save money. Id. il 6. Brice's shopping
cart system comprises an inventory component "for determining an
inventory contained by the cart 10." Id. ,-r 65. "[T]he inventory component
comprises hardware and software operable to carry out the inventorying
function." Id. ,-r 66. The hardware and software may be affixed to the cart or
the hardware may be affixed to the cart and the software may be stored
and/or executed separately, such as from a point of sale computer or other
networked component. Id. In one embodiment, the hardware can comprise
at least one basket RFID reader with one or more RFID antennas working
with the software. Id. ,-r 70. The reader may be in the housing of the
modular on-cart device or, alternatively, on the underside of the cart. Id.
The reader with antennas "may automatically detect when a product has
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Application 13/069,949
been removed," may correlate identification information with additional
information, may display information on the video display such as
information pertaining to the product in the basket, and "may additionally
convey information about a product placed in or removed from the cart 10 to
various network components." Id. ,-r 71. In another embodiment, the
inventory component may alternatively comprise a scanner in conjunction
with the software. Id. i-fi-172, 73. In this embodiment, "the inventory
component is operable to determine the contents of the shopping cart based
on what products the consumer 85 has scanned and placed in the shopping
cart." Id. ,-r 73.
We disagree with the Appellant's characterization of the intended
purpose of Brice's inventory, i.e. detecting, system of "maintaining a
running total of items in the shopping cart," "detecting when a product has
been removed from the shopping cart," "displaying information pertaining to
a product placed in the cart," "updating and displaying a shopping list based
on products placed in the cart," or "correlating the inventory of a shopping
cart with an identity and location of the cart." Appeal Br. 5-7 (emphases
omitted). Although Brice discloses that, in one embodiment, the inventory
component may perform these functions in conjunction with other hardware
and software components of the overall system (see Brice i-fi-1 68-71 ), these
are not required purposes of the inventory component; in another
embodiment, these functions may not be performed. We agree with the
Examiner that the intended purpose of Brice's inventory component is to
determine inventory contained in the cart. See Ans. 4; see also Brice ,-r 65.
Goncalves is directed to automatically using optical flow to select
images of objects on a movable structure such as a shopping cart in order to
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identify merchandise on the cart, for example, in merchandise check out.
See Goncalves i-fi-12, 15, 16. We disagree that including Goncalves's fixed
sensors such as a camera trained on the cart's basket that would determine
items in the basket (id. i-f 16) would render Brice's inventory component
unsatisfactory for determining inventory contained by the cart. Thus, we
find the Examiner has established 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). Therefore, the burden shifts to the Appellant
to rebut the Examiner's prima facie case by distinctly and specifically
pointing out the supposed errors in the Examiner's action, as well as the
specific distinctions believed to render the claims patentable over the applied
references. See In re Sullivan, 498 F.3d. 1345, 1351 (Fed. Cir. 2007).
The Appellant's arguments that Goncalves teaches away from Brice
in that separating the inventory component would render Brice
unsatisfactory for its purposes (Appeal Br. 6-7) and would change the
principle operation of Brice (id. at 7-9) are not persuasive, at least because
they are not supported by the evidence. As noted above, Brice's inventory
component can comprise hardware affixed to the cart and software stored
and/or executed separately such as at a separate computer or other
networked component. Brice i166; see also Ans. 4. Thus, the Appellant's
argument that if the inventory component of Brice was separated from the
cart, the component would no longer be "in a position" to perform the
enumerated operations (see Appeal Br. 5-7), is not persuasive because Brice
discloses separating the inventory component into fixed hardware
components and separated software to determine inventory contained in the
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art. See Ans. 4--5; see also Brice iii! 66, 70. Further, the Appellant does not
provide adequate evidence or reasoning why adding Goncalves's separate
fixed sensors to Brice's fixed hardware and separate software would render
Brice unsatisfactory for its purposes or how it would change the principle
operation of Brice of providing information to a consumer as a cart is
navigated. See Brice if 4.
The Appellant's argument that "[t]he Examiner's Answer does not
provide any explanation as to how the implementation of the proposed
modification is feasible or achievable" (Reply Br. 5) is an argument that was
not raised in the Appeal Brief nor is it responsive to an argument raised in
the Examiner Answer. 37 C.F.R. § 41.41(b)(2). The Appellant argues the
Examiner does not provide explanation how the implementation is feasible,
but the Appellant has not met its burden in providing sufficient evidence to
show nonobviousness in that the Appellant has not provided sufficient
evidence or technical reasoning why the Examiner's reasoning is in error,
i.e., why the implementation is not feasible or not achievable. See In re Eli
Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990).
The Appellant's argument that "[t]here is simply nothing in
Goncalves to suggest that the detection system it uses could somehow
monitor the contents of the cart no matter where the cart is located as it
navigates throughout the store, as the inventory component does in Brice"
(Reply Br. 6), is unpersuasive as it is an argument against the art
individually when the Examiner relies on the combination of Brice and
Goncalves to disclose the limitation. The Appellant does not provide
evidence that the Examiner's finding that Brice teaches a system for
presenting advertising comprising a detection system which identifies items,
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Application 13/069,949
as partially recited in limitation (a), is in error. See Final Act. 5. The
Appellant does not present evidence that the Examiner's findings that
Goncalves discloses a detection system that is fixed at a location in the retail
establishment and that uses "3-D object recognition to identify the 3D
product" are in error. See id. at 7 (emphasis omitted). The Appellant also
does not provide evidence or reasoning why the Examiner's articulated
reasoning (see id. at 7-8) is in error. Further, Goncalves provides the
merchandise checkout location as an example (Goncalves i-f 36), but does not
limit or prevent the visual sensors from being placed at locations throughout
the store to aid in determining the inventory of the cart at various locations.
See id. i-fi-137, 39.
Therefore, we are not persuaded of error on the part of the Examiner
in the rejection of claim 1 under 35 U.S.C. § 103(a), and we sustain the
rejection of independent claim 1. The Appellant relies on the same
arguments as presented against the rejection of claim 1 for independent
claims 7 and 18 that recite a similar limitation to limitation (a) of claim 1.
See Appeal Br. 9. Thus, for the same reasons as for claim 1, we sustain the
rejections of claims 7 and 18. The Appellant does not provide separate
arguments against the dependent claims 2---6, 8-14, and 19-23 (see Appeal
Br. 9-10), and thus we also sustain the rejections of these claims.
DECISION
The rejections of claims 1-14 and 18-23 under 35 U.S.C. § 103(a) are
AFFIRMED.
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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
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