Ex Parte Palmquist

Board of Patent Appeals and Interferences

Jan 12, 2009

11221402 (B.P.A.I. Jan. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT D. PALMQUIST
____________

Appeal 2008-3990
Application 11/221,402
Technology Center 2800
____________

Decided: January 12, 2009
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and
SCOTT R. BOALICK, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-11, 13-16, 19-22, and 24. Claims 12, 17, 18, and 23 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2008-3990
Application 11/221,402

Appellant’s invention relates to a consumer kiosk for a retail
establishment in which customers may seek information about products or
services. (Spec. ¶ 0006)
We affirm.
Claim 1 is illustrative of the invention and reads as follows:
1. A method comprising:
capturing input from a user at a kiosk, the input being indicative of a
product;
identifying a location within a store, the location being associated
with the product;
outputting to the user from the kiosk an indication of the location; and
outputting advertising material to the user based on the location,
wherein the advertising material is directed to another product located in
proximity to the location.
The Examiner relies on the following prior art references to show
unpatentability:
Bado US 4,703,423 Oct. 27, 1987
Martino US 6,061,646 May 9, 2000
Weinschenk US 2004/0103031 A1 May 27, 2004
Swartz US 2005/0040230 A1 Feb. 24, 2005
(eff. filed Nov. 21, 2001)
Byford US 2005/0242180 A1 Nov. 3, 2005
(filed Apr. 30, 2004)
Schultz US 2005/0267754 A1 Dec. 1, 2005
(filed Jun. 1, 2004)

Claims 1, 2, 4-7, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Weinschenk in view of Swartz.
2
Appeal 2008-3990
Application 11/221,402

Claims 3 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weinschenk in view of Swartz and Byford.
Claims 11, 13-16, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Weinschenk in view of Martino and Byford.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weinschenk in view of Martino, Byford, and Swartz.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bado in view of Martino.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bado in view of Martino and Schultz.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Brief and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Brief have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

ISSUES
(i) Under 35 U.S.C. § 103(a), with respect to appealed claims 1, 2, 4-
7, 9, and 10, would one of ordinary skill in the art at the time of the
invention have found it obvious to combine Weinschenk and Swartz to
render the claimed invention unpatentable?
(ii) Under 35 U.S.C. § 103(a), with respect to appealed claims 3 and
8, would one of ordinary skill in the art at the time of the invention have
found it obvious to modify the combination of Weinschenk and Swartz by
3
Appeal 2008-3990
Application 11/221,402

adding the teachings of Byford to render the claimed invention
unpatentable?
(iii) Under 35 U.S.C. § 103(a), with respect to appealed claims 11,
13-16, and 24, would one of ordinary skill in the art at the time of the
invention have found it obvious to combine Weinschenk, Martino, and
Byford to render the claimed invention unpatentable?
(iv) Under 35 U.S.C. § 103(a), with respect to appealed claims 19
and 20, would one of ordinary skill in the art at the time of the invention
have found it obvious to modify the combination of Weinschenk, Martino,
and Byford by adding the teachings of Swartz to render the claimed
invention unpatentable?
(v) Under 35 U.S.C. § 103(a), with respect to appealed claim 21,
would one of ordinary skill in the art at the time of the invention have found
it obvious to combine Bado and Martino to render the claimed invention
unpatentable?
(vi) Under 35 U.S.C. § 103(a), with respect to appealed claim 22,
would one of ordinary skill in the art at the time of the invention have found
it obvious to modify the combination of Bado and Martino by adding the
teachings of Schultz to render the claimed invention unpatentable?

FINDINGS OF FACT
The relevant facts are:
1. Appellant has invented a consumer kiosk for a retail
establishment in which a customer may seek information about products or
services by inputting a product description or product identification to the
kiosk. Upon parsing the user’s input to identify a store location associated
4
Appeal 2008-3990
Application 11/221,402

with the product, the kiosk outputs the location to the user. The output
location information may take the form of verbal or printed directions to the
product location, or a printed map with a conspicuous identification of the
product location (Spec. ¶ [0006]).
2. Weinschenk discloses (¶ [0024], Figures 6 and 7) the outputting
of an indication of the store location of a product indicated by an input of a
user of a kiosk.
3. Swartz discloses at ¶ [0063] that product location information is
provided to the customer in the form of an aisle sorted list based on the user
product indication input.
4. Swartz further discloses that advertizing information is
provided to a user based on user location and product information input (¶’s
[0068], [0100], [0101], [0181], [0189], and [0194]).
5. Swartz illustrates in Figures 17 and 18 that item 926 indicates
the store location of the user input product identification as well as the
alternative product brands (items 932, 934, 936, and 938) and their location
(item 940) in proximity to the user identified product.
6. Byford discloses (¶’s [0019] and [0041]) that advertising
information is provided based on the association of product location
information with the input product information on device 100.
7. Bado discloses (col. 8, ll. 38-58) the interrogation of a system
for recipe or course ideas related to the user selection of a menu path such as
the German menu path illustrated as item 2 in Figure 4 of Bado.

5
Appeal 2008-3990
Application 11/221,402

PRINCIPLES OF LAW
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 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
I. The rejection of claims 1, 2, 4-7, 9, and 10 based on the
combination of Weinschenk and Swartz.

Appellant’s arguments in response to the Examiner’s obviousness
rejection of representative independent claim 1 based on the combination of
Weinschenk and Swartz assert a failure by the Examiner to establish a prima
facie case of obviousness since all of the claimed limitations are not taught
6
Appeal 2008-3990
Application 11/221,402

or suggested by the applied Weinschenk and Swartz references.1 In
particular, Appellant attacks that the Examiner’s reliance on Swartz as
teaching the claimed feature of outputting advertising material for other
products based on the identified location of a product indicated by the user
of a kiosk. According to Appellant (Br. 8-9), the Examiner has erred in
drawing the conclusion (Ans. 6) that Swartz’s teaching of providing
advertizing for alternative brands of a product satisfies the claimed feature
since such alternative product brands are often located in the same store
location as the identified location for the product indicated by the kiosk user.
In Appellant’s view, Swartz’s outputting of alternative product brand
choices are based solely on the customer’s input product preference choice
and not on the location of the user’s input product preference choice.
We do not find Appellant’s arguments to persuasive in convincing us
of any error in the Examiner’s stated position as we find ample evidence
within the disclosure of Swartz to support the Examiner’s conclusion. For
example, in addition to the disclosure at ¶’s [0162] and [0214] of Swartz
specifically mentioned by the Examiner (Ans. 6 and 18), Swartz also
discloses at ¶ [0063] that product location information is provided to the
customer in the form of an aisle sorted list based on the user product
indication input as well as providing advertizing information based on user
location and product information input (¶’s [0068], [0100], [0101], [0181],
[0189], and [0194]). The location based product information features of
Swartz are further discussed at ¶’s [0073] and [0076] and illustrated in

1 Appellant argues claims 1, 2, 4-7, 9, and 10 together as a group. See Br. 9.
Accordingly, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).

7
Appeal 2008-3990
Application 11/221,402

Figures 17 and 18 in which item 926 indicates the store location of the user
input product identification as well as the alternative product brands (items
932, 934, 936, and 938) and their location (item 940) in proximity to the user
identified product.
Further, with the above discussion of the myriad instances of product
location disclosure of Swartz in mind, we make the observation that,
although the Examiner has relied upon Weinschenk for a teaching of
providing the store location of a product identified by a user of a kiosk, such
a teaching is cumulative to what is already disclosed by Swartz.
Accordingly, in view of the above analysis of the disclosure of the Swartz
reference, we find that all of the elements of independent claim 1 are in fact
present in the disclosure of Swartz. Further, we find that Weinschenk
supplements Swartz’s teachings to establish the Examiner’s prima facie case
for the claims being obvious over the combination of those references.
Therefore, it is our view that the Examiner did not err in concluding that the
combination of Weinschenk and Swartz renders the cited claims
unpatentable.
For the above reasons, since it is our opinion that the Examiner has
established a prima facie case of obviousness which has not been overcome
by any convincing arguments from Appellant, the Examiner’s 35 U.S.C.
§ 103(a) rejection of independent claim 1, as well as dependent claims 2, 4-
7, 9, and 10 not separately argued by Appellant, is sustained.

8
Appeal 2008-3990
Application 11/221,402

II. The rejection of dependent claims 3 and 8 based on the
combination of Weinschenk, Swartz, and Byford.

This rejection, in which the Examiner has applied the Byford
reference to the combination of Weinschenk and Swartz to address the voice
input and advertising material features of claims 3 and 8, is also sustained.
Appellant’s arguments in response rely on those arguments made against the
Examiner’s rejection of independent claim 1, which arguments we found to
be unpersuasive as discussed supra.

III. The rejection of claims 11, 13-16, and 24 based on the
combination of Weinschenk, Martino, and Byford.

We also sustain this rejection. Appellant’s arguments in response to
the Examiner’s obviousness rejection of representative independent claim 11
based on the combination of Weinschenk, Martino, and Byford focus on the
alleged deficiencies of the Byford reference in disclosing the claimed feature
of outputting advertising material to a user based on the store location of a
product identified by user input.2 According to Appellant (Br. 10), the
location feature discussed by Byford is the location of device 100 of Byford
which is not associated with any product or product location as claimed.
We do not find Appellant’s arguments to be persuasive of any error in
the Examiner’s position (Ans. 11-12). While we do not disagree with
Appellant that Byford detects the location of the portable device 100, we
agree with the Examiner’s finding (Ans. 19) that advertising information in

2 Appellant argues claims 11, 13-16, and 24 together as a group. See Br. 11.
Accordingly, we select claim 11 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
9
Appeal 2008-3990
Application 11/221,402

Byford (¶’s [0019] and [0041]) is provided based on the association of
product location information with the input product information on device
100.

IV. The rejection of dependent claims 19 and 20 based on the
combination of Weinschenk, Martino, Byford, and Swartz.

We also sustain this rejection in which the Examiner has applied the
Swartz reference to the combination of Weinschenk, Martino, and Byford to
address the advertising coupon and language selection features of claims 19
and 20. Appellant’s arguments in response rely on those arguments made
against the Examiner’s rejection of independent claim 11, which arguments
we found to be unpersuasive as discussed supra.

V. The rejection of independent claim 21 based on the
combination of Bado and Martino.

This rejection is also sustained. In addressing the requirements of
claim 21, the Examiner (Ans. 14-15) has relied upon the goal-oriented query
teachings of Bado in combination with the voice input teachings of Martino.
Appellant’s arguments in response (Br. 12-13) contend that, in contrast to
the claimed input of a “query” by a kiosk user, Bado merely provides a list
of menu choices to a user which can be further refined based on a user
selected choice.
Appellant’s arguments to the contrary notwithstanding, however, we
agree with the Examiner (Ans. 21-22) that a user’s selection of a menu path
in Bado (e.g., the German menu path, #2 in Bado’s Figure 4) satisfies the
claimed requirement of a “query” since the system is being interrogated for
10
Appeal 2008-3990
Application 11/221,402

recipe or course ideas related to the German path selection. We simply find
no language in claim 21 which requires that the user “query” be formulated
as a question as argued by Appellant.
VI. The rejection of dependent claim 22 based on the combination
of Bado, Martino, and Schultz.

This rejection, in which the Examiner has applied the Schultz
reference to the combination of Bado and Martino to address the user
interrogation feature of claim 22, is also sustained. Appellant’s arguments in
response rely on those arguments made against the Examiner’s rejection of
independent claim 21, which arguments we found to be unpersuasive as
discussed supra.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 1-11,
13-16, 19-22, and 24 for obviousness under 35 U.S.C. § 103.

11
Appeal 2008-3990
Application 11/221,402

DECISION
The Examiner’s 35 U.S.C. § 103 rejection of claims 1-11, 13-16, 19-
22, and 24, all of the appealed claims, is 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)(1)(iv).

AFFIRMED

gvw

SHUMAKER & SIEFFERT, P.A.
1625 RADIO DRIVE
SUITE 300
WOODBURY, MN 55125
12