Ex Parte Rodriguez

Board of Patent Appeals and Interferences

Aug 16, 2012

10571337 (B.P.A.I. Aug. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/571,337 03/07/2006 Milton Rodriguez VINM110002000 3975
22891 7590 08/17/2012
LAW OFFICE OF DELIO & PETERSON, LLC.
121 WHITNEY AVENUE
NEW HAVEN, CT 06510
EXAMINER
AMSDELL, DANA
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
08/17/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MILTON RODRIGUEZ
___________

Appeal 2010-011167
Application 10/571,337
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011167
Application 10/571,337

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STATEMENT OF THE CASE
Milton Rodriquez (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1, 2, 4-6, 8-20, and 22-24. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This invention is “a tracking system for creating and recording a
unique identification of such vehicles or other objects that may be accessed
on a network.” Spec. 1.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of tracking objects comprising:
providing a unique identification for an object;
causing the unique identification to be marked
onto a surface of an object at a selected location
other than that marked by the manufacturer of
the object;
recording the unique identification of the object
in a computer database;
recording the selected location of the unique
identification of the object in the computer in
the computer database;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jan. 25, 2010) and Reply Brief (“Reply Br.,” filed Jun. 17, 2010),
and the Examiner’s Answer (“Ans.,” mailed Apr. 23, 2010).

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maintaining the computer database containing
the unique identification, selected location and
object description for access on a network by: i)
an owner of the object to record information
regarding theft of the object and ii) an
authorized person to search for information
regarding theft of the object;
searching the computer database, on request by
an authorized person, for information on the
object selected from the group consisting of
object description, unique identification,
selected location of the identification and
owner.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Guinta
Butland
Orton
Moore
Gallovich
US 5,083,814
US 5,194,289
US 2004/0019609 A1
US 6,886,748 B1
US 7,049,942 B2
Jan. 28, 1992
Mar. 16, 1993
Jan. 29, 2004
May 3, 2005
May 23, 2006
The Examiner took official notice that “it is old and well-
known within the industries involved with massive and complex item
processing, to keep a computer record of item location, and even more
pressing a record of item locations that are obscured, intentionally or
otherwise. One need only consider the location fields included in any
contemporary commercial inventory database.” Ans. 6. [Hereinafter,
Official Notice.]

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The following rejections are before us for review:
1. Claims 1-2, 4, 8, and 9 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Gallovich and Official Notice, as
evidenced by Guinta, Butland, and Moore.
2. Claims 5-6, 10-20, and 22-24 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Gallovich, Official Notice,
and Orton2.

ISSUES
The first issue is whether Gallovich and Official Notice, as evidenced
by Guinta, Butland, and Moore, renders unpatentable claims 1-2, 4, 8, and 9
under 35 U.S.C. §103(a). Specifically, whether Gallovich teaches away
from a system that records item locations, and whether the Appellant
properly traverses the Official Notice.
The second issue is whether Gallovich, Official Notice, and Orton
renders unpatentable claims 5-6, 10-20, and 22-24 under 35 U.S.C. §103(a).
Specifically, whether Orton teaches away from a system that records item
locations, and whether the Appellant properly traverses the Official Notice.

2 The Appellant argues that claims 5-24 are rejected as being unpatentable
over Gallovich, Official Notice, and Orton. App. Br. 4. We note that claims
7 and 21 are cancelled, and therefore not before us on appeal. App. Br. 21-
23. We also note that claims 8-9 are rejected as being unpatentable over
Gallovich and Official Notice. App. Br. 4. Therefore, claims 5-6, 10-20,
and 22-24 are rejected as being unpatentable over Gallovich, Official Notice,
and Orton.

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ANALYSIS
The rejection of claims 1-2, 4, 8, and 9 under §103(a) as being unpatentable
over Gallovich and Official Notice, as evidenced by Guinta, Butland, and
Moore
Claims 1-2, 4 and 9
Teaching Away
The Appellant argues claims 1-2, 4, and 9 as a group. App. Br. 5-8.
We select claim 1 as the representative claim for this group, and the
remaining claims 2, 4, and 9 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
The Appellant argues that Gallovich teaches away from the
Examiner’s combination of Gallovich and Official Notice. Specifically, the
Appellant argues that Gallovich teaches away because in Gallovich the TAG
locations are hidden from a potential thief. App. Br. 6-8. We are not
persuaded by the Appellant’s argument that the reference teaches away.
A reference may be said to teach away when a
person of ordinary skill, upon reading the
reference, would be discouraged from following
the path set out in the reference, or would be led in
a direction divergent from the path that was taken
by the applicant. The degree of teaching away will
of course depend on the particular facts; in general,
a reference will teach away if it suggests that the
line of development flowing from the reference's
disclosure is unlikely to be productive of the result
sought by the applicant.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007) (explaining that when the prior art
teaches away from a combination, that combination is more likely to be
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nonobvious).“The prior art's mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed in the … application.” In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
We find that Gallovich does not teach away from the Examiner’s
combination because a person of ordinary skill in the art would not be led
astray from the combination. The Examiner modified Gallovich to include
recording the TAG locations in Gallovich’s database. Ans. 6. Gallovich’s
database is accessed only by authorized persons. See Gallovich col. 6, ll.12-
21. Therefore, a thief would not have access to the database and would not
know where to look on the vehicle in order to remove the TAGs. The TAG
locations are still hidden from a thief. Therefore, we find the Appellant’s
argument unpersuasive as to error in the rejection.
Official Notice
The Appellant argues that the Examiner improperly relies upon the
Official Notice because the Examiner’s Official Notice is directed to a
claimed limitation; there are other references of record that do not support
the noticed fact, or contradict the noticed fact; and the Examiner did not
timely cite the references. App. Br. 15-19 and Reply Br. 1-2.
We find none of the Appellant’s arguments persuasive because the
Appellant did not first properly traverse what the Examiner regards as the
knowledge that would have been generally available to one of ordinary skill
in the art at the time of the invention. An adequate traversal must contain
adequate information or argument to create on its face a reasonable doubt
regarding the circumstances justifying the Examiner's notice of what is well
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known to one of ordinary skill in the art. In re Boon, 439 F.2d 724, 728
(CCPA1971). See also Manual of Patent Examining Procedure (MPEP)
§ 2144.03(C) (8th ed., Rev. 7, Jul. 2008). The Appellant’s arguments do not
constitute an adequate traversal of the Official Notice because the Appellant
has not specifically pointed out the supposed errors in the Examiner's
rejection, which includes stating why the noticed fact is not considered to be
common knowledge or well-known in the art.
Therefore, we find the Appellant’s arguments unpersuasive as to error
in the rejection. Accordingly, the rejection of claims 1-2, 4, and 9 under 35
U.S.C. § 103(a) as being unpatentable over Gallovich and Official Notice, as
evidenced by Guinta, Butland, and Moore is affirmed.

Claim 8
The Appellant argues against the rejection of claim 8 for the same
reasons as above regarding claim 1. App. Br. 9-10. Accordingly, because
we found these arguments unpersuasive as to that rejection, we find them
equally unpersuasive as to error in the rejection of claim 8.
Thus, we affirm the rejection of claim 8 under 35 U.S.C. § 103(a) as
being unpatentable over Gallovich and Official Notice, as evidenced by
Guinta, Butland, and Moore is affirmed.

The rejection of claims 5-6, 10-20, and 22-24 under §103(a) as being
unpatentable over Gallovich, Official Notice, as evidenced by Guinta,
Butland, and Moore, and Orton
Claims 5, 6, 10
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The Appellant argues against the rejection of claims 5, 6, and 10 for
the same reasons as above regarding claim 1. App. Br. 8-10. Accordingly,
because we found them unpersuasive as to that rejection, we find them
equally unpersuasive as to error in the rejection of claims 5, 6, and 10.
Thus, we affirm the rejection of claims 5, 6, and 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Gallovich, Official Notice, as evidenced
by Guinta, Butland, and Moore, and Orton.

Claims 11-20 and 24
The Appellant argues claims 11-20 and 24 as a group. App. Br. 10-
14. We select claim 11 as the representative claim for this group, and the
remaining claims 12-20 and 24 stand or fall with claim 11. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
First, the Appellant argues that Gallovich teaches away from the
Examiner’s combination of Gallovich and Official Notice, as similarly
argued above regarding claim 1. App. Br. 12. We are not persuaded by the
Appellant’s arguments. We find that Gallovich does not teach away from
the claimed limitations for the same reasons discussed above regarding
claim 1.
Second, the Appellant argues that Orton also teaches away from
modifying Orton to have hidden labels. App. Br. 13-14. We find that Orton
does not teach away from the Examiner’s combination because the
Examiner did not propose modifying Orton to have hidden labels (see Ans.
8). Orton is cited for identification data matching and remote accessibility
of data, not for label concealment (i.e. conspicuous location). Ans. 14.
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Therefore, we find the Appellant’s arguments unpersuasive as to error in the
rejection.
Accordingly, the rejection of claims 11-20 and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Gallovich and Official Notice, as
evidenced by Guinta, Butland, and Moore, and Orton is affirmed.

Claims 22 and 23
The Appellant argues against the rejection of claims 22 and 23 for the
same reasons as above regarding claim 11. App. Br. 14-15. Accordingly,
because we found them unpersuasive as to that rejection, we find them
equally unpersuasive as to error in the rejection of claims 22 and 23.
Thus, we affirm the rejection of claims 22 and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Gallovich, Official Notice, as evidenced
by Guinta, Butland, and Moore, and Orton.

DECISION
The decision of the Examiner to reject claims 1, 2, 4-6, 8-20, and 22-
24 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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