Ex Parte Williams et al

Board of Patent Appeals and Interferences

May 23, 2012

11235102 (B.P.A.I. May. 23, 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.
11/235,102 09/27/2005 Charles B. Williams X-9529 2826
615 7590 05/23/2012
JOHN S. HALE
GIPPLE & HALE
6665-A OLD DOMINION DRIVE
MCLEAN, VA 22101
EXAMINER
TANG, SON M
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
05/23/2012 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 CHARLES B. WILLIAMS and KEVIN J. KAIL
____________

Appeal 2009-010629
Application 11/235,102
Technology Center 2600
____________

Before JOSEPH L. DIXON, LANCE L. BARRY, and
JAMES R. HUGHES, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1 and 5-20. The Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).

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Application 11/235,102
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INVENTION
The following claims illustrate the invention on appeal.
1. A RFID tag data integration system for use in a commercial
data processing environment for the integration of general
product information that is shared between a buyer and a
supplier comprising at least one RFID/EPC reader and antenna
for data collection from an RFID tag placed on a product, said
tag being a radio frequency identification (RFID) tag carrying
an electronic product code (EPC) as the unique tag identifier,
computer means with a software program, said software
program providing integration between a product Global Trade
Identification Number and a bar code for said product by
automatically converting a barcode on a product to a valid
Global Trade Identification Number and then using the
resulting Global Trade Identification Number as a component
of the RFID tag, said software program being able to read and
collect RFID tag data from a reader and to integrate the product
tag data with general information about the tagged product and
to have a plurality of streams of data integrated into a single
stream of data for access and reporting.

8. A notification system using the internet for objects identified
by an RFID tag comprising computer means to receive product
identification data from said RFID tag, said computer means
comparing product identification data over the internet with
stored meta data pertaining to the product to obtain unique
identification code for product and product information selected
the attributes of the product, and retrieve said meta data, a
relationship repository containing a series of prescribed rules
for handling specific events directed toward the conduct of a
specific business and requirements for same, said relationship
repository reviewing said rules to provide appropriate alerts and
notifications for specific businesses so that when events defined
by the rules occur, a message network sends out messages to at
least one designated person.

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REFERENCES AND REJECTIONS1
Bauer 2003/0216969 A1 Nov. 20, 2003
Chapman 7,114,655 B2 Oct. 3, 2006
Claims 1 and 5-20 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. (Ans. 4.)
Claims 8-15 stand rejected under 35 U.S.C. § 112, first paragraph, as
based on a disclosure which is not enabling. (Ans. 3.)
Claims 8-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bauer. (Ans. 5-6.)
Claims 1, 5-7, and 16-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bauer and Chapman. (Ans. 7.)

DISCUSSION
CLAIMS 8-15
When claims have been rejected under the first and second paragraphs
of 35 U.S.C. § 112, analysis "should begin with the determination of
whether the claims satisfy the requirements of the second paragraph." In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971).

1 The Examiner's Answer contains three new grounds of rejection. (Ans. 2-
6). The Appellants responded to the new grounds of rejection in the Reply
Brief.
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Application 11/235,102
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INDEFINITENESS REJECTION
Based on the Appellants' arguments, we will decide the appeal of the
indefiniteness rejection of claims 8-15 on the basis of claim 8. See 37
C.F.R. § 41.37(c)(1)(vii).
Therefore, the issue before us is whether the Examiner erred in
concluding that representative claim 8 is indefinite for reciting "obtain
unique identification code for product and product information selected the
attributes of the product". (Emphasis added).
The Examiner concludes that claim 8, line 5, appears to be "missing
text between 'information' and 'selected.'" (Ans. 4.)
The Appellants explain that "[i]n Claim 8, line 4[,] . . . the term 'the'
should have been deleted . . . ." (Reply Br. 2.)
"The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope." In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharma. Co., 927
F.2d 1200, 1217 (Fed. Cir.1991)). "[T]he definiteness of the language
employed must be analyzed — not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
Even if amended as suggested by the Appellants, we conclude that
claim 8's phrase, "product information selected [] attributes of the product"
is indefinite because phrase's meaning is unclear and no reasonably definite
meaning can be ascribed.
Therefore, we conclude that the Examiner did not err in concluding
that representative claim 8 is indefinite for reciting "obtain unique
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identification code for product and product information selected the
attributes of the product. "

OBVIOUSNESS AND ENABLEMENT REJECTIONS
The issue before us is whether the indefiniteness of claims 8-15
prevents us from reaching the issues of obviousness and enablement.
A rejection should not be based on "speculations and assumptions."
In re Steele, 305 F.2d 859, 862 (CCPA 1962). "All words in a claim must be
considered in judging the patentability of that claim against the prior art. If
no reasonably definite meaning can be ascribed to certain terms in the claim,
the subject matter does not become obvious—the claim becomes indefinite."
In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). We also hold that if the
claim is indefinite then we cannot determine whether the claim is enabled.
Here, for the reasons explained in addressing the indefiniteness of
claims 8-15, our analysis of the claims leaves us in a quandary as to what
they specify. Speculations and assumptions would be required to decide the
meaning of the terms employed in the claims and the scope of the claims.
Therefore, we conclude that the indefiniteness of claims 8-15 prevents us
from reaching the issues of obviousness and enablement.
Consequently, we reverse pro forma the obviousness and enablement
rejections of claims 8-15. We emphasize that our reversal is based on
procedure rather than on the merits of the obviousness and enablement
rejections. The reversal does not mean that we consider the claims to be
patentable as presently drawn.

Appeal 2009-010629
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CLAIMS 1, 5-7, AND 16-20
INDEFINITENESS REJECTION
Based on the dependencies of the claims, we will decide the appeal of
claims 1, 5-7, and 16-20 under the § 112 indefiniteness on the basis of
independent claims 1 and 16.
The issue before us is whether the Examiner erred in finding that
claims 1 and 16 recite "the barcode."
The Examiner finds that "claims 1 and 16 . . . recite the limitation 'the
barcode' in lines 7 and 8, respectively." (Ans. 4). The Appellants filed an
Amendment after final rejection on Nov. 19, 2007 amending claims 1 and 16
to change "the" to --a--. The Examiner entered the amendment in the
Advisor Action dated Feb. 19, 2008.
We agree with the Appellants' (Reply Br. 2) argument that "[c]laims 1
and 16 do not recite the limitation 'the barcode' in lines 7 and 8 but
specifically claim 'a barcode.'" (App. Br. 13, 15.)
Therefore, we conclude that the Examiner erred in in finding that
claims 1 and 16 recite "the barcode."

OBVIOUSNESS REJECTION
Based on the Appellants' arguments, we will decide the appeal of
claims 1, 5-7, and 16-20 under § 103(a) on the basis of claim 1. See 37
C.F.R. § 41.37(c)(1)(vii).
The issue before us is whether the Examiner erred in concluding
claims 1, 5-7, and 16-20 would have been obvious over the combination of
Bauer and Chapman.
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The Appellants argue that the rejection of claims 1, 5-7, and 16-20
over Bauer and Chapman "is incorrect" (App. Br. 7) for various reasons.
(Id. at 7-11.)
We disagree with the Appellants’ contentions. We adopt the
Examiner's findings of fact and factual and legal analysis at Answer 7-8 and
10-11 and reach similar legal conclusions. Our discussion will be limited to
the following for emphasis.
In pertinent parts claim 1 recites "said tag being a radio frequency
identification (RFID) tag carrying an electronic product code (EPC) as the
unique tag identifier" and "converting a barcode on a product to a valid
Global Trade Identification Number."
The Examiner makes the following findings and conclusions.
Bauer disclosed that EPC writer uses UPC code and
converts it into EPC then writes the EPC into the RFID tag [¶
0184-0185], but does not specifically disclose that
automatically converting a barcode (UPC) into a Global Trade
Identification Number. Chapman teaches the known concept of
converting barcode data into a Global Trade Identification
Number (GTIN) [used in an RFID command, as shown in col.
2, lines 59-67 and col. 3, lines 13-22]. It would have been
obvious of one having ordinary skill in the art at the time of the
claimed invention to convert barcode data into GTIN data, as an
alternative to EPC data, and stored in RFID tag as suggested by
Chapman in a system such as taught by Bauer, so that the data
format is more "global" or universally compatible so that
any/various data format can be more easily identified by the
RFID reader.

(Ans. 8.)
The Appellants make the following argument.
The present application uses (GTIN) (not a SKU) a global trade
item number for uniquely identifying trade items which include
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products and services that are sold, delivered , and inventoried
at any point in the supply chain. GTINs provide unique
identification worldwide. . . . GTIN identifies an item
uniquely. . . . The same GTIN can be used to identify a series of
identical items.

(App. Br. 9.)
"During prosecution . . . the PTO gives claims their 'broadest
reasonable interpretation.'" In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir.
2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
"Moreover, limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
We are unpersuaded by the Appellants' argument because the feature
that the Appellants rely on, viz., "GTIN identifies an item uniquely," is
absent from representative claim 1. We decline to read the feature into the
representative claim.
"The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
applicant is not entitled to a patent on the claim scope that he seeks - the so
[-]called 'prima facie case.'" Ex parte Frye, No. 2009-006013, 2010 WL
889747, at *3 (BPAI Feb. 26, 2010) (precedential). "'On appeal to the
Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.'" In re Kahn, 441
F.3d 977, 985-86 (Fed. Cir. 2006) (quoting In re Rouffet, 149 F.3d 1350,
1355 (Fed. Cir. 1998)).
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Here, Appellants provide neither sufficient argument nor evidence to
overcome the Examiner's findings and conclusions (Ans. 8) that the
combination of Bauer and Chapman would have taught or suggested, inter
alia, "converting a barcode on a product to a valid Global Trade
Identification Number", as required by claim 1.
Therefore, we conclude that the Examiner did not err in concluding
claims 1, 5-7, and 16-20 would have been obvious over the combination of
Bauer and Chapman.

DECISION
We affirm the rejection of claim 8 under § 112, second paragraph, and
that of claims 9-15, which fall therewith.
We reverse pro forma the rejections of claim 8 under § 103(a) and §
112, first paragraph, and those of claims 9-15, depend therefrom.
We reverse the rejection of claim 1 and 16 under § 112, second
paragraph, and that of claims 5-7 and 17-20, which depend therefrom.
We affirm the rejection of claims 1 and 16 under § 103(a) and that of
claims 5-7 and 17-20, which fall therewith.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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