Samuel John. Von Bose et al.

Patent Trials and Appeals Board

Jul 19, 2019

12844483 - (D) (P.T.A.B. Jul. 19, 2019)

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.
12/844,483 07/27/2010 Samuel John von Bose 8842-98203-US_054US02 8151
122573 7590 07/19/2019
Fitch, Even, Tabin & Flannery, LLP/Walmart Apollo
120 South LaSalle Street
Suite 2100
Chicago, IL 60603-3406
EXAMINER
HOLLOWAY III, EDWIN C
ART UNIT PAPER NUMBER
2683
MAIL DATE DELIVERY MODE
07/19/2019 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SAMUEL JOHN VON BOSE and
WENDELL LACHICA VALDEZ
____________________

Appeal 2018-001045
Application 12/844,4831
Technology Center 2600
____________________

Before LARRY J. HUME, JUSTIN BUSCH, and JOYCE CRAIG,
Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge HUME.
Opinion Concurring filed by Administrative Patent Judge BUSCH.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claim 1, which is the only claim pending in the application.
Appellants have canceled claims 2–18. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Wal-Mart Stores, Inc.
App. Br. 3.
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STATEMENT OF THE CASE2
The Invention
Appellants’ disclosed embodiments and claimed invention “relate[]
generally to the reading of Radio Frequency Identification (RFID) tags.”
Spec. ¶ 3.
Exemplary Claim
Claim 1, reproduced below, is the only claim on appeal (formatting
added to limitations and emphases added to contested prior-art limitations):
1. A method for use with modules of items
comprising physically discrete displays of the items in a retail
display area, where at least a plurality of the items each have a
radio frequency identification (RFID) tag, the method
comprising:
at a control circuit:
accessing an optical code identifier that is
mounted to a given one of the modules of items,
which optical code identifier uniquely identifies the
given one of the modules of items;
using the identifier to access at least one of
a look-up table and a database to recall a plurality
of stock-keeping unit (SKU) numbers that are
associated with the identifier;
using the plurality of SKU numbers to filter
RFID tag readings and thereby identify RFID tags
for items that are associated with the given one of
the modules of items by only providing feedback

2 Our decision relies upon Appellants’ Appeal Brief (“App. Br.,” filed
July 12, 2017); Reply Brief (“Reply Br.,” filed Nov. 10, 2017); Examiner’s
Answer (“Ans.,” mailed Sept. 11, 2017); Final Office Action (“Final Act.,”
mailed Feb. 17, 2017); and the original Specification (“Spec.,” filed
July 27, 2010) (claiming benefit of US 61/365,294, filed July 16, 2010).
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to an end user regarding readings of RFID tags that
correlate to the given one of the modules of items,
wherein the feedback comprises at least one of:
- a count of read RFID tags;
- an indication to the end user that
reading of the RFID tags is concluded.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Muhme US 5,886,634 Mar. 23, 1999
Mon US 6,354,493 B1 Mar. 12, 2002
Bauer et al. (“Bauer”) US 2003/0216969 A1 Nov. 20, 2003
Landt US 6,677,852 B1 Jan. 13, 2004
Hougen et al. (“Hougen”) US 2006/0208859 A1 Sept. 21, 2006
Rejection on Appeal
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Mon, Muhme, Landt, Hougen, and
Bauer. Final Act. 3.
ISSUE
Appellants argue (App. Br. 7–11; Reply Br. 1–4) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Mon, Muhme, Landt, Hougen, and Bauer is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] method for use with modules of items comprising physically
discrete displays of the items in a retail display area, where at least a
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plurality of the items each have a radio frequency identification (RFID) tag,”
wherein the method includes, inter alia, the limitations of “accessing an
optical code identifier that . . . uniquely identifies the given one of the
modules of items,” and “using the identifier to access at least one of a look-
up table and a database to recall a plurality of stock-keeping unit (SKU)
numbers,” as recited in claim 1?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellants’ arguments with respect to claim 1 and,
unless otherwise noted, we incorporate by reference herein and adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner’s Answer in response to Appellants’ arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Appellants contend the Examiner’s rejection is allegedly problematic
for numerous reasons, but identify “one particularly compelling point of
differentiation — the teachings of Landt.” App. Br. 7. In particular,
Appellants contend the Examiner engaged in reversible error because “Landt
does not disclose a module identifier that both identifies a module and that
can be used to access a look-up table to recall a plurality of stock-keeping
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unit (SKU) numbers that are associated with the identifier[.]” Id. (emphasis
omitted).
In describing the teachings of Landt, Appellants contend Landt’s
“wholesale capability of reprogramming the reader is a design goal of Landt
and offers numerous identified advantages.” App. Br. 8. In particular,
Appellants assert:
We teach something different in these regards. Instead of
reprogramming the set of operating instructions for the reader,
we seek to provide one or more bits of information that can be
utilized by the reader to filter the results of its reading of a
group of RFID tags. We respectfully submit that the ordinarily-
skilled person would understand that these bits of information
(identified in our claim as an optical code identifier and SKU
numbers) are not the same as Landt’s sets of operating
instructions. We further respectfully submit that Landt is devoid
of any suggestion that a tag identifier can itself lead to one or
more SKU numbers.
App. Br. 8–9. Appellants further allege “[t]he Examiner’s characterization
of Landt . . . is technically inaccurate” (App. Br. 9) because
[t]he ordinarily-skilled person who reviews the entirety of
Landt will also discover, however, that the aforementioned
“control number” is not found in the aforementioned tag ID
number field (208) but instead is found, for example, in “the
instruction field 214” of the RFID tag memory 206. This
instruction field (214) is illustrated in Landt’s FIG. 2B (shown
below) and is clearly both physically and logically discrete and
separate from the tag ID number field (208).
App. Br. 10 (footnote omitted).
Finally, Appellants argue:
[T]he control number that identifies the tag has no bearing on
what instructions, if any, are contained in the instruction field
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and vice versa, as these two fields and the information they
contain are utterly unrelated to one another.
It therefore could not be more clear that the identifier for
Landt’s RFID tag (which resides in a tag ID number field
(208)) and the control number being relied upon by the
Examiner (which resides in a separate data field (214) of the
memory) are two utterly separate and discrete things.
Accordingly, the Examiner technically errs when characterizing
Landt as teaching that an RFID tag can have an “identifier”
which identifier itself includes “a control number for selecting
an instructions in a table.” In fact, Landt’s identifier is utterly
discrete and separate, both physically and logically, from
Landt’s control number.
It therefore necessarily follows that the conclusions
reached by the Examiner that are dependent upon the
aforementioned mischaracterization of Landt are themselves
wholly in error as well.
App. Br. 11 (emphasis omitted).
In response to Appellants’ arguments, the Examiner concludes:
[T]he claims only require “using” a unique ID to access a
table/database to recall numbers “associated with” the ID. The
instruction field of Landt is at least “associated with” the ID
(stored on the tag) and the ID is “used” — read to select an
instruction set in col. 7 lines 47–65 and the instruction set may
be to search for a particular tag ID (col. 9 lines 57–67) to locate
a particular item.
Ans. 2. The Examiner further points out “the rejection is not based on Landt
alone, but is based on Mon combined with Muhme, Landt, Hougen and
Bauer,” and goes on to reiterate the teachings and suggestions of each of
these references, along with the motivation to combine these references in
the manner suggested. Ans. 3; see also Final Act. 3–8.
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We agree with the Examiner’s finding that the combination of Mon
Muhme, Landt, Hougen, and Bauer, teaches or suggests the contested
limitations recited in claim 1. We agree with the Examiner because the test
for obviousness is what the combined teachings of the prior art would have
suggested to the hypothetical person of ordinary skill in the art. In re Keller,
642 F.2d 413, 425 (CCPA 1981).
Appellants make reference in their arguments as to how “[an]
ordinarily-skilled person” would interpret the teachings of Landt relied upon
by the Examiner. See, e.g., App. Br. 9, 10. We are not persuaded by these
arguments.
We are not persuaded because the Examiner sets forth detailed factual
findings regarding the teachings and suggestions of each of the cited prior
art references, Landt included, as cited above. Appellants respond by
merely providing attorney arguments and conclusory statements unsupported
by factual evidence of record as to how a person with skill in the art would
interpret the teachings of Landt, but provide no argument or evidence as to
how a person with skill in the art would interpret the teachings and
suggestions of the other four cited references, or why the Examiner’s
combination is in error. Thus, these arguments in lieu of evidence are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner’s resulting legal conclusion of obviousness.
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Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1–4) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claim 1 under 35 U.S.C. § 103(a) over the cited prior art combination of
record, and we sustain the rejection.
DECISION
We affirm the Examiner’s decision rejecting claim 1.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SAMUEL JOHN VON BOSE and
WENDELL LACHICA VALDEZ
____________________

Appeal 2018-001045
Application 12/844,483
Technology Center 2600
____________________

Before LARRY J. HUME, JUSTIN BUSCH, and JOYCE CRAIG,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge, concurring.

I write separately because, although I agree with the Majority’s
ultimate decision to affirm the Examiner’s rejection, I reach that conclusion
for different reasons than those stated in the Majority Opinion.
The Examiner describes the relevant disclosures relied on in each
prior art reference (i.e., Mon, Muhme, Landt, Hougen, and Bauer). Final
Act. 3–5. The Examiner then finds Mon and Muhme teach or suggest the
majority of the aspects recited in the preamble of claim 1. Final Act. 5.
Next, the Examiner finds, “[r]egarding [claim 1], accessing an optical code
identifier mounted on a module, the identifier uniquely identifies the given
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one of the modules of items and using the identifier to access at least one of
a look-up table and a database to recall search criteria would have been
obvious in view of” Landt’s disclosures. Final Act. 5. In particular, the
Examiner finds the disputed limitations “would have been obvious in view
of the master/control tags including barcode and RFID in Landt with an ID
that may be unique and include a control number for selecting an
instructions in a table based on the control number (table look up) to search
for an item.” Final Act. 5. The Examiner also finds “[s]earching for plural
items would have been obvious in view of” various disclosures in Muhme,
Bauer, Landt, or Hougen. Final Act. 5 (citing Landt Fig. 6; Bauer ¶¶ 193–
199; Hougen ¶ 27; Muhme Fig. 5). Finally, the Examiner finds the
remaining limitations would have been obvious in view of Mon, Hougen,
Muhme, Bauer, and Landt. Final Act. 5–6.
As noted in the Majority Opinion, the Examiner emphasizes in the
Answer that the recited using step requires only using the identifier to access
a table or database to recall SKU numbers associated with the identifier.
Ans. 2. The Examiner finds Landt’s instruction field is associated with the
ID and the ID is read to select an instruction set (such as searching for a
particular tag ID), which teaches or suggests using the ID. Ans. 2 (citing
Landt 7:47–65, 9:57–67).
Therefore, my understanding of the Examiner’s findings is that the
Examiner finds Landt alone teaches or suggests the claimed “accessing an
optical code identifier that is mounted to” and “uniquely identifies” an item
(specifically, one of Landt’s control tags), and “using the identifier to
access” a data field “to recall” other information “associated with the
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identifier.”1 I also understand the Examiner finds the various other
references supplement these teachings, such that Landt, in combination with
the other references, teaches that the item the identifier uniquely identifies is
a module of items, and the recalled information associated with the identifier
is a plurality of items (such as SKUs) accessed in a table or database. More
specifically, my understanding is that the Examiner finds the barcode on a
control tag teaches or suggests the recited optical code identifier because that
is the identifier that is “read” in order to obtain the various information
stored on that control tag. See Final Act. 4 (explaining that Landt discloses a
reader that loads instructions and search criteria “from a master control tag
or selected control tag that may be RFID and/or barcode,” (citing Landt
4:15–29)); Ans. 2–3 (explaining that a “reader may scan a symbol that
includes the tag ID number for the desired control tag as a key to isolate one
control tag,” citing Landt 10:22–44 (emphases added)).2
Because I view the Examiner’s rejection of the disputed limitations as
being based on only Landt’s teachings and suggestions, I view Appellants’
arguments regarding Landt’s disclosures sufficient to raise the issue of
whether Landt teaches what the Examiner finds Landt teaches. I do not find
Appellants’ reference to what a person of ordinary skill in the art would have
understood Landt to teach, or Appellants’ failure to identify evidence

1 I refer to these claim portions that, in my view, the Examiner finds Landt
alone teaches or suggests as the “disputed limitations.” My view is that the
Examiner finds the other prior art, in combination with Landt, teaches or
suggests the remaining portions of the limitations not directly quoted here.
2 The Examiner refers to column 10, lines 22–44 of Mon, but Mon does not
include column 10. The relevant subject matter described in this section by
the Examiner is subject matter disclosed in Landt.
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supporting their arguments, fatal to their argument because “it may also be
important to include explicit findings as to how a person of ordinary skill
would have understood prior art teachings.” MPEP § 2141(II) (describing
patent office personnel’s role as a factfinder). In other words, I understand
Appellants’ argument to simply be an assertion, with an explicit reference to
the lens through which we view prior art, that Landt does not teach what the
Examiner finds Landt teaches. Ultimately, for the reasons discussed below,
I agree with the Examiner’s findings and, therefore, reach the same
conclusion as the Majority.
As mentioned above, I understand the Examiner to have clarified in
the Answer that the Examiner finds the scanner-read barcode (or other
optical code), not the control tag ID number stored in the tag ID field,
teaches or suggests the recited optical code identifier. See Ans. 2–3;
Landt 10:22–44. I agree with the Examiner that this barcode teaches or
suggests the recited optical code identifier, because it is mounted to a control
tag and uniquely identifies the tag to which it is mounted. As explained, the
Examiner finds this teaching, in combination with the other prior art, teaches
or suggests mounting such an identifier to a module of items rather than
Landt’s control tag. See Ans. 5 (referring to Hougen’s shelves and pallets,
Muhme’s tag list of items associated with containers, and Bauer’s filtering
SKUs); Muhme Fig. 5; Hougen ¶ 27.
I also agree with the Examiner’s finding that, given the broad
language (i.e., that the identifier is merely used to access a table or database
to recall other information associated with the identifier), Landt teaches the
using the identifier step. Final Act. 5; Ans. 2-3. Specifically, Landt
discloses reading (i.e., using) the identifier to access the information
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associated with that particular control tag, such as the instruction field. See,
e.g., Landt 7:47–65, 9:57–67. Again, the Examiner finds this teaching of
Landt, in combination with the other prior art, teaches or suggests accessing
a plurality of SKUs in a table or database rather than Landt’s instructions.
See Ans. 3 (citing Bauer ¶¶ 193–199; Hougen ¶ 27; Muhme Fig. 5); Ans. 5.
To the extent the Examiner finds Muhme and Hougen are cumulative
with Landt’s teachings regarding the disputed limitations, I also agree. Of
particular note, the Examiner finds at least Muhme teaches modules (i.e.,
Muhme’s containers) having tags mounted thereon, wherein the tags include
identifiers that uniquely identify the modules and also are used as criteria to
identify items associated with the modules. Final Act. 3–4 (citing
Muhme 4:30–52, 4:53–62, 7:48–8:15, Figs. 2, 4). The Examiner also finds
Hougen teaches pallets or shelves of items that include optical barcodes and
the ability to identify items associated with the pallets or shelves. Final
Act. 4 (citing Hougen ¶¶ 4, 18–19, 27, 34, 37, 69–73); Hougen ¶¶ 18
(disclosing the systems and methods are applicable to “combined RFID and
optical code readers), 27 (disclosing that, once a pallet tag is read, a lookup
table is accessed to obtain RFID tags for items expected to be on the pallet).
In my view, at least these disclosures teach or suggest the disputed
limitations.
However, I find it ambiguous, at best, whether the Examiner finds the
prior art, other than Landt, teaches or suggests the disputed limitations. To
the extent the Examiner makes such findings, I also find it unclear which
aspects of the disputed limitations the Examiner finds are taught by
references other than Landt or how the Examiner proposes such teachings
would be combined.
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Accordingly, for the reasons discussed above, I would affirm the
Examiner’s rejection.