Ex Parte Hannah et al

Patent Trial and Appeal Board

Nov 1, 2012

12202075 (P.T.A.B. Nov. 1, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEPHEN E. HANNAH, SCOTT J. CARTER and
JESSE M. JAMES
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Appeal 2010-008512
Application 12/202,075
Technology Center 3600
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Before EDWARD A. BROWN, WILLIAM V. SAINDON and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 17-36 (App. Br. 1). Claims 1-16 are canceled (App. Br.
1). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and we designate the affirmance as a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b).

THE CLAIMED SUBJECT MATTER
The disclosed subject matter pertains generally to methods “for
tracking the movement and statuses of non-motorized vehicles, including but
not limited to shopping carts” (Spec. para. [0002]). Sole independent claim
17 is representative of the claims on appeal and is reproduced below:
17. A method of monitoring shopping cart usage,
comprising:
generating shopping cart event data via two-way radio
frequency (RF) communications with each of a plurality of
shopping carts associated with a store, said event data including
information reflective of zone entry events detected by
particular shopping carts, each zone entry event representing
entry of a particular shopping cart into a particular zone of a
plurality of zones associated with said store, said zone entry
events detected by the corresponding shopping carts based on
transmissions received by the shopping carts from
corresponding antennas mounted in a monitoring area
associated with the store;
aggregating the shopping cart event data associated with
the plurality of shopping carts in a data repository; and
programmatically analyzing the aggregated shopping cart
event data to generate statistical information regarding said
shopping carts.

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REFERENCES RELIED ON BY THE EXAMINER

Moreno US 5,315,290 May 24, 1994
Chaum US 5,485,520 Jan. 16, 1996
Godsey US 2002/0161651 A1 Oct. 31, 2002
Boman US 2004/0215532 A1 Oct. 28, 2004
Hofmann US 2004/0243262 A1 Dec. 2, 2004
Parish US 2005/0049914 A1 Mar. 3, 2005
Cato US 6,928,343 B2 Aug. 9, 2005
Bell US 2006/0136303 A1 Jun. 22, 2006
Wieth US 7,218,225 B2 May 15, 2007

THE REJECTIONS ON APPEAL
1. Claims 17 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bell and Hofmann. Ans. 4.
2. Claims 18-21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bell, Hofmann and Wieth. Ans. 5.
3. Claims 22 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bell, Hofmann, Wieth and Boman. Ans. 6.
4. Claims 23, 24 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bell, Hofmann and Parish. Ans. 7.
5. Claims 27-29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bell, Hofmann, Parish and Godsey. Ans. 8.
6. Claims 31-34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bell, Hofmann and Moreno. Ans. 9.
7. Claims 35 and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bell, Hofmann, Moreno and Chaum. Ans. 11.

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ANALYSIS
Rejection 1 – The Rejection of Claims 17 and 25 as being unpatentable over
Bell and Hofmann
The Examiner primarily relies on Bell for teaching all the limitations
of these two claims and states “however the examiner introduces a
secondary reference [Hofmann] for more clarification1.” Ans. 4. More
specifically, the Examiner finds that certain paragraphs in Bell disclose “said
zone entry events detected by the corresponding shopping carts based on
transmissions received by the shopping carts from corresponding antennas
mounted in a monitoring area associated with the store” (italics added).
Ans. 4.
Appellants contend that the paragraphs in Bell referenced by the
Examiner, “and other portions of Bell,” do not teach the claim limitation of
the “zone entry events detected by particular shopping carts” or that the cart
detects these events “based on transmissions received by the shopping
carts.” App. Br. 4, Reply Br. 2. In short, Appellants contend that other
components of Bell’s system, and not the shopping carts themselves, detect
zone entry events based on transmissions they receive. App. Br. 5, Reply
Br. 2.
We agree with Appellants. Bell specifically identifies verification
system 140, which is separate from Bell’s shopping device (cart) 106, as
detecting the location of the cart within the store and particularly in the

1 The clarity is to Hofmann’s teaching of programmatically analyzing golf
cart data. Ans. 4. The Examiner acknowledges that “Hofmann does not
explicitly disclose a shopping cart” but states that it would involve only
ordinary skill in the art at the time of the invention “to replace the golf cart
with a shopping cart to reach the same end results i.e. generating a statistical
data.” Ans. 4-5.
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vicinity of a store exit2. In contrast, Bell teaches that the cart transmits a
weak wireless signal that is received by the verification system and/or
strategically placed antenna so as “to provide a mechanism for detecting a
shopper in a specific area or location of the store (such as a location near a
store exit)”. Bell para. [0026], see also paras. [0025], [0018] and Fig. 1.
The Examiner does not identify any teaching in Bell where it is the shopping
cart itself that detects zone entry events or where such detection is “based on
transmissions received by the shopping carts” as claimed (italics added).
Accordingly, we are not persuaded the Examiner articulated reasoning with
rational underpinning to support the legal conclusion of obviousness. We
reverse the rejection of claims 17 and 25.

Rejection 6 – The Rejection of Claims 31-33 as being unpatentable over
Bell, Hofmann and Moreno
Appellants argue claims 31-33 together. App. Br. 11. We select
claim 31 for review with claims 32 and 33 standing or falling with claim 31.
37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 31 depends from claim 17 and
further requires that “the method comprises receiving, via wireless access
points mounted in said store, RF transmissions of said shopping cart event
data from transceivers housed within respective wheel assemblies of said
shopping carts.” In essence, the claim requires that the store antenna
receives transmissions from a transceiver housed within respective shopping
cart wheel assemblies. The Examiner relies on the additional reference to

2 Bell states: “A verification system is configured to detect the shopping
device being in proximity to an exit of the shopping environment and to
initiate precautionary action in response thereto.” Bell para. [0005], see also
paras. [0025], [0027], [0028], [0035], [0037] and [0039].
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Moreno for teaching circuitry that “receives signal which is included in the
wheel assembly (see at least FIG. 6).” Ans. 9. The Examiner determined
that “it would have been obvious to an ordinary skilled person in the art to
incorporate the invention of Moreno into the invention of Bell in view of
Hofmann for the purpose of enhancing the communication between the cart
and other devices.” Ans. 10. Appellants contend that the combination of
Bell, Hofmann and Moreno does not teach or suggest this additional claim
language. App. Br. 11-12, Reply Br. 11. Appellants further contend that
“[e]ven if this characterization of Moreno is accurate, however, it does not
fully address the claim language at issue, and does not explain why the
subject matter of claim 31 would have been obvious.” App. Br. 12. We
understand Appellants’ contention as alluding to the rejection of parent
claim 17 in view of only Bell and Hofmann, such rejection being reversed as
discussed supra.
Moreno’s Figure 6 discloses circuitry located in wheel 21 of shopping
cart 14, such circuitry including receiver 38 and transmitter 42. See also
Moreno 4:9-14. Moreno teaches that “[t]he circuit board 35 within wheel 21
includes the components for a radio frequency receiver 38 which is capable
of receiving the signal from [the store’s] antenna 16 over its own antenna
41.” Moreno 4: 22-25. Moreno’s wheel 21 also includes “decoder 39
capable of discerning whether the coded signal received by receiver 38
matches the code associated with that cart’s store” and further that this
decoder is coupled to logic driver 40 that becomes active “upon being
informed by decoder 39.” Moreno 4:25-35. Moreno’s transmitter 42 is
described as able “to send out a signal that can be received by a receiver 44
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in the store” in the event the “cart has been moved out of its prescribed use
area.” Moreno 5:6-18.
Moreno teaches that a stores’ receiver (44) receives wireless
transmission from the shopping cart (14) regarding event data from a
transmitter (42) housed within a wheel (21) of the cart. Moreno 5:6-18.
Furthermore, Moreno provides objective evidence of knowledge in the art of
an alternative location to place the data processing circuitry. Moreno,
therefore, demonstrates that it would have been obvious to a person of
ordinary skill in the art to substitute the store-side processing circuitry of
Bell with the cart-side processing circuitry of Moreno as a manner of routine
skill with a predictable result. KSR International Co. v. Teleflex Inc., 550
U.S. 389, 416 (2007) (“when a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result”). Accordingly, we affirm the rejection of claim 31 over
the combination of Bell, Hofmann and Moreno, albeit for slightly different
reasons than those expressed by the Examiner, in that the teachings of
Moreno cure the above-identified factual deficiency in the Examiner’s
rejection of independent claim 17. Correspondingly, we designate the
affirmance of the rejection of claims 31-33 as a new ground of rejection.
We are mindful of instructions from our reviewing court that when a
dependent claim is “found to have been obvious, the broader claims . . . must
also have been obvious.” Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307,
1319 (Fed. Cir. 2007). Therefore, in view of the additional teachings of
Moreno, and pursuant to our authority under 37 C.F.R. § 41.50(b), we also
enter a new ground of rejection with respect to independent claim 17 (as
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well as claim 25, which depends from claim 17) as unpatentable over Bell,
Hoffman, and Moreno for the reasons discussed above.
With respect to claim 34, we agree with Appellants’ argument that the
Examiner’s reliance on Thomas is improper. App. Br. 12; Ans. 10. Even if
Thomas teaches the relevant limitation, as the Examiner alleges, it is not a
part of the rejection. Ans. 25 (discussing “Robert Thomas Cato (6,9,28,343
B2) … submitted … in the 1449 form”); see In re Hoch, 428 F.2d 1341,
1342 n.3 (CCPA 1970) (“Where a reference is relied on to support a
rejection, whether or not in a “minor capacity,” there would appear to be no
excuse for not positively including the reference in the statement of the
rejection.”). Accordingly, we do not sustain the rejection of claim 34.
Each of rejections 2-5 and 7 listed above consist of claims dependent
from claim 17 (specifically, claims 18-24, 26-30, and 34-36). The rejections
of these claims necessarily include the previously identified error in the
Examiner’s rejection of claim 17, and thus cannot be sustained. However, as
we also previously identified, the Examiner’s rejection of claim 31 remedies
the deficiency we identified above with respect to claim 17 and for that
reason we entered a new ground of rejection for claim 17. The Patent Trial
and Appeal Board is a review body rather than a place of initial examination.
Accordingly, we have not reviewed the remaining claims to the extent
necessary to determine whether these claims are likewise unpatentable over
Bell, Hoffman, Moreno, and/or other prior art. We leave it to the Examiner
to determine the appropriateness of any further rejections based on these or
other references. Our decision not to enter a new ground of rejection for all
claims shall not be considered any indication of the patentability or
unpatentability of the non-rejected claims.
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DECISION
We reverse the Examiner’s decision to reject dependent claims 17-30
and 34-36.
We affirm the Examiner’s decision to reject claims 31-33. However,
we affirm the Examiner’s decision based on reasoning that differs from that
of the Examiner and accordingly, pursuant to our authority under 37 C.F.R.
§ 41.50(b), we designate our affirmance as a new ground of rejection in
order to afford Appellants a fair opportunity to respond.
We enter a new ground of rejection for claims 17 and 25 as
unpatentable over Bell, Hoffman, and Moreno.
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” 37
C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . .

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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).

AFFIRMED; 37 C.F.R. § 41.50(b)

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