Ex Parte KADABA

Patent Trials and Appeals Board

Jan 23, 2019

14198676 - (D) (P.T.A.B. Jan. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/198,676 03/06/2014 NAGESH KADABA
143177 7590 01/25/2019
Shook, Hardy & Bacon L.L.P.
(United Parcel Service, Inc.)
2555 Grand Blvd.
Kansas City, MO 64108-2613
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IPP201431337 1085
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
01/25/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAGESH KADABA
Appeal2017-010469 1
Application 14/198,67 62
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant's Supplemental Appeal Brief ("App.
Br.," filed April 11, 2017) and Reply Brief ("Reply Br.," filed August 3,
2017), and the Examiner's Answer ("Ans.," mailed June 5, 2017) and Final
Office Action ("Final Act.," mailed May 20, 2016).
2 Appellant identifies United Parcel Service of America, Inc. as the real
party in interest. App. Br. 3.
Appeal2017-010469
Application 14/198,676
CLAIMED INVENTION
Appellant's claimed invention relates to "systems for coordinating the
efforts of multiple carriers to ship packages, and in particular relates to
electronic systems for coordinating such shipments using tracking, billing
and other information" (Spec. 1 ).
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for generating a multi-carrier shipping
label, the method comprising:
identifying, via one or more processors, a first carrier-
specific tracking number associated with a first carrier, wherein
the first carrier-specific tracking number is to be used by the first
carrier in transporting a parcel through the first carrier's delivery
network;
identifying, via the one or more processors, a second
carrier-specific tracking number associated with a second carrier,
wherein the second carrier-specific tracking number is to be used
by the second carrier in transporting the parcel through the
second carrier's delivery network;
storing, via the one or more processors, the first carrier-
specific tracking number in association with the second carrier-
specific tracking number;
in response to determining that the parcel is designated for
a delivery destination in a designated geographic area,
generating, via the one or more processors, a multi-carrier
shipping label that is to be affixed to the exterior of the parcel
and that comprises (a) first machine-readable indicia of the first
carrier-specific tracking number scanned by a mobile acquisition
device to obtain tracking information, the first carrier-specific
tracking number associated with the first carrier and (b) second
machine-readable indicia of the second carrier-specific tracking
number scanned by the mobile acquisition device to obtain
additional tracking information, the second carrier-specific
tracking number associated with the second carrier; and
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detecting a location of the parcel being transported
through the first carrier's delivery network or the second carrier's
delivery network, in part, in response to the mobile acquisition
device scanning the first or second carrier-specific tracking
numbers.
REJECTIONS
Claims 1, 5-8, 12-15, and 19-21 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Morimoto (US 7,035,856 Bl, iss. Apr. 25,
2006) and Hoffman et al. (WO 01/59697 Al, pub. December 22, 2000)
("Hoffman") (paragraph citations to Hoffman refer to the English language
translation in corresponding US 2003/0014375 Al, pub. Jan. 16, 2003).
Claims 2--4, 9-11, and 16-18 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Morimoto, Hoffman, and Pintsov (US 6,959,292 Bl,
iss. Oct. 25, 2005).
ANALYSIS
Independent Claims 1, 8, and 15 and Dependent Claims 5-7, 12-14, and
19-21
We are not persuaded, as an initial matter, by Appellant's argument
that Morimoto teaches away from:
a multi-carrier shipping label that is to be affixed to the exterior
of the parcel and that comprises (a) first machine-readable
indicia of the first carrier-specific tracking number scanned by a
mobile acquisition device to obtain tracking information, the first
carrier-specific tracking number associated with the first carrier
and (b) second machine-readable indicia of the second carrier-
specific tracking number scanned by the mobile acquisition
device to obtain additional tracking information, the second
carrier-specific tracking number associated with the second
carrier[,]
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Application 14/198,676
as recited in independent claim 1, and similarly recited in independent
claims 8 and 15 (App. Br. 9--14).
Morimoto is directed to a system and method for tracking and routing
shipping items, and discloses that to increase the efficiency of the process at
transfer points or intermediate destinations, the shipping containers may be
configured with attached memory devices, e.g., barcode stickers, for storing
information about the item(s) being shipped, e.g., including a unique
identifier (Morimoto, col. 2, 11. 50-67; col. 5, 11. 41--47). Morimoto
discloses that this unique identification number may be shared with one or
more shipping companies that handle the package from its origination to its
final destination, and that the unique identifier also may be used to control
billing receipts and customs records for the shipped items (id. at col. 15,
11. 1-20).
Appellant ostensibly maintains that, in describing the purported
advantages of a single tracking number for use by multiple shipping
companies, Morimoto teaches away from a multi-carrier shipping label, as
called for in independent claims 1, 8, and 15 (App. Br. 9-14; see also Reply
Br. 1---6). A teaching away, however, requires discouragement, and
Appellant has not pointed to any passage in Morimoto that criticizes,
discredits, or otherwise discourages providing a multi-carrier shipping label,
as recited in the independent claims. See In re Gurley, 27 F .3d 551, 553
(Fed. Cir. 1994) ("A reference may be said to teach away when a person of
ordinary skill, upon [ examining] 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."); see also
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (The prior art's mere
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Application 14/198,676
disclosure of more than one alternative does not constitute a teaching away
from any of the alternatives when the disclosure does not criticize, discredit,
or otherwise discourage the solution claimed).
Appellant further argues that the Examiner's proposed modification of
Morimoto (i.e., to include package labelling identifying first and second
carrier specific tracking numbers) would render Morimoto unsatisfactory for
its intended purpose and change its principle of operation (App. Br. 14--17;
see also Reply Br. 6-10). Appellant asserts that this is so because not only
does Morimoto teach away from independent claims 1, 8, and 15, but the
proposed modification would change the basic principles under which
Morimoto was designed to operate (id.).
The Examiner maintains that "[ t ]he only change needed to Morimoto
is the ability to recognize another tracking symbol and associate [its]
information in a database for updating as Hoffman does" (Ans. 4). The
Examiner, thus, explains that after modifying Morimoto to include
Hoffmann's distinct carrier tracking indicia, i.e., replacing Morimoto's
shared carrier indicia with Hoffman's separate carrier tracking symbols, the
basic principles of tracking and delivery would still be accomplished (id.).
We agree with the Examiner that modifying Morimoto' s system to
recognize different carrier indicia on a tracking label and use these different
indicia for storing and updating tracking information would not render
Morimoto unsatisfactory for its intended purpose or otherwise change its
principle of operation (id. at 4--5). The separate carrier tracking symbols
would serve the same purpose as Morimoto's shared carrier indicia, i.e., to
track the location of the package.
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We also are not persuaded that the Examiner relied on improper
hindsight reconstruction (App. Br. 17-18). The Examiner provided "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness" based on factual findings supported by the
record (see Final Act. 5-6). KSR Int 'l v. Teleflex, Inc., 550 U.S. 398, 417-
18 (2007).
Appellant further argues that the combination of Morimoto and
Hoffman does not disclose each and every feature of independent claims 1,
8, and 15 (App. Br. 18-26; see also Reply Br. 10-19). Appellant points to
Figure 13 of the present application as showing an exemplary multi-carrier
shipping label (in this example, the label carries a lZ tracking number for
UPS together with a 30-digit tracking number for USPS), and argues that
this feature is not disclosed or suggested by the combination of Morimoto
and Hoffman (App. Br. 20). Appellant observes that Morimoto discloses a
single, global tracking number for use by multiple shipping companies,
rather than "a multi-carrier shipping label" (id. at 21-24), and argues that
Hoffmann does not cure the deficiency of Morimoto (id. at 24--25).
More particularly, Appellant notes that the Examiner has
acknowledged that Hoffmann does not specifically require that multiple
carrier symbols are carried on the same label (id. at 24). And Appellant
argues that the Examiner's suggestion that "they could be on the same label"
runs counter to the disclosure of Hoffmann which, at most, "discloses
sending any 'symbols' to a next distribution center that the postal item is
expected to be delivered to next on the route such that the next distribution
center can confirm the symbols" (id. at 24--25). Appellant also maintains
that, by suggesting that multiple carrier symbols "could be on the same
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label," the Examiner is improperly citing Hoffman for what it could disclose
or is capable of disclosing rather than what it expressly or inherently
discloses (id. at 24--25; see also Reply Br. 18-19 (arguing that even if
Hoffman discloses the use of multiple keys, the keys would not be generated
on the same label inasmuch as any subsequent application of an
identification key in country B would necessarily mean that the codes were
not generated on the same label, but a subsequent key would be applied after
the fact)).
We do not agree, as an initial matter, that the Examiner has
mischaracterized the Hoffman disclosure; instead, we agree with the
Examiner that Hoffman discloses using multiple indicia, i.e., identification
keys, affixed to the exterior of a postal item (Ans. 5-6; see also Final
Act. 5). The Examiner acknowledges that Hoffman "does not specifically
require that the symbols are on the same label" (Final Act. 6). The Supreme
Court, however, has made clear that, when considering obviousness, "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, 550 U.S. at 418. That is particularly relevant here where, as the
Examiner observes, the individual carrier tracking symbols would serve the
exact same purpose whether the symbols are provided on two barcode
stickers, i.e., two labels, or one- a barcode scanner would read them in
exactly the same way (Ans. 6).
In view of the foregoing, we sustain the Examiner's rejection of
independent claims 1, 8, and 15 under 35 U.S.C. § 103(a). We also sustain
the rejection of dependent claims 5-7, 12-14, and 19-21, which are not
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argued separately, except based on their dependence from independent
claims 1, 8, and 15 (App. Br. 26).
Dependent Claims 2-4, 9--11, and 16-18
Appellant does not present any argument in support of the
patentability of dependent claims 2--4, 9--11, and 16-18, except to argue that
the claims are allowable based on their dependence from independent
claims 1, 8, and 15 (id.). We are not persuaded, for the reasons set forth
above, that the Examiner erred in rejecting independent claims 1, 8, and 15
under 35 U.S.C. § 103(a). Therefore, we sustain the rejection of dependent
claims 2--4, 9--11, and 16-18.
DECISION
The Examiner's rejections of claims 1-20 under 35 U.S.C. § 103(a)
are 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)(l)(iv).
AFFIRMED
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