Ex Parte Ulrich

Patent Trial and Appeal BoardJul 27, 2016

12844499 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/844,499 07/27/2010 122573 7590 07/27/2016 Fitch, Even, Tabin & Flannery, LLP/ Walmart 120 South LaSalle Street Suite 1600 Chicago, IL 60603-3406 FIRST NAMED INVENTOR Richard Bennett Ulrich 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. 8842-98202-US 8186 EXAMINER HOLLOWAY III, EDWIN C ART UNIT PAPER NUMBER 2683 MAILDATE DELIVERY MODE 07/27/2016 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 RICHARD BENNETT ULRICH Appeal2014-008759 Application 12/844,499 Technology Center 2600 Before JEAN R. HOMERE, JOHN A. EV ANS, and DANIEL J. GALLIGAN, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL 1 Appellant2 seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's final rejection of claims 1, 3-11, and 13-20. App. Br. 3. We have jurisdiction under 35 U.S.C. Â§ 6(b ). Claims 2 and 12 have been canceled. Claims Appx. We affirm. 1 Our Decision refers to Appellant's Appeal Brief filed February 20, 2014 ("App. Br."); Appellant's Reply Brief filed August 8, 2014 ("Reply Br."); Examiner's Answer mailed June 9, 2014 ("Ans."); the Final Office Action mailed September 20, 2013 ("Final Act."); and original Specification filed July 27, 2010 ("Spec."). 2 Appellant identifies Wal-Mart Stores, Inc. as the real party in interest. App. Br. 3. Appeal2014-008759 Application 12/844,499 STATEMENT OF THE CASE Claims on Appeal Claims 1 and 11 are independent claims. Claim 1 is reproduced below (with disputed limitations in italics): 1. A method to facilitate an end user reading a plurality of radio frequency identification (RFID) tags using an RFID tag reader, the method comprising: - interrogating en masse the plurality of RFID tags; - receiving corresponding responses from various ones of the plurality of RFID tags; - providing at the RFID tag reader a plurality of end user- perceivable indications corresponding to the responses from the various ones of the plurality of RFID tags, by providing only one such end user-perceivable indication for each of the plurality of RFID tags notwithstanding that a given one of the plurality of RFID tags might respond to the en masse interrogation more than once, to thereby inform an end user of the RFID tag reader with respect to a corresponding reading state as regards the plurality of RFID tags. Berquist et al. ("Berquist") Mon Hougen et al. ("Hougen") References US 2001/0008390 Al US 6,354,493 B 1 US 2006/0208859 Al 2 July 19, 2001 Mar. 12, 2002 Sept. 21, 2006 Appeal2014-008759 Application 12/844,499 Examiner's Rejections Claims 1, 3-9, 11, and 13-19 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Mon and Berquist. Final Act. 2--4. Claims 10 and 20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Mon, Berquist and Hougen. Final Act. 4--5. ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's arguments the Examiner erred. See App. Br. 8-12; Reply Br. 2-3. We are not persuaded by Appellant's arguments. We highlight and address specific arguments and findings for emphasis as follows. Appellant contends the Examiner erred in finding Berquist teaches the "only one such end user-perceivable indication," as recited in claims 1 and 11. App. Br. 8. First, Appellant asserts the Examiner erred in stating that providing only one indication, as claimed, is "considered to be a minor difference" from the teachings of the prior art. App. Br. 8-9 (citing Final Act. 3). In response, however, the Examiner finds Berquist teaches an indication presented to the user only once as an alternative to repeated indications. Ans. 3 (citing Berquist i-f 23 ("[A Jn unfavorable sound may be one having a frequency of 300 Hz and a duration of 120 milliseconds that is played only once.")). Appellant's Specification explains that "these indications can each comprise an audible sound." Spec. i-f 16. Appellant's Specification describes end user-perceivable indications as including "different sounds ... to help the end user distinguish between them." Spec. i-f 34. Thus, we agree with the Examiner that a unique sound played only 3 Appeal2014-008759 Application 12/844,499 once in Berquist teaches the "only one such end user-perceivable indication," recited in claims 1 and 11. Appellant additionally argues the proposed combination of Mon and Berquist renders Mon unsatisfactory for its intended purpose. App. Br. 10- 12. In particular, Appellant contends: it is critical to Mon's approach that multiple signals be received for even a single targeted tag as such a plurality of signals is fundamentally necessary to permitting the user to physically locate the desired tag as they sweep their handheld RFID-tag reader back and forth over time and over the area of interest. App. Br. 10. Appellant further asserts Mon requires multiple user- perceivable indications with variations in loudness to guide the user to the tag( s) of interest. App. Br. 11 (citing Mon col. 4, 1. 56 - col. 5, 1. 16); Reply Br. 3. Appellant concludes that a single user-perceivable indication would frustrate the intended purpose of Mon. App. Br. 11. Appellant additionally asserts Mon teaches away from its combination with Berquist based on its dependence on multiple feedback signals to distinguish a single tag of interest. App. Br. 11-12; Reply Br. 2-3. The Examiner finds Mon teaches using a louder or brighter response as an alternative to a repetitive signal. Ans. 3--4 (citing Mon col. 5, 11. 14-16 ("Alternately [to a repeating feedback signal], a louder or brighter response could be used, or any variation that would direct the operator to the desired article 61.")). We agree with the Examiner that Mon teaches using a single indication, either louder or brighter than other indications, to locate a desired article. Appellant's contention that providing one sound at different volume levels teaches providing multiple indications rather than only one indication (App. Br. 11) is not persuasive because Appellant has not directed us to any 4 Appeal2014-008759 Application 12/844,499 definition of "indication" that excludes such a single sound. Rather, we determine providing one sound, even at different volumes, is within the broadest reasonable interpretation of "only one such end user-perceivable indication," as recited in claim 1. This teaching in Mon contradicts Appellant's assertion that Mon solely requires multiple signals to distinguish a single tag. App. Br. 11-12; Reply Br. 2-3. Thus, Appellant has not persuaded us that Mon teaches away from its combination with Berquist. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("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 .... "). The louder or brighter single indication in Mon does not render Mon unsatisfactory for its intended purpose when combined with Berquist. We are not persuaded of Examiner error, and, therefore, we sustain the rejection of claims 1 and 11 and dependent claims 3-10 and 13-20, for which additional persuasive arguments have not been presented. DECISION We affirm the Examiner's rejection of claims 1, 3-11, and 13-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 5