In Re Breiner ( 2012 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
(Serial No. 11/322,051)
IN RE SHELDON BREINER
__________________________
2011-1387
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences
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Decided: May 10, 2012
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JAMES S. MCDONALD, of Fremont, California, for ap-
pellant.
RAYMOND T. CHEN, Solicitor, United States Patent &
Trademark Office, of Alexandria, Virginia, for appellee.
With him on the brief were BRIAN T. RACILLA and SYDNEY
O. JOHNSON, JR., Associate Solicitors.
__________________________
Before RADER, Chief Judge, LINN, and WALLACH, Circuit
Judges.
IN RE BREINER 2
RADER, Chief Judge.
The Board of Patent Appeals and Interferences af-
firmed the examiner’s rejection of all pending claims of
U.S. Patent Application No. 11/322,051 (filed Dec. 29,
2005) (the “’051 application”). See Ex parte Sheldon
Breiner, No. 2010-009969 (B.P.A.I. Nov. 9, 2010). Dr.
Sheldon Breiner is the named inventor of the ’051 appli-
cation. On February 10, 2011, the Board denied Dr.
Breiner’s petition for rehearing. Ex parte Sheldon
Breiner, No. 2010-009969 (B.P.A.I. Feb. 10, 2011). Be-
cause the Board correctly determined the claims at issue
are obvious to one of ordinary skill in the art, this court
affirms.
I.
The ’051 application claims systems and methods for
collecting and disseminating data. The goal of the inven-
tion is to solve problems associated with efficiently collect-
ing and reporting human-observable data from far-flung
sources. ’051 application at 0014. According to the speci-
fication, clients send information requests to a centralized
computer. Id. at 0042. The information request may ask
for, among other things, weather conditions, traffic condi-
tions, the number of vehicles in a parking lot, or prices
and brands carried by a retailer. Id. at 0052. The com-
puter server wirelessly transmits the information re-
quests to GPS-enabled wireless communication devices
carried by a plurality of agents. Id. Each agent obtains
and sends the requested data back to the computer
server. Id. The agent’s geographic location is also sent to
the server. Id. The computer server then analyzes the
collected data and generates a report for the client. Id. at
0023. Independent claim 1 is representative:
1. A system for collecting data observed by a plurality
of human agents, and for converting the data into
3 IN RE BREINER
information desired by a client, the system compris-
ing:
a. a computer server which is programmed (i) to
receive client requests for information, the re-
quests being received via Internet browser-
based interfaces, (ii) to prepare instructions to
be carried out by a plurality of human agents
to collect data relevant to the client requests,
the human agents being at locations remote
from the computer server, and at least one
wireless communication device being associ-
ated with each of the plurality of human
agents, and the instructions to each human
agent comprising instructions to observe a
variable at a location and with a frequency for
the periodic observation of the variable at the
location, the variable to be observed by the
human agents at the different locations being
the same, (iii) to download the instructions
wirelessly to the wireless communication de-
vices associated with the human agents, (iv)
to upload data sent wirelessly to the computer
server by the wireless communication devices
associated with the human agents and (v) to
analyze and convert the uploaded data into
information desired by the client;
b. at least one wireless communication device
associated with each of the plurality of human
agents, each of the wireless communication
devices being (i) wirelessly interfaced to the
computer server and (ii) equipped with a posi-
tioning means for determining the location of
the device and with means for wirelessly up-
IN RE BREINER 4
loading the location of the device to the com-
puter server; and
c. operating means for receiving data uploaded
to the server from the wireless communication
devices associated with the human agents,
and for analyzing and converting the received
data into information for disseminating to the
client.
Id. at claim 1 (emphasis added). The examiner rejected
claim 1 of Dr. Breiner’s application as obvious in view of
U.S. Patent Application No. 2006/0015755 (filed Jul. 16,
2006) (“Jaffe”) in combination with U.S. Patent Applica-
tion No. 2002/0019820 (filed Sep. 24, 2001) (“Marcus”) and
U.S. Patent No. 6,584,401 (filed Nov. 27, 2001) (“Kir-
shenbaum”). See Office Action of Dec. 23, 2008.
The examiner relied on Jaffe as the primary refer-
ence. Jaffe claims methods and systems for collecting
data that can be used for, among other things, marketing
and sales purposes. Jaffe at 0001. Jaffe discloses a data
requestor that sends emails to various agents. Id. at
0003. The emails contain an electronic form called an
“information collector.” Id. Each agent obtains and
inputs data into the information collector. Id. The agents
then send the information collector back to a central
computer. Id. at 0033. The computer processes the data
to create reports for the data requestor. Id. at 0035.
The examiner found that Jaffe expressly disclosed
every element of the ’051 application except “wireless
communication device equipped with a positioning
means.” Examiner’s Answer of Feb. 18, 2010, at 4-6. To
fill this gap, the examiner relied on Kirshenbaum and
Marcus. Id. at 6. Kirshenbaum discloses using a GPS-
enabled wireless device to track daily commutes of par-
5 IN RE BREINER
ticipating commuters. Kirshenbaum col. 2 ll. 27-34. A
central computer receives the commute data and makes
recommendations on carpooling. Id. at col. 2 ll. 51-54.
Marcus teaches a method for converting geographic
locations to direct marketing areas. Marcus at 0008.
Marcus explains that direct marketing areas are desirable
for sales and marketing purposes. Id. at 0006.
Based on Marcus’ teachings, the examiner concluded
that one of skill in the art would understand that geo-
graphic location information is relevant when obtaining
data for sales and marketing purposes. Examiner’s
Answer of Feb. 18, 2010, at 19. As such, the examiner
found that Marcus provided the motivational link to
modify Jaffe with Kirshenbaum’s GPS-enabled device. Id.
This modification provides Jaffe’s information requestor
with the benefit of knowing where received sales and
marketing data were obtained.
The Board affirmed the examiner’s rejection and
adopted the examiner’s analysis as its own. Ex parte
Sheldon Breiner, No. 2010-009969, at 5 (B.P.A.I. Nov. 9,
2010). Subsequently, the Board denied Dr. Breiner’s
petition for rehearing. Ex parte Sheldon Breiner, No.
2010-009969 (B.P.A.I. Feb. 10, 2011). Dr. Breiner appeals
the Board’s decision.
II.
“A patent may not be obtained . . . if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which
said subject matter pertains.” 35 U.S.C. § 103(a). This
court reviews the Board’s ultimate conclusion of obvious-
ness de novo and the underlying factual findings for
substantial evidence. In re Klein, 647 F.3d 1343, 1347
IN RE BREINER 6
(Fed. Cir. 2011). Under the substantial evidence standard
of review, this court will not overturn the Board’s decision
if a reasonable mind might accept the evidence as ade-
quate to support a conclusion. In re Gartside, 203 F.3d
1305, 1312 (Fed. Cir. 2000). The identification of analo-
gous prior art is a factual question. In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004). During examination proceed-
ings, claim language is given its broadest reasonable
interpretation consistent with the specification and re-
viewed by this court for reasonableness. In re Morris, 127
F.3d 1048, 1055 (Fed. Cir. 1997).
III.
On appeal, Dr. Breiner argues the Board erred in
three key respects. First Dr. Breiner argues that Jaffe
does not disclose making “periodic observations.” Second,
Dr. Breiner argues that Marcus is not analogous art.
Third, Dr. Breiner argues even if Marcus was analogous
art, the combination of Jaffe, Marcus, and Kirshenbaum
does not meet the wireless communication device with a
positioning means limitation.
A.
Dr. Breiner disputes the examiner’s conclusion that
Jaffe expressly discloses instructions to make “periodic
observations.” The examiner found that Jaffe’s “reporting
schedule to provide received data to the data requester”
expressly discloses “periodic observations.” Examiner’s
Answer of Feb. 18, 2010, at 4-5.
The ordinary meaning of “schedule” is “a list of recur-
ring events.” Webster’s New World Dictionary, 3d College
Ed. 1199 (1988) (emphasis added). A “reporting schedule
to provide received data” thus contemplates providing
observed data at recurring times—i.e., providing periodic
observations of data.
7 IN RE BREINER
Moreover, Jaffe teaches that the “reporting schedule”
is sent to email recipients along with a “reply by date.”
Jaffe at 0038. Significantly, the specification separately
recites the “reporting schedule” and the “reply by date”
within a single list of items. Id. By doing so, the specifi-
cation discloses and distinguishes deadlines for reporting
recurring observations (“reporting schedule”) from a
single deadline for reporting a single observation (“reply
by date”). Because Jaffe contemplates instructions to
report observations at recurring times, substantial evi-
dence supports the examiner’s finding that Jaffe discloses
“periodic observations.”
B.
Next, Dr. Breiner disputes the examiner’s conclusion
that Marcus and the ’051 application are both within the
art of “market analysis.” As an initial matter, the PTO
contends that Dr. Breiner waived any non-analogous art
arguments by not raising them before the Board. This
argument is without merit, as Dr. Breiner sufficiently
exhausted his non-analogous art arguments before the
Board. Specifically, Dr. Breiner argued below that Mar-
cus cannot serve as the motivation to combine Jaffe with
Kirshenbaum. See Breiner’s Substitute Appeal Brief to
the Board of January 8, 2010, at 25. Thus, we consider
Dr. Breiner’s non-analogous art arguments.
The examiner found both Marcus and the ’051 appli-
cation were within the same art of “market analysis.”
Examiner’s Answer of Feb. 18, 2010, at 6. A reference
qualifies as prior art for an obviousness analysis only
when it is analogous to the claimed invention. Innoven-
tion Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011). Two tests govern the scope of analogous
prior art: (1) whether the art is from the same endeavor,
regardless of the problem addressed and, (2) if the refer-
IN RE BREINER 8
ence is not within the field of the inventor’s endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.
Bigio, 381 F.3d at 1325.
Marcus converts geographic areas to direct marketing
areas. Marcus at 0008. Marcus teaches that this conver-
sion provides data “useful for business people for market-
ing and advertising purposes.” Id. at 0006. In other
words, Marcus modifies data so that it can be more effec-
tively used for market analysis. Thus, Marcus is within
the art of market analysis.
The ’051 application specification delineates a broad
field of endeavor that also includes the art of market
analysis. The specification states the invention may be
used for “a wide range of modes and purposes of data
collection,” including competitive analysis, market sur-
veys, market intelligence, and consumer sampling. ’051
application at 0005. In fact, the specification describes an
embodiment where users collect price and brand data. Id.
at 0052. Accordingly, substantial evidence supports the
Board’s finding that the ’051 application, like Marcus, is
within the field of “market analysis.”
C.
Finally, Dr. Breiner argues that Marcus would not
have motivated a skilled artisan to modify Jaffe with
Kirshenbaum’s GPS-enabled wireless communication
devices. Dr. Breiner argues that Marcus would only
motivate modifying Jaffe to convert geographic data to
direct marketing areas. Dr. Breiner’s argument is unper-
suasive, as Marcus is cited as a motivation to combine
Jaffe with Kirshenbaum, not as a motivation to modify
Jaffe in accordance with Marcus’ teachings. See Exam-
iner’s Answer of Feb. 18, 2010, at 6-7.
9 IN RE BREINER
The examiner correctly found that combining Jaffe
with Marcus and Kirshenbaum meets the “wireless com-
munication devices [] equipped with a positioning means”
limitation. Id. “[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). Under Marcus, a
skilled artisan would recognize that knowing the geo-
graphic locations associated with sales and marketing
data is desirable. As such, a skilled artisan would have
been motivated to combine Jaffe’s wireless communication
devices with Kirshenbaum’s GPS-enabled devices to reap
the benefits of determining where sales and marketing
data were obtained. Combining Jaffe’s data collection
system with GPS-enabled wireless devices from Kir-
shenbaum is no more than “the predictable use of prior
art elements according to their established functions.” Id.
at 417. Therefore, the combination of Marcus and Kir-
shenbaum renders it obvious to modify Jaffe with a wire-
less communication device equipped with a positioning
means.
IV.
This court has also considered Dr. Breiner’s remain-
ing arguments and find them unpersuasive. Because the
Board correctly determined the ’051 application’s claims
are obvious to one of ordinary skill in the art, this court
affirms.
AFFIRMED