Invalidity dossier
US 5047614
Method and apparatus for computer-aided shopping
Current assignee: Individual
Added 9/24/2026, 2:31:46 AM
Active provider: DeepSeek · deepseek-flash
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for authoritative information on this patent and any 2026 litigation activity.
Let me do one more targeted check for any litigation history involving this specific patent.
US Patent 5,047,614 — Verification Summary
Search note: I searched public databases (Google Patents, USPTO.report, FreePatentsOnline, EveryPatent, Espacenet/EP record) rather than the native USPTO PatentCenter and CAFC docket interfaces, which I could not query directly. I found no litigation, ITC, PTAB, or CAFC 2026 appeal activity naming US 5,047,614. Treat any litigation status as unconfirmed rather than as a verified "none."
Bibliographic data
| Field | Value |
|---|---|
| Patent number | US 5,047,614 A |
| Title | Method and apparatus for computer-aided shopping |
| Inventor | James S. Bianco (residence listed as Enfield, CT) — the EP counterpart record names the applicant as "Bianco, James Salvatore" |
| Assignee | None — individual/unassigned. Google Patents lists the current and original assignee as "Individual" |
| Application no. | 07/391,733 |
| Filing date | 1989-08-08 |
| Priority date | 1989-01-23 |
| Issue date | 1991-09-10 |
| Chain | Continuation-in-part of App. Ser. No. 300,352, filed 1989-01-23 (now abandoned) |
| Classifications | US 235/385; 235/382; 235/462.45 — Int'l G06F 15/24, 15/26; CPC G06Q 30/02, G06K 17/0022, G07G 1/145 |
| Examiner / Attorney | Primary Examiner Harold Pitts; Atty. John H. Crozier |
| U.S. refs. cited | 4,471,218 (Culp); 4,648,037 (Valentino); 4,654,482 (DeAngelis); 4,780,599 (Baus); 4,908,500 (Baumberger); 4,916,441 (Gombrich) |
| Status | Expired – Lifetime; anticipated expiration 2009-01-23 |
| Family | WO 1990008440 A1, EP 0454787 A4, AU 50816/90 A (all not active) |
Abstract (verbatim)
"In a preferred embodiment, a method and means to aid shopping which includes the use by a consumer of a portable bar code scanner having an electronic memory. The consumer enters desired items into the memory by scanning bar codes on, for example, containers, coupons, advertisements, and pamphlets furnished by a store. The memory is then read by a store terminal which may compile a printed shopping list and/or may transmit the order to a warehouse environment for manual and/or automatic order picking. The memory may be read by the store terminal over a telephone line via a modem."
Independent claims — plain-language overview
The patent has 17 claims total, of which only two are independent: claim 1 (apparatus) and claim 8 (method). Claims 2–7 depend from claim 1; claims 9–14 depend from claim 8; claims 15 and 16 depend from claim 1; claim 17 depends from claim 8.
Claim 1 — Apparatus. Three cooperative elements:
- (a) a bar code reader that reads, at a location remote from a store, information representing items the consumer wants;
- (b) a portable memory that receives and retains that information; and
- (c) a terminal located at the store that reads the portable memory "after temporary physical attachment of said portable memory means to said terminal means," compiles a list of the items, and provides the list to the consumer.
The scope-limiting concepts are (i) entry occurs remotely from the store, and (ii) hand-off to the store terminal is by temporary physical attachment (a plug-in/docking action), not wireless or over-the-air transfer.
Claim 8 — Method. A six-step method using the same hardware set:
- (a) provide bar code reading means to read desired-item information at a location remote from a store;
- (b) provide portable memory to receive and retain the information;
- (c) provide a store-located terminal that reads the portable memory after temporary physical attachment, compiles a list, and provides a printed list to the consumer;
- (d) read bar codes representing the desired items;
- (e) transfer the stored information into the terminal "by physically temporarily attaching said portable memory means to said terminal means"; and
- (f) the terminal provides the printed list.
Notable drafting artifacts in the printed record (flagged literally, not corrected)
- Claim 10 recites "as defined in claim 10" — an apparent self-referential dependency (compare claim 3, which depends from claim 2). The EP counterpart's amended claim set had renumbered this claim as claim 14 depending from claim 13.
- Claim 15 is truncated in the published grant text: "...said bar code reading means is insertable in said" — the sentence simply ends, with no claim term after "said."
- Claim 11 ("terminal means provides a printed list") is redundant with the printed-list limitation already recited in independent claim 8.
- The EP counterpart (EP 0454787) entered the international phase with an amended claim set (original claims 4, 7, 15, 16, and 18 cancelled) and its independent claims dropped the "remote from a store" and "provide said list to said consumer" language — a useful reminder that the family members are not coextensive with the U.S. grant.
Significance (context)
This patent is a frequently cited antecedent in the self-scanning / home-shopping / kiosk literature: Google Patents shows 381+ forward citations (e.g., it was cited in the Norand hand-held data capture line, US 5,250,789 "Shopping cart," US 5,360,610 "Store specific shopping system and method including a map/shopping list," and it appears as a "D,A" reference in EP 1,124,193 and EP 1,111,523 search reports). It is also cited in the background art of US 2006/0108419 ("Burden free shopping") and RU 2216037 C2.
Confidence and uncertainty
- Bibliographic fields, abstract, and claim text are high confidence — they are corroborated across the supplied full patent text, the US 5,047,614 PDF, and EveryPatent.
- The inventor's middle name differs across records ("James S." in the U.S. grant vs. "James Salvatore" in the EP filing); I have not resolved this and am reporting both as found.
- Litigation/CAFC status is unverified. My searches surfaced only unrelated 2026 Federal Circuit activity (e.g., Constellation Designs, LLC v. LG Electronics, Nos. 2024-1822, decided 2026-04-28). I found no CAFC or district court docket in 2026 (or earlier) involving US 5,047,614, but I did not have direct access to PACER, the CAFC docket, or USPTO PatentCenter to confirm an absence.
Generated 9/29/2026, 1:36:00 PM
Cases on file (0)
Specific litigation cases in our database that name US patent 5047614. The free-form analysis below may also discuss cases beyond this list.
No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search litigation-specific sources for this patent number. Let me run several targeted queries.
Let me run additional targeted searches on litigation-specific databases.
Litigation search results — US Patent 5,047,614
Bottom line: I found no known litigation involving US 5,047,614 — no district court case, no ITC § 337 investigation, no PTAB post-grant proceeding (IPR/PGR/CBM), and no Federal Circuit appeal — in any year, including 2026. This is a negative finding, and I want to be candid about the limits on how it was reached.
What I searched and what came back
I ran queries against litigation-oriented and general patent sources (Unified Patents litigation portal, Google Patents' "Cited By"/family data, Justia Patents and Justia Dockets, FreePatentsOnline, Docket Alarm/PTAB dockets, patentimages/EPO search reports, and general web). Every hit for the string "5047614" / "5,047,614" was one of:
| Type of hit | Example | Not litigation? |
|---|---|---|
| Forward prior-art citation in later patents | Justia pages for US 9,311,043 and US 8,175,908 list "5047614 | Sept. 10, 1991 |
| EPO/foreign search-report citation | US 5,047,614 A (BIANCO, JAMES S) as a "D,A" reference in EP 1,124,193; "US 5 047 614 A (BIAMCO)" in EP 1,111,523 | ✅ examination citation |
| Cited in background/description of a later patent | RU 2216037 C2 describes US 5,047,614 as prior art for an automated store/shopping method | ✅ prior-art discussion |
| USPTO EAST/ACS search-history logs reproduced in unrelated IPR exhibits | e.g., CBM2013-00021 Ex. 1206; IPR2014-01239 Ex. 1002 — the number appears only inside an examiner's search-string list | ✅ search log, not a case |
| A false-positive on the bare digits | Russian patent 2003033 C1 (hunting-cartridge bullet) has application no. 5047614/23 — unrelated Russian filing number | ✅ unrelated identifier |
None of these is a docket, complaint, ITC notice, PTAB petition, or CAFC opinion. Notably absent were the signatures of a real case: no Bianco v. [retailer/technology company], no NPE assertion, no § 337 investigation, no IPR in which the patent is the challenged or asserted patent.
Why this negative is plausible, not just a search gap
Three independent facts support the null result:
- The patent expired January 23, 2009 (Google Patents "Anticipated expiration"; status "Expired – Lifetime"). The statutory term ran from the 1989-01-23 priority date. Patent litigation over an expired patent can still occur (for back damages within the limitations period), but the window for meaningful assertion closed long ago, and the economic incentive for a 2026 suit is essentially nil.
- It was never assigned. The record lists the original and current assignee as "Individual" (inventor James S. Bianco). An unassigned, individually-held patent from 1989 with no corporate owner is not the profile of an NPE-funded campaign, and I found no assignment chain feeding a litigating entity.
- Its family was abandoned/withdrawn. The WO (WO 1990008440 A1, "Ceased"), EP (EP 0454787 A4, "Withdrawn"), and AU (AU 50816/90 A, "Abandoned") counterparts all went inactive — consistent with an individual inventor who did not pursue enforcement.
Its importance in the art instead ran the other direction: with 381+ (Google) / 612 (broader count) forward citations, the '614 patent is heavily cited as prior art rather than asserted as a patent-in-suit — e.g., it sits in the prior-art tables of US 5,250,789 ("Shopping cart"), US 5,360,610 ("Store specific shopping system … including a map/shopping list"), and US D371,550 ("Hand held personal scanner"). Those are citations by examiners/applicants, not adversarial proceedings.
Case-list format answer
There is nothing to populate. Per your requested schema:
| Plaintiff | Defendant | Jurisdiction | Case No. | Filed | Outcome/Status |
|---|---|---|---|---|---|
| — | — | — | — | — | No litigation identified |
Confidence and caveats (please read)
- Confidence that this is the correct patent and that the sources are treating it as art, not a case: high. The bibliographic profile (Bianco, individual, 1991 grant, expired 2009) is consistent across Google Patents, Justia, FreePatentsOnline, and the EP search reports.
- Confidence in the completeness of the negative: moderate, not absolute. The rule about preferring search results over training data cuts both ways here: the absence of a hit is weaker evidence than a hit would be. I could not run direct docket queries against PACER, the CAFC's own docket/opinion system, Unified Patents' case list, or USPTO PTAB PatentCenter/PTAB-API — those require interactive access I didn't have in this session. My searches were web-mediated. Docket-level matters that never generated a public web page (e.g., a short-lived or sealed 1990s–2000s suit) could be missed.
- Recommended verification before relying on this for any legal purpose: pull (a) PACER's "Patent/Trademark" case query by patent number across all districts, (b) the CAFC docket, (c) Unified Patents' case list, and (d) USPTO PTAB and assignment records. If a 2026 filing were to exist, those are the authoritative sources that would show it.
One item to flag as a contradiction with the earlier-generated summary: that section listed the inventor's residence as "Enfield, CT" and noted the EP counterpart names the applicant "Bianco, James Salvatore," whereas the U.S. record shows "James S. Bianco." I could not resolve that in this session; I am reporting it as found, not corrected. Separately, note the EP search report renders the name as "BIAMCO" in EP 1,111,523 — I read that as an OCR/typosetting error for "BIANCO," but per the no-auto-correct rule I am flagging the literal string rather than silently fixing it.
Generated 10/1/2026, 6:13:07 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll verify the canonical "no PTAB activity" default against live sources before reporting.
Search hits for "5,047,614" are false positives (a different power-management '614 patent, a Nichia reference, and a search-string exhibit). Let me run a couple more targeted checks on the patent itself.
PTAB proceedings on file — US 5,047,614 ("Method and apparatus for computer-aided shopping")
Verification note: the canonical list in the structured block is the USPTO ODP ingest, and I treated it as authoritative. I then ran independent web checks against PTAB E2E documents and general web indexes. Every apparent "hit" for the string 5,047,614 proved to be a false positive:
| Search hit | Why it is not this patent |
|---|---|
Future Link Systems IPR petition (PTAB, doc. on ptacts.uspto.gov) |
A different '614 patent (U.S. 7,51x,614-lineage, "reducing power consumption … functional blocks") |
| Nichia-614 | A prior-art reference, not a U.S. patent number |
| CBM2013-00021, Ex. 1206 | The string "5047614" appears only inside a PTO search-history log, not as a challenged patent |
| Justia / Google Patents citation tables | Forward/backward citations, not proceedings |
| Bianco v. Globus Medical, No. 2:12-cv-00147 (E.D. Tex.), aff'd 618 F. App'x 1032 (Fed. Cir. 2015) | Different Bianco — Sabatino Bianco, M.D., an expandable-interbody-spacer trade-secret case. No relation to James S. Bianco or to '614 |
Proceedings overview
Zero AIA trial proceedings exist on US 5,047,614 — no IPRs, no PGRs, no CBMs, no derivation proceedings. The breakdown is therefore: 0 active, 0 claims invalidated, 0 claims sustained, 0 settled, 0 institution denials. The bottom-line defensive posture this gives a defendant is not "the patent is hardened by surviving PTAB attack" — it is the far weaker signal that the patent was never worth attacking: it is unassigned (individual inventor), it expired roughly a decade before the AIA's trial mechanisms even became available on 2012-09-16, and it has never been the subject of an assertion campaign. There is no PTAB record to leverage, and equally no PTAB road map to follow. A defendant's invalidity work here starts from a blank sheet, not from an FWD.
Per-proceeding analysis
None. There are no proceedings to analyze.
I am deliberately not populating the ### {PROCEEDING_NUMBER} — {Petitioner} v. {Patent Owner} template, because doing so would require inventing numbers, panels, grounds, and dispositions. Per the operating rules, I do not fabricate proceeding numbers or outcomes.
Strategic summary
Which claims are canceled vs. sustained vs. untested. All 17 claims are UNTESTED at the PTAB. No claim of '614 has ever been challenged in an AIA trial, so no claim is canceled, and none has been affirmed as patentable by the Board. That sounds neutral but is not useful to either side: because no FWD exists, there is no statutory § 315(e)(2) estoppel burdening anyone, and no Board claim construction to borrow. Everything on validity is open. The claims are all in force-of-record but expired, which for a defendant means the practical inquiry is whether any pre-expiration damages period is still live — not whether you can knock out a claim you are currently accused of infringing.
Why the absence is structural, not accidental. Three independent reasons explain the empty docket, and a defendant should understand each before reading anything into it:
- Timing. The patent reached its term between 2008-09-10 (17 years from the 1991-09-10 issue date under pre-URAA law) and, on Google Patents' recorded figure, 2009-01-23 (20 years from the 1989-01-23 priority date). Flagging the discrepancy explicitly: these two measures disagree, and Google Patents labels its figure an "anticipated expiration … assumption." On either measure the patent expired before 2012-09-16, when IPR/PGR/CBM became available. IPR is not statutorily barred against an expired patent, but absent live litigation there is essentially no incentive to file one — which is why none exists.
- Statutory unavailability. PGR is categorically impossible — it reaches only patents whose claims have an effective filing date on or after 2013-03-16, and this claim set dates to 1989. CBM was theoretically available regardless of filing date (the patent's "preferred shopping sequence," coupon-tagging, and customer-profile subject matter would at least have raised a § 18(d) "technological invention" fight), but the CBM program sunset on 2020-09-16 and the patent had been expired for over a decade by then.
- No enforcement engine. Current and original assignee is "Individual" — no PAE, no defensive aggregator (no Unified Patents, RPX, or similar in the chain), and no district court assertion of '614 surfaced in my searches. Defensive aggregators target patents being asserted, not dormant expired ones.
Estoppel landscape. Because no petitioner ever filed, no § 315(e)(2) estoppel attaches to anyone. If you are a defendant today: every § 102/§ 103 ground, every prior-art reference, and every § 112 theory remains available to you, unencumbered. The six references cited by the examiner — US 4,471,218 (Culp); 4,648,037 (Valentino); 4,654,482 (DeAngelis); 4,780,599 (Baus); 4,908,500 (Baumberger); 4,916,441 (Gombrich) — were considered during prosecution but have never been run through an adversarial Board proceeding, so they carry no Advanced Bionics § 325(d) baggage in a hypothetical future petition and no preclusive effect in court.
Pattern signals. No pattern exists: no repeat petitioner (no petitioner at all), no Patent Owner appellate activity, no PTAB trial history of any kind. One CAFC-adjacent datapoint is worth noting as negative evidence — the only Federal Circuit case my searches tied to a "Bianco" in this technology space was Bianco v. Globus Medical, and as noted above that is an unrelated Texas trade-secret dispute involving a different individual. It should not be cited as appellate history for this patent.
Recommended next steps
- If you are a defendant: there is no Final Written Decision to cite and no canceled claim to point at. Do not represent to a court or opposing counsel that any claim of '614 has been invalidated by the PTAB — that would be false. Your dispositive threshold arguments are instead status-based: confirm the expiration date and terms, and evaluate whether any enforceable pre-expiration damages window remains. Also scrutinize claim 15, which is truncated mid-sentence in the published grant text ("…said bar code reading means is insertable in said") and is a ripe § 112(b) indefiniteness target if it is ever asserted; and claim 10, which recites "as defined in claim 10" (an apparent self-referential dependency — compare claim 3's dependency on claim 2). These are drafting artifacts I am flagging literally, not correcting.
- If you are considering a defensive filing: none is available or sensible. PGR is barred by the 1989 effective filing date; CBM is sunset as of 2020-09-16; and an IPR on an expired patent would be an expensive exercise in futility given there is no live assertion to rebut. Do not budget for a PTAB strategy here.
- Milestone tracking: not applicable — there is no institution-decision deadline, no oral hearing, and no statutory one-year FWD due date, because no petition has ever been filed. Any future IPR would run from a fresh institution date, not from any existing docket.
- Plainly stated: there is no PTAB activity on US 5,047,614. The absence is not a signal of a hardened patent — it is a signal of an abandoned, expired, individually-held patent that no one ever had a commercial reason to challenge.
Sources consulted: USPTO Open Data Portal AIA-trial ingest (supplied in-prompt; canonical); PTAB E2E public document repository — https://ptacts.uspto.gov/ptabweb/ ; USPTO PTAB decisions library — https://www.uspto.gov/patents/ptab/decisions ; Google Patents record for US 5,047,614 — https://patents.google.com/patent/US5047614/en ; uspto.report — https://uspto.report/patent/grant/5047614 ; CourtListener (for CAFC docket checks) — https://www.courtlistener.com/
Caveats: I did not have direct query access to PTAB E2E's docket search, PACER, the CAFC docket, or the USPTO ex parte/inter partes reexamination databases; my conclusions rest on the ODP structured block plus web indexing. Accordingly, treat "no PTAB proceedings" as strongly supported but not database-verified — particularly for pre-AIA inter partes reexamination, which existed from 1999-11-29 and would not appear in an AIA-trial ingest. I found no reexamination record, but a direct ReexamCert / PatentCenter check would close that gap definitively.
Generated 10/1/2026, 6:13:32 PM
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record for US 5,047,614 through the available sources.
Let me try the USPTO Assignment API endpoints directly and check for the inventor's other work.
Key finding: the inventor is the founder of an operating company. Let me check for assignment records and any transfer to Control Module.
Research limitation (stated up front)
I could not query assignmentcenter.uspto.gov or the legacy assignment.uspto.gov interface directly — the assignment REST endpoints returned no usable data and the search tooling available to me hit its step limit. My findings below therefore rest on (a) the Google Patents "Legal Events" record embedded in the supplied full patent text, (b) uspto.report and EveryPatent grant records, and (c) cross-checks against the inventor's other filings. Treat the absence of assignment records as "not found," not as a verified negative. Anyone verifying should run the patent number at https://assignment.uspto.gov/patent/index.html.
Inventors
| Inventor | Residence of record | Employer at time of filing (1989) |
|---|---|---|
| James S. Bianco (EP counterpart: "Bianco, James Salvatore") | Enfield, CT per the EP filing; Suffield, CT in his later U.S. filings | Control Module Industries / Control Module, Inc., Enfield, CT — the company he founded in 1969 and of which he is owner/CEO |
Control Module is a real, long-lived operating company: Wikipedia's company profile describes it as founded by Bianco in 1969 "to meet the data capture needs of business," and credits it as an early implementer of bar-code, secure-media, biometric and RFID technology in time-and-attendance terminals (Control Module Industries profile). Bianco's later patents — e.g. US 9,886,679, US 9,290,896, D675,153, D697,506 — are all assigned to Control Module, Inc., Enfield, CT (see idiyas US 9,886,679, Justia D675153).
Unusual pattern check — NOT present. There is no evidence of inventors departing an assignee, because there was no assignee at filing. The relevant oddity is the inverse: a company founder who filed a shopping-systems patent in his own individual name, not in the name of the company he controlled. Possible explanations include the subject matter falling outside Control Module's time-and-attendance line, or a deliberate decision to hold the title personally — the record does not say. Flagging as an unexplained artifact, not as an NPE indicator.
Naming caution (do not conflate): A "Paul D. Bianco" appears repeatedly as correspondent/attorney of record on unrelated NPE-adjacent assignments (MarcTec LLC / Bonutti / P Tech LLC chains, e.g. reel 17603/0207, reel 22859/0060, surfaced in Docket Alarm exhibit). Paul D. Bianco is a Florida patent attorney with no demonstrated connection to inventor James S. Bianco of Connecticut. Same surname, different person. Do not merge these records.
Original assignee
None. US 5,047,614 issued unassigned to the individual inventor. Google Patents lists both the original and current assignee as "Individual." The front-page record in the supplied full text confirms this: the inventor is named and no assignee line appears, and the patent's own prosecution history is silent on ownership.
- Did the original owner ship a product embodying the claims? The inventor clearly ran a shipping company (Control Module, physical access/time-and-attendance terminals), but I found no evidence that Control Module ever commercialized the specific computer-aided-shopping subject matter of this patent — no product literature, no mark, no continuation filings in the shopping line by Control Module. The patent's own specification is written in prospective/aspirational terms ("the store may require…", "may be provided"), which is consistent with a conceptual disclosure rather than a shipping product.
- Current status of the owner: James S. Bianco / Control Module, Inc. appear operating, not dissolved, as of the 2010s filings. Control Module's current status in 2026 is unverified by me.
- Patent status: Expired – Lifetime, anticipated expiration 2009-01-23. This is the single most important fact for the ownership analysis: no assertion is legally available regardless of chain.
Assignment timeline
The USPTO Assignment Center record for US 5,047,614 appears to be empty.
Evidence:
- The Google Patents Legal Events table in the supplied full patent text lists seven events and zero "AS" (assignment) entries: 1989-08-08 filed; 1989-08-08 priority to US 07/391,733; 1990-01-23 priority to EP 19900903264; 1990-01-23 priority to AU 50816/90; 1990-01-23 priority to PCT/US1990/000412; 1991-09-10 granted; 1991-09-10 publication; 2009-01-23 anticipated expiration. Google Patents sources its Legal Events from USPTO assignment and PEDS data; an assigned patent of this vintage normally shows an "AS – Assignment" row. None is present.
- Neither the uspto.report grant record for 5047614 nor the EveryPatent index entry (pdir187) carries an assignment/reel-frame reference.
- The only family-level transactions are the foreign filings (WO 1990008440, EP 0454787, AU 50816/90), all now not active — these are priority filings by the same individual applicant, not assignments.
Therefore: no post-issuance assignment was recorded, and the chain stops at the original inventor. Per the task instructions, I stop the chronological section here. This is itself the finding: the patent was never conveyed away from James S. Bianco personally, and it lapsed for fee non-payment / statutory term in 2009 while still in his name.
False-positive flagged: A search result surfaced a USPTO cover sheet for Christie Digital Systems USA, Inc. bearing the attachment label "Executed Assignment 391733" (reel 042172/0114). The property number there is application 15/499,954 ("System and method for aligning stacked projectors") — "391733" is an internal attachment/document label, not Ser. No. 07/391,733. Unrelated to this patent.
Timeline diagram
timeline
title Ownership of US 5047614
1989 : Parent application filed by James S Bianco
: CIP application filed 1989-08-08
1990 : PCT and EP and AU family filed
1991 : Patent issued 1991-09-10
: No assignee of record
2009 : Patent expired 2009-01-23
NPE / troll-pattern signals
| # | Signal | Call | Basis |
|---|---|---|---|
| 1 | Shell-entity transfer | Not present | No assignment record exists at all; title never moved to any LLC or holding entity. Current owner of record is a natural person. |
| 2 | Known asserter in the chain | Not present | No assignee to compare. None of Acacia, Marathon, IV, IPNav, Wi-LAN/Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, DGC, or Spangenberg entities appears anywhere in the Legal Events table, the uspto.report record, or the family records. |
| 3 | Repeat correspondent across the chain | Not applicable | No assignment filings, hence no correspondent of record. The prosecution attorney of record is John H. Crozier (per the prior summary); he appears on a single link (prosecution) with no recurrence to measure. Note the separate, unrelated "Paul D. Bianco" attestations described above. |
| 4 | Cascading transfers | Not present | Zero transfers in ~18 years of enforceability. |
| 5 | Pre-litigation transfer | Not present | No transfer, and no litigation found (2026 activity: none; the prior section searched and found no district court, ITC, PTAB or CAFC matter naming this patent). |
| 6 | Bankruptcy fire-sale | Not present | No bankruptcy of James S. Bianco found. Control Module, Inc. shows no bankruptcy in any record I located. |
| 7 | Privateering | Not present | No transfer to a third-party NPE; no SEC disclosure of a patent-sale program; the owner is an individual, not a public company. |
| 8 | Defensive aggregator | Not present | Chain does not terminate at RPX, AST, LOT, Unified Patents or OIN. It terminates at the inventor and expires. |
Verdict
Insufficient data — but with an affirmative non-assertion finding, not a gap.
Justification: The USPTO/google Legal Events record for US 5,047,614 contains no assignment rows between filing on 1989-08-08 and expiration on 2009-01-23, and the original assignee field reads "Individual." The chain therefore consists of exactly one link — the individual inventor, James S. Bianco, who is separately the founder and CEO of Control Module, Inc. (Enfield, CT), a genuine operating company that ships physical access-control and time-and-attendance products. There is no shell-entity transfer, no asserter, no correspondent of record to recur, and no pre-suit transfer, because there is no transfer at all. The patent has been expired since 2009-01-23, so the question of NPE assertion is moot as a practical matter.
Verify at: https://assignment.uspto.gov/patent/index.html (search patent number 5047614) and https://patents.google.com/patent/US5047614/en under "Legal Events."
Two caveats to carry forward: (i) I could not open the Assignment Center directly, so the empty-record finding is inferred from three independent secondary records rather than the primary. (ii) There is a real possibility of a chain-of-title gap that predates practice habits of the era — 1989–1991 individual filings were sometimes assigned by unrecorded instrument. Nothing in the record indicates one, but an empty Assignment Center query is the only thing that would convert this from "inferred" to "verified."
Generated 10/1/2026, 6:13:33 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll start by searching the USPTO-accessible sources for the exact patent number and retrieving details on each cited reference. Let me run several searches in parallel.
Now let me gather details on the remaining cited references.
Prior-Art Analysis — US 5,047,614 (Bianco, "Method and apparatus for computer-aided shopping")
0. Confirmation of the USPTO search (exact number only)
I searched for the literal string 5047614 / 5,047,614 against Google Patents (which mirrors the USPTO grant and citation tables), uspto.report, EveryPatent, FreePatentsOnline/Justia, and Espacenet. Every hit resolves to a single document:
| Field | Value (as found) |
|---|---|
| Patent | US 5,047,614 A |
| Title | Method and apparatus for computer-aided shopping |
| Inventor | Bianco; James S. (Enfield, CT) |
| Appl. No. / Filed | 07/391,733 / 1989-08-08 |
| Granted | 1991-09-10 (CIP of 300,352, filed 1989-01-23, abandoned) |
| Primary Examiner / Attorney | Pitts; Harold / Crozier; John H. |
| U.S. Cl. / Field of Search | 235/385; 235/382; 235/462.45 / 235/385, 382, 462, 472, 383; 379/95 |
No result for a different-but-similar number was returned in connection with this patent. Note on method: I did not have direct interactive access to USPTO PatentCenter/PAIR, so the citation list below is reproduced from the official citation tables as published on the mirror sites, all of which agree with the granted front page (uspto.report and EveryPatent both reproduce the same six-entry "References Cited" table, and Google Patents shows a seventh entry, the B1 republication of the first item).
1. The cited references, and the critical dates that control § 102
Every § 102 analysis here is governed by pre-AIA § 102 (application filed 1989-08-08). Two dates matter:
- § 102(b) one-year bar: 1988-08-08 (CIP filing) — or 1988-01-23 if the parent's 1989-01-23 date governs the claim at issue.
- § 102(e): a U.S. patent granted on an application filed in the United States before the applicant's invention is prior art as of its U.S. filing date (foreign priority does not count for § 102(e) — In re Hilmer).
| # | Reference | Applicant/Assignee | Filed | Issued | § 102 category |
|---|---|---|---|---|---|
| 1 | US 4,471,218 (and US 4,471,218 B1) | Culp / MSI Data Corp. | 1982-05-19 | 1984-09-11 (B1 republication 1989-08-01) | § 102(b) |
| 2 | US 4,648,037 | Valentino / Metropolitan Life Ins. Co. | 1984-03-15 | 1987-03-03 | § 102(b) |
| 3 | US 4,654,482 | DeAngelis, Lawrence J. | 1984-10-15 (pr. 1984-11-07) | 1987-03-31 | § 102(b) |
| 4 | US 4,780,599 | Baus, Heinz Georg | 1984-06-30 | 1988-10-25 | Not § 102(b) — § 102(a) / § 102(e) |
| 5 | US 4,908,500 | Baumberger / Cie. Générale d'Automatisme CGA-HBS | 1987-06-29 | 1990-03-13 | § 102(e) only |
| 6 | US 4,916,441 | Gombrich / Clinicom Inc. | 1988-09-19 | 1990-04-10 | § 102(e) only |
Two consequences follow immediately, and they are worth stating before the reference-by-reference analysis:
- References 5 and 6 issued after the 1989 filing date and therefore could not have been § 102(a)/(b) art. They are on the examiner's list because they are § 102(e) art (their U.S. filing dates, 1987 and 1988, precede the invention). They are statutory prior art but only for what they disclose as of those filing dates.
- References 1–3 are clean § 102(b) art. Reference 4 is the awkward one (published 1988-10-25, i.e., inside the one-year window).
2. Reference-by-reference analysis
Reference 1 — US 4,471,218 (Culp; MSI Data Corp.), issued 1984-09-11; republished US 4,471,218 B1, 1989-08-01
Full citation: U.S. Patent 4,471,218, D. W. Culp, "Self-contained, portable data entry terminal," filed May 19, 1982, issued Sept. 11, 1984 (MSI Data Corp.); Reexamination Certificate B1, Aug. 1, 1989.
Description. A cordless, wand-shaped, self-contained bar-code terminal containing: a bar-code optical sensor/emitter (12), signal conditioning (amplifier 14 + A/D 15), a microprocessor (16), memory (19, RAM), a rechargeable battery (22), beeper (20) and LED (21). Battery is wired directly to memory "to insure data retention." The device stores scanned bar codes and later reads out the stored data by pulsing the sensor/emitter into an "optical-coupled interface module" — the terminal is inserted into the interface (FIG. 4), or the output is coupled acoustically into a telephone handset (FIG. 3, FSK 1300/2100 Hz). Worked example: a waitress scans bar codes printed on a menu, then inserts the terminal into an optical-coupled interface at a station; the data goes to the in-house computer, which translates the codes to prices/descriptions and prints the order in the kitchen and a bill at the station. The specification also states the terminal can be inserted into a charging unit ("contacts … for engagement by mating contacts when inserted into a charging unit").
§ 102 mapping.
- Claim 15 (truncated): "…said portable memory means is an internal element of said bar code reading means and said bar code reading means is insertable in said [terminal]." The '218 patent discloses exactly this structure — internal memory within the bar-code reader, the reader insertable into an interface/base unit. This is the claim most exposed to '218.
- Claims 1(a) and 1(b): '218 discloses a bar-code reader that reads at any location (portable, wand) and a portable memory that receives and retains the read information. Elements (a) and (b) are met.
- Claim 1(c) — partially: '218 discloses transfer of stored data by physically inserting the terminal into an interface module, which is a strong textual match for "temporary physical attachment." But the receiving unit is characterized as a base/in-house computer that translates codes and prints orders — not a store terminal that compiles a list of desired items and provides that list to the consumer.
- Claims 2, 12 (screen): '218 has LED/beeper indicators, no screen.
- Bottom line: '218 is the single most important structural reference and the only cited reference that discloses the "internal memory + insertion into a base unit" architecture. It does not anticipate independent claim 1 or 8 because it lacks the "compile a list of items desired by the consumer and provide that list to the consumer" limitation. It is, however, a textbook § 103 base reference against claims 15 and against the physical-attachment element of claim 1.
Reference 2 — US 4,648,037 (Valentino; Metropolitan Life), issued 1987-03-03
Full citation: U.S. Patent 4,648,037, A. J. Valentino, "Method and apparatus for benefit and financial communication," filed Mar. 15, 1984, issued Mar. 3, 1987 (Metropolitan Life Insurance Co.).
Description. An "easy-to-use unattended computer terminal" at a conveniently located facility on an employer's premises, on which untrained employees conduct inquiries and transactions about savings/benefit plans — balances, forecasts, "what-if" games — with CRT screens, a keypad, prompts, personal-identification validation, and the ability to change programs (fund transfers, withdrawals). Squarely the kiosk/self-service information terminal concept, and it is the reference of record for that concept.
§ 102 mapping.
- No bar-code reading means, no portable memory, and no physical hand-off of memory. The interaction is keyboard/CRT at a fixed terminal.
- It therefore cannot anticipate claim 1 or claim 8, or any claim that depends from them, because it lacks at least the "bar code reading means" and "portable memory means" elements.
- Its only real relevance is (i) as a § 103 secondary reference for the "terminal located at a facility that displays/prints personalized information to a consumer" environment, and (ii) as background confirming that unattended-terminal information kiosks were known. Google Patents shows the '037 patent was itself cited in IPR/petition literature on kiosk and web-application systems, consistent with it being background, not anticipatory, art.
- Conclusion: anticipates no claim of US 5,047,614.
Reference 3 — US 4,654,482 (DeAngelis), issued 1987-03-31 — the most substantive reference
Full citation: U.S. Patent 4,654,482, L. J. DeAngelis, "Home merchandise ordering telecommunications terminal," filed Oct. 15, 1984 (and Nov. 7, 1984), issued Mar. 31, 1987.
Description. A home terminal for ordering merchandise from any of several merchants over the DDD telephone network, including:
- a hand-held bar-code wand passed over printed merchandise codes — "printed on other types of publications such as inserts for magazines and newspapers, the newspapers and magazines themselves, mailers, etc., and on an actual product to be reordered";
- reader electronics (amplifier, signal shaping, microprocessor) that convert bar widths to binary data and verify against a table of valid codes;
- a storage element — either a plug-in "recognition data cartridge" 50 inserted into receptacle 52 or an integral ROM 62 — carrying the merchant's security/format data, and including "portions in which the electrical merchandise code signals from reader 34 can be temporarily stored";
- a modem (76) and interface electronics to establish the telephone link and transmit the order, with a character display (94), indicator lights and switches to guide the user.
§ 102 mapping.
- Claims 2 and 9 ("entered into said portable memory means by said consumer scanning bar codes"): met — the consumer scans UPC/merchandise codes into memory via the wand.
- Claims 3 and 10 ("bar codes selected from the group consisting of bar codes on containers, bar codes in pamphlets, bar codes on advertisements, and bar codes on coupons"): substantially met — DeAngelis expressly recites magazine/newspaper inserts, mailers, and the actual product to be reordered (i.e., containers), and "advertisements delivered to the home." This is a direct § 102 hit on the species-level dependent claims.
- Claim 16 / claim 17 (removable "smart card" memory): only partially met. DeAngelis has a removable cartridge containing memory that can temporarily store the scanned codes, which reads on "portable memory means … removable." But the transfer of the order is over the telephone, not by inserting the cartridge into a store-side terminal.
- Independent claims 1 and 8 — NOT anticipated. The decisive limitation is "after temporary physical attachment of said portable memory means to said terminal means" / "transferring … by physically temporarily attaching." DeAngelis transfers by modem over the telephone network. The cartridge is inserted into the consumer's own device (receptacle 52), never into a store terminal. DeAngelis therefore teaches away from the physical-attachment limitation, and it is the strongest possible § 103 reference on the "remote entry of desired items" half of the invention.
- Claim 4 / claim 11 ("printed list"): DeAngelis shows a one-line character display and lights, not a printed list — not anticipated.
Reference 4 — US 4,780,599 (Baus), issued 1988-10-25
Full citation: U.S. Patent 4,780,599, H. G. Baus, "Apparatus for retrieving stored information about various items in response to coding on the items," filed June 30, 1984, issued Oct. 25, 1988.
Description. A store/customer information system: saleable goods carry bar codes; a hand-held "scanning gun" reading device (56), held by the customer, is passed over the code on the product of interest; the detected code is sent to a data processing unit (24) containing a programmable coding unit/converters (64) that translate the code into address signals; those addresses call up product information (nature, applications, material, spot advertising) from a storage unit (30) — preferably a laser video disc — which is presented to the customer on a monitor, printer and/or loudspeaker (32). Transmission from the gun to the processing unit may be wireless (radio VHF, ultrasound, infrared) or by cable; the reading device may be combined with the output unit into a compact hand device.
§ 102 mapping.
- Claim 2: the customer reads bar codes to identify items of interest — met in substance.
- Independent claims 1 and 8 — NOT anticipated, for two independent reasons: (i) the system is in-store, not "at a location remote from a store"; and (ii) there is no portable memory carried away and physically attached to a store terminal — the code is transmitted wirelessly/over cable to a fixed processing unit in the same location, and the customer's device is not a shopping-list memory at all.
- Note on status as art: because it issued 1988-10-25, Baus is not § 102(b) art against either the 1989-08-08 filing or the 1989-01-23 priority. Cite it as § 102(e) (U.S. application filed 1984-06-30, long before the invention) or § 102(a). This matters: an improper § 102(b) characterization of Baus would be a defect in any rejection built on it.
Reference 5 — US 4,908,500 (Baumberger; CGA-HBS), issued 1990-03-13
Full citation: U.S. Patent 4,908,500, H.-G. Baumberger et al., "System for automatically reading identification data disposed on a vehicle," filed June 29, 1987, issued Mar. 13, 1990 (Compagnie Générale d'Automatisme CGA-HBS).
Description and confidence level. I was not able to retrieve the specification for this reference within this session (my retrieval steps for this and the next item were cut off). The characterization below rests on the title of the reference as published in the '614 front page and on the field-of-search citation (235/472) — treat it as low confidence and verify against the document before relying on it. On its face the reference is an automatic vehicle identification/reading system — a reader interrogates identification data mounted on a vehicle and passes it to a processing unit. CGA-HBS was active in automatic vehicle identification/tolling.
§ 102 mapping.
- It is § 102(e)-only art (U.S. filing 1987-06-29; issue 1990-03-13).
- Nothing on the face of the title or field-of-search indicates a portable memory in which a consumer accumulates desired items or a store terminal to which that memory is physically attached. It appears to be relevant only as general background for "reading identification data with an optical reader and processing it centrally."
- Conclusion (provisional): anticipates no claim of US 5,047,614. Please verify the specification; I flag this as an unresolved item rather than a firm finding.
Reference 6 — US 4,916,441 (Gombrich; Clinicom Inc.), issued 1990-04-10
Full citation: U.S. Patent 4,916,441, "Portable handheld terminal," filed Sept. 19, 1988, issued Apr. 10, 1990 (Clinicom Incorporated).
Description and confidence level. As with Reference 5, I was not able to retrieve the specification in this session, and the following is flagged as low confidence: Clinicom's handheld-terminal line was data-collection hardware (typically a hand-held terminal with a display, a data-entry capability and an interface for transferring collected data to a host). If that is what the reference discloses, it is potentially structurally relevant to claim 1(b)/(c) — a portable terminal that docks to a host to transfer stored data — but it would lack the shopping-specific "list of desired items" limitation.
§ 102 mapping.
- § 102(e)-only art (U.S. filing 1988-09-19; issue 1990-04-10).
- Provisionally, it anticipates no claim, for the same reason as Reference 1: even if it discloses a portable handheld terminal with memory and a docking transfer to a host, it does not disclose compiling a list of consumer-desired items and returning that list to the consumer. Like '218 it would be a § 103 reference, not an anticipation reference.
- I cannot state this with high confidence without the specification.
3. Overall conclusion on § 102
- No cited reference anticipates independent claim 1 or independent claim 8. Both independent claims contain a limitation that none of the six references discloses:
- the "at a location remote from a store" entry requirement, and
- the "after temporary physical attachment of said portable memory means to said terminal means" hand-off, and
- compiling "a list of said items … to provide said list to said consumer."
DeAngelis (Ref. 3) satisfies the "remote" limb but uses a modem; Culp/'218 (Ref. 1) satisfies the "physical attachment" limb but has no consumer shopping list. The two genuinely complementary halves of the invention are split across two references — that is a § 103 fact pattern, not a § 102 one.
- The dependent claims most exposed to § 102 are the narrow, species-level ones:
- Claim 3 / claim 10 (bar codes from containers, pamphlets, advertisements, coupons) — most directly met by DeAngelis (US 4,654,482), which expressly names magazine/newspaper inserts, mailers, advertisements and "an actual product to be reordered."
- Claims 2 and 9 (consumer scans bar codes into the portable memory) — met by DeAngelis.
- Claim 15 (portable memory internal to the bar-code reader, the reader insertable into the terminal) — the closest match is Culp/MSI (US 4,471,218), which discloses internal RAM and the terminal "inserted into" an optical-coupled interface.
- Claims 16 and 17 (removable smart-card memory transferred by inserting it into the terminal) — DeAngelis's removable recognition-data cartridge (with memory space for the scanned codes) is the closest, but its transfer is by telephone, so it stops short.
- Claims 4, 5, 6, 7, 11, 12, 13, 14 (printed list, screen, preferred shopping sequence, warehouse transmission) — not anticipated by any cited reference; the kiosk-style output references (Valentino; Baus) supply no shopping list, no sequencing, and no warehouse order-picking link.
References 2, 5 and 6 are background/no-anticipation art. Valentino (Ref. 2) is the unattended-terminal/employee-information kiosk; Baumberger (Ref. 5) is vehicle identification; Gombrich (Ref. 6) is a handheld terminal. None discloses a bar-code/portable-memory shopping architecture. Their presence on the examiner's list is best explained as field-of-search and § 102(e) terminal-structure art.
Watch the two statutory-characterization traps flagged above: (i) Baus (US 4,780,599) issued 1988-10-25 and is not § 102(b) art; and (ii) Baumberger and Gombrich issued in 1990, after the filing, and are § 102(e)-only art. Any citation table that lists all six as co-equal "prior art" is analytically imprecise.
4. Residual uncertainties (stated rather than papered over)
- I could not retrieve the specifications of US 4,908,500 and US 4,916,441; the § 102 conclusions for those two are provisional and based on titles/classes only.
- I could not verify the prosecution history of US 5,047,614 (Paper No. rejections/allowance), so I cannot say which of these references the examiner actually applied under § 102 versus merely listed as cited art. The citation table establishes that the references were considered; it does not, by itself, establish that any was the basis of a rejection.
- The EP-family amended claim set (EP 0 454 787) narrowed/renumbered claims relative to the U.S. grant; the § 102 analysis above is deliberately run against the U.S. claims as granted. Cross-reference to the earlier-generated summary: nothing in this analysis contradicts it — it confirms the bibliographic and citation data, and it makes explicit the point the earlier summary noted only indirectly (that the family members are not coextensive with the U.S. grant).
- I did not re-verify the earlier-flagged drafting artifacts (claim 10's self-referential "as defined in claim 10"; claim 15's truncation after "insertable in said"), but both are relevant to claim mapping: claim 15's truncation is exactly the claim whose remainder must be read as the "terminal means," which is the claim '218 most nearly meets.
Generated 10/1/2026, 6:14:04 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll ground this § 103 analysis in the actual prior-art record before opining. Let me verify the disclosures of the key references.
Good grounding on DeAngelis, Culp/MSI, Baus, and Blake. Let me verify the remaining combination candidates, especially the "docking"/socket-transfer reference and the store-side list-compilation references.
Obviousness Analysis — US 5,047,614 (35 U.S.C. § 103)
A note on dating: the task header says the current date is April 26, 2026, while my session clock reads October 1, 2026. Neither affects the analysis below, which is an ex ante inquiry fixed to the patent's Jan. 23, 1989 priority date (CIP filed Aug. 8, 1989). I flag the discrepancy rather than silently pick one.
Source discipline: I verified the disclosure text of the most load-bearing references directly (DeAngelis, MSI/Culp, Baus, Blake, Siemens DE 2338773). For several others I relied on the titles in the patent's own citation record and say so explicitly in the confidence section.
1. Framework
I apply the Graham v. John Deere factors as refined by KSR Int'l v. Teleflex (2007):
- Scope and content of the prior art;
- Differences between the prior art and the claims;
- Level of ordinary skill; and
- Objective (secondary) indicia.
Under KSR, a claim is obvious where "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions." And a combination need not be taught by the references in haec verba — a "court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions," and "if 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."
2. Level of ordinary skill in the art (PHOSITA)
A person with a bachelor's degree in electrical engineering or computer science (or equivalent), plus roughly two to four years of experience in at least two of: point-of-sale (POS) systems, bar-code scanning/data capture, portable data terminals, and retail inventory automation. This is the profile implied by the cited art itself — the DeAngelis and MSI references are 1980s commercial data-capture/printer-adjacent products, and the patent's own specification is written at that level (wave-shaper → microprocessor → non-volatile memory; UPC and Code 39).
3. The claimed subject matter and the point of novelty
Claim 1 (apparatus) has three elements:
- (a) bar-code reading at a location remote from a store;
- (b) a portable memory that receives and retains the item information; and
- (c) a store-located terminal that reads the memory "after temporary physical attachment of said portable memory means to said terminal means," compiles a list, and provides the list to the consumer.
Claim 8 is the method analogue and adds a printed list plus the physical-attachment step.
Where the novelty sits: element (a) and the bar-code scanning itself were old by 1989. The only limitation that is not squarely in the single-reference prior art is the manner of handoff in element (c) — the substitution of temporary physical attachment (docking) for the telephone/modem transmission that the closest reference (DeAngelis) uses. Everything else in claim 1 is a textbook combination of known data-capture and store-terminal elements. That framing drives the analysis: if a reference teaches docking a portable reader to a store/central station, claim 1 falls.
4. The prior art and what each reference actually teaches
Primary references (verified):
| Ref | Source | What it discloses |
|---|---|---|
| US 4,654,482 (DeAngelis, 1987-03-31, filed 1984-10-15) | PDF; Espacenet | Home merchandise-ordering terminal. A hand-held wand is passed over UPC bar codes printed in catalogs, newspaper inserts and advertisements; a storage element (plug-in cartridge or integral RAM) temporarily stores the product-ordering information; a microprocessor/ROM/RAM controller; an LCD display, indicator lights and buttons guide the user; a modem transmits the order to a merchant's order-receiving apparatus. Expressly aimed at "people who are incapacitated," "high crime areas," and high-rise dwellers doing "basic goods shopping from their apartment." |
| US 4,471,218 / EP 0 094 571 (Culp; MSI Data Corp., 1984-09-11; EP pub. 1983-11-23) | EP 0094571 PDF | Self-contained, portable data entry terminal in a cordless, wand-type enclosure: bar-code optical reader, signal conditioning, microprocessor, memory, and rechargeable battery. Explicitly shows interfacing the terminal with a computer and with a telephone line, and readout of data stored in the memory to an external device. |
| DE 2 338 773 A1 (Siemens, pub. 1975-02-13) | Google Patents | The docking reference. A pen-shaped unit containing a reading device, a computer module with control, a memory for control programs, a memory for captured data, a data interface, and power supply; the central station contains a data interface matched to the pen's data interface. The pen is carried by a person, reads data carriers, and the stored data are transferred by bringing the pen to the central station and mating the interfaces. This is precisely claim 1's "temporary physical attachment." |
| US 3,532,184 (Blake, 1970-10-06) | Semi-automated supermarket. Shopper selects punch cards representing desired products; a control station with a computer having "a catalogue of goods code numbers and the location of each product" tabulates the customer's order, and the order is picked from a stockroom and delivered to a pickup point. Expressly notes that displaying one row per item and filling from a stockroom "may be conserved." | |
| US 4,780,599 (Baus, 1988-10-25) | PDF; uspto.report | Apparatus for retrieving stored information about items in response to coding on the items. A customer-operated scanning gun reads bar codes on saleable goods; a data-processing unit with storage and an output unit (monitor/TV) presents product information/advertising to the user. Establishes that customer-controlled bar-code reading of product codes to drive a store-side presentation was known. |
Secondary references (title-level only in this session — see §12): US 4,638,312 (NCR, "Order entry system including an interactive menu display"); US 4,916,441 (Clinicom/Gombrich, "Portable handheld terminal"); US 4,648,037 (Metropolitan Life/Valentino, "Method and apparatus for benefit and financial communication"); US 4,908,500 (Baumberger, vehicle identification reading); GB 2,202,664 (Robb, "Automated service systems"); FR 2,598,533 (Bach, "Device for assisting purchasers at a point of sale"); FR 2,583,546 (Tourette, pharmaceutical-product invoicing from a prescription).
Prosecution-critical observation: DeAngelis '482, MSI '218, and Baus '599 appear in the US "Patent Citations" list — i.e., they were before the US examiner. But DE 2 338 773, US 3,532,184, US 4,638,312, GB 2,202,664 and FR 2,598,533 appear only in the "Family Cites Families" list — the references cited in the family (the PCT/EP search report), not in the US citation record. So the strongest teaching of the very limitation that distinguishes claim 1 (physical docking) may never have been before the US examiner. That is the fulcrum of any § 103 challenge.
5. Combination 1 (primary): DeAngelis '482 + MSI/Culp '218 + Siemens DE 2 338 773 [+ NCR '4638312 for list compilation]
5.1 Element-by-element mapping (claim 1)
| Claim 1 element | Where taught |
|---|---|
| (a) bar-code reading remote from a store of desired items | DeAngelis '482 — home wand sweeping UPCs in catalogs/advertisements; MSI '218 — portable bar-code wand; Baus '599 — scanning gun reading product codes |
| (b) portable memory receiving/retaining the information | DeAngelis '482 — "storage element … space for temporarily storing the product ordering information"; MSI '218 — memory 19 in the wand |
| (c) store terminal reads the memory after temporary physical attachment | DE 2 338 773 — pen-shaped reader with data interface mated to a matched interface at the central station to transfer stored data |
| (c) …to compile a list of the items | US 4,638,312 (order-entry terminal with display); Blake '184 — control-station computer tabulates the customer's order from a goods-code catalogue |
| (c) …and provide the list to the consumer | US 4,638,312 (display); Blake '184 (tabulated order card); printing/display are conventional output means, and DeAngelis itself has a character display |
5.2 Motivation to combine (KSR rationales)
R1 — Simple substitution of one known element for another (KSR, substitution rationale). DeAngelis already transfers stored order data from a portable memory to a merchant's order-receiving computer. The only difference is the conduit: telephone/modem versus a physical interface. Siemens DE 2 338 773 teaches that the physical-interface conduit (mate the pen to a matched central-station interface) is a known, workable way to upload locally captured data. A POSITA would recognize the substitution as available and would expect it to work for the same purpose — the data transferred and the merchant-side result are identical.
R2 — Predictable use of prior-art elements according to their established functions. DeAngelis's wand does what wands do (capture UPCs); its memory does what memories do (retain order data); Siemens's interface does what interfaces do (move stored data to a central station); the store terminal does what order-entry/control stations do (tabulate and present an order). No element is asked to perform a new or unexpected function.
R3 — Known technique used to improve a similar device in the same way. Both DeAngelis and the store-terminal art address the same field (automated purchasing to eliminate in-store time). Applying the docking technique of DE 2 338 773 to the portable ordering terminal of DeAngelis is the paradigm "if a technique has been used to improve one device, and a person of ordinary skill would recognize it would improve similar devices in the same way" scenario.
R4 — Business/engineering motivation. In a store setting, the surrounding apparatus (the store's own POS/host computer) is local; a docking port is cheaper, more secure, and more reliable than a modem and a phone line, and it lets the store validate and re-price the order on the spot. DeAngelis's own rationale for the modem — reaching a remote merchant — disappears once the terminal is physically at the store.
Corroborating inventor-admission: the '614 specification itself treats the modem and the physical-attachment handoff as interchangeable alternatives ("The memory may be read by the store terminal over a telephone line via a modem"; "Terminal 54 has a port 58 into which the customer inserts portable bar code reading terminal 10"). An inventor's own specification describing two ways of doing the same thing is strong evidence of obviousness of the substituted element.
6. Combination 2 (alternative): DeAngelis '482 + Blake '184 (+ MSI '218)
Blake supplies the store-side order compilation and stockroom fulfillment — the customer selects item identifiers, the store's control-station computer tabulates the order from a goods/location catalogue, and the order is picked in a stockroom and delivered to a pickup point. Combine with DeAngelis's home bar-code wand + memory, and the difference is only the data-carrying medium (punched cards vs. an electronic portable memory) and the input mechanism (card selection vs. bar-code scanning) — both known equivalents in the same art.
Motivation: Both references attack the identical problem (grocery-shopping inefficiency and in-store time) and both are grocery/supermarket-specific. Substituting a bar-code-equipped portable memory for Blake's punched cards is the use of a known data-capture technique for its known purpose, and a POSITA would expect it to reduce error and increase speed. Blake also explicitly motivates the "transmit to a warehouse for order picking" limitation of claim 7/14 and the reduced on-shelf display advantage recited in the '614 specification.
7. Dependent claims
| Claim | Limitation | Obviousness basis |
|---|---|---|
| 2 / 9 | information entered by scanning bar codes | DeAngelis; MSI '218; Baus '599 |
| 3 / 10 | bar codes on containers, pamphlets, advertisements, coupons | Baus (bar codes on goods); DeAngelis (catalogs, newspaper inserts, advertisements). Listing a group of known code-bearing media with no unexpected result is a routine recitation of known sources; coupon bar codes were conventional by 1989. |
| 4 / 11 | printed list | Printers were ubiquitous per se; NCR '4638312 (order-entry terminal) and Blake (tabulated order card) render printing the tabulated order an obvious output choice. Note claim 11 is redundant with claim 8's own printed-list limitation. |
| 5 / 12 | screen for viewing the list | DeAngelis '482 discloses an LCD character display; Baus '599 uses a monitor/TV. |
| 6 / 13 | list compiled in a preferred shopping sequence | Sequencing a pick list by store layout is a routine optimization. Blake '184 arranges the store precisely so the shopper "may become familiar with and know exactly where certain articles … are available," and orders are filled aisle-by-aisle. Sorting a list to match a known aisle/shelf order is the predictable use of a known organizational technique; no new result. |
| 7 / 14 | list transmitted to a warehouse for order picking | Blake '184 (stockroom order filling from a coded catalogue); DeAngelis '482 (transmission of the order to the merchant's order-receiving apparatus). |
| 15 | bar-code reading means insertable in the terminal | DE 2 338 773 (pen reader inserted into a matched socket at the central station); MSI '218 (interface to a computer). Caveat: the printed claim 15 text is truncated ("…is insertable in said"), so its scope is ambiguous; the earlier summary flagged this and I confirm it. |
| 16 / 17 | smart card removable from the reader and insertable in the terminal | DeAngelis '482 expressly discloses a "plug-in cartridge" as the storage element; a removable memory module (card) is the same element in a different form factor. Substituting a card for a cartridge is a predictable design choice with no unexpected result, and removable/IC-card memory was known in the art in 1989. |
8. KSR rationale summary
- A. Combining prior-art elements (home bar-code wand + portable memory + store terminal + docking interface) according to known methods, yielding no more than predictable results.
- B. Simple substitution of a known element (physical data interface) for another (modem) to obtain a predictable result.
- C. Use of a known technique (docking a portable reader to a matched central interface, DE 2 338 773) to improve a similar device (DeAngelis's home ordering terminal) in the same way.
- D. "Obvious to try": at the priority date there were a finite number of identified, predictable solutions for getting the captured data from the consumer's portable memory into the store's computer — carry it, or transmit it — and the "carry it" solution was documented in DE 2 338 773.
9. Counterarguments and their weaknesses
A. "DeAngelis teaches away — its whole point is to avoid going to the store." The strongest non-obviousness argument. DeAngelis targets the homebound consumer who cannot travel to a store; requiring the terminal to be physically docked at the store arguably changes its principle of operation. Rebuttals: (i) claim 1 does not require the consumer to carry the terminal to the store — the specification expressly contemplates a third party shopping on the consumer's behalf ("another person may shop for the consumer"), so a courier or household member docking the terminal satisfies the claim; (ii) DeAngelis never disparages physical data transfer, so it does not "teach away" in the In re Gurley sense; and (iii) the family's own amendment history suggests the inventor did not treat the "remote" limitation as the inventive core (see §11).
B. "The examiner allowed over these references." True for DeAngelis/MSI/Baus — but those references do not supply the docking limitation. DE 2 338 773, Blake '184, and NCR '4638312 appear only in the family citation list. If the US examiner never considered the docking teaching, the allowance is not probative of non-obviousness of the substituted element.
C. "The '614 added coupon-tagging and preferred-route sequencing, which are not in the art." These are not in the independent claims. As dependent-claim features they are routine data-tagging and sort-order choices; absent evidence of unexpected results they do not rescue the claims.
10. Secondary considerations
I found no objective indicia to rebut the prima facie case:
- No commercial success, licensing, or copying evidence surfaced in my searches (consistent with the prior sections' finding of no litigation and no assignment).
- No long-felt-but-unmet-need evidence beyond what DeAngelis and Blake already articulate — and those references show the need was being met by others before 1989.
- No industry praise or failure of others identified.
- The patent is unassigned, individual-held, and expired (2009-01-23), which undercuts any inference of marketplace significance.
Per KSR, "where the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute … the objective indicia of nonobviousness" are what remain — and here there are none.
11. Corroborating evidence from the family record
The earlier section flagged that the EP counterpart (EP 0 454 787) entered the international phase with an amended claim set whose independent claims dropped the "remote from a store" and "provide said list to said consumer" language, and that original claims 4, 7, 15, 16 and 18 were cancelled. That is consistent with the analysis above: the applicant's own foreign prosecution treated those limitations as the distinguishing features and the remainder as old. It is not a legal admission, but it is informative context for how narrow the US grant's margin over the art really is.
12. Confidence, caveats, and what would change the answer
High confidence (direct source verification): the disclosures of US 4,654,482 (DeAngelis), US 4,471,218 / EP 0 094 571 (Culp/MSI), US 4,780,599 (Baus), US 3,532,184 (Blake), and DE 2 338 773 (Siemens). The DE 2 338 773 text — a pen-shaped reader with its own computer module, program memory, data memory, and a data interface matched to the central station's interface — is the single most important finding and I read it directly.
Moderate confidence (title-level only this session): I did not directly read US 4,638,312 (NCR), US 4,916,441 (Gombrich), US 4,648,037 (Valentino), US 4,908,500 (Baumberger), GB 2,202,664 (Robb), FR 2,598,533 (Bach), or FR 2,583,546 (Tourette). I relied on the titles in the patent's citation record. Of these, US 4,638,312 (NCR) matters most, because it is the cleanest support for "terminal means … to compile a list … and provide said list to said consumer." If NCR '312 does not disclose the terminal compiling/displaying an aggregated list, the list-compilation element must instead be carried by Blake '184 (which I did read and which does disclose control-station tabulation of a customer order). The combination survives either way.
Unverified correspondence (flagging literally, not correcting): the record cites US 4,471,218 (Culp) while the MSI Data terminal I verified is EP 0 094 571 (Culp, MSI Data, priority US 379,929 of 1982-05-19). I did not confirm that US 4,471,218 is the US counterpart of EP 0 094 571. Either reference independently supplies "portable bar-code reader + memory + external data interface," so the combination is robust to that uncertainty, but I am not asserting the two are the same application.
Low confidence / open: whether the specific KSR "teaching away" counterargument in §9A would defeat the combination is a genuine legal judgment that turns on claim construction of "temporary physical attachment" and on whether a court reads claim 1 as requiring the consumer personally to carry the terminal. That construction is not settled by anything I reviewed.
What would change the answer: (i) evidence that the US examiner did consider DE 2 338 773 (e.g., a Form 892 listing it) — that would weaken the "examiner never saw the docking art" argument but would not by itself overcome the substantive combination; (ii) evidence of unexpected results or commercial success; (iii) a claim construction that reads "remote from a store" and "provide said list" as requiring a specific unconsummated workflow not shown in any reference.
13. Contradictions with the previously generated sections
I found no substantive contradiction with the earlier summary and litigation sections. Two points of alignment worth recording:
- The earlier section's observation that the EP claims dropped the "remote from a store" and "provide said list" language is consistent with, and mildly supportive of, my conclusion that the US grant's margin over the art is thin and centers on the physical-attachment handoff (see §11).
- The earlier-flagged drafting artifacts — claim 10's self-referential dependency and claim 15's truncation after "said" — I confirm as literal, and claim 15's truncation materially complicates any element-by-element mapping of that claim (see §7).
- No new litigation or 2026 activity surfaced that bears on validity; consistent with the prior sections, I treat litigation status as unconfirmed rather than verified.
Bottom line: Claims 1 and 8 are, on the record I verified, obvious over DeAngelis '482 in view of Siemens DE 2 338 773 (for the temporary-physical-attachment handoff) and further in view of one of NCR '4638312 / Blake '184 (for store-side list compilation and presentation) — with DeAngelis, MSI '218 and Baus '599 supplying the remaining elements, and Blake '184 additionally supplying warehouse order-picking for claims 7/14. The dependent claims add only conventional expedients. The most legally durable attack uses the docking art that appears only in the family citation list, not the US examiner's list.
Generated 10/1/2026, 6:14:19 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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