Ex Parte 5664110 et al

Patent Trial and Appeal Board

Aug 28, 2017

90013591 (P.T.A.B. Aug. 28, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/013,591 09/18/2015 5664110 138507.00013 9949
64713 7590 08/29/2017
CAPITAL LEGAL GROUP, PLLC
1455 Pennsylvania Ave., NW
Suite 400
Washington, DC 20004
EXAMINER
TARAE, CATHERINE MICHELLE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/29/2017 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 Cronos Technologies LLC
____________________

Appeal 2017-009756
Reexamination Control 90/013,591
Patent US 5,664,1101
Technology Center 3900
____________________

Before JAMES T. MOORE, BRETT C. MARTIN, and JAMES B. ARPIN,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued to Jonathan B. Green and William R. Pope on September 2, 1997
(hereinafter the ’110 patent).
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STATEMENT OF CASE
The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 from
the Examiner’s rejection of claims 1–3, 8–12, and 14–18. Claims 22, 24,
26–28, 30–32, 34, 41, 42, 44–46, 49, 50, 52–55, 57–66, 71–73, and 75 have
been allowed during the reexamination. App. Br. 3. The aforementioned
claims are the only claims pending in this reexamination. Id. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We are informed that the present appeal is related to three litigations
that have concluded in U.S. District Court and are now pending before the
U.S. Court of Appeals for the Federal Circuit, a list of which can be found in
the Patent Owner’s Appeal Brief. App. Br. 2.
We REVERSE.

THE INVENTION
The Patent Owner’s claims are directed “to a remote ordering system
[that] enables the building of a database of user-discernable product or
service identification information within a user-accessible device.” Spec.
col. 1, ll. 6-9. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A remote ordering terminal for providing at least one list
of at least one item or group of items to a remotely located order
processing system associated with one or more merchants on
each of a plurality of occasions, each item or group of items
having an item code associated therewith, said remote ordering
terminal comprising:

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user and/or merchant identifier means;
at least one data entry device for providing said terminal
with said item associated item codes and with data from said user
and/or merchant identifier means;
a database unit providing a user-specific database
including user-discernable item data associated with item codes
for user-selected items or groups of items;
memory to provide storage for said user-specific database,
said memory in communication with said at least one data entry
device for storing said at least one list;
communication means for associating said memory and
said order processing system upon user command for remotely
accessing said order processing system over a multi-user
network, for transmitting said at least one list to said order
processing system using said data from said user and/or merchant
identifier means, and for receiving new and/or replacement user-
discernable item data from said order processing system during
association of said memory and said order processing system,
said new and/or replacement user-discernable item data
corresponding only to said at least one item or group of items of
said at least one list;
a message display portion in communication with said
memory and said user-specific database for displaying order
pertinent information including said user-discernable item data
from said memory; and
at least one command entry device responsive to user
selection of items from said order pertinent information for
assembling said at least one list and for enabling said user
command, resulting in said transmitting of said at least one list
to said order processing system, wherein said at least one list is
comprised of an order to be processed by said order processing
system, or a provisional order list transmitted to said order
processing system, transmission of either resulting in on-demand
receipt of said new and/or replacement user-discernable item
data within said user-specific database for said at least one item
or group of items.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yourick

US 4,775,935

Oct. 4, 1988

“Peapod User Manual Version 3.10” August 7, 1992 by Peapod, Inc.
(hereinafter “Peapod”).
“HP 150 Programmer’s Reference Manual,” June, 1984 by Hewlett Packard
(hereinafter “HP 150”).

REJECTIONS
The Examiner made the following rejections:
Claims 1–3, 8–12, 15, 17, and 18 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Peapod. Ans. 6.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Peapod and Yourick. Ans. 11.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Peapod and HP 150. Ans. 13.

ANALYSIS
The Patent Owner “submits that Claims 1–3, 8–12, and 14–18 stand
or fall together, so [Patent Owner’s] remarks will focus on independent
claim 1.” App. Br. 9. We likewise will address only claim 1 and the
remaining claims will stand or fall with our disposition of claim 1.
The Patent Owner makes numerous arguments pointing to errors in
the Examiner’s rejection of claim 1. On the whole, these arguments
essentially relate to the Examiner’s interpretation of the term “user-specific
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database” in claim 1 and how various limitations of the recited terminal then
interact with the user-specific database. We will focus our analysis on this
term.
The Examiner has taken the position that the Personal List in Peapod
meets the definition of a user-specific database. See, e.g., Ans. 20. The
Examiner finds that the Personal list is merely a two-column array that
includes an index and the item name for each item on the user’s personal list,
but nonetheless asserts that this is sufficient to be considered a database, as
claimed. Id. The Patent Owner argues that this use of Peapod’s Personal
List is insufficient because the Personal List does not store all of the data
that is displayed to the user, but that such data is merely retrieved from the
main server for display. App. Br. 31. Despite the aforementioned finding
that the Personal List stores only an index and an item name, the Examiner
goes on to assert that “[e]ven if data such as price in the Personal Shopping
List is pulled from a server when a user loads their saved Personal Shopping
List, this is merely updating the data in the database.” Ans. 20.
This assertion reveals the flaw in the Examiner’s interpretation of the
user-specific database. The Examiner finds that the Personal List has only
two fields for each item, but asserts that pulling additional information “is
merely updating the data in the database.” Id. The database at issue in that
statement must be the recited “user-specific database” to meet the language
of claim 1, and, if that database, i.e., the Personal List, has only two fields, it
is not possible for the recited “user-specific database” to be updated with
price or any other information as would be required by the claim.
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The claims do not merely require a “user-specific database” of any
structure. As recited in claim 1, this user-specific database must be “for
receiving new and/or replacement user-discernable item data from said order
processing system” and must allow for “receipt of said new and/or
replacement user-discernable data within said user-specific database.” The
Patent Owner is correct that whatever is being displayed to the user in
Peapod, such data is not stored in the “user-specific” database as recited in
claim 1, which the Examiner equates to Peapod’s Personal List. At best, the
Examiner’s use of the Personal List equates to the “at least one list” in claim
1, but fails to meet the additional features of the “user-specific database” as
claimed.
This can best be understood by comparing what we know about each
of the two systems. As seen in Figure 2 of the ’110 patent, there are three
databases – two merchant databases 14 at the host computer and RAM 34 at
the user’s computer. This configuration makes clear that information can be
stored in RAM 34, as well as in merchant databases 14. Furthermore, the
effect of having both a local/user database and a merchant database may be
seen in Figure 3. Below the list, the screen displays that “these prices may
be out of date.” From this and the related disclosure, we can easily ascertain
that all of the displayed information must be stored in RAM 34 for display to
the user in an off-line setting or at least at a time before an update has
occurred, which explains why the prices may be out of date. The next time
the user logs into the system or requests an update, RAM 34 will then be
updated with the most recent information from merchant databases 14.
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Contrary to this configuration, all we know about Peapod is that it
stores two items of information in its Personal List data file, which is on the
user’s computer. While it is true that Peapod displays similar information as
is shown in Figure 3 of the ’110 patent, such display is only described as
being related to a point in time where the user is connected to the main
database. See, e.g., Peapod 19–21. All of the disclosure in this portion of
the reference relates to the user shopping for groceries, which is done when
the user is connected to the host system. Absent some disclosure that
specifically enables Peapod to display all of the information in that host-
connected display by accessing data only from the Personal List, we cannot
sustain the Examiner’s interpretation.
The Patent Owner points out that the “Examiner is simply grasping
with aim to equate the reference with her belief of how the Peapod system
may have worked.” Reply Br. 8. The Patent Owner is correct that it “is the
Examiner’s burden to identify the specific disclosure of the reference that
discloses [the] claim element and it is NOT the Appellant’s burden to prove
otherwise.” Id. at 9. We further agree with the Patent Owner that there is
apparently “no evidence in Peapod that the Personal List stores any product
related data other than information sufficient to identify the items.” Id. at 15.
Because this additional data in the form of “user-discernable data,” as
claimed, is not disclosed in Peapod as being stored in the Personal List,
which the Examiner identifies as the “user-specific database,” we cannot
sustain the Examiner’s rejection. The additional references do not cure this
defect and so the rejections of all other claims fall with that of claim 1.
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DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1–3, 8–12, and 14–18.

REVERSED

Cu

PATENT OWNER:

CAPITAL LEGAL GROUP, PLLC
1455 Pennsylvania Ave., NW
Suite 400
Washington, DC 20004

THIRD PARTY REQUESTER:

JACKSON WALKER LLP
ATTN: Christopher J. Rourk
2323 Ross Avenue, Suite 600
Dallas, TX 75201