Ex Parte Alcodray et al

Patent Trial and Appeal Board

Jun 13, 2016

12824552 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/824,552 06/28/2010
30734 7590 06/15/2016
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT A VE. N.W.
WASHINGTON, DC 20036-5304
FIRST NAMED INVENTOR
Abdulrahmen Alcodray
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
87345.3201 1101
EXAMINER
GEORGALAS, ANNE MARIE
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/15/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
eofficemonitor@bakerlaw.com
edervis@bakerlaw.com
patents@bakerlaw.com
PTOL-90A (Rev. 04/07)
TJNITEu STATES PATENT ANu TRAuEl\tIARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABDULRAHMEN ALCODRA Y and LORI WAGNER
Appeal2013---009744
Application 12/824,552
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Abdulrahmen Alcodray and Lori Wagner (Appellants) seek review
under 35 U.S.C. § 134 of the Examiner's Final rejection of claims 1-26, the
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b ).
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed April 1, 2013) and the Examiner's Answer ("Ans.," mailed May 14,
2013), and Final Action ("Final Act.," mailed November 6, 2012).
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Application 12/824,552
The Appellants invented a form of electronic commerce wherein a
purchase of a product or service is made via an electronic medium.
Specification para. 2. 2
An understanding of the invention can be derived from a reading of
exemplary claims 1 and 23, which are reproduced below (bracketed matter
and some paragraphing added).
1. An apparatus for electronic commerce, comprising:
[ 1] a processor configured to execute instructions;
[2] a memory configured to store the instructions and
information and communicate with the processor;
[3] an input device configured to receive commands and the
information and communicate with the processor;
[ 4] a display configured
and
to communicate with the processor
and
to display a graphical user interface
containing options for making purchases of a
product or service,
wherein a notice is displayed to a user when a
recommended item associated with the product or
service is not selected by the user;
[ 5] a communication device to communicate the information to
a remote device.
2 The Specification uses the word "purchaser," but this appears to be a
typographic error, as making a purchaser of a product is per se nonsensical.
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23. A method of purchasing in electronic commerce,
compnsmg:
[ 1] displaying on a display of a computing device a product or
service available for purchase;
[2] displaying on the display a recommended item associated
with the product or service;
[3] determining with a processor of the computing device
whether the recommended item was selected or not;
[ 4] displaying on the display
a notice
and
based at least in part on a determination that the
recommended item was not selected;
[5] completing a sale transaction of the product or service with
the processor of the computing device.
The Examiner relies upon the following prior art:
Henson
Siegel
us 6,167,383
US 7,802,200 Bl
Dec. 26, 2000
Sept. 21, 2010
Claims 24 and 25 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention. 3
Claims 1-8 and 12-19 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Siegel.
Claims 23-25 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Henson.
3 The rejection of claim 12 under this statutory ground is withdrawn.
Ans. 15.
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Application 12/824,552
Claims 9--11, 20-22, and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Siegel and Henson.
ISSUES
The issues of indefiniteness tum primarily on whether one of ordinary
skill needs to understand what happens when an option is selected to
understand the metes and bounds of the claim. The issues of anticipation
and obviousness tum primarily on the degree of patentable weight afforded
various claim limitations and whether the claims are broad enough to
encompass each of the references.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Siegel
01. Siegel is directed to determining whether an item selected by
the user is inconsistent with information stored in one or more
databases. If the selected item is inconsistent with information
stored in the one or more databases, the computing device advises
the user of the inconsistency. Additionally, the computing device
confirms the user's intent to select the item if the selected item is
inconsistent with information stored in the one or more databases.
Siegel 2:1-13.
02. Siegel describes detecting inconsistencies and incompatibilities,
when an item is selected for purchase. Aspects of the selected
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item are evaluated against the consumer's profile information,
e.g., the consumer's purchase history, to determine whether the
selected purchased item is consistent with that information. If the
selected item is determined to be inconsistent with the consumer's
profile information, the consumer is warned of the inconsistency
and asked to confirm whether the consumer wishes to proceed
with the purchase. For example, if a consumer's profile
information indicates a preference for movies having a wide-
screen format, and the consumer activates an "add to cart" icon for
a movie having a full-screen format, the evaluation server detects
the inconsistency between the selected format and the preferred
format.. Due to this detected inconsistency, the consumer is
queried as to whether the (inconsistent) selection was intentional.
A confirmation window is displayed as a result of the evaluation
server detecting an inconsistency between the selected movie's
format and the consumer's profile information that indicates a
recent wide-screen television purchase, as well as consistent wide-
screen DVD edition purchases. In the illustrated confirmation
window, the evaluation server identifies the inconsistency to the
consumer and requests that the consumer either confirms the
addition of the full-screen DVD edition via confirmation button,
or substitutes the selected item with the wide-screen DVD edition
via confirmation button. Of course, even when an inconsistency
between a selected item and previously purchased items exists, the
consumer may want to purchase the particular item selected.
Accordingly, the network shopping service should not attempt to
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restrict what the consumer ultimately chooses. Siegel 12:29---64,
Fig. 4B.
Henson
03. Henson is directed to build-to-order computer systems, and
more particularly, to an online store user interface for enabling
custom configuration, pricing, and ordering of a computer system
via the Internet. Henson 1: 18-21.
04. Henson's web-based online store has a user interface for
enabling a custom configuration of a computer system and
includes a configurator, a cart, a checkout, and a database. The
configurator is provided for configuring a computer system with
options selected according to a prescribed user input. The options
and a respective pricing for each option are presented on a
configurator web page in accordance with the identification of the
user belonging to a prescribed customer set. The cart is provided
for temporarily storing the customer configured computer system.
Henson 2:61-3:5.
05. Henson's configurator includes merchandising
recommendations for available options and their respective option
details, the merchandizing recommendations being presented on
the configurator web page. The cart further includes
merchandizing recommendations for add-on options, the
merchandizing recommendations being presented on the cart web
page. The database is further for dynamically supplying the
merchandizing recommendations to the configurator in
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accordance with the identification of the user belonging to the
prescribed customer set. Henson 3: 12-26.
06. Henson's merchandising recommendations are provided to the
customer during the customer's custom building of a particular
system. A merchandising recommendations module enables
point-of-sale merchandising, to include the providing of
merchandising messaging. Merchandising messaging may
comprise, for example, generic text about a particular product,
feature, and/or option. The merchandising recommendations
module may also enable specific messaging to be called in
response to the particular choices being made by the customer
during the configuring of a custom computer system. The on-line
store application thus can include merchandising messaging, as
well as warning messages. Henson 7:21-37.
07. Henson's option recommendations provide for the display of a
text message for the express purpose of recommending an option
selection at each option selection point within the configurator.
Additional usage to further educate or assist customer selection of
valid system options was also recognized. Henson 7:41--46.
08. Henson's on-line store includes validation of a configuration
built by a customer. Validation (or compatibility) provides the
customer with a validation message indicating an occurrence of
when the options selected for a particular system are not correct.
If the options selected for a particular system will adversely affect
the shipment of the configured system, then a warning message is
issued to enable the user to modify options accordingly. In other
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words, the validation enhancement lets the customer know when
one or more options are not compatible for one reason or another.
The validation enhancement includes built-in logic which checks
the particular configuration built by the customer and indicates
whether or not the selected options can be built together for the
particular configuration. If two or more options are incompatible,
then the validation enhancement returns a message indicating that
the options are incompatible. Henson 7:57-8:6.
ANALYSIS
Claims 24 and 25 rejected under 35 USC§ 112, second paragraph, as
failing to particularly point out and distinctly claim the invention
We are persuaded by Appellants' argument that one of ordinary skill
would understand the scope of the claims. The Examiner essentially finds
ambiguity in what happens outside of the scope of the claim.
Claims 1---8 and 12-19 rejected under 35 USC§ 102(e) as anticipated by
Siegel
Claim 1 is an apparatus claim with five recited parts, viz. a processor,
memory, input device, display, and communication device. Aside from the
display, the remaining four parts limitations recite no more than their parts'
respective generic functions. The display recites being configured to display
X, where X is further recited in the limitation. The function of displaying is
just that, placing some image on a display device, and does not include
software processing that creates the image in the separately recited
processor. Separately argued claim 12 recites five similar parts, but
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expressed as means plus function limitations. Appellants make no
arguments regarding how these claim 12 parts should be construed under
35 U.S.C. § 112, sixth paragraph, and the arguments made in support of
claim 12 are essentially repetitions of the arguments in support of claim 1.
Therefore, our findings and conclusion regarding claim 1 apply equally to
claim 12.
As to structural inventions, such claims must be distinguished from the
prior art in terms of structure rather than function, see, e.g., In re Schreiber,
128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In order to satisfy the functional
limitations in an apparatus claim, however, the prior art apparatus as
disclosed must be capable of performing the claimed function. Id. at 1478.
When the functional language is associated with programming or some other
structure required to perform the function, that programming or structure
must be present in order to meet the claim limitation. Typhoon Touch
Techs., Inc. v. Dell, Inc.; 659 F.3d 1376; 1380 (Fed. Cir. 2011) (discussing
Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d
1367 (Fed. Cir. 2008)). In some circumstances generic structural disclosures
may be sufficient to meet the functional requirements, see Ergo Licensing,
LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing
Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376-77 (Fed. Cir.
2010)).
Also, a structural invention is not distinguished by the work product it
operates upon, such as data in a computer. "[E]xpressions relating the
apparatus to contents thereof during an intended operation are of no
significance in determining patentability of the apparatus claim." Ex parte
Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "inclusion of
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material or article worked upon by a structure being claimed does not impart
patentabilityto the claims." In re Otto, 312 F.2d 937, 940 (CCPA 1963).
In light of the law regarding structural claims then, virtually any generic
computer with a graphical user interface, such as Microsoft Windows or
Apple iOS, would have the five enumerated parts that perform the recited
function. Again, the display' s function excludes the processing recited in
the display limitation because the display is not a processor.
But assuming arguendo that such a trivial form of anticipation is
inappropriate, we consider Appellants' arguments that
Siegel, at most, discloses displaying a notice to a user when an
inconsistency is detected between the selected purchased
product and the consumer profile and fails to disclose, or even
suggest, displaying a notice "to a user when a recommended
item associated with the product or service is not selected by
the user," as recited in claim 1 ... Siegel, at most, provides a
recommended format of "the product or service" for purchase
and fails to disclose, or even suggest, providing "a
recommended item associated with the product or service,'' as
recited in claim 1 ... the previously purchased format DVD
stored in the consumer profile cannot be interpreted as "a
recommended item associated with the product or service," as
recited in claim 1. In particular, the previously purchased DVD
format stored in the consumer profile of Siegel is not an "item,"
let alone "a recommended item associated with the product or
service," as recited in claim 1.
App. Br. 7-8. As to the last argument that a format is not an item, Siegel
retains purchase history of items purchased. Thus, the format referred to is
that of purchased items.
As to the recurring argument distinguishing a recommended item from
an inconsistent item, there are two reasons for finding this unpersuasive.
The first is that there is no step or structure recommending anything.
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Instead, the word "recommended" is used as an adjective characterizing an
item, and is thus no more than a label for mental perception of the item.
Nothing in the claim requires or enforces the labels the claim suggests
the items be perceived as. Mental perceptions of what items represent are
non-functional and given no weight. King Pharm., Inc. v. Eon Labs, Inc.,
616 F.3d 1267, 1279 (Fed. Cir. 2010) ("[T]he relevant question is whether
'there exists any new and unobvious functional relationship between the
printed matter and the substrate."'); see also In re Lowry, 32 F.3d 1579,
15 83 (Fed. Cir.1994) (describing printed matter as "useful and intelligible
only to the human mind") (quoting In re Bernhart, 417 F.2d 1395, 1399
(CCPA 1969)). Labels are just examples of such mental perceptions.
Therefore, the adjective "recommended" is given no patentable weight.
Alternately, no implementation for the basis of recommendation is
recited, so any implementation would be within the scope of the limitation.
Siegel essentially recommends making purchases consistent with prior
purchases because prior purchases are ordinarily indicative of future desires.
Claims 23-25 rejected under 35 US.C. § 102(b) as anticipated by Henson
Unlike claims 1-22, these claims are directed to methods. Again the
only limitation argued is one similar to that in claims 1 and 12, which in
claim 23 is phrased "displaying on the display a notice based at least in part
on a determination that the recommended item was not selected." As with
claims 1-22, there is no step or structure for making a selection, although
here at least the recited test is "whether the recommended item was selected
or not." So as with claims 1-22, prior to any selection, such a step would
always return "not" and invoke the final step. Claim 23 is also more
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complete than claims 1 and 12 in reciting "displaying on the display a
recommended item," so although there still is no step of recommending an
item, there is at least a recitation that an item has been recommended. As
this is a method claim, we do not have the circumstance as with structural
claims 1-22 that the limitations may be trivially met. But we still have the
issue that a recommendation is no more than a mental perception, and so the
characteristic of being recommended is itself worth no patentable weight.
And as with Siegel, because no implementation for recommendation is
recited, the art falls within the scope of a recommendation. Henson
explicitly offers recommendations and also issues warnings when a selection
is incompatible with the remainder of the order. Thus, Henson explicitly
describes "displaying on the display a recommended item associated with
the product or service" in claim 23. As one of ordinary skill would
understand something incompatible to be not an item recommended,
Henson's warning following selection of an incompatible item instead of a
recommended item would be within the scope of "displaying on the display
a notice based at least in part on a determination that the recommended
item was not selected."
Claims 9-11, 20-22, and 26 rejected under 35 US.C. § 103(a) as
unpatentable over Siegel and Henson
These claims are argued on the basis of the independent claims.
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CONCLUSIONS OF LAW
The rejection of claims 24 and 25 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention is improper. 4
The rejection of claims 1-8 and 12-19 under 35 U.S.C. § 102(e) as
anticipated by Siegel is proper.
The rejection of claims 23-25 under 35 U.S.C. § 102(b) as anticipated
by Henson is proper.
The rejection of claims 9-11, 20-22, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Siegel and Henson is proper.
DECISION
The rejection of claims 1-26 is affirmed.
4 If prosecution continues further, the Examiner should consider the
following. All three independent claims recite negative limitations of doing
something in the absence of criteria. Claim 1 recites "a notice is displayed
to a user when a recommended item ... is not selected by the user."
Claim 12 recites "notifying a user when a recommended item ... is not
selected by the user." Claim 23 recites "determining ... whether the
recommended item was selected or not." There is no antecedent basis for
each such selection. The claims' negative limitations do not indicate
whether the determination or notification depends on some a priori selection
instance or whether such determination or notification would occur absent
any selection. The importance of this distinction is that a determination or
notification in the absence of any selection is met trivially by any
notification prior to encountering a selection.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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