Ex Parte Cofino et al

Board of Patent Appeals and Interferences

Feb 6, 2009

10620407 (B.P.A.I. Feb. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte THOMAS ANTHONY COFINO, JUHNYOUNG LEE, and 8
MARK EDWARD PODLASECK 9
___________ 10
11
Appeal 2008-2348 12
Application 10/620,407 13
Technology Center 3600 14
___________ 15
16
Decided:1 February 6, 2009 17
___________ 18
19
Before WILLIAM F. PATE, III, ANTON W. FETTING, and 20
JOHN C. KERINS, Administrative Patent Judges. 21
22
FETTING, Administrative Patent Judge. 23
24
DECISION ON APPEAL 25
26
STATEMENT OF THE CASE27

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-2348
Application 10/620,407

2
Thomas Anthony Cofino, Juhnyoung Lee, and Mark Edward 1
Podlaseck (Appellants) seek review under 35 U.S.C. § 134 of a final 2
rejection of claims 1-22, the only claims pending in the application on 3
appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
7
We AFFIRM. 8
The Appellants invented a way of providing bids to customers over 9
networks. A bid agent receives requests for products. A bid request process 10
sends a bid request to other stores requesting a bid on the selected product. 11
A bid receiving process then receives the bids and resends the bids to the 12
user (Specification 6: Summary of Invention). 13
An understanding of the invention can be derived from a reading of 14
exemplary claim 1, which is reproduced below [bracketed matter and some 15
paragraphing added]. 16
1. A computer system for comparison shopping over one or 17
more networks, 18
the system comprising: 19
[1] one or more central processing units (CPUs), 20
one or more memories, and 21
one or more network interfaces 22
in communication with one or more networks; 23
[2] a bid agent process 24
adapted to determine whether one or more products are 25
described in information communicated to a user, 26
where the bid agent process is further adapted to 27
determine whether the user chooses to receive bids on the 28
one or more products described in the information and 29
adapted to create a bid request if the user chooses to 30
receive bids on the one or more products described in the 31
information; and 32
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[3] a broker 1
that sends the bid request over one or more of the 2
network interfaces to one or more stores, 3
the broker using one or more values of a closeness 4
measure to determine one or more related products 5
associated with a selected product, 6
where the one or more values of the closeness measure 7
are determined using attributes of the selected product 8
and the one or more related products, 9
the bid request requesting a bid on the selected product 10
and at least one of the one or more related products, and 11
wherein the broker receives bids from the stores and 12
resends the bids over one or more of the network 13
interfaces to a user. 14
15
This appeal arises from the Examiner’s Final Rejection, mailed June 16
20, 2005 17
The Appellants filed an Appeal Brief in support of the appeal on 18
March 30, 2007. An Examiner’s Answer to the Appeal Brief was mailed on 19
June 20, 2007. A Reply Brief was filed on June 20, 2007. 20
21
PRIOR ART 22
The Examiner relies upon the following prior art: 23
Herz US 2001/0014868 A1 Aug. 16, 2001 24
Issa US 2003/0093355 A1 May 15, 2003 25
Ojha US 6,598,026 B1 Jul. 22, 2003 26
27
28
REJECTIONS 29
Claims 1, 2, 5, 10-13, 17, and 22 stand rejected under 35 U.S.C. 30
§ 102(b) as anticipated by Herz. 31
Claims 3, 4, 6-9, 14, 15, 18, 20, and 21 stand rejected under 35 U.S.C. 32
§ 103(a) as unpatentable over Herz and Ojha. 33
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Claims 16 and 19 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Herz and Issa. 2
3
ISSUES 4
The issues pertinent to this appeal are: 5
• Whether the Appellants have sustained their burden of showing that 6
the Examiner erred in rejecting claims 1, 2, 5, 10-13, 17, and 22 under 7
35 U.S.C. § 102(b) as anticipated by Herz. 8
• Whether the Appellants have sustained their burden of showing that 9
the Examiner erred in rejecting claims 3, 4, 6-9, 14, 15, 18, 20, and 21 10
under 35 U.S.C. § 103(a) as unpatentable over Herz and Ojha. 11
• Whether the Appellants have sustained their burden of showing that 12
the Examiner erred in rejecting claims 16 and 19 under 35 U.S.C. § 13
103(a) as unpatentable over Herz and Issa. 14
The pertinent issues turn on whether Herz describes the bid 15
arrangements as claimed. 16
17
FACTS PERTINENT TO THE ISSUES 18
The following enumerated Findings of Fact (FF) are believed to be 19
supported by a preponderance of the evidence. 20
Herz 21
01. Herz is directed to constructing product offers tailored to 22
individual shoppers, to maximize the vendor's profits. They are 23
communicated either to the vendor, who may act on them as 24
desired, or to an on-line computer shopping system that directly 25
makes such offers to shoppers (Herz ¶ 0004). 26
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02. Herz’s system uses one or more computers with databases and 1
network interfaces (Herz ¶ 0022). 2
03. Herz’s system uses terminals at a location that is remote to the 3
system. The terminals can be located in a retail establishment or 4
can be located in the shopper's residence (Herz ¶ 0022). 5
04. Herz sends text and/or graphics to the shopper's terminal, 6
perhaps interactively in response to further choices made by the 7
shopper, to describe offers to the shopper. Offers that are directly 8
relevant to the shopper's stated goals might be displayed more 9
centrally than offers that the shopper may be interested in but has 10
not explicitly asked for. The shopper may browse through the 11
offers and accept one or more offers (Herz ¶ 0038). 12
05. If a shopper elects not to accept an offer immediately, the 13
system may provide the shopper with a "coupon" (or other 14
credential) certifying that the shopper is entitled to the same offer 15
until some future date. The coupon can be a short document 16
specifying the ID of the shopper, the terms of the offer, and the 17
date of expiration. The coupon could instead be electronically 18
transferred at the point of sale to a smart card (Herz ¶ 0038). 19
06. Vendors select the offers they make (Herz ¶ 0037). 20
07. Herz places offers in a hierarchical cluster tree that imposes a 21
useful organization on the collection of offers available for 22
browsing by a shopper. The shopper first chooses one of the 23
highest level (largest) clusters from a menu, and is presented with 24
a menu listing the subclusters of said cluster, whereupon the 25
shopper may select one of these subclusters. The system locates 26
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the subcluster, via the appropriate pointer that was stored with the 1
larger cluster, and allows the shopper to select one of its 2
subclusters from another menu. This process is repeated until the 3
shopper comes to a leaf of the tree, which yields the details of an 4
actual offer (Herz ¶ 0252). 5
08. Offers are placed in clusters based on similarity. This similarity 6
is measured by defining the distance between two values of a 7
given attribute according to whether the attribute is a numeric, 8
associative, or textual attribute. If the attribute is numeric, then 9
the distance between two values of the attribute is the absolute 10
value of the difference between the two values (Herz ¶ 0147). 11
The two offers are similar to the extent the distance is close to 12
zero (Herz ¶ 0150). This may be determined by comparing to an 13
upper bound (Herz ¶ 0151). The process of determining similarity 14
is done iteratively until cluster sizes are sufficiently small (Herz ¶ 15
0191). 16
09. Herz weights the values associated with the similarity attributes 17
according to their relative importance (Herz ¶ 0174). 18
Ojha 19
10. Ojha is directed to electronic commerce for facilitating online 20
transactions which allows traditional negotiation between a buyer 21
and a seller to occur (Ojha 2:47-50). 22
11. Ojha provides a buyer's interface that allows him to search a 23
proprietary database for current product information for a variety 24
of products being offered for sale by a number of sellers. The 25
buyer may save the product information for any products in which 26
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he is interested to one or more shopping lists which becomes part 1
of his interface. For each product saved in the shopping list a bid 2
button is provided, activation of which causes a bid interface to be 3
presented by which the buyer may submit a non-binding bid to the 4
seller of that particular product. The bid is made available to a 5
number of different sellers offering the same product. Using the 6
shopping list, the buyer may make a number of bids for the same 7
or different products to a number of different sellers 8
simultaneously (Ojha 2:54 – 3:20). 9
12. Ojha’s buyer can create and simultaneously maintain as many 10
shopping lists as desired. Moreover, for each shopping list 11
created, the buyer may specify a variety of attributes which affect 12
the way in which each shopping list is used to facilitate 13
transactions. The buyer may specify whether a particular item 14
will automatically solicit quotes from a plurality of sellers once a 15
corresponding entry is added to one of the buyer's shopping lists 16
(Ojha 10:8-21). 17
Issa 18
13. Issa is directed to conducting an online auction of a monetary 19
amount for a specified category of items (Issa ¶ 0029). 20
Facts Related To The Level Of Skill In The Art 21
14. Neither the Examiner nor the Appellants have addressed the 22
level of ordinary skill in the pertinent arts of systems analysis and 23
programming, commercial systems design, sales and marketing 24
systems design, marketing analytics, communications systems 25
design, and negotiated sales systems design. We will therefore 26
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consider the cited prior art as representative of the level of 1
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 2
1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the 3
level of skill in the art does not give rise to reversible error ‘where 4
the prior art itself reflects an appropriate level and a need for 5
testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. 6
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 7
Facts Related To Secondary Considerations 8
15. There is no evidence on record of secondary considerations of 9
non-obviousness for our consideration. 10
11
PRINCIPLES OF LAW 12
Claim Construction 13
During examination of a patent application, pending claims are 14
given their broadest reasonable construction consistent with the 15
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 16
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 17
Limitations appearing in the specification but not recited in the claim 18
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 19
1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 20
specification” without importing limitations from the specification into the 21
claims unnecessarily). 22
Although a patent applicant is entitled to be his or her own 23
lexicographer of patent claim terms, in ex parte prosecution it must be 24
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant 25
must do so by placing such definitions in the specification with sufficient 26
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clarity to provide a person of ordinary skill in the art with clear and precise 1
notice of the meaning that is to be construed. See also In re Paulsen, 30 2
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the 3
specific terms used to describe the invention, this must be done with 4
reasonable clarity, deliberateness, and precision; where an inventor chooses 5
to give terms uncommon meanings, the inventor must set out any 6
uncommon definition in some manner within the patent disclosure so as to 7
give one of ordinary skill in the art notice of the change). 8
Anticipation 9
"A claim is anticipated only if each and every element as set forth in 10
the claim is found, either expressly or inherently described, in a single prior 11
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 12
628, 631 (Fed. Cir. 1987). "When a claim covers several structures or 13
compositions, either generically or as alternatives, the claim is deemed 14
anticipated if any of the structures or compositions within the scope of the 15
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 16
Cir. 2001). "The identical invention must be shown in as complete detail as 17
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 18
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 19
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 20
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 21
Obviousness 22
A claimed invention is unpatentable if the differences between it and 23
the prior art are “such that the subject matter as a whole would have been 24
obvious at the time the invention was made to a person having ordinary skill 25
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S. 26
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Ct. 1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 1
(1966). 2
In Graham, the Court held that the obviousness analysis is bottomed 3
on several basic factual inquiries: “[(1)] the scope and content of the prior art 4
are to be determined; [(2)] differences between the prior art and the claims at 5
issue are to be ascertained; and [(3)] the level of ordinary skill in the 6
pertinent art resolved.” 383 U.S. at 17. See also KSR Int’l v. Teleflex Inc., 7
127 S. Ct. at 1734. “The combination of familiar elements according to 8
known methods is likely to be obvious when it does no more than yield 9
predictable results.” KSR, at 1739. 10
“When a work is available in one field of endeavor, design incentives 11
and other market forces can prompt variations of it, either in the same field 12
or a different one. If a person of ordinary skill can implement a predictable 13
variation, § 103 likely bars its patentability.” Id. at 1740. 14
“For the same reason, if a technique has been used to improve one 15
device, and a person of ordinary skill in the art would recognize that it would 16
improve similar devices in the same way, using the technique is obvious 17
unless its actual application is beyond his or her skill.” Id. 18
“Under the correct analysis, any need or problem known in the field 19
of endeavor at the time of invention and addressed by the patent can provide 20
a reason for combining the elements in the manner claimed.” Id. at 1742. 21
22
ANALYSIS 23
Claims 1, 2, 5, 10-13, 17, and 22 rejected under 35 U.S.C. § 102(b) as 24
anticipated by Herz. 25
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The Appellants intermixed arguments for rejections of claim 1 under 1
anticipation with the arguments of claims 20 and 21 under obviousness (Br. 2
5-9). We make findings as to only those related to Herz in this section 3
because we are here making findings as to the anticipation by Herz. We take 4
up the arguments under obviousness in the section infra for claims 20 and 5
21. 6
The Appellants argue claims 1, 2, 5, 12, 13, 17, and 22 as a group. 7
Accordingly, we select claim 1 as representative of the group. 8
37 C.F.R. § 41.37(c)(1)(vii) (2007). 9
The Examiner found that Herz anticipated claim 1 by finding that 10
Herz is capable of being adapted to perform each of limitations [2] and [3] 11
(Answer 3-4). 12
The Appellants contend that Herz does not disclose or suggest 13
determining whether the user chooses to receive bids on the one or more 14
products described in the information, and adapted to create a bid request if 15
the user chooses to receive bids on the one or more products described in the 16
information (Br. 6:First full ¶) and do not disclose or suggest a bid agent 17
process adapted to determine whether the user chooses to receive bids on the 18
one or more products and adapted to create a bid request if the user chooses 19
to receive bids on the one or more products described in the information; and 20
a broker that sends the bid request over one or more of the network 21
interfaces to one or more stores, and wherein the broker receives bids from 22
the stores and resends the bids over one or more of the network interfaces to 23
a user (Br. 7:Bottom ¶). The Appellants have not provided any analysis 24
behind these contentions, other than to argue the limitations are not in Herz 25
and that Herz does not recite or suggest the cited steps (Br. 6:First full ¶). 26
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We find that Herz describes a system that constructs product offers 1
tailored to individual shoppers that are communicated either to the vendor or 2
to an on-line computer shopping system that directly makes such offers to 3
shoppers (FF 01). A bid is nothing more than an offer. Herz’s system uses 4
the genus offer, and a bid is a species of that genus. Herz sends text and/or 5
graphics to the shopper's terminal, perhaps interactively in response to 6
further choices made by the shopper, to describe offers to the shopper. The 7
shopper may browse through the offers and accept one or more offers (FF 8
04). 9
Thus we find that Herz’s interactive response by the customer 10
determines whether the user chooses to receive bids on the one or more 11
products described in the text or graphics, and Herz’s system is adapted to 12
create a bid request, viz. the offer selected by the customer, if the user 13
chooses to receive bids, as evidenced by the customer’s selection, on the one 14
or more products described in the information. 15
We further find that the interactive process supra determines whether 16
the user chooses to receive bids, viz. a selected offer, on selected products 17
and Herz’s system creates a bid request in the form of an electronic or 18
physical coupon if the user chooses to receive such (FF 05). The broker in 19
the form of Herz’s system sends the offers to the terminals which may be 20
located in stores (FF 03) via the network interfaces (FF 02). Vendors select 21
the offers that are made (FF 06) and therefore Herz’s system, i.e., broker, 22
receives the selected offers from the stores in the form of the vendors and 23
resends the offer to the customer if the offer meets the selection criteria. 24
Thus all of the limitations under contention are found within Herz. 25
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Claims 10 and 11 further require determining one or more related 1
products by determining that a closeness value is less than a replacement 2
factor (claim 10) and determining the closeness measure by weighting 3
attribute factors for both the first and the related products to determine a sum 4
of differences (claim 11). The Appellants contend that Herz fails to describe 5
these limitations (Br. 7-8). 6
We disagree with the Appellants. Herz clusters similar offers for 7
presentation to customers. Clustering is done by selecting those offers 8
minimizing the measured difference between the offers, and further by 9
weighting the value of attributes according to importance (FF 07 - 09). The 10
minimizing computations can rely on an upper bound, which would be a 11
value the closeness must be less than. 12
The Appellants have not sustained their burden of showing that the 13
Examiner erred in rejecting claims 1, 2, 5, 10-13, 17, and 22 under 35 U.S.C. 14
§ 102(b) as anticipated by Herz. 15
16
Claims 3, 4, 6-9, 14, 15, 18, 20, and 21 rejected under 35 U.S.C. § 103(a) as 17
unpatentable over Herz and Ojha. 18
Independent claims 20 and 21 are similar to claim 1, but are drawn to 19
a method and to software performing the method. The Examiner found that 20
Ojha described the steps in these methods but did not describe using a 21
closeness measure to determine related products associated with a selected 22
product, where the closeness measure was determined using attributes of the 23
selected product and related products, and the bid request requesting a bid on 24
the selected product and at least one of the one or more related products. 25
However, the Examiner had found these to be described by Herz in the 26
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findings as to claim 1. The Examiner implicitly found one of ordinary skill 1
would have combined the two references to achieve the flexibility of Ojha’s 2
shopping list with Herz’s online shopping experience (Answer 8-10). 3
The Appellants contend that Ojha does not disclose that a bid request 4
is sent to one or more stores or over one or more network interfaces (Br. 5
7:First full ¶). We disagree with the Appellants. Using the shopping list, 6
Ojha’s buyer may make a number of bids for the same or different products 7
to a number of different sellers simultaneously (FF 11). The buyer may 8
specify whether a particular item will automatically solicit quotes from a 9
plurality of sellers once a corresponding entry is added to one of the buyer's 10
shopping lists (FF 12). 11
The Appellants have not sustained their burden of showing that the 12
Examiner erred in rejecting claims 3, 4, 6-9, 14, 15, 18, 20, and 21 under 35 13
U.S.C. § 103(a) as unpatentable over Herz and Ojha. 14
15
Claims 16 and 19 rejected under 35 U.S.C. § 103(a) as unpatentable over 16
Herz and Issa. 17
The Appellants do not separately argue these claims and therefore 18
they have similarly not sustained their burden of showing that the Examiner 19
erred in rejecting claims 16 and 19 under 35 U.S.C. § 103(a) as unpatentable 20
over Herz and Issa. 21
22
CONCLUSIONS OF LAW 23
The Appellants have not sustained their burden of showing that the 24
Examiner erred in rejecting claims 1, 2, 5, 10-13, 17, and 22 under 25
35 U.S.C. § 102(b) as anticipated by Herz, and in rejecting claims 3, 4, 6-9, 26
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14-16, and 18-21 under 35 U.S.C. § 103(a) as unpatentable over the prior 1
art. 2
3
DECISION 4
To summarize, our decision is as follows: 5
• The rejection of claims 1, 2, 5, 10-13, 17, and 22 under 35 U.S.C. § 6
102(b) as anticipated by Herz is sustained. 7
• The rejection of claims 3, 4, 6-9, 14, 15, 18, 20, and 21 under 35 8
U.S.C. § 103(a) as unpatentable over Herz and Ojha is sustained. 9
• The rejection of claims 16 and 19 under 35 U.S.C. § 103(a) as 10
unpatentable over Herz and Issa is sustained. 11
No time period for taking any subsequent action in connection with 12
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 13
14
AFFIRMED 15
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RYAN, MASON & LEWIS, LLP 26
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