Ex Parte Gavarini

Board of Patent Appeals and Interferences

Aug 11, 2009

10899366 (B.P.A.I. Aug. 11, 2009)

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UNITED STATES PATENT AND TRADEMARK OFFICE 4
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BEFORE THE BOARD OF PATENT APPEALS 7
AND INTERFERENCES 8
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Ex parte PAUL MARIE GAVARINI 11
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Appeal 2008-004108 14
Application 10/899,366 15
Technology Center 3600 16
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Decided: August 11, 2009 19
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Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. 22
FISCHETTI, Administrative Patent Judges. 23
FETTING, Administrative Patent Judge. 24
DECISION ON APPEAL 25
STATEMENT OF THE CASE 26
Paul Marie Gavarini (Appellant) seeks review under 35 U.S.C. § 134 of a final 27
rejection of claims 1-25, the only claims pending in the application on appeal. 28
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 29
We AFFIRM-IN-PART. 30
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The Appellant invented a way of assisting customers in locating items and 1
generating orders from a merchant's electronic catalog, and for assisting customers 2
and merchants in communicating about such orders. It allows customers and 3
merchants to define search queries for searching the electronic catalog, and storing 4
these search queries under user-defined category names for subsequent use. 5
Categories created by the merchant through this method are made available to all 6
customers of the merchant, while categories created by customers are made 7
available as personal categories for the respective customers. An "active quote" 8
feature allows the customer to view and modify quantities of items selected for 9
prospective purchase throughout the various browsing or viewing modes. 10
Specifically, regardless of the browsing mode, whenever the user views an item or 11
a list of items, each such item is displayed in conjunction with a quantity field 12
which indicates the number of that item currently selected for purchase. Thus, 13
when the user views an item, the user can immediately determine whether the item 14
is selected for purchase (and its quantity) without having to access a shopping cart 15
page or other special page. (Specification 1-2: ¶ 0005-0006). 16
An understanding of the invention can be derived from a reading of exemplary 17
claim 1, which is reproduced below [bracketed matter and some paragraphing 18
added]. 19
1. A method for facilitating browsing of an electronic catalog of 20
items, the method comprising: 21
[1] presenting a user an option to view the electronic catalog using 22
multiple browsing modes, each browsing mode providing a respective 23
method for identifying desired items in the electronic catalog; and 24
[2] when the user views a list of items within any one of the multiple 25
browsing modes, concurrently displaying, for each of a plurality of 26
items in the list, a respective field that indicates a quantity of the item 27
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currently selected by the user for purchase, said fields being editable 1
by the user to modify said quantities; 2
[3] whereby, during browsing of the electronic catalog, the user is 3
notified of, and provided an option to modify, quantities of items 4
selected for purchase without having to access a shopping cart. 5
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This appeal arises from the Examiner’s final Rejection, mailed March 1, 2007. 7
The Appellant filed an Appeal Brief in support of the appeal on August 29, 2007. 8
An Examiner’s Answer to the Appeal Brief was mailed on November 27, 2007. A 9
Reply Brief was filed on January 15, 2008. 10
PRIOR ART 11
The Examiner relies upon the following prior art: 12
Kaye et al. US 5,727,164 Mar. 10, 1998
Wong et al. US 5,890,175 May 30, 1999
Hill US 5,970,471 Oct. 19, 1999
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REJECTIONS 1
Claims 1-4, 9-12, 14, and 16-25 stand rejected under 35 U.S.C. § 103(a) as 2
unpatentable over Kaye and Wong1. 3
Claims 5-7 and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable 4
over Kaye, Wong, and Hill1. 5
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Kaye, 6
Wong, Hill, and Guheen. 7
ISSUES 8
The issues pertinent to this appeal are 9
• Whether the Appellant has sustained its burden of showing that the 10
Examiner erred in rejecting claims 1-4, 9-12, 14, and 16-25 under 35 U.S.C. 11
§ 103(a) as unpatentable over Kaye and Wong. 12
• Whether the Appellant has sustained its burden of showing that the 13
Examiner erred in rejecting claims 5-7 and 20 under 35 U.S.C. § 103(a) as 14
unpatentable over Kaye, Wong, and Hill. 15
• Whether the Appellant has sustained its burden of showing that the 16
Examiner erred in rejecting claim 8 under 35 U.S.C. § 103(a) as 17
unpatentable over Kaye, Wong, Hill, and Guheen. 18

1 The Examiner includes claim 20 in the rejection over Kaye and Wong. This is
technically improper because claim 20 depends from claim 5. Claim 5 is rejected
under Kaye, Wong, and Hill. The Appellant has not separately argued claim 20,
and so we take this to be a typographic error on the Examiner’s part. We therefore
consider the rejection of claim 20 to be consistent with that of claim 5.
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These issues turn on whether one of ordinary skill would have extrapolated the 1
practice of listing item information in an inventory system to other systems using 2
item quantity information; whether a field that allows quantity information to be 3
entered, displayed, and edited acts to notify the user and track that quantity; and 4
whether a quantity shown for purchase of an item on a screen acts to notify and 5
track a quantity selected for purchase. 6
FACTS PERTINENT TO THE ISSUES 7
The following enumerated Findings of Fact (FF) are believed to be supported 8
by a preponderance of the evidence. 9
Kaye 10
01. Kaye is directed to managing the availability of items held by users of 11
a network by permitting users to access inventory databases from many 12
offsite locations in order to retrieve and offer the inventory of particular 13
items that the buyers and sellers are interested in (Kaye 2:1-5). 14
02. Kaye describes permitting users to search inventories for information 15
pertaining to an item based on particular search criteria. The search 16
criteria may include item type, manufacturer, date code, quantity and 17
price (Kaye 4:11-16). 18
03. Kaye describes the update entry in FIG. 5. If this entry is selected, 19
Kaye displays a menu of all family/subfamily names as shown in FIG. 8. 20
After selecting the desired family/subfamily, Kaye displays a list of item 21
records like that shown in FIG. 14 from which the user can select a 22
specific item record to be updated. The user is then prompted to enter a 23
new quantity and/or a new price for the item selected. When updating is 24
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complete the user returns the system to the local inventory menu. This 1
allows for rapid maintenance of inventory integrity (Kaye 6:20-34). 2
Wong 3
04. Wong is directed to dynamically generating and displaying a catalog 4
of items, each item classified by at least group information and product 5
information (Wong 1:57-60). 6
05. Wong shows a screen that includes several items for purchase. Each 7
item has an editable purchase quantity field to the left of the item 8
description. A button at the bottom of the screen indicates it will add the 9
quantities for the selected items to the Basket (Wong Fig. 5). 10
Hill 11
06. Hill is directed to a virtual product catalog and product presentation 12
apparatus to assist with merchandising of products (Hill 1:10-12). 13
Facts Related To Differences Between The Claimed Subject Matter And The 14
Prior Art 15
07. None of the references applied describe a results page from a search 16
query that contains editable data fields. 17
Facts Related To The Level Of Skill In The Art 18
08. Neither the Examiner nor the Appellant has addressed the level of 19
ordinary skill in the pertinent arts of systems analysis and programming, 20
business to business commercial transaction systems, online shopping 21
systems, and user interface design. We will therefore consider the cited 22
prior art as representative of the level of ordinary skill in the art. See 23
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he 24
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absence of specific findings on the level of skill in the art does not give 1
rise to reversible error ‘where the prior art itself reflects an appropriate 2
level and a need for testimony is not shown’”) (quoting Litton Indus. 3
Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 4
1985). 5
Facts Related To Secondary Considerations 6
09. There is no evidence on record of secondary considerations of non-7
obviousness for our consideration. 8
PRINCIPLES OF LAW 9
Claim Construction 10
During examination of a patent application, pending claims are given 11
their broadest reasonable construction consistent with the specification. In 12
re Prater , 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. 13
Tech Ctr., 367 F.3d 1359, 1364, (Fed. Cir. 2004). 14
Limitations appearing in the specification but not recited in the claim are not 15
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. 16
Cir. 2003) (claims must be interpreted “in view of the specification” without 17
importing limitations from the specification into the claims unnecessarily). 18
Although a patent applicant is entitled to be his or her own lexicographer of 19
patent claim terms, in ex parte prosecution it must be within limits. In re Corr, 20
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such 21
definitions in the Specification with sufficient clarity to provide a person of 22
ordinary skill in the art with clear and precise notice of the meaning that is to be 23
construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although 24
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an inventor is free to define the specific terms used to describe the invention, this 1
must be done with reasonable clarity, deliberateness, and precision; where an 2
inventor chooses to give terms uncommon meanings, the inventor must set out any 3
uncommon definition in some manner within the patent disclosure so as to give 4
one of ordinary skill in the art notice of the change). 5
Obviousness 6
A claimed invention is unpatentable if the differences between it and the 7
prior art are “such that the subject matter as a whole would have been obvious at 8
the time the invention was made to a person having ordinary skill in the art.” 35 9
U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1729-30 10
(2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 11
In Graham, the Court held that the obviousness analysis is bottomed on 12
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be 13
determined; [(2)] differences between the prior art and the claims at issue are to be 14
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383 15
U.S. at 17. See also KSR, 127 S.Ct. at 1734. “The combination of familiar 16
elements according to known methods is likely to be obvious when it does no more 17
than yield predictable results.” Id. at 1739. 18
“When a work is available in one field of endeavor, design incentives and 19
other market forces can prompt variations of it, either in the same field or a 20
different one. If a person of ordinary skill can implement a predictable variation, § 21
103 likely bars its patentability.” Id. at 1740. 22
“For the same reason, if a technique has been used to improve one device, 23
and a person of ordinary skill in the art would recognize that it would improve 24
similar devices in the same way, using the technique is obvious unless its actual 25
application is beyond his or her skill.” Id. 26
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“Under the correct analysis, any need or problem known in the field of 1
endeavor at the time of invention and addressed by the patent can provide a reason 2
for combining the elements in the manner claimed.” Id. at 1742. 3
ANALYSIS 4
Claims 1-4, 9-12, 14, and 16-25 rejected under 35 U.S.C. § 103(a) as unpatentable 5
over Kaye and Wong. 6
The Appellant argues each of the independent claims 1, 9, and 24 separately. 7
Of claims 2-4 and 16-19 depending from claim 1, the Appellant argues claims 2, 3, 8
16, and 17 separately. Thus we understand the Appellant to be arguing claims 1, 4, 9
18, and 19 as a group. Of claims 10-15 and 21-23 depending from claim 9, the 10
Appellant argues claims 10, 11, 14, and 22 separately. Thus we understand the 11
Appellant to be arguing claims 9, 12, 13, 15, and 23 as a group. Accordingly, we 12
select claims 1 and 9 as representative of each of those respective groups. 13
37 C.F.R. § 41.37(c)(1)(vii) (2007). 14
The Examiner found that Kaye described the limitations of claim 1 except for 15
displaying quantities selected for purchase. The Examiner found that Wong taught 16
that one of ordinary skill knew to display a list of products and respective editable 17
quantity fields for purchase and that using such fields would have added flexibility 18
to Kaye (Answer 12-14). 19
The Appellant contends that Kaye displays an inventory listing and the editable 20
quantity fields are for quantities in stock rather than quantities selected for 21
purchase. The Appellant also contends that Wong displays a quantity field for 22
what will be added if and when a user decides to buy (Appeal Br. 7-8). The 23
Examiner responds that Wong’s quantities are those to be added to a shopping cart 24
for purchase. The Examiner also found that the Appellant apparently argued that 25
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Wong’s quantities were not those previously selected, but that the claim does not 1
narrow the limitation to those previously selected (Answer 4-5). The Appellant in 2
turn responds that the Examiner misconstrued the quantity in claim 1 as construed 3
according to the Specification (Reply Br. 2-3). 4
We agree with the Examiner. We find that Kaye does describe presenting a 5
user an option to view the electronic catalog using multiple browsing modes, each 6
browsing mode providing a respective method for identifying desired items in the 7
electronic catalog; and when the user views a list of items within any one of the 8
multiple browsing modes, concurrently displaying, for each of a plurality of items 9
in the list, a respective field that indicates a quantity of the item currently selected 10
by the user, the contents of those fields being editable (albeit in a separate field) by 11
the user to modify said quantities; whereby, during browsing of the electronic 12
catalog, the user is notified of, and provided an option to modify, quantities of 13
items selected (FF 01 - 03). 14
One of ordinary skill would take from this that when browsing information 15
related to items for commerce, i.e. items for sale, purchase, or manufacture, speed 16
and efficiency is enhanced by allowing multiple browsing modes and providing 17
information such as quantity information related to the context in which the 18
information is viewed that is editable. Because item information is usable 19
throughout an enterprise, one of ordinary skill would have seen the applicability of 20
this technique to any item quantity field in the appropriate context, including 21
purchasing of items. 22
To show item information in a purchasing context, the Examiner relied on 23
Wong. Wong shows a screen that includes several items for purchase. Each item 24
has an editable purchase quantity field to the left of the item description. A button 25
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at the bottom of the screen indicates it will add the quantities for the selected items 1
to the Basket (FF 05). Wong thus shows displaying a list of items with quantity 2
fields that may be edited with quantities selected for purchase. The button 3
describing going to a basket shows that the display occurs without yet accessing a 4
shopping cart. 5
Thus, each quantity field indicates a quantity of the item currently selected by 6
the user for purchase. As the Examiner found, the claim does not require that the 7
fields display quantities previously selected (Answer 4). During browsing of the 8
electronic catalog, the fields notify the user of, and provide an option to modify, 9
the quantities of items selected for purchase in those fields. 10
Independent claim 9 requires similar but slightly different field characteristics. 11
Claim 9 requires an indication of the respective quantity of the displayed item 12
currently selected for purchase, to enable users to keep track of items selected for 13
purchase and their respective quantities during browsing. Again, the scope of what 14
is selected does not necessarily include previous selections. Wong’s fields enable 15
users to keep track of the items selected for purchase and their respective quantities 16
for those items on the screen shown in Wong’s Fig. 5. Claim 9 does not limit the 17
extent to which the invention keeps track. Wong clearly keeps track of the item 18
quantities selected in Wong Fig. 5 during display. 19
But even were the quantities in the independent claims required to include 20
previous selections, this would require no more than having the quantity fields be 21
cumulative for an item. As we found supra, Kaye suggested displaying item 22
quantity fields appropriate to the context of a display for items. This would apply 23
to the context of items to be sold, purchased, or manufactured. 24
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Dependent claims 10 and 14 require that the quantity values are displayed in 1
item-specific fields that can be edited by the user, so that the user can modify the 2
quantities while viewing the list and that a shopping cart is not needed to view the 3
fields. Thus these claims add to claim 9 limitations that are in claim 1. We find 4
these to be shown by Wong as discussed supra regarding claim 1. 5
The Appellant has not sustained its burden of showing that the Examiner erred 6
in rejecting claims 1, 4, 9, 10, 12-15, 18-21, and 23 under 35 U.S.C. § 103(a) as 7
unpatentable over Kaye and Wong. 8
Independent claim 24, and dependent claims 2, 3, 11, 16, 17, 22 and 25 9
separately argued by the Appellant require a search results page that includes the 10
editable fields. As the Examiner found, Kaye describes a search (FF 02). The 11
Examiner appears to have found that a user browses the results after a search in 12
Kaye. However neither reference describes a results page from a search query that 13
contains editable data fields (FF 07), nor can we find any suggestion to do so in the 14
references. 15
The Appellant has sustained its burden of showing that the Examiner erred in 16
rejecting claims 2, 3, 11, 16, 17, 22, 24, and 25 under 35 U.S.C. § 103(a) as 17
unpatentable over Kaye and Wong. 18
Claims 5-7 and 20 rejected under 35 U.S.C. § 103(a) as unpatentable over Kaye, 19
Wong, and Hill. 20
The Appellant does not separately argue claims 7 and 20 and therefore appears 21
to be arguing claims 5, 7, and 20 as a group. Independent claim 5 requires a 22
publically accessible network, selection of items for purchase, and generating, in 23
each of said browsing modes, a non-shopping-cart page that displays a plurality of 24
items and which concurrently displays, for each displayed item, an indication of 25
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the respective quantity of the displayed item currently selected for purchase; 1
whereby users can keep track of items selected for purchase and their respective 2
quantities during browsing of the electronic catalog without accessing a shopping 3
cart. The Examiner applied Hill for public accessibility and purchase selection. 4
The Examiner found that Kaye and Wong described the limitation regarding 5
editable purchase quantity fields as in claims 1 and 9 (Answer 18-19). The 6
Appellant does not contend that Hill fails to describe the limitations for which Hill 7
is applied, but essentially makes the same arguments as with claim 1. We find that 8
argument unpersuasive here for the same reasons we found with respect to claim 1 9
supra. 10
Dependent claim 6 separately argued by the Appellant requires a search results 11
page that includes the editable fields. However neither reference describes a 12
results page from a search query that contains editable data fields (FF 07), nor can 13
we find any suggestion to do so in the references. 14
The Appellant has not sustained its burden of showing that the Examiner erred 15
in rejecting claims 5, 7, and 20, but has sustained its burden of showing that the 16
Examiner erred in rejecting claim 6, under 35 U.S.C. § 103(a) as unpatentable over 17
Kaye, Wong, and Hill. 18
Claim 8 rejected under 35 U.S.C. § 103(a) as unpatentable over Kaye, Wong, Hill, 19
and Guheen. 20
The Appellant does not separately argue claim 8, depending from claim 5, and 21
so has not sustained its burden of showing that the Examiner erred in rejecting 22
claim 8 under 35 U.S.C. § 103(a) as unpatentable over Kaye, Wong, Hill, and 23
Guheen for the same reasons we found as to claim 5, supra. 24
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CONCLUSIONS OF LAW 1
The Appellant has not sustained its burden of showing that the Examiner erred 2
in rejecting claims 1, 4, 5, 7-10, 12-15, 18-21, and 23, but has sustained its burden 3
of showing that the Examiner erred in rejecting claims 2, 3, 6, 11, 16, 17, 22, 24, 4
and 25 under 35 U.S.C. § 103(a) as unpatentable over the prior art. 5
DECISION 6
To summarize, our decision is as follows: 7
• The rejection of claims 1, 4, 9, 10, 12-15, 18-21, and 23 under 35 U.S.C. § 8
103(a) as unpatentable over Kaye and Wong is sustained. 9
• The rejection of claims 2, 3, 11, 16, 17, 22, 24, and 25 under 35 U.S.C. § 10
103(a) as unpatentable over Kaye and Wong is not sustained. 11
• The rejection of claims 5, 7, and 20 under 35 U.S.C. § 103(a) as 12
unpatentable over Kaye, Wong, and Hill is sustained. 13
• The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over 14
Kaye, Wong, and Hill is not sustained. 15
• The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over 16
Kaye, Wong, Hill, and Guheen is sustained. 17
No time period for taking any subsequent action in connection with this appeal 18
may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 19
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AFFIRMED-IN-PART 21
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