Ex Parte Gianinni et al

Patent Trial and Appeal Board

Jan 27, 2016

12568495 (P.T.A.B. Jan. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/568,495 09/28/2009
86636 7590 01/28/2016
BRUNDIDGE & STANGER, P.C.
2318 MILL ROAD, SUITE 1020
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Robert Gianinni
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.
2625-14.747BS 6504
EXAMINER
GOODBODY, JOAN T
ART UNIT PAPER NUMBER
CSDM
MAILDATE DELIVERY MODE
01/28/2016 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 ROBERT GIANNINI and ROBERT J. CRAWFORD
Appeal2013-002972
Application 12/568,495 1
Technology Center 3600
Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Giannini, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-10. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
1 The Appellants identify Jarbridge, Inc. as the real party in interest. Br. 2.
Appeal2013-002972
Application 12/568,495
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer system comprising:
a tangible medium storing programming instructions that when
executed by the computer system perform the steps of:
providing logon information to on-line viewers as part of a
registration process;
providing, to the on-line viewers, image data of a plurality of
articles from different seller websites;
receiving, from each of the on-line viewers, selection input that
identifies one or more of the articles;
for each on-line viewer, saving the identified one or more
articles in a virtual closet;
merging the at least one of the identified one or more articles
with a structure to generate a merged image of the at least one article
and the structure;
providing the merged image to an on-line viewer;
for each on-line viewer, establishing a list of favorite retailers;
in response to a subsequent logon by an on-line viewer,
retrieving the list of favorite retailers; and
providing, to the on-line viewer, the list of favorite retailers that
includes links to websites of the favorite retailers.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
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Appeal2013-002972
Application 12/568,495
Harada
Rose
Arnold
Rom
Kraemer
US 5.551,021 Al
us 5,930,769
us 6,016,504
US 6,307 ,568 B 1
US 6,490,602 B 1
The following rejections are before us for review:
Aug. 27, 1996
July 27, 1999
Jan. 18,2000
Oct. 23, 2001
Dec. 3, 2002
1. Claims 1-5 and 8-10 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Arnold, Rose, Rom, and Kraemer.
2. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Arnold, Rose, Rom, Kraemer, and Harada.
ISSUE
Did the Examiner err in rejecting claims 1-5 and 8-10 under 35
U.S.C. § 103(a) as being unpatentable over Arnold, Rose, Rom, and
Kraemer, and claims 6 and 7 under 35 U.S.C. § 103(a) as being unpatentable
over Arnold, Rose, Rom, Kraemer, and Harada?
ANALYSIS
Did the Examiner err in rejecting claims 1-5 and 8-10 under 35 US.C.
§103(a) as being unpatentable over Arnold, Rose, Rom, and Kraemer.
Sole independent claim 1 calls for (a) "for each on-line viewer,
establishing a list of favorite retailers", (b) "in response to a subsequent
logon by an on-line viewer, retrieving the list of favorite retailers"; and (c)
"providing, to the on-line viewer, the list of favorite retailers that includes
links to websites of the favorite retailers."
The Examiner takes the position that Figs. 1 and 2, column 1, line 46
- column 3, line 46, and column 3, line 63 - column 7, line 4 of Rom
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Appeal2013-002972
Application 12/568,495
discloses (a); column 7, line 55 - column 8, line 14 of Kraemer discloses
(b ); and Fig. 1 b, column 11, line 5 8 - column 12, line 3 6, of Arnold
discloses (c). Final Rejection 5-7. According to the Examiner,
it would be obvious to a person of ordinary skill in the art at the time
of the invention to combine the teachings of Arnold and Kraemer with
the motivation of a more effective, efficient, and flexible method for
establishing a computer-based relationship between a content-rich site
(Arnold, [Col. 3, lines 61---67]) and the customer's/shopper's ability to
have access to their favorite suppliers/websites for shopping
(Kraemer, [Col. 7, line 55---Col. 8, line 14]).
Final Rejection 7.
The Appellants argue: "the rejection identifies a vague goal; however,
the references provide virtually no details, in the way of specific teachings,
suggesting a path toward this goal." Br. 7. We agree.
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
The difficulty here is twofold. One, we do not see disclosed in the
references what the Examiner alleges to be disclosed there. For example,
column 7, line 55 - column 8, line 14 of Kraemer is alleged to disclose "in
response to a subsequent logon by an on-line viewer, retrieving the list of
favorite retailers" as claimed. But there is nothing there about a subsequent
logon. Second, there is inadequate reasoning explaining how one of
ordinary skill in the art would have reached the claimed invention as a whole
including (a) "for each on-line viewer, establishing a list of favorite
retailers", (b) "in response to a subsequent logon by an on-line viewer,
retrieving the list of favorite retailers"; and ( c) "providing, to the on-line
viewer, the list of favorite retailers that includes links to websites of the
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Appeal2013-002972
Application 12/568,495
favorite retailers" given the separate disclosures in Rom, Kraemer and
Arnold. The reasoning amounts to simply showing limitations are in the
prior art coupled with a conclusory obviousness statement. But "rejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." In re Kahn,
441F.3d977, 988 (Fed. Cir. 2006). Because the reasoning is inadequate, a
prima facie case of obviousness has not been made in the first instance.
For the foregoing reasons, the rejection will not be sustained.
The rejection of claims 6 and 7 under 35 US.C. §103(a) as being
unpatentable over Arnold, Rose, Rom, Kraemer, and Harada.
Claims 6 and 7 depend from claim 1 and their rejection is not
sustained for the same reasons the rejection of claim 1 is not sustained.
CONCLUSIONS
The rejection of claims 1-5 and 8-10 under 35 U.S.C. § 103(a) as
being unpatentable over Arnold, Rose, Rom, and Kraemer is reversed.
The rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as being
unpatentable over Arnold, Rose, Rom, Kraemer, and Harada is reversed.
DECISION
The decision of the Examiner to reject claims 1-10 is reversed.
REVERSED
Ssc
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