Ex Parte Giannini et alDownload PDFPatent Trial and Appeal BoardJan 27, 201612569637 (P.T.A.B. Jan. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/569,637 0912912009 86636 7590 01/28/2016 BRUNDIDGE & STANGER, P.C. 2318 MILL ROAD, SUITE 1020 ALEXANDRIA, VA 22314 FIRST NAMED INVENTOR Robert Giannini 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. 2625-17.747BS 8628 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 GIANINNI and ROBERT J. CRAWFORD Appeal2013-003334 Application 12/569,637 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 Gianinni, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner's Final rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM. 1 The Appellants identify Jarbridge, Inc., as the real party in interest. Appeal Br. 2. Appeal2013-003334 Application 12/569,637 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A host application server comprising: at least a computer processor; and a tangible storage medium containing stored programming instructions that when executed by the at least one computer processor perform the steps of: providing an image merging feature that accesses one or more seller websites to obtain images of articles offered for sale, provides a buyer interface that allows selection of the obtained images; accesses image data for a foundational structure, merges the selected images with the foundational structure to generate merged image data, and provides the merged image data for viewing by the buyer; providing a revenue generating feature that generates fees for at least one of the buyer and a seller associated with one of the seller websites, and charges the at least one of the buyer and the seller for the generated fees. 2 Appeal2013-003334 Application 12/569,637 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Carlin Arnold Rom Kraemer Lin-Hendel us 5,694,549 us 6,016,504 US 6,307 ,568 B 1 US 6,490,602 B 1 US 7,328,177 Bl The following rejections are before us for review: Dec. 2, 1997 Jan. 18,2000 Oct. 23, 2001 Dec. 3, 2002 Feb. 5,2008 1. Claims 1, 3, 4, 7-11, 13, 14, 17, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Arnold, Rom, and Carlin. 2. Claims 2 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Arnold, Rom, Carlin, and Kraemer. 3. Claims 5, 6, 15, and 16 are rejected under 35 U.S.C. §103(a) as being unpatentable over i~ .. rnold, Rom, Carlin, and Lin-Hendel. ISSUES Did the Examiner err in rejecting claims 1, 3, 4, 7-11, 13, 14, 17, and 18 under 35 U.S.C. §103(a) as being unpatentable over Arnold, Rom, and Carlin; claims 2 and 12 under 35 U.S.C. §103(a) as being unpatentable over Arnold, Rom, Carlin, and Kraemer; and, claims 5, 6, 15, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Arnold, Rom, Carlin, and Lin- Hendel? 3 Appeal2013-003334 Application 12/569,637 ANALYSIS The rejection of claims 1, 3, 4, 7-11, 13, 14, 17, and 18 under 35 USC §103(a) as being unpatentable over Arnold, Rom, and Carlin. The Appellants argue claims 1, 3, 4, 7-11, 13, 14, 17, and 18 as a group (Appeal Br. 3-10). We select claim 1 as the representative claim for this group, and the remaining claims 3, 4, 7-11, 13, 14, 17, and 18 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2014). Independent claim 1 includes the limitation providing a revenue generating feature that generates fees for at least one of the buyer and a seller associated with one of the seller websites, and charges the at least one of the buyer and the seller for the generated fees. The Examiner takes the position that Arnold discloses "generat[ing] fees for at least one of the buyer and a seller associated with one of the seller websites [Col. 8, lines 9-23, 'comm1ss10n ']" (Final Action 6). Also, "Carlin [discloses] providing a revenue generating feature that generates fees for at least one of the buyer and a seller associated with one of the seller websites [Col. 2, lines 34--40, Col. 6, lines 5-24]" (Final Action 7). Column 8, lines 9-23 of Arnold disclose a Virtual Outlet comprising "a collection of text or images that describe or represent various products or services that the customer can purchase." The text and images are can be associated with links to a merchant's order Web page. If a sale is made, "the merchant can credit to the VO [Virtual Outlet] an appropriate commission" (id.). Column 2, lines 34--40, and column 6, lines 5-24 of Carlin disclose that a publishing provider can set a fee for accessing data in databases 4 Appeal2013-003334 Application 12/569,637 private to the service provider as well as provide a billing structure determining "how much its subscriber will be charged for accessing the private on-line service." This can include "[t]he owner of the multi-provider on-line service subtract[ing] its fees from the revenues received from the subscribers and pay[ing] the difference to the provider" (id. at col. 6, lines 20-23). We agree with the Examiner. At the very least, Carlin discloses a revenue generating feature that "generates fees [e.g., subscriber fees] for at least one of the buyer and a seller [e.g., "[t]he owner of the multi-provider on-line service] associated with one of the seller websites, and charges the at least one of the buyer [e.g., subscriber] and the seller forthe generated fees" as claimed (Ans. 6-7, 11-12; see also Appeal Br. 3 (citation omitted)). The Appellants disagree that the cited prior art shows or would lead one of ordinary skill in the art to the claimed subject matter including said revenue generating feature. The arguments are unpersuasive as to error in the rejection. The Appellants argue that "[ c ]ombining the teachings of the '504 reference [Arnold] and the '549 reference [Carlin] would result in a combination in which the merchants would exclude potential customers by forcing customers to pay subscription-based fees before they can access and purchase the content that the merchants provide" (Appeal Br. 4). We do not see it that way. Carlin very clearly describes a revenue generating feature for a private on-line service. One of ordinary skill in the art with Arnold and Carlin in hand would be led to include a private on-line service with a revenue generating feature attached to it. 5 Appeal2013-003334 Application 12/569,637 Furthermore, the feature that the Appellants appear to be arguing subscription-based fees before subscribers can access and purchase the content that the merchants provide is not excluded from the scope of claim 1. There is nothing in claim 1 that narrowly limits the subject matter claimed so that subscription-based fees are not required before subscribers can access and purchase the content that the merchants provide. The argument is not commensurate in scope with what is claimed. The arguments that Carlin "undermines" Arnold's goal and that Carlin "decrease[s] efficiency of [Arnold's] communication[]" are not persuasive as to error in the rejection (Appeal Br. 5). The Appellants do not adequately explain and we do not see how modifying Arnold so as to include Carlin's revenue generating feature for a private on-line service undermines Arnold or reduces Arnold's efficiency. Even if we assumed arguendo that Arnold's invention would be affected by modifying it in light of Carlin, there is nothing in claim 1 that narrowly limits the subject matter claimed so that said combination is not covered and does not yield a similar result. The Appellants argue that "[t]here is no mention [in Carlin] of how (or whether) to handle linking between multiple sites, no discussion of image storage, retention or processing between multiple sites [as in Arnold]" (Appeal Br. 7). Again, the argument is not commensurate in scope with what is claimed. "Many of [A ]ppellants' arguments fail from the outset because ... they are not based on limitations appearing in the claims." In re Self, 671F.2d1344, 1348 (CCPA 1982). Claim 1 is not limited so as to include (a) handling linking between multiple sites, (b) image storage, and/ or ( c) retention or processing between multiple sites. For example, 6 Appeal2013-003334 Application 12/569,637 claim 1 broadly covers a single seller website. Because claim 1 is not limited, for example, to multiple websites, the argument that Carlin is not designed for use with multiple merchant websites, which Arnold presumably is, cannot be a persuasive argument as to error in the rejection. The Appellants further argue that the Examiner has not shown "any reference in particular that teaches this 'centralized service' or how the 'centralized service' is performed by a centralized server, let alone a single server .... [T]he cited references fail to teach or suggest determination of fees at a single server or merging of selected images of articles onto a foundation structure at a single server" (Appeal Br. 9). The argument is not commensurate in scope with what is claimed. Claim 1 does not call for a centralized service as argued. Claim 1 is directed to a "host application server" comprising two elements: (1) at least a computer processor; and (2) "a tangible storage medium containing stored programming instructions that when executed by the at least one computer processor perform the steps [as claimed]." There is no requirement that the steps (including the revenue generating feature) be performed by a single or "centralized service." In fact, a plain reading of the claim shows that the steps to be performed are "providing an image merging feature" and "providing a revenue generating feature." Claim 1 does not limit the performance of the image merging feature and the revenue generating feature to a single server. The remaining arguments are unpersuasive as to error in the rejection. 7 Appeal2013-003334 Application 12/569,637 The rejection of claims 2 and 12 under 35 US.C. §103(a) as being unpatentable over Arnold, Rom, Carlin, and Kraemer. This rejection of dependent claims 2 and 12 is not separately argued. It is affirmed for the reasons given in affirming the rejection of claim 1. The rejection of claims 5, 6, 15, and 16 under 35 US.C. §103(a) as being unpatentable over Arnold, Rom, Carlin, and Lin-Hendel. This rejection of dependent claims 5, 6, 15, and 16 is not separately argued. It is affirmed for the reasons given in affirming the rejection of claim 1. CONCLUSIONS Therejectionofclaims 1,3,4, 7-11, 13, 14, 17,and 18under35 U.S.C. § 103(a) as being unpatentable over Arnold, Rom, and Carlin is affirmed. The rejection of claims 2 and 12 under 35 U.S.C. § 103(a) as being unpatentable over Arnold, Rom, Carlin, and Kraemer is affirmed. The rejection of claims 5, 6, 15, and 16 under 35 U.S.C. §103(a) as being unpatentable over Arnold, Rom, Carlin, and Lin-Hendel is affirmed. 8 Appeal2013-003334 Application 12/569,637 DECISION The decision of the Examiner to reject claims 1-18 is affirmed. 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). AFFIRMED rvb 9 Copy with citationCopy as parenthetical citation