Ex Parte Giannini et al

Patent Trial and Appeal Board

Jan 27, 2016

12569637 (P.T.A.B. Jan. 27, 2016)

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.
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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?
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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
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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.
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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,
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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.
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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.
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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
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