Ex Parte Godoy et al

Board of Patent Appeals and Interferences

Feb 17, 2012

10688097 (B.P.A.I. Feb. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GLENN C. GODOY, DANNY R. HAGER and
RUSSELL T. WHITE JR.
____________

Appeal 2009-013111
Application 10/688,097
Technology Center 2100
____________

Before KRISTEN L. DROESCH, DENISE M. POTHIER and
BRUCE R. WINSOR, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-013111
Application 10/688,097

2
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The invention relates to a method and system for managing custom
data for items that are purchased electronically. Spec. ¶ 0001; Abs.
Independent claim 1 is illustrative and is reproduced below (disputed
limitations in italics):
1. A method of managing custom data by a computer during an
electronic purchase, the method comprising:
selecting an item for purchase;
determining a set of attributes for the item, wherein the
attributes include item-based attributes and purchase-based
attributes, wherein each item-based attribute relates to
information about the item and each purchase-based attribute
relates to information about the electronic purchase and wherein
each attribute is associated with at least one value;
comparing the set of attributes to a set of keys, wherein
each key is generated based on data collected on a custom data
form and wherein each key includes an attribute with a
corresponding matching value;
displaying the custom data form using the computer in
the case where the corresponding matching value of an
attribute in the set of keys matches the at least one value of
each attribute for the item; and
obtaining government regulatory information from a
customer that is required to comply with disclosure and
reporting requirements for a purchase of chemicals via the
custom data form.

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Claims 1-6, 9, 10 and 14-20
1
stand rejected under 35 U.S.C. 103(a) as
unpatentable over Nishimura (US 200l/0051904 A1), Christensen (US
2002/0154114 A1) and Breen, Jr. (“Breen”) (US 6,598,027 B1).
Claims 7, 8 and 11-13 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Nishimura, Christensen, Breen and Leber (US
2003/0182391 A1).
ISSUE
Did the Examiner err in determining that the combined teachings of
Nishimura, Christensen and Breen render obvious the invention of claim 1?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action. We disagree with Appellants’ conclusions and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken; and (2) the reasons set forth by the Examiner in
the Answer in response to the Appeal Brief. However, with respect to the
claims argued by Appellants, we highlight and address specific findings and
arguments for emphasis as follows. Appellants argue claims 1-20 together as
a group. Br. 7-8. We select independent claim 1 as representative of the
group. 37 C.F.R. § 41.37(c)(vii).
Appellants first argue that Nishimura does not display a custom form
only when a match has been made of attribute values. Br. 7 (emphasis
added). We are unpersuaded by Appellants’ argument since, as pointed out

1
The Examiner’s listing of the rejected claims includes claims 11-13.
However, the inclusion of claims 11-13 appears to be a typographical error
since the limitations of claim 11-13 are not substantively addressed for this
ground of rejection. Compare Ans. 3 with Ans. 7-9 and with Ans. 17-19.
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by the Examiner (Ans. 19-20), this argument is not commensurate in scope
with the claim language. The plain language of claim 1 does not require the
display of the custom form only when the corresponding matching value
matches the at least one value of each attribute for the item. Instead, claim 1
recites “displaying the custom data form using the computer in the case
where the corresponding matching value of an attribute in the set of keys
matches the at least one value of each attribute for the item . . . .” In
addition, the plain language of claim 1 does not preclude the display of the
custom data form also in the case where the corresponding matching value
does not match the at least one value of each attribute for the item.
Related to the previous argument, Appellants argue that Nishimura
does not determine whether a value of an attribute in a set of keys matches a
value of an attribute for the item. Br. 7. Appellants’ argument is
unpersuasive because Appellants’ arguments do not cogently explain the
supposed errors in the Examiner’s findings. The Examiner finds that
Nishimura describes comparing the set of attributes (i.e., product
specification values) to a set of keys (i.e., user input specification values)
and, wherein each key is generated based on data collected on a custom data
form (i.e., specification-confirming screen displays) and includes an attribute
with a corresponding matching value and displaying the custom data form in
the case where the corresponding matching value of an attribute in the set of
keys matches the at least one value of each attribute for the item. Ans. 4, 20
(citing Nishimura ¶ 0078, ll. 11-15; ¶ 0102, ll. 1-7; ¶ 0103, ll.7-9; ¶¶ 0062,
0065, 0075, 0076, 0085, 0086).
Appellants also argue that Nishimura’s description of when a user
chooses a product, the user is presented with options for choosing
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specifications to customize (the product) is not equivalent to the claimed
system which determines whether a user must provide required information
as part of the purchase and provides a form to the user for inputting the
information. Br. 7-8. Appellants’ argument is unpersuasive because it is not
commensurate in scope with the claim language. Claim 1 does not recite
determining whether a user must provide required information as part of the
purchase. Rather, claim 1 recites “determining a set of attributes for an
item . . . comparing the set of attributes to a set of keys, wherein each key is
generated based on data collected on a custom data form and . . . includes an
attribute with a corresponding matching value; displaying the custom data
form . . . in the case where the corresponding matching value . . . matches
the at least one value of each attribute for the item; and obtaining . . .
information from a customer . . . via the custom data form.”
Lastly, Appellants argue that the cited references do not disclose that
the custom data form obtains government regulatory information from the
customer that is required to comply with disclosure and reporting
requirements for the purchase of chemicals. Br. 8. Appellants argue that
Breen only describes that a user provides information confirming that the
customer has the necessary licenses in connection with a purchase. Br. 8
(citing Breen col. 14, ll. 30-40). We are unpersuaded by Appellants’
arguments because “government regulatory information from a customer
that is required to comply with disclosure and reporting requirements for a
purchase of chemicals” is directed to non-functional descriptive material and
merely describes the class of information which is obtained from the
customer via the custom data form. Accordingly, “government regulatory
information from a customer that is required to comply with disclosure and
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reporting requirements for a purchase of chemicals” in the context of
“information” is not entitled to patentable weight. Appellants also do not
appear to contest the Examiner’s finding that the combination of Nishimura,
Christensen and Breen teaches obtaining information (i.e., regulatory
licensing information) from a customer in connection with a purchase via a
custom data form. See Ans. 5.
For these reasons, we sustain the Examiner’s rejections of claims 1-
20.
DECISION
We AFFIRM the rejection of claims 1-6, 9, 10 and 14-20 under
35 U.S.C. § 103(a) as unpatentable over Nishimura, Christensen and Breen.
We AFFIRM the rejection of claims 7, 8 and 11-13 under
35 U.S.C. § 103(a) as unpatentable over Nishimura, Christensen, Breen and
Leber.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

ELD