Ex Parte Gusler et al

Board of Patent Appeals and Interferences

Jul 27, 2007

09864113 (B.P.A.I. Jul. 27, 2007)

The opinion in support of the decision being entered today is not binding precedent
of the Board.
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UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CARL PHILLIP GUSLER and RICK ALLEN HAMILTON, II
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Appeal 2007-1867
Application 09/864,113
Technology Center 3600
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Decided: July 27, 2007
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Before HUBERT C. LORIN, STUART S. LEVY, and ANTON W. FETTING,
Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF CASE
Carl Phillip Gusler and Rick Allen Hamilton, II (Appellants) seek review under
35 U.S.C. § 134 of a Non-Final rejection of claims 1-27, the only claims pending
in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6.

We AFFIRM.

Appeal 2007-1867
Application 09/864,113

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The Appellants invented a way to automatically alert online shoppers to other
concurrently online shoppers, find other concurrently online shoppers, and let them
communicate together (Specification 3: 5-8).
An understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below [bracketed matter and some paragraphing
added].
1. A method for providing enhanced online shopping experiences to
online shoppers for automatic association of two or more online
shoppers, said method comprising the steps of:
[1] searching a list of concurrently online shoppers according to a set
of search criteria,
[a] said shoppers each contemporarily being a user of a
common virtual shopping resource,
[b] said shoppers being otherwise disassociated with each
other;
[2] notifying a first online shopper that at least one other concurrently
online shopper meets said search criteria, and
[3] automatically associating said first online shopper with said one or
more concurrently online shoppers meeting said criteria. (emphasis
not in original.)

This appeal arises from the Examiner’s Non-Final Rejection, mailed June 21,
2006. The Appellants filed an Appeal Brief in support of the appeal on September
15, 2006, and an Examiner’s Answer to the Appeal Brief was mailed on November
20, 2006. A Reply Brief was filed on January 18, 2007.

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Application 09/864,113

PRIOR ART 1
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The Examiner relies upon the following prior art:
Tang US 6,349,327 B1 Feb. 19, 2002
Kenney US 6,381,583 B1 Apr. 30, 2002
Surfing, Daily Herald, Arlington Heights, Ill., p. 1, Dec. 6, 1999 (Surfing)
Odigo.com, Web Site Pages, 16 pages (numbered 4-19), May 10, 2000 (Odigo
Web Pages)

REJECTIONS
Claims 1, 3, 4, 8-10, 12, 13, 17-19, 21, 22, 26, and 27 stand rejected under 35
U.S.C. § 102(b) as anticipated by Odigo.com as evidenced by Surfing and
Odigo.com web pages1.
Claims 2, 5, 6, 11, 14, 15, 20, 23, and 24 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Odigo.com and Tang.
Claims 7, 16, and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Odigo and Kenney.

1 The Examiner presents two essentially duplicate rejections, both for the same
claims, over the same art, i.e., Odigo.com (Answer 7-8), and we consolidate them
for purposes of this appeal.
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ISSUES 1
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Thus, the issues pertinent to this appeal are
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 1, 3, 4, 8-10, 12, 13, 17-19, 21, 22, 26,
and 27 under 35 U.S.C. § 102(b) as anticipated by Odigo.com as evidenced
by Surfing and Odigo.com web pages.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 2, 5, 6, 11, 14, 15, 20, 23, and 24 under
35 U.S.C. § 103(a) as unpatentable over Odigo.com and Tang.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 7, 16, and 25 under 35 U.S.C. § 103(a) as
unpatentable over Odigo and Kenney.
The pertinent issue turns on whether Odigo.com shows disassociated shoppers
as in element (1b) of claim 1, supra.

FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Claim Construction
01. The Specification does not define the word “disassociated.”
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02. Disassociate means to remove from association2. 1
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03. To associate, in the context of shoppers, means to spend time socially;
keep company2, 3.
04. Thus, the ordinary and usual meaning of the claim limitation
“shoppers being otherwise disassociated with each other” is that of
shoppers not spending time socially or keeping company.
Surfing
05. Odigo finds web sites other users are visiting, helps the user locate
other users the user wants to chat with at that site and then enables the
user to chat with the other users. (Surfing 2:Address: www.odigo.com.)
Odigo.com Web Pages
06. With its people-finding "radar", Odigo shows who's surfing on the
same site as the user - or on any other website - at a moment. All the
users have to do is click on any person icon, open a message window,
and start chatting. (Odigo Web Pages 8: Second ¶ under The best way to
meet people while surfing.)
07. Odigo members of all ages and with specific interests can be found in
any geographical location a user wants. Use Odigo's search engine to
find exactly the person you want to meet; put together a group with a
common interest. (Odigo Web Pages 9: First ¶ under Find people using
Odigo’s search engine.)

2 American Heritage Dictionary of the English Language (4th ed. 2000).
3 The Appellants supply a definition from Merriam Webster which is essentially
the same (Br. 7, second definition).
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08. If a user wants to know a little something about a person before
chatting, open the other user's Details Card with a right-click on any little
figure, and select Show Details from the popup menu. The Details Card
opens to reveal the user's profile ... everything one wants to know, and then
some! If the first user likes what it sees, that user clicks on the Talk button
and says Hi in the message window. (Odigo Web Pages 16: ¶ 1-3)
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PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater , 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-551 (CCPA 1969);
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827,
1834 (Fed. Cir. 2004).
Although a patent applicant is entitled to be his or her own lexicographer of
patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580, 146 USPQ 69, 70 (CCPA 1965). The applicant must do so by
placing such definitions in the Specification with sufficient clarity to provide a
person of ordinary skill in the art with clear and precise notice of the meaning that
is to be construed. See also In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ 2d 1671,
1674 (Fed. Cir. 1994) (although an inventor is free to define the specific terms
used to describe the invention, this must be done with reasonable clarity,
deliberateness, and precision; where an inventor chooses to give terms uncommon
meanings, the inventor must set out any uncommon definition in some manner
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within the patent disclosure so as to give one of ordinary skill in the art notice of
the change).
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Anticipation
"A claim is anticipated only if each and every element as set forth in the claim
is found, either expressly or inherently described, in a single prior art reference."
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d
1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or
compositions, either generically or as alternatives, the claim is deemed anticipated
if any of the structures or compositions within the scope of the claim is known in
the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed.
Cir. 2001). "The identical invention must be shown in as complete detail as is
contained in the . . . claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236,
9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as
required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
terminology is not required. In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566,
1567 (Fed. Cir. 1990).
Enablement of Prior Art
Prior art must be enabling in rejections under 35 U.S.C. §§ 102 and 103, but
the standard of enablement is not that of 35 U.S.C. § 112.
A patent claim “cannot be anticipated by a prior art reference if
the allegedly anticipatory disclosures cited as prior art are not
enabled.” Elan Pharm., Inc. v. Mayo Found. for Med. Educ. &
Research, 346 F.3d 1051, 1054 (Fed. Cir. 2003). The standard for
what constitutes proper enablement of a prior art reference for
purposes of anticipation under section 102, however, differs from the
enablement standard under section 112. In In re Hafner, 410 F.2d
1403 (CCPA 1969), the court stated that “a disclosure lacking a
teaching of how to use a fully disclosed compound for a specific,
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substantial utility or of how to use for such purpose a compound
produced by a fully disclosed process is, under the present state of the
law, entirely adequate to anticipate a claim to either the product or the
process and, at the same time, entirely inadequate to support the
allowance of such a claim.” Id. at 1405; see Schoenwald, 964 F.2d at
1124; In re Samour, 571 F.2d 559, 563-64 (CCPA 1978). The reason
is that section 112 “provides that the specification must enable one
skilled in the art to ‘use’ the invention whereas [section] 102 makes
no such requirement as to an anticipatory disclosure.” (Citations
omitted).
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Rasmusson v. Smithkline Beecham Corp., 413 F.3d 1318, 1325, 75 USPQ2d 1297,
1302 (Fed. Cir. 2000).
Obviousness
A claimed invention is unpatentable if the differences between it and the
prior art are “such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art.” 35
U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d
1385 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 465
(1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17, 148 USPQ at 467. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734
82 USPQ2d at 1391. “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, at 1739, 82 USPQ2d at 1396.
“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or in a
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different one. If a person of ordinary skill in the art can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 1740, 82 USPQ2d at 1396.
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“For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 1742, 82 USPQ2d at
1397.

ANALYSIS
Claims 1, 3, 4, 8-10, 12, 13, 17-19, 21, 22, 26, and 27 rejected under 35 U.S.C. §
102(b) as anticipated by Odigo.com as evidenced by Surfing and Odigo.com web
pages.
The Appellants argue these claims as a group.
Accordingly, we select claim 1 as representative of the group. 37 C.F.R.
§ 41.37(c(1)(vii) (2006).
The Examiner found that
Odigo teaches a method and system for providing enhanced
online shopping experiences to online shoppers for automatic
association of two or more online shoppers, said method
comprising the steps of: searching a list of concurrently online
shoppers according to a set of search criteria, said shoppers
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each contemporarily being a user of a common virtual shopping
resource, said shoppers being otherwise disassociated with each
other (see at least pages 1 - 8 and 11 -13); notifying a first
online shopper that at least one other concurrently online
shopper meets said search criteria; a associating said first online
shopper with said one or more concurrently online shoppers
meeting said criteria (see at least pages 1 - 2 and 7 - 9).
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(Answer 7: Third full ¶.)
The Appellants contend that
the Examiner has erred in making these rejections in the
following ways:
(1) by improperly interpreting references for the basis of the
rejection leading to rejections under 35 U.S.C. §102(b) and
§103 which rely upon art that does not teach all of Appellants'
claimed elements, steps, and limitations;
(2) by basing rejections under 35 U.S.C. § 102(b) and § 103 on
art which is not enabling to those ordinarily skilled in the art;
and
(3) by improperly combining references in the basis for a 35
U.S.C. § 102(b).
(Answer 4:Bottom of page.)
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Appellants’ Argument (1) that the art omits all the claimed elements 1
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The Appellants summarize this argument as that “[t]he question then turns on
to whether or not Odigo users are ‘previously disassociated’ with each other, as we
have claimed.” (Br. 8:¶2.)
The Appellants contend that Odigo users are not disassociated with each other
because
The other pages from the Odigo archive are clearly disclosing a
"community" of users formed by installing and joining or using
the Odigo product. These users have profiles, and even pictures,
previously associated with their Odigo member ID numbers. As
such, all users of Odigo are "previously associated" (not
previously disassociated) with each other, before they visit a
common web site, even if they have not actually communicated
with each other yet.
(Br. 8: Last ¶.)
Thus, whether the users in Odigo are disassociated with each other depends on
whether the mere fact that those users are registered with Odigo renders them
associated with each other.
Claims are construed in their broadest reasonable interpretation during patent
prosecution. Clearly, the environment of the invention is a shopping environment,
an inherently social environment. Thus, the ordinary and usual meaning of the
claim limitation “shoppers being otherwise disassociated with each other” is that of
shoppers not spending time socially or keeping company (FF 04).
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Further, the mere fact that a user chooses to associate itself with Odigo does
not automatically associate that user with all the other users of Odigo, except in the
same sense that all people are associated with each other by being members of a
common group, homo sapiens. Clearly the claim cannot support a construction in
which any logical, rather than social, connection forms the basis of association.
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Odigo introduces users who are shoppers who have not previously socialized
or interacted with each other (FF 05-0). Thus, these users are shoppers being
otherwise disassociated with each other. Therefore we find this Appellants’
argument to be unpersuasive.

Appellants’ Argument (2) that the art is not enabling
The Appellants recite that
Art cited under 35 U.S.C. § 102(b) must enable the public to
practice the invention. If the cited art is an issued U.S. patent,
enablement is presumed due to presumption of validity of
patents. However, if the cited art is non-patent literature, as
Surfing and Archive are, enablement is not presumed.
Consequently, if a non-patent literature reference is not
enabling, then [the rejection under § 102(b) is improper.]
(Br. 11, First full ¶.) The go on to state that “[e]nablement is met only if the
public is put into possession of both how to use and how to make the invention, not
just install it and use it.” (Br. 11: Third full ¶.)
The Appellants are conflating the enablement requirements of 35 U.S.C. §112,
first paragraph with the requirements for the public be in possession of prior art
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(See Rasmusson, supra). Insofar as enabling one of ordinary skill to practice the
steps in claim 1, this would have been accomplished by following the directions in
the Odigo web site pages. Therefore, we find this Appellants’ argument to be
unpersuasive.
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Appellants’ Argument (3) that the Examiner improperly combined references
in the basis for a 35 U.S.C. § 102(b rejection.
The Appellants contend that
If treated as an individual references under 35 U.S.C. § 102(b),
each must teach all of the claimed elements, steps, and
limitations, which they fail to do as previously discussed. And,
to treat them collectively as a single reference under 35 U.S.C.
§ 102 improperly circumvents the requirements of establishing
a prima facie case of obviousness under 35 U.S.C. § 103, which
fails to afford Appellant the opportunity to address them
individually for their individual teachings, or to rebut any
presumptions of conditions for obviousness.
(Br. 11, Last full ¶.) The Examiner has not rejected the claims over the references.
Instead, the Examiner has rejected the claims over the web site Odigo as prior art.
To provide evidence that the single web site Odigo meets the limitations of the
claims, the Examiner has provided two references, each of which discusses aspects
of that same single Odigo web site as prior art. Thus, the Examiner’s rejection is
not either of the two examples discussed in the above Appellants’ contention, but
another, valid, example of a rejection over novelty. Therefore, we find this
Appellants’ argument to be unpersuasive.
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The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 1, 3, 4, 8-10, 12, 13, 17-19, 21, 22, 26, and 27 under 35
U.S.C. § 102(b) as anticipated by Odigo.com as evidenced by Surfing and
Odigo.com web pages.

Claims 2, 5, 6, 11, 14, 15, 20, 23, and 24 rejected under 35 U.S.C. § 103(a) as
unpatentable over Odigo.com and Tang.
The Appellants have not separately argued these claims and thus they stand or
fall with their base claims. Thus the Appellants have not sustained their burden of
showing that the Examiner erred in rejecting claims 2, 5, 6, 11, 14, 15, 20, 23, and
24 under 35 U.S.C. § 103(a) as unpatentable over Odigo.com and Tang.

Claims 7, 16, and 25 rejected under 35 U.S.C. § 103(a) as unpatentable over
Odigo and Kenney.
The Appellants have not separately argued these claims and thus they stand or
fall with their base claims. Thus the Appellants have not sustained their burden of
showing that the Examiner erred in rejecting claims 7, 16, and 25 under 35 U.S.C.
§ 103(a) as unpatentable over Odigo and Kenney.

CONCLUSIONS OF LAW
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 1, 3, 4, 8-10, 12, 13, 17-19, 21, 22, 26, and 27 under 35
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U.S.C. § 102(b), or claims 2, 5-7, 11, 14-16, 20, and 23-25 under 35 U.S.C.
§ 103(a) as unpatentable over the prior art.
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On this record, the Appellants are not entitled to a patent containing claims 1-
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DECISION
To summarize, our decision is as follows:
• The rejection of claims 1, 3, 4, 8-10, 12, 13, 17-19, 21, 22, 26, and 27 under
35 U.S.C. § 102(b) as anticipated by Odigo.com as evidenced by Surfing
and Odigo.com web pages is sustained.
• The rejection of claims 2, 5, 6, 11, 14, 15, 20, 23, and 24 under 35 U.S.C. §
103(a) as unpatentable over Odigo.com and Tang is sustained.
• The rejection of claims 7, 16, and 25 under 35 U.S.C. § 103(a) as
unpatentable over Odigo and Kenney is sustained.
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).
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jlb
IBM Corporation (RHF)
C/O Robert H. Frantz
P.O. Box 23324
Oklahoma City, OK 73123

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