Ex Parte Nemer

Board of Patent Appeals and Interferences

Aug 21, 2009

10231640 (B.P.A.I. Aug. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JAMES RUSSELL NEMER 8
___________ 9
10
Appeal 2009-006572 11
Application 10/231,640 12
Technology Center 3600 13
___________ 14
15
Decided: August 21, 2009 16
___________ 17
18
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 19
ANTON W. FETTING, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
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STATEMENT OF THE CASE 1
James Russell Nemer (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1-79, which along with claims 80-103 3
withdrawn from consideration, are the only claims pending in the application 4
on appeal. 5
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 6
(2002). 7
SUMMARY OF DECISION1 8
We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION 9
PURSUANT TO 37 C.F.R.§ 41.50(b). 10
THE INVENTION 11
The Appellant invented a way of communicating retail-item-purchasing 12
data in a computer network environment (Specification 2:¶ 0007). 13
An understanding of the invention can be derived from a reading of 14
exemplary claims 1 and 21, which are reproduced below [bracketed matter 15
and some paragraphing added]. 16
1. A method for providing retail-item-purchasing data in a 17
computer network environment, the method comprising the 18
steps of: 19

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed July 6, 2007) and Reply Brief (“Reply Br.,” filed December 9,
2008), and the Examiner’s Answer (“Ans.,” mailed December 9, 2008).
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[1] receiving an electronic representation of a list of one or 1
more items; 2
[2] referencing a commute path defined by a first location and a 3
second location; 4
[3] determining one or more providers of said one or more 5
items within a distance of said commute path; and 6
[4] communicating purchasing data based on said determination 7
of said one or more providers in response to receiving said 8
electronic representation. 9
21. A method for providing purchasing data in a computer 10
network environment, the method comprising the steps of: 11
[1] receiving a list of one or more items to price; receiving 12
location-information corresponding to a geographic area; 13
[2] determining one or more providers of said one or more 14
items, wherein said one or more providers are within a distance 15
from said geographic area; 16
[3] communicating purchasing information of said one or more 17
items available from said one or more providers; 18
[4] utilizing the purchasing information to generate a purchase 19
request to order said one or more items; and 20
[5] initiating a transaction with said one or more providers of 21
the ordered one or more items included in the purchase request. 22
THE REJECTIONS 23
The Examiner relies upon the following prior art: 24
Kari US 6,154,745 Nov. 28, 2000
Fano US 6,317,718 B1 Nov. 13, 2001
Tomita US 2004/0107142 A1 Jun. 3, 2004
Claims 21-42 stand rejected under 35 U.S.C. § 101 as directed to non-25
statutory subject matter. 26
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Claims 21-42 stand rejected under 35 U.S.C. § 103(a) as unpatentable 1
over Fano and Tomita. 2
Claims 1-20 and 43-79 stand rejected under 35 U.S.C. § 103(a) as 3
unpatentable over Fano and Kari. 4
ARGUMENTS 5
Claims 21-42 rejected under 35 U.S.C. § 101 as directed to non-statutory 6
subject matter. 7
The claims are rejected for failing to recite a method tied to a particular 8
machine or transforming something physical. The Appellant argues that the 9
computer network environment of claim 21, ties the claim to a particular 10
machine and that generating purchase requests transforms digital 11
transmission signals. The Appellant further argues that the claims 12
depending from claim 21 recite additional machine structures. Reply Br. 6-13
7. 14
Claims 21-42 rejected under 35 U.S.C. § 103(a) as unpatentable over Fano 15
and Tomita. 16
The Appellant argues that neither reference describes limitations [2] and 17
[4] of claim 21; referencing location information from end user input of 18
claim 26 and from a mapping component of claim 29; distance being a 19
parameter received by the user of claim 34; and a commute path having a 20
first, provider, and destination location of claim 39. App. Br. 12;18. The 21
Appellant further argues that the references teach away from each other and 22
the invention. App. Br. 18-19. 23
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Claims 1-20 and 43-79 rejected under 35 U.S.C. § 103(a) as unpatentable 1
over Fano and Kari. 2
The Appellant argues that neither reference describes limitations [3] and 3
[4] of claim 1; distance being a parameter received by the user of claim 11; 4
the two steps of receiving and transmitting a purchase request of claim 15; 5
and presenting a final commute path that includes the providers of claim 16. 6
App. Br. 20-25. The Appellant also argues claims 43-79 drawn to computer 7
readable instructions and computer systems that generally perform the 8
methods of claims 1-42. App. Br. 25-35. The Appellant further argues that 9
the references teach away from each other and the invention. App. Br. 35-10
36. 11
ISSUES 12
The issue of whether the Appellant has sustained their burden of 13
showing that the Examiner erred in rejecting claims 21-42 under 35 U.S.C. § 14
101 as directed to non-statutory subject matter turns on whether the claims 15
satisfy the machine or transformation test under Bilski. See In re Bilski, 545 16
F.3d 943 (Fed. Cir. 2008) (en banc), cert. granted, 129 S.Ct. 2735, U.S. Jun. 17
1, 2009) (No. 08-964). 18
The issue of whether the Appellant has sustained their burden of 19
showing that the Examiner erred in rejecting claims 21-42 under 35 U.S.C. § 20
103(a) as unpatentable over Fano and Tomita turns on whether the art 21
describes the contended limitations. 22
The issue of whether the Appellant has sustained their burden of 23
showing that the Examiner erred in rejecting claims 1-20 and 43-79 under 35 24
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U.S.C. § 103(a) as unpatentable over Fano and Kari turns on whether the art 1
describes the contended limitations. 2
FACTS PERTINENT TO THE ISSUES 3
The following enumerated Findings of Fact (FF) are believed to be 4
supported by a preponderance of the evidence. 5
Facts Related to the Prior Art 6
Fano 7
01. Fano is directed to an agent based system and information 8
gathering agent that exploits the physical location of the user. An 9
agent running on a Personal Digital Assistant (PDA) equipped 10
with a Global Positions System (GPS) receiver, supports location 11
targeted shopping in an outdoor mall. As a shopper strolls through 12
a mall, the system alerts the shopper to merchandise of previously 13
specified categories in the surrounding stores, as well as any 14
cheaper alternatives in the local area. Fano 2:41-52. 15
02. A shopper creates a shopping list of items, by selecting from a 16
pre-existing set of approximately 85 product categories and 17
indicating the shopping venue they intend to visit from a list of 18
malls. Fano 47:41-46. 19
03. Fano’s system suggests the closest store that sells an item so 20
entered. The system responds with the store name and a list of the 21
specific items available and their prices. A map of the mall 22
displays both the precise location of the store and the shopper's 23
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current location. The shopper queries the system to suggest a store 1
at any time based on their current location. Fano 47:48-56. 2
04. To address shoppers without a particular destination, Fano 3
provides a browse mode, in which the system suggests items of 4
interest (it matches the categories entered in the goals screen) for 5
sale in the stores currently closest to the shopper. If an item 6
displayed is selected by the shopper while browsing, the system 7
alerts the shopper to the local retailer offering the same product 8
for the lowest price, or announces the best local price. This search 9
is restricted to the local mall, as that is the assumed radius the 10
shopper is willing to travel. Fano 47:58 – 48:26. 11
05. Fano’s Fig. 27 depicts an image of a portion of a shopping mall 12
including seven stores on one side of a mall pedestrian way and 13
another store on the other side. The one store on the one side is 14
indicated as being the selected store in the right half of the image. 15
The image also includes a marker for the present location of a user 16
and a destination. 17
Kari 18
06. Kari is directed to giving location data in an information query 19
using information retrieval based on the travel route. Kari 2:6-9. 20
21
07. Kari’s system optimizes information retrieval, based on the 22
travel route. So the user is given the location of a service point, 23
which will incur as little deviation as possible from the planned 24
travel route. This yields the service point that suits best the travel 25
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route contrasted with the closest service point. Also the closest 1
service point can be given. Kari 2:20-27. 2
08. For route queries, Kari uses the user identification, the 3
geographical position of the search terminal, and the travel route 4
selected by the user or noticed by the search terminal. Kari 6: 5
09. The user manually enters the location, the travel route and also 6
identifies the services to be searched for. Kari 7:11-14. 7
Alternately, the travel route is given by using coordinate data 8
given by the GPS system, and the coordinates of the intended 9
travel route are calculated at certain points, at least at the 10
destination. The travel route can also be given as the points of the 11
compass, in which direction the user is moving. Kari 11:9-16. 12
Tomita 13
10. Tomita is directed to, providing a sales assistance system that is 14
based on consumer intent to buy goods after checking them 15
through their neighborhood shops, but not buying them directly on 16
the computer network. Tomita ¶ 0007. 17
11. Tomita describes a customer selecting a store based on the 18
customer’s address and transmitting a purchase request for an item 19
to that store. Tomita ¶’s 0008 and 0072. 20
Facts Related To The Level Of Skill In The Art 21
12. Neither the Examiner nor the Appellant has addressed the level 22
of ordinary skill in the pertinent arts of systems analysis and 23
programming, navigational systems, online shopping systems, or 24
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user interface design. We will therefore consider the cited prior art 1
as representative of the level of ordinary skill in the art. See 2
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 3
(“[T]he absence of specific findings on the level of skill in the art 4
does not give rise to reversible error ‘where the prior art itself 5
reflects an appropriate level and a need for testimony is not 6
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 7
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 8
Facts Related To Secondary Considerations 9
13. There is no evidence on record of secondary considerations of 10
non-obviousness for our consideration. 11
PRINCIPLES OF LAW 12
Statutory Subject Matter 13
The law in the area of patent-eligible subject matter for process claims 14
has recently been clarified by the Federal Circuit in, In re Bilski, 545 F.3d 15
943 (Fed. Cir. 2008) (en banc), cert. granted, 129 S.Ct. 2735, U.S. Jun. 1, 16
2009) (No. 08-964). 17
The en banc court in Bilski held that “the machine-or-transformation test, 18
properly applied, is the governing test for determining patent eligibility of a 19
process under § 101.” Id. at 956. The court in Bilski further held that “the 20
‘useful, concrete and tangible result’ inquiry is inadequate [to determine 21
whether a claim is patent-eligible under § 101.]” Id. at 959-60. 22
The court explained the machine-or-transformation test as follows: “A 23
claimed process is surely patent-eligible under § 101 if: (1) it is tied to a 24
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particular machine or apparatus, or (2) it transforms a particular article into a 1
different state or thing.” Id. at 954 (citations omitted). The court explained 2
that “the use of a specific machine or transformation of an article must 3
impose meaningful limits on the claim’s scope to impart patent-eligibility” 4
and “the involvement of the machine or transformation in the claimed 5
process must not merely be insignificant extra-solution activity.” Id. at 961-6
62 (citations omitted). As to the transformation branch of the inquiry, the 7
court explained that transformation of a particular article into a different 8
state or thing “must be central to the purpose of the claimed process.” Id. at 9
962. 10
Obviousness 11
A claimed invention is unpatentable if the differences between it and 12
the prior art are “such that the subject matter as a whole would have been 13
obvious at the time the invention was made to a person having ordinary skill 14
in the art.” 35 U.S.C. § 103(a) (2000). See KSR Int’l Co. v. Teleflex Inc., 15
550 U.S. 398, 406 (2007). See also Graham v. John Deere Co., 383 U.S. 1, 16
13-14 (1966). 17
In Graham, the Court held that that the obviousness analysis is 18
bottomed on several basic factual inquiries: “[(1)] the scope and content of 19
the prior art are to be determined; [(2)] differences between the prior art and 20
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 21
in the pertinent art resolved.” 383 U.S. at 17. See also KSR, 550 U.S. at 22
406. “The combination of familiar elements according to known methods is 23
likely to be obvious when it does no more than yield predictable results.” Id. 24
at 416. 25
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ANALYSIS 1
Claims 21-42 rejected under 35 U.S.C. § 101 as directed to non-statutory 2
subject matter. 3
Method claim 21 fails to meet the requirements of the machine-or-4
transformation test for patent-eligible subject matter, because the claimed 5
methods are neither tied to a particular machine or apparatus, nor do the 6
methods transform a particular article into a different state or thing. 7
Method claim 21 recites a series of process steps for “providing 8
purchasing data.” The claim does not invoke any particular machine or 9
apparatus in the method steps and thus is not tied to any particular machine 10
or apparatus. The preamble does state that the purchasing data is “in a 11
computer network environment” but this is a mere field of use limitation, 12
given no patentable weight. 13
“[A] claim preamble has the import that the claim as a whole suggests 14
for it.” Bell Communications Research, Inc. v. Vitalink Communications 15
Corp., 55 F.3d 615, 620 (Fed.Cir. 1995). If the claim preamble, when read 16
in the context of the entire claim, recites limitations of the claim, or, if the 17
claim preamble is “necessary to give life, meaning, and vitality” to the 18
claim, then the claim preamble should be construed as if in the balance of 19
the claim. Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). 20
If, however, the body of the claim fully and intrinsically sets 21
forth the complete invention, including all of its limitations, and 22
the preamble offers no distinct definition of any of the claimed 23
invention's limitations, but rather merely states, for example, 24
the purpose or intended use of the invention, then the preamble 25
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is of no significance to claim construction because it cannot be 1
said to constitute or explain a claim limitation. 2
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 3
1999). 4
The steps in claim 21 are generally broad in which, a list is received, a 5
provider is determined, information about items for sale is communicated, 6
and a purchase request is made and transacted. In other words, claim 21 7
steps recite the ubiquitous trip to a store. There is nothing in these steps that 8
depends on or further defines a computer network. In fact, claim 21 recites 9
nothing regarding the manner in which the steps are to occur in a computer 10
network, or even that they occur is such a network, as the preamble states 11
the steps occur in an environment, not a network. Manual steps resulting in 12
a purchase in a store near some computer network would be sufficient to 13
read on the preamble. The recitation of a computer network environment 14
does no more than indicate the purpose of the claim is to provide purchasing 15
data to those in such an environment. The claim does not recite any 16
particular machine or apparatus for conducting these steps. The claim does 17
not limit the method to implementation using any particular machine or 18
apparatus. 19
Claims 22-23 further recite receiving the list over a network from a 20
communication device and the list being a digital transmission. Such 21
reception is incidental to the locating and purchasing steps and is 22
“insignificant extra-solution activity.” Bilski, 545 F.3d at 961-62. Claim 24, 23
on the other hand, recites specific machines that such transmission occurs on 24
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and accordingly, ties the steps to a particular machine. The remaining 1
claims depend from claim 24 and incorporate this limitation. 2
The steps of method claim 21, also fail the second prong of the machine-3
or-transformation test because the method does not transform any article to a 4
different state or thing. The method steps are simply information gathering 5
and making a purchase. The claims are similar to the claims that were 6
before the court in Bilski. In Bilski , the pending claims called for 7
performing method steps that involve transformations or manipulations of 8
relationships. 9
This type of manipulation of relationships between buyer and seller is 10
the very type of abstraction that the court in Bilski found cannot meet the 11
second prong of the machine-or-transformation test. Bilski , 545 F.3d at 963 12
(“Purported transformations or manipulations simply of public or private 13
legal obligations or relationships, business risks, or other such abstractions 14
cannot meet the test because they are not physical objects or substances, and 15
they are not representative of physical objects or substances.”). Claims 22 16
and 23 also provide no transformation of an article to a different state or 17
thing. 18
The methods in claims 21-23, as claimed, do not involve the 19
transformation of any physical object or substance, and given that the claims 20
also are not tied to a particular machine or apparatus, the claims entirely fail 21
the machine-or-transformation test and are not drawn to patent-eligible 22
subject matter under 35 U.S.C. § 101. The methods in claims 24-42 are tied 23
to a particular machine and are drawn to patent-eligible subject matter under 24
35 U.S.C. § 101. 25
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Claims 21-42 rejected under 35 U.S.C. § 103(a) as unpatentable over Fano 1
and Tomita. 2
Claims 21, 22-25, 27, 28, 30-33, 35-38, and 40-42 3
Claim 21 is the sole independent claim in this rejection. The issues are 4
whether art fails to describe limitations [2] and [4]. The Examiner found 5
these descriptions at Fano 47. Ans. 6-7. The Appellant contends that Fano 6
does not determine the providers within a distance, but only those within a 7
given mall. App. Br. 13. As pointed out by the Examiner, this argument is 8
not commensurate with the scope of the claim. Ans. 14. 9
We agree with the Appellant that Fano determines which shops are 10
within a mall. FF 01. A mall is a physical location with fixed dimensions. 11
Thus, all shops found by Fano within a mall are within the distance 12
circumscribed by the mall dimensions. The claim does not specify how the 13
distance is determined, or even that a specific distance is used. It is 14
sufficient that there be a distance that the shops so determined are within. 15
The Appellant also contends that neither reference describes limitation 16
[4]. In particular, the Appellant contends that while Tomita does describe 17
generating a purchase request, it does not do so with a store determined to be 18
within a distance of a geographic area. App. Br. 14. As the Examiner 19
pointed out, limitation [4] was found to be described by the combination of 20
Fano and Tomita. In particular, Tomita describes generating a purchase 21
request (FF 11) and Fano describes finding the store within a distance of a 22
geographic area circumscribed by a mall (FF 01). Ans. 14-15. 23
The Appellant also argues that the references teach away from one 24
another because Fano limits its system to a shopping mall, while Tomita 25
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allows finding stores within the same area code. App. Br. 19. The 1
Examiner responded that Fano’s shopping mall limitation is for an 2
exemplary embodiment only. We agree and further find that there is nothing 3
about Tomita’s use of a purchasing transaction that depends on the 4
geographic scope. Certainly one of ordinary skill would have found 5
Tomita’s purchase transaction desirable with any system that suggests items 6
for purchase as in Fano. The geographic reach of the exemplary 7
embodiments is simply not pertinent to this desirability nor does geographic 8
reach negate the ability to create such transactions. 9
Claims 22-25, 27, 28, 30-33, 35-38, and 40-42 are not separately argued 10
and accordingly fall with claim 21. 11
Claim 26 12
Claim 26 requires referencing location-information generated from user 13
input. The Examiner agreed with the Appellant that Fano gets location 14
information from a GPS device but further found that such a device is 15
equivalent to an end user. Ans. 15. 16
We agree with the Examiner that the end user in claim 26 is undefined 17
and therefore may be met by a broad range of data entry modalities. 18
Certainly, the GPS data is entered from a satellite or other stationary device 19
operated by someone. The claim does not specify how directly the data is 20
entered. Thus any chain of data from some end user to the device 21
determining the shops may meet the claim limitation. 22
Further, the claim does not specify the nature of the location 23
information. Fano requires that the user of the device enter a mall 24
designation. FF 02. The mall circumscribes the set of shops to be selected 25
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and the mall designation is itself location information entered by an end 1
user. 2
Claim 29 3
Claim 29 requires referencing geographic information received from a 4
mapping component. The Examiner found that Fano’s GPS device was such 5
a mapping component because it determines a mapped location. Ans. 16. 6
We agree with the Examiner that a GPS device determines mapping 7
coordinates from signals from some transmitter at a fixed location. The 8
claim does not specify the nature of the claimed mapping component, so any 9
component that has some association with mapping would read on such a 10
limitation. We find that a GPS device has a direct association with mapping 11
by determining mapping coordinates. The Appellant contends the mapping 12
component provides geographic information that is more than the user’s 13
current location. App. Br. 16. We find that nothing in the claim requires 14
such geographic information to be more than a user location. 15
Claim 34 16
Claim 34 requires distance be a parameter received by said end-user. 17
The Examiner found that Fano’s GPS device received location coordinates 18
that defined the distance within which a provider could be determined. Ans. 19
16. 20
Here we must agree with the Appellant that such coordinates are not a 21
distance parameter for the distance defined in parent claim 21. 22
23
24
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Claim 39 1
Claim 39 requires presenting a commute path, wherein said commute 2
path includes a first location, said provider(s)'s location, and a destination 3
location. The Examiner found that Fano’s Fig. 27 presented such a path. 4
Ans. 16. 5
We agree with the Examiner. Fano’s Fig. 7 presents a pedestrian 6
walkway image with eight stores along that walkway, which is an 7
embodiment of a commute path. The image has a marker for a destination 8
location, and indicates the locations of eight stores. One of those eight 9
stores is indicated as being the selected store, which is an embodiment of the 10
claimed provider location. Any of the remaining stores is an embodiment of 11
the third unspecified claimed location. 12
Claims 1-20 and 43-79 rejected under 35 U.S.C. § 103(a) as unpatentable 13
over Fano and Kari. 14
Claims 1-10, 12-14, and 17-20 15
Claim 1 is the sole independent claim in this set of claims. The issues 16
are whether art fails to describe limitation [3] and [4]. The Examiner found 17
these descriptions at Fano 47, Kari 2 & 6. Ans. 6-7. (relying on the Fano 18
findings to comparable limitations in claim 21) and 13. The Appellant 19
admits that Kari finds services that require the smallest deviation from a 20
path. But the Appellant contends this is not a service within a distance of 21
the path. App. Br. 20:Bottom ¶. 22
We disagree with the Appellant. As with claim 21 discussed supra, 23
limitation [3] requires finding a provider within a distance, but the distance 24
is unspecified. Clearly any provider will be within some distance. Kari’s 25
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provider is within the minimum distance for any provider from the path. FF 1
07. Such a minimum distance is a species of a distance. 2
The Appellant also argued that the art fails to describe determining a 3
provider in limitation [3]. App. Br. 21:Third ¶. The Examiner found that 4
Fano described this in comparable claim 21 limitation [2]. Ans. 7; also see 5
FF 01 and 03. The difference between the claims is in what the distance is 6
relative to, a geographic area in claim 21 and a path in claim 1. The 7
Examiner applied Kari for the path distance of claim 1. 8
From this the Appellant argued that the art failed to describe the 9
communication in limitation [4]. App. Br. id. Again, the Examiner found 10
Fano described a communication in comparable claim 21 limitation [3]. 11
Ans. 7; also see FF 01, 03, and 04. Further Kari returns the name of the 12
provider within the minimum distance from the path. FF 07. Such a name is 13
necessary to make a purchase from that provider and is accordingly 14
purchasing data as required in limitation [4]. Limitation [4] does not restrict 15
the manner in which purchasing relates to the data. 16
The Appellant also argues that the references teach away from one 17
another because Fano limits its system to a shopping mall, while Kari allows 18
finding stores beyond a shopping mall. App. Br. 35-36. The Examiner 19
responded that Fano’s shopping mall limitation is for an exemplary 20
embodiment only. We agree and further find that there is nothing about 21
Kari’s use of a path that is diminished by finding such a path within a 22
shopping mall. 23
Claims 2-10, 12-14, and 17-20 are not separately argued and accordingly 24
fall with claim 1. 25
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Claim 11 1
Claim 11 requires distance be a parameter received by said end-user. 2
The Examiner found that Fano’s GPS device received location coordinates 3
that defined the distance within which a provider could be determined. Ans. 4
16. 5
Here we must agree with the Appellant that such coordinates are not a 6
distance parameter for the distance defined in parent claim 1. 7
Claim 15 8
Claim 15 requires receiving and transmitting a purchase request 9
comparable to limitations [4] and [5] of claim 21. The Examiner responded 10
that these were found in Fano. Ans. 18. Here we must agree with the 11
Appellant. The Examiner relied upon Tomita to describe these limitations in 12
claim 21. The Examiner has not applied Tomita in the rejection of claim 15. 13
Claim 16 14
Claim 16 requires presenting a final commute path that includes the 15
provider. The Examiner responded that these were found in Fano. Ans. 18. 16
The limitation in claim 16 is similar to the limitation in claim 39, discussed 17
supra. As with claim 39, Fano’s Fig. 27 presents such a path. The claim 18
does not require that the boundary of the suggested path be visible, but only 19
that the path be presented. The pedestrian walkway bounded by the stores 20
including the provider store in Fano Fig. 27 meets this limitation. 21
Claims 43-79 22
The Examiner found that these claims paralleled claims 1-42 and 23
rejected claims 43-79 based on the findings as to claims 1-42. Ans. 18. The 24
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Appellant argued that the Examiner failed to make specific findings as to 1
these claims 43-79. App. Br. 25-26. The Appellant specifically argued 2
claim 43 and 62 product information; claim 53 and 71 provision of a 3
distance parameter; claim 57 and 75 purchase request; and claim 58 and 76 4
presenting a final commute path. 5
We find that claims 43 and 62 have limitations similar to claim 1, except 6
that product rather than purchasing data is communicated and so have 7
limitations within the scope of claim 13, which the Appellant did not argue. 8
Further, we find that Fano does communicate product information. FF 04. 9
We further find that claims 58 and 76 require limitations similar to claim 16, 10
which we found was described by the combination of Fano and Kari supra. 11
On then other hand, claims 53 and 71 are comparable to claim 11 and 12
claims 57 and 75 are comparable to claim 15, which we found were not 13
described by Fano and Kari. Thus, we cannot sustain the rejections of 14
claims 53, 57, 71, and 75, but we do sustain the rejections of the remaining 15
claims within claims 43-79 falling with claim 43. 16
CONCLUSIONS OF LAW 17
The Appellant has not sustained its burden of showing that the Examiner 18
erred in rejecting claims 21-23 under 35 U.S.C. § 101 as directed to non-19
statutory subject matter. 20
The Appellant has sustained its burden of showing that the Examiner 21
erred in rejecting claims 24-42 under 35 U.S.C. § 101 as directed to non-22
statutory subject matter. 23
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The Appellant has not sustained its burden of showing that the Examiner 1
erred in rejecting claims 21-33 and 35-42 under 35 U.S.C. § 103(a) as 2
unpatentable over Fano and Tomita. 3
The Appellant has sustained its burden of showing that the Examiner 4
erred in rejecting claim 34 under 35 U.S.C. § 103(a) as unpatentable over 5
Fano and Tomita. 6
The Appellant has not sustained its burden of showing that the Examiner 7
erred in rejecting claims 1-10, 12-14, 16-20, 43-52, 54-56, 58-70, 72-74, and 8
76-79 under 35 U.S.C. § 103(a) as unpatentable over Fano and Kari. 9
The Appellant has sustained its burden of showing that the Examiner 10
erred in rejecting claims 11, 15, 53, 57, 71, and 75 under 35 U.S.C. § 103(a) 11
as unpatentable over Fano and Kari. 12
NEW GROUND OF REJECTION 13
The following new ground of rejection is entered pursuant to 37 C.F.R. 14
§ 41.50(b). Claims 15, 57, and 75 are rejected under 35 U.S.C. § 103(a) 15
as unpatentable over Fano, Kari, and Tomita. 16
As discussed, supra, the limitations of the parent claims for each of these 17
is described by Fano and Kari, but the limitation of a purchase request being 18
transmitted is described by Tomita rather than Fano. 19
It would have been obvious to a person of ordinary skill in the art to 20
have applied Tomita’s purchase request to the above combination of Fano 21
and Kari for the same reason it was obvious to apply Tomita to Fano alone 22
in claim 21, viz. one of ordinary skill knew it was desirable to actually make 23
a purchase transaction as in Tomita in a system that suggests items for 24
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22
purchase as in the combination of Fano and Kari whose combination was 1
obvious for the reasons the Examiner found. 2
DECISION 3
To summarize, our decision is as follows. 4
• The rejection of claims 21-23 under 35 U.S.C. § 101 as directed to 5
non-statutory subject matter is sustained. 6
• The rejection of claims 24-42 under 35 U.S.C. § 101 as directed to 7
non-statutory subject matter is not sustained. 8
• The rejection of claims 21-33 and 35-42 under 35 U.S.C. § 103(a) as 9
unpatentable over Fano and Tomita is sustained. 10
• The rejection of claim 34 under 35 U.S.C. § 103(a) as unpatentable 11
over Fano and Tomita is not sustained. 12
• The rejection of claims 1-10, 12-14, 16-20, 43-52, 54-56, 58-70, 72-13
74, and 76-79 under 35 U.S.C. § 103(a) as unpatentable over Fano and 14
Kari is sustained. 15
• The rejection of claims 11, 15, 53, 57, 71, and 75 under 35 U.S.C. § 16
103(a) as unpatentable over Fano and Kari is not sustained. 17
• The following new ground of rejection is entered pursuant to 37 18
C.F.R. § 41.50(b). 19
o Claims 15, 57, and 75 are rejected under 35 U.S.C. § 103(a) as 20
unpatentable over Fano, Kari, and Tomita. 21
22
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Our decision is not a final agency action. 1
In addition to affirming the Examiner's rejection(s) of one or more 2
claims, this decision contains new grounds of rejection pursuant to 37 CFR § 3
41.50(b). 37 CFR § 41.50(b) provides “[a] new ground of rejection pursuant 4
to this paragraph shall not be considered final for judicial review.” This 5
Decision contains a new rejection within the meaning of 37 C.F.R. § 6
41.50(b) (2007). 7
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO 8
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 9
the following two options with respect to the new rejection: 10
(1) Reopen prosecution. Submit an appropriate amendment of 11
the claims so rejected or new evidence relating to the claims 12
so rejected, or both, and have the matter reconsidered by the 13
Examiner, in which event the proceeding will be remanded 14
to the Examiner. . . . 15
(2) Request rehearing. Request that the proceeding be reheard 16
under § 41.52 by the Board upon the same record. . . . 17
Should the Appellants elect to prosecute further before the examiner, 18
pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek 19
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed 20
rejections, the effective date of the affirmance is deferred until conclusion of 21
the prosecution before the examiner unless, as a mere incident to the limited 22
prosecution, the affirmed rejection is overcome. 23
If the Appellant elect prosecution before the Examiner and this does not 24
result in allowance of the application, abandonment or a second appeal, this 25
case should be returned to the Board of Patent Appeals and Interferences for 26
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final action on the affirmed rejection, including any timely request for 1
rehearing thereof. 2
No time period for taking any subsequent action in connection with this 3
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 4
1.136(a)(1)(iv) (2007). 5
6
AFFIRMED-IN-PART 7
41.50(b) 8
9
10
mev 11
12
SPRINT COMMUNICATIONS COMPANY L.P. 13
6391 SPRINT PARKWAY 14
KSOPHT0101-Z2100 15
OVERLAND PARK KS 66251-2100 16