11782757 (B.P.A.I. Jun. 21, 2012)

Ex Parte Storm

Board of Patent Appeals and InterferencesJun 21, 2012

11782757 (B.P.A.I. Jun. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TIMOTHY C. STORM ____________ Appeal 2010-012108 Application 11/782,757 Technology Center 3600 ____________ Before: JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-012108 Application 11/782,757 2 In reply to our Decision mailed April 13, 2012 (hereinafter “Dec.”), Appellant filed a Request for Rehearing on June 11, 2012 (hereinafter “Req”). Appellant asserts that because the Board cited, sua sponte, paragraph [0003] of Rolf in rejecting claims 12-16, a new ground of rejection is warranted (Req. 2). However, we merely cited paragraph [0003] of Rolf to confirm that the commission payment structure of Rolf, referenced in Examiner-cited paragraph [0013], included the rudimentary premise of sources paying commissions to affiliate accounts for referrals. Accordingly, as the Examiner previously and explicitly relied on Rolf for disclosing such commissions (Exam’r’s Ans. 11-12), this confirmation did not alter the basic thrust of the rejection, and thus we decline to designate it as a new ground of rejection. See In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976). Appellant further asserts that the affiliate providing instructions to the merchant to pay commissions to an account, as set forth in paragraphs [0003] and [0013] of Rolf, does not include “instructions related to the customer,” as recited in independent claim 12 (Req. 3-5). By providing such instructions to the merchant, however, the affiliate in Rolf is effectively saying “if you receive a customer referral from me, pay this account.” Thus, the instructions are related to all generic future customer referrals, which is all independent claim 12 requires. While Appellant may have intended for more specific instructions to be sent from the affiliate to the merchant for each individual customer, such an aspect is not set forth in independent claim 12. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the specification can be examined for proper context of a claim term, limitations from the specification will not be imported into Appeal 2010-012108 Application 11/782,757 3 the claims). Indeed, as the “transmitting” step is not temporally constrained by the other steps, there is nothing in the claim preventing the affiliate from providing the generic customer-related instructions to the merchant before a specific, individualized customer has been identified. See Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999) (“not every process claim is limited to the performance of its steps in the order written”). Appellant additionally asserts that the Board’s reasoning concerning the rationale to modify Rolf in view of Graber is flawed because “Graber et al. does not teach a method that hides the existence of affiliate members” (Req. 5-6). However, Graber is solely cited for disclosing that “once a link is selected, an affiliate identification is added and the selecting user is forwarded to a merchant website” (Exam’r’s Ans. 5). The “negative connotation” rationale for modifying Rolf in view of Graber constitutes an articulated line of reasoning separate from Graber. See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (to support the conclusion that the claimed combination is directed to obvious subject matter, either the references must expressly or impliedly suggest the claimed combination or the examiner must present a convincing line of reasoning as to why the artisan would have found the claimed invention to have been obvious in light of the teachings of the references). Insofar as Appellant may be asserting that Graber’s promotion of explicit co-marketing between affiliates and merchants teaches away from the Examiner’s rationale, Graber does not discourage adding affiliate identification to links in the absence of such co-marketing. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[a] reference may be said to teach away when a person of ordinary skill, upon [examining] the reference, would be discouraged from following the path set out in the reference, or Appeal 2010-012108 Application 11/782,757 4 would be led in a direction divergent from the path that was taken by the applicant”). Appellant finally asserts that www.goinfiniti.com is a merchant link, and not “a link to a first website of the affiliate, the link including one of a name of the merchant or an offer from the merchant but not containing the unique session identifier” as recited in independent claim 21 (Req. 6-7). We agree because the cited art does not meet the above-noted limitation of claim 21. Accordingly, we modify our Decision, and do not sustain the rejection of claims 21-24. Insofar as we have addressed Appellant’s arguments herein, Appellant’s request is granted. In all other respects, Appellant’s request is denied. GRANTED-IN-PART hh