Ex Parte Vadon et al

Patent Trial and Appeal Board

Jul 25, 2013

11681600 (P.T.A.B. Jul. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK C. VADON, DARRELL S. CAVENS,
and SCOTT DECKER
____________

Appeal 2011-004023
Application 11/681,600
Technology Center 2100
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 4, 7-14, 16, 17, 19-22, and 24-39.1 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 Claims 2, 5, 6, 15, 18, and 23 have been cancelled.
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STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to an apparatus and method for
facilitating a search for a set of N similar gems (where N may be an integer
of at least two). Abstract.
Claims 1, 9, 19, 24, and 32 are independent. Claims 1 and 24 are
illustrative of the invention (disputed limitations in italics):
1. A computer-readable storage medium comprising
instructions that, when executed by a computer, cause the
computer to facilitate a search for gems, the computer-readable
medium comprising:
a gem search module configured to facilitate a search for
sets of N similar gems, wherein N is an integer that is at least
two, wherein each set of N similar gems is defined by a metric
that indicates a degree of similarity between a plurality of
attributes of each gem in the set, and wherein the gem search
module is configured to:
display to a user a first user-interface element
representing a set of values of a gem attribute;
receive from the user a selection of a first value
from the set of values of the gem attribute;
query a database of gems to identify one or more
sets of N similar gems, each of the gems in a set of N
similar gems associated with the selected first value; and
display to the user the identified one or more sets
of N similar gems, wherein at least one of the one or
more sets of N similar gems is to be incorporated in a
multiple-gem jewelry setting.
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24. A method performed by a computing system
having a processor and memory for facilitating a search for sets
of gems, the method comprising:
receiving from a user a desired value of a gem attribute
associated with a set of gems;
querying a data store containing characterizations of a
plurality of gems in order to identify a plurality of gem clusters,
each of the gems in the data store characterized by values of
two or more gem attributes, each of the identified plurality of
gem clusters being defined by a metric that indicates a degree
of similarity between the two or more gem attributes of each
gem in that cluster, and each of the identified plurality of gem
clusters being composed of two or more gems having values of
the gem attribute that satisfy the desired value of the gem
attribute;
generating an aggregate characterization of the values of
the two or more gem attributes for gems that are contained in
at least some of the identified plurality of gem clusters; and
displaying to the user the aggregate characterization of
the values of the two or more gem attributes for at least some of
the identified plurality of gem clusters, wherein at least one of
the identified plurality of gem clusters is to be incorporated in a
multiple-gem jewelry setting,
wherein computer-executable instructions implementing
the method are stored in the memory of the computing system
for execution by the processor of the computing system.
Rejections on Appeal
The Examiner has rejected claims 1, 3, 4, 7-11, 19-22, and 24-39
under 35 U.S.C. § 103(a) as being unpatentable over Wang (US 6,604,107
B1, Aug. 5, 2003) and Hendry (US 2004/0030565 A1, Feb. 12, 2004). Ans.
4-25.
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The Examiner has rejected claims 12-14, 16, and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Wang, Hendry, and Calistri-Yeh (US
7,299,247 B2, Nov. 20, 2007). Ans. 26-28.
Issues on Appeal
Based on Appellants’ arguments, the dispositive issues on appeal are:
1. Does the combination of Wang and Hendry teach or suggest “a
gem search module configured to facilitate a search for sets of N similar
gems, . . . wherein each set of N similar gems is defined by a metric that
indicates a degree of similarity between a plurality of attributes of each gem
in the set,” as recited in claim 1 and similarly recited in claims 9, 19, 24, and
32 (App. Br. 9-12)?
2. Does the combination of Wang and Hendry teach or suggest
“wherein at least one of the one or more sets of N similar gems is to be
incorporated in a multiple-gem jewelry setting,” as recited in claim 1 and
similarly recited in claims 9, 19, 24, and 32 (App. Br. 12-13)?
3. Has the Examiner provided articulated reasoning with rational
underpinning for combining Wang and Hendry in rejecting the claims?
4. Does the combination of Wang and Hendry teach or suggest
“generating an aggregate characterization of the values of the two or more
gem attributes for gems that are contained in at least some of the identified
plurality of gem clusters” and “displaying to the user the aggregate
characterization of the values of the two or more gem attributes for at least
some of the identified plurality of gem clusters,” as recited in claim 24 and
similarly recited in claim 32 (App. Br. 16-18)?
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own the findings and reasoning set forth in the
Examiner’s Answer. We highlight and address the following findings and
arguments for emphasis.
Claim 1
In rejecting claim 1, the Examiner finds that Wang teaches a search
module configured to facilitate a search for sets of similar items, wherein
each set of items is defined by a metric that indicates a degree of similarity
between a plurality of attributes of each item in the set. Ans. 4-5, 29. The
Examiner specifically relies on Figure 7 of Wang, which displays the results
of a search for automobiles that match selected search criteria, including
mileage, year, and price. Ans. 4-5; Wang, Fig. 7, col. 5, ll. 48-57. The
Examiner further finds that Hendry teaches the concept of searching for
gems. Ans. 6, 29.
Appellants contend that Wang does not teach or suggest searching for
sets of similar items defined by a metric that indicates a degree of similarity
because Wang’s system identifies all items that match the selected search
criteria. App. Br. 10-12. We are not persuaded by Appellants’ argument.
As the Examiner correctly finds, the vehicles displayed in Figure 7 of Wang
constitute a set of similar items. Ans. 29. Furthermore, the set is defined by
a metric indicating a degree of similarity between a plurality of attributes
(i.e., mileage, year, and price). Id. In Figure 7, for example, the vehicles in
the set are from the same year and have mileage less than 1000 miles. Id.
We also note that Figure 8 of Wang shows that a user may search for
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vehicles with similar values for a plurality of attributes, including make,
model, year, mileage, and price.
Appellants further contend that the combination of Wang and Hendry
does not teach or suggest searching for and displaying a set of similar gems
that “is to be incorporated in a multiple-gem jewelry setting.” App. Br. 12-
13. Specifically, Appellants argue that “[t]he search functionality disclosed
in Wang is intended to allow users to find a single vehicle or other product,
not to identify products that may be utilized as a group.” App. Br. 13.
Appellants further argue that Hendry does not teach or suggest identifying
sets of similar gems that may be incorporated in a multiple-gem jewelry
setting. Id.
We are not persuaded by Appellants’ arguments. As the Examiner
correctly finds, the items retrieved during a search of Wang’s database are a
group of items with similar attributes. Ans. 31. As the Examiner also finds,
Hendry teaches or suggests a multiple-gem jewelry setting comprising
similar gems. Ans. 30 (citing Hendry, Fig. 10A, ¶ 90). Figure 10A of
Hendry shows an input screen for characterizing a piece of jewelry. See
Hendry, ¶ 45. The screen allows the user to identify multiple stones (Fig.
10C, field 273) in a jewelry setting that share various attributes, including
color, clarity, and weight. See Hendry, Fig. 10A, ¶¶ 86-88. Based on these
teachings, we agree with the Examiner that the combination of Wang and
Hendry teaches or suggests searching for a set of similar gems that is to be
incorporated in a multiple-gem jewelry setting. See Ans. 5-6, 30-31.
Moreover, the claim language “wherein at least one of the one or more sets
of N similar gems is to be incorporated in a multiple-gem jewelry setting” is
a statement of intended use, which usually is not given patentable weight.
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See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320
F.3d 1339, 1345 (Fed. Cir. 2003) (“An intended use or purpose usually will
not limit the scope of the claim because such statements usually do no more
than define a context in which the invention operates.”); In re Stencel, 828
F.2d 751, 754 (Fed. Cir. 1987) (holding that a statement of use often appears
in a preamble but may appear elsewhere in a claim).
Finally, Appellants contend that a person of ordinary skill in the art
would not have combined Wang and Hendry. App. Br. 13. Specifically,
Appellants argue that “an appraisal navigation interface as taught in Hendry
is unsuited for the large and disparate datasets of auctioned products as
managed by Wang.” Id. Appellants further argue that “a technique for
[combining Wang and Hendry] would entail complexities that would require
detailed explanation for one of ordinary skill in the art to implement.” Id.
Appellants’ arguments are unpersuasive because the Examiner’s
rejection is based on the combined teachings of the references, not
physically incorporating Hendry’s interface into Wang’s system. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” (citations omitted)). Furthermore, the Examiner
finds that “[o]ne of ordinary skill in the art would be motivated to provide a
database of gemstones with associated attributes to store vast amounts of
information across a number of different categories for easier design,
implementation and management.” Ans. 6 (citing Wang, col. 1, ll. 40-44).
Thus, the Examiner has provided articulated reasoning with rational
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underpinning for combining the references to support the conclusion of
obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
For the foregoing reasons, we sustain the Examiner’s § 103(a)
rejection of claim 1 over Wang and Hendry. We also sustain the Examiner’s
§ 103(a) rejection of independent claims 9 and 19, which recite similar
limitations and for which Appellants have not made separate, detailed
arguments. See App. Br. 14-15. In addition, we sustain the Examiner’s
§ 103(a) rejections of the following dependent claims for which Appellants
have not made separate, detailed arguments (see App. Br. 14-15, 18-19): (i)
claims 3, 4, 7, 8, 10, 11, and 20-22 based on Wang and Hendry, and (ii)
claims 12-14, 16, and 17 based on Wang, Hendry, and Calistri-Yeh.
Claim 24
In addition to limitations similar to those in claim 1, independent
claim 24 recites “generating an aggregate characterization of the values of
the two or more gem attributes for gems that are contained in at least some
of the identified plurality of gem clusters” and “displaying to the user the
aggregate characterization of the values of the two or more gem attributes
for at least some of the identified plurality of gem clusters.” Appellants
contend that Wang does not teach or suggest these limitations because
Wang’s system does not display an aggregate characterization of the values
of gems in a cluster in the form of a single row, as shown in Appellants’
Figure 4. App. Br. 16-17. Appellants’ Specification, however, does not
define “aggregate,” nor have Appellants cited any evidence supporting their
position that an aggregate characterization of values must be displayed as a
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single row. The ordinary meaning of “aggregate” includes “formed of
separate units collected into a whole.”2 Therefore, under the broadest
reasonable interpretation consistent with Appellants’ Specification, the term
“aggregate characterization” encompasses the collection of values of
attributes for items shown in Figure 7 of Wang.
Accordingly, we sustain the Examiner’s § 103(a) rejection of claim 24
over Wang and Hendry, as well as the § 103(a) rejection of independent
claim 32, which recites similar limitations, and dependent claims 25-31 and
33-39, not argued separately.
DECISION
The Examiner’s rejection of claims 1, 3, 4, 7-14, 16, 17, 19-22, and
24-39 is affirmed.3
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

tj

2 Collins English Dictionary (2003) (definition of “aggregate”) (accessed at
http://www.thefreedictionary.com/aggregate).
3 We have decided the appeal before us. In the event of further prosecution,
we leave it to the Examiner to evaluate claim 1 for compliance with 35
U.S.C. § 101. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)
(holding that transitory signals are not patent-eligible subject matter);
Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat.
Office 212 (Feb. 23, 2010). We note that claim 1 recites a “computer-
readable storage medium,” and Appellants’ Specification defines a “storage
medium” to include a “carrier wave.” Spec. ¶ 54.