Ex Parte Van Gorkum

Board of Patent Appeals and Interferences

Feb 18, 2009

09951864 (B.P.A.I. Feb. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte AART ADRIANUS VAN GORKUM
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Appeal 2008-1833
Application 09/951,864
Technology Center 3700
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Decided:1 February 18, 2009
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Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-1833
Application 09/951,864

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a business
method, which the Examiner has rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses that an “increasing number of products
such as shavers has been developed with a recurring revenue stream in mind,
based on the sale of so-called additives. Additives are consumer goods
which are used in conjunction with another, usually more durable good.”
(Spec. 1: 16-18.) “An important property of additives is that they are used
up and need to be replaced more or less regularly” (id. at 1: 20-22).
Examples of additives are “aftershave, . . . used in conjunction with a
shaver” and the “replaceable brushes of electrical toothbrushes” (id. at 1: 19-
20). The Specification discloses a method and system for selling an additive
for a product (id. at 1: 3-4).
Claims 1-18 are pending and on appeal. Claim 1 is representative and
reads as follows:
1. A method of selling an addictive for a product, comprising
executing the following operations in a data processing device:
receiving an identifier for a user when the user has bought the
product;
estimating a point in time when an inventory level of the additive for
the product will drop below a predetermined value;
when the estimated point in time has arrived, using the identifier to
locate and contact the user;
presenting a notification to the user that the inventory level is below
the predetermined value; and
allowing the user to place an order request for the additive.
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Appeal 2008-1833
Application 09/951,864

OBVIOUSNESS
The Issue
The Examiner has rejected claims 1-18 under 35 U.S.C. § 103(a) as
obvious in view of Hartman2 and Carling.3 With respect to claim 1, the
Examiner finds that Hartman discloses receiving an identifier for a user
when the user buys a product and using the identifier to locate and contact
the user, while Carling discloses the other method steps recited in claim 1
(Answer 3). The Examiner concludes that it would have been obvious “to
include the replaceable component life prediction as taught by Carling into
the system of Hartman because it would provide system operators with the
ability to accomplish on-[site] maintenance and on-[site] predicting of the
lifetimes of components within these systems” (id. at 4).
Appellant contends that the “Examiner has failed to show how these
independent and non-interacting systems could or should be integrated into
some type of integrated system, much less identified a teaching, suggestion,
or motivation to do so” (Reply Br. 5).
The issue with respect to this rejection is: Has the Examiner shown
that combining the elements of the systems and methods disclosed by
Hartman and Carling would have been obvious to a person of ordinary skill
in the art?
Findings of Fact
1. Hartman discloses the Amazon.com “one-click” ordering system
(Spec. 6: 6-9).

2 Hartman et al., U.S. Patent 5,960,411, issued Sept. 28, 1999.
3 Carling et al., U.S. Patent 6,625,403 B2, issued Sept. 23, 2003.
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Appeal 2008-1833
Application 09/951,864

2. Hartman discloses a “method and system for placing an order to
purchase an item via the Internet. The order is placed by a purchaser at a
client system and received by a server system” (Hartman, abstract).
3. Hartman discloses that “the server system assigns a unique client
identifier to each client system. The server system also stores purchaser-
specific order information for various potential purchasers. The purchaser-
specific order information may have been collected from a previous order
placed by the purchaser.” (Id. at col. 3, ll. 37-42.)
4. Hartman discloses that the “server system maps each client
identifier to a purchaser that may use that client system to place an order”
(id. at col. 3, ll. 42-44).
5. Hartman describes the operation of its system as follows:
When a purchaser wants to place an order, the purchaser uses a
client system to send the request for information . . . along with
its client identifier. The server system determines whether the
client identifier for that client system is mapped to a purchaser.
If so mapped, the server system determines whether single-
action ordering is enabled for that purchaser at that client
system. If enabled, the server system sends the requested
information (e.g., via a Web page) to the client computer
system.
(Id. at col. 3, ll. 46-54.)
7. Carling discloses “a method and system, wherein the operational
life of Operator Replaceable Component (ORC) devices within a printer are
determined” (Carling, col. 2, ll. 13-15).
8. Carling discloses that the “ORC devices are specifically those
components used within [a] digital printing apparatus that wear with use.
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Appeal 2008-1833
Application 09/951,864

These ORC devices within the preferred embodiment have predictable
lifetimes.” (Id. at col. 3, ll. 7-11.)
9. Carling discloses that a “database management system . . . will
receive data for each of the ORC devices that details the usage of each of the
ORC devices based, for example, on the number of prints made, the types of
paper being used, [and] the color composition of the printed pages” (id. at
col. 3, ll. 36-41).
10. Carling discloses that the “database management system then
takes the received data and creates a life tracking system that keeps track of
the remaining life of the ORC devices and informs the operator of the status
of the ORC devices” (id. at col. 3, ll. 43-46).
11. Carling discloses that the “database management system will also
prompt the operator when any of the ORC devices need to be replaced” (id.
at col. 3, ll. 53-54).
12. Carling discloses that the system and method “provid[e] a
realtime update of the expected life span for ORC devices upon demand as
well as notification of a situation where the expected lifespan of an ORC
device is about to expire, or in fact already has expired” (id. at col. 12, ll. 30-
34).
13. Carling does not disclose that its system and method include
estimating or tracking on-site inventory of ORC devices, informing a user of
the number of ORC devices in inventory, or prompting a user to order ORC
devices in response to a predicted or actual low inventory of ORC devices.
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Appeal 2008-1833
Application 09/951,864

Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness.” In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).
A “patent composed of several elements is not proved obvious merely
by demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, __, 127 S. Ct. 1727,
1741 (2007).
[I]nterrelated teachings of multiple patents; the effects of
demands known to the design community or present in the
marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all [should be
considered] in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed.
Id. at __, 127 S. Ct. at 1740-41.
“We must still be careful not to allow hindsight reconstruction of
references to reach the claimed invention without any explanation as to how
or why the references would be combined to produce the claimed
invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008).
Analysis
Hartman discloses a method and system for ordering products via the
Internet. Carling discloses a method and system for tracking usage of
certain printer components and notifying an operator when a component
needs to be replaced. The Examiner reasons that combining the two systems
on a single data processing device, as required by instant claim 1, would
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Appeal 2008-1833
Application 09/951,864

have been obvious “because it would provide system operators with the
ability to accomplish on-[site] maintenance and on-[site] predicting of the
lifetimes of components within these systems” (Answer 4).
We do not agree with the Examiner’s reasoning. Providing operators
with the ability to perform on-site maintenance and on-site predicting of
component lifetimes is the advantage that Carling discloses for its system
(Carling, col. 2, ll. 6-8). The Examiner has provided no rationale for
concluding that adding the e-commerce elements disclosed by Hartman, and
required by the instant claims, would have enhanced the capacity of
Carling’s system to allow on-site maintenance or on-site prediction of
component lifetimes.
We conclude that Appellant has accurately summarized what the cited
references would have suggested to those of ordinary skill:
[a]t best, the user of the NexPress® 2100 Digital Printer would
use the ORC life tracking system described by Carling to
monitor the remaining life of various ORCs and receive
warnings when one or more ORCs have passed their life
expectancy. The user of the NexPress® 2100 could go on-line
and order a replacement ORC using the Amazon.com One-
Click Ordering System. However, . . . such independent use of
the two systems/methods does not meet the present claims and
provides no incentive to combine the two [disparate]
systems/methods.
(Reply Br. 4.)
CONCLUSIONS OF LAW
The Examiner has not shown that combining the elements of the
systems and methods disclosed by Hartman and Carling would have been
obvious to a person of ordinary skill in the art.
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Appeal 2008-1833
Application 09/951,864

SUMMARY
We reverse the rejection the rejection of claims 1-18 under 35 U.S.C.
§ 103(a) based on Hartman and Carling.

REVERSED

cdc

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