My World, Inc.

Patent Trials and Appeals Board

Mar 30, 2020

14707206 - (D) (P.T.A.B. Mar. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/707,206 05/08/2015 Kenneth J. Ouimet 2734.0033 8742
84278 7590 03/30/2020
PATENT LAW GROUP: Atkins and Associates P.C.
123 W. Chandler Heights Road, Unit 12535
Chandler, AZ 85248
EXAMINER
WHITAKER, JONATHAN J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
03/30/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
main@plgaz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENNETH J. OUIMET
____________

Appeal 2019-004956
Application 14/707,206
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, MICHAEL A. VALEK, and
JAMIE T. WISZ, Administrative Patent Judges.

WISZ, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of claims 1–
13 and 26–37. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.

CLAIMED SUBJECT MATTER
The Specification describes a “method of controlling the commerce
system with communication between publishers and intelligent personal
agents.” Spec. ¶ 2. According to the Specification, “[i]n the past,
manufacturers and retailers have made generic offers to an entire population
or group of consumers” and that “[b]y making generic offers readily
available to the public, manufacturers and retailers lose profit from sales to
consumers that would purchase the product even absent the discount.” Id.
¶ 4. “Manufacturers and retailers need additional ways to get more value out
of their limited marketing budgets” and “would like to reduce the gap
between the first impression a consumer receives from an ad and the
ultimate purchase of the product by the consumer.” Id. ¶ 11.
Also, according to the Specification, “[t]he lack of access to
comprehensive, reliable, and objective product information essential to
providing effective comparative shopping services restricts the consumer’s
ability to find the lowest prices, compare product features, and make the best
purchase decisions.” Id. ¶ 7. Although “the consumer can visit all retailers
offering a particular type of product and record the various prices, product

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as MyWorld,
Inc. Appeal Br. 1.
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descriptions, and other attributes to make a purchase decision,” this “brute
force approach of one person physically traveling to or otherwise
researching each retailer for all manufacturer's product information is
generally impractical.” Id. ¶ 9.
Therefore, according to the Specification, “[a] need exists for
optimization of the process of marketing products using a publisher.” Id.
¶ 12. The Specification describes that,
in one embodiment, the present invention is a method of
controlling a commerce system comprising the steps of
providing a shopping agent including an application
programming interface (API), using a publisher to receive
information from the shopping agent via the API, publishing
content based on the information received from the shopping
agent, optically scanning a portion of the content using a mobile
device, using the mobile device to add a product to a shopping
list maintained by the shopping agent in response to the
optically scanned portion of the content, and redeeming a
personalized offer for the product at a retailer using the mobile
device.
Id.
Claims 1, 7, 26, and 33 are independent claims. Claim 1 is illustrative
and is set forth below (annotated with bracketed numbers for reference to the
limitations in the claim):
1. A method of controlling communication over an
electronic network including a first computing system and a
second computing system, comprising:
[1] providing a database on the first computing system
including a data structure to organize product information
preferential to a consumer;
[2] providing an electronic consumer agent on the first
computing system in electronic communication with the
consumer;
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[3] providing an electronic publisher on the second computing
system, wherein the electronic publisher accesses the product
information preferential to the consumer as organized in the
data structure on the first computing system and selects a first
product from the product information preferential to the
consumer to offer to the consumer;
[4] publishing advertising content related to the first product,
wherein the advertising content including the first product is
transmitted to the consumer on a third computing system;
[5] indicating an intent to buy the first product via the consumer
using the third computing system, wherein the intent to buy is
transmitted to the electronic consumer agent on the first
computing system;
[6] initiating an electronic negotiation by the electronic
consumer agent on the first computing system to generate a
personalized offer for the consumer for the first product; and
[7] providing a shopping list including the first product and the
personalized offer to the consumer for presentation on a display
screen after the electronic negotiation for the first product.
Appeal Br. 51–52 (Claims Appendix). Independent claims 7 and 26 recite
methods comprising similar steps, while claim 33 recites a “non-transitory,
tangible computer readable medium” with instructions for performing these
steps. Id. at 53–58.
REJECTIONS
The Examiner rejected claims 1–13 and 26–37 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter.
The Examiner rejected claims 1, 2, 7–9, 26–28, and 33–35 under
35 U.S.C. § 102(a) as anticipated by Moss.2

2 Moss et al., US 2005/0159974 A1, published July 21, 2005 (“Moss”).
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The Examiner rejected claims 3, 6, 10, 12, 29, and 31 under 35 U.S.C.
§ 103 as being obvious Moss in view of Sisselman.3
The Examiner rejected claims 4, 5, 11, 13, 30, 32, 36, and 37 under
35 U.S.C. § 103 as being obvious Moss in view of Rose.4
ISSUES AND ANALYSIS
Rejection of claims 1–13 and 26–37 under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter
I. PRINCIPLES OF LAW
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine whether the claim recites an abstract idea. See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement

3 Sisselman, US 2014/0158753 A1, published June 12, 2005 (“Sisselman”).
4 Rose et al., US 2012/0123924 A1, published May 17, 2012 (“Rose”).
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risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
that recite abstract idea, but are nonetheless determined to be patent eligible,
include physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
(quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
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B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).5 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice,
or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

5 The Office issued further guidance on October 17, 2019. USPTO, October
2019 Update: Subject Matter Eligibility (the “October 2019 Update”)
(available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception (“Step 2B”).
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
II. ANALYSIS
Applying the Revised Guidance to the facts on this record, we find
that claims 1–13 and 26–37 are directed to patent-ineligible subject matter.
Claim 1 is directed to a computerized method for marketing products
and facilitating an electronic negotiation between a consumer and a retailer.
Following the first step of the Mayo/Alice analysis, we find that the claim is
directed to a method, and therefore falls into one of the broad statutory
categories of patent-eligible subject matter under 35 U.S.C. § 101. We thus
proceed to Step 2A, Prong One, of the Eligibility Guidance.
A. Guidance Step 2A, Prong 1
The Revised Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Revised
Guidance identifies three judicially-excepted groupings identified by the
courts as abstract ideas: (1) mathematical concepts, (2) certain methods of
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organizing human activity such as fundamental economic practices, and (3)
mental processes.
The Examiner finds that the claims “are directed to the abstract idea of
published retailer discount purchase offers, which is a fundamental
economic practice and/or a method of organizing human activities and/or an
idea of itself.” Final Act. 3–4.
We agree with the Examiner that claim 1 recites patent-ineligible
subject matter. More specifically, claim 1, reproduced above, recites the
following steps: [2] “providing an electronic consumer agent…in electronic
communication with the consumer,” [3] “providing an electronic
publisher…[which] selects a first product from the product information
preferential to the consumer to offer to the consumer,” [4] “publishing
advertising content…,” [5] “indicating an intent to buy the first product….,”
[6] “initiating an electronic negotiation…,” and [7] “providing a shopping
list….” App. Br. 51–52. Under the broadest reasonable interpretation,
limitations [2] through [7] recite a fundamental economic practice of
consumer shopping comprising identifying product information preferential
to a consumer, publishing advertising content, indicating an intent to buy,
initiating a negotiation to generate a personalized offer for the consumer on
the product, and providing a shopping list including the personalized offer to
the consumer.
The claimed invention is described in the Specification as
“optimization of the process of marketing products using a publisher” and
describes an “electronic communication network connecting members of the
commerce system.” Spec. ¶¶ 12, 16, Fig. 4. The Specification explains that
the method controls communication between consumers and retailers to
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optimize commerce and specifically shopping. Id. ¶¶ 7, 12. Accordingly,
we conclude that the above-identified limitations of claim 1 recite a
fundamental economic practice, which is a method of organizing human
activity corresponding to the abstract idea judicial exception.
B. Guidance Step 2A, Prong 2
Having determined that the claims recite a judicial exception, we next
consider whether the claims integrate the judicial exception into a practical
application. “[I]ntegration into a practical application” requires that the
claim recite an additional element or a combination of elements, that when
considered individually or in combination, “apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Guidance at 54.
Here, there is no practical integration of the abstract idea. Other than
the limitations directed to the abstract idea, discussed above, the remaining
step [1] is directed to “providing a database” which includes “a data
structure to organize product information preferential to a consumer,” which
are generic computer elements. Step [1] does not recite a specific data
structure. For this reason, the step is distinguishable from Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016) in which the claims
were found to be an improvement to conventional databases.
Furthermore, this element, as well as the other elements of the claim,
are recited at a high level of generality without integrating the abstract ideas
into a practical application because Appellant did not establish that they
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provide an additional element, outside the abstract idea, that improves the
technology or technical field.
Appellant argues that, just as in Trading Technologies International,
Inc. v. CQG, Inc., 675 Fed. Appx. 1001 (Fed. Cir. 2017), the solution of
claim 1 is from a problem specifically arising in the realm of computer
networks and computer technology. Appeal Br. 10. Specifically, Appellant
asserts that “[t]he features of publishing advertising content ... , indicating an
intent to buy ... , and initiating an electronic negotiation ... is part of what
makes the claim as a whole recite statutory subject matter.” Id. at 12.
According to Appellant, “[t]he claim taken as a whole, improves the
functionality of the computing systems by publishing advertising content
related to the first product, which is preferential to the consumer according
to the data structure, followed by indicating an intent to buy the first product
via the consumer using the third computing system.” Id. at 13. Appellant
further asserts that claim 1 “adds significantly more than the abstract idea
identified by the Examiner, i.e., ‘published retailer discount purchase
offers.’” Id. at 14.
Appellant concludes that
the problem and solution resides in the realm of computer
networks and computer technology. Total network and
computing utilization, as well as time, is reduced to increase the
probability of completing a sale by finding the price point of
positive purchasing decision, while reducing unnecessary
searching and network communication.
Id. at 16.
We are not persuaded by Appellant’s arguments. As found by the
Examiner, the computer elements and steps recited in the claims (electronic
system communication, organized data storage, data transfer) and do not
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reflect an improvement in the functioning of a computer or an improvement
to other technology or technical field. Ans. 6. We agree with the Examiner
that “[m]erely claiming the performance of a targeted retailer discount
purchase offer publishing abstract idea by generic databases and computing
systems is merely implementing an abstract idea on a computer in a
technological environment” and “there are no claim limitations indicating an
inventive technical modification to the technical aspects or technical
functionalities of any of the claimed electronic network communications.”
Id.
Furthermore, these claims are distinguishable from those in Trading
Technology in which the court found that “[t]he claims require a specific,
structured graphical user interface paired with a prescribed functionality
directly related to the graphical user interface’s structure.” 675 Fed. Appx.
at 1004. In this case, Appellant’s claims do not recite any specific
improvement to the computer technology itself.
We find that the claims here are more akin to the claims directed to
offer-based price optimization that were held to be patent ineligible in OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(concluding that the claimed concept of “offer-based price optimization” is
an abstract idea “similar to other ‘fundamental economic concepts’ found to
be abstract ideas by the Supreme Court and this court); see also buySAFE,
Inc. v. Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014) (holding that the
concept of “creating a contractual relationship–a ‘transactional performance
guarantee’” is an abstract idea). Like the representative claim in OIP,
Appellant’s claim 1 purports to computerize a fundamental economic
practice by broadly reciting generic computer components and concepts
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(e.g., a database, an agent,7 a data structure, and electronic communications)
to do so. Such elements “[c]onsidered individually or taken together as an
ordered combination . . . fail to transform the claimed abstract idea into a
patent-eligible application.” OIP, 788 F.3d at 1363 (quotations omitted).
Therefore, on this record, we conclude that the ineligible subject
matter in Appellant’s claim 1 is not integrated into a practical application.
C. Guidance Step 2B
Having determined that the judicial exception is not integrated into a
practical application, we next evaluate the additional elements individually
and in combination to determine whether they provide an inventive concept,
such as a specific limitation beyond the judicial exception that is not well-
understood, routine, conventional in the field, or simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
See 84 Fed. Reg. 51.
Appellant argues that claim 1 adds significantly more than the abstract
idea identified by the Examiner, i.e., “published retailer discount purchase
offers.” Appeal Br. 14. Appellant also asserts that the Examiner has not
provided sufficient support for the conclusion that the claim limitations are
well-understood, routine, and conventional. Id. at 14–15.

7 The Specification indicates that an agent, including the “electronic
consumer agent” recited in claim 1, is a software application or program
(Spec. ¶ 42) that uses APIs to communicate information between consumers
and sellers (see, e.g., id. ¶¶ 55, 63).
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We are not persuaded by Appellant’s arguments. The additional step
[1] recited in claim 1 is providing a database on the first computing system
that has a data structure capable of organizing product information
preferential to a consumer. There is nothing in the Specification indicating
that this step (or any steps or components) recited in the claims are not
generic or conventional. For example, the Specification describes that the
computer systems used in the electronic computer network include a
“general-purpose computer including a central processing unit (CPU) or
microprocessor 82, mass storage device or hard disk 84, electronic memory
or RAM 86, display monitor 88, and communication port” which “represents
a modem, high-speed Ethernet link, wireless, or other electronic connection
to transmit and receive data.” Spec. ¶ 37.
Appellant points to no additional steps that could not be performed
without using a generic computer. The use of a generic computer to perform
generic computer functions that are “well-understood, routine, conventional
activit[ies]” previously known in the industry is not enough to transform the
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
We find that Appellant did not provide adequate evidence that the
claims require anything other than the use of conventional and well-
understood techniques and equipment to gather and process data and initiate
an electronic negotiation according to the recited judicial exception.
Accordingly, the preponderance of evidence of record supports the
Examiner’s finding that Appellant’s claimed invention is directed to patent-
ineligible subject matter. The rejection of claim 1 under 35 U.S.C. § 101 is
affirmed. Dependent claims 2–6 are not separately argued and fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). While Appellant separately argues
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claims 7–13, 26–31, and 33–37, these arguments are the same “basic
arguments from claim 1,” therefore, for the reasons discussed above, we
affirm the Examiner’s rejection for these claims. Appeal Br. 16, 20, 24.
Rejection of claims 1, 2, 7–9, 26–28, and 33–35 under 35 U.S.C. § 102(a) as
being anticipated by Moss
As discussed in the Final Office Action at pages 7–16, the Examiner
finds that Moss discloses the steps of the claimed methods and the claimed
computer readable medium. Final Act. 7–16 (citing Moss ¶¶ 71, 226, 246,
260–262, 270, 272–276, 278–285, 337, 339, 371, 670–672, 679–682 for
claims 1 and 33).
Appellant argues that Moss does not teach or suggest providing an
electronic publisher on a second computing system. Appeal Br. 29.
Specifically, Appellant argues that the “Examiner attempts to mesh aspects
of the electronic consumer agent and the electronic publisher into one entity,
i.e. Cairo” but that “Cairo cannot be both the electronic consumer agent and
the electronic publisher, which are two separate elements of claim 1.” Id. at
30. Therefore, according to Appellant, paragraph 71 of Moss has no
electronic publisher because, although “Cairo performs searches based on
consumer input, [] the text says nothing about accessing the product
information preferential to the consumer as organized in the data structure
on the first computing system and selecting a first product from the product
information preferential to the consumer to offer to the consumer.” Id.
The Examiner responds that the Specification does not specifically
recite a separate computing system for an electronic publisher but finds that
Moss “also discloses web affiliates programs which allow other web site
publishers to embed Cairo technology within their own websites to provide
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the Cairo consumer agent services using embeddable widgets from within
third party sites.” Ans. 15 (citing Moss ¶¶ 91–92, 677). According to the
Examiner, “[s]ince these web affiliates and third party sites have their own
publisher computing system just as indicated in the Appellant specification
and the Cairo functionalities provide the electronic consumer agent
limitations, the Moss reference discloses the same limitations claimed by the
Appellant.” Id. (citing published Spec.8 ¶¶ 68, 77, 170, 201, 208–210, 212,
224, 232).
We agree with the Examiner that Moss discloses providing an
electronic publisher on a second computing system and are not persuaded by
Appellant’s arguments. Specifically, Moss discloses Cairo Everyday
Savings, which “allows consumers to compare prices for the basket of
grocery and household items that they shop regularly.” Moss ¶ 226.
Furthermore, according to Moss:
Cairo finds all of the advertised prices, promotions, special
offers, and manufacturer coupons that are currently available
for their items. The consumer can build a shopping list and
“optimize” that list to find the best combinations of prices,
items, and stores to Visit for any Shopping trip.
Id.
Moss also discloses web affiliates programs, which allow other web
site publishers to embed Cairo technology within their own websites to
provide the Cairo consumer agent services using embeddable widgets from
within third party sites. Moss ¶¶ 91–92, 677. Furthermore, these web

8 Kenneth J. Oiumet, US Pub. No. US 20115/0324828 A1, published Nov.
12, 2015 (“published Spec.”).
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affiliates and third party sites have their own publisher computing system.
Id.
Appellant also argues that Moss does not teach or suggest publishing
advertising content related to the first product. Appeal Br. 31. According to
Appellant, Moss discloses recommending items to buy from a list of stores,
but has “no anticipation of publishing advertising content related to the first
product (as selected from the product information preferential to the
consumer by the electronic publisher), where the advertising content
including the first product is transmitted to the consumer on a third
computing system as a personalized and customized advertisement of a
product preferential to the consumer.” Id. at 32 (citing Moss ¶ 270).
The Examiner responds that Moss
discloses publishing advertising content related to the first
product, wherein the advertising content including the first
product is transmitted to the consumer on a third computing
system (Moss: Figures 26-27; [0270], disclosing the publishing
of advertising product content related to consumer preferences;
[0273], disclosing the displaying of product advertising content
related to consumer preferences; [0278]-[0285], disclosing the
publishing of targeted product offers based on stored consumer
preferences; [0371], disclosing that Cairo is an electronic
publisher of product content; [0677]).
Ans. 16.
We are not persuaded by Appellant’s argument. As cited by the
Examiner, Moss discloses:
Through Cairo, deep consumer segmentation information can
be captured based on consumer behaviors and preferences.
This may be combined with retailer’s own customer loyalty
data. Cairo makes this information actionable by providing a
delivery mechanism to the consumers at the point of decision
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making about what to buy on their next shopping trip, targeting
information tailored to their specific shopping preferences.
Moss ¶ 279. Appellant has not sufficiently explained why this disclosure,
and the other disclosures of Moss cited by the Examiner, do not teach or
suggest publishing advertising content related to the first product.
Appellant also argues that Moss does not teach or suggest indicating
an intent to buy the first product via the consumer using the third computer
system for reasons similar to those discussed above. Appeal Br. 32–33.
Appellant further states that Moss “uses the UPC scans to build up consumer
preference database, not to indicate an intent to buy at the moment, which
then triggers the electronic negotiation.” Id. at 33.
Similarly, Appellant also argues that Moss does not teach or suggest
initiating an electronic negotiation by the electronic consumer agent on the
first computing system to generate a personalized offer for the consumer for
the first product for the reasons discussed above. Appeal Br. 33.
Specifically, Appellant asserts:
Moss does not relate the first product (originating from
publishing advertising content as selected from the product
information preferential to the consumer by the electronic
publisher) and with the intent to buy the first product, followed
by the electronic negotiation when the intent to buy is
identified.
Id. at 34. Rather, Appellant asserts:
Moss prepares an optimal shopping itinerary that delivers the
lowest overall price and can re-optimize the list of items to
reach an acceptable price and convenience. Moss is missing the
point. Moss is working with a shopping list with potentially
many items and attempts to optimize the list for lowest overall
price. If the consumer does not accept, Moss can try again. But
there is no indication of present intent to buy in combination
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with electronic negotiation to capture the potential sale, as in
claim 1.
Id.
The Examiner responds that Moss
discloses multiple instances of indicating an intent to buy the
first product via the consumer using the third computing
system, wherein the intent to buy is transmitted to the electronic
consumer agent on the first computing system (Moss: [0246],
wherein scanning a frequently purchased product for sending to
publisher is an intent to buy; [0261], wherein marking
displayed preferred items is indicating an intent to buy, [0274],
wherein checking an offer for an item is indicating an intent to
buy; [0339], wherein scanning a product to initiate price
comparison is indicating an intent to buy).
Ans. 17.
The Examiner further responds that there is no claim limitation
referring to an “indication of present intent to buy” and that the claim
limitations regarding intent to buy have no reference to a present timing of
this indication. Ans. 17. Furthermore, the Examiner finds that Moss:
discloses multiple instances of indicating an intent to buy and
initiating an electronic negotiation by the electronic consumer
agent on the first computing system to generate a personalized
offer for the consumer for the first product based on the
collected consumer information, including intent to buy (Moss:
[0272]-[0273], disclosing the generation of personalized offers
for consumers; [0278]-[0285] disclosing usage of electronically
negotiated offers, “Cairo Everyday Savings provides retailers
and manufacturers with many opportunities to offer the
consumer special offers, one-to-one promotions, and/or
individual pricing”, “offering “individual pricing” and/or
additional coupons/discounts to consumers if they buy the
entire shopping list from them”, “retailer may offer additional
discounts targeted at some of the individual items that drive
overall basket profitability--matching locally advertised
prices”).
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Id. at 17–18.
We are not persuaded by Appellant’s argument. As pointed out by the
Examiner, there is no limitation in the claims that requires the consumer to
commit to buying a product. Rather, according to the claims, a consumer
indicates an intent to buy in step [5]which initiates an electronic negotiation,
which ultimately results in a shopping list and personalized offer to the
consumer. These limitations are disclosed in Moss, for example, when it
discusses a consumer re-optimizing their shopping list “until they have a list
of items at a price and convenience that is acceptable,” and “calculate[ing]
an optimal shopping itinerary” that meets the “consumer’s shopping
criteria,” as well as the possibility of “individual pricing.” Moss ¶¶ 272,
274, 281. These elements (as well as those cited by the Examiner) disclose
indicating an intent to buy, initiating a negotiation, and providing a shopping
list with a personalized offer. Therefore, Appellant has not sufficiently
explained why the portions of Moss cited by the Examiner do not disclose
the disputed claim limitations.
Accordingly, the rejection of claim 1 under 35 U.S.C. § 103 as being
anticipated by Moss is affirmed. Dependent claim 2 is not separately argued
and falls with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). While Appellant
separately argues claims 7–9, 26–28, and 33–35, these arguments are
essentially the same arguments as presented for claim 1 and, therefore, for
the reasons discussed above, we also affirm the Examiner’s rejection of
these claims. Appeal Br. 35–49.
Rejection of claims 3, 6, 10, 12, 29, and 31 under 35 U.S.C. § 103 as being
obvious Moss in view of Sisselman
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The Examiner’s findings with respect to Moss are discussed above.
The Examiner also finds that Moss does not explicitly teach using a Quick
Response code of the first product but that this deficiency is cured by
Sisselman, which teaches publishing a Quick Response code of the first
product. Final Act. 16 (citing Sisselman ¶¶ 10, 26). The Examiner finds
that “it would have been obvious to one of ordinary skill in the art at the
time of filing to combine the commerce system control method of Moss with
the commerce system control methods of Sisselman in order to specify
effective methods for assisting a consumer utilizing the commerce system
and associated content.” Id. at 17 (citing Moss ¶¶ 246, 327, 339; Sisselman
¶¶ 10, 26).
Appellant does not make additional arguments with respect to this
rejection, but simply asserts that these claims are in condition for allowance
as they depend from an allowable base claim. Appeal Br. 49. Therefore, for
the reasons discussed above, we affirm the Examiner’s rejection of claims 3,
6, 10, 12, 29, and 31 under 35 U.S.C. § 103 as being obvious Moss in view
of Sisselman.

Rejection of claims 4, 5, 11, 13, 30, 32, 36, and 37 under 35 U.S.C. § 103 as
being obvious Moss in view of Rose
The Examiner’s findings with respect to Moss are discussed above.
The Examiner also finds that Moss does not explicitly teach a histogram but
that this deficiency is cured Rose, which teaches a histogram. Final Act. 18
(citing Rose ¶ 147). The Examiner finds that “it would have been obvious to
one of ordinary skill in the art at the time of filing to combine the commerce
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system control method of Moss with the commerce system control methods
of Rose in order to specify effective methods for assisting a consumer
utilizing the commerce system and associated content.” Id. (citing Moss,
Figures 8, 20, 26, ¶¶ 76, 107, 344, 348, 371; Rose ¶¶ 3, 147).
Appellant does not make any specific arguments regarding this
obviousness rejection. Therefore, for the reasons discussed above, we affirm
the Examiner’s rejection of claims 4, 5, 11, 13, 30, 32, 36, and 37 under
35 U.S.C. § 103 as being obvious Moss in view of Rose.
CONCLUSION
For the reasons described herein and those already of record, we
affirm the Examiner’s rejection of claims 1–13 and 26–37.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–13, 26–37 101 Eligibility 1–13, 26–37
1, 2, 7–9,
26–28, 33–
35
102(a)(1)/
102(a)(2)
Moss 1, 2, 7–9,
26–28, 33–
35

3, 6, 10, 12,
29, 31
103 Moss, Sisselman 3, 6, 10, 12,
29, 31

4, 5, 11, 13,
30, 32, 36,
37
103 Moss, Rose 4, 5, 11, 13,
30, 32, 36,
37

Overall
Outcome
1–13, 26–37
TIME PERIOD FOR RESPONSE
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED