95001440 (P.T.A.B. Dec. 19, 2013)

Ex Parte 7130821 et al

Patent Trial and Appeal BoardDec 19, 2013

95001440 (P.T.A.B. Dec. 19, 2013)

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. 95/001,440 09/08/2010 7130821 T00025 3871 33438 7590 12/20/2013 TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP P.O. BOX 203518 AUSTIN, TX 78720 EXAMINER RIMELL, SAMUEL G ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/20/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ INTERNET BRANDS, INC., AUTODATA SOLUTIONS CO., and AUTODATASOLUTIONS, INC. Requesters and Respondents v. VERSATA DEVELOPMENT GROUP, INC. Patent Owner and Appellant ________________ Appeal 2013-003803 Reexamination Control 95/001,440 Patent 7,130,821 B11 Technology Center 3900 ________________ Before STEPHEN C. SIU, DENISE M. POTHIER, and STANLEY M. WEINBERG, Administrative Patent Judges. WEINBERG, Administrative Patent Judge. DECISION ON APPEAL 1 The patent involved in this reexamination appeal proceeding (the “ ̕821 Patent”) issued to Christopher M. Connors, et al. on October 31, 2006. Appeal 2013-003803 Reexamination Control 95/001,440 Patent 7,130,821 B1 2 A. STATEMENT OF THE CASE Introduction On September 8, 2010, Internet Brands, Inc. and two of its subsidiaries, AutoData Solutions Company and AutoData Solutions, Inc. (Requesters) filed a Request for Inter Partes Reexamination of the ‘821 Patent (Request). Patent Owner (Owner) appeals under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-64. An oral hearing was conducted on May 29, 2013. A transcript (Tr.) of the hearing was made of record on November 25, 2013. We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a). We affirm. Related Proceedings Owner has informed us that there are no related appeals or interferences. Owner has also informed us that as of the date it filed its Appeal Brief,2 the ‘821 Patent was involved in litigation in the U.S. District Court, Eastern District of Texas, Marshall Division styled Versata Software, Inc., F/K/A Trilogy Software, Inc. et al. v. Internet Brands, Inc., F/K/A CarsDirect.com, Inc. et al., Civil Action No. 2:01 cv 313. Owner has also informed us that on July 30, 2012, the District Court entered a Final 2 We refer to the Owner’s Appeal Brief (Br.) filed December 24, 2011; and the Requester’s Respondent Brief (Resp. Br.) filed January 24, 2012. Appeal 2013-003803 Reexamination Control 95/001,440 Patent 7,130,821 B1 3 Judgment ordering, inter alia, that claims 1, 10, 13, 14, 17-20, 22, and 23 are found to be invalid. The Invention The invention relates to a method of comparing products over a data network. The ’821 patent, Abstract; Col. 1, ll. 18-19. Claim 1 is illustrative of the appealed subject matter and is reproduced below with disputed limitations emphasized (App. Br. 43, Claims App’x): 1. A method of comparing products wherein at least one of the products is automatically generated, the method comprising: receiving data from a first computer system, wherein the received data includes product configuration data; processing the received data with a second computer system to generate a first product configuration; providing data to the first computer system to allow the first computer system to display the first product configuration; receiving an auto-generate request, separate from the received data, from the first computer system to automatically generate a second product configuration that is comparable to the first product configuration, wherein the auto-generate request includes data representing criteria to establish a basis for comparability between the first product configuration and the second product configuration; processing the auto-generate request with the second computer system to automatically generate the second product configuration in accordance with the criteria to establish a basis for comparability between the first product configuration and the second product configuration; and providing data to the first computer system to allow the first computer system to display the first and second product configurations and allow comparison of features of the first and second product configurations. Appeal 2013-003803 Reexamination Control 95/001,440 Patent 7,130,821 B1 4 The Prior Art Biffar 6,397,212 B1 May 28, 2002 Zucker 7,181,418 B1 Feb. 20, 2007 Ellis 7,353,192 B1 Apr. 1, 2008 AutoQuote software user manual by Autodata Marketing Systems, Inc., dated November 30, 1998 (“AutoQuote”) CarsDirect.com Acquires Autodata, Premier Automotive Software and Data Firm, dated August 18, 1999 (“CarsDirect”) The Rejections Claims 1-64 stand rejected under 35 U.S.C. § 102 as anticipated by Biffar. August 18, 2011 Right of Appeal Notice (RAN) 4, 10-17.3 Claims 1-35 stand rejected under 35 U.S.C. § 102(b) as anticipated by AutoQuote. RAN 5. Claims 36-38 stand rejected under 35 U.S.C. § 103(a) as unpatentable over AutoQuote in view of CarsDirect. RAN 5-6. Claims 1-38 stand rejected under 35 U.S.C. § 103(q) as unpatentable over Ellis in view of AutoQuote. RAN 6-7. Claims 1-38 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Zucker in view of AutoQuote. RAN 7-8. Claims 39-58 stand rejected under 35 U.S.C. § 102(b) as anticipated by AutoQuote. RAN 17-24. 3 RAN 4 relies upon 35 U.S.C. § 102(e) as a basis to reject claims 1-38 over Biffar and RAN 10-17 relies upon 35 U.S.C. § 102(b) as a basis to reject claims 39-64 over Biffar. The parties do not raise any issue regarding this discrepancy, and we do not consider it further. Appeal 2013-003803 Reexamination Control 95/001,440 Patent 7,130,821 B1 5 Claims 59-64 stand rejected under 35 U.S.C. § 103(a) as unpatentable over AutoQuote in view of CarsDirect. RAN 24-26. B. ANALYSIS The Rejection Of Claims 1-64 Under 35 U.S.C. § 102 As Anticipated By Biffar Claims 1, 2, 4-11, 13-20, 22-38, 43, 48, 53, 58, and 63 For the rejection of representative claim 1, the Examiner adopts Requesters’ proposed rejections in Claim Chart F of Requesters’ September 8, 2010 Request and Statement for Inter Partes Reexamination (“Request”). RAN 4. The Examiner also incorporates by reference “the reasons set forth in third party’s comments.” RAN 26. Based on the context of the Examiner’s stated incorporation by reference, we infer that the Examiner was incorporating the Requesters’ July 5, 2011 Comments (“7/5/2011 Comments”) following the May 2, 2011 Action Closing Prosecution (“ACP”). an auto-generate request . . . to automatically generate a second product configuration that is comparable to the first product configuration By adopting Requester’s Claim Chart F, the Examiner finds that Biffar’s element 4460, shown in Biffar Fig. 8, meets this limitation. Biffar provides a search engine that allows for multi-dimensional searches. The Biffar system is adaptive, such that the search results improve over time as the system learns about the user and develops a user profile. Col. 3, ll. 21-27. The user can enter characteristics 1200 (Fig. 2; col. 4, l. 34) and information 1300 describing each of those characteristics (col. 5, ll. 1-2). Search results are displayed. Fig. 5; Col. 4, ll. 23-24; col. 6, ll. 1-2, Appeal 2013-003803 Reexamination Control 95/001,440 Patent 7,130,821 B1 6 15. Search parameters can then be changed by various means or actions 4400, 4410, 4420. Figs. 3-5. After a user reviews the result, the user can change some or all of the characteristics and obtain a new result by selecting button 4600. Fig. 5; col. 8, ll. 42-47; Fig. 8; col. 13, ll. 30-33. Alternatively, the user can ask for another suggestion 4460 for “something similar,” “somewhat different,” or “totally different.” Fig. 8; col. 13, ll. 33-34. The user can view all of the selections in a comparison table. Col. 14, ll. 21-22. Owner contends that the “make another suggestion button” 4460 in Fig. 8 does not meet the auto-generate limitation because it is “based on ‘the search’ obtained by the previously generated user-directed search results” which “are surfed or scrolled by the system” to make one of the other disclosed suggestions. Unlike Owner’s system, Owner contends, button 4460 “does not generate any new data, but rather simply surfs or scrolls through pre-existing user-directed search results or goes to a totally new starting point in the pre-existing user-directed search.” Br. 17-18. Owner’s arguments are not persuasive at least because claim 1 does not require the generation of “new data.” The Examiner concludes that the claim “merely requires that the auto- generate request be separate from the received data [and that] it does not preclude the use of the received data nor does it preclude the use of ‘surfing’ or scrolling through the received data.” ACP p. 26. Owner disagrees, without further explanation, that the claim merely requires that the auto- generate request be separate from the received data. Br. 18. But, even if the claim does not preclude the use of the received data nor preclude surfing or Appeal 2013-003803 Reexamination Control 95/001,440 Patent 7,130,821 B1 7 scrolling through the received data, Owner further contends that the claim requires “automatic generation,” which Owner contends is not surfing or scrolling pre-existing search results. Br. 18-19. Owner concedes that its Specification does not define auto-generate per se. Tr. 11:1-3. See also Tr. 4-5. Instead, Owner contends that auto- generate is defined “in light of what . . . the other two functions do and it’s a different function.” Tr. 11:3-5. It is settled, however, that although claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Owner also concedes that Biffar does perform an automatic retrieval; but that the retrieval is from previously searched results and is based on filtering criteria. Tr. 10:2-6. We agree with Requesters that the broadest reasonable interpretation of “an auto-generate request” to “automatically generate a second product configuration” includes any request that results in the generation of a second product configuration where the user does not have to manually configure the second product. 7/5/2011 Comments 2. For example, Biffar’s button 4460 can ask for a new additional search or iteration, which is not the same as surfing or scrolling through user- specified search results. 7/5/2011 Comments 2 (citing Biffar col. 6, ll. 54- 55); see also Biffar, col. 13, ll. 33-34. We therefore agree with Requester that Biffar’s element 4460 discloses this limitation. Appeal 2013-003803 Reexamination Control 95/001,440 Patent 7,130,821 B1 8 processing the auto-generate request . . . to automatically . . . establish a basis for comparability between the first product configuration and the second product configuration Owner contends that Biffar does not disclose this limitation because the different result function 4460 allows the user to move away from the next best fitting iteration to a totally new starting point in the search. Br. 18 (citing Biffar, col. 6, l. 64-col. 7, l. 1). Regardless, the user in Biffar can also save the search result 4460 and add the result to a comparison table 4480. Biffar, col. 14, ll. 2-4. As Requesters point out, “[t]he user can then view all of the above selections in a comparison table, putting her in a position to easily select the most attractive solution for her.” Request, Biffar Claim Chart, Ex. F, unnumbered p. 2 (citing Biffar, col. 14, ll. 21-23). We therefore agree with Requesters that these features in Biffar disclose this limitation. For all of the above reasons, we will sustain the Examiner’s rejection of (1) claim 1; (2) claims 10, 19, and 36 having similar limitations; and (3) claims 2, 4-9, 11, 13-18, 20, 22-35, 37, 38, 43, 48, 53, 58, and 63 not argued separately with particularity as anticipated by Biffar.4 4 Owner also contends that Biffar button 4600 does not disclose an auto- generate request or data representing criteria to establish a basis for comparability between first and second product configurations. Br. 15-16. See also Br. 21. The Request, and therefore the Examiner, did not rely on button 4600 for the auto-generate limitations. See Request and Requesters February 9, 2011 Comments following First Office Action 7. Because we agree that button 4460 meets this limitation, we do not decide whether button 4600 also discloses the claimed auto-generate request. Appeal 2013-003803 Reexamination Control 95/001,440 Patent 7,130,821 B1 9 Claims 3, 12, 21, 39-42, 44-47, 49-52, 54-57, 59-62, and 64 Claims 39 and 40 are illustrative of the appealed subject matter and are reproduced below: 39. The method of claim 1 wherein the criteria upon which to automatically generate a second product configuration that is comparable to the first configuration comprises at least price. 40. The method of claim 1 wherein the criteria upon which to automatically generate a second product configuration that is comparable to the first configuration comprises at least features. The Examiner finds that Biffar elements 5100 and 5001 shown in Biffar’s Figure 10 disclose price and features, respectively. RAN 10. Owner contends that these elements are associated with new search button 4600, are not associated with suggestion button 4460, and therefore cannot be associated with an auto-generate request. Br. 21-22. We disagree because when button 4460 makes another suggestion of something that is something similar, somewhat different, or totally different, it is making the suggestion based upon all of the criteria, including price and features that have already been selected by the user. We will therefore sustain the Examiner’s rejection of (1) claims 39 and 40; and (2) claims 3, 12, 21, 41, 42, 44-47, 49-52, 54-57, 59-62, and 64 not argued separately with particularity as anticipated by Biffar. See 37 C.F.R. § 41.67(c)(1)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”) Appeal 2013-003803 Reexamination Control 95/001,440 Patent 7,130,821 B1 10 The Rejections Of The Claims Based On Other References In view of our conclusion that the Examiner did not err in rejecting the appealed claims based on Biffar, we do not address any of the other rejections upon which the Examiner relies. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections after upholding an anticipation rejection). CONCLUSIONS Under § 102, the Examiner did not err in rejecting claims 1-64. DECISION The Examiner’s decision rejecting claims 1-64 is affirmed. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. AFFIRMED Appeal 2013-003803 Reexamination Control 95/001,440 Patent 7,130,821 B1 11 PATENT OWNER: KENT B. CHAMBERS TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP PO BOX 203518 AUSTIN, TX 78720 THIRD PARTY REQUESTER: JEFFREY A. TINKER WINSTEAD PC PO BOX 131851 DALLAS, TX 75313