Ex Parte Abraham et al

Patent Trial and Appeal Board

Sep 21, 2017

13366962 (P.T.A.B. Sep. 21, 2017)

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.
13/366,962 02/06/2012 Jack Phillip Abraham 2043.909US1 7919
49845 7590 09/25/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
BIBBEE, JARED M
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
USPTO@SLWIP.COM
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK PHILLIP ABRAHAM, AARON ADELSON,
MATTHEW BARTO, THEODORE JAMES DZIUBA,
JOHN EVANS, NEVILLE NEWEY,
and JUSTIN VAN WINKLE
Appeal 2017-002105
Application 13/3 66,9621
Technology Center 2100
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Technology
The application relates to “obtaining current data about products and
their availability from a wide variety of data sources, such as web sites,
network-connected databases, inventory systems, and so forth.” Spec. 1 6.
1 According to Appellants, the real party in interest is Ebay Inc. App. Br. 3.
Appeal 2017-002105
Application 13/366,962
Illustrative Claim
Claim 13 is illustrative and reproduced below with the claim language
at issue emphasized:
13. A product search engine comprising:
one or more processors for executing one or more sets of
instructions stored in memory;
a first set of executable instructions stored in the memory
and representing an instance of a crawler application, which,
when executed, is to perform a set of operations specified in a
crawler configuration file that has been generated with a web-
based crawler configuration application, the performance of the
set of operations resulting in the retrieval of product inventory
information for one or more products hosted at one or more web
servers;
a second set of executable instructions stored in the
memory and representing an instance of a real-time product
availability lookup (RTP AL) application, the RTP AL
application, when executed, to use one or more application
programming interfaces (APIs) to request and receive product
inventory information from one or more third-party network-
connected inventory management systems;
a third set of executable instructions representing a
product offering matching module, which, when executed, is to
determine that received product inventory information for a
particular product does not specify a unique product identifier
and then perform a matching operation by comparing various
elements of information concerning the particular product with
corresponding information from one or more known products to
determine a product with which the product inventory best
matches; and
a database module to store the product inventory
information in the database.
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Rejections
Claims 1—3, 7—9, and 13—15 stand rejected under 35 U.S.C. § 103(a)
as obvious over the combination of Hey don et al., Mercator: A Scalable,
Extensible Web Crawler (1999); Stutts et al. (US 2002/011880 Al; Aug. 15,
2002); Moore (US 2005/0116033 Al; June 2, 2005); and Johnson et al. (US
2012/0246022 Al; Sept. 27, 2012). Non-Final Act. 3.
Claims 4, 5, 10, 11, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Heydon, Stutts, Moore,
Johnson, and Liu et al. (US 2005/0075926 Al; Apr. 7, 2005). Non-Final
Act. 7.
Claims 6, 12, and 18 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Heydon, Stutts, Moore, Johnson, and
Arguello (US 2010/0125497 Al; May 20, 2010). Non-Final Act. 9.
ISSUES
1. Did the Examiner err in finding Heydon teaches or suggests “a
crawler configuration file that has been generated with a web-based crawler
configuration application,” as recited in independent claims 1, 7, and 13?
2. Did the Examiner err in finding Heydon teaches or suggests
“the web-based crawler configuration application enables a user to specify
one of a suite of web crawlers,” as recited in dependent claims 2 and 8?
3. Did the Examiner err in finding Heydon teaches or suggests
“the web-based crawler configuration application enables a user to invoke a
code editing application to specify customized code for obtaining a
particular element of product inventory information, the customized code for
inclusion in a crawler configuration file for use with a particular crawler,” as
recited in dependent claims 3 and 9?
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4. Did the Examiner err in finding Liu teaches or suggests “storing
product inventory information ... in a data cache with each cache entry
having a cache key based on a zipcode for a location at which the product is
available,” as recited in dependent claims 4 and 10?
5. Did the Examiner err in finding Arguello teaches or suggests
“indicating a quantity of the particular product available at each merchant
store,” as recited in dependent claims 6 and 12?
ANALYSIS
Claims 1, 5, 7, 11, and 13—18
All three independent claims (1,7, and 13) recite “a crawler
configuration file that has been generated with a web-based crawler
configuration application.”
The Examiner relies on Heydon for teaching or suggesting this
crawler configuration file. Non-Final Act. 3—A. Heydon discloses:
A mechanism must exist for specifying how the crawler is to be
configured from its various components. In Mercator, this is
done by supplying a configuration file to the crawler when it
starts up. Among other things, the configuration file specifies
which additional protocol and processing modules should be
used, as well as the concrete implementation to use for each of
the crawler’s “pluggable” components. When Mercator is
started, it reads the configuration file, uses Java’s dynamic class
loading feature to dynamically instantiate the necessary
components, plugs these instances into the appropriate places in
the crawler core’s data structures, and then begins to crawl.
Heydon § 4 (“Extensibility”). Given these teachings, “[i]t is the Examiner’s
position that Mercator is the crawler configuration application.” Ans. 10.
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Appellants concede “Mercator 'reads' a configuration file,” but argue
“[rjeading a configuration file is not equivalent to ‘generating’ a
configuration file.” Reply Br. 4.
We agree with Appellants. Heydon never discloses what generates
the configuration file. The Examiner has not sufficiently articulated whether
or why it would have been obvious to generate the configuration file with
Mercator (or any “web-based crawler configuration application”) rather
than, for example, generating it manually by a human programmer using a
text editor. Given this record, the Examiner has not shown Heydon teaches
or suggests a crawler configuration file “that has been generated with a web-
based crawler configuration application.”
Nevertheless, a file “that has been generated with a web-based crawler
configuration application” recites the process by which a file is made. We
therefore must address whether this implicates a “product-by-process”
format. See MPEP § 2113 (9th ed., Rev. 07.2015, Nov. 2015).
“A product-by-process claim is ‘one in which the product is defined at
least in part in terms of the method or process by which it is made.
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir.
2006) (quoting Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
141, 158 n.* (1989)).
While the patent statute does not provide for product-by-process
claims, the courts have long recognized the appropriateness of
such claims. The purpose of product-by-process claims is to
allow inventors to claim an otherwise patentable product that
resists definition by other than the process by which it is made.
Thus, an inventor will not be foreclosed from the benefits of the
patent system simply because a product is difficult to describe in
words, or its structure is insufficiently understood. Today,
however, product-by-process claims are used by inventors even
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if the invention could have been described independent of the
process.
SmithKline, 439 F.3d at 1315 (citations and quotation omitted).
Product-by-process claims, however, do come at a cost. “In
determining validity of a product-by-process claim, the focus is on the
product and not on the process of making it.” Amgen Inc. v. F. Hoffman-La
Roche Ltd., 580 F.3d 1340, 1369 (Fed. Cir. 2009). “That is because of the
already described, long-standing rule that an old product is not patentable
even if it is made by a new process.” Id. at 1370. As a result, “a patent is
invalid if a product made by the process recited in a product-by-process
claim is anticipated by or obvious from prior art products, even if those prior
art products are made by different processes.” Id. at 1370 n.14.
The question we must next address then is whether the claimed
process “resulted in a new product.” Amgen, 580 F.3d at 1367. For
example, processes such as “welded” or “etched” may impart structural
limitations that distinguish the product from the prior art. See, e.g., In re
Garnero, 412 F.2d 276, 279 (CCPA 1969). Here, we have not seen any
evidence that the “crawler configuration file” would be any different based
on what generated it. To the contrary, the file could be bit-for-bit identical
regardless of whether it was generated by a web-based crawler configuration
application, any other application, or a human using a text editor. See, e.g.,
claim 3 (reciting a user can invoke a code editing application to insert
customized code directly into the configuration file). We therefore are not
persuaded the language “that has been generated with a web-based crawler
configuration application” distinguishes the product from the prior art,
instead only distinguishing the process by which that product is made.
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The next question is whether the law regarding a product-by-process
is applicable to all of the independent claims (13,7, and 1). The three
independent claims are similar but directed to a “product search engine”
(claim 13), a “machine-readable storage medium storing instructions”
(claim 7), and a method (claim 1). The relevant portions of each is recited
below with the disputed language emphasized.
13. A product search engine comprising:
. . . instructions . . . representing an instance of a crawler
application, which, when executed, is to perform a set of
operations specified in a crawler configuration file that has been
generated with a web-based crawler configuration application
7. A machine-readable storage medium storing instructions . . .
which, when executed . . ., will cause the server to perform a set
of operations comprising:
executing . . . instructions representing an instance of a
crawler application, the instance of the crawler application to
perform a set of operations specified in a crawler configuration
file that has been generated with a web-based crawler
configuration application ....
1. A method . . . comprising:
. . . executing . . . instructions representing an instance of
a crawler application, the instance of the crawler application to
perform a set of operations specified in a crawler configuration
file that has been generated with a web-based crawler
configuration application ....
It is straightforward that claims 7 and 13 are product-by-process
claims because the claims are directed to a product (i.e., a “machine-
readable storage medium” or a “product search engine”) and “the product is
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defined at least in part in terms of the method or process by which it is
made.’” SmithKline, 439 F.3d at 1315 (quoting Bonito Boats, 489 U.S. at
158 n.*). “Where a product-by-process claim is rejected over a prior art
product that appears to be identical, although produced by a different
process, the burden is upon the applicants to come forward with evidence
establishing an unobvious difference between the claimed product and the
prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). We
see no such unobvious difference in the claimed product here. As discussed
above, whether the crawler configuration file “has been generated with a
web-based crawler configuration application” does not impart any structural
difference on the “product search engine” of claim 13, the “machine-
readable storage medium storing instructions” in claim 7, or the “crawler
configuration file” in both claims.
Claim 1, however, is a method claim. Method claims can and
frequently do recite structural components. See, e.g., Eaton Corp. v.
Rockwell Inti Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“The presence
of these structures permits the performance of the first step of the claimed
method”); Microprocessor Enhancement Corp. v. Texas Instruments Inc.,
520 F.3d 1367, 1374 (Fed. Cir. 2008) (“Method claim preambles often recite
the physical structures of a system in which the claimed method is
practiced”). Neither the Supreme Court nor the Federal Circuit, however,
has ever directly addressed how to treat a method claim containing a
structural limitation written in a product-by-process format.
We hold that a structural limitation written in a product-by-process
format should be analyzed the same way regardless of whether the claim is
directed to a “process [i.e., a method], machine, manufacture, or
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composition of matter.” 35 U.S.C. § 101. This respects the actual words in
the claim chosen by an applicant and promotes consistency in the treatment
of such claim language.
“It is a ‘bedrock principle’ of patent law that the claims of a patent
define the invention to which the patentee is entitled the right to exclude.”
Phillips v. AWHCorp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
(quotation omitted). Thus, “[t]he claim construction inquiry begins and ends
in all cases with the actual words of the claim.” Homeland Housewares,
LLC v. Whirlpool Corp., 865 F.3d 1372, 1375 (Fed. Cir. 2017) (quotation
omitted). Here, the actual words of the claim recite a product-by-process
format, namely “a crawler configuration file that has been generated with a
web-based crawler configuration application.” The product-by-process
format is substantively different than a recitation of a method step, such as
“generating a crawler configuration file with a web-based crawler
configuration application.” For example, if person A generated a product
using a process (possibly outside the U.S.) and person B sold that product
(inside the U.S.), person B might directly infringe a product-by-process
claim but would not directly infringe a claim with a method step requiring
use of the process to make the product. On the other hand, a product-by­
process claim might be found obvious over an identical product made by a
different process, whereas a method step requiring use of the process would
not. Thus, choosing between a product-by-process format and a method step
can have important implications for both infringement and validity. An
applicant is in the best position to choose which format is most appropriate
for his or her particular inventions, industries, and desired outcomes. Our
decision therefore empowers applicants and respects the actual claim
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language chosen by the applicant. Here, the applicant’s chosen claim
language is a product-by-process format.
Treating a product-by-process format the same in both method claims
and apparatus claims also promotes consistency, which is beneficial to
applicants, examiners, and courts alike. As the Federal Circuit has said, “the
principle that the same phrase in different claims of the same patent should
have the same meaning is a strong one, overcome only if it is clear that the
same phrase has different meanings in different claims.” In re Varma, 816
F.3d 1352, 1363 (Fed. Cir. 2016) (quotation omitted). Here, there is no
indication that Appellants intended the same phrase (“a crawler
configuration file that has been generated with a web-based crawler
configuration application”) to be treated any differently in a method claim
(e.g., claim 1) than an apparatus claim (e.g., claim 13). Thus, construing the
same phrase in different ways for different claims would create confusion
with no apparent benefit.
We therefore treat “a crawler configuration file that has been
generated with a web-based crawler configuration application” as a product-
by-process limitation in all three independent claims.
Accordingly, we sustain the Examiner’s rejection of independent
claims 1,7, and 13, and their dependent claims 5, 11, and 14—18,2 which
Appellants do not argue separately. See App. Br. 22; 37 C.F.R.
§ 41.37(c)(l)(iv).
2 In the event of further prosecution, the Examiner may wish to consider
whether claims 14—18 are indefinite under 35 U.S.C. § 112, second
paragraph. Dependent claims 14—18 all begin, “The method of claim 13
. . . .” Claim 13, however, recites a “product search engine,” not a method.
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Claims 2 and 8
Claim 2 depends from claim 1 and further recites “the web-based
crawler configuration application enables a user to specify one of a suite of
web crawlers for use with a particular crawler configuration file generated
by the web crawler configuration application.” Claim 8 recites
commensurate language but depends from independent claim 7.
We note the additional claim language recites that “the” application
enables certain functionality with respect to “a particular” crawler
configuration file. But “a particular” crawler configuration file is not
necessarily the same crawler configuration file recited in the independent
claims. Thus, claims 2 and 8 do not necessarily affect the structure of the
crawler configuration file recited in the independent claims. Moreover, the
only prior recitation of a “web-based crawler configuration application” is in
the independent claims’ product-by-process format limitation discussed
above (“a crawler configuration file that has been generated with a web-
based crawler configuration application”), so any additional language
regarding “the web-based crawler configuration application” affects only the
process in the product-by-process limitation, not the product. Claims 2 and
8 therefore do not resolve the product-by-process issue discussed above.
Accordingly, we sustain the Examiner’s rejection of claims 2 and 8.3
3 We note Appellants argued claims 2 and 8 under the same heading as
claim 1, despite providing a separate argument for claims 2 and 8. See App
Br. 15—16. By regulation, “any claim(s) argued separately or as a subgroup
shall be argued under a separate subheading that identifies the claim(s) by
number.” 37 C.F.R. § 41.37(c)(l)(iv). Appellants should use appropriate
subheadings in the future if they want such arguments considered.
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Claims 3 and 9
Claims 3 and 9 depend from independent claims 1 and 7 respectively
and further recite “the web-based crawler configuration application enables a
user to invoke a code editing application to specify customized code for
obtaining a particular element of product inventory information, the
customized code for inclusion in a crawler configuration file for use with a
particular crawler.” Again, the only prior recitation of a “web-based crawler
configuration application” comes from the product-by-process limitation in
the independent claims.
Just as with claims 2 and 8, the recitation of “a” crawler configuration
file in claims 3 and 9 is not necessarily the same crawler configuration file
recited in the independent claims and therefore does not create a “new
product” in the independent claims. See Amgen, 580 F.3d at 1367. And just
as in claims 2 and 8, “the web-based crawler configuration application”
appears only in the process of a product-by-process limitation. Claims 3 and
9 therefore do not resolve the product-by-process issue discussed above.
Accordingly, we sustain the Examiner’s rejection of claims 3 and 9.
Claims 4 and 10
Claims 4 and 10 recite “storing product inventory information ... in a
data cache with each cache entry having a cache key based on a zipcode for
a location at which the product is available.'1'’
The Examiner relies on the tables of Liu for teaching these limitations.
Ans. 14 (citing Liu H 166—69).
Liu discloses separate tables for product information as opposed to
market information. “Product information is stored in two tables:
InlkProduct and InlkBrand.” Liu 1166. For the product tables, the primary
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key is typically the universal product code (UPC). Id. Tflf 166—67. We agree
with Appellants that the UPC is not a zip code. App. Br. 20.
Liu also teaches “[mjarket information is stored in several tables
including: InlkMarket, MarketZipCode, and Geographies.” Liu 1168.
“[S]uch tables are used to divide the product market into multiple
geographic markets. Typically zip codes are used for this.” Id. Thus, the
market information tables are organized by zip code. Nevertheless, the
Examiner has not sufficiently explained how the market tables or their zip
codes relate to “product inventory information” or “a location at which the
product is available.” Instead, Liu discloses the market tables associate each
zip code with identifiers or descriptions (e.g., “Southern Menlo Park”). Liu
1169 (“the Geographies table stores the correspondence of the zipcode to
physical geographic region”; “MarketZipCode table typically stores the
correspondence between the mktid and zip code”; “InlkMarket may store
data such as a market identifier (mktid)[,] .... a name of the market (e.g.
Zip codes 94301-94305), and a description of the market (e.g. Northern Palo
Alto).”). Yet it is not clear whether or how Liu’s market tables relate to
product inventory. See App. Br. 20.
Accordingly, we do not sustain the Examiner’s rejection of claims 4
and 10.
Claims 6 and 12
Claims 6 and 12 recite “indicating a quantity of the particular product
available at each merchant store.”
The Examiner relies on Arguello for teaching this limitation, finding
that in Arguello, “various stores are shown to have the product available”
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which “means the stores have at least one in quantity.” Ans. 15 (citing
Arguello ]Hf 79—80).
Appellants argue “[tjhere is no disclosure in Arguello of indicating
the number of the particular product A Reply Br. 10. “While an indication
that a product is available means that at least one is available, it is not an
indication of the quantity of the product.” Id.
We agree with Appellants. Although Arguello teaches indicating that
the particular product is available at each merchant store, Arguello does not
teach indicating a quantity of the particular product available at each
merchant store. The Examiner’s interpretation renders the term “a quantity”
superfluous. “It is highly disfavored to construe terms in a way that renders
them void, meaningless, or superfluous.” Wasica Fin. GmbHv. Cont’l Auto.
Sys., Inc., 853 F.3d 1272, 1288 n.10 (Fed. Cir. 2017).
Accordingly, we do not sustain the Examiner’s rejection of claims 6
and 12.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1—3, 5, 7, 8, 9, 11, and 13—18, but reverse the Examiner’s decision
rejecting claims 4, 6, 10, and 12.
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.
§ 41.50(f).
AFFIRMED-IN-PART
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