Ex Parte Ahluwalia

Board of Patent Appeals and Interferences

Oct 23, 2009

09542413 (B.P.A.I. Oct. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte GURPREET S. AHLUWALIA 8
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10
Appeal 2009-000442 11
Application 09/542,413 12
Technology Center 3600 13
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Decided: October 23, 2009 16
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Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. 19
FISCHETTI, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
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STATEMENT OF THE CASE 1
Gurpreet S. Ahluwalia (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1-41, the only claims pending in the 3
application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a way of reporting orders for consumer product 10
having specific configurations (Specification 1:5-6). 11
An understanding of the invention can be derived from a reading of 12
exemplary claim 1, which is reproduced below [bracketed matter and some 13
paragraphing added]. 14
1. An online system for generating reports related to 15
manufactured consumer product online orders, comprising: 16
[1] at least one presentation application operable to 17
[1a] capture user online session data including 18
a presentation application identifier, 19

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed December 15, 2005) and the Examiner’s Answer (“Ans.,” mailed
March 13, 2008).
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session identifier, 1
user data, 2
user click stream data, and 3
manufactured product configurations 4
selected by the user, 5
[1b] and generate a session report message incorporating 6
the user online session data; 7
[2] a web server 8
in communication with the presentation application and 9
operable to receive the session report message; and 10
[3] a report processor operable to receive the session report 11
message, and storing [sic] the user online session data in a 12
report database; 13
wherein the report processor is operable to generate a 14
report related to manufactured product online orders, 15
based on at least a portion of the information stored in the 16
report database. 17
THE REJECTIONS 18
The Examiner relies upon the following prior art: 19
Cathey US 5,778,182 Jul. 7, 1998
Brown US 5,794,219 Aug. 11, 1998
Bezos US 6,029,141 Feb. 22, 2000
Sutcliffe US 6,073,105 Jun. 6, 2000
Brandt US 6,377,993 B1 Apr. 23, 2002
Claims 1, 4, 5, 8, 14-18, 20, 29, 30, 31, 33, and 34 stand rejected under 20
35 U.S.C. § 103(a) as unpatentable over Bezos. 21
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Claims 3, 19, 32 stand rejected under 35 U.S.C. § 103(a) as unpatentable 1
over Bezos and Cathey. 2
Claims 2, 6, 7, 9, 10, 22, 23, 27, 28, 36, 37, 40, and 41 stand rejected 3
under 35 U.S.C. § 103(a) as unpatentable over Bezos and Brandt. 4
Claims 11, 26, 39 stand rejected under 35 U.S.C. § 103(a) as 5
unpatentable over Bezos and Sutcliffe. 6
Claims 12, 13, 21, 24, 25, 35, 38 stand rejected under 35 U.S.C. § 103(a) 7
as unpatentable over Bezos and Brown. 8
ARGUMENTS 9
The Appellant argues the independent claims 1, 14, and 29 as a group 10
and make no arguments supporting the dependent claims. Accordingly, we 11
select claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) 12
(2008). 13
The Appellant contends that the Bezos fails to describe the claimed 14
limitation of a manufactured product configuration (App. Br. 5-7) and that 15
the Examiner has not used the motivation found by the Examiner to modify 16
Bezos to incorporate such a configuration (App. Br. 4-5). 17
The Examiner found that the products described by Bezos had such 18
configurations. Ans. 5: 16-17. 19
ISSUE 20
The issue of whether the Appellant has sustained its burden of showing 21
that the Examiner erred in rejecting the claims turns on whether Bezos 22
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describes entering manufactured product configuration data or it would have 1
been predictable to enter such data in a system such as that in Bezos. 2
FACTS PERTINENT TO THE ISSUES 3
The following enumerated Findings of Fact (FF) are believed to be 4
supported by a preponderance of the evidence. 5
Facts Related to Claim Construction 6
01. The disclosure contains no lexicographic definition of 7
“manufactured product configuration.” 8
02. The phrase “manufactured product configuration” is a noun 9
“product” modified by the adjectival phrase “manufactured 10
product.” The phrase “manufactured product” in turn is a noun 11
“product” modified by the adjective “manufactured.” The plain 12
meaning of “manufactured product configuration” is therefore the 13
configuration of a manufactured product. 14
Facts Related to Appellant’s Disclosure 15
03. The disclosure admits that customers routinely entered 16
manufactured product configuration data when ordering Dell 17
computers at the time of filing. Spec. 3:31 – 4:9. 18
Facts Related to the Prior Art 19
Bezos 20
04. Bezos is directed to enabling a merchant to efficiently market 21
and sell goods in cooperation with network sites of respective 22
business partners, or "associates." Bezos 1:50-61. 23
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05. Associate catalog documents include product-specific 1
hyperlinks that allow potential customers to link to the merchant's 2
Web site to initiate purchases of such products from the merchant. 3
Each referral link includes the unique ID of the associate 4
(assigned upon enrollment) and the unique ID of the selected 5
product. If the customer subsequently purchases the selected 6
product from the merchant site (e.g., by filling out an order form 7
page and submitting the order), the referral processing software 8
automatically credits the referring associate for the referral by, for 9
example, applying a commission to an account of the associate. 10
Bezos 1:62 – 2:17. 11
06. The merchant site maintains a unified shopping cart data 12
structure ("shopping cart") for each ongoing customer shopping 13
session including at least: (i) the products that are currently 14
selected by the customer for prospective purchase, and (ii) the 15
referral source (if any) of each such product. To purchase the 16
products represented within the shopping cart, the customer 17
proceeds to a "check out" area of the merchant site and submits an 18
order. Bezos 2:48-61. 19
07. The unique product identifier may be the ISBN number of a 20
book. Bezos 7:26-29. 21
Facts Related to the Knowledge in the Art 22
08. Books are manufactured in a variety of configurations, 23
including hard and soft cover. Ans. 17. 24
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PRINCIPLES OF LAW 1
Obviousness 2
Section 103 forbids issuance of a patent when ‘the differences 3
between the subject matter sought to be patented and the prior art are 4
such that the subject matter as a whole would have been obvious at 5
the time the invention was made to a person having ordinary skill in 6
the art to which said subject matter pertains.’ 7
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). 8
9
In Graham, the Court held that that the obviousness analysis is 10
bottomed on several basic factual inquiries: “[(1)] the scope and content of 11
the prior art are to be determined; [(2)] differences between the prior art and 12
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 13
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 14
U.S. at 406. “The combination of familiar elements according to known 15
methods is likely to be obvious when it does no more than yield predictable 16
results.” Id. at 416. 17
ANALYSIS 18
The Appellant takes issue with the Examiner’s finding that the unique 19
product code such as a book’s ISBN number is a descriptor of a 20
manufactured product configuration. The Appellant argues that books 21
cannot be configured. App. Br. 6. 22
The disclosure contains no lexicographic definition of “manufactured 23
product configuration.” The plain meaning is the configuration of a 24
manufactured product. 25
The Examiner found that those of ordinary skill knew that books are 26
manufactured and came in various configurations, such as soft cover and 27
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hard cover. FF 08. We agree with the Examiner. Clearly books are 1
manufactured products that have such different configurations. Apparently 2
the Appellant means to say that books cannot be arbitrarily configured by a 3
customer, but none of the claims argued are this narrow. Instead the claims 4
argued have the customer select or submit a configuration. The scope thus 5
includes selecting or submitting configurations already made prior to the 6
customer’s action, such as selecting or submitting the configuration of a 7
book. Thus, the Appellant’s argument is not commensurate with the scope 8
of the claims. 9
In any event, the Examiner’s essential point is that selecting different 10
configurations was well known and this is supported by the Appellant’s 11
admitted prior art regarding Dell computers. FF 03. Thus, the provision of a 12
unique product code that specified the actual configured format of a book 13
met the limitation at issue. As to the motivation to selecting a configuration, 14
again the Examiner’s point was that the practice was well established. 15
As no other limitations or claims were argued, this is dispositive as to all 16
of the rejections. 17
CONCLUSIONS OF LAW 18
The Appellant has not sustained its burden of showing that the Examiner 19
erred in rejecting claims 1, 4, 5, 8, 14-18, 20, 29, 30, 31, 33, and 34 under 35 20
U.S.C. § 103(a) as unpatentable over Bezos. 21
The Appellant has not sustained its burden of showing that the Examiner 22
erred in rejecting claims 3, 19, 32 under 35 U.S.C. § 103(a) as unpatentable 23
over Bezos and Cathey. 24
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The Appellant has not sustained its burden of showing that the Examiner 1
erred in rejecting claims 2, 6, 7, 9, 10, 22, 23, 27, 28, 36, 37, 40, and 41 2
under 35 U.S.C. § 103(a) as unpatentable over Bezos and Brandt. 3
The Appellant has not sustained its burden of showing that the Examiner 4
erred in rejecting claims 11, 26, 39 under 35 U.S.C. § 103(a) as unpatentable 5
over Bezos and Sutcliffe. 6
The Appellant has not sustained its burden of showing that the Examiner 7
erred in rejecting claims 12, 13, 21, 24, 25, 35, 38 under 35 U.S.C. § 103(a) 8
as unpatentable over Bezos and Brown. 9
DECISION 10
To summarize, our decision is as follows. 11
• The rejection of claims 1, 4, 5, 8, 14-18, 20, 29, 30, 31, 33, and 34 12
under 35 U.S.C. § 103(a) as unpatentable over Bezos is sustained. 13
• The rejection of claims 3, 19, 32 under 35 U.S.C. § 103(a) as 14
unpatentable over Bezos and Cathey is sustained. 15
• The rejection of claims 2, 6, 7, 9, 10, 22, 23, 27, 28, 36, 37, 40, and 41 16
under 35 U.S.C. § 103(a) as unpatentable over Bezos and Brandt is 17
sustained. 18
• The rejection of claims 11, 26, 39 under 35 U.S.C. § 103(a) as 19
unpatentable over Bezos and Sutcliffe is sustained. 20
• The rejection of claims 12, 13, 21, 24, 25, 35, 38 under 35 U.S.C. § 21
103(a) as unpatentable over Bezos and Brown is sustained. 22
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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 2
3
AFFIRMED 4
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mev 8
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