Ex Parte Au et al

Board of Patent Appeals and Interferences

Sep 22, 2010

10751742 (B.P.A.I. Sep. 22, 2010)

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.
10/751,742 01/05/2004 Michael K. Au CA920030049US1 (292) 3098
46320 7590 09/23/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
DUNHAM, JASON B
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
09/23/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL K. AU,
CONAN MING Y. CHAN,
SAU CHU CHAN,
LEV MIRLAS, and
ALEX SHUM
____________

Appeal 2009-012763
Application 10/751,742
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012763
Application 10/751,742
2

STATEMENT OF THE CASE
Michael K. Au, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-20. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.2

THE INVENTION
The invention is an “online marketplace for multiple buyers and
suppliers. Specification 3:2-3.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of creating a marketplace with
hosted supplier stores comprising the steps of:
providing tools for creating and managing a
hosted supplier store to each of a plurality of
suppliers through a commerce site, said tools
including a catalog facility for uploading and
managing a supplier catalog for said hosted
supplier store;
receiving a plurality of supplier catalogs
from said plurality of suppliers;
aggregating said plurality of supplier
catalogs into an aggregated catalog; and

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 6, 2008) and Reply Brief (“Reply Br.,” filed Nov. 30, 2008),
and the Examiner’s Answer (“Answer,” mailed Oct. 1, 2008).
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providing a buyer with access to said
aggregated catalog and separate access to at least
one of said plurality of supplier catalogs on said
commerce site.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Flaxer
Haynes
US 2003/0033218 A1
US 2006/0218052 A1
Feb. 13, 2003
Sep. 28, 2006
The following rejections are before us for review:
1. Claims 1-3, 6-9, 12-15, and 18-19 are rejected under 35 U.S.C.
§102(e) as being anticipated by Haynes.
2. Claims 4-5, 10-11, 16-17, and 20 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Haynes and Flaxer.

ISSUES
The issue is whether claims 1, 6-7, 12-13, and 18-19 are anticipated
under 35 U.S.C. § 102(e) by Haynes. Specifically, the major issue is
whether Haynes describes: 1) receiving a plurality of supplier catalogs from
said plurality of suppliers and aggregating said plurality of supplier catalogs
into an aggregated catalog and 2) providing a buyer with access to said
aggregated catalog and separate access to at least one of said plurality of
supplier catalogs on said commerce site. The rejection of claims 4-5, 10-11,
16-17, and 20 under 35 U.S.C. §103(a) as being unpatentable over Haynes
and Flaxer also turn on this issue.
The second issue is whether claims 2, 8, and 14 are anticipated under
35 U.S.C. § 102(e) by Haynes. Specifically, the issue is whether the
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Examiner has established that Haynes describes “providing a supplier hub
catalog topology” and “wherein said step of aggregating includes
aggregating said supplier catalog according to said supplier hub catalog
topology.”
The third issue is whether claims 3, 9, and 15 are anticipated under 35
U.S.C. § 102(e) by Haynes. Specifically, the issue is whether the Examiner
has established that Haynes describes that “said buyer accesses said
aggregated catalog through one of said hosted supplier stores owned by one
of said suppliers.”
The fourth issue is whether claim 6 is anticipated under 35 U.S.C.
§ 102(e) by Haynes. Specifically, the issue is whether Haynes describes
“developing requests for quotations for made-to-order items.”

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
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unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. The Specification does not include an express definition of
aggregating or aggregated.
2. A definition of the verb aggregate is “to collect or gather into a
mass or a whole.” (See Merriam-Webster’s Collegiate Dictionary
23 (10th Ed. 1998.)
3. A definition of the adjective aggregate is “formed by the collection
of units or particles into a body, mass, or amount” or “taking all
units as a whole.” (See Merriam-Webster’s Collegiate Dictionary
23 (10th Ed. 1998.)
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Haynes
4. Haynes describes a system that includes a searchable database that
stores catalogs and that is connected to a plurality of buyers and
suppliers. Haynes [0017] and [0018].
5. Haynes’ paragraph [0050] describes that “[a]lso included are all of
the catalogues for each of the suppliers” in data warehouse 36. See
also Haynes [0048] and [0052].
6. Haynes’ paragraph [0056] states:
In operation, the catalogue of each of the suppliers
may be stored in a memory or database of it’s
terminal 14. Though not shown in FIG. 1, the
external system 28 may be coupled to a terminal
14 of a selected supplier, whereby its catalogue of
products and/or services may be downloaded to the
system 10 an, in particular, applied to the server
46, which in turn transmits such data via the
database server 34 to the data warehouse 36, where
the product and/or services catalogue of the
suppliers are stored.
7. Haynes’ Figure 1 is a diagram of the arrangement of servers and
databases of the system in Haynes. Haynes [0028].
8. Haynes’ paragraph [0089] describes a supplier assigning a
category or relationship to an item, which can then be searched for
in the catalog by the category or relationship. See also Fig. 6G.
9. Haynes’ paragraph [0048] describes a buyer accessing buyer site
22a provided by a web server 20 of the system 100.
10. Haynes’ paragraph [0049] describes a vendor accessing system
100 via the vendor site 22b.
11. Paragraph [0059] of Haynes states: “If the buyer hits a “Request
for Proposal” button 223d, the buyer causes a message describing a
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particular product to be transmitted to selected suppliers with a
request for bid from each of those designated suppliers for the
particular product.”
12. Haynes also describes that the products can be customized, such as
with select trademarks or logos. See Haynes [0095] – [0102].

ANALYSIS
The rejection of claims 1-3, 6-9, 12-15, and 18-19 under 35 U.S.C. §102(e)
as being anticipated by Haynes.
Claims 1, 7, 12, 13, 18 and 19
The Appellants argued claims 1, 7, 12, 13, 18 and 19 as a group (See
App. Br. 5-15). We select claim 1 as the representative claim for this group,
and the remaining claims 7, 12, 13, 18 and 19 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii) (2009).
Initially, we note that the Appellants make a general argument that the
Examiner has not established a prima facie showing of anticipation. App.
Br. 5-10 and Reply Br. 2. However, as to claim 1, we find that the Examiner
has shown than every element is either inherently or expressly described in
Haynes and therefore, has established a prima facie showing of anticipation.
See Answer 3-4.
Now, we turn to the Appellants’ specific arguments. The Appellants
argue that Haynes does not describes: 1) receiving a plurality of supplier
catalogs from the plurality of suppliers and aggregating the plurality of
supplier catalogs into an aggregated catalog and 2) providing a buyer with
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access to the aggregated catalog and separate access to at least one of the
plurality of supplier catalogs on the commerce site.
Turning to the Appellants’ first argument, the Appellants argue that
Haynes does not describe “(i) a plurality of supplier catalogs; (ii) receiving
the plurality of supplier catalogs; (iii) a plurality of suppliers; (iv)
aggregating the plurality of supplier catalogs; and (v) an aggregated
catalog.” App. Br. 10.
Contrary to the Appellants’ argument, we find that Haynes expressly
describes: (i) a plurality of supplier catalogs; (ii) receiving the plurality of
supplier catalogs and (iii) a plurality of suppliers. We note that Haynes
states:
In operation, the catalogue of each of the suppliers
may be stored in a memory or database of its
terminal 14. Though not shown in FIG. 1, the
external system 28 may be coupled to a terminal
14 of a selected supplier, whereby its catalogue of
products and/or services may be downloaded to the
system 10 an, in particular, applied to the server
46, which in turn transmits such data via the
database server 34 to the data warehouse 36, where
the product and/or services catalogue of the
suppliers are stored.
Haynes [0056]. See also FF 5 (catalogues for each supplier are also
described through out Haynes).
We also find that Haynes expressly describes: (iv) aggregating the
plurality of catalogs and (v) and an aggregated catalog. We agree with the
Examiner that the step of aggregating said plurality of supplier catalogs into
an aggregated catalog reads on Haynes description of downloading the
supplier’s catalogs to store the catalogs in data warehouse 36. See Answer
10. As to the Appellants’ argument that aggregating requires some sort of
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Application 10/751,742
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transformation of the data, we find no such requirement. Reply Br. 6-7
(“The step of aggregating is a step that transforms the entities (i.e. supplier
catalogs) in a single aggregated catalog via the technique of aggregation.”).
We find that aggregating, when given the broadest reasonable meaning in
light of the Specification (see FF 1), requires nothing more than collecting
the supplier’s catalogs into a whole (see FF 2). Further, we find that an
“aggregated catalog”, when given the broadest reasonable meaning in light
of the Specification, encompasses a catalog which is formed by a collection
of catalogs (see FF 3). Given this, we find that the step of aggregating said
plurality of supplier catalogs into an aggregated catalog reads on Hayne’s
database, which is specifically described as storing a collection of supplier
catalogs (see FF 5-6).
Turning to the Appellants’ second argument, the Appellants argue that
Haynes does not describe that “a user is able to access a supplier catalog,
which is separate from the aggregated catalog.” App. Br. 15. However,
claim 1 does not require that the supplier catalog is separate from the
aggregated catalog as the Appellants seem to argue (Id.) Claim 1 states
“providing a buyer with access to said aggregated catalog and separate
access to at least one of said plurality of supplier catalogs on said commerce
site.” (Emphasis added.) It is the “access” that is separate and not the
catalogs. “Many of appellant’s arguments fail from the outset because, . . .
they are not based on limitations appearing in the claims . . . .” In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
Accordingly, we find that the Appellants have not overcome the
rejection of claims 1, 7, 12, 13, 18 and 19 under 35 U.S.C. § 102(e) as being
anticipated by Haynes.
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Claims 2, 8, and 14
Claim 2 recites “providing a supplier hub catalog topology” and
“wherein said step of aggregating includes aggregating said supplier catalog
according to said supplier hub catalog topology.” The Appellants argue that
Figure 1 and paragraph [0089] of Haynes, which were cited by the
Examiner, does not describe these steps. App. Br. 15-16 and Reply Br. 7.
The Examiner does not specifically respond to these arguments, but merely
refers to the arguments made with regards to claim 1. See Answer 11.
Figure 1 is a diagram of the arrangement of servers and databases of
the system in Haynes. FF 7. Paragraph [0089] describes a supplier
assigning a category or relationship to an item, which can then be searched
for in the catalog by the category or relationship. FF 8. We fail to see how
this describes the aggregating said supplier catalog according to said
supplier hub catalog topology and the Examiner provides no explanation.
We note that claims 8 and 14 recite similar limitations, and our
reasoning above applied equally to the rejection of those claims.
Accordingly, we find that the Appellants have overcome the rejection of
claims 2, 8, and 14 under 35 U.S.C. § 102(e) as being anticipated by Haynes.

Claims 3, 9, and 15
Claim 3 recites “said buyer accesses said aggregated catalog through
one of said hosted supplier stores owned by one of said suppliers.” The
Appellants argue that paragraph [0048] of Haynes, which was cited by the
Examiner, does not teach this limitation. App. Br. 16-17 and Reply Br. 8.
In the rejection, the Examiner cites paragraph [0048] of Haynes and states
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that a buyer accessing the catalog through a vendor site is disclosed.
Answer 5. See also Answer 11. However, paragraph [0048] describes a
buyer accessing buyer site 22a provided by a web server 20 of the system
100. FF 9. We note that paragraph [0049] describes a vendor accessing
system 100 via the vendor site 22b. FF 10.
Claims 9 and 15 recite similar limitations, and our reasoning above
applied equally to the rejection of those claims. Accordingly, we find that
the Appellants have overcome the rejection of claims 3, 9, and 15 under 35
U.S.C. § 102(e) as being anticipated by Haynes.

Claim 6
Claim 6 recites “developing requests for quotations for made-to-order
items.” The Appellants argue that paragraphs [0058] and [0059] of Haynes,
which the Examiner cited, does not describe this feature. App. Br. 17-18
and Reply Br. 9.
We find that Haynes describes this step. Paragraph [0059] of Haynes
states “If the buyer hits a “Request for Proposal” button 223d, the buyer
causes a message describing a particular product to be transmitted to
selected suppliers with a request for bid from each of those designated
suppliers for the particular product.” FF 11. Haynes also describes that the
products can be customized with select trademarks or logos. FF 12.
Accordingly, we find that the Appellants have not overcome the
rejection of claim 6 under 35 U.S.C. § 102(e) as being anticipated by
Haynes.

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The rejection of claims 4-5, 10, 11, 16, 17, and 20 under 35 U.S.C. §103(a)
as being unpatentable over Haynes and Flaxer.
We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claims 4-5, 10, 11, 16, 17, and 20 as being unpatentable over
Haynes and Flaxer since the Appellants have not challenged such with any
reasonable specificity (see App. Br. 18), thereby allowing claims 4-5, 10, 11,
16, 17, and 20 to stand or fall with parent claims 1, 7, 13, and 19 (see In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).

DECISION
The decision of the Examiner to reject claims 1, 4-7, 10-13, and 16-20
is affirmed and to reject claims 2, 3, 8, 9, 14 and 15 is reversed.

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) (2007).

AFFIRMED-IN-PART

mev

CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON FL 33487