Ex Parte Baird-Smith et al

Board of Patent Appeals and Interferences

Apr 28, 2010

10869416 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM KRESS BODIN and DERRAL CHARLES THORSON
____________

Appeal 2009-4472
Application 10/869,416
Technology Center 2100
____________

Decided: April 28, 2010
____________

Before JAMES D. THOMAS, JEAN R. HOMERE,
and CAROLYN D. THOMAS, Administrative Patent Judges.

J. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 27. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

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Invention
A system and method are provided to process listing data in a
network-based commerce system, for example, a network-based auction
facility. The method may comprise providing a user with a graphic user
interface to enter listing data in the network-based commerce system, the
listing data including at least one entered word. A database including a
plurality of reference words that relate to listings provided by the network-
based commerce system may then be investigated. If at least one entered
work is misspelled, the method may include identifying at least one
suggested word from the plurality of reference words and communicating
the at least one suggested word to the user. (Abstract ll. 1-9, Figs. 1, 2, 5, 6,
and 13).

Representative Claim

1. A method of processing listing data in a network-based commerce
system, the method comprising

providing a user with a graphic user interface to enter listing data in
the network-based commerce system, the listing data including at least one
entered word;

investigating a database including a plurality of reference words that
relate to listings provided by the network-based commerce system;

if at least one entered word is misspelled, identifying at least one
suggested word from the plurality of reference words; and

communicating the at least one suggested word to the user.

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Prior Art and Examiner’s Rejection
The Examiner relies on the following references as evidence of
anticipation and unpatentability:

Tedesco et al US 6,349,295 B1 Feb. 19, 2002
Madan US 7,062,482 B1 Jun. 13, 2006
Archive.org, “eBay Smart Search”, published 6 January
2001(hereinafter SSEBAY)

Claims 11 through 20 and 24 through 27 stand rejected under 35
U.S.C. § 101 as being directed to nonstatutory subject matter. Claims 1
through 3, 9, 11 through 14, 19, 21, 23, 24, 26, and 27 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Madan. All remaining claims on
appeal stand rejected under 35 U.S.C. § 103. As to claims 4 through 7, 10,
15 through 17, 20, 22, and 25 the Examiner relies upon Madan in view of
Tedesco. Lastly, as to claims 8 and 18, the Examiner relies upon Madan in
view of SSEBAY.

Claim Groupings
As to the rejection under 35 U.S.C. § 101, Appellants regard
independent claim 11 as representative of the subject matter of independent
claims 11, 24, and 27 as well as their respective dependent claims. Within
the rejection under 35 U.S.C. § 102, Appellants regard independent claim 1
as representative of the subject matter of independent claims 1, 11, 21, 24,
and 27 as well as their respective dependent claims within this rejection.
With respect to the separately stated rejections under 35 U.S.C.
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§ 103, Appellants rely for patentability on the subject matter of
representative independent claim 1 within the rejection under 35 U.S.C.
§ 102.

ISSUES
1. Did the Examiner err in finding that the subject matter of
representative independent claim 11 is directed to nonstatutory subject
matter?

2. Did the Examiner err with respect to the subject matter of
representative independent claim 1 of the clause reciting “investigating a
database including a plurality of reference words that relate to listings
provided by the network-based commerce system”?

FINDINGS OF FACT
1. Appellants’ system 10 in figure 1 includes a network-based trading
platform 12 that include marketplace applications 30 which are illustrated in
figure 2 to include a spell checker application 76. A generalized graphical
user interface for the user is shown in figure 5 with a specific application of
it including spell checker program in figure 6. Specification paragraph 64
begins a discussion of the spell checker search intelligence software module
generally depicted in figure 12. This module relates to the spell checker
application 76 in figure 2. A “machine-readable medium” is discussed in
paragraph [0049] as including “carrier wave signals.”

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2. Initially, we note that Madan’s abstract teaches:
In a network providing for electronic commerce, a computer
system provides a user with access to a set of electronic commerce
pages, category pages and databases for locating products
electronically. To locate products electronically, the user performs a
search using multiple words. The search terms in the search request
are converted to canonical phonetic forms, and a phonetic keyword
search based on the canonical phonetic forms is performed. The
phonetic key-word search is then used to generate search results.

Madan’s internet-based network is depicted in figure 1 that provides
the bases for various user searchable pages in product database 340, user
database 350, and hybrid customized product list page 370 as a form of a
database derived from the product database 340 and the user database 350,
all of which are illustrated in figure 3. Figure 4 depicts in flowchart form
the processing of a search request utilizing these databases to yield search
results using multiple canonical forms of the words in a search request. The
search request logic may entail the use of an encoder to produce these
canonical phonetic forms that yield key word searchable terms to be used in
searching the respective databases.
The Examiner relies upon this portion of the teachings at column 4
with respect to the showing in figure 3:
From starting page 300, a user can navigate to one of several
category pages (e.g., 310, 320, 330). In one embodiment, the category
pages provide information (e.g., photographs, prices, manufacturer)
related to various products offered for sale through the electronic
commerce site. In one embodiment, product information is provided

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in response to user requests by product database 340, which can be
implemented in any manner known in the art. Also, although not
shown in FIG. 3, product database 340 can also provide information
to starting page 300.

(Col. 4, ll. 28 - 37).

Lastly, the general understanding of the approach of Madan is taught
here:
Generating multiple canonical phonetic forms of the search
terms in a search request, and of keywords that potentially match the
search terms in the search request, increases the likelihood of finding
a word that has an unfamiliar spelling. A user is likely to spell an
unfamiliar word based on the way the user pronounces the word.
Because different users are likely to pronounce the same word
differently they are also likely to spell it differently in their search
requests, meaning there could be more than one way to spell the word
incorrectly. Thus, if there is only a single canonical phonetic form of
the word, many users will not be able to find the word. However,
generating multiple canonical phonetic forms of the word, and of
potential word matches, by analyzing each letter in the word in
connection with surrounding letters increases both the number of
canonical phonetic forms of the word for which to search, and the
number of canonical phonetic forms of words that can match the word
for which a user is searching. This increases the user’s chances of
finding the word, without the user having to use an accurate spelling
of the word to generate an effective search result.

(Col. 6, l. 65 - col. 7, l. 17).

PRINCIPLES OF LAW
Statutory Subject Matter
The subject matter of claims permitted within 35 U.S.C. § 101 must
be a machine, a manufacture, a process, or a composition of matter.
Moreover, our reviewing court has stated that “[t]he four categories [of
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§ 101] together describe the exclusive reach of patentable subject matter. If
the claim covers material not found in any of the four statutory categories,
that claim falls outside the plainly expressed scope of § 101 even if the
subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346,
1354 (Fed. Cir. 2007), reh’g en banc denied, 515 F.3d 1361 (Fed. Cir.
2008), cert. denied, 127 S. Ct. 70 (2008). Accord In re Ferguson, 558 F.3d
1359 (Fed. Cir. 2009). This latter case held that claims directed to a
“paradigm” are nonstatutory under 35 U.S.C. § 101 as representing an
abstract idea. Thus, a “signal” cannot be patentable subject matter because it
is not within any of the four categories. In re Nuijten, 500 F.3d at 1357.
Laws of nature, abstract ideas, and natural phenomena are excluded from
patent protection. Diamond v. Diehr, 450 U.S. at 185. A claim that recites
no more than software, logic or a data structure (i.e., an abstraction) does not
fall within any statutory category. In re Warmerdam, 33 F.3d 1354, 1361
(Fed. Cir. 1994).

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. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
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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). The properly interpreted claim
must then be compared with the prior art.

ANALYSIS
Rejection under 35 U.S.C. § 101
Our earlier-noted case law supports the Examiner’s positions initially
at pages 3 and 4 of the Answer as well as the Examiner’s Responses to
Argument at pages 16 and 17 of the Answer as to this rejection. With
respect to representative independent claim 11, the system of the preamble
appears to be a software system module that is directly claimed since this
preamble also recites a module that merely comprises a user interface
“component” as well as a query “component”, both of which appear to be
software only entities. The position at page 11 of the Brief that the claimed
“component” is said to imply some physical embodiment is directly
addressed at page 16 of the Answer, with which we fully agree. To the
extent claimed, there is no additional recitation of physical embodiments in
the form of structure or hardware as to these claimed elements. The mere
implication of some physical embodiment does not render the claimed
subject matter a physical embodiment. Additionally, the mere fact that a
component may be realized in hardware is not a specific recitation that it is a
physical hardware component as claimed.
The Examiner’s view that software per se is recited among the
rejected claims within this rejection is well-taken since representative claim
11 recites a computer module in its preamble that comprises the claimed two
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components in the body of the claim. All of this is amply justified based
upon our brief discussion of Appellants’ disclosed invention in finding of
fact 1. Additionally, within this finding of fact, the claimed machine
readable medium encompasses carrier wave signals which directly recite
transitory signals embodiments, such as to comprise signals per se. In
additional to the above-noted case law recited in this opinion, reference is
made to Subject Matter Eligibility of Computer Readable Media, 1351 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010). As a final manner, no specific
arguments are directed to the module recited in independent claim 27.
Again, based on Appellants’ disclosed invention, this claim is clearly
directed to a software module per se.
We therefore, affirm the rejection of claims 11 through 20 and 24
through 27 under 35 U.S.C. § 101 as being directed to nonstatutory subject
matter.

Art-Based Rejections
We turn now to the rejection of representative independent claim 1
under 35 U.S.C. § 102 as being anticipated by Madan. Appellants’
arguments at pages 12 through 14 of the Brief directly address only the
investigating clause of representative independent claim 1 on appeal urging
that neither the product database nor the user database corresponds to a
database including a plurality of reference words relating to listings provided
by the network based commerce system. Additionally, the position is taken
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that Madan does not teach reference words that relate to lists in a database
that includes a plurality of reference words that relates listings within the
system.
We agree with the Examiner’s views expressed as to these arguments
at pages 17 through 20 of the Answer. The discussion that we have
indicated in our finding of fact 2 with respect to Madan clearly indicates that
Appellants’ positions are not well-taken in light of the actual teachings in
this reference. Moreover, the Examiner appears to appreciate at page 18 of
the Answer that Appellants are urging that the Examiner can only find
anticipation with respect to the reference that teaches the exact same words
as recited in independent claim 1 on appeal. On the other hand, the actual
teachings outlined by the Examiner and that we have emphasized in finding
of fact 2 indicate that not only does the product database 340 at Figure 3 of
Madan contains multiple words or listings of them, they are investigated to
the extent claimed by the logic of search requests being undertaken within
the teachings in Madan. Therefore, Madan is considered to teach a specific
example of the generically claimed reference words within the database as
well as their corresponding plurality of listings associated with them based
upon product names in different forms.
No Reply Brief has been filed in this appeal to contest the Examiner’s
responsive arguments in the Answer.

CONCLUSIONS AND DECISION
Appellants have not shown that the Examiner erred in finding that the
subject matter of representative independent claim 11 on appeal is directed
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to nonstatutory subject matter within 35 U.S.C. § 101. We therefore affirm
the rejection of claims 11 through 20 and 24 through 27. In a similar
manner, Appellants have not shown that the Examiner erred that Madan
teaches the subject matter of the investigating clause of representative
independent claim 1 on appeal. Therefore, we also sustain the rejection of
all the claims before us rejected under 35 U.S.C. § 102. Since Appellants
rely for patentability upon the arguments presented as to representative
independent claim 1 within this rejection under 35 U.S.C. § 102 for those
claims separately rejected under 35 U.S.C. § 103, the rejection of them is
affirmed as well. All claims on appeal are unpatentable.
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

pgc

SCHWEGMAN, LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402