Ex Parte Brown et al

Board of Patent Appeals and Interferences

Jan 30, 2009

09895932 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL WAYNE BROWN, RABINDRANATH DUTTA,
MICHAEL A. PAOLINI and JAMES NEWTON SMITH, JR.
____________

Appeal 2008-5477
Application 09/895,932
Technology Center 3600
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Decided:1 January 30, 2009
____________

Before, ANTON W. FETTING, DAVID B. WALKER, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5477
Application 09/895,932

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1, 2, 4-6, 8-10, 12-14, 16-18, 20-22, 24, and 25.
Claims 3, 7, 11, 15, 19, 23, and 26-35 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants claim a system and method for brokering a design among
remote and local manufacturers such that a customer obtains a locally
assembled, cost effective product. (Specification 1:25-28)
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for coordinating a plurality of local and remote
manufacturers for a manufacturing order, said method comprising the
steps of:

facilitating, by at least one broker server, user selection of a
customized manufacturing order for a product to be manufactured,
after placement of said customized manufacturing order, by a
particular local manufacturer selected by said user from among a
plurality of local manufacturers, wherein said plurality of local
manufacturers locally distribute manufactured products to said user
without shipping said manufactured products;

dividing, by said broker server, said customized manufacturing
order for said user into a plurality of manufacturable parts;

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submitting, by said broker server, a local bid request for said
manufacturing order to said plurality of local manufacturers;

receiving, by said broker server, at least one local bid for said
manufacturing order from at least one of said plurality of local
manufacturers specifying a selection of said plurality of
manufacturable parts required to be manufactured by a remote
manufacturer for said at least one of said plurality of local
manufacturers to produce said customized manufacturing order;

submitting, by said broker server, a remote bid request to a
plurality of remote manufacturers for said selection of said plurality of
manufacturable parts as requested in said at least one local bids;

responsive to said broker server receiving at least one
remote bid for at least one of said selection of said plurality of
manufacturable parts, compiling, by said broker server, said at least
one local bid and said at least one remote bid into a plurality of
display options to enable said user to select said particular local
manufacturer and to select at least one particular remote manufacturer
from among said plurality of remote manufacturers to provide said
selection of said plurality of manufacturable parts required by said
particular local manufacturer; and

responsive to said broker server receiving a selection by said
user of said particular local manufacturer and said at least one
particular remote manufacturer, controlling, by said broker server,
placement of said customized manufacturing order with said particular
local manufacturer and placement of at least one separate order with
said at least one particular remote manufacturer for said selection
from among said plurality of manufacturable parts required by said
particular local manufacturer to produce said customized
manufacturing order.

Appeal 2008-5477
Application 09/895,932

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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Crookshanks US 7,089,203 B1 August 8, 2006
Robert Frank: The Register. “Asian jewelers carry on tradition in
Little Saigon clients prefer to design rings, merchants say.” Orange
County Register. Santa, Ana, California: August 10, 1989.

The following rejection is before us for review:
The Examiner rejected claims 1-2, 4-6, 8-10, 12-14, 16-18, 20-22 and
24-25 under 35 U.S.C. §103(a) as being unpatentable over Crookshanks in
view of Franks.
ISSUE
Have Appellants shown that the Examiner erred in rejecting claims
1, 3, 6-9, 11, 14-17, 19, and 22-24 on appeal as being unpatentable under
35 U.S.C. § 103(a) over Crookshanks in view of Franks on the grounds that
a person with ordinary skill in the art would know based on the teachings of
Franks to modify Crookshanks to allow for a user to select his or her own
remote manufacturers/subcontractors.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Examiner found that:
Frank discloses an individual making selections
from remote manufacturers of customized parts. It
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would be obvious to one of ordinary skill in the art
at the time of the invention to modify the
computerized system of Crookshanks for selection
of customized products wherein local
manufacturers are selected by the purchasing
individual, to include the selection of the
subcontractors that are also part of the
Crookshanks system by the purchasing individual.
Both elements - selection of local and remote
component suppliers - are old and well known, and
it would be obvious to use the computerized
system of Crookshanks to facilitate both selection
of local and remote product manufacturers.
(Answer 11)
2. Crookshanks discloses that “[t]he contractors review the sub-
contractor bids, approves selected sub-contract bids, and electronically
countersigns them, either creating appropriate contracts (e.g., contracts
conditional on it being awarded the project contract) and reserving the sub-
contractors services.” (Crookshanks, col., 29, ll. 17-21)
3. Crookshanks discloses:
Typically, a number of affiliate services 600 are
involved at one or more steps of this bid
management stage 340. The web site 300
preferably identify [sic] and provide [sic]
hyperlinks 380 to approved affiliates who provide
services to the clients of the BSSP, under fee based
contracts 800 with the BSSP. These contracts
typically call for commissions to be paid to the
BSSP for the referral and use of the various
services of the bid system and access to the web
site 300 and the documentation generated and
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archived. For example, one or more lenders,
insurers, lawyers, accountants, and title companies
may be involved in review of one or more aspects
of the bidding process and the ultimate approval of
the bids before a project contract can be let. As
before, the access to the documents is preferably
via the project web page, or the secure, sealed bid
packages submitted and archived, and
communication are handled by e-mail 720. To the
extent approvals or other types of sign-offs are
required, the appropriate lender, insurer, title
company, lawyer electronically signs the necessary
forms, forwards them to the BSSP where they are
archived, and the appropriate parties, e.g.,
contractors, architects and owners/developer are
notified by e-mail. Formal notification e-mails are
also archived in the bid system computers 500 for
record purposes.
(Crookshanks, col. 29, ll. 32-50)

4. Crookshanks also discloses that
the contractor (220 in FIG. 23) is hired by client to
collect all bids for the project and an
Owner/Contractor Bidding Agreement is signed by
each party and transmitted to the BSSP. This
contract is imported into system database, logged,
saved, and a job-specific icon is attached to this
agreement. …
[T]he BSSP creates a hardcopy of the
plans/overlays/boxes and transmits this to the
contractor for review. Any changes in the box
definitions desired by the contractor or requests for
clarification are transmitted to the BSSP. Any
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changes or clarification that the contractor requests
may [be] documented by the BSSP on as [sic: an]
addendum form, which is created logged and
linked in the project database. Additionally and
optionally, the contractor requests may be
reviewed and approved by the client and/or
architect at this stage. (Crookshanks, col. 23, ll.
9-26 )
5. The Specification describes:
"Remote manufacturer" preferably refers to the
individual, group, organization, business, or
corporation that will bid on a manufacturable
portion of a personalized design order and then
manufacture the manufacturable portion if
selected, however the remote manufacturer may or
may not actually be geographically remote to the
buyer. "Local manufacturer" preferably refers to
the individual, group, organization, business, or
corporation that will assemble and manufacture
portions of the personalized design order, however
the local manufacturer may or may not actually be
geographically local to the buyer. (Specification
9:14-24)

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
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underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
ANALYSIS
The rejection is affirmed as to claims 1-2, 4-6, 8-10, 12-14, 16-18, 20-
22 and 24-25. Initially, we note that the Appellants argue independent
claims 1, 10 and 18 together as a group. Claim 1 is representative of the
independent claims. (Appeal Br. 10). Appellants do not provide a
substantive argument as to the separate patentability of claims 2, 4-6, 8, 9,
12-14, 16, 17, 20-22 and 24-25 that depend from claims 1, 10 and 18, which
are the sole independent claims among those claims. Therefore, claims 2, 4-
6, 8, 9, 12-14, 16, 17, 20-22 and 24-25 fall with claims 1, 10 and 18. See,
37 C.F.R. § 41.37(c)(1)(vii)(2004).
Appellants argue that:
…Crookshanks describes the consumer requesting
a bid package from contractors and a consumer
receiving a bid package from the contractors,
where the contractors receive subcontractor bids
and place them in the package. Crookshanks, col.
28, line 67-col. 29, line 30. No portion of
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Crookshanks teaches a user selection from among
subcontractors or of any particular subcontractor.
(Appeal Br. 19)
We are not persuaded by Appellants’ argument here because
Appellants are attacking the reference individually when the rejection is
based on a combination of references. See In re Keller, 642 F.2d 413,
426 (CCPA 1981); In re Young, 403 F.2d 754, 757-58 (CCPA 1968). The
Examiner found that Frank and not Crookshanks discloses an individual
making selections from among remote manufacturers of customized parts
and thus it would be obvious to one of ordinary skill in the art at the time of
the invention to modify the computerized system of Crookshanks wherein
the purchasing individual selects the subcontractors. (FF 1)
Appellants next argue that 1.) there is no remote manufacturer in
Frank because the user brings each piece in person to the jeweler to
assemble; and 2.) Frank does not teach any user selection of a remote
manufacturer that triggers placement of a manufacturing order with that
remote manufacturer. (Appeal Br. 18-19.) Appellants’ arguments however
are not persuasive as to error in the rejection for the following reasons.
First, Appellants attempt to distinguish the word “remote” based on
the location of the user. This argument is inconsistent with the definition
Appellants give in the Specification. The Specification makes it clear that
the term remote means a party responsible for the manufacturable portion of
a personalized design order, “however the remote manufacturer may or may
not actually be geographically remote to the buyer”. (FF 5) In the case of
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Frank, the party responsible for the manufacturer of the precious stones
meets this definition because the precious stones must be manufactured from
rough rocks by such processes as cutting, grinding and polishing. Second, it
is not necessary for Frank to teach the placement of the manufacturing order
as argued, because the rejection is based on a combination of references
under 35 U.S.C. § 103(a) and Crookshanks discloses that the general
contractor selects a subcontractor resulting in the placement of at least one
separate order with at least one particular subcontractor/remote manufacturer
(FF 2).
Appellants also argue
… because Frank teaches away from any
automated, not in person, purchasing of any
portion of a ring, it is clear that (1) neither Frank
nor the knowledge generally available to one of
ordinary skill in the art suggests the desirability of
the combination of Frank and Crookshanks to
teach automating the ring purchasing process of
Frank, and (2) the proposed modification of Frank
would render Frank's description of purchasing
each portion of a ring separately, in person, to be
able to separately establish trust with each of the
ring seller, the diamond seller, and the diamond
placer, unsatisfactory for its intended purposes.
(Appeal Br. 17)
We do not agree with Appellants. Nothing in Crookshanks suggests
that the process of assembling the parts of the ring would be any less
effective or less based on trust if effected by the automated process in
Crookshanks. This is because the relationship between owner and contractor
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in Crookshanks is controlled by a signed written Owner/Contractor Bidding
Agreement which becomes part of the record and is updated with any
changes during the process (FF 4). A document, such as the
Owner/Contractor Bidding Agreement in Crookshanks, would provide even
greater stability to an owner-manufacture relationship given that in addition
to trust, the document will further serve to memorialize the duties and
obligations of both parties and thereby insure greater trust that the job will
be completed as specified.
Finally, we do not agree with Appellants’ contention that the
knowledge generally available to one of ordinary skill in the art would not
suggest the desirability of the combination of Frank and Crookshanks to
automate the ring purchasing process of Frank (Appeal Br. 16-17), because
taking what is otherwise done by direct human intervention as done in
Franks, and automating it to gain the well accepted benefits of such
automation, does not diminish the human-worked task, but rather improves
it. See Leapfrog Enterprises, Inc. v. Fisher Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (“[O]ne of ordinary skill in the art . . . would have found it
obvious to combine the Bevan device with the SSR to update it using
modern electronic components in order to gain the commonly understood
benefits of such adaptation, such as decreased size, increased reliability,
simplified operation, and reduced cost.”)
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CONCLUSIONS OF LAW
We conclude the Appellants have not shown that the Examiner erred
in rejecting claims 1, 2, 4-6, 8-10, 12-14, 16-18, 20- 22, 24, and 25 under
35 U.S.C. § 103(a) as unpatentable over Crookshanks in view of Franks.

DECISION
The decision of the Examiner to reject claims 1,2, 4-6, 8-10, 12-14,
16-18, 20- 22, 24, and 25 is AFFIRMED.
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

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