10051340 (P.T.A.B. Jun. 27, 2013)

Ex Parte Chauvin et al

Patent Trial and Appeal BoardJun 27, 2013

10051340 (P.T.A.B. Jun. 27, 2013)

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. 10/051,340 01/18/2002 Lou Chauvin 098888-9578 9965 23524 7590 06/27/2013 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER NGUYEN, THU V ART UNIT PAPER NUMBER 2452 MAIL DATE DELIVERY MODE 06/27/2013 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LOU CHAUVIN, HOWARD E. BUSSEY, CHRISTOPHER M. DOBBS, KENNETH A. PARULSKI, TIMOTHY G. THOMPSON, JOHN A. FOSTER, AND PAMELA J. GOTHAM, ____________________ Appeal 2011-001257 Application 10/051,340 Technology Center 2400 ____________________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001257 Application 10/051,340 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 23, 25-29, 34, 37-41, and 45. Claims 1-22, 24, 30-33, 35, 36, and 42- 44 have been canceled. However, Appellants state that “Appellants hereby appeal… from the Examiner’s Final Rejection of claims 23 and 25-29” (App. Br. 1). In particular, Appellants do not appeal claims 34, 37-41, and 45 but note that claims 34, 37-41 and 45 are pending and rejected (id.). The Board has no jurisdiction as to non-appealed claims, and we consider claims 34, 37-41, and 45 cancelled and not before us for review. The Examiner has the authority to cancel the non-appealed claims 34, 37-41, and 45. See Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential). We have jurisdiction as to claims 23, and 25-29 under 35 U.S.C. § 6(b). We affirm. A. INVENTION According to Appellants, the invention relates to ordering of digital images and/or image products over a communication network, and in particular, the invention allows individuals and/or businesses to order goods and/or services over a communication network from a plurality of different providers, that offer the same and/or different goods and/or services, and that have various types of business relationships (Spec. 1, ll. 18-23). B. ILLUSTRATIVE CLAIM A copy of exemplary claim 23 is appended to this decision. Appeal 2011-001257 Application 10/051,340 3 C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Simons US Pat. App. Pub. No.: 2003/0014331 A1 Jan. 16, 2003 (Filed May 8, 2001) Vittal US 6,907,401 B1 Jun. 14, 2005 (Filed Mar. 13, 2000) Reifel US 7,013,288 B1 Mar. 14, 2006 (Filed May 26, 2000) Claim 23 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 23, 25-27, 29, 34, 37, 39-41, and 45 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Reifel and Simons.1 Claims 28 and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Reifel, Simons and Vittal. Additionally, the Examiner provisionally rejected claims 23-29, 31, 32, and 34-43 on the ground of non-statutory, obviousness-type double patenting as being unpatentable over claims 1-15, respectively, of U.S. Patent No. 7,275,044 (Ans. 4). Appellants present no arguments against this rejection (App. Br. 3), and as such, Appellants have waived any argument of error regarding the rejection. We summarily sustain this rejection. II. ISSUE The issue before us is whether the Examiner has erred in concluding that the combination of Reifel and Simons teaches or would have suggested providing access for a user “by using an order terminal… associated with 1 Because the Board has no jurisdiction as to non-appealed claims, we will not consider claims 34, 37-41, and 45 as being before us for review. App App one o each busin pred the e came imag eal 2011-0 lication 10 f a plural having a p ess entitie etermined The follo vidence. 1. R ras, and im Figure 1 e print ho 01257 /051,340 ity of busin redefined s,” and m business r wing Find eifel disclo ages, wh 3 shows a use 25, pri ess entitie business aintaining elationship III. FIND ings of Fa ses distrib erein Reif retail cam nt order ta 4 s,” “a plur relationsh a directory s” (claim INGS OF ct (FF) ar Reifel uting imag el’s Figure era provid ker 50, an ality of se ip with eac “indicati 23, empha FACT e shown b e capture 13 is repr er 15, a ca d a camera rvice prov h of said p ng a rankin sis added) y a prepon devices, s oduced be mera kiosk manufact iders... lurality o g of the . derance of uch as low: 20, an urer 30 to f Appeal 2011-001257 Application 10/051,340 5 provide the camera , wherein the consumer 10 is in communication with the camera providers through an electronic network 40 (col. 3, ll. 53-64). Simons 2. Simons discloses a search facility that ranks the merchants for display in search results based upon the commissions paid and the like (Abstract). IV. ANALYSIS 35 U.S.C. § 112, Second Paragraph The Examiner rejects claim 35 under 35 U.S.C. § 112, second paragraph, as being indefinite, since “Claim 23 lacks proper antecedent basis for ‘the relationship data’” (Ans. 4) and thus it is “not immediately clear that ‘relationship data’ is intended to refer to ‘relationship in a database’” (Ans. 12-13). Although Appellants contend that “a simple comparison of the claim terms ‘relationships in a database’ and ‘relationship data in the database’ makes it unambiguously clear that the second occurrence refers to the first occurrence” (App. Br. 8), we find no error in the Examiner’s conclusion. In particular, we find that there is no antecedent basis for the “data” in the body of the claim, and thus, there is lack of clarity as to which “data” is being referenced. Accordingly, we find that the Examiner has not erred in rejecting the claim under 35 U.S.C. § 112, second paragraph. 35 U.S.C. § 103 Appellants contend that “an order terminal is associated with a business entity, as defined in the present patent application, independently of accessing a network web site” wherein “order terminals 81, 83, etc. , are already associated with business entities A, B, C…, before they establish Appeal 2011-001257 Application 10/051,340 6 access over network 14” (App. Br. 4). Thus, Appellants contend that “web site accesses do not establish the claimed ‘association’ as the Examiner argues” (id.). Appellants further contend that “the claim recites that an order terminal is associated with a business entity even though the order terminal accesses a network server 12, which server is not directly related to a business entity” (id.). Appellants then contend that “the present patent application does not describe the order terminal as accessing a business entity’s web site, contrary to the Examiner’s assertion, because it only accesses the server manager server 12 which stores information about service providers” (id.). That is, Appellants contend that “the present patent application clearly states that order terminals access service providers, not business entities” wherein “an ‘association’ is established between an order terminal and a business entity if the business entity controls the order terminal” (App. Br. 5). Finally, Appellants contend that “Simons also does not describe a database that contains a ranking of a relationship between each of the plural business entities and each of the plural service providers” since Simons discloses that “merchants are ranked based upon their payments/relationship with the one system server that performs searching (App. Br. 6-7). However, the Examiner points out that “Appellant is arguing limitations not in the claims” (Ans. 11). The Examiner finds that “Reifel discloses that a user directing his computer to a web site (i.e., digital storage location) that may be run by different business entities” wherein “when a user uses a desktop PC to access the web site that is run [by] the business entity, the desk top becomes ‘associated’ with the business entity through its Appeal 2011-001257 Application 10/051,340 7 web site” and “[t]he web site then directs a user’s order to an appropriate service provider” (Ans. 10). As to Appellants’ contention that Simons does not disclose a step for indicating a ranking (App. Br. 6-7), the Examiner points out that “[t]he rejection relied on the combination of Reifel and Simons to teach this limitation” (Ans. 12). In particular, the Examiner finds that “Reifel discloses that a user may elect, by activating links to print houses or vendors that are approved by the camera provider” and that “Simons further discloses establishing relationships between a plurality of business entities (e.g., merchants) and a service provider” (id.). The Examiner then concludes that the combination of the references would have suggested the limitation (id.). We find no error in the Examiner’s findings and conclusion. We agree with the Examiner that “Appellant is arguing limitations not in the claims” (Ans. 11). That is, Appellants’ arguments (App. Br. 4-5), are not commensurate in scope with the recited language of claim 23. In particular, claim 23 does not require any such “independently of accessing network website”, “already associated” before access, accessing a network server “not directly related to a business entity”, “only access the server manager server”, or “if the business entity controls the order terminal” (App. Br. 4-5, emphasis added). Further, contrary to Appellants’ contentions (id.), the recited language of claim 23 does not preclude establishing the claimed “association” via web site accesses such as that of a business entity. That is, claim 23 merely requires that the order terminal is “associated with one of a plurality of business entities” by any means, before or after access. Reifel discloses a retail camera providers, camera kiosk s, print houses 25, print order takers, and camera manufacturers that provide the camera to a Appeal 2011-001257 Application 10/051,340 8 consumer, wherein the consumer is in communication with the camera providers through an electronic network (FF 1). We find no error in the Examiner’s finding that “Reifel discloses that a user directing his computer to a web site (i.e., digital storage location) that may be run by different business entities” wherein “when a user uses a desktop PC to access the web site that is run [by] the business entity, the desk top becomes ‘associated’ with the business entity through its web site” (Ans. 10). That is, we find no error in the Examiner’s conclusion that Reifel at least suggests an “order terminal” that is “associated” with “a plurality of business entities” as required by claim 23. Furthermore, Simons discloses ranking merchants for display (FF 2). As Appellants concede, Simons discloses that “merchants are ranked based upon their payments/relationship with the one system server” (App. Br. 6-7). That is, Simons discloses a plurality of providers having a predefined business relationship with a business entity. Since Reifel discloses associating an order terminal with a plurality of business entities (FF 1), and Simons discloses that providers have a predefined business relationship with a business entity (FF 2), we conclude that the combination of one known element (Reifel’s plurality of business entities) with another (Simon’s ranking of relationships between providers and each business entity) would have yielded predictable results to one of ordinary skill in the art at the time of the invention. That is, the combination is no more than a simple arrangement of old elements, with each performing the same function it had been known to perform, yielding no more than one would expect from such an arrangement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Thus, we find no error in the Examiner’s Appeal 2011-001257 Application 10/051,340 9 conclusion that the combination of the references would at least have suggested the claimed limitations (App. Br. 12). Accordingly, we find no error in the Examiner’s rejection of claim 23 and claims 25-27 and 29 depending therefrom but not argued separately (App. Br. 8) over Reifel and Simons. Further, Appellants do not provide arguments for claim 28 separate from those of claim 23 (id.), and thus, we also find no error with the Examiner’s rejection of claim 28 over Reifel and Simons in further view of Vittal. V. CONCLUSION AND DECISION The Examiner’s rejections of claim 23 under 35 U.S.C. § 112, second paragraph, and of claims 23, and 25-29 under 35 U.S.C. § 103(a) are 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)(1)(iv). AFFIRMED Vsh Appeal 2011-001257 Application 10/051,340 10 APPENDIX Claim 23 23. A computer implemented method comprising: providing a network service on a network; providing access for a user to a network server via the network service, the user accessing the network server, by using an order terminal connected to the network, for ordering products, said order terminal associated with one of a plurality of business entities; in response to the user coupling a portable digital storage device to the network connected order terminal, electronically reading the portable digital storage device, the portable digital storage device associated with one of a plurality of service providers and having an image stored thereon, said one of the plurality of service providers identified by electronically reading a code stored on the portable digital storage device, the plurality of service providers each having a predefined business relationship with each of said plurality of business entities; maintaining a relationship directory indicating a ranking of the predefined business relationships in a database coupled to the communication network; and displaying to the user an order screen on said order terminal in response to reading the code stored on the portable digital storage device, the order screen including primary purchasing information provided by at least two of said plurality of business entities from which the user can order a product and/or service related to the image stored on the portable digital storage device, the primary purchasing information being modified in response to a ranking of a predefined business relationship between said one of the plurality of service providers and said at least two of the plurality of business entities, wherein a modification of the primary purchasing information includes listing first on the order screen one of the at least two of the plurality of business Appeal 2011-001257 Application 10/051,340 11 entities that has a better ranking than another one of the at least two of the plurality of business entities, according to the relationship data in the database.