Ex Parte Cheney

Board of Patent Appeals and Interferences

Oct 20, 2009

10174757 (B.P.A.I. Oct. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte DOUGLAS A. CHENEY 8
___________ 9
10
Appeal 2009-005321 11
Application 10/174,757 12
Technology Center 3600 13
___________ 14
15
Decided: October 20, 2009 16
___________ 17
18
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
Appeal 2009-005321
Application 10/174,757

2
STATEMENT OF THE CASE 1
Douglas A. Cheney (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1, 3-18, and 21-28, the only claims 3
pending in the 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 system and method for providing a network 10
store that allows a purchaser to select user settings of a product during the 11
purchase process (Specs. 1:5-7). 12
An understanding of the invention can be derived from a reading of 13
exemplary claims 1, 11, 12, 17, and 28, which are reproduced below 14
[bracketed matter and some paragraphing added]. 15

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed February 13, 2008) and Reply Brief (“Reply Br.,” filed June 25,
2008), and the Examiner’s Answer (“Ans.,” mailed May 2, 2008), and Final
Rejection (“Final Rej.,” mailed July 25, 2007).
Appeal 2009-005321
Application 10/174,757

3
1. A network store for selling a printing device to a purchaser 1
interacting with the network store via an electrical 2
communication link, the network store comprising: 3
[1] a product configuration program adapted to allow the 4
purchaser to select user settings for the printing device 5
purchased through the network store, the user settings being 6
associated with setup parameters of the printing device that 7
must be established before the printing device can be used; and 8
[2] a link connecting the product configuration program to a 9
configuration installer, adapted to configure the printing device 10
according to the user settings selected by the purchaser. 11
12
11. The method recited in claim 10, wherein the step of 13
establishing a record comprises establishing a record that is 14
accessible to the purchaser. 15
16
12. The method recited in claim 9, wherein the step of receiving 17
a request to select one of a number of available printing devices 18
comprises receiving a request to select a printer model from a 19
number of available printers. 20
21
17. The user interface recited in claim 16, wherein the plurality 22
of user settings options includes at least one default option. 23
24
28. The method of claim 10, further comprising using the 25
record of the selected user settings as a default for a future 26
purchase of a further printing device by the same purchaser. 27
28
THE REJECTIONS 29
The Examiner relies upon the following prior art: 30
Dworkin US 4,992,940 Feb. 12. 1991
Henson US 6,167,383 Dec. 26, 2000
Appeal 2009-005321
Application 10/174,757

4
Kritt et al. US 2002/0188514 A1 Dec. 12, 2002
Cremon et al. US 2002/0191998 A1 Dec. 19, 2002
Fernandes US 2003/0040958 A1 Feb. 27, 2003
1
Claims 1, 3-10, 15-16, 18, 21, and 24-26 stand rejected under 35 U.S.C. 2
§ 103(a) as unpatentable over Kritt and Cremon. 3
Claims 11, 14, and 27 stand rejected under 35 U.S.C. § 103(a) as 4
unpatentable over Kritt, Cremon, and Official Notice. 5
Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as 6
unpatentable over Kritt, Cremon, and Dworkin. 7
Claims 17, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as 8
unpatentable over Kritt, Cremon, and Henson. 9
Claim 28 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 10
Kritt, Cremon, and Fernandes. 11
ISSUES 12
The pertinent issues to this appeal are: 13
• Whether the Appellant has sustained the burden of showing that the 14
Examiner erred in rejecting claims 1, 3-10, 15-16, 18, 21, and 24-26 15
under 35 U.S.C. § 103(a) as unpatentable over Kritt and Cremon. 16
o This pertinent issue turns on whether Kritt and Cremon describe 17
a network store that includes a product configuration program 18
adapted to allow a purchaser to select user settings for a 19
printing device that are associated with setup parameters of the 20
printing device that must be established before the printing 21
Appeal 2009-005321
Application 10/174,757

5
device is used and whether there is a motivation to combine 1
Kritt and Cremon. 2
• Whether the Appellant has sustained the burden of showing that the 3
Examiner erred in rejecting claims 11, 14, and 27 under 35 U.S.C. § 4
103(a) as unpatentable over Kritt, Cremon and Official Notice. 5
o This pertinent issue turns on whether the Appellant’s arguments 6
in support of claims 9 and 24 are found persuasive. 7
• Whether the Appellant has sustained the burden of showing that the 8
Examiner erred in rejecting claims 12 and 13 under 35 U.S.C. § 9
103(a) as unpatentable over Kritt, Cremon, and Dworkin. 10
o This pertinent issue turns on whether the Appellant’s arguments 11
in support of claim 9 are found persuasive. 12
• Whether the Appellant has sustained the burden of showing that the 13
Examiner erred in rejecting claims 17, 22, and 23 under 35 U.S.C. § 14
103(a) as unpatentable over Kritt, Cremon, and Henson. 15
o This pertinent issue turns on whether the Appellant’s arguments 16
in support of claims 15 and 21 are found persuasive. 17
• Whether the Appellant has sustained the burden of showing that the 18
Examiner erred in rejecting claim 28 under 35 U.S.C. § 103(a) as 19
unpatentable over Kritt, Cremon, and Fernandes. 20
o This pertinent issue turns on whether Fernandez describes using 21
a record of the selected user settings that pertain to a purchased 22
product as the default for a future purchase of a product device 23
by the same purchase. 24
Appeal 2009-005321
Application 10/174,757

6
1
FACTS PERTINENT TO THE ISSUES 2
The following enumerated Findings of Fact (FF) are believed to be 3
supported by a preponderance of the evidence. 4
Facts Related to the Prior Art 5
Dworkin 6
01. Dworkin is directed to an automated system and method for 7
purchasing computer equipment and computer services (Dworkin 8
1:10-12). 9
Henson 10
02. Henson is directed to an online store for enabling a customer to 11
configure, price, and order a computer system (Henson 1:18-21). 12
Kritt 13
03. Kritt is directed to a configure-to-order computer 14
manufacturing system (Kritt ¶ 0001). Kritt solves the need in the 15
industry of providing a versatile configure-to-order system that 16
allows a customer to have full control over the order processing 17
(Kritt ¶ 0005). 18
04. A customer selects from a wide range of configuration options 19
and personalization data (Kritt ¶ 0058). The personalization data 20
is product customization information, such as the number of PCI 21
slots in a computer or the network settings for a computer (Kritt ¶ 22
0058). This input configuration and personalization information 23
Appeal 2009-005321
Application 10/174,757

7
is used to manufacture and assemble a computer accordingly 1
(Kritt ¶ 0059). 2
Cremon 3
05. Cremon is directed to an arrangement for reading a code to 4
initiate the automatic settings of printers (Cremon ¶ 0003). 5
Cremon solves the industry problem of when a user incorrectly 6
inputs many printer parameters thereby resulting in the incorrect 7
configuration of the printer settings (Cremon ¶ 0013). 8
06. A code reader is connected to the control unit for controlling at 9
least one parameter of the printer (Cremon ¶ 0017). A factory is 10
enabled to build a standard, generic configuration that can be 11
reconfigured without opening or reopening the printer packaging 12
(Cremon ¶ 0018). 13
Fernandes 14
07. Fernandes is directed to a system that tailors promotions 15
presented to a prospective customer at an electronic commerce site 16
(Fernandes ¶ 0002). 17
08. Fernandes uses a cookie on a user’s computer to store 18
information, that may be used in the future, and each website 19
visited by the user can store data in the user’s cookie file 20
(Fernandes ¶ 0021). The information stored includes a user’s 21
settings or configuration information (Fernandes ¶ 0021). 22
Purchase information is further used to tailor a promotion to a user 23
based on previously purchased items (Fernandes ¶’s 0033-0034). 24
Appeal 2009-005321
Application 10/174,757

8
Facts Related To The Level Of Skill In The Art 1
09. Neither the Examiner nor the Appellant has addressed the level 2
of ordinary skill in the pertinent arts of electronic commerce sales 3
and purchase systems and methods. We will therefore consider the 4
cited prior art as representative of the level of ordinary skill in the 5
art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 6
2001) (“[T]he absence of specific findings on the level of skill in 7
the art does not give rise to reversible error ‘where the prior art 8
itself reflects an appropriate level and a need for testimony is not 9
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 10
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 11
Facts Related To Secondary Considerations 12
10. There is no evidence on record of secondary considerations of 13
non-obviousness for our consideration. 14
PRINCIPLES OF LAW 15
Obviousness 16
A claimed invention is unpatentable if the differences between it and 17
the prior art are “such that the subject matter as a whole would have been 18
obvious at the time the invention was made to a person having ordinary skill 19
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 20
U.S. 398, 406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 21
In Graham, the Court held that that the obviousness analysis is 22
bottomed on several basic factual inquiries: “[(1)] the scope and content of 23
the prior art are to be determined; [(2)] differences between the prior art and 24
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 25
Appeal 2009-005321
Application 10/174,757

9
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 1
U.S. at 406. “The combination of familiar elements according to known 2
methods is likely to be obvious when it does no more than yield predictable 3
results.” Id. at 416. 4
ANALYSIS 5
Claims 1, 3-10, 15-16, 18, 21, and 24-26 rejected under 35 U.S.C. § 6
103(a) as unpatentable over Kritt and Cremon 7
The Appellant first contends that (1) Kritt and Cremon fail to describe a 8
network store that includes a product configuration program adapted to 9
allow a purchaser to select user settings for a printing device that are 10
associated with setup parameters of the printing device that must be 11
established before the printing device is used (App. Br. 9-10 and Reply Br. 12
2-5). We disagree with the Appellant. Limitation [1] of claim 1 requires 13
that the user settings are associated with setup parameters and these 14
parameters must be set before using the device. Kritt describes a system that 15
allows a user to configure and personalize a product by inputting 16
specifications into an ordering system (FF 04). The personalized 17
information can include hardware configurations, such as the number of PCI 18
slots to be installed, or software configurations such as network settings (FF 19
04). The device is manufactured and assembled based on these input 20
specifications (FF 04). That is, the device is created based on this input 21
information and therefore the parameters are defined prior to the use of the 22
device. The Appellant specifically contends that network settings are 23
configured prior to the use of the device (App. Br. 10). However, the device 24
Appeal 2009-005321
Application 10/174,757

10
is assembled based on the specifications for the network settings and 1
therefore cannot be used until these parameters are set. 2
Limitation [1] further requires that the device is a printing device. 3
Cremon describes a configuration and setup of a printing device (FF 06). 4
Cremon describes associating a code with a printing device and the code 5
controls at least one parameter associated with the printer (FF 06). A code 6
reader reads the code to determine the configuration of the printing device 7
and reconfiguration is done at the factory, a warehouse, or upon delivery (FF 8
06). That is, the configuration of the printer involves controlling a 9
parameter required for use of the printer. Thus, Cremon describes the 10
configuration of a printing device and that the configuration of the printing 11
device is done prior to the use of the printing device. As such, the 12
combination of Kritt and Cremon describes limitation [1] of claim 1. 13
The Appellant further contends that (2) there is no motivation to 14
combine Kritt and Cremon (App. Br. 11-12 and Reply Br. 5-6). We disagree 15
with the Appellant. Kritt is concerned with providing a versatile system that 16
allows a customer to fully control the customization and configuration of 17
ordering products (FF 03). Kritt solves this problem by creating a system 18
that accepts inputs directly from a customer before manufacturing or 19
assembling a product, where the inputs include configuration and 20
personalization of product specification (FF 04). 21
Cremon is also concerned with the proper use and implementation of 22
customized parameters in a product such as a printer (FF 05). Cremon 23
solves this problem by automating the input of customized parameter 24
information so that printers can be configured correctly (FF 06). One of 25
Appeal 2009-005321
Application 10/174,757

11
ordinary skill in the art would have recognized the benefits of giving full 1
control over parameter input to a user that is customized a printer. As such, 2
Kritt and Cremon are concerned with the same problem and one of ordinary 3
skill in the art would have been led to combine their teachings. 4
The Appellant also contends that (3) Kritt and Cremon fail to describe 5
one or more user settings particular to printing devices, as required by claims 6
3, 4, 6, 8, and 18 (App. Br. 12). We disagree with the Appellant. As 7
discussed supra, Kritt describes a process that requires receiving input from 8
a user regarding configuration and personalization information, where the 9
personalization information includes customized specifications regarding 10
hardware and software parameters (FF 04). The input of this configuration 11
and personalization information is a user setting and Cremon further 12
describes a printing device, as discussed supra. As such, Kritt and Cremon 13
describe one or more user settings particular to printing devices as required 14
by claims 3, 4, 6, 8, and 18. 15
Claims 11, 14, and 27 rejected under 35 U.S.C. § 103(a) as unpatentable 16
over Kritt, Cremon, and Official Notice 17
The Appellant contends that claims 11, 14, and 27 are allowable for the 18
same reasons argued supra in support of claims 9 and 24 (App. Br. 13). We 19
disagree with the Appellant. The Appellant’s arguments were not found 20
supra and therefore are not found persuasive here for the same reasons and 21
therefore the Appellant has not sustained the burden of showing that the 22
Examiner erred in rejecting claims 11, 14, and 27 under 35 U.S.C. § 103(a) 23
as unpatentable over Kritt, Cremon, and Official Notice. 24
25
Appeal 2009-005321
Application 10/174,757

12
Claims 12 and 13 rejected under 35 U.S.C. § 103(a) as unpatentable 1
over Kritt, Cremon, and Dworkin 2
The Appellant contends that claims 12 and 13 are allowable for the same 3
reasons argued supra in support of claim 9 (App. Br. 13). We disagree with 4
the Appellant. The Appellant’s arguments were not found supra and 5
therefore are not found persuasive here for the same reasons and therefore 6
the Appellant has not sustained the burden of showing that the Examiner 7
erred in rejecting claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable 8
over Kritt, Cremon, and Dworkin. 9
10
Claims 17, 22, and 23 rejected under 35 U.S.C. § 103(a) as unpatentable 11
over Kritt, Cremon, and Henson 12
The Appellant contends that claims 17, 22, and 23 are allowable for the 13
same reasons argued supra in support of claims 15 and 21 (App. Br. 14). 14
We disagree with the Appellant. The Appellant’s arguments were not found 15
supra and therefore are not found persuasive here for the same reasons and 16
therefore the Appellant has not sustained the burden of showing that the 17
Examiner erred in rejecting claims 17, 22, and 23 under 35 U.S.C. § 103(a) 18
as unpatentable over Kritt, Cremon, and Henson. 19
20
Claim 28 rejected under 35 U.S.C. § 103(a) as unpatentable over Kritt, 21
Cremon, and Fernandes 22
The Appellant first contends that (1) claim 28 is allowable for the same 23
reasons argued supra in support of claim 9 and Fernandez fails to cure the 24
Appeal 2009-005321
Application 10/174,757

13
noted deficiencies (Ans. 14). We disagree with the Appellant. The 1
Appellant’s arguments supra were not found to be persuasive and therefore 2
are not found persuasive here. The Examiner has not relied on Fernandes to 3
describe the alleged deficiencies and therefore the Appellant is responding to 4
the rejection by attacking the references separately, even though the 5
rejection is based on the combined teachings of the references. 6
“Nonobviousness cannot be established by attacking references individually, 7
where rejection is based upon teachings of combination of references.” See 8
In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 9
The Appellant further contend that (2) Fernandes fails to describe using 10
a record of the selected user settings that pertain to a purchased product as 11
the default for a future purchase of a product device by the same purchase 12
(App. Br. 14 and Reply Br. 6-7). We disagree with the Appellant. Claim 28 13
requires using a record of the user’s settings as a default for a future 14
purchase of a further printing device by the user. Fernandes describes the 15
use of a cookie to monitor a user’s preferences based on historical purchase 16
data (FF 08). Fernandes further describes using the stored preference 17
information to tailor a promotion to the user based on the preference 18
information (FF 08). That is, the cookies are a stored record of the user’s 19
purchase information and this information is used as the basis for a tailor 20
promotion for a future purchase by the user. As such, Fernandes describes 21
claim 28. 22
23
Appeal 2009-005321
Application 10/174,757

14
CONCLUSIONS OF LAW 1
The Appellant has not sustained the burden of showing that the 2
Examiner erred in rejecting claims 1, 3-10, 15-16, 18, 21, and 24-26 under 3
35 U.S.C. § 103(a) as unpatentable over Kritt and Cremon. 4
The Appellant has not sustained the burden of showing that the 5
Examiner erred in rejecting claims 11, 14, and 27 under 35 U.S.C. § 103(a) 6
as unpatentable over Kritt, Cremon, and Official Notice. 7
The Appellant has not sustained the burden of showing that the 8
Examiner erred in rejecting claims 12 and 13 under 35 U.S.C. § 103(a) as 9
unpatentable over Kritt, Cremon, and Dworkin. 10
The Appellant has not sustained the burden of showing that the 11
Examiner erred in rejecting claims 17, 22, and 23 under 35 U.S.C. § 103(a) 12
as unpatentable over Kritt, Cremon, and Henson. 13
The Appellant has not sustained the burden of showing that the 14
Examiner erred in rejecting claim 28 under 35 U.S.C. § 103(a) as 15
unpatentable over Kritt, Cremon, and Fernandes. 16
17
DECISION 18
To summarize, our decision is as follows. 19
• The rejection of claims 1, 3-10, 15-16, 18, 21, and 24-26 under 35 20
U.S.C. § 103(a) as unpatentable over Kritt and Cremon is sustained. 21
• The rejection of claims 11, 14, and 27 under 35 U.S.C. § 103(a) as 22
unpatentable over Kritt, Cremon, and Official Notice is sustained. 23
Appeal 2009-005321
Application 10/174,757

15
• The rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as 1
unpatentable over Kritt, Cremon, and Dworkin is sustained. 2
• The rejection of claims 17, 22, and 23 under 35 U.S.C. § 103(a) as 3
unpatentable over Kritt, Cremon, and Henson is sustained. 4
• The rejection of claim 28 under 35 U.S.C. § 103(a) as unpatentable 5
over Kritt, Cremon, and Fernandes is sustained. 6
7
No time period for taking any subsequent action in connection with this 8
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2008). 9
10
AFFIRMED 11
12
13
14
mev 15
HEWLETT-PACKARD COMPANY 16
INTELLECTUAL PROPERTY ADMINISTRATION 17
3404 E. HARMONY ROAD, MAIL STOP 35 18
FORT COLLINS CO 80528 19