Ex Parte Coursol

Board of Patent Appeals and Interferences

Sep 14, 2010

10255531 (B.P.A.I. Sep. 14, 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.
10/255,531 09/26/2002 Sebastien Coursol 02-005 1209
37420 7590 09/14/2010
VISTA PRINT USA, INC.
ATTN: PATENT COUNSEL
95 HAYDEN AVENUE
LEXINGTON, MA 02421
EXAMINER
ADE, OGER GARCIA
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
09/14/2010 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 SEBASTIEN COURSOL
____________

Appeal 2009-004104
Application 10/255,531
Technology Center 3600
____________

Before JOHN A. JEFFERY, HUBERT C. LORIN, 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 2009-004104
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STATEMENT OF THE CASE
Sebastien Coursol (Appellant) seeks our review under 35 U.S.C.
§ 134 (2002) of the non-final rejection of claims 1-41. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a new ground of rejection pursuant
to 37 C.F.R. 41.50(b).2

THE INVENTION
The invention relates to providing customized products to customers.
Claim 16, reproduced below, is illustrative of the subject matter on appeal.
16. In a computer system adapted to perform product ordering
transactions and having a plurality of stored product templates, a
second product offering method comprising the steps of
receiving information associated with a customer in the process
of ordering a first product,
automatically selecting one of the templates,
automatically designing a custom second product by modifying
the selected template to include at least a portion of the information
associated with the customer; and
offering the second product to the customer while the customer
is in the process of ordering the first product.

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Nov. 27, 2007) and Reply Brief (“Reply Br.,” filed Apr. 28,
2008), and the Examiner’s Answer (“Answer,” mailed Feb. 26, 2008).
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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Walker
Magee
Walker
US 6,970,837 B1
US 2003/0139840 A1
US 2002/0161653 A1
Nov. 29, 2005
Jul. 24, 2003
Oct. 31, 2002
The following rejection is before us for review:
1. Claims 1-41 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Walker ‘837, Magee, and Walker ‘653.

ISSUES
The issue is whether claims 1-41 are unpatentable under 35 U.S.C.
§ 103(a) over Walker ‘837, Magee ‘840, and Walker ‘653. A major issue is
whether Magee discloses the steps of:
automatically selecting one of the templates,
automatically designing a custom second product by modifying
the selected template to include at least a portion of the information
associated with the customer;
(claim 16). Also, would one of ordinary skill in the art given Walker ‘653
be led to include a step of “offering [a] second product to [a] customer while
the customer is in [a] process of ordering [a] first product” (claim 16)?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Examiner’s
Answer in support thereof (Answer 3-5).

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PRINCIPLES OF LAW
Obviousness
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., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of 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, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
Claims 1, 8, 14-16, 22, 28, and 29
Method Claims 16, 22, 28, and 29
The Appellant argued claims 16, 22, 28, and 29 as a single group
(App. Br. 13). We select claim 16 as the representative claim for this group,
and the remaining claims 22, 28, and 29 will stand or fall with claim 16. 37
C.F.R. § 41.37(c)(1)(vii) (2007).
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According to the claimed invention, while a customer is ordering a
first product, a second product is designed (via a template) and offered to the
customer based on the ordering information. The Examiner applied Walker
‘837 for the process of ordering a first product and Walker ‘653 for offering
a second product to the customer based on the ordering information for the
first product. Answer 3-5. Magee was applied for its disclosure of
automatically selecting templates and designing a product. The Examiner
found that the claimed subject matter would have been obvious to one of
ordinary skill in the art over the combination of these disclosures. The
Examiner’s position appears to be that all the claimed elements were known
in the prior art and one skilled in the art could have combined the elements
as claimed by known methods with no change in their respective functions,
and the combination would have yielded nothing more than predictable
results to one of ordinary skill in the art at the time of the invention.
The primary challenge here concerns certain claim steps involving the
second product, namely the Examiner’s finding that Magee discloses the
claim steps of:
automatically selecting one of the templates,
automatically designing a custom second product by modifying
the selected template to include at least a portion of the information
associated with the customer.
The Examiner determined that blocks 90 and 100, as depicted in Fig.
2c of Magee, show automatically selecting a template from a plurality of
templates and that paragraphs 20, 28, and 67 of Magee disclose
“automatically designing a custom second product by modifying the selected
template to include at least a portion of the information associated with the
customer.” Answer 12.
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The Appellant disagrees. According to the Appellant, Magee “depicts
the steps and selections that go into defining a specific custom product
design after an initial product template has been selected by the user for
customization.” App. Br. 15. But, according to the Appellant, “the various
choices that are made [are made] by the user during the process of defining a
customized product design.” App. Br. 15 (emphasis original). The
Appellant argues that
[i]n Magee, selection of a template ... is clearly
performed by the user and is therefore not
“automatically” selected as in Applicant’s recited claims
1 and 16” (App. Br. 16, emphasis original) and
“[Magee’s] system itself does not make the design
choices, and therefore it cannot be said that the designing
process is “automatic”
(App. Br. 16).
The argument is unpersuasive.
There appears to be little difference between the instant invention and
that of Magee with respect to automatically selecting a template from a
plurality of templates and automatically designing a custom second product
by modifying the selected template to include at least a portion of the
information associated with the customer. Both Magee and the instant
invention call for a customer to choose a template and to use that template in
designing a second product.
Magee discloses a computerized system for enabling customers to
design customized patterns on textile substrates. See Fig. 1. For the textile
substrate, the customer may choose from standard elements [0080] a
manufacturer’s Product Specification Template that a user may wish to
customize [0082]. Images for customizing the textile substrate are also
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available for selection by the customer [0084]. The selection is made by the
customer via a computer.
The instant invention also provides a customer with customizable
templates that may be displayed on a computer. See Fig. 1. “Templates
102, therefore, contains [(sic)] a number of pre-designed document
templates with various design features, such as colors, images, and/or
graphic elements. ... The user can review the templates available from Server
100 and select a template that contains a combination of design features that
appeal to the user.” Specification ¶ [0014].
To show that a distinction exists over that of the Magee process, the
Appellant draws our attention to the embodiment shown in Fig. 5 of the
Specification. There is described automatically generating a return label
(504) by automatically modifying a selected template (102). App. Br. 13.
But the difference between the operation depicted in Fig. 5 and that of
Magee is not apparent. According to the Specification, the return label
template 102 is one “that corresponds to business card template 401 selected
by the user” ([0023]). Information is then inserted into the template and
downloaded to the user for display in a client’s browser. [0024]. In order to
produce a customized textile product using the Magee process, a customer
would do the same.
Accordingly, we do not see that “[i]n Magee, selection of a template
... is clearly performed by the user and is therefore not “automatically”
selected as in Applicant’s recited claims 1 and 16,” as the Appellant has
argued.
Furthermore, in arguing that “[i]n Magee, selection of a template ... is
clearly performed by the user and is therefore not “automatically” selected,”
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the Appellant presumes that user input necessarily precludes automatic
selection. A user may choose a template from those on a computer display
(by clicking, for example) but this would simply initiate operations within
the computer that would result in the computer automatically selecting the
chosen template from those stored in the system.
Assuming the Appellant means to argue that “automatic” selection
necessarily excludes customer input, that is not a reasonably broad
construction of the claim in light of the Specification. The term “automatic”
is not defined in the Specification and neither the Specification nor the
claims use the term to narrow the scope of the claimed subject matter to
exclude customer input. The steps at issue do not exclude a user selecting a
template.
Finally, even if we assume for argument’s sake that Magee’s user
input renders Magee’s selection and design process a manual process rather
than an automatic process, it would nevertheless have been obvious to those
of skill in the art to replace Magee’s manual customer input with an
automatic means. See In re Venner, 262 F.2d 91, 96 (CCPA 1958). See also
Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir.
2007). One of ordinary skill in the art would have found it obvious to
automate a manual customer input
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. . . . The
combination is thus the adaptation of an old idea or
invention . . . using newer technology that is commonly
available and understood in the art.
Leapfrog, 485 F.3d at 1163.
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The Appellant also argues that Walker ‘653 does not disclose
“offering the second product to the customer while the customer is in the
process of ordering the first product” (claim 16, last step) as the Examiner
has asserted. App. Br. 17-18. Accordingly, the Appellant also challenges
the Examiner’s characterization of the scope and content of Walker ‘653. In
that regard, the Examiner argued that the last step of claim 16 was shown in
Fig. 12, and described in paragraphs [0072], [0074], and [0077] of Walker
‘653. Answer 4. We have reviewed Walker ‘653 and agree with the
Examiner that it shows offering a second product to a customer while the
customer is in the process of ordering a first product. In paragraphs [0074]
and [0077], Walker ‘653 discloses a process by which a customer may be
offered a second product complementary to a first product a customer has
ordered. The second product is based on the ordering information for the
fist product.
Accordingly, we find that the Examiner has established a prima facie
showing of obviousness which the Appellant’s arguments have not
overcome. Therefore, we sustain the rejection of claims 16, 22, 28, and 29
under 35 U.S.C. § 103(a) as being unpatentable over Walker ‘837, Magee,
and Walker ‘653.

Apparatus Claims 1, 8, 14, and 15
Unlike the method claims discussed above, claims 1, 8, 14, and 15 are
directed to an apparatus written in means-plus-function format. The
Appellant argues these apparatus claims together with the method claims.
See App. Br. 13. The Appellant’s arguments are directed to steps which are
recited in claim 16. Id. The briefs are solely devoted to method step
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differences between what is claimed and the cited prior art. Structural
differences are not argued, notwithstanding that here claims 1, 8, 14 and 15
are not method claims but “system” claims in means-plus-function format.
However, 35 U.S.C. § 112, sixth paragraph states:
An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or acts
in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
While the Appellant’s arguments challenging whether the steps recited in
claim 16 are taught in the prior art, the Appellant’s arguments do not
challenge whether the Examiner’s combination of Walker ‘837, Magee, and
Walker ‘653 disclose or lead one to the corresponding structure described in
the Specification or an equivalent. See e.g., App. Br. 6, for example, where
the Appellant attempted to show where in the Specification structure
corresponding to the functions recited in the means-plus-function claim 1 are
described, in accordance with 37 CFR § 41.37(v). But, no argument is made
that the cited prior art fails to show a means for achieving the functions
recited in the claims and the particular structure recited in the written
description corresponding to those functions, or an equivalent thereof. In the
context of a means-plus-function claim, the invalidating prior art must
disclose not simply a means for achieving the desired function, but rather the
particular structure recited in the written description corresponding to that
function, or an equivalent thereof. See In re Donaldson Co., Inc., 16 F.3d
1189, 1193 (Fed. Cir. 1994).
Filing a Board appeal does not, unto itself, entitle
an appellant to de novo review of all aspects of a
rejection. If an appellant fails to present
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arguments on a particular issue – or, more broadly,
on a particular rejection – the Board will not, as a
general matter, unilaterally review those
uncontested aspects of the rejection. . . Thus, the
Board will generally not reach the merits of any
issues not contested by an appellant.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Accordingly, we find that the Appellant has not overcome the
rejection of claims 1, 8, 14-16, 22, 28, and 29 under 35 U.S.C. § 103(a) as
being unpatentable over Walker ‘837, Magee, and Walker ‘653.

Claims 2 and 17
The Appellant argued claims 2 and 17 as a single group (App. Br. 19).
We select claim 17 as the representative claim for this group, and the
remaining claim 2 stands or falls with claim 17. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
The Appellant argues that Walker ‘837 does not disclose the second
product is automatically designed without a customer request as claimed as
the Examiner has asserted. App. Br. 19. The Examiner argued that the
claimed subject matter was disclosed at col. 4, ll. 47-50 and block 1106 in
Fig. 11a of Walker ‘837. Answer 5.
According to the disclosure at col. 4, ll. 47-50 and block 1106 in Fig.
11a of Walker ‘837 a retailer may select and offer a substitute product “to
the buyer (instead of the first product).” Walker ‘837, col. 4, ll. 49-50.
Accordingly, Walker ‘837 shows a second product provided without a
customer request. The only question is whether the cited prior art would
lead one to automatically design such a second product provided without a
customer request. Reading the Answer in its entirety it is evident that the
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Examiner did not mean to argue that Walker ‘837 disclosed automatically
designing any product, let alone a second product provided without a
customer request. At Answer 4, the Examiner was clear in finding that
Walker ‘653 does not show automatically designing a second product, for
which Magee was relied upon instead. This is supported by the fact that the
disclosure at col. 4, ll. 47-50 and block 1106 in Fig. 11a of Walker ‘837
makes no mention of designing a product, automatic or otherwise.
Accordingly, we do not understand the Examiner to be asserting that Walker
‘837 discloses the second product is automatically designed without a
customer request but rather that the claimed subject matter would have been
obvious over the cited prior art combination. In that regard, we are satisfied
that one of ordinary skill in the art given Walker ‘837 and Magee would
have been led to automatically design the second product without a customer
request as required by claim 17. We do not find the Appellant’s argument
persuasive in overcoming the rejection of claims 2 and 17.

Claims 3 and 18
The Appellant argued claims 3 and 18 as a single group (App. Br. 19).
We select claim 18 as the representative claim for this group, and the
remaining claim 3 stands or falls with claim 18. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
The Examiner relied upon disclosure at col. 24, ll. 26-29 of Walker
‘837 as showing displaying of an image of the custom second product to the
user during the ordering process (per claim 18). Answer 5. The Appellant
argues that “[t]here is nothing in Walker (‘837) to indicate that the “offers”
presented to the user are anything other than text descriptions of the
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products. No mention of product images is found anywhere in Walker
(‘837).” App. Br. 19.
The disclosure at col. 24, ll. 26-29 describes a buyer scanning a
redemption code and “the substitute product offers are displayed on the
kiosk’s display screen.” The question is whether the product offers displayed
on the kiosk display screen are images (according to the Examiner) or text
(according to the Appellant). In our view, one ordinary skill in the art
reading this disclosure would understand it to cover displaying either text or
images, or both, as was well known in the art at the time of the invention.
As is well known, display screens display various, but set types of
information, including images and text. Even if we assume for argument’s
sake that one of ordinary skill in art reading Walker ‘837 would be led to
display text, displaying the product offers as images would have been
obvious given that those of ordinary skill in the art would have known that
display screens display various but set types of information. "[A] person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might show that it
was obvious under 103." KSR, 550 U.S. at 421.
Accordingly, we do not find the Appellant’s argument persuasive in
overcoming the rejection of claims 3 and 18.

Claims 4 and 19
The Examiner relied upon block 700 in Fig. 7 of Walker ‘837 as
showing “indicating to the customer the cost of purchasing only the first
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product” (claim 19) and block 926 in Fig. 9B of Walker ‘837 as showing
“indicating to the customer ... the cost of purchasing the first product and the
second product” (claim 19). Answer 5. The Appellant disagrees. App. Br.
19.
Fig. 7 shows a settlement price (element 708). The settlement price is
that of a substitute product when the substitute product is provided to the
buyer. Walker ‘837 Col. 16, ll. 44-45. Accordingly, Walker ‘837 implicitly
discloses indicating a purchase cost to the customer for a second product.
Fig. 9B shows various costs, including the amount owed the retailer in
exchange for providing either the first product or the substitute product to
the buyer. Col. 17, ll. 14-17. Accordingly, Walker ‘837 implicitly discloses
indicating a purchase cost to the customer for a first or a second product.
The difficulty is that we do not see that Walker ‘837 discloses
“indicating to the customer ... the cost of purchasing the first product and the
second product” (claim 19). Walker ‘837 would lead one of ordinary skill to
indicate to the customer only one cost, either that of the substitute product or
the first product, but not a cost for both. Furthermore, the Examiner does
not explain why, given the implicit disclosure of indicating cost for either a
first or substitute product, one of ordinary skill in the art would be led to
indicate the cost for both. Accordingly, we will not sustain the rejection of
claim 4. Since the same issue is raised for claim 19 in the context of an
apparatus claim where the step at issue is recited in functional terms, we
reach the same conclusion as to claim 19. In that regard, the Examiner has
not explained in what way the prior art would lead one to a means having the
disclosed corresponding structure or its equivalents capable of “indicating to
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the customer the cost of purchasing the first product and the second
product”.

Claims 5, 6, and 20
The Examiner relied upon block 300 in Fig. 1B of Walker ‘837 as
showing “enabling the customer to order only the first product” (claim 20,
e.g.) and Fig. 11B of Walker ‘837 as showing “enabling the customer ... to
order both the first and second product” (for example, claim 20). Answer 5-
6. The Appellant disagrees. App. Br. 19.
While we would agree that Walker ‘837 implicitly discloses enabling
the customer to order only the first product or a second (substitute) product,
we do not find that Fig. 11B shows “enabling the customer ... to order both
the first and second product”. Furthermore, the Examiner does not explain
why one of ordinary skill in the art would be led to order both the first
product and a second (substitute) product when the two are disclosed as
alternatives. Accordingly, we will not sustain the rejection of claim 20.
Since the same issue is raised for claim 5, and claim 6 which depends from
it, in the context of an apparatus claim where the step at issue is recited in
functional terms, we reach the same conclusion as to claim 5 and 6. In that
regard, the Examiner has not explained in what way the prior art would lead
one to a means having the disclosed corresponding structure or its
equivalents capable of “enabling the customer ... to order both the first and
second product” (claims 5, 6, and 20).

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Claims 7 and 21
The Appellant argued claims 7 and 21 as a single group (App. Br. 21).
We select claim 21 as the representative claim for this group, and the
remaining claim 7 stands or falls with claim 21. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
The Appellant argues that the Examiner has failed to show offering
multiple second products to the customer while the customer is engaged in
ordering the first product. App. Br. 21. In support thereof, the Appellant
discusses the deficiencies of Magee because it is Magee that the Examiner
appears to rely upon to show the claim limitations. Answer 6.
However, when we read the Examiner’s Answer completely, rather
than that section devoted to claim 21 in isolation, we understand the
Examiner to be arguing a different position. Claim 21 depends on claim 16,
which claim 16 calls for designing a second product while ordering a first
product. That narrow aspect of the claimed method was found to be
disclosed in Walker ‘653. See Answer 4. Magee was relied upon for
showing the template selection and design steps of the claimed method that
one of ordinary skill could apply to the second product in light of the prior
art combination as a whole. Claim 21 further limits the claim 16 process by
adding steps of selecting multiple templates and for each product created
from each template a different portion of information associated with the
customer is included. These steps are applied to the second product and then
the second product is offered to the customer while the customer is engaged
in ordering the first product. The Examiner is taking the position that Magee
shows the multiple template selection and product creation steps and Walker
‘653 shows a second product is offered to the customer while the customer is
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engaged in ordering the first product. The Examiner’s position is that it is
the combination of the prior art as whole that would lead one of ordinary
skill in the art to the claimed subject matter whereby the multiple template
selection and product creation steps are applied to a second product and
second product is offered to the customer while the customer is engaged in
ordering the first product. We do not see that the Appellant has overcome
the prima facie case of obviousness as the Examiner has presented it.
Accordingly, we do not find the Appellant’s argument persuasive in
overcoming the rejection of claims 7 and 21.

Claims 9, 10, 23, and 24
The Appellant argued claims 9, 10, 23, 24 as a single group (App.
Br. 21). We select claim 23 as the representative claim for this group, and
the remaining claims 9, 10, and 24 stand or fall with claim 23. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
The only argument made is that “[t]he selection of a template in
Magee is entirely user-controlled, not automatic.” App. Br. 21. That
argument is unpersuasive as to error in the rejection for same reasons
explained supra in finding the Appellant has not overcome the prima facie
case of obviousness of claims 9, 10, 23, and 24 over the cited prior art
combination.

Claims 11, 12, 25, and 26
These claims call for enabling a customer to incorporate customer
information into the first product prior to ordering the first product. The
Examiner relied upon the disclosure in Walker ‘837 at column 3, lines 27-32
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(product redemption) and block 1304 in Fig. 13. Answer 8. However, these
disclosures do not refer to incorporating information into a product. What is
described there is a buyer’s product redemption information. When a
retailer recieves this information, “the buyer is [enabled] to take possession
of the first product.” Walker ‘837 Col. 3, ll. 32-33. There is no disclosure of
incorporating customer information into the first product or of doing so prior
to ordering the first product. Accordingly, we will not sustain the rejection
of these claims.

Claims 13 and 27
Claim 27 calls for enabling a customer to modify the second product
prior to ordering. The Examiner relied upon block 1204 in Fig. 12 of
Walker ‘837. Answer 9. The Appellant disagrees. App. Br. 22. According
to the Appellant, “[t]here is no indication in Walker (‘837) that the customer
is allowed to either modify the product selected by the retailer or to choose a
different substitute product other than the one chosen by the retailer and
presented to the customer.” App. Br. 22.
We agree with the Appellant. Block 1204 in Fig. 12 of Walker ‘837
alone does not teach enabling a customer to modify the second product prior
to ordering, especially given that block 1202 simply describes a step of
receiving information as part of a substitute product determination (see col.
18, ll. 65-67), and block 1204 enables the retailer to select a possible
substitute product (see col. 19, ll. 37-38). There is no modification
occurring on the customer’s part.
Accordingly, we will not sustain the rejection of claims 13 and 27.

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Claim 30-36
The Appellant argues that the cited prior art combination does not
teach the claimed subject matter. App. Br. 23.
We will reverse the rejection because we have been unable to
determine the Examiner’s position as to the subject matter of claim 30.
Claim 30 is said to be addressed with the analysis of claims 1 and 16.
Answer 4. But claim 30 is substantively different from claims 1 and 16.
Claim 30 differs because it does not include steps involving a template.
Thus, the relevance of Magee in rejecting claim 30 is questionable. More
importantly, unlike claims 1 and 16, claim 30 requires “means for
automatically generating an image of a customized second product, the
second product image containing at least a portion of the selected
information” and “means for displaying the image of the second product to
the customer prior to the conclusion of the purchase process for the first
product.” Notwithstanding that no preliminary means-plus-function claim
construction analysis has been provided (see Donaldson, 16 F.3d at 1193),
the Examiner does not explain, and we have been unable to discern from the
record, what disclosure the Examiner is relying upon in support of finding
that the cited prior art combination discloses or would lead one of ordinary
skill in the art to the claimed system having said means.
Accordingly, a prima facie case of obviousness for the subject matter
of claim 30 has not been made out in the first instance. The rejection of
claim 30 will therefore be reversed. For the same reasons, we will not
sustain the rejection of claims 31-36 over the cited prior art. Cf. In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious
if the independent claims from which they depend are nonobvious.").
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Claim 37-40
Claim 37 requires providing a means for a customer “to indicate
whether the customer desires to proceed with the purchase of only the first
product or both the second product and the first product.” Claim 38 requires
providing a means for a customer “to indicate whether the customer desires
to proceed with the purchase of the first product or both the first product and
at least one of the personalized product.” Claim 39 requires providing a
means for a customer “to indicate whether the customer desires to proceed
with the purchase of only the other documents or both the other documents
and the return address labels.” Each of these claims calls for a method
comprising a step of providing a means for a customer to indicate the desire
to purchase a first product or a first and second product. Accordingly, these
claims call for providing a means that gives the customer two purchase
options, a first product and a first and second product, from which to choose.
The Examiner treats claims 37-39 together. Answer 10. The
Examiner cites block 1620 of Fig. 16B and block 1716 of Fig. 17 of Walker
‘837 as disclosing proving a means that provides the customer with the two
purchase options, a first product and a first and second product, from which
to choose. However, they disclose only that a substitution is authorized
(block 1620, Fig. 16B) and a substitute product is offered (block 1716, Fig.
17). We do not see there any disclosure of providing a means that gives the
customer two purchase options, a first product and a first and second
product, from which to choose. Nor has the Examiner explained how one of
ordinary skill in the art would have reached that step given what Walker
‘837 discloses.
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Accordingly, we will not sustain the rejection of claims 37-39, and of
claim 40 that depends from claim 39.

Claim 41
We will not sustain the rejection of claim 41 because the Examiner
has not adequately explained why the claimed program code would have
been obvious over the cited prior art combination.

NEW GROUND OF REJECTION
Pursuant to 37 CFR 41.50(b)(2005) we enter a new ground of
rejection of claim 41.
We reject claim 41 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter. Claim 41 recites a “product offering program ...
comprising: program code ....” This claim is drawn to a computer program.
According to current Office policy, computer programs per se are not
considered patentable subject matter under 35 U.S.C. § 101, as they are in
themselves purely non-functional descriptive constructs. See U.S. Patent &
Trademark Office, Interim Examination Instructions for Evaluating Subject
Matter Eligibility under 35 U.S.C. § 101, Aug. 2009, at 2, available at
http://www.uspto.gov/patents/law/comments/2009-08-
25_interim_101_instructions.pdf. See also MPEP § 2106.01 (I), citing In re
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).

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CONCLUSIONS
We sustain the rejection of claims 1-3, 7-10, 14-18, 21-24, 28, and 29
under 35 U.S.C. §103(a) as being unpatentable over Walker ‘837, Magee,
and Walker ‘653.
We do not sustain the rejection claims 4-6, 11-13, 19, 20, 25-27, and
30-41 under 35 U.S.C. §103(a) as being unpatentable over Walker ‘837,
Magee, and Walker ‘653.
We reject claim 41 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.

DECISION
The decision of the Examiner to reject claims 1-41 is affirmed-in-part.
We enter a new ground of rejection on claim 41. We reject claim 41 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner . . . .
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• (2) Request rehearing. Request that the proceeding be reheard
under 37 C.F.R. § 41.52 by the Board upon the same record . . .
.

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

mev

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