Ex Parte Gonsalves et al

Patent Trials and Appeals Board

Jul 3, 2019

14148598 - (D) (P.T.A.B. Jul. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/148,598 01/06/2014
103113 7590 07/08/2019
TAR GET BRANDS, INC.
1000 NICOLLETT MALL, TPS-3165
MINNEAPOLIS, MN 55403
FIRST NAMED INVENTOR
Michael F. Gonsalves
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
201304450 9616
EXAMINER
MILLS, FRANK D
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
07/08/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO.Mail@TARGET.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL F. GONSALVES, GREGORY M. NATIONS,
CHAD R. GOURLEY, PATRICIA KORTH-MCDONNELL,
SARAH E. SCHOEFFLER, and JOE STEWART
Appeal2018-005174
Application 14/148,598
Technology Center 2100
Before ROBERT E. NAPPI, CARLL. SILVERMAN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 12-31, i.e., all pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Target Brands, Inc.
App. Br. 2.
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Application 14/148,598
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns "a web page
presented to a user" that may include (1) a "header section that substantially
spans the top of the web page and provides a menu of selectable options as
well as a search input box," (2) a "product display region" below the header
section that "displays images and information about a selected product," and
(3) a "search narrowing region" below the header section that "displays one
or more controls providing the user with options of narrowing the search
results." Spec. ,r,r 1---6, Abstract, Fig. 5. 2
Exemplary Claim
Independent claim 12 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
12. A computer-implemented method of rendering an
interactive user interface of a retailer to facilitate purchase of
one or more products of the retailer over the Internet, the
computer-implemented method including the step of:
operating one or more computers to serve one or more
files to create and display an interactive user interface of a
retailer on an electronic display, the interactive user interface
including:
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed January 6, 2014, as a divisional of an application filed
September 21, 201 O; "Final Act." for the Final Office Action, mailed
August 7, 2017; "App. Br." for the Appeal Brief, filed December 9, 2017;
"Ans." for the Examiner's Answer, mailed March 9, 2018; and "Reply Br."
for the Reply Brief, filed April 22, 2018.
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a first region including a search input box for receiving a
search query of a user, the search input box including a search
activation member that when activated by a user will cause a
search to be performed for product information corresponding
to the search query;
a second region below the first region,
the second region having a search results display
area for displaying results of the search query of the user,
the search results display area being configured to
display product information for a plurality of products
corresponding to the search query of the user, the product
information includes a pictorial image of a product,
product pricing and one of a customer rating and a
product description,
the second region further including at least one of
a search sorting control and a display view control,
the search sorting control being configured
to allow a user to customize order of appearance of
the results of the search query displayed in the
search results display area based on a plurality of
different search sorting criteria, the plurality of
different search sorting criteria including at least
relevance, product cost and product popularity,
the display view control being configured to
allow a user to select from a plurality of different
views to display the product information in the
search results display area, the plurality of
different views including a grid view displaying
product information in a plurality of rows in the
second region and a list view displaying product
information in a vertical column with product
information for a first product displayed directly
above product information for a second product;
and,
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a third region including an interactive search narrowing
control for narrowing search results displayed in the search
results display area without entering a new search query in the
search input box, the third region being horizontally aligned
with the second region and disposed below the first region,
the interactive search narrowing control including
at least a first search narrowing criteria and a second
search narrowing criteria where the first search
narrowing criteria is different from the second search
narrowing criteria,
the interactive search narrowing control including
a plurality of interactive product categories including a
first interactive product category corresponding to a first
product category, a second interactive product category
corresponding to a second product category and a third
interactive product category corresponding to a third
product category, the first product category being
different from the second product category and the third
product category,
the first interactive product category, the
second interactive product category and the third
interactive product category being configured such
that when selected by a user search results
displayed in the search results display area are
narrowed based on the corresponding product
category without the user entering a new search
query in the search input box and
the first interactive product category, the
second interactive product category and the third
interactive product category are displayed to a user
with initial presentation of search results displayed
in the search results display area in response to a
user's search query entered in the search input box.
App. Br. 76-77 (Claims App.).
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The Prior Art Supporting the Rejections on Appeal
As evidence ofunpatentability under 35 U.S.C. § I03(a), the
Examiner relies on the following prior art:
Piekos et al. US 2007/0226189 Al Sept. 27, 2007
("Piekos")
Scott et al. US 7,996,282 Bl Aug. 9, 2011
("Scott") (filed Mar. 30, 2007)
Nevill-Manning et al. US 8,006,197 Bl Aug. 23, 2011
("Nevill-Manning") (filed Sept. 29, 2003)
J oinson et al. US 9,501,519 Bl Nov. 22, 2016
("J oinson") (filed Dec. 14, 2009)
The Rejections on Appeal
Claims 12-31 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2--4.
Claims 12-27 and 29-31 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Nevill-Manning, Scott, and Piekos. Final Act. 5-32.
Claim 28 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Nevill-Manning, Scott, Piekos, and Joinson. Final Act. 32-33.
ANALYSIS
We have reviewed the rejections in light of Appellants' arguments
that the Examiner erred. For the reasons explained below, we disagree with
the Examiner's conclusion concerning ineligibility under§ 101 but agree
with the Examiner's conclusion concerning unpatentability under§ I03(a).
We adopt the Examiner's findings and reasoning regarding the§ I03(a)
rejection in the Final Office Action and Answer. See Final Act. 5-33;
Ans. 5-32, 46-57. We provide the following to address and emphasize
specific findings and arguments.
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The§ 101 Rejection of Claims 12-31
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 "contains an important implicit
exception" for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981 ). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77-80; Alice, 573 U.S. at 217-18.
Under Mayo/Alice step one, we "determine whether the claims at
issue are directed to" a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the "focus" of the claims at issue and their "character as a whole."
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019
Guidance"). The 2019 Guidance applies to the Board. Id. at 50-51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility "for
providing policy direction" for the PTO). Neither the Examiner nor
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Appellants had the benefit of the 2019 Guidance when advocating their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54--55. Prong one
requires evaluating "whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon." Id. at 54. "If the
claim does not recite a judicial exception, it is not directed to a judicial
exception," and it satisfies § 101. Id. "If the claim does recite a judicial
exception, then it requires further analysis" under prong two. Id. Prong two
requires evaluating "whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception." Id. "When
the exception is so integrated, then the claim is not directed to a judicial
exception," and it satisfies § 101. Id. "If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception," and it "requires further analysis" under
Mayo/Alice step two (PTO step 2B). Id.
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG ONE
The Examiner determines that the claims here are directed to the
abstract idea of "collecting product information, analyzing the product
information using sorting or filtering variables, and displaying the
information arrangement via a web page." Final Act. 3; see Ans. 3--4. In
addition, the Examiner analogizes the claims here to the claims in Electric
Power that were directed to the abstract idea of "collecting information,
analyzing it, and displaying certain results of the collection and analysis."
Final Act. 3 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016)); see Ans. 3--4, 32-33.
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Appellants dispute that the claims are directed to an abstract idea.
See, e.g., App. Br. 13-15, 19-27, 37--40, 48-51; Reply Br. 2-7. In
particular, Appellants contend that the claims are directed to "a method that
generates a specifically and concretely defined interactive user interface
(i.e., a specific computer element) having a combination of technical means
which improve the functioning of the computer in the technological process
of purchasing products over the Internet." App. Br. 24, 26, 39, 50; see
Reply Br. 2-3. Appellants assert that the claims recite "a method of creating
and displaying a specifically and concretely defined interactive user
interface having a combination of technical means which improve the
functioning of the computer in the technological process of purchasing
products over the Internet." App. Br. 28, 40, 51; see Reply Br. 6-7.
Further, Appellants urge that the claims in Electric Power "are not
remotely related to" the claims here. App. Br. 23; see Reply Br. 5.
Specifically, Appellants assert that the claims in Electric Power did not
"recite an interactive user interface let alone an interactive user interface that
includes a combination of specifically claimed technical means which form
the claimed interactive user interface ... and which improve the functioning
of the computer in the technological process of purchasing products over the
Internet." App. Br. 25.
In addition, Appellants argue that the claims here define an interactive
user interface "far more specifically and concretely than the non-abstract
user interface defined" by patent-eligible claims in Core Wireless. Reply
Br. 7 (citing Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d
1356 (Fed. Cir. 2018)). Appellants also argue that, like the claims in Core
Wireless, "all pending claims are directed to an improved interactive user
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interface not to the alleged abstract idea of 'collecting information,
analyzing it, and displaying certain results of the collection and analysis."'
Id. at 6.
In our view, the claims here more closely resemble the claims in Core
Wireless than the claims in Electric Power. In Core Wireless, the Federal
Circuit decided that claims directed to "an improved user interface for
computing devices," i.e., "a particular manner of summarizing and
presenting information in electronic devices," satisfied § 101 under
Mayo/Alice step one. Core Wireless, 880 F.3d at 1362---63; see Reply Br. 6
( quoting Core Wireless, 880 F.3d at 1362---63). The claims here similarly
recite a particular manner of summarizing and presenting information and
further require particular functionality, e.g., "interactive search narrowing
control[ s ]" for narrowing "search results displayed in the search results
display area without entering a new search query in the search input box."
App. Br. 76-83 (Claims App.).
Further, the 2019 Guidance specifies three groupings of abstract ideas:
mathematical concepts, certain methods of organizing human activity, and
mental processes. 84 Fed. Reg. at 51-52. The Guidance identifies the
following as mathematical concepts: "mathematical relationships,
mathematical formulas or equations, mathematical calculations." Id. at 52.
The Guidance identifies the following as methods of organizing human
activity: (1) "fundamental economic principles or practices";
(2) "commercial or legal interactions," such as "agreements in the form
of contracts," "marketing or sales activities or behaviors," and "business
relations"; and (3) "managing personal behavior or relationships or
interactions between people," such as "social activities, teaching, and
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following rules or instructions." Id. The Guidance identifies the following
as mental processes: "concepts performed in the human mind," such as "an
observation, evaluation, judgment, [or] opinion." Id. (footnote omitted).
We determine that the claims here do not recite limitations falling
within the three groupings of abstract ideas specified in the 2019 Guidance.
Rather, each independent claim recites "operating one or more computers to
serve one or more files to create and display an interactive user interface of a
retailer on an electronic display." App. Br. 76, 78, 81 (Claims App.). After
the "operating" limitation, each claim specifies a particular arrangement of
regions within the interactive user interface and requires that each region
have particular functionality. Id. at 76-77, 78-79, 81-82. As a result, the
claims recite a particular manner of summarizing and presenting information
and further require particular functionality.
Because the claims here do not recite limitations falling within the
three groupings of abstract ideas specified in the 2019 Guidance, they are
not directed to a judicial exception. See 84 Fed. Reg. at 54. Hence, we do
not sustain the§ 101 rejection of claims 12-31.
Since our determination under PTO step 2A prong one resolves the
eligibility issue for claims 12-31, we need not address eligibility under PTO
step 2A prong two or PTO step 2B (Mayo/Alice step two). See, e.g., Beloit
Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that
an administrative agency may render a decision based on "a single
dispositive issue"); 84 Fed. Reg. at 54.
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The§ 103(a) Rejection of Claims 12-27 and 29-31
INDEPENDENT CLAIMS 12, 19, AND 27:
MOTIVATION TO COMBINE THE REFERENCES
As noted above, the§ 103(a) rejection of independent claims 12, 19,
and 27 rests on Nevill-Manning, Scott, and Piekos. See Final Act. 5-12,
14--21, 23-30. Appellants argue that the Examiner erred in rejecting
claims 12, 19, and 27 because "there is no teaching, suggestion, motivation
or objective reason to modify Nevill-Manning to incorporate the features of'
Scott and Piekos. App. Br. 58-59, 63---64, 69-70; see Reply Br. 15-16.
Specifically, Appellants assert that "the design of a retailer user
interface is not a simple process as a retailer interactive user interface has
a limited visible area for a designer to work with" and "when one feature is
added another feature will need to be deleted." App. Br. 58-59, 63---64,
69-70. Appellants also assert that the Examiner fails to explain (1) what
features in Nevill-Manning "would need to be deleted to be able to
incorporate" features from Scott and Piekos or (2) why a person of ordinary
skill "would place greater emphasis on" features from Scott and Piekos over
features in Nevill-Manning "that would need to be deleted" to add features
from Scott and Piekos. Id. at 58-59, 63---64, 69-70.
Appellants' arguments do not persuade us of Examiner error for
several reasons. First, Appellants' assertions that interface design requires
one-for-one feature replacement and disallows feature addition constitute
unsupported attorney argument. See Ans. 46-4 7, 57. Attorney argument
"cannot take the place of evidence." In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). As Appellants concede, "[t]he cases are legion that attorney
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argument is not evidence." App. Br. 29 (emphasis omitted); see Reply
Br. 11.
Second, Appellants' arguments disregard the principle that
"[ c ]ombining the teachings of references does not involve an ability to
combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCPA
1973) (emphasis in original). "A person of ordinary skill is also a person of
ordinary creativity, not an automaton," and "in many cases ... will be able
to fit the teachings of multiple patents together like pieces of a puzzle." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007). "The rationale of
KSR does not support [the] theory that a person of ordinary skill can only
perform combinations of a puzzle element A with a perfectly fitting puzzle
element B." ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir.
2016).
Third, in the Answer the Examiner correctly finds that ( 1) "features of
a web page can be added to an existing web page without having to remove
other features" and (2) Nevill-Manning's interface includes "plenty of empty
space in the bottom left ... that could easily contain" other features, such as
"the category narrowing features taught by Scott." Ans. 46-47, 57.
Specifically, the Examiner finds that a person of ordinary skill "would
recognize that the narrowing controls located in the left side bar of Scott
could be appended to or even replace some of the narrowing controls located
in the left side bar ofNevill-Manning." Id. at 47, 51. Further, the Examiner
finds that the "proposed combination is reasonably accomplished" and "does
not take much more 'limited display area' than the original interface
controls." Id. at 48--49.
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In the Reply Brief, Appellants fail to address the findings in the
Answer. See Reply Br. 15-19. Rather, Appellants wrongly assert that
"[i]t is undisputed that a radical modification of the primary reference ...
is a necessary predicate to the obviousness rejection." Id. at 15. Contrary to
that assertion, there is no need for "a radical modification of the primary
reference" to achieve the claimed subject matter. As the Examiner correctly
finds, each reference discloses an interface "presenting product information"
and "comprising a first top region with a search box control, a second left
side bar region with narrowing controls, and a main third region with
product results." Ans. 46-47; see Nevill-Manning, Figs. 3--4; Scott,
Figs. 2-5; Piekos ,r,r 14, 30, Fig. 1.
Fourth, the Examiner correctly finds that the motivation to combine
comes from the references themselves. Final Act. 10-12, 19-21, 28-30
( citing Scott, 2:20-32; Piekos ,r 21 ); Ans. 50-56. Specifically, the Examiner
finds that a person of ordinary skill would have combined Scott with Nevill-
Manning "to obtain the benefit of providing 'a more efficient way of
displaying search results and/or mak[ing] it more convenient and efficient to
purchase goods on-line when the customer desires to compare various
products before making a purchase."' Final Act. 10-11, 19, 28-29 (quoting
Scott, 2:27-30); see Scott, 2:24--32, 3: 17-28. Further, the Examiner finds
that a person of ordinary skill would have combined Piekos with Nevill-
Manning "to obtain the benefit of 'immediately and continuously
display[ing] product results as well as feedback to a customer, without
requiring an affirmative submit-style gesture."' Final Act. 12, 20-21, 30
(quoting Piekos ,r 21); see Piekos ,r,r 19, 21, 25, [57].
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Hence, the Examiner explicitly identifies reasons that would have
prompted a person of ordinary skill to combine the references, and thus
provides a "rational underpinning to support the legal conclusion of
obviousness." See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Appellants do not address the Examiner's explicit analysis of the reasons to
combine the references. See App. Br. 19, 56-73; Reply Br. 15-19.
Appellants assert that the Examiner relied on hindsight and
impermissibly used the claims "as a road map to pick and choose selected
elements" from Scott and Piekos to "add them to" Nevill-Manning. App.
Br. 58-59, 63---64, 69-70; see Reply Br. 9, 15-16.
We disagree. An explicit analysis "whether there was an apparent
reason to combine" references reduces "the risk of ... examiners falling
prey to hindsight bias." See KSR, 550 U.S. at 418,421. Here, the
Examiner's explicit analysis of the reasons to combine the references
demonstrates that the Examiner did not rely on hindsight. See Final Act.
10-12, 19-21, 28-30; Ans. 50-56.
INDEPENDENT CLAIMS 12, 19, AND 27:
DISPLAYING PRODUCT CATEGORIES AND SEARCH RESULTS IN "RESPONSE
TO A USER'S SEARCH QUERY ENTERED IN THE SEARCH INPUT Box"
Claims 12, 19, and 27 specify that "the first interactive product
category, the second interactive product category and the third interactive
product category are displayed to a user with initial presentation of search
results displayed in the search results display area in response to a user's
search query entered in the search input box." App. Br. 77, 79, 82.
Appellants assert that the Examiner erred in rejecting claims 12, 19, and 27
because Piekos "expressly states" that "results are returned not in response
to a user's search query but while the user is still typing in the search query,
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i.e., the results are returned prior to a user entering his or her search query."
Id. at 60, 64---65, 71 (citing Piekos ,r,r 55-56) (emphasis omitted); see Reply
Br. 16-17. Appellants also assert that the claim language "is clear and
unambiguous" and requires search results "returned in response to (i.e.,
after) a user's search query has been entered not some truncated version of
the search query." Reply Br. 17.
Appellants' assertions do not persuade us of Examiner error. The
claims require "search results displayed in the search results display area in
response to a user's search query entered in the search input box." App.
Br. 77, 79, 82. Piekos satisfies that requirement. See Final Act. 11-12, 20,
29-30; Ans. 49; Piekos ,r,r 54--58, Figs. 3a-3e.
In particular, Piekos instructs that (1) the search query "pan" causes
the display to show one set of search results, (2) the search query "pants"
causes the display to show another set of search results, (3) the search query
"pants mens" causes the display to show yet another set of results, and
( 4) the search query "pants mens blue" causes the display to show a different
set of search results. Piekos ,r,r 54--58, Figs. 3a-3e; Ans. 49. Each of the
four search queries constitutes a separate "search query entered in the search
input box" according to the claims. See Piekos ,r,r 43, 54, 67----69, Figs.
3 f-3 g. And each of the four search queries produces separate "search results
displayed in the search results display area" according to the claims. See id.
,r,r 55-58, Figs. 3b-3e.
Contrary to Appellants' assertions, the claims require nothing more
than text entry to activate a search. App. Br. 77, 79, 82. As the Examiner
explains, "[t]here is no express recitation that the query need be complete,"
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and the "results need only be presented in response to entering a query in the
[search input] box." Ans. 49.
Consistent with that explanation, the Specification instructs that text
entry may activate a search. Spec. ,r,r 16, 36, 52. As an example, the
Specification states that "the user could type in keywords associated with a
product he or she is seeking ( e.g., 'blue jeans', 'frozen pizza', 'batteries') to
activate a search routine that helps the user find what he or she is shopping
for." Id. ,r 16. As another example, the Specification states that "the user
types in keywords associated with a product he or she is seeking ( e.g.,
'pencils', 'car seats', 'vacuum cleaners') to activate a search routine that
helps the user find what he or she is shopping for." Id. ,r 36.
Further, even if the first three search queries in Piekos do not satisfy
the disputed limitation, the fourth search query satisfies it. Even under
Appellants' reasoning, the fourth search query is not "some truncated
version of the search query" because it is the final search query.
INDEPENDENT CLAIMS 12, 19, AND 27:
THE SECOND REGION BELOW THE FIRST REGION
Claims 12, 19, and 27 require "a first region including a search input
box" and "a second region" including "a search results display area" with
the "second region below the first region." App. Br. 76, 78, 81. Appellants
assert that the Examiner erred in rejecting claims 12, 19, and 27 because in
Piekos "the results are displayed in a region horizontally aligned with the
search entry box," as "is readily evident from Figures 3a through 3g." Id.
at 60, 65, 71; Reply Br. 17.
Appellants' assertions do not persuade us of Examiner error because
the Examiner relies on Nevill-Manning, not Piekos, for "a first region
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including a search input box" and "a second region" including "a search
results display area" with the "second region below the first region." Final
Act. 6, 15, 24 (citing Nevill-Manning, Figs. 3--4); see Ans. 50; Nevill-
Manning, Figs. 3--4. Appellants do not dispute that Nevill-Manning
discloses the required arrangement. See App. Br. 56-74; Reply Br. 15-19.
Further, Scott's Figures 2-5 depict the required arrangement. Scott,
Figs. 2-5; see Ans. 46--47, 50. On top of that, Piekos's Figure 1 depicts the
required arrangement. Piekos, Fig. 1.
As the Examiner correctly finds, each reference discloses an interface
"presenting product information" and "comprising a first top region with a
search box control, a second left side bar region with narrowing controls,
and a main third region with product results." Ans. 46--47; see Nevill-
Manning, Figs. 3--4; Scott, Figs. 2-5; Piekos ,r,r 14, 30, Fig. 1.
INDEPENDENT CLAIMS 12 AND 27:
"SEARCH ACTIVATION MEMBER"
Claims 12 and 27 require a "search input box including a search
activation member that when activated by a user will cause a search to be
performed for product information corresponding to the search query." App.
Br. 76, 81. Appellants argue that the Examiner erred in rejecting claims 12
and 27 because Piekos "does not have a search activation member in the
search input box as no such member would be used or needed following the
teachings of Piekos." Id. at 60, 65 (emphasis omitted); see Reply Br. 18.
Appellants also argue that "if one of ordinary skill in the art were to combine
Piekos" with the other references, "no search activation member would be
provided as such a member is completely unnecessary." App. Br. 60, 65;
Reply Br. 18.
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Appellants' arguments do not persuade us of Examiner error because
the Examiner does not rely on Piekos for the required "search activation
member." See Final Act. 6, 24; Ans. 50. Rather, the Examiner correctly
finds that "Nevill-Manning and Scott both disclose search activation
members," i.e., Nevill-Manning's "Froogle Search" button and Scott's "GO"
button. Ans. 50; see Final Act. 6, 24; Nevill-Manning, 4:35-5:53, Figs. 3--4;
Scott, 5:41---6: 11, Figs. 2-5.
Appellants urge that Piekos "renders moot a search activation member
as results are returned upon entry of the initial letters of the search query"
and that the Examiner "does not explain why one of ordinary skill in the art
would modify the references to include an element which serves no
purpose." Reply Br. 18. But Piekos does not "render[] moot a search
activation member" or indicate that a search activation member "serves no
purpose" in a system capable of searching based on keystroke monitoring.
Instead, Piekos depicts an interface with a search activation member,
i.e., a "Go" button. Piekos ,r,r 14, 30, Fig. 1; see id. ,r,r 55-56 (discussing
an "enter" key and a "search" icon). Piekos identifies searching based on
keystroke monitoring as an option by explaining that a user either "types
input into the text input field" or "hovers the cursor ( e.g., using a mouse or
other input device) over navigational elements" in the interface. Id. ,r 31.
A user may still "physically click" a navigational element to initiate a
search. Id. ,r 68. Also, a user may suspend keystroke monitoring. See id.
,r,r 42--43. In addition, Piekos instructs that the "invention can be used to
enhance an e-commerce website's product search and navigation
responsiveness." Id. ,r 19. Hence, Piekos teaches or suggests searching
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based on keystroke monitoring to supplement-not replace-searching
based on activating a search activation member.
INDEPENDENT CLAIMS 19 AND 27:
PRODUCT INFORMATION DISPLAYED AT LEAST THREE DIFFERENT WAYS
Claim 19 requires an "interactive search layout control ... configured
to allow a user to select from at least three different search results display
arrangements to display the product information in the search results display
area." App. Br. 79. Claim 27 similarly requires a "display view control ...
configured to allow a user to select from a plurality of different views to
display the product information in the search results display area, the
plurality of different views including at least three different views." Id.
at 81.
Appellants contend that the Examiner erred in rejecting claims 19
and 27 for two reasons: First, Scott "only teaches a standard view and a
brand view." App. Br. 58, 69. Second, Scott "does not teach, suggest or
motivate one or [sic] ordinary skill to have" claim 19's interactive search
layout control or claim 27's display view control "configured to allow a user
to select from at least three different" ways to display product information
"in the search results display area." Id. at 58, 69 (emphasis omitted).
Appellants' contentions do not persuade us of Examiner error because
they mischaracterize Scott. Scott discloses "at least three different" ways to
display product information "in the search results display area." See Final
Act. 17, 27; Ans. 48--49; Scott, 5:41-59, 6:38-55, 7:27-52, 9:29-36,
12:46-13: 17, Figs. 2-5. In Scott, Figures 2 and 3 depict a grid view,
Figure 4 depicts a list view, and Figure 5 depicts a brand view. Scott,
Figs. 2-5.
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Nevill-Manning similarly discloses a "number of 'views' of search
results," including a "list view" with search results "in a single column" and
a "grid view" with search results "display[ ed] as a grid." Nevill-Manning,
2:58---67, 5:15---62, [57], Figs. 3--4; see Final Act. 7, 16, 25.
Appellants' contentions do not persuade us of Examiner error for
another reason. In the Answer, the Examiner correctly finds that the
combined disclosures in Nevill-Manning and Scott teach or suggest the
disputed limitations. In the Reply Brief, Appellants fail to address the
findings in the Answer. See Ans. 48--49; Reply Br. 15-19; see also Final
Act. 17 (citing Nevill-Manning, 5:15-24; Scott, 9:29-36).
Specifically, in the Answer the Examiner finds that Nevill-Manning
and Scott each disclose toggling between different views to display product
information, i.e., "between a list view and a grid view" in Nevill-Manning
and "between a grid view and a brand view" in Scott. Ans. 48 ( citing
Nevill-Manning, 5:15-24, Figs. 3--4; Scott, 9:29--41, Figs. 2, 5). Further, the
Examiner finds that a person of ordinary skill "would recognize that these
toggles can be combined to enable a user to toggle between three views:
( 1) a list view taught by Nevill-Manning, (2) a grid view taught by Nevill-
Manning and Scott, and (3) a brand view taught by Scott." Id. And the
Examiner finds that the proposed combination advantageously "provide[ s]
a user access to three arrangements of search results." Id. at 48--49.
ASSERTED IRRELEVANCE OF CERTAIN
FINDINGS AND CONCLUSIONS IN THE ANSWER
Appellants assert that certain findings and conclusions in the Answer
are "irrelevant" because they do not "appear anywhere in the Final
Rejection." Reply Br. 17, 19. We disagree. No rule prevents the Answer
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from going farther than the Final Office Action. See 3 7 C.F .R. § 41.39; see
also Manual of Patent Examining Procedure§ 1207 (9th ed. rev. 08.2017
Jan. 2018). Appellants cite no authority to support the assertions about
irrelevance. Reply Br. 17, 19. Appellants' unsupported assertions do
nothing to diminish the findings and conclusions in the Answer.
SUMMARY FOR INDEPENDENT CLAIMS 12, 19, AND 27
For the reasons discussed above, Appellants' arguments have not
persuaded us that the Examiner erred in rejecting claims 12, 19, and 27 for
obviousness based on Nevill-Manning, Scott, and Piekos. In our view, the
claimed subject matter exemplifies the principle that "[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR, 550 U.S. at 416. Thus,
we sustain the§ 103(a) rejection of claims 12, 19, and 27.
DEPENDENT CLAIMS 29 AND 31
Claim 29 depends from claim 27, and claim 31 depends from
claim 19. Appellants do not argue patentability separately for these
dependent claims. See App. Br. 56-74; Reply Br. 15-19. Thus, we sustain
the§ 103(a) rejection of these dependent claims for the same reasons as
claims 19 and 27. See 37 C.F.R. § 4I.37(c)(l)(iv).
DEPENDENT CLAIMS 13-18, 20-26, AND 30
Claims 13-18 depend from claim 12, claims 20-26 depend from
claim 19, and claim 30 depends from claim 27. For these dependent claims,
Appellants argue that the Examiner fails to identify any reason "why one of
ordinary skill in the art would modify Nevill-Manning to include the
additional features of' each dependent claim. App. Br. 61, 65----67, 71-73.
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Appellants' arguments do not persuade us of Examiner error because
the Examiner explains that the "same rationale for combining" the
references that applies to the independent claims also applies to the
dependent claims. Ans. 50-56; see Final Act. 10-12, 19--21, 28-30 (citing
Scott, 2:20-32; Piekos ,r 21 ). For instance, the Examiner finds that a person
of ordinary skill would have combined Scott with Nevill-Manning "to obtain
the benefit of providing 'a more efficient way of displaying search results
and/or mak[ing] it more convenient and efficient to purchase goods on-line
when the customer desires to compare various products before making a
purchase."' Final Act. 10-11, 19, 28-29 (quoting Scott, 2:27-30); Ans.
50-56 (quoting Scott, 2:27-30); see Scott, 2:24--32, 3: 17-28.
Because Appellants' arguments do not persuade us of Examiner error,
we sustain the§ 103(a) rejection of claims 13-18, 20-26, and 30.
The§ 103(a) Rejection of Claim 28
Claim 28 depends from claim 27 and specifies that "the product
information includes a customer rating." App. Br. 82. As noted above, the
§ 103(a) rejection of claim 28 rests on Nevill-Manning, Scott, Piekos, and
Joinson. See Final Act. 32-33. Appellants argue that the Examiner erred in
rejecting claim 28 because "there is no teaching, suggestion, motivation or
objective reason to modify the Nevill-Manning/Scott/Piekos combination to
incorporate the features of Claim 28." App. Br. 74; see Reply Br. 15.
Specifically, Appellants assert that "the design of a retailer user
interface is not a simple process as a retailer interactive user interface has
a limited visible area for a designer to work with" and "when one feature is
added another feature will need to be deleted." App. Br. 74. Appellants also
assert that the Examiner fails to explain (1) "what features of the Nevill-
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Manning/Scott/Piekos combination would need to be deleted to be able to
incorporate" features from Joinson or (2) why a person of ordinary skill
"would place greater emphasis on" features from Joinson "over the features
in the Nevill-Manning/Scott/Piekos combination that would need to be
deleted" to add features from Joinson. Id.
Appellants' arguments do not persuade us of Examiner error for
several reasons. First, Appellants' assertion that interface design requires
one-for-one feature replacement and disallows feature addition constitutes
unsupported attorney argument. See Ans. 46-47, 57. Attorney argument
"cannot take the place of evidence." Pearson, 494 F.2d at 1405.
Second, Appellants' arguments disregard the principle that
"[ c ]ombining the teachings of references does not involve an ability to
combine their specific structures." Nievelt, 482 F.2d at 968 (emphasis in
original).
Third, in the Answer the Examiner correctly finds that ( 1) "features of
a web page can be added to an existing web page without having to remove
other features" and (2) "there is enough space next to the prices of each
product depicted in Nevill-Manning and Scott to incorporate product rating
information, such as the small numerical product ratings depicted in FIGS.
2b, 5a, 5b, 6a, and 6b of Joinson." Ans. 46-47, 57. In the Reply Brief,
Appellants fail to address the findings in the Answer. See Reply Br. 15-19.
Fourth, the Examiner correctly finds that the motivation to combine
comes from the references themselves. Final Act. 32-33. Specifically, the
Examiner finds that a person of ordinary skill would have combined Joinson
with the other references "to obtain the benefit of providing information to
enable customers to make informed decisions." Id. at 33 (citing Joinson,
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1:5-35); see Joinson, 1:5-35, 2:20-3:2, 4:3-10, 11:62-12:67, Figs. 2b,
5a-5b, 6a---6b.
Hence, the Examiner explicitly identifies a reason that would have
prompted a person of ordinary skill to combine the references, and thus
provides a "rational underpinning to support the legal conclusion of
obviousness." See Kahn, 441 F.3d at 988. Appellants do not address the
Examiner's explicit analysis. See App. Br. 19, 56, 73-74; Reply Br. 15-19.
Because Appellants' arguments do not persuade us of Examiner error,
we sustain the§ 103(a) rejection of claim 28.
DECISION
We reverse the rejection of claims 12-31 under 35 U.S.C. § 101.
We affirm the rejections of claims 12-31 under 35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection for each claim on
appeal, we affirm the Examiner's decision to reject all of the claims on
appeal. See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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