Ex Parte Jannott et al

Board of Patent Appeals and Interferences

Jan 11, 2012

10960834 (B.P.A.I. Jan. 11, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/960,834 10/07/2004 Frederick P. Jannott A15.002 4992
28062 7590 01/11/2012
BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
CUMARASEGARAN, VERN
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
01/11/2012 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 FREDERICK P. JANNOTT and WILLIAM JANNOTT
____________

Appeal 2010-010193
Application 10/960,834
Technology Center 3600
____________

Before, ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010193
Application 10/960,834

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-34. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A system for producing a configured construction
specification for a construction product, said system
comprising:
a website;
an unconfigured specification accessible by said website,
said unconfigured specification comprising a plurality of
portions of construction specification information relating to
said at least one construction product, each of the plurality
of portions corresponding to at least one of a plurality of
characteristics that define said at least one construction
product;
a webpage displayed on the website, said webpage
containing a plurality of indicia selectable by a user via said
website, each of said plurality of indicia corresponding to at
least one of the plurality of characteristics; and
software executing on said website for preparing a
configured specification based at least in part upon the
construction specification information contained in the
unconfigured specification and the indicia selected by the
user via said webpage.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Jung US2003/0208342 May 2, 2002

Appeal 2010-010193
Application 10/960,834

3
The following rejections are before us for review.
The Examiner rejected claims 1-3, 6, 7, 10, 11, 14-19, 22, 23, 26, 27,
30 and 31 are rejected under 35 U.S.C. §102(e) as being anticipated Jung.
The Examiner rejected claims 4, 5, 8, 9, 12, 13, 20, 21,24, 25, 28, 29
and 32-34 are rejected under 35 U.S.C. §103(a) as being unpatentable over
Jung.
Each of independent claims 1, 16 and 17 is rejected under 35
U.S.C. § 102 (e), and requires a webpage containing a plurality of
indicia selectable by a user via said website, each of said plurality of
indicia corresponding to at least one of the plurality of
characteristics.
The Examiner found with regard to this claim requirement that: “[i]n
order for a user to input information such as height data the website shown
in Jung would have to have a feature where a user is able to select the height
indicia and input the height data.” (Answer 7-8)
We do not find with the Examiner that the involved feature of a
webpage containing a plurality of indicia selectable by a user via said
website would have to have such a feature to the extent that Appellants
claimed system is so identical or substantially identical with the disclosed “a
height data provided by the user” (Jung ¶ [0048]) so as to make the feature
inherent to Jung. Accordingly, we will not sustain the anticipation rejection
of independent claims 1, 16 and 17.
Appeal 2010-010193
Application 10/960,834

4
Since claims 2-15, 18-32 depend from the independent claims 1, 16,
and 17, and since we cannot sustain the rejection of the independent claims,
the rejection of the dependent claims likewise cannot be sustained.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987). Inherency
“…may not be established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of circumstances is not
sufficient." In re Robertson, (Fed. Cir. 1999) (citations and internal
quotation marks omitted).
Independent claim 33 is rejected under 35 U.S.C. § 103(a) and
requires the same limitation discussed above. The Examiner here relies on ¶
38 of Jung to meet the claim limitation. However, our review of Jung at ¶
38 reveals that all that is disclosed here is that the user terminals 20 send two
dimensional drawings to the web pages for analysis. (FF 2) Although the
paragraph does mention the use of an internet browser which we understand
to use a plurality of selectable indicia, the Examiner does not make findings
showing how these indicia, which are normally designed to navigate the
internet, would also be used to correspond to at least one of the plurality of
characteristics that define at least one construction product.
Therefore, we will not sustain the rejection of claim 33. Since claim
34 depends from claim 33, and since we cannot sustain the rejection of claim
33 the rejection of claim 34 likewise cannot be sustained.

Appeal 2010-010193
Application 10/960,834

5
REVERSED

MP