Ex Parte Johnson et al

Patent Trial and Appeal Board

Jun 21, 2016

12476145 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/476,145
38485 7590
ARENT FOX LLP
FILING DATE
0610112009
06/23/2016
1675 BROADWAY
NEW YORK, NY 10019
FIRST NAMED INVENTOR
Gerard C. Johnson
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.
036423.00009 4840
EXAMINER
CRAWLEY, TALIAF
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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):
NYIPDocket@arentfox.com
Patent_Mail@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERARD C. JOHNSON,
SEAN BUNNER, and
JOHN McDEVITT
Appeal2013-008530
Application 12/476,145 1
Technology Center 3600
Before HUBERT C. LORIN, BRADLEY B. BAY AT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gerard C. Johnson, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-24. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify HSNi, LLC as the real party in interest. App. Br.
2.
Appeal2013-008530
Application 12/476,145
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for providing an electronic transaction environment,
compnsmg:
receiving first digital information stored in an electronic
database, the first digital information relating to at least one product in
a first category;
receiving second digital information stored in the electronic
database, the second digital information relating to at least one
product in a second category, the at least one product in the second
category being a product that was previously in the first category;
receiving scheduled periodic updates to the second digital
information that relate to the at least one product in the second
category; and
receiving unscheduled updates to the first digital information
that relate to the at least one product in the first category whenever
there is an update to the first digital information stored in the
electronic database.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Pugliese, III
Hodge
Maggio
US 2002/0072974 Al
US 2002/0184623 Al
US 2007/0186252 Al
Jun. 13,2002
Dec. 5, 2002
Aug.9,2007
"[U]sing XML for creating custom markup languages is well known
to those of ordinary skill in the art, and Official Notice to that effect is
hereby taken." Final Act. 20. [Official Notice]
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Appeal2013-008530
Application 12/476,145
The following rejections are before us for review:
1. Claims 1-14, 16-18, and 20-24 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hodge, Pugliese, III and Maggio.
2. Claims 15 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hodge, Pugliese, III, Maggio, and Official Notice.
ISSUES
Did the Examiner err in rejecting claims 1-14, 16-18, and 20-24
under 35 U.S.C. § 103(a) as being unpatentable over Hodge, Pugliese, III and
Maggio?
Did the Examiner err in rejecting claims 15 and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Hodge, Pugliese, III, Maggio, and
Official Notice?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1-14, 16-18, and 20-24 under 35 USC§ 103(a) as
being unpatentable over Hodge, Pugliese, III and Maggio.
Claims 1, 6, 9, 16, and 20
The Appellants argued claims 1, 6, 9, 16, and 20 as a group (App.
Br. 8-11 ). We select claim 1 as the representative claim for this group, and
the remaining claims 6, 9, 16, and 20 stand or fall with claim 1. 3 7 C.F .R.
§ 41.37(c)(l)(iv) (2013).
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Application 12/476,145
In the Appeal Brief, the Appellants state:
Initially, the Final Office Action dated July 17, 2012
acknowledges that neither Hodge nor Pugliese discloses the concept
of providing two different types of updates to product data based on
which category the particular products fall within. Specifically, the
Final Office Action states at page 5 that Hodge in combination with
Pugliese "fails to teach or suggest wherein the scheduled or
unscheduled inventory updates relate to the at least one product in a
first or second category."
App. Br. 9, and then discuss Maggio.
In fact, what the Examiner found was that
the prior art reference Hodge et al, in combination with Pugliese, fails
to teach or suggest wherein the scheduled or unscheduled inventory
updates relate to the at least one product in a first or second category
and wherein said first category has a first priority, said second
category has a second priority, the first priority being higher than the
second priority.
However, the prior art reference Maggio ...
Final Act. 5 (emphasis added).
The limitation "wherein said first category has a first priority, said
second category has a second priority, the first priority being higher than the
second priority," for which Maggio was initially relied upon, no longer
appears in the claim. It was added by an amendment filed March 20, 2012,
but subsequently replaced by "the at least one product in the second category
being a product that was previously in the first category." See Response
After Final Action, filed Oct. 12, 2012. Maggio is still applied but against
the limitation "the at least one product in the second category being a
product that was previously in the first category." See Advisory Action
(mailed Nov. 2, 2012) ("Maggio does indeed disclose wherein products can
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Appeal2013-008530
Application 12/476,145
be separated into two categories, wherein products from one category were
previously in another.")
The point is that the Appellants have not addressed the Examiner's
position.
The Appellants argue only that "Maggio does not disclose that
product data is updated on both a scheduled and unscheduled basis
depending on the specific product category of the product and that the same
product that was in the first category at a first time will be in a second
category at a second time." App. Br. 9. See also App. Br. 10 ("there is still
no disclosure in Maggio that the type of product data updates (scheduled or
unscheduled) is based on the particular category of product, as required by
independent claim 1. ")
However, it is clear from the record that, in the Final Action, the
Examiner was relying not on Maggio but the combination of Hodge (for the
scheduled update) and Pugliese, III (for the unscheduled update). See Final
Act. 4 (emphasis added):
receiving scheduled periodic updates, to the second digital
information that relate to the at least one product in the second
category (see for example paragraphs [0029], [0040], [0070], and
[0076], to Hodge et al); and receiving unscheduled updates relating
to the first digital information that relate to the at least one product in
the first category (see for example paragraph [0136], to Pugliese III et
al, wherein there is a product category containing lists of product
categories, which are used for user classification during searches)
whenever there is an update to the first digital information stored in
the electronic database (see for example paragraphs [0070], [0074],
and [0076], to Hodge et al).
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Application 12/476,145
And yet neither Hodge nor Pugliese, III are addressed in the Appeal Brief.
Accordingly, the argument challenging the rejection of claim 1 is
unpersuasive as to its error and therefore the rejection is sustained.
We do not find it necessary to consider the Response to Argument
section of the Examiner's Answer and, as a result, we do not reach the Reply
Brief.
Since the remaining claims 6, 9, 16, and 2 0 stand or fall with claim 1,
the rejection as to those claims is sustained for the same reason.
Claims 2-5, 7, 8, 10-14, 17, and 18
Albeit these claims are separately grouped in the Appeal Brief, the
Brief states that "Applicants are not arguing the rejection of claims 2-5, 7-8,
10-14, 17-18, and 21-24 separately from the arguments in response to the
rejection of claims 1,6, 9, 16, and 20 as set forth above." App. Br. 11.
Accordingly, the rejection as to these claims is sustained for the same reason
discussed above.
The rejection of claims 15 and 19 under 35 USC §103(a) as being
unpatentable over Hodge, Pugliese, III, Maggio, and Official Notice.
The Appellants rely on the argument challenging the rejection of
claim 1 in challenging this rejection. App. Br. 11. For the same reason
already discussed, the argument is unpersuasive as to error in the rejection
and, accordingly, the rejection as to these claims is therefore sustained.
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Application 12/476,145
CONCLUSIONS
The rejection of claims 1-14, 16-18, and 20-24 under 35 U.S.C.
§ 103(a) as being unpatentable over Hodge, Pugliese, III, and Maggio is
sustained.
The rejection of claims 15 and 19 under 35 U.S.C. §103(a) as being
unpatentable over Hodge, Pugliese, III, Maggio, and Official Notice is
sustained.
DECISION
The decision of the Examiner to reject claims 1-24 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
1.136(a)(l )(iv).
AFFIRMED
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