Ex Parte Kohda et al

Board of Patent Appeals and Interferences

Nov 22, 2010

09766646 (B.P.A.I. Nov. 22, 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.
09/766,646 01/23/2001 Youji Kohda 1405.1032/JDH 4296
21171 7590 11/23/2010
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
DURAN, ARTHUR D
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
11/23/2010 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 YOUJI KOHDA,
SOICHI NISHIYAMA,
KOICHI MURAKAMI, and
TAKAYA FUJITA
___________

Appeal 2009-006262
Application 09/766,646
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
FRANCISCO C. PRATS, 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 2009-006262
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STATEMENT OF THE CASE
Youji Kohda et al. (Appellants) seek our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 1-12 and 14-26. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). Claim 13 has been canceled.

SUMMARY OF DECISION
We REVERSE. 2

THE INVENTION
This invention is “technology for promoting the sale of products and
services posted on a company web site over the Internet.” Specification 1:5-
9.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An online sales promotion method used in a
system to purchase a product over a network, said
method comprising:
associating cart identification information
with a first user;
receiving, from the first user, designation
information of a third party product provider
which the first user permits to view the cart
identification information and to view product
information which the first user associates with the
cart identification information, and which provides
a product related to the viewed product

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Sep. 12, 2008) and Reply Brief (“Reply Br.,” filed Dec. 30,
2008), and the Examiner’s Answer (“Answer,” mailed Oct. 30, 2008).

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information as well as additional information
related to the viewed product information, said
third party product provider not having permission
to view the cart identification and product
information before receipt of the designation
information;
associating and storing the designation
information with the cart identification
information;
receiving product information on said
product from the first user;
associating said product information with
the cart identification information;
notifying said third party product provider
associated with said cart identification information
of said cart identification information and product
information in accordance with a receipt of
designation information of said third party product
provider or a receipt of said product information;
receiving additional information regarding
the product identified by said product information,
and the cart identification information, from said
third party product provider;
determining whether the received additional
information is from the third party product
provider which the first user permits to view the
cart identification information and to view the
product information associated with the cart
identification information;
associating said received additional
information with said cart identification
information according to the determination result;
and
notifying said first user of said received
product information and additional information.

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Application 09/766,646

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hunt
Notz
Allibhoy
Hoyle
US 6,223,215 B1
US 7,016,864 B1
US 2004/0172343 A1
US 2005/0005242 A1
Apr. 24, 2001
Mar. 21, 2006
Sep. 2, 2004
Jan. 6, 2005

The following rejections are before us for review:
1. Claims 1, 6-10, and 23-26 are rejected under 35 U.S.C. §101 as
being directed to non-statutory subject matter.
2. Claims 1-12 and 14-26 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Hunt, Hoyle, Allibhoy and Notz.

ISSUES
The first issue is whether claims 1, 6-10, and 23-26 are directed to
non-statutory subject matter under 35 U.S.C. §101. Specifically, the issue is
whether claims 1, 6-10, and 23-26 recite patent eligible processes or abstract
ideas.
The second issue is whether claims 1-12 and 14-26 are unpatentable
under 35 U.S.C. §103(a) over Hunt, Hoyle, Allibhoy and Notz. Specifically,
the issue is whether Allibhoy teaches a third party product provider not
having permission to view the cart identification and product information
before receipt of the designation information.

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FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

Allibhoy
1. Allibhoy describes a system that broadcasts enhanced content
programming, such as purchasing information for a product
currently being shown. Allibhoy [0066].
2. Allibhoy describes content providers broadcasting enhanced
content programming to a user’s receiver (Allibhoy [0066]), via an
ATV controller (Allibhoy [0069]).
3. Allibhoy describes that the enhanced content programming
includes triggers or markers that can include a content provider
indicator. Allibhoy [0137].
4. Allibhoy describes that the triggers are used to filter from the
stream on enhanced content programming the material which is of
interest to a user. Allibhoy [0140]. See also Allibhoy [0157] –
[0162].
5. Allibhoy’s paragraph [0159] states:
In at least one embodiment of the invention, as
illustrated in FIG. 12, a trigger information filter is
defined (step 1201), either explicitly by the user or
implicitly by the user’s profile. Preferably the
information filter is explicitly set, thus allowing
the user to change the filter frequently depending
upon current needs. Once set, ATV controller 109
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monitors all possible sources, including both those
associated with the channel being viewed and
those associated with other channels, for triggers
meeting the criteria (step 1203). Once a trigger
meeting the criteria is detected, the user is notified
(step 1205), typically using a screen graphic or an
audible signal. Alternatively, the system can be
configured to immediately present the user with
any information meeting the preset criteria (step
1207).
6. Allibhoy is silent as to whether or not enhanced content
programming is received by the user prior to the filters being set.

Notz
7. Notz describes online store that has an upsell advisor included in a
shopping cart. Col. 4, ll. 35-48.
8. Notz describes that the upsell advisor uses information from the
shopping card to recommend an upsell to the customer. See col. 5,
ll. 45-61 and col. 6, ll. 22-28 and 43-46.
9. Notz describes that after the upsell advisor operates to obtain
information about the items in the shopping cart, “an inquiry is
made as to whether or not the given customer store allows for the
upsell advisor.” Col. 10, ll. 25-37. See also Fig. 5.

ANALYSIS
The rejection of claims 1, 6-10, and 23-26 as being directed to non-statutory
subject matter under 35 U.S.C. §101
The Examiner rejected claims 1, 6-10, and 23-26 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter because the method
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was not tied to another statutory class of invention (such as a particular
apparatus) or transform the underlying subject matter (such as an article or
materials). Answer 24-25. The Examiner seems to have found that these
claims fail the machine-or-transformation test. Id.
Notwithstanding that this test for determining patent eligibility of a
process is unduly narrow (see Bilski v. Kappos, 130 S. Ct. 3218, No. 08-964,
2010 WL 2555192 (U.S. June 28, 2010), it can nevertheless be instructive as
a factor in determining whether the claimed processes are patent-ineligible
abstract ideas.
Before we can determine whether the claimed processes are abstract
ideas, the broadest reasonable construction of the claims must first be
established. See State St. Bank & Trust Co. v. Signature Fin. Group, 149
F.3d 1368, 1370 (Fed. Cir. 1998) (“whether the . . . patent is invalid for
failure to claim statutory subject matter under 35 U.S.C. § 101[ ] is a matter
of both claim construction and statutory construction”). In that regard, the
claims recite “cart identification information,” which reasonably construed
seems to implicitly require an electronic shopping cart, which would require
a particular apparatus.
The Examiner finds that the claimed processes are not tied to another
statutory class of invention, such as a machine. But the Examiner does not
explain why this is so. See Answer 24-25. An explanation is made more
necessary, given that the claims are reasonably broadly construed to require
a particular apparatus. That is, they are nominally tied to a particular
apparatus in contradistinction to the Examiner’s finding. The initial burden
of establishing that the claimed processes are patent-ineligible abstract ideas
has not therefore been established because the construction of the claims
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does not fully support finding that they are not tied to an apparatus as an
underlying factor in concluding that the processes as claimed as a whole are
patent-ineligible abstract ideas.
Accordingly, we find that the rejection of claims 1, 6-10, and 23-26
under 35 U.S.C. § 101 as being directed to non-statutory subject matter is
overcome.

The rejection of claims 1-12 and 14-26 under §103(a) as being unpatentable
over Hunt, Hoyle, Allibhoy, and Notz.
Method Claims 1-10, 14-20, and 23-26
Claim 1 recites:
receiving, from the first user, designation
information of a third party product provider
which the first user permits to view the cart
identification information and to view product
information which the first user associates with the
cart identification information, and which provides
a product related to the viewed product
information as well as additional information
related to the viewed product information, said
third party product provider not having permission
to view the cart identification and product
information before receipt of the designation
information.
(Emphasis added.)

The Appellants argue that none of Hunt, Hoyle, Allibhoy, and Notz,
teaches the limitation above. App. Br. 21-28 and Reply Br. 4-9.
Specifically, the Appellants argue that the Examiner has mischaracterized
the teaching of Allibhoy and that Allibhoy does not teach the limitation
above. Reply Br. 6-8.
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The Examiner relies upon Allibhoy’s description of a user setting a
filter for enhanced content programming to teach receiving designation
information of a third party product provider. Answer 29. The Examiner
reasons that the filter could be set to filter the enhanced content
programming broadcast for content from content providers meeting the
user’s criteria. Answer 29-31. The Examiner asserts that the content
providers that meet the user’s criteria are allowed to interact with the user
(i.e. their content passes the filter) and those that do not are not allowed to
interact with the user. Id. The Examiner seems to assume, though not
explicitly, that prior to the filters being set by the user content providers are
not allowed to interact with the user. Citing paragraph [0159] (see FF 5), the
Examiner states: “Allibhoy further discloses allowing the third party product
providers to send content to the user only after receiving permission from
the user . . .” Answer 29 (emphasis added). The Examiner also states:
“Hence, Allibhoy discloses allowing the third party product providers to
send content to the user only after receiving permission from the user.”
Answer 30 (emphasis added).
However, while Allibhoy does teach that, after the filters are set, only
certain enhanced content is passed to the user (see FF 4-5), Allibhoy is silent
as to whether or not enhanced content programming is received by the user
prior to filters being set by the user. FF 6. For example, prior to a user
setting the filter, all enhanced content programming could pass to the user,
or no enhanced content programming could pass to the user.
Moreover, while the user or network operator of Allibhoy’s system
may filter the information transmitted to the user (see, e.g., Allibhoy [0003],
[0054], [0159]), the Examiner has not adequately explained why the cited
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portions of Allibhoy teach or suggest that the filters actually deny the
content provider permission to access the user’s purchase information, i.e.
cart identification information, as the claims require. Therefore, we disagree
with the Examiner that Allibhoy discloses allowing the third party product
providers (i.e. content providers) to interact with the user only after
receiving permission from the user (i.e. user setting the filter).
Further, we note that Notz, which the Examiner cites to teach a third
party viewing cart identification information (Answer 33-34), also does not
teach the limitation at issue. In Notz, the upsell advisor sees the cart
information prior to receiving permission to offer an upsell or not. FF 8-9.
We find that neither the cited teachings of Allibhoy, relied upon by the
Examiner, nor Notz teaches the limitation at issue.
Independent claims 14 and 23 also recite steps similar to the one at
issue above, and our reasoning applies equally to the rejection of those
claims. Accordingly, we find that the Appellants have overcome the
rejection of claims 1-10, 14-20, and 23-26 under 35 U.S.C. §103(a) as being
unpatentable over Hunt, Hoyle, Allibhoy, and Notz.

Apparatus Claims 11 and 21
Claim 11
Unlike claim 1 discussed above, claim 11 is directed to an apparatus
that includes limitations written in means-plus-function format.
35 U.S.C. § 112, paragraph 6:
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
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cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
Construing means-plus-function claim language in accordance with 35
U.S.C. § 112, paragraph 6, is a two step process.
The first step in construing a means-plus-function claim
limitation is to define the particular function of the claim
limitation. Budde v. Harley-Davidson, Inc., 250 F.3d
1369, 1376 (Fed.Cir.2001). “The court must construe the
function of a means-plus-function limitation to include
the limitations contained in the claim language, and only
those limitations.” Cardiac Pacemakers, Inc. v. St. Jude
Med., Inc., 296 F.3d 1106, 1113 (Fed.Cir.2002). . . . The
next step in construing a means-plus-function claim
limitation is to look to the specification and identify the
corresponding structure for that function. “Under this
second step, ‘structure disclosed in the specification is
“corresponding” structure only if the specification or
prosecution history clearly links or associates that
structure to the function recited in the claim.’ ” Med.
Instrumentation & Diagnostics Corp. v. Elekta AB, 344
F.3d 1205, 1210 (Fed.Cir.2003) (quoting B. Braun Med.
Inc. v. Abbott Labs., 124 F.3d 1419, 1424
(Fed.Cir.1997)).
Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir.
2004).
Claim 11 recites a means for the receiving step at issue above.
The Appellants assert that computer 3, which has a stored program for
performing the recited function, is the structure in the Specification that
corresponds to the recited means for receiving designation information.
App. Br. 10. For the same reasons as discussed above, with regards to claim
1, we find that the Examiner has not established that either Allibhoy or Notz
teaches this corresponding structure or an equivalent. Accordingly, we find
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that the Appellants have overcome the rejection of claim 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Hunt, Hoyle, Allibhoy, and Notz.

Claim 21
Claim 21 recites a first acceptance unit that performs a function
similar to the step at issue above with regard to claim 1. For the reasons,
discussed above, we find that the Examiner has not established that the
combination of Hunt, Hoyle, Allibhoy, and Notz teaches a first acceptance
unit that is capable of performing the recited function. Cf. In re Schreiber,
128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (functional language does not
confer patentability if prior art structure has capability of functioning in the
same manner). Accordingly, we find that the Appellants have overcome
the rejection of claims 1-10, 14-20, and 23-26 under 35 U.S.C. §103(a) as
being unpatentable over Hunt, Hoyle, Allibhoy, and Notz.

Article Claims 12 and 22
Both claims 12 and 22 recite a computer-readable recording medium
storing a program to perform a step similar to that at issue in claim 1 above.
For the reasons discussed above, we find that the Examiner has not
established that the combination of Hunt, Hoyle, Allibhoy, and Notz teaches
a computer-readable recording medium storing a program to perform the
recited step. Accordingly, we find that the Appellants have overcome the
rejection of claims 12 and 20 under 35 U.S.C. §103(a) as being unpatentable
over Hunt, Hoyle, Allibhoy, and Notz.

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DECISION
The decision of the Examiner to reject claims 1-12 and 14-26 are
reversed.
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)(1)(iv) (2007).

REVERSED

mev

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