Ex Parte Lin-Hendel

Board of Patent Appeals and Interferences

Nov 29, 2010

09833956 (B.P.A.I. Nov. 29, 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.
09/833,956 04/12/2001 Catherine Lin-Hendel LH011 3820
35070 7590 11/29/2010
ANATOLY S. WEISER
3525 DEL MAR HEIGHTS ROAD, #295
SAN DIEGO, CA 92130
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
11/29/2010 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 CATHERINE LIN-HENDEL
____________

Appeal 2009-004660
Application 09/833,956
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1
Appellant has filed a Request for Rehearing (hereafter “Request”)
under 37 C.F.R. § 41.52(a)(3) (2008) of the Decision of July 22, 2010
(hereafter “Decision”).

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 2009-004660
Application 09/833,956

2
In the Decision, we affirmed the Examiner’s rejection of claims 18-20
and 22-38. In so doing, we affirmed the rejection of independent claims 18
and 34 under 35 U.S.C. § 103(a) as being unpatentable over Gavarini (US
7,080,070 B1, issued Jul. 18, 2006) in view of Wells (US 6,711,586 B1,
issued Mar. 23, 20040.
Appellant maintains the “Board has overlooked certain points relating
to claims 28, 34, and 36.” (Request 3).
Independent claim 18 recites in pertinent part, searching certain data
sources of the plurality of data sources in a prioritized order specified by the
user.
In our Decision, we stated that:
We also find in Wells, once the primary selection
is presented to the user, the user then is presented
with a plurality of different items (110a-110f), the
selection of one of those items results in the
display from a single search- the results of which
are shown in Figure 2B (FF 6).
(Decision 5-6).
We based our analysis in the Decision on finding of fact 6
which states:
Wells discloses receiving by “…the Web server 15
if, for example, the user double clicks on one of
associated selections 110a-f. FIG. 2b shows a
second Web page 140 transmitted after the first
primary information selection 105 has been
updated to replace SCREAM with associated
information selection 110f relating to the movie
PSYCHO.” (col. 7, 11. 38-43).
(Decision 4).
Appellant argues that “Claim 28, however, requires prioritizing
Appeal 2007-004321
Application 09/756,787

3
sources -- not items -- in the order specified by the user. In fact, the claim
does not even include the words item or items, so prioritizing cannot
reasonably be construed as applying to items.” (Request 4).
We do not find Appellant’s point compelling because the
Specification does not explicitly define “sources2,” and “item” is a term
which broadly covers “source.” In fact, Appellant’s reference to the
Specification, on page 5 of the Request, for examples of “sources” fails to
show even one instance where the word “source” is used. Rather, these
instances only list examples of where Appellant maintains that a source is
described. For example, within the referenced “list of suppliers”, the
suppliers are no more than names on a given list, and thus are generally,
items. Even still, our finding that items 110a-f are data sources is consistent
with the definition of “source” because once the user selects an item, 110f
for example, this will cause a new set of associated selections to be brought
forth. (Wells, col. 7, ll. 50-56).
Independent claim 34 recites in pertinent part, simultaneously
purchasing on-line all or some of said plurality of different items in said
shopping list.
In our Decision, we found that: “the purchase of one of the movies
offered by Wells in Figures 2a or 2b constitutes a purchase of some (FF 7) of
the offered movies because the selection of even a single movie makes
determinate an otherwise indeterminate choice over not buying the movie at
all.” (Decision 7). We based our finding on the dictionary definition of the

2 The ordinary and customary definition of the term “source” as defined by
Merriam Webster’s Dictionary is: “that from which anything comes
forth.…” (http://www.webster-dictionary.org/definition/source, n. 3).
Appeal 2007-004321
Application 09/756,787

4
word “some” which we found to be “one indeterminate quantity, portion or
number as distinguished from the rest.” (Decision 5, FF 7).
Appellant maintains that “the limitation simultaneously would be
meaningless in [the (sic)] case of purchasing only a single item.” (Request
6). Appellant asserts that “the simultaneously limitation clearly mandates
that at least two items are purchased ….” (Request 7).
We do not find this argument persuasive because Appellant chose to
broaden the scope of the claim by using the alternative language “or some”.
In so doing, Appellant allowed the claim to be met by the selection of one
item as our (FF 7) supports. If Appellant sought to have “some” mean “at
least two,” then this should have been recited in the claim. Appellant’s
reliance of the word “simultaneously” to infer that more than one item is
being selected, is at best, based one of plural interpretations of the claim
language which are available- and we decline to accept Appellant’s. That is,
Appellant seeks to have the term “simultaneously” refer to the plurality of
items, when alternatively for example, “simultaneously” could refer to
displaying information and purchasing simultaneously. During prosecution
the PTO gives claims their “broadest reasonable interpretation consistent
with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000).
Appellant seeks under the Request a new review of claim 36. In the
Appeal Brief, Appellant stated “Applicant respectfully submits that claim 36
is separately patentable at least for the same reason as is discussed in relation
to dependent claim 33 under the immediately preceding subheading.” (App.
Br. 20). Our Decision at pages 7-8 addressed claim 33. Since Appellant
made the outcome of claim 36 contingent on our reasoning for claim 33, and
since Appellant does not argue any deficiency in our analysis of claim 33,
Appeal 2007-004321
Application 09/756,787

5
Appellant’s argument to claim 36 falls with claim 33. Arguments which
Appellant could have made with regard to claim 36 but chose not to make in
the previously filed Briefs will not now be considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).
For the reasons above, we are not convinced that Appellant has shown
with particularity points believed to have been misapprehended or
overlooked by the Board in rendering its earlier decision. Accordingly,
Appellant’s Request for Rehearing insofar as Appellant seeks an
establishment of error in the Decision of the Board is denied.

CONCLUSIONS OF LAW
The arguments in Appellant’s Request have not convinced us that we
erred in affirming the Examiner’s decision to reject claims 18-20, and 22-38
under 35 U.S.C. § 103(a) as being unpatentable over Gavarini in view of
Wells.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

REHEARING DENIED

mls

ANATOLY S. WEISER
3525 DEL MAR HEIGHTS ROAD, #295
SAN DIEGO, CA 92130