Ex Parte Poon

Patent Trial and Appeal Board

Nov 21, 2013

09491703 (P.T.A.B. Nov. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEX DAI-SHUN POON
____________

Appeal 2013-006095
Application 09/491,703
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Alex Dai-Shun Poon (Appellant) seeks our review under 35 U.S.C. §
134 of the final rejection of claims 9, 14-16, 25, 30-32, 41, 46-48, 71, 73,
and 75. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.1

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jan. 2, 2013) and Reply Brief (“Reply Br.,” filed Apr. 1, 2013),
and the Examiner’s Answer (“Answer,” mailed Jan. 31, 2013).
Appeal 2013-006095
Application 09/491,703

2
THE INVENTION
Claim 9, reproduced below, is illustrative of the subject matter on
appeal.
9. A method comprising:
providing a plurality of category entries to be displayed in a
display window, said plurality of category entries being indicative of a
categorization of a plurality of items that are available to be included
in a computerized transaction;
detecting a selection of a category entry of said plurality of
category entries in said display window;
in response to said detection of said selection of said category
entry, providing a plurality of subcategory entries to be displayed in
said display window, said plurality of subcategory entries being
further indicative of said categorization of said plurality of items;
detecting a selection of a subcategory entry of said plurality of
subcategory entries in said display window;
receiving a specification of a category number that uniquely
identifies a combination of said category entry and said subcategory
entry;
receiving an additional specification of said category number;
and
based on said receiving of said additional specification of said
category number automatically reselecting said category and said
subcategory in said display window.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Appeal 2013-006095
Application 09/491,703

3
Greef
Linden

US 6,397,221 B1
US 2005/0071251 A1
May 28, 2002
Mar. 31, 2005
“[T]o have a transaction take place per the Official Notice,” Ans. 7.
[Official Notice]
The following rejections are before us for review:
1. Claim 9, 14, 15, 25, 30, 31, 41, 46, and 47 is rejected under 35 U.S.C.
§103(a) as being unpatentable over Greef and Official Notice.
2. Claims 16, 32, 48, 71, 73, and 75 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Greef and Linden.

ISSUES
Has the Examiner set out a prima facie case of obviousness?

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 claim 9, 14, 15, 25, 30, 31, 41, 46, and 47 under 35 U.S.C.
§103(a) as being unpatentable over Greef and Official Notice.
The central issue is whether the claim limitation “receiving a
specification of a category number that uniquely identifies a combination of
said category entry and said subcategory entry”. This limitation is recited in
all the independent claims (claims 9, 25, and 41).
The Examiner cites Greef’s disclosure of a model number displayed in
Appeal 2013-006095
Application 09/491,703

4
a display window as an identifier as evidence that that the limitation at issue
is disclosed in the prior art. Ans. 5-6 (citing Greef, col 18, ll. 42-46; col. 27,
ll. 44-59; coil. 2, ll. 61-67; col. 3, ll. 1-6; col. 29, ll. 40-67; col. 30, ll. 1-14
and 25-42; and col. 31, ll. 18-50).
The Appellant disagrees that said passages disclose said limitation at
issue. App. Br. 11-14 and Reply Br. 3-5.
In response, the Examiner reproduced statements the Board made in a
prior appeal. See Ans. 11-12.
This application was before us in prior appeal 2010-004037. The
claims on appeal in that case called for “providing a category number
associated with said selected category entry to be displayed for said user in
said display window.” On the question of obviousness over Greef, regarding
this limitation, we stated:
We have reviewed [Greef] col. 18, 11. 42-46. It states there:
"In preferred form, the record identifier could be selected to be, for
example, the tabular attribute model number, the model number for
the product being an identifier likely to receive recognition across
presentation formats."
The Examiner has taken the position that the term "category
number" as used in the claim reads on Greef’s "model number."
Answer 9-10. In that regard, the Specification does not expressly
define "category number." It can be represented by a number. See
Specification 55:28-32. Thus, the claim term "category number" is
reasonably broadly construed as covering a number. Greef’s "model
number" is also a number. Accordingly, we see no error in the
Examiner's position that the term "category number" as used in the
claim reads on Greer s "model number." Given this, the passage at col.
18, 11. 40-42, describes presenting a number for recognition to
"enable[] the user to select a tabular product attribute to act as general
identifier for products in the hierarchical frame structure" and thereby
Appeal 2013-006095
Application 09/491,703

5
discloses "providing a category number associated with said selected
category entry to be displayed for said user in said display window"
(claim 9) as claimed.
Decision in 2010-004037, pp. 6-7. The Examiner has used these statements
in support of maintaining the obviousness of the claimed subject matter over
Greef. Ans. 11-12.
The difficulty is that the limitation at issue here was not addressed in
2010-004037. Here the question is whether Greef discloses, as the Examiner
alleges, “a category number that uniquely identifies a combination of said
category entry and said subcategory entry” (e.g., claim 9; emphasis added).
In 2010-004037, the question was whether Greef disclosed “a category
number associated with said selected category entry.” The fact that we
agreed that Greef disclosed “a category number associated with said selected
category entry” is insufficient to lead us to the conclusion that Greef
discloses “a category number that uniquely identifies a combination of said
category entry and said subcategory entry.” In that regard, the Greef
passages relied upon do not in fact disclose “a category number that
uniquely identifies a combination of said category entry and said
subcategory entry.” Accordingly, given nothing more, we must conclude
instead that the preponderance of the evidence does not establish a prima
facie case of obviousness for the claimed subject matter in the first instance.
The rejection is not sustained.

Appeal 2013-006095
Application 09/491,703

6

The rejection of claims 16, 32, 48, 71, 73, and 75 under 35 U.S.C. §103(a)
as being unpatentable over Greef and Linden.

This rejection is directed to claims dependent on claims 9, 25, and 41,
whose rejection we have reversed above. For the same reasons, we will not
sustain the rejections of these claims over the cited prior art. Cf. In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious
if the independent claims from which they depend are nonobvious.”).

CONCLUSIONS
The rejections of claim 9, 14, 15, 25, 30, 31, 41, 46, and 47 under 35
U.S.C. §103(a) as being unpatentable over Greef and Official Notice and
claims 16, 32, 48, 71, 73, and 75 under 35 U.S.C. §103(a) as being
unpatentable over Greef and Linden are reversed.

DECISION
The decision of the Examiner to reject claims 9, 14-16, 25, 30-32, 41,
46-48, 71, 73, and 75 is reversed.

REVERSED

tkl