Ex Parte Sanders et alDownload PDFBoard of Patent Appeals and InterferencesMay 7, 201210776069 (B.P.A.I. May. 7, 2012) Copy Citation 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. 10/776,069 02/11/2004 Susan Q. Sanders 50160 2097 22929 7590 05/07/2012 Sue Z. Shaper 1800 WEST LOOP SOUTH SUITE 1450 HOUSTON, TX 77027 EXAMINER MORRISON, JAY A ART UNIT PAPER NUMBER 2168 MAIL DATE DELIVERY MODE 05/07/2012 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 SUSAN Q. SANDERS and GLEN N. SANDERS JR. ____________________ Appeal 2010-010287 Application 10/776,069 Technology Center 2100 ____________________ Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and THU A. DANG, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010287 Application 10/776,069 2 I. STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-43. We have jurisdiction under 35 U.S.C. § 6(b). A. INVENTION1 According to Appellants, the invention relates to an Internet Directory System that increases website visibility, creates profitable Internet related businesses and generates a stable revenue stream for website directories and Internet Service Providers, or the like (Spec. 1, ll. 10-16). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary and is reproduced below: 1. An improved Internet Directory System, comprising: at least one upper-level Directory Provider (DP), providing an upper-level directory of lower-level directories, the upper-level directory organized by at least upper-level fields and/or super-categories and categories (together, upper-level categories) and referencing hundreds of independently owned (from each other and from the Directory Provider) for-profit 1 In a prior Decision (Appeal Number 2008-001004, dated December 10, 2008, available at http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20081004- 12-10-2008-1) (“Decision”), we affirmed the Examiner’s rejection of claims 1-11, 13-37, 39, 41, and 42 over Pricewatch and Yahoo; of claim 12 over Pricewatch, Yahoo, and Morimoto; of claim 38 over Pricewatch, Yahoo, and Ebay; and of claim 40 over Pricewatch, Yahoo, and Google. Appeal 2010-010287 Application 10/776,069 3 lower-level directories Category Directory Websites (CDWs) related to the upper-level categories, the CDWs organized by lower-level categories and subcategories; the hundreds of CDWs each providing a lower level directory comprehensively referencing viable websites (WSs) relating to a category; the CDWs being identified as participating in the System by the display by each CDW of a common licensed service mark, or a common URL portion functioning as a service mark, the common service mark being displayed by the hundreds of CDWs to indicate participation in a unique source of an internet directory system; and a business model imposed on the CDWs by the DP or System, including standards of operation of uniform organization, comprehensiveness of reference and up-to- dateness with respect to the provision of lower level directories. C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Morimoto US 2002/0013774 A1 Jan. 31, 2002 Google, “Advertising Programs,” http://web.archive.org/web/20020222235615/www.google.com /ads/ (webpages from 2/22/2002). eBay, “Fees,” http://web.archive.org/web/20021115120128/http://pages.ebay. co.uk/help/sell/fees.html (webpages from 11/15/2002). Appeal 2010-010287 Application 10/776,069 4 Yahoo!, “Yahoo! Commericial Directory,” http://web.archive.org/web/20021209155438/dir.yahoo.com/Bu siness_and_Economy/Directories/ (webpages from 12/09/2002). Pricewatch, http://web.archive.org/web/20030128022327/www.pricewatch. com/ (webpages from 1/28/2003). Youngsu Lee & Jinwoo Kim, “From Design Features to Financial Performance: A Comprehensive Model of Design Principles for Online Stock Trading Prices,” 3 Journal of Electronic Commerce Research 128-143 (2002) (hereinafter “Lee”). Claims 1-11, 13-37, 39, and 41-43 stand rejected under 35 U.S.C. § 103(a) over the teachings of Pricewatch, Yahoo and Lee; Claim 12 stands rejected under 35 U.S.C. § 103(a) over the teachings of Pricewatch, Yahoo, Lee, and Morimoto; Claim 38 stands rejected under 35 U.S.C. § 103(a) over the teachings of Pricewatch, Yahoo, Lee, and eBay; and Claim 40 stands rejected under 35 U.S.C. § 103(a) over the teachings of Pricewatch, Yahoo, Lee, and Google. We AFFIRM. II. ISSUES The issues are whether Appellants have shown that the Examiner erred in concluding that the combined teachings of Pricewatch, Yahoo and Appeal 2010-010287 Application 10/776,069 5 Lee would have suggested “hundreds” of Category Directory Websites (CDWs) “being identified as participating in the System by the display by each CDW of a common licensed service mark, or a common URL portion functioning as a service mark” and “a business model imposed on the CDWs …, including standards of operation of uniform organization, comprehensiveness of reference and up-to-dateness with respect to the provision of lower level directories” (Claim 1, emphasis added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Pricewatch 1. Pricewatch discloses an internet directory of “New Computer Components” (p. 1), wherein, for each item (New Computer Component) in the internet directory, there is a lower level directory of “Systems - Windows Links” (p. 2, bottom) and, for each item in the lower level directory (Computer Systems – Windows Complete Athlon XP 2200 CD COA), there are “Buy Online” URLs provided to participate in the Pricewatch purchase (p. 3), and to participate in Pricewatch (Advertiser Application), Advertisers must meet requirements imposed, including having “established website with prices posted” (p. 5, bottom). Appeal 2010-010287 Application 10/776,069 6 Lee 2. Lee discloses information gathering with objectivity, up-to-dateness, and usefulness of information by offering in-depth analysis report (p. 132, Table 1). V. ANALYSIS As to independent claims 1 and 22, Appellants contend that, in response to our prior Decision, they have amended the claims to recite “‘a common licensed service mark, displayed by hundreds of the lower level directories to indicate participation in a unique system’” (App. Br. 8), wherein “Pricewatch’s ‘Buy Online’ link is not and cannot be a ‘service mark’” (App. Br. 9). That is, Appellants argue that a service mark “owner must be able to prohibit non-participants from using the mark” (App. Br. 8- 9). Furthermore, Appellants argue that “[i]t is not found that the ‘Buy Online’ link identifies Pricewatch as a ‘lower level directory,’ participating in a unique Internet Directory System” (App. Br. 9). Appellants also argue that “[t]he difference between the existence of a plurality [of lower level directories] (twelve disclosed by Yahoo) and of hundreds (or thousands) [as newly amended] … is hugely significant” (App. Br. 10). According to Appellants, “[e]xpanding ‘the twelve’ shown in Yahoo to include ‘hundreds or thousands,’ would require a developed financial incentive plan and involve more than ‘routine skill in the art’” (App. Br. 11). Appeal 2010-010287 Application 10/776,069 7 Appellants then argue that the claims have been amended “to include uniform organization as well as uniform comprehensiveness and uniform up- to-dateness” and that the Examiner cites “no reference for teaching uniform organization” (App. Br. 13). Further, though “[t]he Examiner cites Lee for teaching comprehensiveness and up-to-dateness,” Appellants contend that Lees’ teachings “are inapplicable to internet directory systems” (App. Br. 13) and that “Lee does not teach the imposition of a business model on the stock trading sites, or any means of enablement” (App. Br. 14). However, the Examiner points out that “the [newly amended] term ‘service mark’ is not found anywhere in the Applicant’s specification and therefore can be give[n] the broadest reasonable interpretation” (Ans. 16- 17). Thus, the Examiner finds that “a service mark” is “a common mark which indicates a particular service offered, and therefore the Pricewatch reference does teach this limitation” (Ans. 17). As to Appellants’ argument concerning the “hundreds” of CDWs, the Examiner concludes that “it would have been obvious … to expand the plurality shown in Yahoo to include hundreds or thousands, since it has been held that the mere duplication of the essential working parts of a device involves only routine skill in the art” (Ans. 17). According to the Examiner, “the Yahoo engine which constructs the list is simply duplicating the working parts and since such duplication has been done a plurality of times it is even more evident that duplication could be done into the hundreds” (id.). Appeal 2010-010287 Application 10/776,069 8 The Examiner also finds that Pricewatch teaches a “business model [that] includes a standard of operation … providing … an organization of pertinent comparative data on a subject within the category” (Ans. 8) and Lee teaches “‘comprehensiveness and up-to-dateness’ (up-to-dateness and indepth analysis … )” (Ans. 6). The Examiner then concludes that it would have been obvious to combine Pricewatch, Yahoo, and Lee “to improve the invention by providing important features on an e-commerce site to attract more business” (Ans. 7). The Examiner explains that “adding the Lee reference to teach the additional element related to websites and business requirements would be the same regardless of the particular business performed online” (Ans. 17-18). We find no error in the Examiner’s findings and conclusions. We note that Appellants’ contentions that a service mark “owner must be able to prohibit non-participants from using the mark” (App. Br. 8-9), that “[i]t is not found that the ‘Buy Online’ link identifies Pricewatch as a ‘lower level directory,’ participating in a unique Internet Directory System” (App. Br. 9), and that “Lee does not teach the imposition of a business model on the stock trading sites, or any means of enablement” (App. Br. 14) are not commensurate in scope with the recited language of claim 1 (and similarly recited claim 22). That is, nothing recited in the claim requires an “owner” of the mark “to prohibit non-participants from using the mark” or requires that a link “identifies” a directory as “lower level” or requires that the Appeal 2010-010287 Application 10/776,069 9 “business model” be imposed “on stock trading sites, or any means of enablement.” Pricewatch discloses that, for each category in the lower level, there are “Buy Online” URLs provided to participate in the Pricewatch (FF 1). As set forth in our previous Decision, we found that “the ‘Buy Online’ link is a mark/URL portion that identifies whether the participating advertiser/website is participating in the Pricewatch” (Decision 14). Further, since both the claims and the Specification do not define functioning as a service mark,” as the Examiner points out, “the [newly amended] term ‘service mark’ … can be give[n] the broadest reasonable interpretation” (Ans. 16-17). We find no error in the Examiner’s finding that “a service mark” is “a common mark which indicates a particular service offered, and therefore the Pricewatch reference does teach this limitation” (Ans. 17). Thus, we find Pricewatch’s “Buy Online” link to be a “URL portion” which indicates a particular service offered, and we find no error in the Examiner’s finding that Pricewatch at least would have suggested a “URL portion functioning as a service mark” as recited in claim 1 (and similarly recited claim 22). Further, the term “functioning as a service mark” is merely descriptive of the “URL portion” and does not alter the way the URL portion is displayed. Rather, it is merely a nonfunctional descriptive material which will not distinguish the invention from the prior art in terms of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) and In re Gulack, 703 Appeal 2010-010287 Application 10/776,069 10 F.2d 1381, 1385 (Fed. Circ. 1983). Accordingly, we find that “functioning as a service mark” does not distinguish the claimed “URL portion” from the “Buy Online” URL portion of Pricewatch. As to Appellants’ argument concerning the “hundreds” of CDWs, we find no error in the Examiner’s conclusion that “it would have been obvious … to expand the plurality shown in Yahoo to include hundreds or thousands” (Ans. 17). That is, we agree with the Examiner’s finding that, because “duplication [in Yahoo] has been done a plurality of times[,] it is even more evident that duplication could be done into the hundreds” (id.). Although Appellants contend that the modification “would require a developed financial incentive plan and involve more than ‘routine skill in the art’” (App. Br. 11), Appellants have provided no evidence that expanding Yahoo’s plurality of directories to of “hundreds” or “thousands” was “uniquely challenging or difficult for one of ordinary skill in the art,” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (emphasis added), nor have Appellants presented evidence that this incorporation yielded more than expected results. Rather, we find that Appellants’ claimed invention is simply an expansion of an arrangement of the known teaching. When the modification is of an arrangement “‘performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the [modification] is obvious.” KSR v. Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appeal 2010-010287 Application 10/776,069 11 We also find no error in the Examiner’s finding that Pricewatch teaches a “business model [that] includes a standard of operation … providing … an organization of pertinent comparative data on a subject within the category” (Ans. 8) and Lee teaches “‘comprehensiveness and up- to-dateness” (Ans. 6). In particular, Pricewatch discloses organization of upper-level and lower-level directories (FF 1), and Lee discloses gathering information with objectivity, up-to-dateness, and usefulness of information (FF 2). Since the claims and the Specification do not define what “standards of operation of uniform organization” is to mean, we give the term its broadest reasonable interpretation as organization applied uniformly, and thus, we find Pricewatch’s organization of directories to comprise “standard of operation of uniform organization” as recited in claim 1. Similarly, we give “comprehensiveness of reference and up-to-dateness” its broadest reasonable interpretation and find that it reads on Lee’s usefulness and up- to-dateness of information. Thus, we find no error in the Examiner’s conclusion that the combined teachings of Pricewatch, Yahoo and Lee would at least have suggested “a business model imposed on the CDW …, including standards of operation of uniform organization, comprehensiveness of reference and up-to-dateness with respect to the provision of lower level directories” as required in claim 1. That is, we find that the skilled artisan would have found it obvious to add comprehensiveness and up-to-dateness as taught by Lee to a business model including standards of operation of uniform Appeal 2010-010287 Application 10/776,069 12 organization with respect to directories. We find no error in the Examiner’s conclusion that it would have been obvious to combine Pricewatch, Yahoo, and Lee “to improve the invention by providing important features on an e- commerce site to attract more business” (Ans. 7). As the Examiner explains, “adding the Lee reference to teach the additional element related to websites and business requirements would be the same regardless of the particular business performed online” (Ans. 17-18). Accordingly, we find no error in the Examiner’s rejection of independent claim 1 and independent claim 22 falling therewith over Pricewatch in view of Yahoo and Lee. Appellants do not provide specific arguments for dependent claims 6-11, 13, 14, 16-18, 20, 21, 23, 26-37, 39, 41, and 42 separate from those of claims 1 and 22 from which they respectively depend. Accordingly, claims 6-11, 13, 14, 16-18, 20, 21, 23, 26-37, 39, 41, and 42 fall with parent claims 1 and 22. As for claims 2, 4, 24, and 25 depending from claims 1 and 22 respectively, though the Examiner finds that Pricewatch, Yahoo and Lee would have suggested the claimed invention (Ans. 7 and 11), Appellants merely repeat the claim language and assert that the “‘Buy Online link’ is not” the claimed language (App. Br. 10). However, Appellants’ statements which merely point out what a claim recites will not be considered an argument for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii). Moreover, such mere conclusory statements that are unsupported by factual evidence and, thus, are entitled to little probative Appeal 2010-010287 Application 10/776,069 13 value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Accordingly, Appellants also have not shown Examiner error in rejecting claims 2, 4, 24, and 25 over Pricewatch, Yahoo and Lee. As to claims 3 and 5 depending from claim 1, Appellants contend that “the prior art shows that professional management is not a high design goal for lower-level directories” and that “lower-level directories are not analogous to stock trading websites in the field of commerce [of Lee]” (App. Br. 15). By arguing that Lee’s stock trading websites are not lower-level directories, Appellants appear to be arguing that Lee does not separately anticipate the claim when the Examiner rejects the claims as obvious over the combined teachings. The test for obviousness is not what each reference shows but what the combined teachings would have suggested to one of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Since the claims do not define as to what is “professional management” as set forth in the claims, we find no error in the Examiner’s finding that Pricewatch teaches “providing tech support” which “can be considered professional management” as required by claim 3 (Ans. 18). Further, as Appellants admit, Lee discloses providing information for “no Appeal 2010-010287 Application 10/776,069 14 charge” (App. Br. 14). We find no error in the conclusion that the combined teachings of Pricewatch, Yahoo and Lee would have at least suggested providing a listing of viable websites related to a category “for no charge” as recited by claim 5. As for claims 15, 19 and 43, Appellants merely repeat the claimed language, make a conclusory statement that the prior art does not disclose such features (App. Br. 15) and contend that there is no motivation to combine the references (App. Br. 16). As discussed above, statements which merely point out what a claim recites will not be considered an argument for separate patentability of the claim, and mere conclusory statements that are unsupported by factual evidence are entitled to little probative value. Further, we find no error in the Examiner’s conclusion that “by combining two well-known business concepts on two well-known internet sites into one … gives the user the advantage of having more and better choices as a consumer” (Ans. 20). Appellants have provided no evidence that combining the references was “uniquely challenging or difficult for one of ordinary skill in the art,” Leapfrog, 485 F.3d at 1162, nor have Appellants presented evidence that this incorporation yielded more than expected results. Appellants do not provide separate arguments with respect to the rejection of dependent claims 12, 38, and 40, depending from independent claims 1 and 22, respectively. As discussed above, we find no deficiency Appeal 2010-010287 Application 10/776,069 15 regarding the combined teachings of Pricewatch, Yahoo and Lee in the rejection of claims 1 and 22. Thus, we conclude that the Appellants have not shown that the Examiner erred in rejecting claim 12 over Pricewatch, Yahoo, Lee, and Morimoto; in rejecting claim 38 over Pricewatch, Yahoo, Lee, and eBay; and in rejecting claim 40 over Pricewatch, Yahoo, Lee and Google. CONCLUSION AND DECISION The Examiner’s rejection of claims 1-43 under 35 U.S.C. § 103(a) 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). AFFIRMED peb Copy with citationCopy as parenthetical citation