Ex Parte Sgaraglino

Patent Trial and Appeal Board

Mar 28, 2016

10258965 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/258,965 10/28/2002
7590
Douglas E Mackenzie
17 Redwood Rd.
Fairfax, CA 94930
03/28/2016
FIRST NAMED INVENTOR
Vito Sgaraglino
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.
Click-1 7469
EXAMINER
ALAM, MUSHFIKH I
ART UNIT PAPER NUMBER
2426
MAILDATE DELIVERY MODE
03/28/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte VITO SGARAGLINO
Appeal2014-003214
Application 10/258,965
Technology Center 2400
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR, and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003214
Application 10/258,965
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 48-54, 56-74, 94--109, and 116-1301. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
Appellant's claimed invention is directed to "a system and method for
providing information to a user in response to a user request" (Abstract).
Independent claim 48, reproduced below, is representative of the
subject matter on appeal:
48. A method for providing information to a user in response
to a user request, the method comprising the steps of:
displaying an object on a display device, the object
including a selectable area;
receiving the user request responsive to selection of the
selectable area;
retrieving a stored user delivery address, without further
user input, from a location remote from the display device in
response to the user request, the user delivery address having
been stored at the location prior to displaying the object;
retrieving information associated with the selectable area,
the information being configured for viewing by the user; and
1 Appellant appeals the Non-Final Office Action mailed on February 27,
2013, which was issued in response to Appellant's previous Appeal Brief
filed October 31, 2012.
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electronically delivering the information to the user
delivery address in response to the user request.
REFERENCES and REJECTIONS2
Claims 48-50, 52-54, 61, 63, 65, 67----69, 72-74, 94, 95, 97-101, 103,
106, 108, 116, 118, 123-125, 128, and 129 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Reynolds (US 6,799,327 Bl; filed July
13, 1999) in view oflchihashi (US 6,075,527; filed Dec. 17, 1998). Non-
Final Act. 3-11.
Claims 51, 96, and 104 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Reynolds, in view of Ichihashi and Liwerant (US
2005/0246752 Al; published Nov. 3, 2005). Non-Final Act. 11-13.
Claim 56 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi and Moeller (US
5,903,264; issued May 11, 1999). Non-Final Act. 13-14.
Claims 57, 58, 117, and 127 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Reynolds, in view of Ichihashi and Ellis (US
2004/0261125 Al; published Dec. 23, 2004). Non-Final Act. 14--17.
Claim 59 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi and De Weese (US
2005/0262542 Al; published Nov. 24, 2005). Non-Final Act. 16-17.
Claim 60 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi, De Weese, and Zigmond
(US 6,698,020 Bl; filed June 15, 1998). Non-Final Act. 17-18.
2 The Examiner further relies on admitted prior art ("APA") in the rejection
of the claims. See infra issue 1 Analysis; see also Ans. 7. For purposes of
this Decision, we treat the Examiner's rejections as including APA.
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Claims 62 and 107 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi and Milewski (US
6,289,346 Bl; filed Mar. 12, 1998). Non-Final Act. 18.
Claim 64 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi and Fries (US
2006/0259940 Al; filed July 20, 2006). Non-Final Act. 18-19.
Claim 66 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi and Carr (US 6,209, 129
Bl; filed Aug. 25, 1998). Non-Final Act. 19-20.
Claims 70 and 109 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi and Schein (US
2005/0229215 Al; filed June 7, 2005). Non-Final Act. 20-21.
Claim 71 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi and Goldberg (US
7,496,943 Bl; filed Feb. 11, 2000). Non-Final Act. 21.
Claim 102 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi and Ward, III (US
2007/0033613 Al; filed Oct. 13, 2006). Non-Final Act. 22.
Claim 105 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi, Liwerant, and Bolduc (US
6,157,841; filed Sept. 18, 1997). Non-Final Act. 22-23.
Claims 116, 118, and 122 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Reynolds, in view of Ichihashi and Hendricks (US
7,134,131 Bl; filed Apr. 18, 2000). Non-Final Act. 23-25.
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Claim 119 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi, Hendricks, and Fries.
Non-Final Act. 25.
Claim 120 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi, Hendricks, and Sherr (US
2002/0032905 Al; filed Apr. 4, 2001). Non-Final Act. 26.
Claim 121 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi, Hendricks, and Allocca
(US 7,720,712 Bl; filed Apr. 12, 2000). Non-Final Act. 26-27.
Claim 126 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi, Ellis, and Yurt (US
2003/0121049 Al; filed Nov. 11, 2002). Non-Final Act. 27-28.
Claim 130 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, in view of Ichihashi, and Maillard (US
6,807,675 Bl; filed June 3, 1999). Non-Final Act. 28.
ISSUES
The issues are whether the Examiner erred in:
1. finding the admitted prior art in Appellant's Specification discloses
"retrieving a stored user delivery address, without further user input,"
as recited in claim 48;
2. modifying Reynolds to "electronically [deliver] information to the
user delivery address," as recited in claim 48; and
3. finding motivation to combine the references used in the obviousness
rejection of claim 51.
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ANALYSIS
We adopt the Examiner's findings in the Answer and add the
following primarily for emphasis.
1. Claim 48: Admitted Prior Art
Although the original rejection of independent claim 48 relies on the
references Reynolds and Ichihashi, the Examiner makes a finding in the
Answer that Appellant's Specification contains admitted prior art disclosing
certain limitations in claim 48 which the Examiner also finds disclosed by
Ichihashi. See Ans. 7-8.
In particular, claim 48 recites "retrieving a stored user delivery
address, without further user input, from a location remote from the display
device in response to the user request, the user delivery address having been
stored at the location prior to displaying the object." The Examiner finds
that "it is admitted in the present application (p. 0016) that the feature
retrieving a stored delivery address without further user input after a request
is a function known in the prior art" (Ans. 7).
The Examiner's citation to paragraph 16 appears to reference
Appellant's published application, whereas corresponding paragraph 14 of
Appellant's Specification, as-filed, contains the admission of prior art.
Paragraph 14 (as-filed) states in-part:
The prior art includes order processing technology. For
example, there are Internet technologies related to order
processing that allow a user to purchase a product with single
click on an object. Using these technologies, the user completes
a pre-defined order form and selects a product prior to clicking
the object and receives the product through the mail.
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Additionally, the user receives a confirming e-mail message
without any further input from the user.
Id. (emphasis added.)
We agree with the Examiner that this admission establishes the
claimed limitation is "known in the prior art," because according to the
admission, before the user "click[s] the object," the user has already supplied
the seller with an e-mail address.
In the Reply Brief, Appellant fails to discuss Specification paragraph
14, but instead "disagrees that any such admission was made and notes that
paragraph [0016] of the present specification is the first paragraph of the
Summary section" and additionally "makes no admissions regarding the
prior art" (Reply Br. 7) 3. The Examiner's citation to the published
Specification instead of the Specification as-filed is a harmless typographical
error, and Appellant was properly notified of the Examiner's finding
regarding the admission of prior art. Appellant, in tum, neither submitted a
petition challenging the Answer as containing a new ground of rejection (see
37 C.F .R. § 41.40), nor addressed Appellant's admissions of prior art that
appear in the Specification.
Accordingly, we agree with the Examiner that the combination of
Reynolds, Ichihashi, and Appellant's admitted prior art teaches the method
recited in claim 48.
3 We note that Specification paragraph 14 appears as one of the paragraphs
under the heading "PRIOR ART."
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2. Claim 48: Modification of Reynolds
Appellant argues the Examiner erred in the rejection of claim 48,
because "the Examiner apparently reasons that electronic delivery to a
retrieved user delivery address would have been obvious in Reynolds et al.
by asserting that the claimed invention is obvious without explaining why
electronic delivery would have been obvious in view of the actual teachings
of Ichihashi et al." (App. Br. 34).
We are not persuaded of Examiner error. The Examiner finds that "as
admitted by Appellant, Reynolds discloses electronic delivery of selected
content" (Ans. 14; see App. Br. 34) and "Ichihashi also contemplates
electronic delivery of selected content" (Ans. 14 (citing Ichihashi 23 :43-
49)), which Appellant fails to dispute (see Reply Br. 11). Appellant's
argument is non-persuasive as electronic delivery is disclosed in both
references. Accordingly, we sustain the Examiner's rejection of independent
claim 48, and the rejections of claims 49, 50, 52-54, 56-74, 94, 95, 97---03,
105---09, and 116-30 which are not separately argued.
3. Claim 51: Motivation to Combine
Appellant argues the Examiner erred by failing to find motivation to
combine the references used in the rejection of independent claim 51 (App.
Br. 39). Appellant contends the Examiner used "hindsight analysis" to add
wireless telephones as taught by Liwerant to the system of Reynolds" (App.
Br. 41) and that "in April, 2000 one would have had no expectation of
success to try to use a wireless phone" in place of a television (App. Br. 42).
We are not persuaded the Examiner erred. The Examiner, citing KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398 (2007), finds that "[t]he features
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Application 10/258,965
cited in Reynolds and Liwerant are of the same analogous nature and
Liwerant provides the added benefits of introducing various devices for
which this selection of content can be selected from" (Ans. 17). We
conclude the Examiner's articulated reasoning provides a rational
underpinning to support the legal conclusion of obviousness. See id. at 418.
We find Appellant's argument non-persuasive as it does not address or rebut
the Examiner's finding of a motivation to combine the references. We
additionally find Appellant's argument of "no expectation of success" (App.
Br. 42) non-persuasive as Appellant relies only on argument, and argument
of counsel cannot take the place of factually supported objective evidence.
See, In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996); In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984).
Accordingly, we sustain the Examiner's rejection of independent
claim 51, and claims 96 and 104 which are not separately argued.
CONCLUSIONS
The Examiner did not err in:
1. finding the admitted prior art in Appellant's Specification discloses
"retrieving a stored user delivery address, without further user input,"
as recited in claim 48;
2. modifying Reynolds to "electronically [deliver] information to the
user delivery address," as recited in claim 48; and
3. finding motivation to combine the references used in the obviousness
rejection of claim 51.
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DECISION
The Examiner's decision rejecting claims 48-54, 56-74, 94--109, and
116-13 0 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)(l )(iv).
AFFIRMED
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