Ex Parte Shapira et al

Board of Patent Appeals and Interferences

Jan 22, 2009

09707541 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ELIJAHU SHAPIRA and
VICTOR LU
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Appeal 2008-1760
Application 09/707,541
Technology Center 3600
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Decided: January 22, 2009
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Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Elijahu Shapira, et al. (Appellants) seek our review under 35 U.S.C. §
134 of the final rejection of claims 1-9. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
The invention relates “to compiling and reporting data associated with
activity on a network server and more particularly to compiling and
reporting server data that is associated with commercial activity on a
server.” Specification 1:5-7. The Specification states that “[p]rograms for
analyzing traffic on a network server, such as a worldwide web server, are
known in the art.” Specification 1:10-11. However, according to the
Specification, the “need still remains for a way to track and report
commercial activity on the web site – a feature missing in prior art web
commerce analysis tools.” Specification 2:1-2. The invention is “for
tracking and reporting electronic commerce activity over a web site that is
stored on a first server coupled to a wide area network.” Specification 2:5-6.
According to the invention:
The web page is programmed to include data fields
reflecting commerce transaction activity and data
mining code. The web page is uploaded to a
visitor computer responsive to a request over the
wide area network from the visitor computer.
Commerce information is accepted within the data
fields of the webpage at the visitor computer to
form a completed web page. The data mining code
is operated on the visitor computer to obtain
technical and commercial data and sent to a second

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed Feb. 15, 2007) and Reply Brief (“Reply Br.,” filed Sep. 26, 2007), and
the Examiner’s Answer (“Answer,” mailed Jul. 26, 2007).
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server on the wide area network for logging and
analysis.
Specification 2:6-12.
Claim 1, the sole independent claim, reproduced below, is illustrative
of the subject matter on appeal.
1. A method for tracking and reporting
electronic commerce activity over a web site
comprising:
storing a web page on a first server coupled
to a wide area network, said web page including
data fields reflecting commerce transaction activity
and data mining code;
uploading the web page including the data
fields and data mining code to a visitor computer
responsive to a request over the wide area network
from the visitor computer;
accepting commerce information within the
data fields of the web page at the visitor computer
to form a completed web page;
operating the data mining code on the visitor
computer to obtain technical and commercial data;
and
receiving the technical and commercial data
at a second server.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Papierniak US 6,128,624 Oct. 3, 2000

“WebSideStory Introduces StatMarket eData Mining -- the Most Powerful
Tool Available for Gathering E-commerce knowledge,” Business Wire (New
York, Sep. 21, 1999) (Hereinafter referred to as Business Wire).

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The following rejection is before us for review:
1. Claims 1-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Papierniak and Business Wire.

ISSUES
The issue before us is whether the Appellants have shown that the
Examiner erred in rejecting claims 1-9 under 35 U.S.C. § 103(a) as being
unpatentable over Papierniak and Business Wire. In particular, the issue is
whether the Examiner correctly found that the prior art discloses a “web
page including data fields reflecting commerce transaction activity and data
mining code” (claim 1).

PRINCIPLES OF LAW
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court
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in Graham further noted that evidence of secondary considerations “might
be utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented.” 383 U.S. at 17-18.

ANALYSIS
The Appellants argued that the prior art does not disclose a “web page
including data fields reflecting commerce transaction activity and data
mining code” (claim 1). App. Br. 5-10. This implicates the scope and
content of the cited prior art.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the reference
teachings would appear to be sufficient for one of ordinary skill in the
relevant art having the references before him to make the proposed
combination or other modification. See In re Lintner, 458 F.2d 1013, 1016
(CCPA 1972).
To establish a prima facie case of obviousness for the subject matter
of claim 1, the sole independent claim, the Examiner bore the burden of
showing that, given the references cited in rejecting the claim under § 103
for obviousness, one of ordinary skill in the art would have been led to the
method claimed. In that regard, the claimed method includes the step of
“storing a web page on a first server coupled to a wide area network, said
web page including data fields reflecting commerce transaction activity and
data mining code” and therefore the Examiner was required to show that,
given Papierniak and Business Wire, one of ordinary skill in the art would
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have been led to a tracking and reporting method such that a “web page
including data fields reflecting commerce transaction activity and data
mining code” is stored on a server coupled to a wide area network. Claim 1.
The Examiner stated that
Papierniak et al. discloses:
A method for tracking and reporting
electronic commerce activity over a web site
comprising:
storing a web page on a first server (308)
coupled to a wide area network, said web page
including data fields reflecting commerce
transaction activity and data mining code;
accepting commerce information within the data
fields of the web page at the visitor computer to
form a completed web page (306; col. 3, lines 13-
53).
Answer 3. (Emphasis added.)
Fig. 7 of Papierniak (which shows elements 306 and 308 that the
Examiner referred to) is reproduced below:

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Papierniak’s Fig. 7 is said to depict “a functional view of the system’s
elements in an Internet environment.” Papierniak, col. 6, ll. 62-63.
Col. 3, lines 13-53, of Papierniak reads as follows:
In the attainment of the same, the present
invention provides an architecture and method of
supporting, collecting, storing, and analyzing
Internet and/or electronic commerce data over or
from the World Wide Web for ISPs and CSPs.
The present invention also includes one or more
computer systems employing the method, a
computer readable memory storing the medium,
and a method for storing the synchronization
process in memory and in a storage device.

The present invention combines improved
methods of data collection, translation and storage
with enhanced analysis techniques to exploit the
vast amount of information available through
emerging uses of the web, and other internet-based
systems. The results can be used as part of a
customer's decision support system to allow better
(e.g., more statistically valid) business decisions to
be made faster.

The present invention concentrates on
opportunities within, for example, the ISP sector of
the telecommunications industry, and provides
ISPs the insight into their customer's services
usage, demographics, and behavior patterns.
Through this insight, ISPs should be able to
support their decisions in such areas as customer
retention, service pricing and profitability, and
target marketing campaign using analytical
methods based on customer and market data.
Furthermore, ISPs can provide the knowledge and
capabilities to the hosted business customers in
order for those customers to gain similar insight
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into their users to make effective and customer-
driven business decisions.

In addition, the present invention is
complementary with the current Internet Services
Delivery Platform program. One environment
where the present invention operates is where the
consumer or business customer is able to utilize
the CSP's/ISP's web-based resources through a
combination of access and backbone networks
which, in turn, are connected to, for example, the
global Internet to interface with the rest of the
internet resources. The access networks consist of
many Point of Presences (POPs) which provide
dial-up (e.g., analog/digital, ISDN) access service
or dedicated digital (e.g., Frame Relay, ISDN)
access service using either modem pool
technologies and/or access server/router for the
customers.

We do not see in these disclosures any mention of a “web page
including data fields reflecting commerce transaction activity and data
mining code” as indicated by the Examiner. Answer 3.
Accordingly, the Examiner’s statement that Papierniak discloses such
a web page amounts to a mere conclusory statement. “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR, 127 S.
Ct. at 1741 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In that
regard, the Examiner has not further articulated a reason with some rational
underpinning why, notwithstanding that Papierniak does not explicitly
disclose a “web page including data fields reflecting commerce transaction
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activity and data mining code,” one of ordinary skill in the art would
nevertheless have been led to a tracking and reporting method whereby a
“web page including data fields reflecting commerce transaction activity and
data mining code” is stored on a server coupled to a wide area network given
what Papierniak and Business Wire disclose. As a result, we find that a
prima facie case of obviousness for the claimed subject matter over the cited
references has not been made out and we therefore reverse the rejection.

CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting claims 1-9 under 35 U.S.C. § 103(a) as being unpatentable over
Papierniak and Business Wire.

DECISION
The decision of the Examiner to reject claims 1-9 is reversed.

REVERSED

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hh

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