Ex Parte Thomason et al

Board of Patent Appeals and Interferences

Mar 2, 2012

10507772 (B.P.A.I. Mar. 2, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GRAHAM GORDON THOMASON and STEPHEN TOWNSEND
____________

Appeal 2010-010003
Application 10/507,772
Technology Center 3600
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Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Graham Gordon Thomason, et al. (Appellants) seek our review under
35 U.S.C. § 134 (2002) of the final rejection of claims 1-7, 11, 12, 15, 16,
and 19-33. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer system configured to perform acts of:
supporting a browser to enable a Buyer to browse a
Vendor's website in order to select goods or services for
purchase;
automatically extracting purchase information from a
buyers [sic] computer based on a locally displayed webpage,
from which the Vendor can identify the Buyer’s purchase; and
transmitting, under the control of the Buyer, an
instruction to a third party to pay the Vendor for the Buyer’s
purchase, wherein the instruction includes the purchase
information.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Dec. 18, 2009) and Reply Brief (“Reply Br.,” filed May 13,
2010), and the Examiner’s Answer (“Ans.,” mailed Mar. 15, 2010).
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Thieme
Khan
Sacks
Musgrove
Remy

US 2001/0034724 A1
US 2002/0016754 A1
US 2002/0016765 A1
US 6,535,880 B1
US 2004/0054632 A1

Oct. 25, 2001
Feb. 7, 2002
Feb. 7, 2002
Mar. 18, 2003
Mar. 18, 2004

The following rejections are before us for review:
1. Claims 1, 2, 4-7, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Thieme and Khan.
2. Claims 3, 11, and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thieme, Khan, and Remy.
3. Claims 19-33 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Musgrove and Sacks.

ISSUE
Was the subject matter claimed rejected in error?

FINDINGS OF FACT
We rely on and adopt the Examiner’s factual findings stated in the
Answer. Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1, 2, 4-7, 15, and 16 under 35 U.S.C. § 103(a) as
being unpatentable over Thieme and Khan.
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The Appellants argued claims 1, 2, 4-7, 15, and 16 as a group (App.
Br. 12-20). We select independent claim 1 (see supra) as the representative
claim for this group, and the remaining claims 2, 4-7, 15, and 16 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The Appellants challenge the rejection on the grounds that the cited
prior art combination does not disclose or lead one of ordinary skill in the art
to a “computer system configured to perform [the] act[ ] of ... automatically
extracting purchase information from a buyers [sic] computer based on a
locally displayed webpage, from which the Vendor can identify the Buyer’s
purchase” (claim 1).
Specifically, the Appellants argue against the Examiner’s reliance on
Khan as evidence that this subject matter was disclosed in the prior art. But
the argument presented to us is unpersuasive as to error in that reliance
because it is not commensurate in scope with what is claimed.
The Appellants argue “it is clear from Khan that the purchase
information is retrieved from a remote database and not from a locally
display [sic] webpage on a users [sic] computer.” App. Br. 14 (emphasis
original). But we see no limitation in claim 1 requiring the system to
function so that information is extracted from a locally displayed webpage
on a user’s computer.
Similarly, in various places in the Briefs, the Appellants stress that
“Khan in fact teaches an implementation of utilizing a database that is
remote from the user and stores user information” (App. Br. 15), apparently
to suggest that the claimed system by contrast does not utilize a database that
is remote from the user and stores user information. But we see no
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limitation in claim 1 requiring the system to function so that a database that
is remote from the user and stores user information is not used. The
language used in the claim, “computer system configured to perform [the]
act[ ] of ... automatically extracting purchase information from a buyers [sic]
computer based on a locally displayed webpage,” does not exclude remote
databases from the scope of “buyers [sic] computer.”.
There appears to be no dispute that Khan discloses extracting
information. See App. Br. 16 (emphasis added): “Khan does not
automatically extract purchase information based on a locally displayed
webpage but in fact extracts purchase information from a remote database
(see discussion above).” The only question is whether the Examiner
correctly found that Khan discloses a system for “automatically extracting
purchase information ... based on a locally displayed webpage” as asserted
(see Ans. 4).
In that regard, the Examiner directed the Appellants’ attention to
Figure 2, Step 208 and associated disclosure at paragraph [0031]. Disclosed
therein is purchase information from a website that is stored and later
extracted, albeit remotely. The extraction is automatic (see [0031]: the
product(s) and/or service(s) on the website are purchased on behalf of the
user based on the purchase pattern.”)
Accordingly, Khan does disclose a system for “automatically
extracting purchase information ... based on a locally displayed webpage.”
The Examiner’s characterization of what one of ordinary skill in the art
would understand Khan to disclose therefore is correct. We do not see that
the Appellants have shown it to not be.
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No persuasive argument as to error in the rejection having been made,
we will sustain the rejection.

The rejection of claims 3, 11, and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Thieme, Khan, and Remy.
The Appellants challenge the rejection of claim 3 via the arguments
used to challenge the rejection of claim 1 on which claim 3 depends. App.
Br. 20. We found those arguments against the rejection of claim 1
unpersuasive. Accordingly, no persuasive argument as to error in the
rejection of claim 3 has been presented. We will sustain the rejection.
The Appellants argued claims 11 and 12 as a group (App. Br. 20-23).
We select independent claim 11 as the representative claim for this group,
and the remaining claim 12 stands or falls with claim 11. 37 C.F.R. §
41.37(c)(1)(vii).
The Appellants have not presented a persuasive argument as to error
in the rejection. On page 22 of the Appeal Brief, the Appellants
acknowledge that the Examiner relied on Remy as evidence that the subject
matter of claim limitation “transmitting, under control of the Buyer, an
instruction to a third party to pay the Vendor for the Buyer’s purchase,
wherein the instruction includes the purchase information” was disclosed in
the prior art. But other than stating that “Remy does not teach, disclose or
suggest” (App. Br. 22) it, nothing more is said. The Examiner went into
some detail (Ans. 10-11) to explain why, in the Examiner’s view, Remy
does in fact disclose this subject matter. This finding of fact has not been

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adequately challenged. In effect, the Appellants have merely pointed out
what a claim recites, and that will not be considered an argument for
separate patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii). “It is not
the function of this court to examine the claims in greater detail than argued
by an appellant, looking for nonobvious distinctions over the prior art.” In
re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991). See also In re
Wiseman, 596 F.2d 1019, 1022 (CCPA 1979) (arguments must first be
presented to the board).
No persuasive argument as to error in the rejection having been made,
we will sustain the rejection.

The rejection of claims 19-33 under 35 U.S.C. § 103(a) as being
unpatentable over Musgrove and Sacks.
The Appellants argued claims 19-33 as a group (App. Br. 23-27). We
select independent claim 19 as the representative claim for this group, and
the remaining claims 20-23 stand or fall with claim 19. 37 C.F.R. §
41.37(c)(1)(vii).
We have reviewed the Appellants’ arguments. They are insufficient to
show error in the rejection. The Appellants argue that
It is admitted by the Final Office Action that “Musgrove
et al. fails to disclose at the Buyer’s computer system,
transmitting, under the control of the Buyer, an instruction to
the computer system of a third party to pay the Vendor for the
Buyer's purchase, wherein the instruction includes the purchase
information.” (See, Final Office Action, page 11.)
App. Br. 24. In that regard, the Examiner took the effort to direct the
Appellants’ attention to various passages in Sacks (paras. [0016], [0029],
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and [0039]) then to provide an apparent reasoning with logical underpinning
in support of the conclusion that
from this teaching of Sacks it would have been obvious to one
of ordinary skill in the art to modify the automated online
commerce utilizing a shopping server of Musgrove et al. to
include the system for third-party processing as taught by
Sacks. The motivation would have been to initiate electronic
payment from a buyer to a seller and end the connection when
the transaction is complete.
Ans. 13. None of the passages the Examiner relied upon are addressed.
No persuasive argument as to error in the rejection having been made,
we will sustain the rejection.

CONCLUSIONS
The rejections of claims 1, 2, 4-7, 15, and 16 under 35 U.S.C. § 103(a)
as being unpatentable over Thieme and Khan; claims 3, 11, and 12 under 35
U.S.C. § 103(a) as being unpatentable over Thieme, Khan, and Remy; and,
claims 19-33 under 35 U.S.C. § 103(a) as being unpatentable over Musgrove
and Sacks, are affirmed.

DECISION
The decision of the Examiner to reject claims 1-7, 11, 12, 15, 16, and
19-33 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED
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