Ex Parte 6,895,389 et al

Patent Trial and Appeal Board

Dec 5, 2013

95001612 (P.T.A.B. Dec. 5, 2013)

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.
95/001,612 04/28/2011 6,895,389 1042-0010RE 5055
22852 7590 12/05/2013
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
CHOI, WOO H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/05/2013 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
________________

STAPLES, INCORPORATED
Requester and Cross-Appellant

v.

CONSUMERS INTERSTATE CORPORATION
Patent Owner and Appellant
________________

Appeal 2013-003021
Reexamination Control 95/001,612
Patent 6,895,389 B1
Technology Center 3900
________________

Before KEVIN F. TURNER, STEPHEN C. SIU, STANLEY M.
WEINBERG, and JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner/Consumers Interstate Corporation appeals the
Examiner’s decision to reject claims 1-18. Requester/Staples, Incorporated
cross-appeals the Examiner’s determination not to make a proposed rejection
of claims 1, 4-8, 11, 16, and 18. We have jurisdiction under 35 U.S.C.
Appeal 2013-003021
Reexamination Control 95/001,612
Patent 6,895,389 B1

2
§§ 134 and 315, and heard the appeal on April 3, 2013. A transcript of the
hearing was made of record on July 18, 2013.
Claims 1, 4-8, 11, 16, and 18 are rejected under 35 U.S.C. § 103(a) as
obvious over Allard (US 6,249,773 B1; issued June 19, 2001) and
Shankman (“Purchasing Partnerships Help Consumers Interstate Sell
MROs,” NPTA Management News, October 1993). RAN
1
6-10.
Claims 1-8, 11-14, and 16-18 are rejected under 35 U.S.C. § 103(a) as
obvious over Allard, Shankman, and CIC Brochure (“Vision. Integrity.
Commitment.” Consumers Interstate Corporation, 1997). RAN 10-12.
Claims 9-11 are rejected under 35 U.S.C. § 103(a) as obvious over
Allard, Shankman, and Marks (US 6,876,977 B1; issued Apr. 5, 2005).
RAN 12-13.
Claim 15 is rejected under 35 U.S.C. § 103(a) as obvious over Allard,
Shankman, CIC Brochure, and Marks. RAN 13.
The Examiner has not adopted the proposed rejection of claims 1, 4-8,
11, 16, and 18 under 35 U.S.C. § 102(e) as anticipated by Allard. RAN 4-6.
We affirm.

STATEMENT OF THE CASE
This proceeding arose from a request by Staples, Incorporated for an
inter partes reexamination of U.S. Patent 6,895,389, titled “Internet
Procurement Method” (the ’389 patent). The ’389 patent describes a method

1
The Examiner’s Right of Appeal Notice (“RAN”) was mailed March 22,
2012; the Examiner’s Answer, mailed August 16, 2012 , incorporated the
RAN by reference.
Appeal 2013-003021
Reexamination Control 95/001,612
Patent 6,895,389 B1

3
for ordering goods through the Internet. Abstract. Claim 1 is illustrative and
reproduced below:
1. A method for ordering goods in a processor based
system having a memory with an executable computer program
stored therein, the method comprising:
determining the user’s specific procurement process
including inventorying a facility of the user, auditing the user’s
procurement records, and querying the user’s personnel
involved with the procurement process;
inputting data indicative of the specific procurement
process of the user into a content database;
hosting a web site operative with the computer program
and the content database, the web site being accessible via the
internet through a communications device;
storing an electronic order form in the memory, the order
form being unique to the user, and operative with the computer
program and the content database, such that the order form lists
goods that meet the requirements of the specific procurement
process of the user;
accessing the content database through the web site;
using a security protocol for identifying the user in
response to the user accessing the web site by providing
identification signals thereto unique to the user, the
identification signals cooperating with the security protocol;
Appeal 2013-003021
Reexamination Control 95/001,612
Patent 6,895,389 B1

4
displaying the electronic order form unique to the user as
a web page on the web site in response to the identification
signals identifying the user;
receiving order signals from the user through the
communications device indicative of filling in an order on the
order form; and
processing the order.

ANALYSIS
THE OBVIOUSNESS REJECTION OF CLAIMS 1, 4-8, 11, 16, AND 18 OVER
ALLARD AND SHANKMAN
The Examiner finds Allard and Shankman collectively teach all
limitations of claim 1. RAN 6-8. The Examiner reasons
[i]t would have been obvious to one of ordinary skill in the art,
having the teachings of Allard and Shankman before him at the
time the invention was made, to adopt a method of forming a
purchasing partnership with customers and creating a
customized order form based on the user’s procurement process
as taught by Shankman, for the virtual store of Allard in order
to increase sales through increased efficiency (see CIC 01207,
‘Consumers Interstate Corp. has boo[s]ted sales of
maintenance, repair, and operating (MRO) products by 15 to
20% annually for the last five yea[rs] … Consumers’ president
... and their manage team have developed an innovative,
planned buying system that cuts cost through increased
efficiency”). Adopting CIC’s method of learning its customer’s
procurement process and customizing the ordering process for a
specific customer, as disclosed by Shankman, for the virtual
store of Allard requires inputting data indicative of the
specific procurement process of the user into a content
database.
Appeal 2013-003021
Reexamination Control 95/001,612
Patent 6,895,389 B1

5
RAN 8.
Patent Owner presents several general arguments for patentability of
the claims. We address these general arguments here, in our analysis of the
obviousness rejection over Allard and Shankman. Patent Owner presents the
following general arguments:
(i) The Examiner erred by deeming Patent Owner’s argument with
respect to principal references irrelevant. PO App. Br.
2
11-13.
(ii) The Examiner erred by failing to apply record evidence about
the state of the art at the time of the invention. PO App. Br. 13-16.
(iii) The Examiner erred by failing to apply the broadest reasonable
interpretation standard, noting the Examiner’s use of bolding and bracketing.
PO App. Br. 16-17.
Regarding argument (i), as Requester points out,
the Examiner correctly considered, from the perspective of a
hypothetical person of ordinary skill in the art, an e-commerce
system as in Allard, implemented in consideration of the
Shankman disclosure of information gathering and custom
order form creation. Based on this analysis, the Examiner
determined that such a combination met every limitation of
claim 1 of the ‘389 patent.
3PR Resp. Br.
3
6.
Regarding argument (ii), as Requester points out, the Examiner
considered the evidence submitted by Patent Owner, and upon considering,
deemed it irrelevant as pertaining to unclaimed aspects of e-commerce in
general. 3PR Resp. Br. 7.

2
Patent Owner’s Appeal Brief (“PO App. Br.”) was filed June 20, 2012.
3
Third Party Requester’s Respondent’s Brief (“3PR Resp. Br.”) was filed
July 20, 2012.
Appeal 2013-003021
Reexamination Control 95/001,612
Patent 6,895,389 B1

6
Regarding argument (iii), as Requester points out,
the Examiner’s bolding and bracketing appears nothing more
than a shorthand way of communicating the Examiner’s
thought process in concluding that an e-commerce ordering
system as in Allard, when implemented based on the teachings
of Shankman about determining what a user might want to
order, met all of the limitations of claim 1.
3PR Resp. Br. 8.
We agree with Requester, and are not persuaded of error by Patent
Owner’s general arguments for patentability of the claims.
Patent Owner also presents several specific arguments regarding the
obviousness rejection over Allard and Shankman. Upon careful review, we
find Patent Owner’s further arguments (PO App. Br. 17-28, PO Reb. Br.
4
8-
11) and evidence (PO App. Br. Evidence Appendix, PO Reb. Br. Evidence
Appendix) that the Examiner erred in concluding claims 1, 4-8, 11, 16, and
18 are obvious over Allard and Shankman (RAN 6-10, 13-20) unpersuasive.
Based on the record, we adopt the Examiner’s findings and reasons (RAN 6-
10, 13-20) as our own. We concur with the conclusion reached by the
Examiner. Accordingly, we sustain the rejection of claims 1, 4-8, 11, 16,
and 18 as obvious over Allard and Shankman. We highlight the following
for emphasis.
Patent Owner argues Allard and Shankman do not disclose inputting
data indicative of the user’s specific procurement process into a content
database. PO App. Br. 21-25.

4
Patent Owner’s Rebuttal Brief (“PO Reb. Br.”) was filed September 17,
2012.
Appeal 2013-003021
Reexamination Control 95/001,612
Patent 6,895,389 B1

7
However, as Requester points out, “[a]s for the ‘inputting’ limitation
of claim 1, the Examiner further determined that once such information is
learned (through the process recited in Shankman), and in light of the data
storage-recall function described in Allard, that limitation would be met by
the combination of the teachings of these references.” 3PR Resp. Br. 12.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981)(citations omitted).
Here, the Examiner relies on Shankman for the recited determining
the user’s specific procurement process. RAN 8 (citing Shankman, CIC
01208, middle col. - 01209, left col.). The Examiner reasonably explains
why the combined teachings of Allard and Shankman would have suggested
the addition to Allard of Shankman’s method of forming a purchasing
partnership with customers and creating a customized order form based on
the user’s procurement process. RAN 8 (citing Shankman, CIC 01207). The
Examiner further explains that modifying Allard to adopt the teachings of
Shankman requires inputting data indicative of the specific procurement
process of the user into a content database. RAN 8. Patent Owner has not
persuaded us as to why the Examiner’s explanation is insufficient, and we
agree with the Examiner that the combined teachings of Allard and
Shankman teach the recited inputting data indicative of the user’s specific
procurement process into a content database.
Appeal 2013-003021
Reexamination Control 95/001,612
Patent 6,895,389 B1

8
Patent Owner further argues that the Examiner erred by failing to
support his finding of a motivation to combine Allard and Shankman.
PO App. Br. 25-28.
However, as Requester points out,
Allard contemplates application of its system in a commercial
context. (Allard col. 5, lines 25-28.) Accordingly, while the
commercial user of the Allard system may derive benefit from
the ability to recall historical shopping lists, etc. as described in
that reference, such a user would derive substantially more
benefit in terms of time saving and ordering accuracy by
utilizing the type of consulting service described in Shankman.
In this sense, the increased efficiency touted in Shankman and
recognized by the Examiner to evidence motivation to combine
would be beneficially realized by the commercial user of Allard
as a further improvement upon the custom ordering system
described therein. A person of skill in the art can be reasonably
credited with recognition of such benefit.
3PR Resp. Br. 14.
Allard does describe engaging in electronic commerce including a
shopping list builder (see Allard, Abstract); however, we see no reason why
Allard would not have benefitted from the advantages of including
Shankman’s method of forming a purchasing partnership with customers and
creating a customized order form based on the user’s procurement process,
to further address Allard’s desire to assist shoppers with periodic purchases
(see Allard, col. 5, ll. 20-28) with further motivation provided by
Shankman’s desire to cut costs through increased efficiency (see Shankman,
CIC 01207). Notably, claim 1 recites “the order form lists goods that meet
the requirements of the specific procurement process of the user,” and does
not specify any further details of the user’s specific procurement process
itself. As such, modifying Allard to include Shankman’s customized order
Appeal 2013-003021
Reexamination Control 95/001,612
Patent 6,895,389 B1

9
form, with the order form listing goods that meet the requirements of the
specific procurement process of the user, would have been a predictable use
of prior art elements according to their established functions — an obvious
improvement. As the U.S. Supreme Court has explained,
[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. Ag
Pro, Inc., 425 U.S. 273 (1976)] and Anderson’s-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative — a court must ask whether the improvement is
more than the predictable use of prior art elements according to
their established functions.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Weighing Patent Owner’s arguments against the Examiner’s findings,
and considering Requester’s arguments, we conclude Patent Owner has not
shown error in the Examiner’s obviousness rejection based on Allard and
Shankman regarding claim 1. We, therefore, sustain the Examiner’s
rejection based on Allard and Shankman of claim 1, as well as claims 4-8,
11, 16, and 18, which are not separately argued.

THE OBVIOUSNESS REJECTION OF CLAIMS 1-8, 11-14, AND 16-18 OVER
ALLARD, SHANKMAN, AND CIC BROCHURE
Patent Owner argues CIC Brochure does not cure the deficiencies of
Allard and Shankman. PO App. Br. 29. We need not address whether CIC
Appeal 2013-003021
Reexamination Control 95/001,612
Patent 6,895,389 B1

10
Brochure cures purported deficiencies of Allard and Shankman for reasons
discussed above when addressing claim 1. We, therefore, sustain the
Examiner’s rejection based on Allard, Shankman, and CIC Brochure of
claims 1-8, 11-14, and 16-18.

THE OBVIOUSNESS REJECTION OF CLAIMS 9-11 OVER ALLARD, SHANKMAN,
AND MARKS
Patent Owner argues Marks does not cure the deficiencies of Allard
and Shankman. PO App. Br. 30. We need not address whether Marks cures
purported deficiencies of Allard and Shankman for reasons discussed above
when addressing claim 1. We, therefore, sustain the Examiner’s rejection
based on Allard, Shankman, and Marks of claims 9-11.

THE OBVIOUSNESS REJECTION OF CLAIM 15 OVER ALLARD, SHANKMAN, CIC
BROCHURE, AND MARKS
Patent Owner argues neither CIC Brochure nor Marks cures the
deficiencies of Allard and Shankman. PO App. Br. 30. We need not
address whether CIC Brochure or Marks cures purported deficiencies of
Allard and Shankman for reasons discussed above when addressing claim 1.
We, therefore, sustain the Examiner’s rejection based on Allard, Shankman,
CIC Brochure, and Marks of claim 15.

Appeal 2013-003021
Reexamination Control 95/001,612
Patent 6,895,389 B1

11
THE NON-ADOPTION OF THE PROPOSED ANTICIPATION REJECTION OF CLAIMS
1, 4-8, 11, 16, AND 18 BY ALLARD
Sustaining the Examiner’s rejection of claims 1, 4-8, 11, 16, and 18
based on Allard and Shankman renders it unnecessary to reach the propriety
of the Examiner’s determination not to adopt the proposed rejection of
claims 1, 4-8, 11, 16, and 18 as anticipated by Allard. Cf. In re Gleave, 560
F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach the propriety
of the Examiner’s non-adoption of the rejection of claims 1, 4-8, 11, 16, and
18 based on Allard.

ORDER
The Examiner’s decision rejecting claims 1-18 is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

Appeal 2013-003021
Reexamination Control 95/001,612
Patent 6,895,389 B1

12
PATENT OWNER:
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
901 New York Avenue, NW
Washington, DC 20001-4413

THIRD PARTY REQUESTER:

WOLF, GREENFIELD & SACKS, P.C.
600 Atlantic Avenue
Boston, MA 02210-2206
lb