Ex Parte Agarwal

Board of Patent Appeals and Interferences

Jun 22, 2012

11298985 (B.P.A.I. Jun. 22, 2012)

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.
11/298,985 12/09/2005 Amit D. Agarwal 120137.431C1 5705
500 7590 06/22/2012
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
ROSEN, NICHOLAS D
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
06/22/2012 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 AMIT D. AGARWAL
____________________

Appeal 2010-006125
Application 11/298,985
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006125
Application 11/298,985

2
STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 116-186. Claims 1-115 are canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

BACKGROUND
Appellant’s invention is directed to a method and system for ordering
user-defined groups of multiple items. (Spec. 1:9-11).
Claim 116 is illustrative:
116. A computer-implemented method for facilitating orders
by users of multiple items previously defined by a user to be a
group, the method comprising:
under control of a configured computer system of an item
ordering service that makes a plurality of items available,
receiving information from a user at a first time
that specifies one or more categories for a first group of
multiple of the plurality of items that is defined by the
user for later use, the user being one of multiple
customers of the item ordering service;
at a later second time after the first time, and in
response to an indication from the user of at least one of
the specified categories, providing information for
display to the user on a client system of the user that
identifies the first group of multiple items previously
defined by the user, the provided information enabling an
indicated action that if performed by the user initiates an
order for the user-defined first group of multiple items
from the item ordering service; and
in response to the indicated action being performed
by the user, initiating the order for the user-defined first
group of multiple items for the user.

Appeal 2010-006125
Application 11/298,985

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Appellant appeals the following rejections:
1. Claims 116, 120, 121, 123-126, 129, 140-142, 147-149, and 151
are rejected under 35 U.S.C. § 103(a) as unpatentable over Allard
(US 6,249,773 B1, iss. Jun. 19, 2001).
2. Claims 117, 118, 122, 127, 130-139, 143, 150, 152-154, and 158-
186 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Allard and Official Notice.
3. Claim 119 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Allard, Official Notice, and Bezos (US 6,029,141, iss. Feb.
22, 2000).
4. Claims 128 and 144-146 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Allard and Robertson (US 6,609,106 B1, iss.
Aug. 19, 2003).
5. Claims 137 and 138 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Allard, Official Notice, and Robertson.
6. Claims 155-157 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Allard and Bezos.

FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
1. We adopt the Examiner’s findings directed to claim 116 on page 5 of
the Answer as our own.
2. Allard discloses “the shopper’s previous shopping lists are available for
reference, and can be used as a starting point.” (Col. 5 ll. 20-22).
3. Allard discloses stored shopping lists as a category in element 56, and
item category information in elements 54 and 74, in Figure 2, below:
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Appeal 2010-006125
Application 11/298,985

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App. Br. 13-15. We agree with the Examiner that Allard discloses these
claim limitations in the form of shopping lists that can be created and saved
for later use. Ans. 4-5, 35-36. FF 1.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that no reason has been provided why a consumer
would be motivated to “associate a particular food category” with a defined
shopping list of Allard, and then later search for, or otherwise retrieve, the
shopping list based on that associated category (App. Br. 15), because this
argument is not commensurate in scope with the claims, which do not
require associating with “a particular food category.” The claim instead
more broadly requires specifying one or more categories for a first group of
multiple of the plurality of items. The argument is also unpersuasive because
the claim does not require a search. Additionally, we are not persuaded of
error because the Examiner’s articulated reason is in error. We agree with
the Examiner’s rationale and motivation for the modification i.e.: for the
advantage of “purchasing the items of a specified list.” Ans. 5 to 6.
We are not persuaded by Appellant’s argument that Allard teaches
away because “there would be no motivation to have the consumer search
for defined shopping lists” and “it does not make sense for a consumer to
associate a particular food category with a particular defined shopping list.”
App. Br. 15. These arguments are not commensurate in scope with the
claim, which does not require searching or associating with “a particular
food category.”
We are not persuaded by Appellant’s argument that the shopping lists
of Allard are not analogous to the recited user-defined groups of multiple
items. App. Br. 15. We agree with the Examiner that Allard’s shopping
Appeal 2010-006125
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lists meet the claim requirement, because a saved shopping list in Allard
specifies a group of items defined by the user for later use. Ans. 37.
We are not persuaded of error by the Examiner by Appellant’s
argument that Allard discloses food categories but lacks any disclosure of
associating such category information with any customer-defined groups of
multiple items (Rep. Br. 5), because this argument is not commensurate in
scope with the claim, which merely requires receiving information from a
user that specifies one or more categories for a group of items. Each stored
shopping list created by a user element 56 of Figure 2 is itself such a
category that meets the claim language.
We are also not persuaded by Appellant’s argument that the Examiner
erred because the Answer failed to provide “even minimal” support for any
motivation to modify Allard (Rep. Br. 7), because the Examiner articulated a
motivation of “purchasing the items of a specified list” by reusing a previous
shopping list without having to find and specify every item individually.
Ans. 6.
In view of the foregoing we will sustain the rejection of independent
claim 116. We will also sustain the rejection as it is directed to dependent
claims 120, 121, 123-126, 129, 140-142, 147-149, and 151, and separately
rejected dependent claims 117-119, 122, 127, 128, 130, 131, 143-146, 150,
and 152-157, because the Appellants have not addressed the separate
patentability of these claims.

Claims 132-139
We are not persuaded of error by the Examiner by Appellant’s
arguments that Allard appears to lack any disclosure of enabling customers
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to search for and use other customers’ shopping lists (App. Br. 18), because
this argument is not commensurate in scope with the claim, which does not
distinguish between customers. In this regard, dependent claim 132 does not
require searching for a list of a different customer than the customer
performing the search.
We are also not persuaded of error by Appellant’s argument that
Allard appears to lack any disclosure of distinct customers interacting with
each other in any manner, let alone to enable one customer to search for
other customers' defined item groups. Rep. Br. 9. This argument is not
commensurate in scope with the claim, which does not limit the limitation to
searching for item groups from “other” customers, but instead broadly
recites searching by a customer using an indication of a category and
providing information identifying items “to a distinct customer.” We
construe that the “distinct customer” may be the customer performing the
search for that customer’s own list, and not a different customer.
Therefore, we will sustain the rejection of dependent claim 132. We
will also sustain the rejection as it is directed to claims 133-139 that depend
from claim 132, because the Appellant has not addressed the separate
patentability of these claims.

Claims 176-186
We are not persuaded of error by the Examiner by Appellant’s
argument that Allard lacks functionality to a computer that automatically
categorizes a group of items. App. Br. 23. The Specification describes that
this categorization may take place by retrieving categorization information
from a database and aggregating it, and we thus broadly construe the claim
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to encompass categorization by category lookup in a database for each item
in a list. Spec. 25:11-17. Allard displays category information about each
item in a group of items (FF 3, 4), that we infer comes from a database (FF
5), and therefore Allard retrieves category information about each item in a
manner that meets the claim language.
We are also not persuaded of error by the Examiner by Appellant’s
argument that Allard’s display of categories such as produce and bakery
does not meet the claim language because such web sites are typically
“manually created by human operators.” App. Br. 23. The Specification
describes that this categorization may take place by retrieving categorization
information from a database and aggregating it. Spec. 25:11-17. It is
irrelevant whether the category data in the database was input manually by
humans or by other methods.
Therefore, we will sustain the rejection of independent claim 176. We
will also sustain the rejection as it is directed to claims 177-186 that depend
from claim 176, because the Appellant has not addressed the separate
patentability of these claims.

Claims 158-175
Appellant argues error by the Examiner as to claims 158-175 by
reference to the arguments at claim 116 and claim 176. App. Br. 25.
Because we were not persuaded by those arguments, we find them equally
unpersuasive as to claim 158.
Therefore, we will sustain the rejection of independent claim 158. We
will also sustain the rejection as it is directed to claims 159-175 that depend
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from claim 158, because the Appellant has not addressed the separate
patentability of these claims.

DECISION
We affirm the rejections of claims 116-186.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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