Ex Parte AgarwalDownload PDFBoard of Patent Appeals and InterferencesJun 22, 201211298985 (B.P.A.I. Jun. 22, 2012) Copy Citation 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 3 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: App App 4. 5. 6. App ...” a eal 2010-0 lication 11 Figure 2 o Allard disp 47-51). Allard stor consumer Additiona Claims 1 We are n ellant’s arg nd “at a la 06125 /298,985 f Allard di lays categ es produc profiles an l findings o 16-131 an ot persuad ument tha ter second splaying s ory inform t category d store inv f fact may AN d 140-157 ed of erro t Allard la time ... pr 4 hopping li ation in s informatio entory da appear in ALYSIS r on the pa cks functi oviding in st and item ection 54 n in a “da ta” (col. 5 the Analy rt of the E onality rel formation categorie of GUI 50 tabase for ll. 45-48). sis that fo xaminer b ated to the ” claim lim s. . (Col. 6 l the llows. y “receivin itations. l. g Appeal 2010-006125 Application 11/298,985 5 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 Application 11/298,985 6 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 Appeal 2010-006125 Application 11/298,985 7 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 Appeal 2010-006125 Application 11/298,985 8 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 Appeal 2010-006125 Application 11/298,985 9 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 hh Copy with citationCopy as parenthetical citation