Ex Parte Agarwal

Board of Patent Appeals and Interferences

Mar 18, 2011

09558313 (B.P.A.I. Mar. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AMIT D. AGARWAL
____________

Appeal 2010-000555
Application 09/558,313
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
rejection of claims 1-37 and 39-47 which are all the claims pending in the
application. These cited claims have all been rejected more than twice. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a system and method
that automatically initiates the replenishment of items such as physical
products. (Spec. 3:10-11). Claim 2, reproduced below with the numbering
in brackets added, is representative of the subject matter of appeal.
2. A method in a data processing system for ordering an item,
comprising:
[1] on a first date, fulfilling an order by a consumer for a first item;
[2] determining a target date for suggesting replenishment of the first
item, the target date based upon the first date and the identity of the
first item;
[3] on the target date, providing to the consumer an indication that the
first item should be replenished, the indication including a user
interface control usable by the consumer to request replenishment of
the first item;
[4] receiving an indication that the control was used by the consumer
to request replenishment of the first item; and
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in response solely to receiving the indication, ordering a second item
to replenish the first item.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Hirst US 5,655,174 Aug. 5, 1997
Ono US 5,909,023 Jun. 1, 1999
Kenney US 6,026,376 Feb. 15, 2000

The following rejections are before us for review2:
1. Claims 1-26, 36-37, 39-443 are rejected under 35 U.S.C .
§ 103(a) as unpatentable over Kenney and Ono.
2. Claims 27-35 and 45-47 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kenney, Ono, and Hirst.

THE ISSUES
With regards to claim 1-26, 36-37, and 39-44 the issue turns on
whether the cited prior art of Kenney and Ono discloses the argued claim

2 We note that the Supplemental Examiner’s Answer mailed Jul. 9, 2009
(hereinafter “Supp. Ans.” does not contain the rejection made under 35
U.S.C. § 101 made in the previous Examiner’s Answer of Dec. 9, 2008 and
this rejection is therefore considered to be withdrawn by the Examiner.
3 We note that the Reply Brief filed Feb. 5, 2009 (hereinafter “Reply Br.”,
before the mailing of the Supp. Ans. of Jul. 9, 2009 lists claims 1-16 and 36-
44 as being included in this cited rejection (Reply Br. 12). The listing of
claims “1-16” instead of claims “1-26” is considered to be a typographical
error there (note that the Supp. Ans. lists these claims as “1-26” (Supp. Ans.
5)). Claim 38 has been cancelled so it is not included in cited this rejection
(Reply Br. 12).
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limitations and if the combination of the references would have obvious.
The rejection of claims 27-35 and 45-47 turns on a similar issue.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:4
FF1. Kenney has disclosed an interactive electronic shopping system
(Title). The system includes a virtual shopping facility from a facility such
as a grocery store and includes replicas of what you would see moving
through the actual shopping facility (Abstract).
FF2. Kenney has disclosed that by clicking on the displayed product, or
clicking on the product and dragging it to a video representation of a
shopping cart that a shopper’s selection can be made to the computer (Col.
12:55-63).
FF3. Kenney has disclosed that to make a reorder list that the shopper can
select items from the current list, enter the current date and reorder
frequency, and have it stored in the computer. The list 30 can be
automatically maintained based on the actual ordering history (including
ordering frequency) (Col. 11:13-34).
FF4. Ono has disclosed an online shopping support method (Title) in which
the system searches the purchase history information of the user and
calculates a purchase interval of each good purchased by the user (Abstract).
The system judges whether the time corresponding to the purchase interval

4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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has lapsed and transmits information of the good to the service use system
(Abstract).
FF5. Ono discloses that the server judges that for each product for which
the purchase interval was calculated and has lapsed that the information is
transmitted to the client 220 to display in the output unit 223 (Col. 4:41-49).
FF6. Hirst has disclosed a system with an ambient sensor for estimating
printing supply consumption (Title).
FF7. Hirst discloses that consumption is estimated by classifying each pixel
that is estimated to be printed. A warning such as “low toner” is displayed
on the printing device when estimates of printing surpass a limit. (Abstract).

ANALYSIS
The Appellant argues that the rejection of claim 2 is improper because
Kenny and Ono fail to disclose claim limitations [1], [2], and [3] as cited
above, and also because the combination of references would not have been
obvious (Brief filed Aug. 1, 2006, 15-18). The Appellant presented similar
arguments in the Reply Brief filed Feb. 5, 2009.
In contrast, the Examiner has determined that the cited claim
limitations are found in Kenney and Ono and that the combination of
references would have been obvious (Supp. Ans. 5-6 and 8-9).
We agree with the Examiner. In claim 2, claim limitations [1], [2],
and [3] require:
[1] on a first date, fulfilling an order by a consumer for a first item;
[2] determining a target date for suggesting replenishment of the first
item, the target date based upon the first date and the identity of the
first item;
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[3] on the target date, providing to the consumer an indication that the
first item should be replenished, the indication including a user
interface control usable by the consumer to request replenishment of
the first item. (Claim 2).
Claim limitation [1] is shown by Kenney which discloses that by
clicking on the product or clicking on the product and dragging it to a video
representation of a shopping cart that a shopper’s selection can be made to
the computer (FF2). Claim limitation [2] is shown by Kenney disclosing
that the customer can create a “reorder” list that is maintained by the
computer and based on the actual ordering history including ordering
frequency (FF3). Kenney has not specifically disclosed claim limitation [3],
however, which is directed to on the target date, providing the consumer
with an indication that the item should be replenished. Ono does however
disclose claim limitation [3] showing that a server judges that for each
product for which a purchase interval was calculated and has lapsed that the
information is transmitted to the client to display in an output unit (FF5).
Kenney’s disclosure that the user can “click” on the product serves as a
“user control” to assist in requesting replenishment.
The modification of the system of Kenney to include notifying the
client when the products purchase interval has lapsed as taught by Ono is
considered to be an obvious, predictable combination of familiar elements
for the advantage of notifying the consumer as soon as the product needed to
reordered instead of waiting until they came into the virtual store again. For
these above reasons, the rejection of claim 2, and claims 4-14 which have
not been separately argued, is sustained.
Independent claims 15 and 36 contain argued claim limitations that
are very similar to claim 2 addressed above. For the same reasons given
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above, the rejection of these claims, as well as dependent claims 16, 18-26,
and 37 which have not been separately argued is also sustained.
Independent claims 27, 31, and 35 also contain argued claim
limitations that are very similar to claim 2 addressed above. Independent
claims 27 and 31 contain argued claim limitations directed to “scheduling a
time preceding the determined expiration time” for a “communication” that
the “item should be replenished”. Hirst provides an additional teaching of
notifying a user when a condition is met by showing notifying a user of
printer that the toner is low (FF7). For the same reasons given above, the
rejection of these independent claims 27, 31, and 35 is sustained. With
regards to claims 27 and 31, the time at which Ono transmitted the client the
information (FF4) would serve as a “scheduled time” and it would have been
obvious to have this sent before expiration of the time the product needed to
be replenished to avoid delivery lag time. Dependent claims 28-30, 32-34,
and 45-47 have not been separately argued and the rejection of these claims
is sustained for these same reasons.
Claim 1 is similar to claim 2, but contains an additional limitation for
“a control useable by the consumer to request replenishment of the product
by performing a single action”. Enabling the consumer to execute the
request for replenishment in a “single action” is considered to be an obvious
modification to increase speed and simplify the ordering process. In KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Court stated that when
considering obviousness that “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR at 418. Here, the modification
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of the combination of Kenney and Ono to further include a request
completed by a single action would have been readily inferred by one of
ordinary skill in the art to simplify and speed up the process. Dependent
claims 3, 17, and 44 contain a similar limitation and the rejection of these
claims is sustained for these same reasons.
Claim 39 is similar to claim 2 but contains an additional limitation
that “without intervention by the consumer, placing an order for
replenishment of the item within a predetermined tolerance of the target
replenishment date” which essentially is drawn to the system automatically
ordering products for the consumer that are used frequently. Here, one of
ordinary skill in the art would have readily inferred the advantage of
automatically ordering and shipping items to consumers who place such
recurring orders by establishing such a fulfillment contract with them in
order to secure long-term business customers and such a modification of the
proposed combination of Kenney and Ono references would have been
obvious. The Appellant has not argued for claim 40 separately and this
claim is rejected for these same reasons as well.
Claim 41 is similar to claim 2 but contains a limitation drawn to that
“when testing indicates that the condition is satisfied, raising an event…and
suggesting replenishment of the item to the purchasing entity”. Giving this
claim limitation its broadest reasonable interpretation in light of the
Specification it is broad enough to read on simply testing if the date
“condition” for reorder has been met that the user should then be notified as
suggested by the prior art Kenney and Ono (FF3-5). For these reasons the
rejection of claim 41, and claims 42-43 not separately argued, is sustained.

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DECISION
The Examiner’s rejection of claims 1-37 and 39-47 is sustained.

AFFIRMED

MP

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