Ex Parte Allocca et al

Board of Patent Appeals and Interferences

Jul 13, 2011

11555958 (B.P.A.I. Jul. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte WILLIAM ALLOCCA, JORDAN HAY, 8
JONATHAN A. LEBLANG, COLLEEN MCQUEEN, 9
and JAMES PRUDENTE 10
___________ 11
12
Appeal 2010-004724 13
Application 11/555,958 14
Technology Center 3600 15
___________ 16
17
Before HUBERT C. LORIN, ANTON W. FETTING, and 18
BIBHU R. MOHANTY, Administrative Patent Judges. 19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL1 21

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.

Appeal 2010-004724
Application 11/555,958

2
STATEMENT OF THE CASE2 1

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 20, 2009) and Reply Brief (“Reply Br.,” filed November 30,
2009), and the Examiner’s Answer (“Ans.,” mailed September 29, 2009).
William Allocca, Jordan Hay, Jonathan A. Leblang, Colleen McQueen, 2
and James Prudente (Appellants) seek review under 35 U.S.C. § 134 (2002) 3
of a final rejection of claims 130, 132-134, and 136-144, the only claims 4
pending in the application on appeal. We have jurisdiction over the appeal 5
pursuant to 35 U.S.C. § 6(b) (2002). 6
The Appellants invented a way of ordering items over the internet 7
(Specification 1:8-10.). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 130, which is reproduced below [bracketed matter and 10
some paragraphing added]. 11
130. A method for ordering an item using a client system, the 12
method comprising: 13
[1] providing for display 14
information identifying the item and 15
an indication of a single action 16
that is to be performed 17
to order the identified item; 18
[2] providing for display 19
in a multi-procurement ordering section 20
a current procurement option 21
associated with information 22
Appeal 2010-004724
Application 11/555,958

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related to supplying of the item; 1
[3] in response to receiving an indication 2
that the single action has been performed 3
initiating ordering 4
of the identified item 5
using the information 6
related to supplying the item 7
associated with the current 8
procurement option; and 9
[4] sending to a server computer 10
a request to order the identified item. 11
The Examiner relies upon the following prior art: 12
Slotznick US 5,983,200 Nov. 9, 1999
Robertson US 6,609,106 B1 Aug. 19, 2003
Claims 130, 132-1 34, 136-138, 140-142, and 144 stand rejected under 13
35 U.S.C. § 102(e) as anticipated by Slotznick. 14
Claims 139 and 143 stand rejected under 35 U.S.C. § 103(a) as 15
unpatentable over Slotznick and Robertson. 16
17
ISSUES 18
The issues of anticipation and obviousness turn on whether Slotznick 19
describes limitation [1] of providing for display information identifying an 20
item and an indication of a single action that is to be performed to order the 21
identified item. 22
Appeal 2010-004724
Application 11/555,958

4
FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Slotznick 5
01. Slotznick is directed to a system which serves as an intelligent 6
agent, expedites electronically placed orders, purchases, deliveries 7
or production instructions for a variety of goods and services, and 8
carries out various delegated tasks, in the present or the future or 9
repeatedly over time. Slotznick 1:14-18. 10
02. Slotznick’s device may be delegated tasks which involve 11
interactions with broadcast and point-cast media, such as radio, 12
television, or broadcasts or point-casts over the Internet. When a 13
user hears or sees an advertisement over broadcast or point-cast 14
media, and wants to order the product, the user presses the 15
"SEND" button on the remote control and the product is 16
automatically ordered. When a user watches a video over the 17
Internet, clicking on the image of an actor will allow the user to 18
order the clothes, jewelry, and other articles that the actor is 19
wearing. (The device already knows the user's size.) Clicking on 20
an object on the screen, such as furniture, an appliance or a 21
painting, allows the user to order that item. The broadcast includes 22
purchasing information and the device uses that information along 23
with information it has previously stored, such as the user's credit 24
Appeal 2010-004724
Application 11/555,958

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card number and shipping address, to compose and transmit a 1
purchase order. Slotznick 6:32-7:3. 2
ANALYSIS 3
Claims 130, 132-1 34, 136-138, 140-142, and 144 rejected under 35 U.S.C. 4
§ 102(e) as anticipated by Slotznick. 5
We are unpersuaded by the Appellants’ argument that Slotznick fails to 6
describe limitation [1] of providing for display information identifying the 7
item and an indication of a single action that is to be performed to order the 8
identified item. Appeal Br. 4-7. 9
As the Examiner found, Slotznick describes how when a user watches a 10
video over the Internet, clicking on the image of an actor will allow the user 11
to order the clothes, jewelry, and other articles that the actor is wearing. 12
Clicking on an object on the screen, such as furniture, an appliance or a 13
painting, allows the user to order that item. 14
Because the broadcast includes purchasing information and the device 15
uses that information along with information it has previously stored, such 16
as the user's credit card number and shipping address, to compose and 17
transmit a purchase order, one click is sufficient to complete the order. 18
Answer 4. See FF 02. 19
The Appellants contend that this portion of Slotznick describes plural 20
clicks, but Slotznick only describes several possible items that may be 21
selected, each requiring a single click, rather than plural clicks for a single 22
item. 23
Appeal 2010-004724
Application 11/555,958

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We agree also with the Examiner’s construction that the limitation “in 1
response to receiving an indication that the single action has been performed 2
initiating ordering” does not recite that the single action is necessarily the 3
only action that the ordering depends on. Answer 9. This limitation requires 4
that the single action be a necessary condition for ordering, but not 5
necessarily a sufficient condition. Accordingly, even if Slotznick were to 6
use additional click beyond the one click described, Slotznick would still 7
describe the claim. 8
Claims 139 and 143 rejected under 35 U.S.C. § 103(a) as unpatentable over 9
Slotznick and Robertson. 10
The Appellants rely on their arguments in support of claim 130. 11
CONCLUSIONS OF LAW 12
The rejection of claims 130, 132-1 34, 136-138, 140-142, and 144 under 13
35 U.S.C. § 102(e) as anticipated by Slotznick is proper. 14
The rejection of claims 139 and 143 under 35 U.S.C. § 103(a) as 15
unpatentable over Slotznick and Robertson is proper. 16
DECISION 17
To summarize, our decision is as follows. 18
 The rejection of claims 130, 132-134, 136-138, 140-142, and 144 19
under 35 U.S.C. § 102(e) as anticipated by Slotznick is sustained. 20
 The rejection of claims 139 and 143 under 35 U.S.C. § 103(a) as 21
unpatentable over Slotznick and Robertson is sustained. 22
Appeal 2010-004724
Application 11/555,958

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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
4
AFFIRMED 5
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mev 9