Ex Parte Arora et al

Patent Trial and Appeal Board

Jun 24, 2016

12234439 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/234,439 09/19/2008
49845 7590 06/28/2016
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Aditya Arora
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2043.580US 1 4082
EXAMINER
SAEED, USMAAN
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
06/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADITY A ARORA, GURUDATTA HORANTUR SHIV ASW AMY,
BRIAN M. JOHNSOU, RICHARD D. HENDERSON,
SWATI AGARWAL, and JENNIFER M. DANTE
Appeal2014-001067
Applicationl2/234,439 1
Technology Center 2100
Before HUBERT C. LORIN, ANTON W. PETTING,
and SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of a decision of
the Examiner to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
BACKGROUND
1 According to Appellants, the real party in interest is eBay Inc. (Appeal Brief
filed July 3, 2013, hereafter "App. Br." 2).
Appeal2014-001067
Application 12/234,439
The invention relates to item matching, where free-form text may be
converted to compatibility-based search inquiries. Specification, hereafter "Spec."
i-fi-121, 22. Clustering may be used to record interoperability of items with a parent
item and item matching may be used to locate items that will work with parent
items. Id. i-fi-123, 24.
Representative claim 1 reproduced from page 15 of the Claims Appendix of
the Appeal Brief (Claims App'x) as follows, with emphasis added to relevant claim
limitations:
1. A method comprising:
receiving a query comprising free-form text;
extracting a term from the query to identify an item descriptor in the query;
using the term and the item descriptor to identify an item from a category;
identifYing a parent item comprising a product from a different category, the
item comprising a part or an accessory that work with the product of the parent
item;
providing an approval request to a user based on the identification of the
item;
receiving an approval response from the user in response to the approval
request;
constructing compatibility-based text for the item based on identification of
the parent item, identification of the item descriptor, identification of the item, and
receipt of the approval response;
accessing, at a compatibility-based text construction module of a processor,
compatibility-based text for the item based on availability of compatibility data
between the identified item and the parent item;
identifying a compatibility identifier based on the compatibility-based text,
the compatibility identifier associated with an item cluster;
using the compatibility identifier to identify a plurality of matching items;
and
providing a result based on identification of the plurality of matching items.
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Appeal2014-001067
Application 12/234,439
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) over Bailey2,
Johnson3, and Berkowitz4 . Final Action mailed September 19, 2013, hereafter
"Final Act.," 10-38; see also Answer mailed August 15, 2013, hereinafter "Ans.,"
3.
DISCUSSION
The Appellants argue independent claims 1, 11, 14, and 18 together on the
same common issues, with the dependent claims standing or falling with them.
App. Br. 9-13. In light of our disposition of this Appeal, we need only address the
certain issues relating to the independent claims, and we will use claim 1 as
representative.
The Appellants argue that the prior art fails to teach the limitations of
"identifying a parent item comprising a product from a different category" and "the
item comprising a part or an accessory that works with the product of the parent
item." App. Br. 10. More specifically, the Appellants allege that Bailey teaches
relationships between categories and not between products. Id. (citing Baily, Fig.
2). The Appellants further contend that neither Bailey nor Berkowitz discloses an
item that comprises a part or accessory that works with the product of the parent
item. Id. at 10-12 (citing Berkowitz, Figs. 2, 3). More specifically, the Appellants
argue that the Examiner found that "Vacuum, Oil Diffusion, Roughing" are parent
items, however, they are not products but are rather categories of products. Id. at
12. The Appellants further argue that the Examiner fails to identify anything in the
prior art that works as a part or accessory with the identified "parent item," and
Berkowitz's disclosures of a "cross-reference dictionary" relating parts numbers, in
2 US Patent 6, 785,671 B 1, issued August 31, 2004.
3 US Publication 2005/0251409 Al, published November 10, 2005.
4 US Patent 8,249,885 B2, issued August 21, 2012.
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Appeal2014-001067
Application 12/234,439
particular, fails to read on the claim. Reply Brief mailed October 15, 2011,
hereafter "Reply Br.," 3.
Upon consideration of the evidence on this record in light of the arguments
advanced by the Appellants, we find that the Appellants have identified reversible
error in the Examiner's determination that representative claim 1 is obvious. We
add the following for emphasis.
Claim 1 requires that the "parent item" be a "product." Although we
appreciate the Examiner's view that Berkowitz teaches a hierarchy with mapping
among different portions of the same, the Examiner relies upon Berkowitz's
disclosure of "Vacuum, Oil Diffusion, Roughing" pumps as the parent items and
these groups represent categories of products and not the products themselves.
Additionally, the Examiner finds that Berkowitz also discloses a "database of
related part numbers ... mapping of one part number to another" and an
"electronic catalog." Final Act. 15 (citing Berkowitz 9:60-64, 20:53). The claim
requires, however, that the "item" of the claims be a "part or accessory" that works
with the product. The mapping of parts relied upon by the Examiner is a parts-to-
parts mapping, rather than the disclosure of the identification of a part used with a
product.
Accordingly, the evidence of record does not, in our view, support the
Examiner's findings related to obviousness. We therefore reverse the Examiner's
rejection of representative claim 1.
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Appeal2014-001067
Application 12/234,439
SUMMARY
The rejection of claims 1-20 under 35 U.S.C. § 103(a) is reversed.
REVERSED
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