Ex Parte Au et al

Board of Patent Appeals and Interferences

Feb 3, 2011

10751742 (B.P.A.I. Feb. 3, 2011)

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.
10/751,742 01/05/2004 Michael K. Au CA920030049US1 (292) 3098
46320 7590 02/03/2011
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
DUNHAM, JASON B
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
02/03/2011 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 MICHAEL K. AU,
CONAN MING Y. CHAN,
SAU CHU CHAN,
LEV MIRLAS, and
ALEX SHUM
____________

Appeal 2009-012763
Application 10/751,742
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

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 2009-012763
Application 10/751,742

2

STATEMENT OF THE CASE2
Michael K. Au (Appellants) filed a Request for Rehearing of the
Decision. The Board had affirmed the Examiner’s decision rejecting claims
1, 4-7, 10-13, and 16-20 and reversed the Examiner’s decision to reject
claims 2, 3, 8, 9, 14, and 15.
In accordance with 37 C.F.R. § 41.52(a)(1), the Request includes
certain points, in particular, that the Appellants believe the Board
misapprehended or overlooked in reaching its Decision. The Appellants
argue that the Board misapprehended or overlooked certain arguments
because the “the Honorable Board appears to have refused to consider
Appellants’ argument on the basis that these arguments were not properly
framed.” Request 4. The Appellants’ argument centers on the Boards’
finding that an argument made by the Appellant is not based on limitations
appearing in the claim (Decision 9). The Decision states:
Turning to the Appellants’ second argument, the
Appellants argue that Haynes does not describe
that “a user is able to access a supplier catalog,
which is separate from the aggregated catalog.”
App. Br. 15. However, claim 1 does not require
that the supplier catalog is separate from the
aggregated catalog as the Appellants seem to argue
(Id.) Claim 1 states “providing a buyer with access
to said aggregated catalog and separate access to
at least one of said plurality of supplier catalogs on
said commerce site.” (Emphasis added.) It is the
“access” that is separate and not the catalogs.

2 Our decision will make reference to the Appellants’ Request for Rehearing
(filed Oct. 12, 2010, “Request”), the BPAI Decision (mailed Aug. 12, 2010,
“Decision), the Appellants’ Appeal Brief (filed Feb. 6, 2008 “App. Br.”),
and the Examiner’s Answer (mailed Oct. 1, 2008, “Answer”).
Appeal 2009-012763
Application 10/751,742

3
“May of appellant’s argument fail from the outset
because, . . . they are not based on limitations
appearing in the claims . . . .” In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
The Appellants state: “[t]he Appellants respectfully request that the
Honorable Board review the issue raised by the Appellants (i.e. whether or
not Haynes identically discloses ‘providing a buyer with access to said
aggregated catalog and separate access to at least on of said plurality of
supplier catalogs on said commerce site’).” Request 7.
Further, the Appellants argue that “[t]he Honorable Board’s position
that Appellants’ arguments are not based on limitation appearing in the
claims necessarily requires a claim construction that was not in the record
prior to the Decision and is still not within the record after the Decision.”
The Appellants assert that Board’s position raises a new ground of rejection
and request that Board designates the analysis as such. Request 7-8

DISCUSSION
We have reviewed the Appellant’s Request but do not find that the
Appellant has shown the Board to be in error.
The Board did not “refuse” to consider the issue of “whether or not
Haynes identically discloses ‘providing a buyer with access to said
aggregated catalog and separate access to at least on of said plurality of
supplier catalogs on said commerce site’” because this issue was not raised
by the Appellant in the Appeal Brief. We could not have misapprehended or
overlooked this argument in reaching our Decision because it was not before
us.
The entirety of the Appellants’ argument in the Appeal Brief related
to the access of the catalogs is reproduced below:
Appeal 2009-012763
Application 10/751,742

4
On page 12 of the First Office Action, Appellants
also noted that claims 1, 7, 13, and 19 were
amended to clarify that a user is able to access a
supplier catalog, which is separate from the
aggregated catalog. This limitation is neither
taught nor suggested by Haynes. On page 3 of the
Second Office Action, the Examiner cited a
passage in paragraph [0047], which states that
“[s]uch an interface permits a buyer to search a
catalogue of products and/or services of a
particular supplier.” However, absent from this
passage and the Examiner’s analysis is an
identification of a user being capable of accessing
two separate catalogs, one catalog being the
aggregated catalog and the second catalog being a
supplier catalog.
App. Br. 15 (emphasis original).
This argument does not raise the issue of “whether or not Haynes
identically discloses ‘providing a buyer with access to said aggregated
catalog and separate access to at least one of said plurality of supplier
catalogs on said commerce site.’” (Request 7) but instead raises the issue of
whether or not Haynes describes that a user is able to access two separate
catalogs. Our response directly addresses the issue actually raised by the
Appellants; that is that Haynes does not disclose that a user is able to access
a supplier catalog, which is separate from the aggregated catalog. See
Decision 9. We found the Appellants’ argument was based on a limitation
not required by the claim. Id.
Filing a Board appeal does not, unto itself, entitle
an appellant to de novo review of all aspects of a
rejection. If an appellant fails to present
arguments on a particular issue – or, more broadly,
on a particular rejection – the Board will not, as a
general matter, unilaterally review those
uncontested aspects of the rejection. . . Thus, the
Appeal 2009-012763
Application 10/751,742

5
Board will generally not reach the merits of any
issues not contested by an appellant.
In re Frye, 94 USPQ2d 1072, 1075 2009-006013 (BPAI
2010)(precedential).
Furthermore, in as much as the Appellant is now asking the Board to
review whether or not Haynes describes the limitation actually recited in
claim 1 - “providing a buyer with access to said aggregated catalog and
separate access to at least one of said plurality of supplier catalog on said
commerce site” - (Request 7), the Appellant provides no arguments
addressing the Examiner’s finding that paragraphs 17-18 and 47 of Haynes
describe this limitation (see Answer 4). “It is not the function of this court
to examine the claims in greater detail than argued by an appellant, looking
for nonobvious distinctions over the prior art.” In re Baxter Travenol Labs,
952 F.2d 388, 391 (Fed. Cir. 1991). See also In re Wiseman, 596 F.2d 1019,
1022 (CCPA 1979) (arguments must first be presented to the board). A
general allegation that the art does not teach any of the claim limitations is
no more than merely pointing out the claim limitations. A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim 37 C.F.R. § 41.37(c)(1)(vii).
As to the Appellants’ request that the Board designate its rationale,
reproduced above, as a new grounds of rejection because the Board’s
reasoning necessarily requires a claim construction that the Appellant did
not have the opportunity to respond to (see Request 7-8), the criterion of
whether a rejection is considered “new” in a decision by the Board is
whether Appellant has had a fair opportunity to react to the thrust of the
rejection. In re Kronig, 539 F.2d, 1300, 1303 (CCPA 1976). The Board’s
reasoning that the Appellant responded to the Examiner’s rejection by
Appeal 2009-012763
Application 10/751,742

6
arguing a limitation not found in the claim, does not change the Examiner’s
rationale in rejecting the limitation actually recited by the claim. The
Examiner’s rejection addresses the step of providing a buyer with separate
access as it is actually recited (see Answer 4). The Appellant was given a
fair opportunity to respond to the Examiner’s rejection of the actually recited
limitation, but instead chose to present an argument direct to a limitation not
recited. Since the Appellant has had a fair opportunity to respond to the
Examiner’s rejection, we decline to designate our affirmance as a new
ground of rejection under 37 C.F.R. § 41.50(b).

CONCLUSION
We have carefully considered the arguments that the Appellants have
set forth in the Request but, for the foregoing reasons, we do not find them
persuasive as to error in the Board’s decision of September 23, 2010
affirming the decision of the Examiner to reject claims 1, 4-7, 10-13, and 16-
20 and reversing the Examiner’s decision to reject claims 2, 3, 8, 9, 14, and
15.

DENIED

mev

CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON FL 33487