Ex Parte Baum

Board of Patent Appeals and Interferences

Jul 9, 2008

10038004 (B.P.A.I. Jul. 9, 2008)

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___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DANIEL R. BAUM
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Appeal 2008-0767
Application 10/038,004
Technology Center 3600
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Decided: July 9, 2008
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Before LINDA E. HORNER, ANTON W. FETTING, and DAVID B. WALKER,
Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Daniel R. Baum (Appellant) seeks review under 35 U.S.C. § 134 of a non-final
rejection of claims 1-21, the only claims pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).
We AFFIRM.

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The Appellant invented a way of distributing image prints to a plurality of
recipients. This includes receiving an order specifying multiple recipients and, for
each specified recipient, a set of one or more images associated with that recipient.
For each of the recipients specified in the order, at least one copy of each image in
the recipient's image set is printed and the printed image copies are distributed to
their respective associated recipients (Specification 3:29 – 4:4). An understanding
of the invention can be derived from a reading of exemplary claim 1, which is
reproduced in the Analysis section below.
This appeal arises from the Examiner’s Non-Final Rejection, mailed
August 12, 2005. The Appellant filed an Appeal Brief in support of the appeal on
September 11, 2006. An Examiner’s Answer to the Appeal Brief was mailed on
October 2, 2006.
PRIOR ART
The Examiner relies upon the following prior art:
Hartman US 5,960,411 Sep. 28, 1999
Lockhart US 2002/0103697 A1 Aug. 1, 2002
REJECTIONS 15
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Claims 1-10 and 13-21 stand rejected under 35 U.S.C. § 102(e) as anticipated
by Lockhart.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Lockhart and Hartman.
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ISSUES
The issues pertinent to this appeal are:
• Whether the Appellant has sustained its burden of showing that the
Examiner erred in rejecting claims 1-10 and 13-21 under 35 U.S.C. § 102(e)
as anticipated by Lockhart.
• Whether the Appellant has sustained its burden of showing that the
Examiner erred in rejecting claims 11 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Lockhart and Hartman.
The pertinent issue turns on whether Lockhart describes a single card order
specifying a plurality of recipients and the order being completed in a single
transaction sequence.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of “transaction.”
02. The ordinary and customary meaning of “transaction” within the
context of a business transaction is something transacted especially a
business agreement or exchange.1
03. The disclosure contains no lexicographic definition of “order.”

1 American Heritage Dictionary of the English Language (4th ed. 2000).
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04. The ordinary and customary meaning of “order” within the context of
a business transaction is a commission or instruction to buy, sell, or
supply something.

Lockhart
05. Lockhart is directed to generating and distributing surface mail
utilizing a global computer network (Lockhart ¶ 0003).
06. After logging in, the user selects the address of the recipient, the
user’s prepaid balance is decremented, and the postcard is scheduled for
delivery (Lockhart ¶’s 0081-82, 0085-86, 0094-95, 0096-97; Fig. 2:212,
220, 222, 226, 228).
07. Lockhart’s user selects the address of the desired recipient. This is
preferably accomplished using an address book scheme. The displayed
address book includes a number of entries which may be selected via a
standard checkbox (Lockhart ¶ 0086).
08. Lockhart may employ a web-based mail merge in connection with the
creation of post cards and other mail items. For example, a single card
design may be used for a variety of recipients whose names are merged
in from a merge data file (Lockhart ¶ 0088).
09. In Lockhart, after the recipient address for the mail item is selected,
the user's account balance is accessed by the system. If the account
balance is positive, the balance is decremented in accordance with the
postage required for the mail item being sent. If the account balance is
zero, or less than the required postage, then the user is provided the
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opportunity to purchase postcards or other mail items on-line.
Depending upon the particular embodiment, the user may be able to
purchase an arbitrary amount of postcards. Or the user may be presented
with a choice of discrete quantities (1, 10, 25, etc.). In any event, the
user is then prompted for suitable charge or debit card information, after
which the user can confirm the purchase (Lockhart ¶ 0095).
10. Once the recipient address is entered, the user is allowed to review the
final postcard and schedule its delivery date (Lockhart ¶ 0097).
11. On or prior to the send date, the mail file associated with the postcard
is sent to a printing facility (Lockhart ¶ 0100).
Hartman
12. Hartman is directed to ordering items over the Internet (Hartman 1:6-
8).
13. Hartman’s client system displays information that identifies an item
for sale and displays an indication of an action (e.g., a single action such
as clicking a mouse button) that a purchaser is to perform to order the
identified item (Hartman 2:50-57).
Facts Related To The Level Of Skill In The Art
14. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent arts of business transaction and computer
graphics design and programming. We will therefore consider the cited
prior art as representative of the level of ordinary skill in the art. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he
absence of specific findings on the level of skill in the art does not give
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rise to reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown’”) (quoting Litton Indus.
Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985).
Facts Related To Secondary Considerations
15. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.
PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003) (claims must be interpreted “in view of the specification” without
importing limitations from the specification into the claims unnecessarily).
Although a patent applicant is entitled to be his or her own lexicographer of
patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to be
construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although
an inventor is free to define the specific terms used to describe the invention, this
must be done with reasonable clarity, deliberateness, and precision; where an
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inventor chooses to give terms uncommon meanings, the inventor must set out any
uncommon definition in some manner within the patent disclosure so as to give
one of ordinary skill in the art notice of the change).
Anticipation
"A claim is anticipated only if each and every element as set forth in the claim
is found, either expressly or inherently described, in a single prior art reference."
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987). "When a claim covers several structures or compositions, either generically
or as alternatives, the claim is deemed anticipated if any of the structures or
compositions within the scope of the claim is known in the prior art." Brown v.
3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). "The identical invention must be
shown in as complete detail as is contained in the ... claim." Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be arranged
as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Obviousness
A claimed invention is unpatentable if the differences between it and the
prior art are “such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art.”
35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727 (2007);
Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
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U.S. at 17. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, at 1739.
“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” Id. at 1740.
“For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 1742.
ANALYSIS
Claims 1-10 and 13-21 rejected under 35 U.S.C. § 102(e) as anticipated by
Lockhart.
Claims 1-10 and 13
The Appellant argues claims 1-10 and 13 as a group (Br. 5:Heading and
10:Last ¶).
Accordingly, we select claim 1 as representative of the group.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
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The Examiner found that Lockhart anticipated claim 1 as follows (Answer 5)
[bracketed matter, including citations to where the Examiner found support, and
some paragraphing added].
1. A computer-implemented method of distributing cards to a plurality
of recipients, the method comprising:
[1] receiving
a single card order specifying
a plurality of recipients and,
for each specified recipient,
a set of one or more images
directly uploaded by a user associated with that
recipient,
wherein the single card order is completed in a single
transaction sequence; [Lockhart ¶’s 0021-0023]
[2] for each of the plurality of recipients specified in the received card
order,
printing at least one card
having at least one user-uploaded image from the
recipient's image set; and [Lockhart ¶’s 0050-0062]
[3] distributing the printed cards
having the recipients' user-uploaded images
to their respective associated recipients. [Lockhart ¶’s 0086-
0088 & 0100]
The Appellant contends that Lockhart is silent on a single card order specifying
a plurality of recipients and the order being completed in a single transaction
sequence (Br. 9-10). The Appellant argues that Lockhart ¶ 0086 merely describes
using an address book rather than specifying a plurality of recipients in a single
order (Br. 9:Second full ¶). The Appellants further argue that Lockhart ¶ 0088
fails to show a set of images uploaded by a user associated with the recipient
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wherein the order is completed in a single transaction (Br. 9:Third full ¶). The
Appellant argues that this is further shown at Lockhart’s description in ¶ 0095 of
the user’s balance being accessed in seriatim (BR. 9:Bottom ¶ - 10:First full ¶).
The Appellant concludes that the Examiner read more into Lockhart than is done
by Lockhart’s mail merge (Br. 10:Second full ¶).
The Examiner responded that the Appellant has not shown that Lockhart fails
to describe a plurality of recipients in a single order, and the Examiner further
found that Lockhart shows this in Lockhart Fig. 1. The Examiner also found that
the limitation of a single transaction sequence was sufficiently broad to encompass
Lockhart’s method of not requiring a user to enter into different or separate
transactions for individual recipients (Answer 9). The Examiner further found that
Lockhart describes at least one embodiment that does not perform transactions in
seriatim at Lockhart ¶ 0095 in which the user is allowed to complete a single
transaction for all the selected cards (Answer 10).
We agree that Lockhart anticipates claim 1. Much of the Appellant’s
arguments surround how Lockhart uses orders and transactions, so we must first
construe these terms within the claims. The Specification contains no
lexicographic definition of either term. The usual and customary meaning within a
business context of an order is a commission or instruction to buy, sell, or supply
something, and of a transaction is something transacted, especially a business
agreement or exchange (FF 01, 02, 03, & 04). Therefore we construe step [1] to
mean receiving a single instruction to buy something related to cards, that
instruction specifying a plurality of recipients and, for each specified recipient, a
set of one or more images directly uploaded by a user associated with that
recipient, wherein the instruction to buy is completed in a single business
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agreement sequence. That is, the entire agreement is completed in a single
sequence that is started with one instruction.
Lockhart requires payment in advance of mailing, into a customer account, the
equivalent of digital postage (FF 09). Since Lockhart relies on a prepaid balance
for payment, the transactional operating sequence begins with some instruction to
order something that will consume part of the prepaid balance. After logging in,
Lockhart’s user selects the address of the recipient, then the user’s prepaid balance
is decremented, and finally the postcard is scheduled for delivery (FF 06). Thus,
address selection is the instruction that starts the order’s sequence and scheduling
ends the sequence. The business agreement constituting the transaction in
Lockhart is therefore the agreement to accept postcards into a delivery queue in
accordance with a delivery schedule.
Lockhart describes using a mail merge for a variety of recipients whose names
are merged in from a merge data file (FF 08). Thus, the instruction that starts the
sequence, viz. the address selection, may specify a plurality of recipients. After the
recipient address for the mail item is selected, the user's account balance is
accessed by the system, and if the balance is insufficient, the user may purchase
additional postage for multiple recipients (FF 09). Thus, even should a payment be
included within the operating sequence, the user may accomplish this with a single
payment for the plurality of recipients. The sequence begun by the address
selection instruction ends with scheduling of delivery (FF 10). Delivery itself
occurs in a separate operating sequence driven by the schedule (FF 11).
Lockhart’s sequence begun with a mail merge creating plural recipients
therefore ends with scheduling of delivery of those recipients. All steps are
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scheduled within a single sequence beginning with address selection and ending
with completion of scheduling form a single transaction.
The Appellant argues that because the system operates on one recipient at a
time, each recipient postcard is a separate transaction and order in Lockhart. But
this is equivalent to arguing that because a computer operates on one instruction at
a time, every instruction is a separate transaction. The scope of a transaction
depends on context, and a single transaction in one context may indeed contain
multiple transactions as viewed in a narrower context. Thus, a single order for
multiple recipients may need to be processed on a recipient-by-recipient basis, but
the transaction, i.e. the business agreement, is still singular.
We find nothing in the Specification or in Lockhart that limits the scope of
Lockhart’s order and transaction to the degree argued by the Appellant. As we
found supra, Lockhart may begin the sequence with a single instruction, i.e. order,
for plural recipients. And everything scheduled within a single sequence,
beginning with address selection and ending with completion of scheduling forms,
is a single business agreement, i.e. transaction. Thus, we find that rather than the
Examiner reading more into Lockhart’s mail merge than is there, as the Appellant
argued, the Examiner simply construed the claim limitations with the breadth of
scope as drafted.
Claims 14-21
Independent claims 14, 16, 17 and 21 are similar in claimed subject matter to
claim 1, and the Appellant repeated the arguments made in support of patentability
of claim 1 to each of these claims. The Appellant relied upon these arguments in
support of the patentability of the dependent claims (Br. 11-26). Rather than
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explicitly repeating our findings from claim 1, we simply find that our findings
supra as to the same arguments made by the Appellant in support of claim 1 apply
to these claims as well.
The Appellant has not sustained its burden of showing that the Examiner erred
in rejecting claims 1-10 and 13-21 under 35 U.S.C. § 102(e) as anticipated by
Lockhart.
Claims 11 and 12 rejected under 35 U.S.C. § 103(a) as unpatentable over
Lockhart and Hartman.
Claims 11 and 12 further require a single transaction sequence terminated by
an order icon or by a click of a "card order" button, respectively. The Examiner
applied Hartman for these limitations. The Appellant argues that Hartman’s
clicking to order an identified item is not the same as step [1] of claim 1, that
Lockhart teaches away, and that there is no motivation to combine Lockhart and
Hartman (Br. 27-29).
We disagree with the Appellant’s arguments. Hartman describes displaying
information that identifies an item for sale and displays an indication of an action
(e.g., a single action such as clicking a mouse button) that a purchaser is to perform
to order the identified item (FF 13). This describes or at least suggests a single
transaction sequence terminated by an order icon or by a click of an order button.
Because Hartman is directed to ordering items over the Internet (FF 12), this alone
would provide the motivation to apply the order placement techniques for Internet
shopping taught by Hartman to the Internet card shopping described by Lockhart.
Since we found that Lockhart anticipates claim 1 supra, including step [1], whether
Hartman also describes step [1] is moot. Similarly, since Lockhart anticipates
step [1], it does not teach away from step [1].
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The Appellant has not sustained its burden of showing that the Examiner erred
in rejecting claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Lockhart and Hartman.
CONCLUSIONS OF LAW
The Appellant have not sustained their burden of showing that the Examiner
erred in rejecting claims 1-10 and 13-21 under 35 U.S.C. § 102(e) as anticipated
by Lockhart and have not sustained their burden of showing that the Examiner
erred in rejecting claims 11-12 under 35 U.S.C. § 103(a) as unpatentable over
Lockhart and Hartman.
On this record, the Appellant is not entitled to a patent containing claims 1-21.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 1-10 and 13-21 under 35 U.S.C. § 102(e) as
anticipated by Lockhart is sustained.
• The rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable
over Lockhart and Hartman is sustained.
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).

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JRG
XIN WEN
2800 BRIDGE PARKWAY
REDWOOD CITY, CA 94065
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