11868594 - (R) (P.T.A.B. Aug. 13, 2014)

Ex Parte Bayne

Patent Trials and Appeals BoardAug 13, 2014

11868594 - (R) (P.T.A.B. Aug. 13, 2014)

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. 11/868,594 10/08/2007 Anthony Jeremiah Bayne RIN594 1391 64359 7590 08/14/2014 ANTHONY JEREMIAH BAYNE 25315 ANDREO AVENUE LOMITA, CA 90717 EXAMINER HOAR, COLLEEN A ART UNIT PAPER NUMBER 3621 MAIL DATE DELIVERY MODE 08/14/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANTHONY JEREMIAH BAYNE ____________ Appeal 2012-006474 Application 11/868,594 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and MEREDITH C. PETRAVICK, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Anthony Jeremiah Bayne (“Appellant”) filed a Request for Rehearing (“Req.”) under 37 C.F.R. § 41.52 on August 7, 2014 of the Decision on Appeal (“Dec.”), mailed Jun 13, 2014. In accordance with 37 C.F.R. § 41.52(a)(1), the Request includes certain points, in particular, that the Appellant believes the Board misapprehended or overlooked in reaching its Decision. In the Decision on Appeal, the Board sustained the rejection of claims 10–16 under 35 U.S.C. § 102(e) as being anticipated by Bryar. The Request seeks reconsideration of the Board’s treatment of independent method claim 10, and specifically how it addressed the second recited determining step and the recommending step. Req. 6–7. The Request does Appeal 2012-006474 Application 11/868,594 2 not seek reconsideration of the Board's entry of a new ground of rejection on claims 17–20 under 35 U.S.C. § 112, second paragraph. DISCUSSION Claim 10 is reproduced below. 10. A computer implemented method of recommending a part of an item in a digital format to an online customer, comprising: identifying an item selected by an online customer for purchase, determining if the item selected is to be delivered via the internet; determining if a part of the item is available for delivery via the internet, when the item is not to be delivered via the internet; and recommending to the online customer that the online customer pay to access a part of the item selected on a website, when the item selected is not to be delivered via the internet, and a part of the item is available for delivery via the internet. In the Decision we stated: [W]e turn to the second recited determining step and the recommending step. These steps, as employed in claim 10, are conditional. The second recited determining step is conditioned upon a previous determination that the item will not be delivered via the internet. The second recited determining step is conditioned upon: 1) the previous determination that the item will not be delivered via the internet and 2) a previous determination that a part of the item is available for delivery via the internet. During examination, claims are given their broadest reasonable interpretation. See In re Am. Acad. Of Sci. Tech. Ctr., 368 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable scenario, these conditional steps would not be invoked and, therefore, it is not necessary for the prior art to describe these limitations in order to anticipate claim 10. In other words, the broadest reasonable interpretation of the Appeal 2012-006474 Application 11/868,594 3 method of claim 10 encompasses a method where the item is determined to be deliverable via the internet in the first determining step. In which case, the second recited determining step and the recommending step are not invoked. This is consistent with the Specification which describes such a method in paragraph 23. Therefore, because Bryar describes the claimed method when it is determined that the item will be delivered via the internet, Bryar anticipates claim 10. Decision 5. Appellant argues that the Board erred in finding the steps at issue (i.e., the second determining and the recommending step) do not have to be described by Bryar merely because they are conditional. Req. 6. Appellant, further, argues that the Board should reverse the rejection of claim 10 under 35 U.S.C. § 102(e) because Bryar does not describe the limitations at issue. Req. 6–7. We disagree. We did not “ignore” the limitations at issue. As discussed in our Decision, we determined that we did not need to reach these limitations because claim 10 is worded in such a way that the claim covers a method where the second determining and recommending steps are not performed. Dec. 5. As we stated in the Decision, this is so because the second determining step and recommending step are couched in conditional language. See id. This is evident from a plain reading of the claim. If it is determined that the item will not be delivered via the internet in the first determining step, the steps at issue are not performed. Given that the steps at issue are conditional, it follows that it was not necessary to reach claim 10’s second determining step and recommending step in reviewing the anticipation rejection of claim 10 over Bryar. Conditional steps employed in Appeal 2012-006474 Application 11/868,594 4 a method claim need not be found in the prior art if, under the broadest reasonable construction, the method need not invoke the steps. See Ex parte Katz, 2010-006083, 2011 WL 514314, at *4 (BPAI 2011) (non-precedential) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). See also Cybersettle, Inc. v. Nat'l Arbitration Forum, Inc., 243 Fed.Appx. 603, 607 (Fed. Cir. 2007) (unpublished) (“[i]t is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed”). CONCLUSION We have considered, carefully, the argument that Appellant has set forth in the Request but, for the foregoing reasons, we do not find it persuasive as to our affirmance of the rejection of claims 10–16 under 35 U.S.C. § 102(e) as being anticipated by Bryar. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). DENIED mls