Ex Parte Bednarek

Board of Patent Appeals and Interferences

Dec 22, 2008

11139559 (B.P.A.I. Dec. 22, 2008)

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UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL D. BEDNAREK
___________

Appeal 2008-3052
Application 11/139,559
Technology Center 3600
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Decided: December 22, 2008
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Before ANTON W. FETTING, DAVID B. WALKER, and BIBHU R.
MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Michael D. Bednarek (Appellant) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 28-47, 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-IN-PART.

Appeal 2008-3052
Application 11/139,559

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The Appellant invented a way for assisting commerce by combining a
merchant finder with a cellular position indicator (Specification 1: ¶ 0002).
An understanding of the invention can be derived from a reading of exemplary
claims 28 and 42, which are reproduced below [bracketed matter and some
paragraphing added].
28. A wireless connectivity and electronic commerce system, the
system comprising:
[1] a database for storing a plurality of merchant ID's in association
with information indicative of geographic location;
[2] merchant information data associated with each of the merchant
ID's, the merchant information data being accessible by merchants so
that merchants can add, delete or alter information associated with
their merchant ID;
[3] a plurality of digital cellular phones, each of the digital cellular
phones comprising:
a display; audio output and input equipment to allow voice
communication on a digital cellular network,
a user interface for allowing an user to generate digital
messages,
a transmitter and receiver for wireless connectivity so as to
allow a digital message generated on the digital cellular phones
to be transmitted to hardware equipped to receive such
messages;
[4] a position locator system for determining the geographic position
of the digital cellular phones;
[5] a search engine for querying the database to determine the
merchant ID of all participating merchants located near a digital
cellular phone and retrieving merchant information data pertaining to
selected participating merchants and transmitting the information to
the digital cellular phone; and
[6] the user interface comprising a plurality of menu options stored on
the digital cellular phone so as to allow a user to construct a search
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query specifying a type of merchant solely through a combination of a
plurality of menu choices.

42. A computer implemented merchant locator system for allowing
users to identify merchants from among a plurality of merchants by
location and receive information regarding the merchants, the system
further allowing allow merchants to alter or control the content of
information sent to users, the system comprising:
[1] a database for storing a plurality of merchant ID's and merchant
information data addresses in association with information indicative
of geographic location;
[2] wherein the database for storing a plurality of merchant ID's in
association with information indicative of geographic location is
a merchant information database maintained on a common
server by a system operator,
each of the plurality of merchant ID conforming to a standard
and being assigned by the system operator,
the database storing content uniquely associated with a plurality
of different merchants in a consistent format on a single server,
the content including content that can be modified only by the
system operator or the merchant to which the content is
uniquely associated and
the system controlling access to the database such that each of
the plurality of different merchants are allowed to access the
common server to modify content uniquely associated with
their respective merchant ID's, but prevented from modifying
content uniquely associated with others of the plurality of
different merchants.

This appeal arises from the Examiner’s final Rejection, mailed October 24,
2006. The Appellant filed an Appeal Brief in support of the appeal on May 16,
2007. An Examiner’s Answer to the Appeal Brief was mailed on August 13, 2007.
A Reply Brief was filed on September 28, 2007.
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PRIOR ART
The Examiner relies upon the following prior art:
Herdeg DE 4339004 A1 Dec. 8, 1994
Friend US 2001/0032165 A1 Oct. 18, 2001
Taylor US 2002/0167442 A1 Nov. 14, 2002
Tarbouriech US 6,674,993 B1 Jan. 6, 2004
REJECTIONS 3
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Claims 28-30, 32-43, and 45-47 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tarbouriech and Taylor.
Claim 31 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tarbouriech, Taylor and Friend.
Claim 44 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tarbouriech, Taylor and Herdeg.
ISSUES
The issues pertinent to this appeal are
• Whether the Appellant has sustained its burden of showing that the
Examiner erred in rejecting claims 28-30, 32-43, and 45-47 under 35 U.S.C.
§ 103(a) as unpatentable over Tarbouriech and Taylor.
• Whether the Appellant has sustained its burden of showing that the
Examiner erred in rejecting claim 31 under 35 U.S.C. § 103(a) as
unpatentable over Tarbouriech, Taylor and Friend.
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• Whether the Appellant has sustained its burden of showing that the
Examiner erred in rejecting claim 44 under 35 U.S.C. § 103(a) as
unpatentable over Tarbouriech, Taylor and Herdeg.
The pertinent issues turn on whether Tarbouriech and Taylor describe or
suggest using a menu on a cellular phone to construct a search query.
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 Appellant’s Disclosure
01. The Specification discloses that the advantage of using a voice
activated menu system for constructing search queries is that the voice
recognition system need not be as great as with a non-menu system since
the inputs are constrained by the menu prompts (Specification 28:¶
0145).
Tarbouriech
02. Tarbouriech is directed to identifying data locations or uniform
resource locators associated with physical observations in the real world
(Tarbouriech: 2:44-46).
03. The only menu Tarbouriech refers to is a pop up menu for selecting a
list of audio stations (Tarbouriech 10:79-82).
04. Tarbouriech describes entering such search terms as "restaurant,"
"dining," or "museums" and even a geographic radius within which
information is desired. The hand-held computer can then transmit the
observed geographic location together with other user-specified
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information to the server which then retrieves data locations or URLs
corresponding to the observed geographic location and the search terms
entered by the user (Tarbouriech 13:52-64).
05. Tarbouriech passes its search criteria to a database server
(Tarbouriech 5:15-19).
Taylor
06. Taylor is directed to a portable information system using Global
Positioning System (GPS) data as a key to retrieve audio and video from
a database or from broadcast data (Taylor 1: ¶ 0008).
Facts Related To Differences Between The Claimed Subject Matter And The
Prior Art
07. The Examiner refers to Tarbouriech 13:52-64 to show the menu for
entering search terms in the independent claims (Answer 5). However,
although that section discusses entering search terms, there is no mention
or suggestion of a menu for entering those terms.
Facts Related To The Level Of Skill In The Art
08. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent arts of global positioning systems and
database systems. 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 rise to
reversible error ‘where the prior art itself reflects an appropriate level
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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).
09. The Examiner took official notice of the notoriety of the practice in
web page management for a merchant to update his or her own merchant
web page (Answer 8; Final Rejection 6).
Facts Related To Secondary Considerations
10. 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, 1364, (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
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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
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).
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 Co. v. Teleflex Inc., 127 S.Ct. 1727, 1729-30
(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
U.S. at 17. See also KSR, 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.” Id., 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
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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 28-30, 32-43, and 45-47 rejected under 35 U.S.C. § 103(a) as unpatentable
over Tarbouriech and Taylor.
The Examiner found that Tarbouriech described all of the limitations of claim
28 except for use of a GPS system that identifies landmarks or the use of digital
cellular phones. The Examiner found that Taylor described use of a GPS system
that identifies landmarks and took official notice of the notoriety of digital cellular
phones and the equivalence of functionality between such phones and the wireless
devices in Tarbouriech (Answer 4-7).
The Appellants make several arguments, but the most pertinent is that neither
reference describes or suggests using menu options on a digital cellular phone to
construct a search query through the menu choices (Appeal Br. 19:Last full ¶).
We agree with the Appellants. The Examiner found that Tarbouriech 13:52-64
showed the menu for entering search terms in the independent claims (Answer 5).
However, although that section discusses entering search terms, there is no
mention or suggestion of a menu for entering those terms (FF 04). The only menu
described by Tarbouriech is a pop up for selecting a list of audio stations (FF 03).
The Specification discloses a reason for combining such a menu on a digital cell
phone – namely that voice recognition can be used but need not be terribly robust
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because the menu limits the inputs (FF 01). The Examiner’s response is that the
functionality of Tarbouriech’s wireless device is the same as that of a cellular
phone (Answer 16-17). This response does not show that one of ordinary skill
would have incorporated menus for entering search terms.
The Examiner does provide a quote from Taylor about audible menus, but only
in finding that Taylor describes voice communication equipment (Answer 6), and
makes no mention of the menus being for database search queries. Thus, the
Examiner has failed to present a prima facie case of obviousness.
Independent claim 37 and dependent claim 43 each contain a similar limitation
regarding using menu options on a digital cellular phone to construct a search
query through the menu choices. Thus the Examiner has similarly failed to present
a prima facie case of obviousness for these claims and dependent claims 29, 30,
32-36, 38-41, and 45-47 that depend from claims 28, 37 and 43.
With respect to claim 42, however, we must agree with the Examiner.
Independent claim 42 does not have the limitation regarding menus and search
queries. Essentially, claim 42 contains the limitations of claim 29 without the
limitations of claim 28 from which claim 29 depends. Claim 44 is a system
allowing merchants to alter or control web content and requires a database for
merchant information on a common server maintained by a system operator and
conforming to a standard, and in which merchants may maintain their and only
their data.
As regards claim 42, the Examiner stated that the relevant findings were made
of record in the lower numbered claim rejections (Answer 12). The Appellants
argue this is insufficient because the Examiner failed to provide any analysis of
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why the elements should be combined as in claim 42 (Appeal Br. 28). We disagree
with the Appellants.
In claim 29, which contains the same limitations as claim 42, the Examiner
found that Tarbouriech 13:52-64 described the limitations of a database on a single
server maintained by a system operator (Answer 8-9). Tarbouriech does indeed
describe a search query passed to the server in that passage (FF 05) and that server
is a database server (FF 05). The Examiner found that this single server implied a
common system operator for such a server and a common set of standards because
of the commonality of the database (Answer 23). The Examiner took official
notice of the notoriety of the practice in web page management for a merchant to
update his or her own merchant web page (FF 09). This notice was taken in the
Final Rejection and was not traversed in the Appeal Brief. In the Reply Brief, the
Appellants argue that even if true, it would not suggest the common server (Reply
Br. 18). But as we found, Tarbouriech described the common server (FF 05). As
to why the elements should be combined as in claim 42, the Examiner found in
claim 29 that those same elements were combined to facilitate better
communication with customers (Answer 9).
The Appellant has sustained its burden of showing that the Examiner erred in
rejecting claims 28-30, 32-41, 43, and 45-47, but not as to claim 42, under 35
U.S.C. § 103(a) as unpatentable over Tarbouriech and Taylor.
Claim 31 rejected under 35 U.S.C. § 103(a) as unpatentable over Tarbouriech,
Taylor and Friend.
Claim 31 depends from claim 28 for which the Appellants sustained their
burden supra. The Examiner made no findings for which Friend made up for the
deficiencies of Tarbouriech and Taylor.
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The Appellant has sustained its burden of showing that the Examiner erred in
rejecting claim 31 under 35 U.S.C. § 103(a) as unpatentable over Tarbouriech,
Taylor and Friend.
Claim 44 rejected under 35 U.S.C. § 103(a) as unpatentable over Tarbouriech,
Taylor and Herdeg.
Claim 44 depends from claim 43 for which the Appellants sustained their
burden supra. The Examiner made no findings for which Herdeg made up for the
deficiencies of Tarbouriech and Taylor.
The Appellant has sustained its burden of showing that the Examiner erred in
rejecting claim 44 under 35 U.S.C. § 103(a) as unpatentable over Tarbouriech,
Taylor and Herdeg.
CONCLUSIONS OF LAW
The Appellant has sustained its burden of showing that the Examiner erred in
rejecting claims 28-41 and 43-47, but has not as to claim 42, under
35 U.S.C. § 103(a) as unpatentable over the prior art.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 28-30, 32-41, 43, and 45-47 under 35 U.S.C.
§ 103(a) as unpatentable over Tarbouriech and Taylor is not sustained.
• The rejection of claim 42 under 35 U.S.C. § 103(a) as unpatentable over
Tarbouriech and Taylor is sustained.
• The rejection of claim 31 under 35 U.S.C. § 103(a) as unpatentable over
Tarbouriech, Taylor and Friend is not sustained.
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• The rejection of claim 44 under 35 U.S.C. § 103(a) as unpatentable over
Tarbouriech, Taylor and Herdeg is not 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).

AFFIRMED-IN-PART 6
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JRG

MICHAEL D. BEDNAREK
6311 Berkshire Drive
Bethesda, MD 20814

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