Ex Parte Bodin

Board of Patent Appeals and Interferences

Feb 4, 2009

09961943 (B.P.A.I. Feb. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILLIAM KRESS BODIN
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Appeal 2008-4559
Application 09/961,943
Technology Center 3600
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Decided:1 February 5, 2009
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Before, MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-4559
Application 09/961,943

The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-20.2 We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to a system and method
of establishing a data store of a virtually “bookmarked experience” with real,
physical “points of interests” such as products or services on display in a
retail space (Specification, [0020]). Claim 1, reproduced below, is
representative of the subject matter of appeal.
Claim 1:
A method for providing location based services to create bookmarks
to physical points of interest, comprising:
detecting a consumer presence at a physical location using a presence
detector associated with said physical location;

2 The Appellants have also argued the Examiner erred in: 1) re-
opening prosecution of the application (Br. 6-8) and 2) failing to fully
support the rejection under 37 CFR 1.104(c) (2) by failing to designate the
parts relied upon in the reference (Br. 8). Both of these issues raised by the
Appellants are not reviewable in this Appeal since they do not involve the
merits of the claims (See MPEP 706.01 which lists appropriate subject
matter for an Appeal).

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Application 09/961,943
determining a physical location and identity of a consumer from a
consumer identifier;
prior to receiving a selection from said consumer, determining a set of
points of interest in the physical vicinity of said consumer;
pushing to a consumer pervasive device said set of points of interest in
the physical vicinity of said consumer;
receiving at least one selection by said consumer from said pushed set
of points of interest; and
storing on a server said at least one received selection to create a point
of interest bookmark associated with said consumer and having an
indicator of said physical location, a description of said point of
interest and zero, one or more information attachments containing
information about said point of interest; and
creating a bookmark for points of interest selected from said list, said
bookmark providing a user-selectable link to said stored information
items on said bookmark server for later access by said consumer using
a networked computing device.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Obradovich US 6,542,812 B1 Apr. 1, 2003
Bates US 6,961,751 B1 Nov. 1, 2005
Minenko US 7,010,748 B1 Mar. 7, 2006

The following rejections are before us for review:
1. Claims 1-2, 6, 8-10, 14, and 16-20 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Minenko.
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Application 09/961,943

2. Claims 3-4 and 11-12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Minenko and Obradovich.
3. Claims 5, 7, 13, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Minenko and Bates.

THE ISSUE
The issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
This issue turns on whether Minenko discloses that a “bookmark for a
point of interest” is created after “receiving at least one selection” from the
consumer.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence3:
FF1. Minenko discloses that the computer 201 ascertains its location
on the basis of a GPS system. On the basis on its location, a selection is
made from a multiplicity of bookmarks stored on a local basis (Col. 4:13-
33).
FF2. Minenko discloses that the bookmarks 203 are pre-stored (Figs.
2-3).

3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 09/961,943
FF3. Minenko does not disclose that the bookmarks are created after
a user selection.
FF4. The Examiner has not asserted that Obradowich discloses
creating a bookmark after a user selection (Ans. 5-6).
FF5. The Examiner has not asserted that Bates discloses creating a
bookmark after a user selection. (Ans. 6-7).

PRINCIPLES OF LAW
Principles of Law Relating to 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). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the Specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented 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 to which said
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subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
The Appellants argue that the rejection of claims 1, 9, and 17 under 35
U.S.C. § 102(b) as being anticipated by Minenko is improper because the
step of “creating a bookmark” refers to “points of interest selected from said
list” which is necessarily subsequent to the step of “storing on a server”.
The Appellants argue that Minenko discloses the storing of bookmarks on
the server prior to receiving a selection from the user which is in reverse
chronological order to the claimed steps.
The Examiner has determined that Minenko teaches the claimed
elements (Ans. 4-5). The Examiner states that Minenko teaches the claimed
elements without using identical words (Ans. 8).
We agree with the Appellants. The Examiners rejection of claims 1,
9, and 17 under 35 U.S.C. § 102(b) as being anticipated by Minenko is
lacking in both procedure and substance. In listing the rejection of claims 1,
9, and 17 at pages 4-5 of the Answer the Examiner has apparently copied the
elements of the claim directly into the rejection with no explanation
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whatsoever of how the elements of the Minenko reference apply to the
claimed limitations. In the “Response to Argument” section of the Answer
the Examiner adds no further explanation of how the specific elements of
Minenko are being applied to the claim limitations in the rejection. Further,
a substantive examination of the Minenko reference shows it to be missing
limitations that appear in claims 1, 9, and 17.
Specifically, Claim 1 requires “storing on a server said at least one
received selection to create a point of interest bookmark”. This limitation
requires that a “bookmark for a point of interest” be created after “receiving
at least one selection”. In the Minenko reference the bookmarks are created
before any customer selection (FF3). As noted by the Appellants (Br. 11)
the Minenko reference creates the bookmarks in a reverse chronological
relationship to that of the claimed invention and therefore does not anticipate
the claim.
For the above reasons the rejection of claim 1 under 35 U.S.C. §
102(b) as being anticipated by Minenko is not sustained. Claims 9 and 17
contain limitations similar to those identified in claim 1 as described above
and the rejection of these claims is not sustained for these same reasons.
The rejection of dependent claims 2, 6, 8, 10, 14, and 16, 18-20 is not
sustained for the same reasons as above for independent claims 1, 9, and 17.
The Examiner has not asserted that the Obradovich reference
discloses creating a bookmark after a customer selection (FF4). As the
Obradovich reference fails to cure the deficiency in the base rejection for the
reasons given above, the rejection of claims 3-4 and 11-12 under 35 U.S.C.
§ 103(a) as unpatentable over Minenko and Obradovich is not sustained.
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The Examiner has not asserted that the Bates reference discloses
creating a bookmark after a customer selection (FF5). As the Base reference
fails to cure the deficiency in the base rejection for the reasons given above,
the rejection of claims 5, 7, 13 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Minenko and Bates is not sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-2, 6, 8-10, 14 and 16-20 under 35 U.S.C. § 102(b) as
being anticipated by Minenko.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 3-4 and 11-12 under 35 U.S.C. § 103(a) as unpatentable
over Minenko and Obradovich.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 5, 7, 13 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Minenko and Bates.

DECISON
The Examiner’s rejection of claims 1-20 is not sustained.

REVERSED

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Appeal 2008-4559
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LV

Robert H. Frantz
P.O. Box 23324
Oklahoma City, OK 73123-2334
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