Ex Parte Borenstein et al

Board of Patent Appeals and Interferences

Sep 15, 2010

10741016 (B.P.A.I. Sep. 15, 2010)

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.
10/741,016 12/19/2003 Howard Borenstein CA920030025US1 3450
58139 7590 09/15/2010
IBM CORP. (WSM)
c/o WINSTEAD SECHREST & MINICK P.C.
P.O. BOX 50784
DALLAS, TX 75201
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
09/15/2010 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 HOWARD BORENSTEIN, VICTOR S. CHAN,
LEV MIRLAS and GLEN SHORTLIFFE
____________

Appeal 2009-013168
Application 10/741,016
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL1

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 2009-013168
Application 10/741,016

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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-18 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is directed to a method for the
hosting of on-line electronic stores using hosting contracts (Spec. 1:10-11).
Claim 1, reproduced below with the numbering in brackets added, is
representative of the subject matter of appeal.

1. A method for hosting an electronic commerce system
comprising the steps of:
executing a hosting contract between a service provider and a
reseller, the hosting contract specifying terms and conditions of the
relationship between the service provider and the reseller;
[1] deploying the hosting contract to create an electronic
hosting store accessible by a customer through a network;
[2] creating a default contract between the customer and the
reseller through the electronic hosting store;
[3] determining if the default contract complies with the hosting
contract terms and conditions;
[4] choosing a selectable contract state upon determination of
compliance between the default contract with the hosting contract
terms and conditions; and
[5] permitting editing of the terms and conditions to facilitate
changing the contract state.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Kark US 2002/0107761 A1 Aug. 8, 2002
Conant US 2002/0129056 A1 Sep. 12, 2002

The following rejections are before us for review:
1. Claims 1-18 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicants regard as the
invention.
2. Claims 1-18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kark, Conant, and Official Notice.

THE ISSUES
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
With regards to the rejection of claims 1-18 made under 35 U.S.C.
§ 112, second paragraph, this issue turns on whether those skilled in the art
would understand what is being claimed when the claim is read in light of
the specification.
With regards to the rejection of claims 1-18 made under 35 U.S.C.
§ 103(a), this issue turns on whether the prior art discloses the claim
limitations which have been argued for by the Appellants for each respective
claim and if the combination of references would have been obvious.

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FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. The Appellants’ Abstract and Specification, on page 6, lines 7-8, states,
“the hosting contract having a selectable contract state.”
FF2. The Appellant’s Specification on page 13, lines 7-8, states, “If a store’s
storepath references another store, then the latter store may be referred to as
a ‘profile store’ for the former store.”
FF3. Kark discloses methods and systems for improved channel sales
support in electronic commerce (Title).
FF4. Kark at [0016] discloses that resellers may see custom pricing based on
their contracts with the manufacturer or distributor.
FF5. Kark at [0019] discloses that content portals sell “storefronts” and can
allow individual businesses to set up their catalogs and sell online. The
“portal” is an Internet site designed to attract users based upon the particular
content available through that site.
FF6. Kark at paragraphs [0047] discloses that the levels of catalogs are
created as copies of the catalog from the level above.
FF7. Kark in paragraphs [0055-0058] discloses presentation, marketing, and
pricing strategies.
FF8. Conant has disclosed a method for electronic negotiation of document
content (Title).

2 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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FF9. Conant in paragraph [0004] discloses that many institutions maintain
one or more standard contracts that include blank fields for into which
information must be entered to create a document to address a particular
transaction between parties.
FF10. Conant in paragraph [0002] discloses the preparing, negotiating, and
editing of a draft contract in order to attain a final contract.
FF11. Conant in paragraph [0006] discloses a method for electronically
negotiating and editing a contract by multiple parties.

ANALYSIS
Rejections under 35 U.S.C. § 112, Second Paragraph
The Appellants argue that the rejection of claims 1-18 under 35
U.S.C. § 112, second paragraph, is improper (Br. 4-7). Specifically with
regard to claims 1 and 14, the Appellants argue that the claims failure to
respond to the situation of when the default contract terms fail to comply
with the hosting contract terms and conditions does not provide a basis for
rejection because there is no requirement to include every possible scenario
in a claim limitation (Br. 5). With regard to claims 1 and 14, the Appellants
also argue the metes and bounds of the patent protection in relation to
“choosing a selectable contract state” have been set forth (Br. 5-6).
Regarding claim 3, Appellants argue the phrase “the electronic store” refers
to the “electronic hosting store” previously recited in claim 1 (Br. 7).
Regarding claim 14, Appellants argue “‘the electronic store’ in step (a)
corresponds to ‘the electronic hosting store’” in step (b) (Br. 7).
In contrast, the Examiner has determined that the rejections of claims
1-8 under 35 U.S.C. § 112, second paragraph, are proper (Ans. 3, 11-13).
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We agree with the Appellants. The test for definiteness under 35
U.S.C. § 112, second paragraph, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). With regards to claims 1
and 14, the Appellants are allowed to claim the invention broadly and the
claims failure “to respond to a situation of when the default contract terms
fail to comply with the contract terms and conditions” as asserted by the
Examiner (Ans. 3) does not make the claim unclear as one of ordinary skill
in the art would understand what is being claimed. With regards to claims 1
and 14 one of ordinary skill in the art would also understand that the claim
limitation drawn to “choosing a selectable contract state” refers to the
hosting contract (See FF1) or some other contract when read in light of the
specification. With regards to claims 3 and 14 we understand the
Examiner’s position but have determined that one of ordinary skill in the art
would understand that “the electronic hosting store” and “the electronic
store” are the same in light of the Specification and that one could
understand what is being claimed. For these reasons, the rejection of claims
1-18 under 35 U.S.C. § 112, second paragraph, is not sustained.

Rejections under 35 U.S.C. § 103(a)
Claims 1-2, 9-15, and 18
The Appellants argue that the rejection of claim 1 is improper because
Kark fails to disclose claim limitation [1] (Br. 8-9). The Appellants also
argue that Kark and Conant fail to disclose claim limitations [2], [4], and [5]
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(9-10). Appellants further argue that the Examiner has not presented a prima
facie case of obviousness for modifying Kark with Conant (Br. 18-21).
In contrast, the Examiner has determined that Kark, Conant, and the
Official Notice taken disclose the argued claim limitations and the
combination of the references to meet the cited claimed limitations would
have been obvious (Ans. 4-6, 13-17, and 21-22).
We agree with the Examiner. Claim limitation [1] requires:
[1] deploying the hosting contract to create an electronic hosting store
accessible by a customer through a network. (Claim 1).

Kark has disclosed that content portals sell “storefronts” and can allow
individual businesses to set up their catalogs online (FF5). Since Kark has
disclosed sell[ing] these storefronts, then some contract, express or implied,
must exist with the individual business setting up the catalogs online which
serves as the “hosting contract” creating “an electronic hosting store” that is
“accessible by a customer through a network” as claimed, thus meeting the
cited claim limitation [1].
Conant has disclosed the use of standard contracts to address a
particular transaction between parties (FF9) which serves as “default
contract” meeting elements of cited claim limitation [2]. Conant also has
disclosed preparing, negotiating, and editing of a draft contract in order to
attain a final contract (FF10) meeting the requirements of claim limitation
[5]. Further, the Examiner took Official Notice that it is well known that
contracts between a reseller and consumer must be in accordance with the
contract that was established between the reseller and service provider (Ans.
10). The Appellants have not made a traversal of this taking of Official
Notice.
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Here, the modification of Kark’s electronic hosting system store
network to include using a default contract which is editable as taught by
Conant and to further include selecting a contract that complied with the
contract terms between the parties as known in the art is considered an
obvious, predictable combination of known elements for the advantage of
having a system with readily accessible contracts which could be monitored
for compliance between the parties. For these reasons the rejection of claim
1 is sustained. The Appellants have provided the same arguments for claims
2, 9-15, and 18 and the rejection of these claims is sustained for these same
reasons.

Claim 3
Regarding claim 3, Appellants argue that Kark fails to teach: the terms
and conditions of the hosting contract include at least one profile store, the
profile store including commerce asset information for the electronic store,
and path information defining a sequential relationship between the
electronic store and the at least one profile store for retrieving the commerce
asset information (Br. 15-16).
In contrast, the Examiner has determined that Kark discloses the
argued claim limitations for claim 3 (Ans. 17-18).
We agree with the Examiner. Kark has disclosed that the content
portals sell storefronts and can allow individual businesses to set up their
catalogs online (FF4) providing the claimed “hosting contract” and “profile
store” (storefront). As a storefront, the profile store would include items for
sale or display which would serve as “commerce asset information”. Kark
has also disclosed that the lower levels of catalogs are created as copies of
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the catalog from the level above (FF5) meeting the requirements for path
information and sequential relationship. For these reasons, the rejection of
claim 3 is sustained.

Claims 4-8 and 16-17
The Appellants argue that the rejection of claims 4-8 and 16-17 is
improper. Specifically, the Appellants argue that the Examiner’s use of
Official Notice was improper (Br. 17) and that the claims do not contain
non-functional descriptive subject matter” (Br. 18).
In contrast, the Examiner has determined that the rejection of the cited
limitations for claims 4-8 and 16-17 is proper (Ans. 18-20).
We agree with the Examiner. The PTO need not give patentable
weight to descriptive material absent a new and unobvious functional
relationship between the descriptive material and the substrate. See In re
Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983). See also In re Ngai, 367 F.3d
1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir.
1994). Claims 4-8 and 16-17 are drawn to and all include limitations drawn
to “information” which in this case relates essentially to data of some kind.
Thus, we find that each of these rejected claims is directed to essentially data
and that the claimed limitations are drawn to non-functional descriptive
material as asserted by the Examiner (Ans. 20). Regardless, even if the cited
limitations for claims 4-8 and 16-17 were not considered non-functional
descriptive material, information such as inventory, pricing, and tax
collection information would appear to be common business terms known in
the art. Note also that Kark discloses the use of pricing and marketing
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information (FF7) as claimed. For these reasons, the rejection of claims 4-8
and 16-17 is sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-18 under 35 U.S.C. § 112, second paragraph.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-18 under 35 U.S.C. § 103(a) as being unpatentable over
Kark, Conant, and Official Notice.

DECISION
The Examiner’s rejection of claims 1-18 is sustained.

AFFIRMED

MP

IBM CORP. (WSM)
c/o WINSTEAD SECHREST & MINICK P.C.
P.O. BOX 50784
DALLAS TX 75201