Ex Parte Brown et al

Patent Trial and Appeal Board

May 9, 2016

12982776 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/982,776 12/30/2010
46320 7590 05/11/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Kevin C. Brown
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RSW920100129US1 (675) 9032
EXAMINER
TIJNG, ALLEN J
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
05/11/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN C. BROWN, JAMES BILLINGHAM,
DAVID C. CONWAY-JONES, ROBERTS. SMART, and
GRAHAM WHITE
Appeal2014-002273 1
Application 12/982,7762
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
June 18, 2013), the Examiner's Answer ("Ans.," mailed Sept. 23, 2013), the
Final Action ("Final Act.," mailed Jan. 18, 2013), and the Specification
("Spec.," filed Dec. 30, 2010).
2 According to the Appellants, the real party in interest is International
Business Machines Corporation. Appeal Br. 2.
Appeal2014-002273
Application 12/982,776
STATEMENT OF THE CASE
The Appellants' invention is directed to "shipping and delivery
management in an e-commerce computing system." Spec. ,-r 1.
Claims 1, 6, and 11 are the independent claims on appeal. Claim 1 is
exemplary of the subject matter on appeal and is reproduced below:
1. A package delivery optimization method comprising:
receiving an order to purchase a product in an e-commerce
computing application executing in memory of a host server of a
retailer from a purchaser accessing the e-commerce computing
application over a computer communications network;
retrieving by the e-commerce computing application a list
of social networking contacts for the purchaser;
determining by the e-commerce computing application
whether or not a contact amongst the social networking contacts
also has ordered a product from the e-commerce computing
application; and,
rendering by the e-commerce computing application a
prompt in the e-commerce computing application to the
purchaser to consolidate shipment of the product ordered by the
purchaser with a product ordered by the contact in response to
determining that the contact also has ordered a product from the
e-commerce computing application not yet shipped to the
contact.
Appeal Br. 13, Claims App.
REJECTIONS
Claims 1, 6, and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Webb (US 2012/0036028 Al, pub. Feb. 9, 2012) and
Chande (US 2007/0133876 Al, pub. June 14, 2007). Ans. 3.
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Appeal2014-002273
Application 12/982,776
Claims 2--4, 7-9, and 12-14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Webb, Chande, and Quine
(US 2010/0049536 Al, pub. Feb. 25, 2010). Ans. 3.
Claims 5, 10, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Webb, Chande, and Fasihuddin (US 2010/0241652 Al,
pub. Sept. 23, 2010). Ans. 3.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 3
ANALYSIS
The Appellants argue independent claims 1, 6, and 11 as a group. See
Appeal Br. 5. We select claim 1 as representative. Claims 6 and 11, which
recite substantially similar limitations to claim 1, stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
The Appellants contend the Examiner's rejection of claim 1 is in error
because the "Examiner has failed to locate all claimed teachings in the
combination of cited references." Appeal Br. 5, 6, 11. We have reviewed
the Appellants' contention and arguments in the Appeal Brief and disagree
for the reasons below.
The Examiner finds that Webb discloses the limitations of claim 1
except for the e-commerce computing application executing in a memory of
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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Appeal2014-002273
Application 12/982,776
a host server of a retailer, for which the Examiner relies on Chande. Final
Act. 4--5.
We find unpersuasive the Appellants' argument that the "invitee" of
Webb is not equivalent to the claimed "contact" because "the [claimed]
'contact' is not invited by the purchaser, but rather determined by the
e-commerce computing application using the purchaser's social networking
contacts." Appeal Br. 9. The Specification does not provide a specific
definition of what or who constitutes a "contact." The Examiner finds that
the invitees of Webb meet the claimed contacts because the invitees "are not
random invitees", but are other individuals in a social network site, such as
friends in FACEBOOK®. Ans. 4; see also Final Act. 5, citing Webb i-fi-121,
24, and Fig 4G.
The Appellants do not argue that this finding is unreasonable, but
rather that the contact of Webb is not determined by the application.
However, the claim does not require that the application "determines
contacts using the purchaser's social networking contacts" but, rather, the
claim recites "retrieving by the [] application a list of social networking
contacts for the purchaser" and "determining by the[] application whether or
not a contact amongst the social networking contacts also has ordered a
product from the [] application." Appeal Br. 13, Claims App. The
Examiner finds that Webb discloses retrieving a list of contacts such as
friends and coworkers from social networking sites such as F ACEBOOK®.
Final Act. 5, citing Webb i-fi-121, 24; see also Ans. 4. The Examiner further
finds that Webb discloses determining whether or not a contact also ordered
a product in that Webb discloses that contacts who accept the invitation are
sent a follow-up communication, and those who decline or ignore the
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Appeal2014-002273
Application 12/982,776
invitation are dropped from the order. Final Act. 5. The Appellants do not
provide adequate evidence how Webb's retrieving and determination do not
meet the claimed retrieving and determination.
We also find unpersuasive the Appellants' argument that Webb does
not disclose prompting the purchaser to consolidate shipment because Webb
provides that the invitees, and not the purchaser as claimed, are prompted.
Appeal Br. 9-10. The Examiner finds that Webb discloses prompting the
organizer, i.e., purchaser, in that the organizer, upon being sent selections
made by each individual, finalizes and sends the order as a single,
consolidated order. Final Act. 5, citing Webb i-f 25 and Figure 2, items 218,
220; see also Ans. 5. The Appellants do not provide adequate evidence why
Webb's prompt to the organizer to finalize and send the individual orders as
one consolidated order does not meet the claimed prompting.
We further find unpersuasive the Appellants' argument that because
in Webb, the organizer has knowledge of others' orders, Webb does not
disclose the requirement that "the 'contact' order[ s] a product from the
e-commerce computing application independently from the order made by
the 'purchaser'. In other words, the 'contact' and the 'purchaser' do not
have knowledge about each other's orders." Appeal Br. 10. This argument
is not commensurate with the scope of the claim; claim 1 does not require
any limitation that the contact orders a product independently from the order
made by the purchaser or that the parties can have no knowledge of other
orders. See Ans. 5---6.
Similarly, we find unpersuasive the Appellants' argument that Webb
does not disclose the limitations because Webb requires the product order of
the contact to be the same type of product ordered by the purchaser, and
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Appeal2014-002273
Application 12/982,776
claim 1 does not require the product be of the same type. Appeal Br. 10.
The claim does not require that the products must be of different types; the
Examiner's finding that Webb's product orders meet the claim is reasonable
and supported by a preponderance of the evidence.
We also find unpersuasive the Appellants' argument that Webb does
not disclose the method of claim 1 because "Appellants' claimed invention
is conceptually different from the Webb's invention" in that claim 1 recites a
method whereby the application of a retailer, as opposed to Webb's
organizer, retrieves a list, determines whether a contact has ordered, and
renders a prompt. See Appeal Br. 10. The Appellants' argument is against
Webb individually whereas the Examiner relies on the combination of Webb
and Chande to disclose the method of claim 1. Final Act. 4--6. In particular,
the Examiner relies on Chande to disclose that the application executes in a
host server of a retailer. See id. at 5---6. The test for obviousness is not what
any one reference would have suggested, but rather what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). "[O]ne cannot
show non-obviousness by attacking references individually were, as here,
the rejections are based on combinations of the references." Id. (citation
omitted). Furthermore, Appellants do not provide sufficient evidence to
rebut the Examiner's finding that Chande teaches the application executing
in a host server of a retailer. See Final Act. 5-6.
Thus, based on the foregoing reasons, the Examiner's rejection of
claim 1 is sustained. The Examiner's rejection of claims 6 and 11 is also
sustained as they fall with claim 1. The Appellants argue the rejections of
dependent claims 2-5, 7-10, and 12-15 "stand or fall together with" the
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independent claims 1, 6, and 11. Appeal Br. 11-12. Thus, the rejections of
dependent claims 2-5, 7-10, and 12-15 are also sustained.
DECISION
The Examiner's rejections of claims 1-15 under 35 U.S.C. § 103(a)
are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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