Ex Parte Call

Board of Patent Appeals and Interferences

Aug 26, 2010

11247800 (B.P.A.I. Aug. 26, 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.
11/247,800 10/11/2005 Charles G. Call E-28 7908
21253 7590 08/26/2010
Charles G. Call
361 Wild Coffee Ln
Marco Island, FL 34145-1849
EXAMINER
MYINT, DENNIS Y
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
08/26/2010 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 CHARLES G. CALL
__________

Appeal 2009-008728
Application 11/247,800
Technology Center 2100
__________

Before JOHN A. JEFFERY, CAROLYN D. THOMAS, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-40. We have jurisdiction under 35 U.S.C.
§ 6(b).

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.
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The Invention
The disclosed invention relates generally to transferring requests for
product information on the Internet (Spec. 2).
Independent claim 1 is illustrative:
1. A method for transferring product description data via
the Internet from a plurality of product description data storage
facilities operated on behalf of manufacturers to a plurality of data
utilization facilities operated on behalf of retailers comprising, in
combination:
employing each of said product description data storage
facilities to store information describing a plurality of products
designated by universal product codes,
employing a registration database to accept and store
registration data submitted on behalf of each of said manufacturers,
said registration data specifying the Internet address to which a
request message may be transmitted to obtain a structured data record
containing information about a product designated by a particular
universal product code value,
transmitting an address lookup request to said registration
database from a requesting one of said data utilization facilities
operated on behalf of a requesting retailer, said address lookup request
containing a specified universal product code,
employing said registration database to respond to said address
lookup request to identify a destination Internet address to which a
data request message may be transmitted to obtain a structured data
record containing information about the product designated by said
specified universal product code,
transmitting a product data request message to said destination
Internet address identified by said registration database in response to
said address lookup request,
receiving said product data request message at the product data
storage facility specified by said destination Internet address,
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responding to said product data request message by transmitting
a structured data record from said product data storage facility
specified by said destination Internet address to said requesting one of
said data utilization facilities, said structured data record containing
information about said product designated by said specified universal
product code and having a format that conforms to standards
promulgated by an industry or inter-industry group to promote
consistent formats for product descriptions, and
transferring all or part of said information about said product
designated by said specified universal product code into an inventory
database utilized by said requesting retailer.

The References
The Examiner relies upon the following references as evidence in
support of the rejections:
Grundy US 5,375,240 Dec. 20, 1994
Johnson US 5,712,989 Jan. 27, 1998
Perkowski US 2002/0004753 A1 Jan. 10, 2002
Gregory US 6,490,567 B1 Dec. 3, 2002
Dietterich US 6,647,393 B1 Nov. 11, 2003

The Rejections
1. The Examiner rejects claims 1-5, 7-11, 13-16, 19-21, and 23-40 under
35 U.S.C. § 103(a) as being unpatentable over Perkowski and
Johnson.
2. The Examiner rejects claims 6 and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Perkowski, Johnson, and Gregory.
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3. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Perkowski, Johnson, and Dietterich.
4. The Examiner rejects claims 17 and 18 under 35 U.S.C. § 103(a) as
being unpatentable over Perkowski, Johnson, and Grundy.

Grouping of Claims
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii).

CONTENTIONS
1) With regard to claims 1-40, Appellant argues that “[t]here
appears to be no way to modify Perkowski’s IPD lookup mechanism in view
of Johnson to achieve a useful result” (App. Br. 11) and “there is no reason
or motivation for attempting such a modification” (App. Br. 12).
2) With regard to claims 1-25 and 27-36, Appellant argues that
“the UPN number relied upon by the Examiner is plainly not a ‘structured
data record’ of the type claimed” (App. Br. 14) and that Perkowski fails to
disclose or suggest “delivering structured data records that are formatted in
accordance with an industry standard and that are delivered to the retailer’s
inventory database from the manufacturer’s product data storage facilities”
(App. Br. 15).
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3) With regard to claims 7-9, 24 and 25, Appellant argues that
“Perkowski fails to disclose the use of a registration database that returns an
IP address (instead of a URL)” (App. Br. 17).
4) With regard to claims 13 and 39, Appellant argues that
“Perkowski’s IPD lookup mechanism does not employ the Internet Domain
Name Service to deliver the destination Internet address to which a product
data request should be sent” (App. Br. 18).

ISSUES
Therefore, the issues before us are:
1. Did the Examiner err in finding that it would have been obvious
to one of ordinary skill in the art to have combined the Perkowski and
Johnson references?
2. Did the Examiner err in finding that Perkowski discloses or
suggests transmitting a structured data record that has a format that conforms
to standards promulgated by an industry or inter-industry group to promote
consistent formats for product descriptions?
3. Did the Examiner err in finding that Perkowski discloses or
suggests a destination Internet address as an Internet Protocol (IP) address?
4. Did the Examiner err in finding that Perkowski discloses or
suggests employing an Internet Domain Name Service to identify a
destination Internet address?

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FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Perkowski discloses a “relational-type IPI Registrant Database
maintained by each IPD Server [that] comprises a plurality of labeled
information fields for each product ‘registered’ therewith”
(¶ [0119]).
2. Perkowski discloses that the database includes “information . . .
representative of the Universal Product Number . . . assigned to the
consumer product” and a “Universal Resource Locator (URL) . . . at
which information resource(s) . . . can be found on the Internet
relating to the corresponding consumer product” (¶ [0119]) and that
“the URL stored in the URL Information Field specifies the address
of an information resource on the Internet” (¶ [0120]).
3. Perkowski discloses that “the Client System . . . receives the URLi
from the IPD Server” and “requests the IPI Server, identified by the
user selected URLi, to provide the product information located by the
registered URLi” (¶ [0139]).
4. Perkowski discloses “in response to a URL selection query . . . the
IPD Server sends to the IPI Server . . . a request for the IPI Server . . .
to send product information at the selected URLi to the requesting
Client System” (¶ [0146]).
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5. Johnson discloses a computer system that contains a “[l]ocal
database . . . containing records describing the items and their
respective quantities and prices of items currently stored in a . . .
facility” (col. 4, ll. 23-26).

PRINCIPLES OF LAW
Obviousness
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, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
Claims 1-40
As set forth above, Perkowski discloses a computer system in which a
client requests information for a product with a particular UPN from a server
system and the server system identifies a URL of a data source with the
requested product information. A request for product information is sent to
the data source (corresponding to the URL) (FF 1-4). Johnson discloses a
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computer system storing product information in a database (e.g., an
inventory database).
We agree with the Examiner that it would have been obvious to one of
ordinary skill in the art, given the Perkowski disclosure of a computer
system that provides product information to a requesting user, to further
store the product information, as disclosed by Johnson, since the
combination of the teachings would have entailed no more than combining
known elements performing their known functions to achieve a predictable
result of the storage of desired information in a database. “[W]hen a patent
‘simply arranges old elements with each performing the same function it had
been known to perform’ and yields no more than one would expect from
such an arrangement, the combination is obvious.” KSR, 550 U.S. at 416
(citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)).
Appellant argues that Johnson’s system of storing product information
in a database “would necessarily be done by enhancing or modifying
Perkowski’s inventory management subsystems 4 and 6 seen in Perkowski’s
Fig. 2 and discussed at [0089]” (App. Br. 11) but fails to indicate why
Johnson’s storage of data would “necessarily” apply only to certain select
components of Perkowski’s system and not others. As evidenced by the
Johnson disclosure, storing data in a database would have been known to
one of ordinary skill in the art. Given this fact, Appellant has not provided
any support for the apparent contention that it would not have been obvious
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to one of ordinary skill in the art to store any relevant data in any relevant
database.
Even assuming that Johnson’s disclosure of storing data in a database
would be applicable to Perkowski’s inventory management subsystems 4
and 6 as Appellant argues, we nevertheless agree with the Examiner that it
would have been obvious to one of ordinary skill in the art to apply the
general process of storing data (as disclosed by Johnson) in any context in
which data is available for storage. Since the product information requested
by the user in Perkowski includes desired data and since the process of
storing data for later access was known (as per Johnson), we cannot agree
with Appellant that such a combination would not have been obvious to one
of ordinary skill in the art.
Appellant also argues that “there is no reason or motivation for
attempting such a modification” (App. Br. 12). We disagree. As Johnson
discloses, storing and maintaining data in a database would have been
known to one of ordinary skill in the art. Also, Johnson discloses that such
stored information may be used in various processes (e.g., in the “execution
of any transaction in the system, such as a purchase order” (col. 5, ll. 18-
19)). Thus, it would have been obvious to one of ordinary skill in the art to
have stored the data (Johnson) provided in Perkowski since storing
information (as in Johnson) results in the mere predictable result of the
storage of the information which permits the use of the information in any
desired transaction (Johnson) and since the Perkowski data is used in desired
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transactions, we agree with the Examiner that it would have been obvious to
one of ordinary skill in the art to have combined the Perkowski and Johnson
references.
For at least the aforementioned reasons, we affirm the Examiner’s
rejection of claims 1-40 with respect to issue 1.

Claims 1-25 and 27-36
As set forth above, Perkowski discloses a computer system in which a
client requests product information from a server and receives the requested
information from the server (FF 1-4). The product information is received
from a facility that is specified by an Internet address. Hence, we agree with
the Examiner that the received product information of Perkowski constitutes
a “structured data record” as claimed.
Since the client would not be able to utilize the received information if
the received information was in a format that was not understandable to the
client and since the server would not be able to transmit readable
information to a client if the transmitted information is not in a format that is
readable by the client, we agree with the Examiner that it would at least have
been obvious to one of ordinary skill in the art to have ensured that the
information is in a format that is understandable to all parties concerned
(e.g., both the server and the client). As such, we disagree with Appellant
that it would not have been obvious to one of ordinary skill in the art to have
ensured that the product information of Perkowski was in a format that
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conformed to an industry standard (and thus understandable by all parties) in
view of the ability of all parties in the Perkowski system to utilize the
information.
While Appellant argues that the “requirement that the data delivered
. . . has a content that conforms to standards promulgated by an industry . . .
is a key element that is essential to the success of appellant’s claimed
invention” (App. Br. 15), Appellant has failed to show how it would not
have been at least obvious to one of ordinary skill in the art, given
Perkowski’s product information being readable or otherwise usable by
different systems, to have ensured the product information to be in a
standard format.
In addition, claim 1 recites a method that merely requires that
information be in a format that conforms to standards. However, the method
recited in claim 1 does not require any further features as a result of the
standard format of the data. Hence, the recited feature of the information
being in a format conforming to standards is “non functional descriptive
material” that is treated as analogous to printed matter cases where what is
printed on a substrate bears no functional relationship to the substrate and is
given no patentable weight. See In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983) (“Where the printed matter is not functionally related to the
substrate, the printed matter will not distinguish the invention from the prior
art in terms of patentability. Although the printed matter must be considered,
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in that situation it may not be entitled to patentable weight.” (footnote
omitted)).
The Examiner 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 Lowry, 32 F.3d 1579, 1582-83 (Fed.
Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). See also Ex
parte Nehls, 88 USPQ2d 1883 (BPAI 2008) (precedential); Ex parte
Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d 191 Fed. Appx.
959 (Fed. Cir. 2006).
For at least the aforementioned reasons, we affirm the Examiner’s
rejection of claims 1-25 and 27-36 with respect to issue 2.

Claims 7-9, 24, and 25
As set forth above, Perkowski discloses a server system that identifies
a URL of a data source with the requested product information. The URL
identifies a data source from which product description data is obtained (FF
1-4). Since a computer retrieves data from a data source and since
computers identify components via an IP address (as opposed to human
users who identify components with URLs), we agree with the Examiner
that it would at least have been obvious to one of ordinary skill in the art,
given the Perkowski reference, for a computer to utilize an IP address as a
destination Internet address.
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Appellant argues that “Perkowski’s IPD returns a URL, not an
Internet Protocol (IP) address” (App. Br. 16). However, while the user
receives a URL that identifies a server, it would at least have been obvious
to one of ordinary skill in the art that the computer in Perkowski utilizes an
IP address to identify the data source corresponding to the URL from the
user since computers utilize IP addresses in the identification of data
sources.
For at least the aforementioned reasons, we affirm the Examiner’s
rejection of claims 7-9, 24, and 25 with respect to issue 3.

Claims 13 and 39
As set forth above, Perkowski discloses a server system that identifies
a URL of a data source with the requested product information. The URL
identifies a data source from which product description data is obtained (FF
1-4). Thus, Perkowski discloses a server system that includes a URL of a
data source. In order to have such a URL, the server system of Perkowski
must have “employed” a Domain Name Service at some point since there
would be no URL if such a Domain Name Service was not employed.
Therefore, we agree with the Examiner that it would at least have been
obvious to one of ordinary skill in the art, given the Perkowski reference, to
employ a Domain Name Service to identify a destination Internet address.
Appellant argues that “Perkowski’s IPD lookup mechanism does not
employ the Internet Domain Name Service to deliver the destination Internet
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address to which a product data request should be sent” (App. Br. 18) but
does not demonstrate how the system of Perkowski could have obtained the
URL without utilizing the Domain Name Service or how it would not have
been obvious to employ the Domain Name Service to obtain the URL since
Domain Name Services provide URLs.
For at least the aforementioned reasons, we affirm the Examiner’s
rejection of claims 13 and 39 with respect to issue 4.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in:
1. finding that it would have been obvious to one of ordinary skill
in the art to have combined the Perkowski and Johnson references (issue 1),
2. finding that Perkowski discloses or suggests transmitting a
structured data record that has a format that conforms to standards
promulgated by an industry or inter-industry group to promote consistent
formats for product descriptions (issue 2),
3. finding that Perkowski discloses or suggests a destination
Internet address as an Internet Protocol (IP) address (issue 3), and
4. finding that Perkowski discloses or suggests employing an
Internet Domain Name Service to identify a destination Internet address
(issue 4).

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DECISION
We affirm the Examiner’s decision rejecting claims 1-40 under
35 U.S.C. § 103.
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

msc

Charles G. Call
361 Wild Coffee Ln
Marco Island FL 34145-1849