Ex Parte Chatow et al

Patent Trial and Appeal Board

Nov 25, 2013

11694914 (P.T.A.B. Nov. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEALS BOARD
____________

Ex parte EHUD CHATOW, ANDREW E. FITZHUGH,
and NATHAN M. MORONEY
____________

Appeal 2011-008979
Application 11/694,914
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b).
(2002).

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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants claim a method and service for creating a customized
publication using information about interests of different recipients. Spec.,
para. [0009].
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A publishing method comprising accessing information
about interests of different recipients; generating customized instances
of a publication for the different recipients, each instance customized
according to its recipient’s interests; and determining print product
parameters for the instances according to the recipient interests.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Perronnin US 2008/0137132 A1 Jun. 12, 2008
LaVigne US 2008/0180729 A1 Jul. 31, 2008
Bakewell US 2008/0201227 A1 Aug. 21, 2008

The following rejections are before us for review:
The Examiner rejected claims 1-19 and 21-29 under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
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The Examiner rejected claims 1-7, 9, 16-20 and 22-30 under
35 U.S.C. § 103(a) as unpatentable over Bakewell and LaVigne.
The Examiner rejected claims 8, 10-15 and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Bakewell, LaVigne, and Perronnin.
FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 3-16 of the
Answer.
2. Bakewell discloses:
Intelligent suggestions, introducing more to do/see
along and near a contemplated route will be based
on stored information about an individual's general
and specific interests and matches of that
information against the invention’s unique,
searchable, comprehensive, national database.
Para. [0167].
3. LaVigne discloses “Graphics Services Firms (GSFs )-An entity that
establishes print relationships with customers and maintains the print
material libraries.” Para. [0056].
4. LaVigne explicitly discloses that the EC (Enterprise Customer),
using a GSF dashboard, is presented with inputs for selecting paper
attributes for the involved printed product, which include, inter alia, paper
attributes, colors per side, folds, cuts, stitches, bleed (yes/no), etc. Para.
[0083].
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ANALYSIS
35 U.S.C. § 101 Rejection
We affirm the rejection of claims 1-19 and 21-29 under 35 U.S.C.
§ 101 as being patent-ineligible.
The Examiner found that “[t]he step of printing is considered an
insignificant step therefore, the rejection is maintained.” Ans. 4.
We agree with the Examiner. Other than this post solution step, each
of the claim steps of accessing information about interests of different
recipients; customizing according to its recipient's interests; and determining
print product parameters for the instances according to the recipient
interests, requires no machine, only the conscious thought of the one
controlling the operation. As in Bilski v. Kappos, 130 S.Ct. 3218, 3231
(2010), a patent including these claims would allow the Appellants to
preempt the use of this approach in all fields, and would effectively grant a
monopoly over an abstract idea.
We further are not persuaded by Appellants’ argument that because
claim 21 refers inferentially to a machine memory, that the claim is drawn to
an article of manufacture. Appeal Br. 8. This is because we find that the
memory device is incidental to the claim because the essence of the claim is
drawn to a method, in this case one covering mental thought. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374-75 (Fed.
Cir. 2011).

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35 U.S.C. § 103(a) Rejection.
Claims 1-7, 9, 16, 17, 19, 20, 22-29
Initially, we note that Appellants argue independent claims 1, 20 and
21 together as a group. Correspondingly, we select representative claim 1 to
decide the appeal of these claims, with the remaining independent claims,
and dependent claims 2-7, 9, 16, 17, 19, and 22-29, standing or falling with
claim 1.
Appellants argue that,
Bakewell discloses a service that allows users to
select content for a trip plan. For example, a user
may select content by planning travel, taking
virtual and live tours, searching provided
databases, and manually selecting sites based upon
information provided by the site or other sources.
See Bakewell, para. [0014]. Bakewell also
discloses allowing a user to download or print the
final trip plan and related details. See id., para.
[0021]. Thus, the user manually selects the
content that is present in the trip plan.
App. Br. 11-12.
We disagree with Appellants. We find that while the user does
manually input a “contemplated route” into the system, once this is done,
Bakewell discloses using “intelligent suggestions” which introduces to the
user “more to do/see along and near a contemplated route based on stored
information about an individual’s general and specific interests and matches
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of that information against a searchable, comprehensive, national database.”
(FF 2).
Appellants also argue that “Bakewell's printed trip plan is not a
publication that is customized for a user in terms of content, design, and
advertisements.” App. Br. 12.
However, Appellants’ arguments fail from the outset because they are
not based on limitations appearing in claim 1 which merely recites, each
instance customized according to its recipient's interests, and not “content,
design, and advertisements,” as argued. In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
Likewise unpersuasive is Appellants’ argument that Bakewell is
deficient because “a publication, as recited in the present specification and
claims, may contain customized content, design, and/or advertisements that
has been selected for the user, based on historical behavior, including
purchases, search histories, movie ratings, travel history, and the like.” App.
Br. 12. This is because the claims do not require any basis for the selection
of the recommended product, except to require each instance [be]
customized according to its recipient's interests.
Appellants argue that “…LaVigne is merely relied upon by the
Examiner merely for its alleged disclosure of determining print product
parameters. See Final Office Action, p. 3… [and that] [t]he print products of
LaVigne are not customized, merely printed.” App. Br. 12-13.
We disagree with Appellants because LaVigne at paragraph [0083]
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explicitly discloses that the EC (Enterprise Customer) is presented with
inputs for paper attributes for the involved printed product (FF 4), which
attribute selection we find customizes the printed product, e.g., colors per
side, folds etc. Even if such an input selection was not presented to the EC
in LaVigne and the print jobs were only validated against a list of approved
parameters, we nevertheless find that a person with ordinary skill in the art
would know to coordinate the approved parameters with user preferences as
taught by Bakewell's “intelligent suggestions.” (FF 2).
Appellants argue that that Bakewell is non-analogous art because
“…one of ordinary skill in the art of generating customized instances of a
publication would not be aware that a similar problem existed in the art area
of making travel reservations and trip planning.” App. Br. 13.
We disagree with Appellants. The analogous-art test requires that the
Board show that a reference is either in the field of the applicant’s endeavor
or is reasonably pertinent to the problem with which the inventor was
concerned in order to rely on that reference as a basis for rejection. In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Here, we find that Bakewell
is reasonably pertinent to the problem associated with customized instances
of publications because the process there, as with Appellants’, is presenting
to a user an item which is customized to meet his or her preferences. In both
cases, a person with ordinary skill in the art would understand that such
customizing reduces the number of tries the user needs to make in order to
compile a product/service with characteristics which meet the user’s
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satisfaction. References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary skill in the art.
Id. (“[I]t is necessary to consider ‘the reality of the circumstances,’ -in other
words, common sense-in deciding in which fields a person of ordinary skill
would reasonably be expected to look for a solution to the problem facing
the inventor.” (quoting In re Wood, 599 F.2d 1032, 1036 (CCPA 1979))).
Claim 30
We are also not persuaded by Appellants’ argument that “…LaVigne
does not disclose an ‘interface to allow publishers to select certain
contributors to create publications,’….” App. Br. 14. This is because we
find that LaVigne explicitly discloses a publisher (Graphics Services Firm
(GSF)) having a similar selecting means at the interface dashboard
presenting inputs for selecting paper attributes for the involved printed
product, which include, inter alia, paper attributes, colors per side, folds,
cuts, stitches, etc. (FF 4). Moreover, we are not persuaded that the printed
product disclosed by LaVigne is not a publication because a publication
need only be printed material made available to the public.
Claim 18
As to Appellants’ argument to claim 18 covering a template, we find
that the GSF dashboard having a menu of attributes from which the printed
product is patterned (FF 4) is a template, and hence meets the claim
requirement.

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Claims 8, 10-15, and 21
We are also not persuaded of error by Appellants’ argument that
“Perronnin does not disclose customizing instances of a publication
‘according to its recipients’ interests’” (Appeal Br. 15), because the
Examiner found this feature in Bakewell (FF 2) (Ans. 5), and hence
Appellants are attacking the reference individually when the rejection is
based on a combination of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Young, 403 F.2d 754, 757-58 (CCPA 1968).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-19 and 21-
29 under 35 U.S.C. § 101, and claims 1-30 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1-30 is 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)(1)(iv).

AFFIRMED

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