Ex Parte Dodd

Board of Patent Appeals and Interferences

Nov 30, 2006

09931358 (B.P.A.I. Nov. 30, 2006)

The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte RUSSEL CHARLES DODD
_____________

Appeal No. 2006-2346
Application No. 09/931,358
Technology Center 3600
______________

HEARD: November 15, 2006
_______________

Before CRAWFORD, GROSS and NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §134(a) of the final rejection of
claims 1 through 9 and 14, which constitute all the claims in the application. For the
reasons stated infra we affirm-in-part the examiner’s rejection of these claims.

Invention

The invention relates to a method of providing customized information to
resellers of goods. See page 2 of appellant’s specification. Claim 1 is representative of
the invention and reproduced below:

1. A method comprising the steps of:

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Application No. 09/931,358

a) providing an interface to a plurality of customers, wherein said
customers are purchasers of goods for subsequent sale to consumers,
b) receiving customer identification information from at least one of said
customers, said receiving being accomplished through the use of said interface,
c) receiving from at least one of said customers an indication of purchase
interest in at least one consumer product, wherein said at least one consumer
product is selected by said at least one of said customers from a plurality of
consumer products available for sale, wherein the identity of said plurality of
consumer products is made known to said plurality of customers through the use
of said interface,
d) accessing customer information related to said at least one of said
customers from a preexisting database,
e) providing to said at least one of said customers product information
regarding said at least one consumer product through the use of said interface,
wherein said product information provided is customized on the basis of said
customer information accessed in step (d), and wherein at least some of the
product information provided comprises consumer sales projection information
calculated with respect to said at least one of said customers.

Reference

The reference relied upon by the examiner is:

Peterson 6,324,522 Nov. 27, 2001 (filed Sep. 15, 1998)

Rejections at Issue
Claims 1 through 9 and 14 stand rejected under 35 U.S.C. § 102(e) as anticipated
by Peterson. The examiner’s rejection is set forth on page 4 of the final Office action
dated Dec. 23, 2004. Claims 1 through 9 and 14 stand rejected under 35 U.S.C. § 103 (a)
as being unpatentable over the Peterson. The examiner’s rejection is set forth on page 4
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of the final Office action dated Dec. 23, 2004.1 Throughout the opinion we make
reference to the briefs, the answer and the Office action for the respective details thereof.

Opinion
We have considered the subject matter on appeal, the rejections advanced by the
examiner and the evidence of anticipation and obviousness relied upon by the examiner
in support of the rejections. We have likewise, reviewed and taken into consideration, in
reaching our decision, appellant’s arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and arguments in rebuttal set forth in the
examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejections and the arguments of appellant and the examiner, and for the
reasons stated infra we sustain the examiner’s rejections of claims 1 through 9 under
35 U.S.C. § 102(e) and 35 U.S.C. § 103(a). However, we will not sustain the examiner’s
rejections of claim 14 under 35 U.S.C. § 102(e) and 35 U.S.C. § 103(a)
Initially we note that appellant does not separately argue claims 2 through 9,
accordingly we group claims 2 through 9 with claim 1 and will discuss claim 14
separately.
On pages 4 through 9 of the brief, appellant presents arguments directed to the
proper interpretation of the claim terms “customer’ and “consumer.” While appellant’s
arguments on pages 4 through 9 of the brief are directed primarily to the now withdrawn
rejection based upon Roberts and Brockman, we will address the issue as it has bearing
on the rejections based upon Peterson. In response to these arguments, the examiner
adopts the appellant’s asserted meanings for these terms. On page 8 of the answer, the
examiner finds that the claim term “customer” means: “any purchaser of goods where

1 We note the appealed final rejection also rejected claims 1-9 and 14 under 35 U.S.C.
§ 112 and under 35 U.S.C. § 103 as being unpatentable over Roberts and Brockman.
However, the examiner states on pages 2 and 3 of the answer all rejections except the
rejections relating to Peterson are withdrawn.
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such purchaser intends to re-sell such goods to another entity, person, or groups of
persons in the course of such customer’s business”; and the term “consumer” means:
“any purchaser of goods where such purchaser will be the end user of such goods, or is
not otherwise engaged in business or practice of sale of such goods to others.” The
examiner further provides table 1, on page 15 of the answer, which equates the parties in
Peterson with the parties claimed. Appellant concedes that as table 1 shows, Peterson
teaches parties analogous to the parties claimed. Thus, the issue as to whether Peterson
teaches the parties as recited in the claims is not before us as both examiner and appellant
are in agreement.
Appellant argues, on page 10 of the brief, that Peterson does not teach or suggest
that product information is customized based on customer information and that the
information provided comprises consumer sales projections calculated with respect to the
customer. Appellant states, on page 10 of the brief, that while Peterson teaches that
vendors (admitted to be analogous to claimed customers) communicate information about
inventory “[t]here is no indication that the information about the product itself provided
to the vendor is customized on the basis of vendor information (or customer
information).” (Emphasis original) Further, appellant asserts, on page 11 of the brief,
Peterson provides no indication that the information comprises sales projection
information as required by claim 1. Additionally, on page 11 of the brief, appellant
argues that the examiner’s rejection has essentially “ignored the limitation of calculation,
of consumer sales projection information calculated with respect to the customer.”
Regarding the examiner’s obviousness rejection based upon Peterson, appellant argues,
on page 12 of the brief, that with the exception of claim 14, the arguments regarding the
anticipation rejection also apply to the obviousness rejections.
In response, the examiner states, on page 16 of the answer, that table 2 of the
appendix, establishes anticipation. In table 2 of the appendix, on pages 19 and 20 of the
answer, the examiner finds that Peterson teaches price information customized based on
the consumer ID which meets the claim 1 limitation of “wherein said product information
provided is customized on the basis of said customer information accessed in step (d).’
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Further, the examiner finds that Peterson teaches “At least some of the product
information provided to the system (e.g. quantity ordered by the vendor as buyer) is
based upon end user sales projection information (the quantity the vendor as buyer
believes the consumer as end user will eventually purchase” and that this teaching meets
the claim limitation of “wherein at least some of the product information provided
comprises consumer sales projection information calculated with respect to said at least
one of said customers.” As an alternative, on page 16 of the answer, the examiner applies
an obviousness rejection and finds that the limitation of steps of providing product
information recited in claim 1 are not dependent upon the content of the information
provided. On page 17 of the answer, the examiner states:
it is the Examiner's position that "consumer sales projection information" is non
functional descriptive material. At least in claim 1, the "consumer sales projection
information" is not in any way functionally related to the method step. Whether
the information is "consumer sales projection information" or other information.
For this reason, even if the Board reversed the anticipation rejections, the
Examiner urges the Board to affirm the obviousness rejections.

Appellant replies, on page 3 of the reply brief, to the examiner’s finding that the,
number of units purchased by the vendor (customer) is based upon projected sales, by
asserting that the examiner’s rationale, while logical, does not show how Peterson meets
the claim limitation of providing to the customer a customized projection of consumer
sales calculated for the customer. Further, on page 4 of the reply brief, appellant
responds to the examiner’s alternative rationale, that the consumer sales projection
information is non functional descriptive material. Appellant argues that the method of
the claim “among other steps requires a calculation and requires that the results of this
calculation be provided to one [of] the parties necessary for the performance of the
method.” Appellant cites several Federal Circuit Cases in which methods which
involved calculations were drawn to statutory subject matter.
The appellant’s arguments have not convinced us that both of the examiner’s
rationale for rejecting claim 1 are in error. While we are in agreement with appellant that
Peterson does not inherently teach providing to the customer consumer sales projection
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information as discussed in appellant’s specification, we do however find that such
information is not functionally related to the claimed method. 2
Claim 1 recites in step e) “providing to said at least one of said customers product
information regarding said at least one consumer product through the use of said
interface, wherein said product information provided is customized on the basis of said
customer information accessed in step (d), and wherein at least some of the product
information provided comprises consumer sales projection information calculated with
respect to said at least one of said customers.” Thus, limitation e) of claim 1 recites three
types of information. The first type of information (product information) is provided to
the customer, assumedly in response to the customer’s indication to purchase a selected
product in step c), and the information is also customized on the basis of information
recited in the prior step d). Step d) recites another, second type of information (customer
information), which is stored in a database. Further, limitation e) recites that some of the
first information (product information) comprises a third type of information “customer
sales projection information calculated with respect to said at least one customer.” We
hold that the titles for the different types of information, i.e. “customer” and “consumer
sales projection” do not import functionality to the data. We hold that claim 1 recites
three types of information which are related. The second type of information (customer
information) is used to customize the first type of information (product information) and
that the third type of information (customer sales projection) is part of the first type of
information (product information). We note that there is no claimed method step of
calculating, or limitation reciting how the calculation is performed, rather the claim
recites that the information (projected consumer sales) is calculated with respect to one of
the customers. Thus, we do not find that type of information “consumer sales projection”

2 Our reviewing court has stated that “[w]here 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.” In Re Nagi 367 F.3d 1336, 1339, 70 USPQ2d 1862,
1864 (Fed. Cir. 2004), citing In Re Gulack 703 F.2d 1381, 217 USPQ 401 (Fed. Cir.
1983).
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functionally relates to the claimed method step other than that it is calculated with respect
to the second (customer) information.
We find that Peterson teaches a system where the vendor can inquire about
purchasing an item, and in response to the inquiry the vendor is provided data including
item description, a price quantity etc. See column 28, lines 19 through 26. The vendor
also enters an ID, and this ID is then used to access a database which includes among
other data the vendor’s discount percentage. See column 28, lines 26 through 38. This
discount percentage is used to calculate the price quoted to the vendor. Reading the
teachings of Peterson on the claim limitations discussed supra, we find that information
provided in response to the search meets appellant’s claimed “product information.” We
find that Peterson’s discount rate meets the claimed customer information as it is
information related to a customer from a pre-existing database. Further, we consider
Peterson’s price to meet appellant’s claimed non-functional descriptive information,
“consumer sales projection” as it is part of the product information (response to the item
inquiry) and is calculated based upon the customer information (discount rate).
Accordingly, we find ample evidence to support the examiner’s rejections of claim 1
under Peterson. We note that the examiner discusses the claim interpretation of non-
functional descriptive material only with respect to the rejections based on 35 U.S.C.
§ 103, however it is clear from In Re Nagi 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir.
2004) that the principals also apply to anticipation rejections. Accordingly, we sustain
the examiner’s rejection of claim 1 and the claims grouped with claim 1, claims 2
through 9, under both 35 U.S.C. § 102 and 35 U.S.C. § 103.
In regards to claim 14, appellant argues, on page 12 of the brief,
Claim 14 expressly requires that the sales projection information is customized on
the basis of planned promotional activities with respect to the consumer product.
The Final Action takes the primary position that such limitation is inherent by
virtue of the product being on sale. This conclusion is not correct, however. An
item on sale does not necessarily have any planned promotional activity
associated with it - much less inherently have a customized calculation made on
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the basis of both customer information and promotional activity regarding the
product. The Final Action simply dismisses the claim limitations as
"nonfunctional descriptive material" while arriving at the summary conclusion
that substitution in Peterson et al. of any particular type of information would be
obvious. This showing is well short of the requirements showing how the
particular relationships among the parties claimed are suggested in Peterson et al.

The examiner responds on page 18 of the answer that the features argued by
appellant are not present in the claims.
We disagree with the examiner. Claim 14 is dependent upon claim 1 and recites
“wherein said sales projection information is customized on the basis of planned
promotional activities with respect to said at least one consumer product.” As discussed
supra, we consider the title “sales projection information” imparts no functionality in
claim 1. Nonetheless claim 14 further recites that this information is further customized
by “planned promotional activities.” As discussed supra Peterson teaches data that is
customized based upon customer information, but we find no disclosure in Peterson
which teaches or makes obvious performing a second customization of the data.
Accordingly, we will not sustain the examiner’s rejections of claim 14.

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Conclusion
In summary, we sustain the examiner’s rejection of claims 1 through 9 under
35 U.S.C. § 102(e) and 35 U.S.C. § 103(a). However, we do not sustain the examiner’s
rejection of claim 14 under 35 U.S.C. § 102(e) and 35 U.S.C. § 103(a). The decision of
the examiner is affirmed in part.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

REN/vsh
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