Ex Parte Hopson et al

Board of Patent Appeals and Interferences

Jul 23, 2012

11548110 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte DAVID B. HOPSON and KIMBERLY S. KEYS
____________________

Appeal 2010-006902
Application 11/548,110
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 68-83. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

BACKGROUND
Appellants’ invention is directed to an online shopping system
(Specification 1:9-10).
Claim 68 is illustrative:
68. A method of operating an online shopping system that
permits a customer to submit online orders for items and/or
services from a store that serves both walk-in customers and
online customers, the method comprising:
presenting to a customer different service types including
delivery service, pick up service and print a shopping list
service; and
presenting to a customer one of multiple different screens
based upon the service type selected, each screen containing a
different order type including a grocery order, a flower order
and a catering order.

Appellants appeal the following rejections:
Claims 68-80, 82, and 83 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Owens (US 2003/0004831 A1, pub. Jan. 2, 2003),
Borders (US 7,177,825 B1, iss. Feb. 13, 2007), Hayes (US 2002/0069124
A1, pub. Jun. 6, 2002), and Official Notice that “it is well known to present
catalogues in hierarchical format, where a selection of types is presented
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before a particular type is selected, and thence particular items are
presented.” Ans. 4.
Claim 81 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Owens, Border, Hayes, Official Notice, and Lurie (US 2002/0178088 A1,
pub. Nov. 28, 2002).

FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
The ordinary and customary definition of the term cater, as defined by
Merriam Webster’s Collegiate Dictionary (10th ed.), is: “to provide a supply
of food.”
Borders discloses supplying food ordered through an e-commerce
system (col. 36, ll. 24-28).

ANALYSIS
Ignoring Limitations
We are not persuaded by Appellants’ argument of error by the
Examiner for allegedly ignoring limitations, on the basis that the claimed
“catering” is not disclosed by Borders. App. Br. 4. The term “catering” is
not explicitly defined or described in the Specification, so the Examiner’s
analysis relies on a reasonable meaning for the term of supplying food by
“filling such orders, preparing food products, and delivering them.” Ans.
13-14. The Examiner did not ignore the catering limitation, but instead finds
that Borders discloses catering by supplying food, at column 36, lines 14-35,
as claimed. Ans. 4.
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We are not persuaded by Appellants’ argument of error by the
Examiner as “dismissing a limitation” through the use of Official Notice.
App. Br. 4, Reply Br. 3. A similar argument is directed to claim 71. App.
Br. 8, Reply Br. 7-8. The Examiner has entered evidence, in the form of
Official Notice, that corresponds to claim language about screens of service
type, which the Examiner finds would be obvious to present hierarchically
linked from a more general web page for ordering. Ans. 4-5, 6-7. Rather
than “dismissing” or ignoring the limitations, the Examiner has considered
the claim limitations at issue and found them disclosed in the evidence of
record. Additionally, the Official Notice evidence has not been adequately
traversed by Appellants. See Manual of Patent Examination Procedure
(MPEP) § 2144.03(C).
We are also not persuaded of error on the part of the Examiner by
Appellants’ argument that the Examiner incorrectly found that Borders
implies that a comparison is made, because “such an inference is not enough
to meet the claim limitations of claim 69.” Reply Br. 5-6. Similar
arguments about inference and implication are directed to claim 70 (Reply
Br. 7), claim 72 (Reply Br. 9-10), claim 76 (Reply Br. 15), and claim 82
(Reply Br. 8-9).
As to claims 69 and 72, we agree with the Examiner that it would
have been within the skill of the ordinary artisan to compare a time of
submission of the purchase order to the order cutoff, because this type of
step can be implied as part of Borders as a normal business action (Ans. 5, 7-
8). See KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). (In making
the obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”)
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As to claim 70, Borders discloses picking the order (col. 28, ll. 40-51)
and using a map and specific delivery route (col. 31, ll. 10-12 and ll. 18-21),
and thus no inference or implication is necessary.
As to claim 76, we agree with the Examiner (Ans. 9) that when a
delivery window is available will depend on the service or order type, since
different services and orders may have different available delivery windows.
Claim 82 requires three steps in order: a) picking an order, then b)
presenting the order for payment, then c) shipping the order. We agree with
the Examiner that the particular order of operations claimed is obvious to the
ordinary artisan, for the following reasons. First, the picking must be done
before the shipping in order to have something to ship. Second, it makes
sense to wait to be sure the item is available for shipping before asking for
payment. Therefore, the picking should take place first. This leaves only
two options: asking for payment before shipping or after shipping. It is
common business practice to get paid as soon as possible, so it would have
been obvious for the request for payment (“settling the order for the items
with a credit supplier”) to be made after picking but before shipping, as
claimed.
Suggestion in the References for the Combinations
We are not persuaded of Examiner error by the Appellants’ argument
that the rejection of claim 68 is improper because there are no “teachings,
suggestions or inferences in Owens” to support the combination of
references. App. Br. 5. This argument is also presented for claims 69-83.
App. Br. 7, 9, 11-12, 14, 16, Reply Br. 5, 6, 10, 13, 15-16, 18-19. To the
extent Appellants seek an explicit suggestion or motivation in the reference
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itself, this is no longer the law in view of the Supreme Court’s recent
holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).

Hindsight
We are not persuaded of error on the part of the Examiner that the
rejection of claim 68 is improper because the references have been combined
based on hindsight reconstruction. App. Br. 5, Reply Br. 4. Similar
arguments are directed to claims 69-83. App. Br. 7, 10, 12, 14, 16-17. We
agree with the Examiner's reasoning that the combination of applying the
Owens interactive shopping system for the purchase of groceries and
catering, as disclosed by Borders, and flowers, as disclosed by Hayes, using
specific screens for each type of product or service, would be no more than
the combination of known prior art elements according to known methods to
yield predictable results. See KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). The Examiner also explained on page 5 of the Answer that a
person of ordinary skill in the art would have been motivated to apply an e-
commerce system of Owens to the additional products and services
disclosed by Borders and Hayes for additional profit, and motivated to use
specific screens for each product so customers are aided “in drilling down by
category to the particular item(s) he wishes to order ....” Ans. 5. Therefore,
we do not find hindsight as the basis of the combination.
Predictable
We are also not persuaded of error by the Examiner by Appellants’
argument that the combination would not be predictable. Reply Br. 3-4.
Although no evidence is presented to support this assertion, we find that
merely applying an e-commerce system to groceries, catering, and flowers
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would yield predictable results because commerce in these products and
services are well-known and present few technical challenges to use in e-
commerce. Additionally, the programming techniques involved to use
specific screens for each product or service are not outside the skill of the
ordinary artisan, and the result of applying Owens’ system to three specific,
additional products and services is thus very predictable.
Similar arguments are directed at claims 69-83 (Reply Br. 6-7, 7, 8-9,
11-12, 14-15, 16-17, 19-20), with the additional assertion that the
combination is not a substitution of elements. As with claim 68, we find the
arguments about the combination not being predictable unpersuasive for the
same reasons. We also note that the Examiner’s combination is based on a
simple combination of elements, not a substitution of elements. Ans. 4-13.

DECISION
We affirm the rejections of claims 68-83 under 35 U.S.C. § 103(a).

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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