Ex Parte Igarashi

Board of Patent Appeals and Interferences

Mar 11, 2009

10173050 (B.P.A.I. Mar. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KAORU IGARASHI
____________________

Appeal 2008-2718
Application 10/173,050
Technology Center 2100
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Decided:1 March 12, 2009
____________________

Before ALLEN R. MACDONALD, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-20. 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, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-2718
Application 10/173,050

We AFFIRM.

Introduction
According to Appellant, the invention is a system and method for
registering customers who provide their route of travel (Spec. 1). A search
is conducted to provide a list of customers to third parties, i.e., retailers
(App. Br. 3). Thus, potential customers may be located based on their route
and other criteria registered (id.).

Exemplary Claim(s)
Claims 1 and 19 are exemplary claims and are reproduced below:
1. A customer search device to identify potential customers, said
device comprising:

a storage unit for storing a route of travel of each registered customer;

a search criteria entry unit for receiving search criteria, including
location information;

a determination unit for determining whether or not there is an
association between each registered customer's route of travel stored in said
storage unit and the location information included in said search criteria; and

an output unit for creating and outputting a listing of registered
customers whose routes of travel have an association with the location
information included in said search criteria, on the basis of determinations
made by said determination unit.

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19. The customer search device of claim 1, wherein said registered
customer becomes registered by submitting a registration application
obtained from a Uniform Resource Location (URL) address set up for
providing said registration applications, said registration application includes
allowing the registered customer to identify interests and activities as
personal information.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kari US 6,154,745 Nov. 28, 2000
Becker US 6,591,263 B1 Jul. 08, 2003
(filed Apr. 27, 1998)
Barth US 2005/0010567 A1 Jan. 13, 2005
(filed Mar. 22, 2001)

Rejections
The Examiner rejected claims 1-18 under 35 U.S.C. § 103(a) as being
unpatentable over Kari and Barth and claims 19-20 under 35 U.S.C. § 103(a)
over Kari, Barth, and Becker.

GROUPING OF CLAIMS
Based on the arguments presented in Appellant’s Brief, we decide the
appeal of claims 1-18 on the basis of arguments regarding claim 1 and the
appeal of claims 19-20 on the basis of arguments regarding claim 19.
Arguments Appellant could have made but chose not to make in the Briefs
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have not been considered and are deemed to be waived [see 37 C.F.R.
§ 41.37(c)(1)(vii)].

ISSUES
35 U.S.C. § 103(a): claims 1-18
Appellant asserts his invention is not obvious since neither Kari nor
Barth teaches registering customers or generating a list of these “registered
customers” in response to a “customer search” for users associated with a
particular route of travel (App. Br. 6 and 8). Instead, Appellant contends
both Kari and Barth teach the opposite of the claimed invention – a user
automatically obtaining information on services along his/her travel route
(App. Br. 7).
The Examiner finds Kari teaches a customer searching for services
along a travel route also includes the reverse (services searching for
customers along a travel route) since both identify a travel route and perform
a search (Ans. 7). The Examiner further finds Barth teaches capturing data
on consumer and competitor behavior and thus, demonstrates the ability and
means for storing and listing customer searches related to travel routes that
may be properly combined with Kari (Ans. 8).
Issue 1: Has Appellant met the burden of showing the Examiner erred
in finding Kari and Barth teach creation and output of a list of registered
customers who travel routes are associated with location information in
search criteria?

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35 U.S.C. § 103(a): claims 19-20
Appellant argues Becker is non-analogous to Kari since it provides
information on travel route conditions in contrast to services along the route
(App. Br. 9). The Examiner finds Kari and Becker are analogous art since
Becker teaches alternate route information which includes services along
various routes and Kari teaches providing information related to travel
routes and users (Ans. 10).
Issue 2: Has Appellant met the burden of showing the Examiner erred
in finding Kari, Barth, and Becker are analogous art?
Additionally, Appellant contends no motivation or benefit exists in
adding email alert capability of Becker into Kari (App. Br. 9).
Issue 3: Has Appellant met the burden of showing the Examiner erred
in finding motivation existed for one skilled in the art to include the e-mail
alert capability of Becker into the combined Kari and Barth system?

FINDINGS OF FACT (FF)
Appellant’s Invention
(1) In Appellant’s invention, when a customer registers, personal
information is provided (Spec. 10-11). Personal information includes at
least location information which indicates the area information is to be
delivered (Spec. 11).

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Kari’s Invention
(2) Kari discloses a method that uses a search terminal for
transmitting information to a user in response to a query from the user
(Abstract). The information to be transmitted is retrieved at least partly on
the basis of the location and/or travel route of the user (Abstract).
(3) A user provides information such as user name, age, telephone
number, location information, identification of the terminal or the user and
possible information on the travel route to create a user profile stored in a
data base on a connection server (col. 9, ll. 22-45 and Table 2).
(4) A query by the user may also contain the location and route
information (col. 6, ll. 24-29, col. 9, l. 65 – col. 10, l. 44 and Figure 1).
When a user inputs a query, user-specified information from the user profile
is added to and checked against the query information (col. 11, ll. 30-37).
Information in the query overrides any information in the user profile (col.
11, ll. 33-39).
(5) After a user is determined to be a registered user, the query is
processed for location and travel route (col. 15, ll. 17-25). A search of
databases for the service or services complying with the query message is
performed and the results supplied to a user (col. 15, ll. 31-43). For
example, query messages in which the relevant search information based
solely on the location of the user are processed (col. 12, ll. 12-15).
(6) Information to users is transmitted via messages using one or
several short messages or by another method of communication so a user
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can be updated automatically, i.e., during the trip of the user (col. 16, ll. 16-
26).

Barth’s Invention
(7) Barth teaches a method and apparatus for finding relevant
information from multiple sources including suppliers or purchasers or
goods and to present that information to purchasers or suppliers for
comparisons (pg. 1, ¶ [0003]).
(8) Users query a search system based on their travel itineraries or
descriptions associated with a desired trip (pg. 2, ¶ [0028]). A client
generates a unique user identification number (GUID) that serves as a
client’s permanent ID number (pg. 5, ¶ [0064]).
(9) Client purchases, user activity logs, travel component or airline
pricing behavior and other information can be retrieved from the system (pg.
22, ¶¶ [0256]-[0258]). Exploitation of the database for the service owner’s
benefit can be conducted through data mining and other types of analysis
(id.).
(10) User and supplier privacy can be protected through use of an
application programming interface (API) and software architecture that
allows components, or data analysis adapters, to be created and provided to
the search system by third parties wanting access to the data; however the
types and amounts of data that the analysis adapter can output are restricted
(id.)

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Becker’s Invention
(11) The system of Becker collects information and distributes the
information related to travel conditions in real-time (col. 4, ll. 29-35).
(12) Travelers who have registered their multi-modal travel routes
and notification criteria with a service provider would receive notification of
travel condition information specific to their multi-modal travel routes (col.
5, ll. 26-28). Notification criteria includes preferred delivery device, days of
the week and time(s) of day that travel on the route is anticipated (col. 5, ll.
45-51).
(13) When a travel condition occurs an identification or listing of
affected customers is determined based on their personalized routes and
other criteria as defined in their customer profile (col. 12, ll. 58-64). Based
on the determination of which customers may be affected, a notification
message is sent out to the affected customers (col. 13, ll. 3-7).

PRINCIPLES OF LAW
Claim Construction
"The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior
art." In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994) (citing In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983)). "[T]he PTO gives claims their
'broadest reasonable interpretation.'" In re Bigio, 381 F.3d 1320, 1324 (Fed.
Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
"Moreover, limitations are not to be read into the claims from the
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specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).

Obviousness
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).

Analogous Art
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” In re Clay, 966 F.2d
656, 659, (Fed. Cir. 1992).

Inherency
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) states “‘[t]o
establish inherency, the extrinsic evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
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reference, and that it would be so recognized by persons of ordinary skill.’
‘Inherency, however, may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.’” Id.; see also Schering Corp. v. Geneva
Pharmaceuticals, 339 F.3d 1373, 1379 (Fed. Cir. 2003).

ANALYSIS
35 U.S.C. §103(a): claims 1-18
Issue 1
Kari teaches customers registering and providing location and route of
travel information (FF 3). Barth allows for a service owner and/or third
party to acquire information from the system – information regarding client
purchases, user activity logs, and other types of information (FF 9).
Although Barth teaches user privacy can be protected (FF 10), for this
filtering of the private data to occur, the private data must exist. Barth does
not “teach against” acquiring the user’s data as suggested by Appellant
(Reply Br. 3), but instead teaches that additional technology may be used to
provide privacy at a level desired (FF 10). However, to provide this privacy,
registered customers and other information that may be deemed private must
exist – they are necessarily present since the user provides information when
registering to get information (FF 3, FF 8 and FF 9). Therefore, registered
customers’ personal information, location and travel route are inherent in the
database.
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Since Barth additionally teaches outputting the information desired
from the system (i.e., client purchases, user activity logs, etc.) (FF 9), we
conclude it would have been obvious to one skilled in the art to create a
listing of the registered customers by performing a search on the database
and not employing the API or data analysis adapters that limit the retrieval
of certain information.
Accordingly, we find one skilled in the art would have been motivated
to combine the system of Kari with the features of Barth to provide a listing
of registered customers.
Appellant contends a determination is made as to whether an
association exists between each registered customer’s route of travel and the
location information in a search query (see claim 1 and analogous language
in claims 6 and 11). Kari discloses a user’s travel route may be stored as
part of the user profile in the server (FF 3). The location information may be
part of the query which is joined with the user-specified information of the
user profile (FF 4). Since “association” means to join or connect together
(Merriam-Webster Collegiate Dictionary, 10th edition © 2000), we find the
route information and location information are joined or connected through
the user profile, the query or the user profile and query being joined. We
further find the server is a storage unit as it stores the user profile (FF 3) and
a query includes search criteria (FF 5). Therefore, we find the route of travel
stored in a storage unit (server) and the location information included in
search criteria (query) are taught by Kari.
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We conclude the inclusion of providing the registered customer
information of Barth into the system of Kari would have been obvious to one
skilled in the art at the time of Appellant’s invention for the reason set forth
by the Examiner (Ans. 4). Appellant has not provided evidence that the
Examiner made a flawed argument. Accordingly, we find the combination
of Kari and Barth teach and/or suggest creating and outputting a listing of
registered customers whose routes of travel stored in a storage unit and
location information included in search criteria have an association as
recited in claim 1 and recited using equivalent language in claims 6 and 11.

35 U.S.C. §103(a): claims 19-20
Issue 2
We agree with the Examiner’s findings that Kari, Barth, and Becker
are analogous art and are properly combined for the reasons set forth in the
Answer (Ans. 7, 8, and 10). We further find Kari, Barth, and Becker all
teach systems that register customers and provide information to those
customers based on their travel routes and location (FF 2, FF 8 and FF 12).
Both Barth and Becker develop a listing of customers – Barth for use by
service providers and other third parties and Becker to notify customers who
meet specific criteria such as traveling along a particular route at a particular
time of day (FF 12 and FF 13). Therefore, we find Kari, Barth, and Becker
are analogous art.
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Additionally, since Appellant’s invention provides information to a
party based on a user’s travel route and location, we find Kari, Barth, and
Becker are analogous art to Appellant’s claimed invention.
Accordingly, we conclude that incorporating the features of Barth and
Becker into the system of Kari would have been obvious to one skilled in the
art at the time the invention was made.

Issue 3
Both Kari and Becker contemplate providing a user with messages
automatically and during their travels (FF 6 and FF 12). Specifically, Kari
contemplates sending and receiving SMS messages which are specific to a
customer’s phone number (FF 6). Based on these teachings, we conclude
that incorporating Becker’s use of e-mail addresses in a customer’s personal
information to allow e-mail notices into the system of Kari would have been
obvious to one skilled in the art since Kari was already using a notification
system based on a user’s personal information.

CONCLUSIONS
Appellant has not established the Examiner erred in finding Kari and
Barth teach and/or suggest the creation and output of a list of registered
customers who travel routes are associated with location information in
search criteria as recited in independent claim 1 and recited with equivalent
language in independent claims 6 and 11. Since claims 2-5, 7-10, and 12-18
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depend on these independent claims and were not argued separately, claims
2-5, 7-10, and 12-18 fall with independent claims 1, 6, and 11, respectively.
Appellant has not established the Examiner erred in finding Kari,
Barth, and Becker are analogous art. Nor has Appellant established the
Examiner erred in finding motivation existed for one skilled in the art to
incorporate the e-mail alert capability of Becker into the combined Kari and
Barth system, to reach the subject matter recited in claim 20. Accordingly,
we find Appellant has not met the burden of showing the Examiner erred in
rejecting claims 19 and 20.

DECISION
The Examiner’s rejection of claims 1-18 under 35 U.S.C. § 103(a) as
being obvious over Kari and Barth is affirmed and the rejection of claims 19
and 20 under 35 U.S.C. § 103(a) as being obvious over Kari, Barth, and
Becker is affirmed.

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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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