Ex Parte Igo

Board of Patent Appeals and Interferences

Nov 29, 2011

11003813 (B.P.A.I. Nov. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GILBERT IGO
____________

Appeal 2010-000461
Application 11/003,813
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000461
Application 11/003,813

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-20 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellant’s claimed invention is directed to a system for user
placement and manufacturer fulfillment of occupational prescription
eyewear. (Spec. [0002]). Claim 1, reproduced below, is representative of
the subject matter on appeal.

1. A web-based method for order and fulfillment of occupational
prescription eyewear, comprising:
providing user account initiation interface;
providing an interface prompting user selection of eyewear
components;
providing a prescription form to the user; and
fulfillment of an occupational prescription eyewear order based
on user selection of eyewear components and the prescription from
such professional and based on receipt of a completed prescription
form from a professional qualified to make such prescription.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Keane US 7,188,082 B2 Mar. 6, 2007

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Official Notice as evidenced by:
Fisher US 6,331,858 B2 Dec. 18, 2001
Smith US 6,901,430 B1 May 31, 2005
Zucker US 7,181,418 B1 Feb. 20, 2007
Applicant’s Admitted Prior Art (“AAPA”)

The following rejections are before us for review:
1. Claims 1-17 are rejected under 35 U.S.C. § 101.
2. Claim 7 and 201 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
3. Claims 1-6, 9-13, 15, 17, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Keane.
4. Claims 7, 8 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Keane and Official Notice.
5. Claims 14, 16, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Keane and AAPA.

THE ISSUES
With regards to the rejection under 35 U.S.C. § 101 the issue turns on
whether the claim is directed to an abstract idea.
With regards to the rejections under 35 U.S.C. § 112, second
paragraph, as being indefinite, the issue for each respective claim turns on
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.”

1 The Examiner’s Answer indicates that the rejection of claim 19 under 35
U.S.C. § 112, second paragraph has been withdrawn (Ans. 2-3).
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With regards to the rejections under 35 U.S.C. § 103(a) the issue for
each respective claim turns on whether the Appellant has shown the prior art
does not disclose the argued claim limitations or if the argued combinations
would have been obvious.

FINDINGS OF FACT
We adopt the Examiners findings of fact (FF) provided at page 6,
lines 5-9, of the Examiner’s Answer. Additional facts supported at least by a
preponderance of the evidence2 may be included in the Analysis section
below.

ANALYSIS
Rejections under 35 U.S.C. § 101
The Examiner has rejected claim 1 under 35 U.S.C. § 101 as failing
the “machine-or-transformation test” (Ans. 3).
In contrast, the Appellant has argued that this rejection is improper
(Reply Br. 2-3).
We agree with the Appellant. The machine-or-transformation test is
not the sole test for deciding whether an invention is a patent-eligible
“process.” Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010). Claim 1 is not
directed to a mere abstract idea but requires “providing [a] user account
initiation interface” and “fulfillment of an occupational prescription eyewear
order” which are not abstract ideas or insignificant post solution activity in

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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the scope of the claim. For this reason the rejection of claim 1 and its
dependent claims under 35 U.S.C. § 101 is not sustained.

Rejections under 35 U.S.C. § 112, second paragraph
The Examiner has rejected claim 7 under 35 U.S.C. § 112, second
paragraph as being indefinite. The Examiner has determined that it is
unclear what is meant by the claim limitations and that there is insufficient
antecedent basis for the phrase “eyewear options” (Ans. 5).
In contrast, the Appellant has argued that this rejection is improper
and the scope of the claim is clear (App. Br. 5). We agree with the
Appellant. The test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted). Here, those skilled in the art would understand what is
claimed and what the term “eyewear options” referred to when the claim is
read in light of, for example, Fig. 6 and paragraph [0025] of the
Specification. For this reason the rejections of claims 7 and 20 under 35
U.S.C. § 112, second paragraph are not sustained.

Rejections under 35 U.S.C. § 103(a)
Claims 1-6, 9, 11-13, 15, 17, and 19
The Examiner has rejected claim 1 under 35 U.S.C. § 103 (a) over
Keane (Ans. 6).
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In contrast, the Appellant has argued that this rejection is improper
because in Keane a professional (an Eye Care Professional) and not a “user”
pre-selects the components of the eyewear (App. Br. 6).
We agree with the Examiner. We begin with claim construction.
The Specification at [0026] states that for example an “individual or
company” may request the prescription fill. Thus, we determine that the
word “user” in claim 1 is not limited to just an individual consumer. Keane
in Fig. 3-6 and Col. 9:30-54 discloses a user interface providing a
prescription form to a “user”. Fulfillment of the eyeglasses would require
both receiving the selection of the eyewear components and receipt of the
completed prescription form. The argued limitations are shown in the Keane
reference and the rejection of claim 1 is therefore sustained. The eyewear
may be considered “occupational eyewear” in Keane since it may be worn in
many occupations. With regard to claim 2, the user interface and selection
screen is shown in Fig. 4A of Keane and the rejection of this claim is
sustained as well.
Claim 9 is directed to an informative popup which is shown in the
prior art Figure 4A of Keane for instance. The particular information
contained in the informative popup is considered non-functional descriptive
material and not a limitation to the claim. For this reason the rejection of
claim 9, and claim 19 which is similar, is sustained. The Appellant has not
argued claims 3-6, 11-13, 15, and 17 separately and the rejection of these
claims is sustained for the same reasons given above.

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Claim 10
Claim 10 requires in part that the prescription “is provided as a
custom form based on the user account information” and the Appellant
argues this is not shown in Keane (App. Br. 7). The Examiner has asserted
this is shown in Keane at Col. 15:10-14 and 17:1-18 (Ans. 7). We agree
with the Appellant that Keane does not show this claim limitation at Col.
15:10-14 and 17:1-18 and the rejection of record is therefore not sustained.
While Keane at Col. 15:10-14 does state that a user may use an archived
form or create a new form this is based on the user’s selection and not the
claimed “account information”.

Claims 7-8 and 20
The Appellant has argued that the rejection of claims 7-8 and 20 is
improper because there is no motivation to combine Keane with “references
teaching dynamic price adjustment” (App. Br. 7-8). In contrast, the
Examiner has determined that dynamic price adjustment for components was
well known and the combination of references is proper. We agree with the
Examiner. The use of dynamic price adjustment is well known in the
computer arts to let the consumer see a running tab of the price as selections
are made and the use of such systems with Keane is considered an obvious
combination of familiar elements to yield the predictable benefit of
providing such a running tab. For this reason the rejection of claims 7-8 and
20 is sustained. The Appellant has argued that the eyewear professional
would already know what the patients wanted (App. Br. 8) but given the
large selection of eyewear product prices to keep track of such a running tab
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would be beneficial and allow the running price to be quickly displayed so
the consumer could know the price.

Claims 14, 16, and 18
The Appellant has further argued that the rejection of claims 14, 16,
and 18 is improper (App. Br. 8-9) and provides largely the same arguments
as provided for claim 1 above. With regards to claim 16 the Appellant
argues that Keane does not need billing verification (App. Br. 8). In
contrast, the Examiner has determined that the rejection of these claims is
proper (Ans. 9-10).
We agree with the Examiner. The arguments presented for claims 14,
16, and 18 are largely addressed in regard to claim 1 above. We disagree
with the Appellant’s assertion that in Keane billing verification would not be
needed. In Keane’s system, payment is still being received and billing
verification would provide the benefit of reducing fraud. The rejection of
claim 16 is sustained. We adopt the Examiner’s analysis set forth at pages
9-10 of the Answer in regard to claims 14 and 18 as well and the rejection of
record of claims 14, 16, and 18 is sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting : Claims 1-17 under 35 U.S.C. § 101; Claims 7 and 20 under 35
U.S.C. § 112, second paragraph, as being indefinite; claims 1-6, 9, 11-13,
15, 17, and 19 under 35 U.S.C. § 103(a) as unpatentable over Keane; Claims
7-8 and 20 under 35 U.S.C. § 103(a) as unpatentable over Keane and
Official Notice; and Claims 14, 16, and 18 under 35 U.S.C. § 103(a) as
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unpatentable over Keane and AAPA. We conclude that Appellant has shown
that the Examiner erred in rejecting: claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Keane.

DECISION
The Examiner’s rejection of claim 10 is reversed. The Examiner’s
rejection of claims 1-9 and 11-20 is sustained.

AFFIRMED-IN-PART

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