Ex Parte Klinger et al

Patent Trial and Appeal Board

May 19, 2016

12459447 (P.T.A.B. May. 19, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/459,447 06/30/2009 Theresa Klinger 1109 2246
82318 7590 05/19/2016
Brian R. Galvin
Galvin Patent Law LLC
2916 NW Bucklin Hill Road
Suite 485
SILVERDALE, WA 98383
EXAMINER
CRAWLEY, TALIA F
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
05/19/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THERESA KLINGER and ARIEL WADA
____________

Appeal 2013-008529
Application 12/459,4471
Technology Center 3600
____________

Before HUBERT C. LORIN, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–6. Appeal Br. 4. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 According to the Appellants, the real parties in interest are the named
inventors. Appeal Br. 2.
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ILLUSTRATIVE CLAIM
1. An e-commerce system, comprising:
an endorsement network comprising a plurality of online
user-generated endorsements of products or services created
and managed by end users independently of any providers of
the products or services, the endorsements embedded in or
located with user-generated content online;
a clone server coupled via a data network to the
endorsement network; and
a shopping cart coupled via a data network to the
endorsement network and adapted to manage user-generated
endorsements;
wherein the clone server, upon receiving a request from a
user of an endorsement network to clone an user-generated
endorsement, retrieves from the shopping cart a copy of the
endorsement to be cloned, replaces at least information
pertaining to an identity of a prior endorser in the retrieved
endorsement with information pertaining to the requesting user,
and sends the modified endorsement to the requesting user.
CITED REFERENCES
The Examiner relies upon the following references:2
Lapstun et al. US 2004/0199414 A1 Oct. 7, 2004
(hereinafter “Lapstun”)
Leventhal et al. US 2008/0255934 A1 Oct. 16, 2008
(hereinafter “Leventhal”)
REJECTIONS
I. Claims 1–6 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. Final Action
7–8.

2 The Final Action also refers to a “Long et al.” reference, which is not
otherwise identified. Final Action 13.
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II. Claims 1, 2, 4 and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Leventhal in view of Official Notice. Final Action 9–12.
III. Claims 3 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Leventhal in view of Lapstun. Final Action 12–14.
FINDINGS OF FACT
We rely upon and adopt the Examiner’s findings stated in the Final
Action and in the Answer.3 Additional findings of fact may appear in the
Analysis below.
ANALYSIS
Each of the Appellants’ arguments concerns all the pending claims;
thus, claim 1 is selected for discussion herein. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Rejection I
The Examiner finds that claim 1 fails to meet the written description
requirement of 35 U.S.C. § 112, first paragraph, because the “independently
of any providers of the products or services” feature of claim 1 was not
described in the Specification so as to convey, to one of reasonable skill in
the art, that the Appellants had possession of the claimed invention. Final
Action 7–8. The relevant portion of claim 1 recites:
an endorsement network comprising a plurality of online user-
generated endorsements of products or services created and
managed by end users independently of any providers of the
products or services, the endorsements embedded in or located
with user-generated content online.
Appeal Br. 11, Claims App. (emphasis added).

3 The instant decision relies upon the Examiner’s Answer dated February 11,
2013.
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According to the Examiner, the identified claim limitation contradicts
the Specification because the alleged invention allows end users to display
(e.g., on their websites), as part of their endorsements of particular products
or services, advertisements from the providers of those products or services;
thus, the endorsements are not created “independently of any providers of
the products or services.” See Final Action 8; see also Answer 6–7.
The Appellants allege that the Examiner erred. First, the Appellants
contend that the Examiner failed to appreciate that “the ‘independence’
required is from the provider of the products or services being endorsed, not
from the creator of the user-generated content.” Appeal Br. 5. Yet, the
Examiner suffered from no misapprehension in this regard. See Final Action
8 (explaining that “said endorsement is not independent of any providers of
products or services.”)
In addition, the Appellants argue that claim 1 merely requires
endorsing users to create and manage endorsements “without any
involvement on the part of the provider of the products or services being
endorsed,” which is allegedly shown in the Specification. Appeal Br. 5
(citing Spec. 17, l. 22–18, l. 6). Yet, the Specification is at odds with the
Appellants’ contention. Although the Specification says that “it should be
clear that among the key benefits of the instant invention is the fact that it is
the users who self-select by choosing what products to promote,” the
Specification also states:
By making demographic and other information about who
might find the product most useful, merchants are not so much
targeting a market segment as they are advising those who self-
select the market segment.
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Spec. 18, ll. 4–6, 8–10. With “merchants” providing information and,
thereby, “advising” the would-be endorsing users, the Specification
contradicts the Appellants’ characterization thereof, as showing endorsing
users to creating and managing endorsements “without any involvement”
from product providers. See Appeal Br. 5.
Therefore, the Appellants’ argument that claim 1 complies with the
written description requirement of 35 U.S.C. § 112, first paragraph, is not
persuasive. The rejection of claim 1 on this ground is sustained. Because
this rejection also applies to claims 2–6, the rejection of those claims for
failing to comply with 35 U.S.C. § 112, first paragraph, is also sustained.
Rejection II
As explained below, the Appellants’ arguments about alleged
deficiencies of the prior art relied upon by the Examiner are not persuasive.
Accordingly, the rejection of claim 1 under 35 U.S.C. § 103(a) is sustained.
Because this rejection also applies to claims 2–6, the rejection of those
claims under 35 U.S.C. § 103 is also sustained.
Whether Leventhal discloses an “endorsement network”
The Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) as obvious over Leventhal in view of Official
Notice, because Leventhal allegedly fails to show an “endorsement
network.” Appeal Br. 5–8.
The Appellants explain that the invention permits a user to “create an
endorsement of a product and to insert it into an item of online content that
the user can then place in any location under the user’s control,” whereas
Leventhal — although it discloses a technique for propagating product
recommendations — purportedly does not. Appeal Br. 7. Thus, according
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to the Appellants, Leventhal fails to show an “endorsement network”
because Leventhal’s system does not meet the claim limitation specifically
reciting “the endorsements embedded in or located with user-generated
content online.” Appeal Br. 11, Claims App.
Yet, as the Examiner finds, Leventhal teaches that “a user may find a
particular product on a website and may recommend that product to
prospective users by sending an email related to the product, or by posting
information, a story, or an opinion about the product on their website or
blog,” i.e., having endorsements located with user-generated content online.
Answer 7 (citing Leventhal ¶ 14); see also Final Action 2 (citing Leventhal
¶ 2). Therefore, Leventhal discloses the claimed features that the Appellants
contend to be lacking therein.
Accordingly, the Appellants’ arguments on this ground of appeal are
not persuasive.
Whether the Prior Art Teaches a “shopping cart”
The Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) as obvious over Leventhal in view of Official
Notice, because the Appellants object to the reliance upon Official Notice
and because Leventhal fails to disclose the claimed “shopping cart.” Appeal
Br. 8–10.
The Examiner finds that “a shopping cart is implicit within the
disclosure of the prior art,” and further finds that the “limitation was
explicitly disclosed within the reference, and Official Notice to the usage of
universal shopping carts was well known at the time of invention.” Final
Action 7; see also id. at 10–11. The Examiner thus finds that “the shopping
cart can be provided by the service provider or third party server, as taught
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by the prior art” (id. at 10 (citing Leventhal ¶ 17)), such that it would have
been obvious to modify Leventhal to provide for a shopping cart, in order to
allow users to store potential endorsements before cloning or purchase (id. at
11).
The Appellants’ arguments that Leventhal does not teach a shopping
cart (see Appeal Br. 8–10) are unpersuasive at least because they are
arguments against the prior art Leventhal individually, whereas the
Examiner relies on the combination of Leventhal with the Official Notice to
teach the limitations of the claim. See Final Act. 9–11; see also Answer 10–
11. The test for obviousness is not what any one reference would have
suggested, but rather what the combined teachings of the references would
have suggested to those of ordinary skill in the art. See In re Keller, 642
F.2d 413, 426 (CCPA 1981). “[O]ne cannot show non-obviousness by
attacking references individually were, as here, the rejections are based on
combinations of the references.” Id. The Appellants do not dispute the
Examiner’s Official Notice finding; in fact they agree with it: “[The
Appellants] concede that shopping carts in general were well-known in the
art, since ecommerce had been underway for years before either of
Leventhal or the [Appellants’] inventions were disclosed.” Appeal Br. 8.
Furthermore, the Appellants’ arguments about the alleged deficiencies
of Leventhal (see Appeal Br. 8–9) are unpersuasive because they are not
commensurate with the scope of the claim. The claim does not require that a
“shopping cart” that be used “to potentially buy several different products”
or “to store a plurality of products for possible purchase, adding or dropping
products as desired until a purchase decision is made.” Id. at 8. Claim 1
further does not require that “the actual purchase transaction is carried out
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by the seller of the product advertised, rather than by the service provider
that hosts the active advertising object.” Id. at 8–9.
The Appellants’ argument that Leventhal does not teach a “shopping
cart” that is “adapted to manage user-generated endorsements” per claim 1,
because Leventhal does not teach or suggest “user-generated endorsements”
(id. at 9–10), is also unpersuasive. The Appellants neither explain the basis
for these alleged deficiencies, nor address the Examiner’s explanation of
why it would have been obvious to modify Leventhal to provide the
“shopping cart” as claimed (see Final Action 10–11). Further, Leventhal
teaches the “user-generated endorsements” of claim 1, per the above
discussion of the claimed “endorsement network.”
Accordingly, the Appellants’ arguments on this ground of appeal are
not persuasive.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–6 for failing
to comply with the written description requirement of 35 U.S.C. § 112, first
paragraph.
We AFFIRM the Examiner’s decision rejecting claims 1–6 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).

AFFIRMED