Ex Parte Klinger et alDownload PDFPatent Trial and Appeal BoardMay 19, 201612459447 (P.T.A.B. May. 19, 2016) Copy Citation 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. Appeal 2013-008529 Application 12/459,447 2 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. Appeal 2013-008529 Application 12/459,447 3 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. Appeal 2013-008529 Application 12/459,447 4 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. Appeal 2013-008529 Application 12/459,447 5 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 Appeal 2013-008529 Application 12/459,447 6 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 Appeal 2013-008529 Application 12/459,447 7 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 Appeal 2013-008529 Application 12/459,447 8 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 Copy with citationCopy as parenthetical citation