Ex Parte Kumhyr

Board of Patent Appeals and Interferences

Nov 6, 2009

10636982 (B.P.A.I. Nov. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte DAVID BRUCE KUMHYR 8
___________ 9
10
Appeal 2009-007158 11
Application 10/636,982 12
Technology Center 3600 13
___________ 14
15
Decided: November 6, 2009 16
___________ 17
18
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
Appeal 2009-007158
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STATEMENT OF THE CASE 1
David Bruce Kumhyr (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1, 4, 6, 7, 9-13, 16-18, and 20-22, the 3
only claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a method, apparatus, and program for 10
catching product mismatches at the point of sale (Specification 1). 11
An understanding of the invention can be derived from a reading of 12
exemplary claims 1 and 12, which are reproduced below [bracketed matter 13
and some paragraphing added]. 14
1. A method, in a data processing system, for detecting item 15
mismatch, the method comprising: 16
[1] identifying a first item to be purchased by a user and 17
identifying a second item to be purchased by the user, wherein 18

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.”, filed October 15, 2008) and the Examiner’s Answer (“Ans.”, mailed
December 26, 2008), and Final Rejection (“Final Rej.”, mailed June 11,
2008).
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the first item to be purchased and the second item to be 1
purchased have associated product information; 2
[2] determining whether the first item to be purchased is a 3
mismatch of the second item to be purchased based on the 4
product information; 5
[3] responsive to determining that the first item to be 6
purchased is a mismatch of the second item to be purchased: 7
[a] notifying the user that the first item to be 8
purchased is a mismatch of the second item to be 9
purchased; 10
[b] determining whether the second item to be 11
purchased has a first match list of items; and 12
[c] responsive to determining that the second item to 13
be purchased has a first match list of items, 14
[d] suggesting a first matching item to the user from 15
the first match list of items and providing location 16
information for the first matching item to the user; and 17
[4] responsive to determining that the first item to be 18
purchased is not a mismatch of the second item to be 19
purchased, or responsive to determining that the second item to 20
be purchased does not have a first match list of items: 21
[a] determining whether the second item to be 22
purchased is a mismatch of the first item to be purchased 23
based on the product information; and 24
[b] responsive to determining that the second item to 25
be purchased is a mismatch of the first item to be 26
purchased: 27
[i] notifying the user that the second item to be 28
purchased is a mismatch of the first item to be 29
purchased; 30
[ii] determining whether the first item to be 31
purchased has a second match list of items; and 32
[iii] responsive to determining that the first item 33
to be purchased has a second match list of items, 34
suggesting a second matching item to the user 35
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from the second match list of items and providing 1
location information for the second matching item 2
to the user. 3
4
12. The method of claim 1, wherein determining whether the 5
first item is a mismatch of the second item includes: 6
[1] determining whether the first item is within a sphere of 7
influence of the second item; and 8
[2] responsive to the first item being within a sphere of 9
influence of the second item, comparing product information of 10
the first item with product information of the second item, and 11
wherein determining whether the second item is a mismatch of 12
the first item includes: 13
[a] determining whether the second item is within a 14
sphere of influence of the first item; and 15
[b] responsive to the second item being within a 16
sphere of influence of the first item, comparing product 17
information of the second item with product information 18
of the first item. 19
20
THE REJECTIONS 21
The Examiner relies upon the following prior art: 22
Bieganski et al. US 6,412,012 B1 Jun. 25, 2002

Claims 1, 4, 6, 7, and 9-12 stand rejected under 35 U.S.C. § 101 for 23
failing to claim patentable subject matter. 24
Claims 1, 4, 6, 7, 9-13, 16-18, and 20-22 stand rejected under 35 25
U.S.C. § 103(a) as unpatentable over Bieganski. 26
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ISSUES 1
The pertinent issues to this appeal are: 2
• Whether the Appellant has sustained the burden of showing that the 3
Examiner erred in rejecting claims 1, 4, 6, 7, and 9-12 under 35 4
U.S.C. § 101 for failing to claim patentable subject matter. 5
o This pertinent issue turns on whether the Appellant has waived 6
his arguments towards this rejection. 7
• Whether the Appellant has sustained the burden of showing that the 8
Examiner erred in rejecting claims 1, 4, 6, 7, 9-13, 16-18, and 20-22 9
under 35 U.S.C. § 103(a) as unpatentable over Bieganski. 10
o This pertinent issue turns on whether the Bieganski describes or 11
suggests all of the limitations of claim 1 and the term “sphere of 12
influence” of claim 12. 13
14
FACTS PERTINENT TO THE ISSUES 15
The following enumerated Findings of Fact (FF) are believed to be 16
supported by a preponderance of the evidence. 17
Facts Related to the Prior Art 18
Bieganski 19
01. Bieganski is directed to a collaborative filtering and 20
recommender system (Bieganski 1:35-37). 21
02. The system has a compatibility engine uses historical 22
information, shopping cart information, and recommendation set 23
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information in combination with compatibility rules to determine 1
recommended items for a consumer (Bieganski 7:14-18). Each 2
item has a set of compatibility rules associated to it and these rules 3
define complimentary rules and substitute rules (Bieganski 5:13-4
48). The compatibility process includes the compatibility 5
modifier receiving all of the information sets and applying the 6
compatibility rules in order to render a set of compatibility-7
modified recommendations (Bieganski 10:50-64). 8
03. Compatibility rules include complement rules (where the 9
purchase of one item indicates that a second item is a good 10
complement to the first item) and substitute rules (where the 11
second item is unlikely to be a good companion to the first item) 12
(Bieganski 9:3-15). Both the complement rule and the substitute 13
rule can have bidirectional implication rules that specify a two-14
way relationship (Bieganski 9:16-18). Compatibility rules can 15
further include associated weights or values and priority levels 16
associated to the items (Bieganski 9:63-65 and 10:6-8). User 17
preference data can also be incorporated into determining 18
compatibility matches (Bieganski 18:5-13). 19
04. Bieganski further describes a non-compatibility-aware sales 20
system for a grocery store (Bieganski 17:60-61). The system 21
contains store maps and sales information used in conjunction 22
with a wireless adapter to provide a user with non-compatibility-23
awareness (Bieganski 17:64-66). 24
25
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Facts Related To The Level Of Skill In The Art 1
05. Neither the Examiner nor the Appellant has addressed the level 2
of ordinary skill in the pertinent art of product compatibility and 3
recommendation systems. We will therefore consider the cited 4
prior art as representative of the level of ordinary skill in the art. 5
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 6
[T]he absence of specific findings on the level of skill in the art 7
does not give rise to reversible error "where the prior art itself 8
reflects an appropriate level and a need for testimony is not 9
shown." Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 10
F.2d 158, 163. 11
Facts Related To Secondary Considerations 12
06. There is no evidence on record of secondary considerations of 13
non-obviousness for our consideration. 14
PRINCIPLES OF LAW 15
101 - Bilski 16
The law in the area of patent-eligible subject matter for process claims 17
has recently been clarified by the Federal Circuit, See In re Bilski, 545 F.3d 18
943 (Fed. Cir. 2008) (en banc), petition for cert. filed, 77 USLW 3442 (U.S. 19
Jan. 28, 2009) (No. 08-964). 20
The en banc court in Bilski held that “the machine-or-transformation test, 21
properly applied, is the governing test for determining patent eligibility of a 22
process under § 101.” Id. at 956. The court in Bilski further held, “that 23
inquiry is insufficient to determine whether a claim is patent-eligible under § 24
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101. And it was certainly never intended to supplant the Supreme Court’s 1
test. Therefore, we also conclude that the “useful, concrete and tangible 2
result” inquiry is inadequate and reaffirm that the machine-or-transformation 3
test outlined by the Supreme Court is the proper test to apply.” Id. at 959-4
60. 5
The Supreme Court, however, has enunciated a definitive test to 6
determine whether a process claim is tailored narrowly enough 7
to encompass only a particular application of a fundamental 8
principle rather than to pre-empt the principle itself. A claimed 9
process is surely patent-eligible under § 101 if: (1) it is tied to a 10
particular machine or apparatus, or (2) it transforms a particular 11
article into a different state or thing. See Benson, 409 U.S. at 12
70, 93 S.Ct. 253. 13
Id. at 954. The court explained that “the use of a specific machine or 14
transformation of an article must impose meaningful limits on the 15
claim’s scope to impart patent-eligibility.” (citations omitted) and “the 16
involvement of the machine or transformation in the claimed process 17
must not merely be insignificant extra-solution activity.” Id. at 961-18
62 (citations omitted). 19
The court declined to decide under the machine implementation 20
branch of the inquiry whether or when recitation of a computer suffices to tie 21
a process claim to a particular machine. Id. at 962. As to the transformation 22
branch of the inquiry, however, the court explained that transformation of a 23
particular article into a different state or thing “must be central to the 24
purpose of the claimed process.” Id. As to the meaning of “article,” the court 25
explained that chemical or physical transformation of physical objects or 26
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substances is patent-eligible under § 101. Id. The court also explained that 1
transformation of data is sufficient to render a process patent-eligible if the 2
data represents physical and tangible objects, i.e., transformation of such raw 3
data into a particular visual depiction of a physical object on a display. Id. at 4
962-63. The court further noted that transformation of data is insufficient to 5
render a process patent-eligible if the data does not specify any particular 6
type or nature of data and does not specify how or where the data was 7
obtained or what the data represented. Id. at 962 (citing In re Abele, 684 8
F.2d 902, 909 (CCPA 1982) (process claim of graphically displaying 9
variances of data from average values is not patent-eligible) and In re Meyer, 10
688 F.2d 789, 792-93 (CCPA 1982) (process claim involving undefined 11
“complex system” and indeterminate “factors” drawn from unspecified 12
“testing” is not patent-eligible)). 13
Claim Construction 14
During examination of a patent application, pending claims are 15
given their “broadest reasonable interpretation consistent with the 16
specification. . . .” In re Prater , 415 F.2d 1393, 1404-05 (CCPA 17
1969); See also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 18
1369 (Fed. Cir. 2004). 19
Limitations appearing in the specification but not recited in the claim 20
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 21
1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 22
specification” without importing limitations from the specification into the 23
claims unnecessarily). See also Tex. Digital, 308 F.3d 1200, 1204-05. 24
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Although a patent applicant is entitled to be his or her own 1
lexicographer of patent claim terms, in ex parte prosecution it must be 2
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant 3
must do so by placing such definitions in the specification with sufficient 4
clarity to provide a person of ordinary skill in the art with clear and precise 5
notice of the meaning that is to be construed. See also In re Paulsen, 30 6
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the 7
specific terms used to describe the invention, “this must be done with 8
reasonable clarity, deliberateness, and precision”; where an inventor chooses 9
to give terms uncommon meanings, the inventor must set out any 10
uncommon definition in some manner within the patent disclosure so as to 11
give one of ordinary skill in the art notice of the change). 12
Obviousness 13
A claimed invention is unpatentable if the differences between it and 14
the prior art are “such that the subject matter as a whole would have been 15
obvious at the time the invention was made to a person having ordinary skill 16
in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 17
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 18
In Graham, the Court held that that the obviousness analysis is 19
bottomed on several basic factual inquiries: “[(1)] the scope and content of 20
the prior art are to be determined; [(2)] differences between the prior art and 21
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 22
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 23
U.S. at 406. “The combination of familiar elements according to known 24
methods is likely to be obvious when it does no more than yield predictable 25
results.” Id. at 416. 26
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ANALYSIS 1
Claims 1, 4, 6, 7, and 9-12 rejected under 35 U.S.C. § 101 for failing to 2
claim patentable subject matter 3
This rejection was first raised in the Answer. The Appellant has not 4
argued this rejection in a Reply Brief. We take this as an indication that the 5
Appellant has waived arguments as to this rejection and as such we 6
summarily sustain the Examiner in rejecting claims 1, 4, 6, 7, and 9-12 under 7
35 U.S.C. § 101 for failing to claim patentable subject matter. 8
9
Claims 1, 4, 6, 7, 9-13, 16-18, and 20-22 rejected under 35 U.S.C. 10
103(a) as unpatentable over Bieganski 11
The Appellant first contends that (1) Bieganski fails to describe 12
identifying a first item to be purchased by a user and identifying a second 13
item to be purchased by a user, wherein the first item to be purchased and 14
the second item to be purchased have associated product information, and 15
determining whether the first item to be purchased is a mismatch of the 16
second item to be purchased based on the product information, as per 17
limitations [1] and [2] of claim 1 (App. Br. 16). 18
We disagree with the Appellant. Bieganski describes a product 19
recommendation system where each item has compatibility rules associated 20
to the item (FF 02). These associated compatibility rules are the same as 21
product information associated with the items. The system further 22
incorporates historical, shopping cart, and recommendation set information 23
with the compatibility rules to determine whether a second item is 24
compatible with the first item (FF 02). The compatibility rules include a 25
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substitute rule, which specifically defines when a second item is not 1
compatible with a first item (FF 03). If a first item is not compatible with a 2
second item, it is a mismatch for that item. As such, Bieganski describes 3
items having associated compatibility rules and determining whether a 4
second item is incompatible with a first item and suggests incompatible 5
items are mismatches. 6
The Appellant specifically contends that Bieganski only describes 7
recommending a second item after a first item has been selected (App. Br. 8
16). However, Bieganski makes a determination of whether a second item is 9
incompatible with a first item (FF 02). Since Bieganski is capable of 10
making this incompatibility determination, it suggests that Bieganski can 11
make this determination whether the second item is selected or not. As such, 12
Bieganski does suggest that a determination of compatibility can be made 13
between two items at any point in time. 14
The Appellant further contends that (2) Bieganski fails to describe 15
responsive to determining that the first item to be purchased is a mismatch of 16
the second item to be purchased: notifying the user that the first item to be 17
purchased is a mismatch of the second item to be purchased, as per 18
limitations [3] and [3][a] (App. Br. 16). The Appellant specifically contends 19
that because the Examiner has admitted that Bieganski fails to describe 20
mismatches, Bieganski cannot describe limitations [3] and [3][a] (App. Br. 21
16). 22
We disagree with the Appellant. As discussed supra, Bieganski 23
describes determining whether a second item is incompatible with a first 24
item and a determination of compatibility suggests the ability to determine 25
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whether items are a mismatch. Bieganski further describes rendering a 1
recommendation list to a user based on a compatibility score (FF 02). That 2
is, a user is notified of a list of compatible items suggested by the system. 3
Bieganski further describes the system can provide non-compatibility-aware 4
sales information that provides users with a determination of whether items 5
are non-compatible (FF 04). In other words, the non-compatibility-aware 6
sales system notifies a user on whether a second selected item is non-7
compatible with a first item. As such, Bieganski describes limitations [3] 8
and [3][a]. 9
The Appellant also contends that (3) Bieganski fails to describe 10
determining whether the second item to be purchased has a first match list of 11
items, and responsive to determining that the second item to be purchased 12
has a first match list of items, suggesting a first matching item to the user 13
from the first match list of items and providing location information for the 14
first matching item to the user, as per limitations [3][b], [3][c], and [3][d] 15
(App. Br. 16-17). 16
We disagree with the Appellant. As discussed supra, Bieganski 17
describes rendering a recommendation list set for an item based on a 18
compatibility determination of that item and providing the set to the user. 19
Bieganski further describes maintaining store maps in the system and uses a 20
wireless system to provide a user with recommendations (FF 04). The use 21
of store maps and a wireless system suggests that the recommendations are a 22
based on the user location and the product locations. As such, Bieganski 23
suggests that the product locations are known on the store maps. 24
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The Appellant additionally contends that (4) Bieganski fails to 1
describe responsive to determining that the first item to be purchased is not a 2
mismatch of the second item to be purchased, or responsive to determining 3
that the second item to be purchased does not have a first match list of items: 4
determining whether the second item to be purchased is a mismatch of the 5
first item to be purchased based on the product information; and responsive 6
to determining that the second item to be purchased is a mismatch of the first 7
item to be purchased: notifying the user that the second item to be purchased 8
is a mismatch of the first item to be purchased; determining whether the first 9
item to be purchased has a second match list of items; and responsive to 10
determining that the first item to be purchased has a second matchlist of 11
items, suggesting a second matching item to the user from the second match 12
list of items and providing location information for the second matching 13
item to the user, as required by the entirety of limitation [4] (App. Br. 17-14
18). 15
We disagree with the Appellant. Limitation [4] first requires that the 16
first item is not a mismatch of the second item and then requires in limitation 17
[4][a] that the second item is not a mismatch of the first item. Bieganski 18
specifically describes that compatibility analysis can be done using 19
bidirectional implication rules that specify a two-way relationship between 20
items (FF 03). That is, the analysis that both the first item is incompatible 21
with a second item and the second item is incompatible with a first item is 22
done. As such, Bieganski describes limitations [4] and [4][a] of claim 1. 23
Limitations [4][b][i-iii] recite the same limitations as limitations [3][a-24
d] and are described or suggested by Bieganski for the same reasons 25
discussed supra. 26
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The Appellant also contends that (5) Bieganski fails to describe a 1
“sphere of influence”, as required by claim 12 (App. Br. 19). The Examiner 2
has constructed a “sphere of influence” to mean a bidirectional or 3
multidirectional relationship between two items (Ans. 14 and 26-27). 4
We agree with the Examiner. The Specification is silent as to a 5
special definition for the term “sphere of influence.” We find that the 6
Examiner’s construction of a sphere of influence to mean showing a 7
bidirectional or multidirectional relationship is within its broadest reasonable 8
interpretation. Bieganski describes using bidirectional and multidirectional 9
rules analysis in determining the compatibility of two items, as discussed 10
supra. As such, Bieganski describes claim 12. 11
12
CONCLUSIONS OF LAW 13
The Appellant has not sustained the burden of showing that the 14
Examiner erred in rejecting claims 1, 4, 6, 7, and 9-12 under 35 U.S.C. § 101 15
as failing to claim patentable subject matter. 16
The Appellant has not sustained the burden of showing that the 17
Examiner erred in rejecting claims 1, 4, 6, 7, 9-13, 16-18, and 20-22 under 18
35 U.S.C. § 103(a) as unpatentable over Bieganski. 19
20
DECISION 21
To summarize, our decision is as follows. 22
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• The rejection of claims 1, 4, 6, 7, and 9-12 under 35 U.S.C. § 101 as 1
failing to claim patentable subject matter is sustained. 2
• The rejection of claims 1, 4, 6, 7, 9-13, 16-18, and 20-22 under 35 3
U.S.C. § 103(a) as unpatentable over Bieganski is sustained. 4
5
No time period for taking any subsequent action in connection with 6
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2007). 7
8
AFFIRMED 9
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