Ex parte Lewine

Board of Patent Appeals and Interferences

May 2, 2000

08432610 (B.P.A.I. May. 2, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DONALD A. LEWINE
____________
Appeal No. 1997-1354
Application No. 08/432,610
____________
ON BRIEF
____________
Before KRASS, FLEMING, and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL

2
This is a decision on appeal from the final rejection of
claims 1 through 12, all claims pending in this application.
The invention relates to performing retail client/server
transactions on the internet using the HyperText Transfer
Protocol (HTTP). According to the Appellant, it is not
possible
Appeal No. 1997-1354
Application No. 08/432,610
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to carry on a dialog using the HTTP protocol because there is
no history of previous transactions. Most people attempting
to sell products using the World-Wide Web put up with the
limitations of HTTP and require the user to enter a name,
address, and credit card number for every item bought. The
current invention extends the capabilities of the HTTP
protocol to allow a user to identify himself and create a
session, he can then conduct transactions during that session
without identifying himself again.
Representative independent claims 1 is reproduced as
follows:
1. A method for ordering goods or services from
a store on the world wide web where said store is
implemented using a server computer having:
(a) the capability of being accessed by a
plurality of users each said user having a
browser;
(b) a plurality of user profile records, one or more
unprotected pages, and one or more protected pages;
(c) a unique first username associated with each
said profile record;
(d) a first password associated with each profile
record; and
(e) the capability of at least one of said users
accessing at least one of said unprotected
pages without supplying a user-name or password;
said method of associating one of said users with one of
said profile records comprising:
(i) allowing said user to attempt to access one of
said protected pages using the http GET method;
Appeal No. 1997-1354
Application No. 08/432,610
In paragraph 17 of the final rejection, claims 1-7 are1
recited as subject to this rejection. However, paragraph 17
continues by referring to claims 1-12 as does the Examiner’s
Answer.
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(ii) returning an ACCESS DENIED code in response to
said attempt;
(iii) said ACCESS DENIED code causing said user’s
browser to ask said user for a second username and a
second password and to transmit said second username
and said second password to said server computer in
the http authorization header; and
(iv) locating one of said user profile records such
that said second username and said second password
match the first username and first password
associated with said stored user profile.
The references relied on by the Examiner are as follows:
Dworkin 4,992,940 Feb. 12,
1991
Lawlor et al. (Lawlor) 5,220,501 Jun. 15,
1993
King, Jr. et al. (King, Jr.) 5,319,542 Jun.
7, 1994
Relevant protocols, Webmaster@w3.org, (Date unknown, but at
least March 1993)
Claims 1 through 12 stand rejected under 35 U.S.C. § 112,
second paragraph. 1
Claims 1 through 12 stand further rejected under 35
U.S.C.
Appeal No. 1997-1354
Application No. 08/432,610
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§ 103 as being unpatentable over Dworkin in view of King,
Lawlor and Relevant Protocols.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief and the answer for
the details thereof.
Appeal No. 1997-1354
Application No. 08/432,610
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OPINION
After a careful review of the evidence before us, we will
not sustain the rejection of claims 1 through 12 under 35
U.S.C. § 112, second paragraph (as expressed by the Examiner),
nor under 35 U.S.C. § 103.
The Examiner maintains that the claims are indefinite for
attempting to claim an apparatus in combination with a method
(answer-page 3), that hybrid claims are not permitted, and a
claim must include only one of the four statutory classes of
invention (final rejection-page 2). We do not agree with the
Examiner. A claim is not limited to only one statutory class
of invention as long as one of ordinary skill in the art can
understand that which Appellant is claiming. Also, Appellant
has amended all claims to be directed to a method, thus we
find no combination of statutory classes in the claimed
invention. We note however, although claim 1 is a method
claim, it appears to include a method within a method, i.e., a
method of associating user profile records within a method for
ordering goods or services. This too, is not fatal to the
patentability of a claim if one can understand the scope of
claimed invention. Thus, we will not sustain the Examiner’s
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Application No. 08/432,610
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35 U.S.C. § 112, second paragraph, rejection since it is
unsupported by the Examiner’s reasons.
On the outset, we must initially ascertain the scope of
Appellant’s claims 1 through 12. Analysis of 35 U.S.C. § 112,
second paragraph, should begin with the determination of
whether claims set out and circumscribe the particular area
with a reasonable degree of precision and particularity; it is
here where definiteness of the language must be analyzed, not
in a vacuum, but always in light of teachings of the
disclosure as it would be interpreted by one possessing
ordinary skill in the art. In re Johnson, 558 F.2d 1008,
1016, 194 USPQ 187, 194 (CCPA 1977). As discussed infra in
the new ground of rejection of claims 1 through 12, we
conclude that the claims fail to set forth the invention with
a reasonable degree of precision and particularity as required
under 35 U.S.C. § 112, second paragraph. As a result, we
cannot rule on whether the claims are unpatentable under 35
U.S.C. § 103 over the references of record. A prior art
rejection cannot be sustained if what is required is
speculation and assumptions as to the scope of the claims. In
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Application No. 08/432,610
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re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
Thus, we will not sustain the rejection of claims 1 through 12
under 35 U.S.C. § 103.
Appeal No. 1997-1354
Application No. 08/432,610
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NEW GROUND OF REJECTION
Pursuant to the provisions of 37 CFR § 1.196(b), we
hereby enter the following new rejection.
Claims 1 through 12 are rejected under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and
distinctly claim the subject matter which the Appellant
regards as the invention.
Appellant’s claim 1, section (iii) recites that the
user’s browser is caused to ask for a second username and a
second password, and to transmit these in the http
authorization header. First, we cannot find any explanation
in the claims or specification as to how this is caused. Do
all browsers automatically ask for a username and password
when access is denied? Second, what is the second username
and password, is it the same (or can it be the same) or
different than the first username and password? We find no
explanation in the specification of a second username and
second password. Third, does the second username and password
automatically get transmitted in the http header, does the
first username and
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Application No. 08/432,610
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password previously in the hppt header automatically get
replaced, and if so, how did the first username and password
get in the hppt header to begin with?
With respect to claim 1 section (iv), how is the match
performed? We find no explanation in the specification. Are
the first username and password the same as the second
username and password, thus the match? If not the same, how
is the match accomplished?
With respect to claim 8 section (i), is the hppt GET
method inherent in the hppt protocol? We see nothing in the
specification with respect to the hppt GET method, although it
is recited in Appendix A. Looking at claim 8 section (iii),
we find the same ambiguities with causing, second username and
hppt header as we did with those recited in claim 1.
Similarly, we do not understand what is being claimed with the
match of claim 8 section (iv). We note that all the
indefiniteness associated with independent claims 1 and 8
supra necessarily extends to their dependent claims.
As a minor issue, we find antecedent problems with "said
method of associating" in claim 1, and "said second plurality
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of users" in claim 9 when "a second user" was recited in claim
8.
We also note that due to the difficulty in determining
exactly what is being claimed, it cannot be determined if
sufficient support exists in the specification.
Thus, we find claims 1 through 12 fail to particularly
point out and distinctly claim the subject matter which the
Appellant regards as the invention.
DECISION
The Examiner’s decision rejecting claims 1 through 12
under 35 U.S.C. § 112, second paragraph, is unconvincing as
presented and is reversed. The Examiner’s decision rejecting
claims 1 through 12 under 35 U.S.C. § 103 is reversed because
we are not able to apply the references of record to the
indefinitely claimed invention. A new ground of rejection of
claims 1 through 12 under 35 U.S.C. § 112, second paragraph,
is entered under
37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
Appeal No. 1997-1354
Application No. 08/432,610
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rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
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Application No. 08/432,610
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37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so
rejected or a showing of facts relating to the claims so
rejected, or both, and have the matter reconsidered by
the examiner, in which event the application will be
remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
SNH/sld
Appeal No. 1997-1354
Application No. 08/432,610
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DONALD A. LEWINE
40 MACLEAN DRIVE
SUDBURY, MA 01776
Shereece
Appeal No. 1997-1354
Application No. 08/432,610
APJ KRASS
APJ FLEMING
APJ HECKER
REVERSED
Prepared: June 22, 2001