Ex Parte Lutnick

Patent Trial and Appeal Board

Sep 19, 2016

13358192 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/358, 192 01125/2012
63710 7590 09/21/2016
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Howard W. LUTNICK
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
07-2179-C2 6053
EXAMINER
YEN,SYLING
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
09/21/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOW ARD W. LUTNICK
Appeal2015-005914
Application 13/358, 192
Technology Center 2100
Before JEREMY J. CURCURI, JOSEPH P. LENTIVECH, and JOHN R.
KENNY, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-33. Final Act. 1. We have jurisdiction under 35
U.S.C. § 6(b).
Claims 27 and 30 are rejected under 35 U.S.C. § 112, second
paragraph. Final Act. 2.
Claims 1-28 and 30-33 are rejected under 35 U.S.C. § 102(b) as
anticipated by Sutcliffe (US 2006/0069620 Al; Mar. 30, 2006). Final Act.
3-25.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as obvious over
Sutcliffe and Woycik et al. (US 2007/0265935 Al; Nov. 15, 2007). Final
Act. 25-26.
We affirm-in-part.
Appeal2015-005914
Application 13/358, 192
STATEMENT OF THE CASE
Appellant's invention relates to "generating representations of
information." Abstract. Claim 1 is illustrative and reproduced below:
1. A apparatus comprising:
a computing device; and
a non-transitory storage medium having instructions
stored thereon, that when executed by the computing device,
cause the apparatus to:
receive first menu content for a first merchant from a first
user of a referral or delivery service;
in response to receiving the first menu content from the
first user, associate the first menu content with a first menu of
items for sale by the merchant;
transmit a first representation of the first menu that
includes the first menu content over an electronic
communication network to a second user of the referral or
delivery service;
receive second menu content for the first merchant from
the second user after transmitting the first representation to the
second user;
in response to receiving the second menu content,
associate the second menu content with the first menu and
maintain the association of the first menu content with the first
menu;
transmit a second representation of the first menu that
includes the first menu content and the second menu content
over an electronic communication network to a third user of the
referral or delivery service after receiving the second menu
content;
receive, from the third user, a selection of items for
delivery from the first merchant; and
facilitate delivery of the items from the first merchant to
the third user.
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Application 13/358, 192
ANALYSIS
THE REJECTION OF CLAIMS 27 AND 30 UNDER 35 U.S.C. § 112, SECOND
PARAGRAPH
Appellant does not present any arguments with respect to this
rejection. See App. Br. 6.
We, therefore, sustain the Examiner's rejection of claims 27 and 30.
THE ANTICIPATION REJECTION OF CLAIMS 1-28 AND 30-33 OVER SUTCLIFFE
The Examiner finds Sutcliffe describes all limitations of claim 1.
Final Act. 3-8.
The Examiner finds Sutcliffe' s representative of the broker receiving
menu information from the restaurant describes the recited (claim 1)
"transmit a first representation of the first menu that includes the first menu
content over an electronic communication network to a second user of the
referral or delivery service." Final Act. 4 (citing Sutcliffe i-f 82).
The Examiner further finds:
as the Broker Web Server [is] used by the representative of the
broker to process the received menu information, the menu
information is received by the Broker Web Server from a
communication network, such as Internet 606, as indicated in
Figs. 3 & 6 how restaurants and Broker Web Server
communicate each other.
Ans. 10.
The Examiner finds Sutcliffe' s hotel guest accessing a menu system
by telephone for a services directory discloses the recited (claim 1) "transmit
a second representation of the first menu that includes the first menu content
and the second menu content over an electronic communication network to a
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Application 13/358, 192
third user of the referral or delivery service after receiving the second menu
content." Final Act. 5---6 (citing Sutcliffe i-fi-1 3 6, 88-89).
The Examiner further finds:
The hotel guest can navigate forward through the menu systems
to order menu item(s) from the menu system. By navigating
forward through the menu systems, the repackaged menu is
transmitted to the hotel guest through the telephone network in
order for hotel guest to order menu item( s) from the menu
system. The telephone network is clearly a electronic
communication network.
Ans. 13-14.
Appellant, among other arguments, presents the following principal
arguments:
1. "[T]he Examiner cites [] paragraph[] 82 and figure 14 of
Sutcliffe [] that do not even mention any actions by a broker web server or
transmitting anything from a server over an electronic communication
network to a user of a referral or delivery service." App. Br. 10; see also
Reply Br. 4 ("The only references to a broker web server is an image of that
server in figure 6 without any description of what the server does or how it
does those things.").
11. "[T]his portion [(Sutcliffe, i-fi-136, 88-89)] discusses a call being
made and does not teach any information being transmitted by any broker
web server at all." App. Br. 11; see also Reply Br. 5 ("the Examiner's
Answer ignores the correspondence established in rejecting prior limitations
of the claim that identify the broker web server performing the claimed
actions.").
Regarding (i), we find the Examiner erred in finding Sutcliffe
describes the recited (claim 1) "transmit a first representation of the first
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Appeal2015-005914
Application 13/358, 192
menu that includes the first menu content over an electronic communication
network to a second user of the referral or delivery service."
Sutcliffe (i-f 82) discloses:
Generally, the process 1400 [in Figure 14] requires a
representative of the broker 110 to receive menu information
from the restaurant 104 associated with that menu 700. As part
of this information, the restaurant 104 approves a stock
photograph for each section of the menu 700 and/or a digital
photograph is taken of one or more actual food items produced
by the restaurant 104.
Thus, Sutcliffe (i-f 82) does not describe transmitting menu information
over an electronic communication network to a representative of the broker.
Rather, this portion of Sutcliffe suggests an in-person meeting. The
Examiner's Answer attempts to correct this deficiency, referring to broker
web server 604 in Sutcliffe, Figure 6; however, Sutcliffe (i-f 61) describes a
call center operator gathering information from a caller, which is stored in
broker database 608, with broker web server 604 receiving form-based
inputs and serving pages to the call center workstation. Thus, the broker
web server does not transmit menu information over an electronic
communication network to a representative of the broker.
Regarding (ii), we find the Examiner erred in finding Sutcliffe
discloses the recited (claim 1) "transmit a second representation of the first
menu that includes the first menu content and the second menu content over
an electronic communication network to a third user of the referral or
delivery service after receiving the second menu content."
As discussed above, the Examiner's Answer refers to broker web
server 604 in Sutcliffe, Figure 6, and Sutcliffe (i-f 61) describes broker web
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Application 13/358, 192
server 604 receiving form-based inputs and serving pages to the call center
workstation.
Thus, even if we assume Sutcliffe' s hotel guest accessing a menu
system by telephone for a services directory constitutes transmitting menu
content to the hotel guest, we do not see how, and the Examiner has not
established how, this transmitting is caused by Sutcliffe 's broker web server
604.
We, therefore, do not sustain the Examiner's rejection based on
Sutcliffe of claim 1, or of claims 2-15, 26-28, and 30, which depend from
claim 1.
We also do not sustain the Examiner's rejection based on Sutcliffe of
independent claim 16, which recites "transmitting , by the computing device,
a first representation of the first menu that includes the first menu content
over an electronic communication network to a second user of the referral or
delivery service" and "transmitting, by the computing device, a second
representation of the first menu that includes the first menu content and the
second menu content over an electronic communication network to a third
user of the referral or delivery service after receiving the second menu
content," or of claims 17-25, and 31-33, which depend from claim 16.
THE OBVIOUSNESS REJECTION OF CLAIM 29 OVER SUTCLIFFE AND W OYCIK
The Examiner does not find W oycik overcomes the deficiencies of
Sutcliffe discussed above. See Final Act. 25-26; Ans. 24.
We, therefore, do not sustain the Examiner's rejection based on
Sutcliffe and Woycik of claim 29.
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Application 13/358, 192
DECISION
The Examiner's decision rejecting claims 27 and 30 is affirmed.
The Examiner's decision rejecting claims 1-26, 28, 29, and 31-33 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED-IN-PART
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