09938163 (B.P.A.I. Nov. 28, 2011)

Ex Parte Meiresonne

Board of Patent Appeals and InterferencesNov 28, 2011

09938163 (B.P.A.I. Nov. 28, 2011)

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. 09/938,163 08/23/2001 Michael Meiresonne MEI03 P-300 1287 277 7590 11/28/2011 PRICE HENEVELD LLP 695 KENMOOR SE P O BOX 2567 GRAND RAPIDS, MI 49501 EXAMINER NGUYEN, MERILYN P ART UNIT PAPER NUMBER 2163 MAIL DATE DELIVERY MODE 11/28/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte MICHAEL MEIRESONNE ________________ Appeal 2010-002227 Application 09/938,163 Technology Center 2100 ________________ Before MARC S. HOFF, ELENI MANTIS MERCADER, and BRADLEY W. BAUMEISTER, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002227 Application 09/938,163 2 SUMMARY Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1-12, 14-20, and 22-54: (I) Claims 1-6, 8-12, 14-17, 22-34, 36-46, and 48-54 stand rejected under 35 U.S.C. § 103(a) as obvious over Rebane (US 6,662,192 B1; issued Dec. 9, 2003) in view of Fenton (US 2002/0194151 A1; published Dec. 19, 2002). (II) Claims 7, 18-20, 35, and 47 stand rejected under 35 U.S.C. § 103(a) as obvious over Rebane in view of Fenton and Perkes (US 2002/0194601 A1; published Dec. 19, 2002). We reverse. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection against claims 1, 8, and 10 under 35 U.S.C. § 103(a). STATEMENT OF THE CASE Appellant describes the present invention as follows: The present invention includes a method to identify a supplier of good or services over the Internet by providing a home page with at least one link to a directory Web site for a class of goods or services. The directory Web site includes a directory Web site domain that at least partially describes a class of goods or services. The directory Web site also contains at least one supplier link to a corresponding supplier Web site and a rollover window where the rollover window conveys information about each supplier corresponding to the supplier link when the user’s cursor is placed substantially over the supplier link. The home page and the directory Web site are configured to allow a user to access the home page; select a directory Web site based at least in part on the directory Web site domain name; activate the link to the selected directory Appeal 2010-002227 Application 09/938,163 3 Web site; and select and activate the supplier link for a supplier of goods or services. (Abstract). Independent claim 1 is illustrative: 1. A method to identify a supplier of goods or services over the Internet comprising: accessing a home page having at least one link to a directory Web site for a class of goods or services having a directory Web site address wherein a portion of the directory Web site address describes the class of goods or services for the directory Web site; selecting a class of goods or services having a link to a selected directory Web site corresponding to the selected class of goods or services; activating the link to a selected directory Web site corresponding to the selected class of goods or services, wherein a portion of the directory Web site address of the selected directory Web site defines the selected class of goods or services; and receiving a display of the selected directory Web site, wherein the selected directory Web site contains at least one supplier link to a corresponding supplier’s Web site wherein the corresponding supplier offers the goods or services of the selected class of goods or services and a rollover window that conveys information about a supplier corresponding to the supplier link. All claims stand rejected, in part, over Rebane, which is assigned to the company, BizRate.com®. For example, the Examiner finds that Rebane discloses all but two of the limitations of independent claim 1. Specifically, the Examiner notes, “Fig. 18 [of Rebane] does not show the directory Web site address because [being a figure of a patent,] it’s not an actual website which you can browse” (Ans. 3). The Examiner concludes, though, that “one having ordinary [sic: skill] in the art would have been [sic] recognized Appeal 2010-002227 Application 09/938,163 4 that a portion of the directory web site address describing [a class of goods or services for the directory Web site] would be [sic: have been] shown on the directory address” (id.). To support this conclusion, the Examiner cites a BizRate® Web page accessed during prosecution, http://www.bitzate.com/pda_handheldcomputer/palmone-tungsten-e2-pd- pid304600136/compareprices.html [hereinafter “BizRate® Web page”],1 a directory Web site wherein a portion of the Web site address is found to describe the class of goods or services for the directory Web site (Ans. 3-4). The Examiner also finds that Rebane fails to disclose a rollover window, but that this missing feature is taught by Fenton, and that motivation existed to incorporate this feature into Rebane’s Web site system (Ans. 5). Appellant contends the rejections are improper because, inter alia, (1) the rejections rely on a current Web site address, which does not constitute prior art; (2) it is not necessarily the case that at the time of the invention, at least a portion of a Web site address would have described the class of goods or services for the directory Web site; and, as such, (3) the Examiner has not established a prima facie case of obviousness (App. Br. 21-24). To support the contention that a Web site address would not necessarily have to describe the Web page’s contents, Appellant notes as an example, the Web page http://www.imdb.com/title/tt0088763/ (Reply Br. 3). Appellant contends that “[a] user cannot tell from the characters used in the Web page 1 We interpret “http://www.bitzate.com . . . ” to include a typographical error, intending to read “http://www.bizrate.com . . . .” Appeal 2010-002227 Application 09/938,163 5 address what the contents of the Web page are, because no descriptive words are used therein” (id.).2 ANALYSIS The Examiner finds that Rebane does not disclose “a directory Web site address wherein a portion of the directory Web site address describes the class of goods or services for the directory Web site,” as required, for example, by claim 1 (Ans. 3). However, the Examiner has not provided any evidence that this missing claim feature was known at the time of the invention. The Examiner relies on the information contained within the BizRate® Web site (Ans. 3-4), but the fact that a given Web site or other information is shown to be available on the Internet during prosecution does not, alone, indicate whether this information was available or known at the time of the invention. Absent any evidence of when the information contained within the BizRate® Web page was published or otherwise made publicly available, we agree with Appellant (App. Br. 21) that the Examiner has not established a prima facie case of obviousness.3 2 “The [cited] Web page is the Internet Movie Database’s Web page for the movie Back to the Future” (Reply Br. 3). 3 It may well be the case that any Web site address that corresponds to, or redirects a user to, a directory Web site for a class or goods or services can be said to inherently describe the class of goods or services by virtue of the fact that the Web site address is functionally coupled to the directory Web site. Using Appellant’s example (see Reply Br. 3) to illustrate the point, one may argue that the Web site address http://www.imdb.com/title/tt0088763/, in fact, describes the move Back to the Future by virtue of the fact that this Web address is uniquely associated with that movie and no other. Appeal 2010-002227 Application 09/938,163 6 Each of independent claims 11, 19, 22, 24, 36, 49, 51, and 53 recite similar language regarding a directory Web site address wherein a portion of the directory Web site address either describes or defines a class of goods or services. Accordingly, we will not sustain the Examiner’s rejections of independent claims 1, 11, 19, 22, 24, 36, 49, 51, and 53, or of claims 2-10, 12, 14-18, 20, 23, 25-35, 37-48, 50, 52, and 54, which depend from these independent claims. If such a theory were accepted, the Examiner would not need to additionally rely on the current BizRate® Web site to compensate for the deficiency alleged to be associated with the Web page depicted in Rebane’s Figure 18. Appellant does not dispute that Figure 18 depicts a directory Web site for a class of goods or services or that this disclosed Web site must inherently have some associated Web site address. Whatever the particular Web site address may be, though, it would necessarily “describe[] the class of goods or services for the directory Web site” as required by claim 1, for example, by virtue of being uniquely associated with the directory Web site of Rebane’s Figure 18. However, the Examiner does not rely upon such an inherency theory in formulating the present obviousness rejections (see Ans. 3-14), and we will not substitute this theory on appeal. It would be preferable if such questions regarding the proper interpretation of the claim term “describe” are raised during any further prosecution. That way, Appellant would have a better opportunity to respond and clarify the record. For these reasons, we likewise decline to determine (1) what metes and bounds should be respectively afforded the terms “describe” and “define”; or (2) whether, and in what ways, the meanings of these claim terms may differ. But see independent claim 11 (which, in contrast to claim 1’s recitation of a Web site that “describes the class of goods and services” (emphasis added) alternatively recites “a directory Web site address wherein a portion of the directory Web site address defines a class of goods or services” (emphasis added), thereby evidencing that the terms “define” and “describe” may have different scopes); see also claim 2 (depending from claim 1 and setting forth both that Web site text comprises “a description of the selected class of goods or services” and “the selected directory Web site defines the selected class of goods or services” (emphases added)). Appeal 2010-002227 Application 09/938,163 7 NEW GROUNDS OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds of rejection under 35 U.S.C. § 103(a) against claims 1, 8, and 10. We reject claims 1 and 10 as unpatentable under 35 U.S.C. § 103(a) over the following related Web pages (which were accessed via the Internet Archive WayBack Machine search engine, as indicated below)4 in view of Fenton: (1) http://web.archive.org/web/19981212034238/http://www.yahoo .com/ (Web page archived Dec. 12, 1998) [hereinafter “Yahoo!® Web page”]; (2) http://web.archive.org/web/19981212021045/http://shopguide.y ahoo.com/ (Web page archived Dec. 12, 1998) [hereinafter “Shopping Guide Web page”]; (3) http://web.archive.org/web/19981212012608/http://apparel.sho pping.yahoo.com/ (Web page archived Dec. 12, 1998) [hereinafter “Apparel Shopping Web page”]; (4) http://web.archive.org/web/19981207013011/http://apparel.sho pping.yahoo.com/Apparel/Men_s_and_Boys_/Pants/ (Web page archived Dec. 7, 1998) [hereinafter “Men’s and Boys’ Pants Web page”]; and (5) http://web.archive.org/web/19981202083627fw_/http://www.ll bean.com/bin/homepage (Web page archived Dec. 2, 1998) [hereinafter “L.L. Bean Web page”]. 4 The WayBack Machine search engine searches archived Web pages, setting forth the date the Web page was archived. Appeal 2010-002227 Application 09/938,163 8 We reject claim 8 as unpatentable under 35 U.S.C. § 103(a) over the Web pages cited in relation to claim 1 in view of Fenton and Himmel (US 6,211,874 B1; issued Apr. 3, 2001). Claim 1 The Yahoo!® Web page includes a “Shopping” hyperlink (or simply, “link”) that links to Yahoo!®’s Shopping Guide Web page. The Shopping Guide Web page, in turn, includes links to various categories of goods and services, such as “Apparel,” “Automotive,” “Beauty,” etc. As such, the Shopping Guide Web page corresponds to the claimed “home page having at least one link to a directory Web site for a class of goods or services.” The Apparel Shopping Web page lists online retailers that offer the goods or services of the selected class of goods or services. Examples of these online retailers include, inter alia, Alloy Online, America Offprice, American Eagle Outfitters, and L.L. Bean. As such, the Apparel Shopping Web page corresponds to the claimed directory Web site. Moreover, a portion of the Web site address, “http://apparel.shopping.yahoo.com/” describes the class of goods or services, as required by the claim. The Apparel Shopping Web page also lists classes of goods, including “Men’s and Boys’” clothes and “Women’s and Girls’” clothes. Each of these classes includes further subclasses of goods, such as “Accessories,” “Athletic Wear,” “Outerwear,” etc. The Men’s and Boys’ Pants Web page provides links to various online retailers, as well. As such, the Men’s and Boys’ Pants Web page could also be interpreted as corresponding to the claimed directory Web site. Appeal 2010-002227 Application 09/938,163 9 The L.L. Bean Web page provides evidence that the bulleted list of Online Retailers within the Apparel Shopping Web page is, in fact, a set of links to online retailers. The cited series of related Web pages contained within the Yahoo!® Shopping system do not anticipate claim 1 because the individual Web pages have not been reviewed to the extent necessary to determine whether any included a rollover window. However, as noted by the Examiner (Ans. 5 (citing ¶ [0109])), Fenton teaches Web sites with rollover windows that convey information. It would have been obvious to one of ordinary skill in the art at the time of the invention to have incorporated a rollover window into at least one of the Yahoo!® directory Web sites (e.g., the Shopping Guide Web page or the Men’s and Boys’ Pants Web page) for the purpose disclosed in Fenton of providing additional information. “‘The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.’” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citation omitted). We note that claim 1 does not recite, and Appellant’s Specification does not disclose, any functional relationship between the information contained within the rollover window and the directory Web site. For example, the Specification does not indicate that the rollover window includes any links. As such, any information potentially contained within the rollover window constitutes non-function descriptive material – printed matter that does not distinguish over the prior art. Restated, it is immaterial to the patentability determination whether the material contained within the rollover window is specifically “information about a supplier corresponding Appeal 2010-002227 Application 09/938,163 10 to the supplier” as recited in claim 1. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005), aff’d, slip op. 06-1003 (Fed. Cir. 2006). Claim 10 Dependent claim 10 reads as follows: 10. The method of claim 1, wherein the rollover window does not obscure other content on the directory Web site [sic] utilizes a script; the rollover window is positioned proximate the at least one supplier link; the rollover window displays information about a first pre-selected supplier when a user pre- selects a first supplier link; and the rollover window displays information about a second pre-selected supplier when a user pre-selects a second supplier link. (emphasis added).5 Claim 10 further requires that the rollover window does not obscure other content on the directory Web site. Contrary to the Examiner’s finding (Ans. 13), Fenton does not appear to teach that the rollover window may be positioned in this manner. The Examiner does not dispute that, upon activation, Fenton’s rollover box covers content on the Web site. The Examiner reasons, though, that because the rollover window disappears when the mouse is moved away from Fenton’s rollover window/box, the rollover window may be interpreted as not obstructing content (id.). We find this claim interpretation of Fenton to be unreasonably broad. 5 The italicized language was added by the amendment filed on June 27, 2008. We provisionally interpret the claim to intend to recite “the rollover window does not obscure other content on the directory Web site; the rollover window utilizes a script; . . . ” Upon further prosecution, though, the Examiner and Appellant should clarify the ambiguities present in this claim, as well as in claim 9. Appeal 2010-002227 Application 09/938,163 11 Regardless, modifying Fenton such that the rollover window does not cover content would nonetheless have been obvious. Anyone who has ever placed 3M brand “Post-it” notes on, or otherwise tabbed, a page of printed material would have readily recognized that there were only two options for doing so: (1) placing the “Post-it” note over printed text, and thereby obscuring that text’s view; and (2) placing the “Post-it” note in a portion of the page that is free of text. One would have further recognized that the latter option provided the benefit of not interfering with reading the text, but at the expense of limiting the areas where the “Post-it” note could be placed. That is, positioning a rollover window so as to either obscure content or alternatively to not obscure content constituted two art-recognized equivalent methods of positioning a rollover window. In further regard to claim 10, Appellant argues the claim language requires that “information about at least two different suppliers [be] displayed in the same rollover window” (App. Br. 26). We note that Appellant’s Specification does not support this claim interpretation. The Specification merely states that “the rollover popup window . . . provides added supplier information when the user pre-selects the link by placing his/her cursor over a given link” (Spec. 8:13-15). The Specification additionally indicates that a user may view Web sites of multiple suppliers simultaneously by activating extra browser windows (Spec. 8:15-24), but activating the suppliers’ Web sites is different from preselecting the supplier’s link using the rollover feature. Appeal 2010-002227 Application 09/938,163 12 Claim 8 Dependent claim 8 reads as follows: 8. The method of claim 1, further comprising the steps of activating the supplier link for a supplier of a class of goods or services thereby launching a separate internet browser window; and displaying the supplier Web site corresponding to the activated supplier link in the separate internet browser window. Accessing the Yahoo!® Web pages via the WayBack Machine search engine does not indicate whether the steps of activating the supplier links launch separate internet browser windows. Himmel describes opening separate browser windows when links are selected within a Web page (e.g., col. 7, ll. 6-17). It would have been obvious to one of ordinary skill in the art at the time of the invention that the Yahoo!® shopping system could have been designed or programmed such that activating a supplier link launches a separate internet browser window. This is because at the time of the invention, there were a finite number of art-recognized equivalent methods of accessing another Web page via a link: (1) displaying the new Web page in the existing browser, and (2) displaying the Web page in a newly launched browser. CONCLUSIONS Appellant has shown that the Examiner erred in rejecting claims 1-12, 14-20, and 22-54 under 35 U.S.C. § 103. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds of rejection under 35 U.S.C. § 103 against claims 1, 8, and 10. Appeal 2010-002227 Application 09/938,163 13 Because the Board of Patent Appeals and Interferences is a review body, rather than a place of initial examination, we have not reviewed remaining claims 2-7, 9, 11, 12, 14-20, and 22-54 to the extent necessary to determine whether new grounds of rejection would be appropriate for these additional claims. We leave it to the Examiner to determine the appropriateness of any further rejections based upon the prior art and rationales set forth above.6 DECISION The Examiner’s decision rejecting claims 1-12, 14-20, and 22-54 is reversed. Claims 1, 8, and 10 are rejected under 35 U.S.C. § 103(a). FINALITY OF DECISION This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2007). This regulation states that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: 6 Upon any further prosecution, the Examiner should consider the following archived Web pages: (1) http://web.archive.org/web/19981212023239/http://www.bizrate.com/; (2) http://web.archive.org/web/19980421074244/http://www.bizrate.com/dis play.pl?t=cat&b=cat_apparel; and (3) http://web.archive.org/web/19980421075357/http://www.bizrate.com/sea rch.pl?cat=Apparel%20:%20Accessories. Appeal 2010-002227 Application 09/938,163 14 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED 37 C.F.R. § 41.50(b) babc Notice of References Cited Application/Control No. 09/938,163 Applicant(s)/Patent Under Reexamination Michael Meiresonne Examiner Merilyn Nguyen Art Unit 2100 Page 1 of 2 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U http://web.archive.org/web/19981212034238/http://www.yahoo.com/ V http://web.archive.org/web/19981212021045/http://shopguide.yahoo.com/ W http://web.archive.org/web/19981212012608/http://apparel.shopping.yahoo.com X http://web.archive.org/web/19981207013011/http://apparel.shopping.yahoo.com/Apparel/Men_s_and_Boys_/Pants/ Y http://web.archive.org/web/19981202083627fw_/http://www.llbean.com/bin/homepage Delete Last PagelAdd A Page Z http://web.archive.org/web/19981212023239/http://www.bizrate.com/ AA http://web.archive.org/web/19980421074244/http://www.bizrate.com/display.pl?t=cat&b=cat_apparel BB http://web.archive.org/web/19980421075357/http://www.bizrate.com/search.pl?cat=Apparel%20:%20Accessories *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.