Ex Parte Messer

Board of Patent Appeals and Interferences

Jul 13, 2009

10868682 (B.P.A.I. Jul. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEPHEN DALE MESSER
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Appeal 2009-002672
Application 10/868,682
Technology Center 3600
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Decided:1 July 14, 2009
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on July 8, 2009.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002672
Application 10/868,682
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STATEMENT OF THE CASE
Stephen Dale Messer (Appellant) seeks our review under 35 U.S.C. §
134 (2002) of the final rejection of claims 11-22. Claims 1-10 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.2

THE INVENTION
The invention relates to “a data processing system for integrated
management of commerce as transacted on a plurality of interconnected
computers.” Specification 1:2-3.
Claim 11, reproduced below, is illustrative of the subject matter on
appeal.
11. A data processing system comprising:
a. an affiliate site for displaying data comprising promotions on
a web page;
b. a clearinghouse server in communication with said affiliate
site, said clearinghouse server operable to parse HTTP data received
from said affiliate site, said HTTP data including an affiliate field
comprising one or more subvariables; and
c. a merchant site in communication with said clearinghouse
server, wherein said merchant site is operable to obtain information
triggered by said affiliate site from said clearinghouse server and said
merchant site is operable to submit information to said
clearinghouse server relating to affiliate referral activity on said
merchant site,

2 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Aug. 13, 2007) and the Examiner’s Answer (“Answer,” mailed Nov.
15, 2007).
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wherein said clearinghouse server is configured to track user
referrals from said affiliate site to said merchant site, and to track
sales to one or more of said users by said merchant site, and to
calculate commissions owed for said sales to said affiliate site.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kanter
Merriman
Arnold

US 5,537,314
US 5,948,061
US 6,016,504
Jul. 16, 1996
Sep. 7, 1999
Jan. 18, 2000
The following rejection is before us for review:
1. Claims 11-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Arnold, Merriman, and Kanter.

ARGUMENTS
The Appellant argues that the cited prior art does not disclose a
clearinghouse server that “(1) acts as a hub between affiliate websites and
merchant websites; (2) enables click-through traffic between affiliate
websites and merchant websites; and (3) is operable to track users who click
[through] from an affiliate site to a merchant site.” Br. 13.
The Examiner disagrees. According to the Examiner, “Arnold
discloses in col[.] 5, lines 24-67 that a merchant website to automatically
identify from which VO [virtual outlet] a customer gained access to the
merchant web site. ... [T]he merchant’s database of Arnold fig[.] 1A, item
1A11 is readable as a clearinghouse server since they both are performing
the same task.” Answer 5.
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The Appellant also argued that the “Patent Office has not identified
any proper justification for combining the three cited references.” Br. 14.
The Examiner responds by correctly stating that the requisite
motivation need not be explicitly found in the references but may be based
on logic and sound scientific reasoning. Answer 6. (Cf. KSR at 419: “The
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content of issued patents.”)
The Appellant further argues that the “claims depending from claim
11 contain non-trivial limitations not addressed by the Patent Office in the
Office [Action].” Br. 15.
The Examiner does not appear to have responded to this argument.

ISSUE
Does Arnold disclose a clearinghouse server as claimed?

PRINCIPLES OF LAW
Obviousness
Section 103 forbids issuance of a patent
when “the differences between the subject matter
sought to be patented and the prior art are such that
the subject matter as a whole would have been
obvious at the time the invention was made to a
person having ordinary skill in the art to which
said subject matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
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between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” 383 U.S. at 17-18.

ANALYSIS
The issue is whether the scope and content of the cited references is
such that the clearinghouse server of the claimed data processing system is
disclosed. Cf. Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1324
(Fed. Cir. 2008). “The first issue we address with respect to obviousness is
the scope and content of the prior art—specifically whether the prior art
exhibited every step of the methods claimed in independent claims 1 and 31
of the ’099 patent.”
We have reviewed the references but have not discovered the
clearinghouse element as claimed. The Examiner directs the Appellant’s
attention to column 5, lines 24-67 of Arnold. But we do not see in that
passage of Arnold any disclosure of a clearinghouse as claimed.
The Examiner also cites Figure 1A, item 1A11, of Arnold, which
depicts a “merchant computer” (col. 7, ll. 1-2), and states that that which is
depicted “is readable as a clearinghouse server since they both are
performing the same task” (Answer 5). The difficulty with that position is
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that it views the clearinghouse server and merchant site elements of the
claimed system to be one and the same. This is not what is claimed. As
described in claim 11, for example, the clearinghouse server and merchant
site are separate elements with distinct functions in communication with
each other and with a third element - an affiliate site. In this “claimed”
context, Arnold does not disclose the clearinghouse server of the claimed
data processing system. Accordingly, we find that a prima facie case of
obviousness has not been established for the subject matter of claim 11.
The Examiner does not appear to have addressed claims 12-22 with
any precision. The discussion in the Answer (Answer 3) begins “[a]s per
claims 11-22” and then follows claim 11 in explaining how the prior art
discloses the claimed subject matter. We presume the Examiner is taking
the same position with regard to claims 12-21 as with claim 11 since they,
too, require a clearinghouse. However, in that regard, for the foregoing
reasons, we reach the same conclusion; because Arnold does not disclose the
clearinghouse server of the claimed data processing system, we find that a
prima facie case of obviousness has not been established for the subject
matter of claims 12-21.
Claim 22, however, does not recite a clearinghouse. The Appellant
makes that clear. “Claim 22 does not contain a clearinghouse server
limitation.” Br. 15. Accordingly, the foregoing reason for finding that a
prima facie case of obviousness has not been established for the subject
matter of claims 11-21 does not apply to claim 22. However, we have been
unable to discern the Examiner’s reasoning as to why the cited prior art
renders claim 22 unpatentable, notwithstanding that a clearinghouse is not
recited. In that regard, the Appellant appears to have urged the Examiner to
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address it. “[I]ndependent claim 22 is not addressed in the Office Action.”
Br. 15. The Appellant nevertheless makes an argument as to why the cited
prior art would not render obvious the subject matter of claim 22. There is
no response in the Answer - addressing neither the limitations in claim 22
nor the Appellant’s argument for patentability. Accordingly, we find that a
prima facie case of obviousness has not been established for the subject
matter of claim 22.

CONCLUSIONS
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 11-22 under 35 U.S.C. § 103(a) as being unpatentable over
Arnold, Merriman, and Kanter.

DECISION
The decision of the Examiner to reject claims 11-22 is reversed.

REVERSED

hh
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