Ex Parte Nishiyama

Board of Patent Appeals and Interferences

Aug 8, 2008

09874057 (B.P.A.I. Aug. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte TAKEHIRO NISHIYAMA
___________

Appeal 2008-0765
Application 09/874,057
Technology Center 3600
___________

Decided: August 8, 2008
___________

Before HUBERT C. LORIN, ANTON W. FETTING, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Takehiro Nishiyama (Appellant) seeks review under 35 U.S.C. § 134 of a non-
final rejection of claims 17-21, the only claims pending in the application on
appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).
We AFFIRM.

Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
The Appellant invented a way of renting a construction machine through a
network. A system holds information related to a specification, a rental situation,
and a location of a construction machine for rental. A person seeking a rental
service of a construction machine enters the specification of a construction
machine, a rented period, and a location (Specification 3:Bottom ¶).
An understanding of the invention can be derived from a reading of exemplary
claim 17, which is reproduced below [bracketed matter and some paragraphing
added].
17. A system for renting a construction machine from a provider of a
rental service of the construction machine to a person seeking the
rental service of the construction machine through a network,
comprising:
a first network terminal
configured to enable the provider to input and update,
when the provider gets access to the network,
a piece of basic information related to
a specification,
a rental situation and
a location of the construction machine for rent;
a second network terminal
configured to enable the person seeking the rental service
when the person gets access to the network,
to input another piece of basic information related to
a specification of a construction machine of his choice,
rental period information including a rental period of his
choice, and
a rental place of his choice
in such a manner that the input includes an option to identify a
preferred option of one of
2
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
the specification,
the rental period and
the rental place;
a network server adapted to be connected, respectively, to the first and
the second network terminals through the network,
the network server including
means for holding the piece of basic information related to
the specification,
the rental situation and
the location of the construction machine for rent
which are input from the first network terminal through
the network;
means for searching with information including
the specification,
the rental period and
the rental place
input by the second network terminal as search items,
for information related to a rentable construction machine
on the basis of the piece of basic information related to
the specification,
the rental situation and
the location
as input from the first network terminal and held
by the network server; and
means for providing the second network terminal with the
information
related to the construction machine for rent
as a calendar displaying information related to the rental
situation of the construction machine for rent,
the rental situation including whether the construction
machine is
3
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
rented,
vacant,
under course of negotiations and
under course of or out of operation
at least during a period corresponding to the rental
period inputted through the second network
terminal,
wherein the means for searching carries out an
equivocal search,
after having searched in favor of the
preferred option out of
the specification,
the rental period and
the rental place.
This appeal arises from the Examiner’s non-final Rejection, mailed September
28, 2006. The Appellant filed an Appeal Brief in support of the appeal on January
22, 2007. An Examiner’s Answer to the Appeal Brief was mailed on March 13,
2007. A Reply Brief was filed on April 30, 2007. Oral arguments were presented
on July 10, 2008.
PRIOR ART
The Examiner relies upon the following prior art:
Janssen US 5,754,850 May 19, 1998
PR Newswire, United Rentals Inc. Launches Business-to-Business Equipment E-
Rental Store, PR Newswire, p.2090, February 3, 2000
22
23
24
25
26
REJECTIONS
Claims 17-21 stand rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention.
4
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
Claims 17-21 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Janssen.
Claims 17-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Janssen.
Claims 17-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Janssen and PR Newswire.
ISSUES
The issues pertinent to this appeal are
• Whether the Appellant has sustained its burden of showing that the
Examiner erred in rejecting claims 17-21 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention.
• Whether the Appellant has sustained its burden of showing that the
Examiner erred in rejecting claims 17-21 under 35 U.S.C. § 102(b) as
anticipated by Janssen.
• Whether the Appellant has sustained its burden of showing that the
Examiner erred in rejecting claims 17-21 under 35 U.S.C. § 103(a) as
unpatentable over Janssen.
• Whether the Appellant has sustained its burden of showing that the
Examiner erred in rejecting claims 17-21 under 35 U.S.C. § 103(a) as
unpatentable over Janssen and PR Newswire.
The pertinent issue turns on whether the claim limitation of presenting data in a
calendar format in claim 17 limitation [5] is a structural limitation.
5
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Janssen
01. Janssen is directed to a kiosk search system displaying selection
screens on a touch monitor. A user touches icons to select a number of
search features, and a search is performed based upon the selected search
features. At the completion of a search cycle, various screens illustrating
information on the items in a search result are displayed to the user. At
the user's option, the kiosk prints out information (Janssen 2:11-31).
02. A search is performed by Janssen using the search features for items
in a database satisfying or closely satisfying the search features. Once a
number of search features are selected, each item in the database is
compared to a set of primary search features. Items neither satisfying
nor closely satisfying a primary search feature are eliminated from
further search. An item which satisfies or at least closely satisfies a
primary search feature is assigned a predetermined number of points.
The items in the database which are not eliminated from further search
remain in a search pool. The items remaining in the search pool are
compared to a set of non-primary search features. Further, the items are
assigned predetermined points for satisfying or closely satisfying each of
the non-primary search features (Janssen 2:32-49).
03. After each of Janssen’s search features are examined in each of the
items in the database, points assigned to each item in the search pool are
totaled. A predetermined number of items in a search pool with the
6
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
highest total points are selected as the search result. The items are sorted
such that the predetermined number of items selected as search results
are displayed to the user of the search system in the order of the item
with the highest points (Janssen 2:50-57).
04. Unlike the traditional search methods utilizing Boolean based search
methods which examine for exact matches, Janssen’s search considers
"near" matches as well as exact matches. For example, an item in a
search pool which fully satisfies a given non-primary search feature is
given the predetermined full points. An item which closely satisfies a
given search feature (a near match), may also be assigned a
predetermined number of points. If an item in a search pool neither
satisfies nor closely satisfies a given search feature, such item is
assigned zero points for the particular non-primary search feature.
Further, for some instances of near matches, an item in a search pool
may be given full points for a search feature if the item closely satisfies
that given search feature (Janssen 2:58- 3:4).
05. Janssen’s search may be used for schools, doctors, cars, apartments,
vacation packages, lawyers and CPA's. In addition, the search system of
the present invention may be used on on-line services, interactive
televisions and on stand alone computers (Janssen 3:5-10).
06. Janssen uses a modem to update its database (Janssen 4:10-11). This
implies data is being transferred from an external server to provide such
data. Such a server would require a terminal for operation.
07. Janssen describes applying its device to home rental searching
(Janssen 6:18-21).
7
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
PR Newswire
08. PR Newswire is directed to the United Rentals E-Rental Store, an e-
commerce, business-to-business site that allows customers to rent and
buy equipment online. Customers can review specifications of
equipment available equipment class, such as construction equipment,
aerial work platforms, traffic safety equipment, trench safety equipment,
special event equipment, heavy machinery, industrial equipment and
homeowner equipment. Customers can also browse through regional
listings of quality used equipment offered for sale and access equipment
specifications, photos and operating histories (PR Newswire 1).
Facts Related To The Level Of Skill In The Art
09. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent arts of systems analysis and programming,
e-commerce, construction equipment lease management, database
programming, or time management and scheduling programming. We
will therefore consider the cited prior art as representative of the level of
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill
in the art does not give rise to reversible error ‘where the prior art itself
reflects an appropriate level and a need for testimony is not shown’”)
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d
158, 163 (Fed. Cir. 1985).
8
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
Facts Related To Secondary Considerations
10. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.
PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364, (Fed. Cir. 2004).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003) (claims must be interpreted “in view of the specification” without
importing limitations from the specification into the claims unnecessarily).
Although a patent applicant is entitled to be his or her own lexicographer of
patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to be
construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although
an inventor is free to define the specific terms used to describe the invention, this
must be done with reasonable clarity, deliberateness, and precision; where an
inventor chooses to give terms uncommon meanings, the inventor must set out any
uncommon definition in some manner within the patent disclosure so as to give
one of ordinary skill in the art notice of the change).
9
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
Indefiniteness
Under 35 U.S.C. § 112, ¶ 2, the claims of a patent must “particularly point[ ]
out and distinctly claim[ ] the subject matter which the applicant regards as his
invention.” “A claim is considered indefinite if it does not reasonably apprise
those skilled in the art of its scope.” IPXL Holdings, L.L.C. v. Amazon.com, Inc.,
430 F.3d 1377, 1383–84 (Fed. Cir. 2005). “Because a claim is presumed valid, a
claim is indefinite only if the ‘claim is insolubly ambiguous, and no narrowing
construction can properly be adopted.’” Honeywell Int’l, Inc. v. Int’l Trade
Comm’n, 341 F.3d 1332, 1338–39 (Fed. Cir. 2003) (quoting Exxon Research &
Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)).
Anticipation
"A claim is anticipated only if each and every element as set forth in the claim
is found, either expressly or inherently described, in a single prior art reference."
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987). "When a claim covers several structures or compositions, either generically
or as alternatives, the claim is deemed anticipated if any of the structures or
compositions within the scope of the claim is known in the prior art." Brown v.
3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). "The identical invention must be
shown in as complete detail as is contained in the ... claim." Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be arranged
as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Obviousness

A claimed invention is unpatentable if the differences between it and the
prior art are “such that the subject matter as a whole would have been obvious at
10
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
the time the invention was made to a person having ordinary skill in the art.”
35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727 (2007);
Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, at 1739.
“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” Id. at 1740.
“For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 1742.
Automation of a Known Process
It is generally obvious to automate a known manual procedure or mechanical
device. Our reviewing court stated in Leapfrog Enterprises Inc. v. Fisher-Price
Inc., 485 F.3d 1157 (Fed. Cir. 2007) that one of ordinary skill in the art would have
11
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
found it obvious to combine an old electromechanical device with electronic
circuitry “to update it using modern electronic components in order to gain the
commonly understood benefits of such adaptation, such as decreased size,
increased reliability, simplified operation, and reduced cost. . . . The combination
is thus the adaptation of an old idea or invention . . . using newer technology that is
commonly available and understood in the art.” Id at 1163.
Obviousness and Nonfunctional Descriptive Material

Nonfunctional descriptive material cannot render nonobvious an invention that
would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive
material is not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability).
ANALYSIS
Claims 17-21 rejected under 35 U.S.C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the invention.
The Appellant argues these claims as a group.
Accordingly, we select claim 17 as representative of the group.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner found that the claim limitation "and under course of or out of
operation..." in claim 17 was indefinite (Answer 3-4). Although the Appellant
contended that this was not indefinite in light of the Specification (Appeal Br. 3-4),
the Appellant agreed during the oral hearing that a clarifying amendment was
appropriate (Hearing Transcript 3:9-12). We take this to mean that the Appellant
12
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
has withdrawn its contention against the rejection and will make a clarifying
amendment instead.
The rejection of claims 17-21 under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention, is therefore now
uncontested, and we summarily sustain the rejection.
Claims 17-21 rejected under 35 U.S.C. § 102(b) as anticipated by Janssen.
The Appellants argue these claims as a group. Accordingly, we select claim 17
as representative of the group.
The Examiner found that Janssen anticipated all of the structural limitations of
apparatus claim 17. The Examiner found that the limitations of the data being
processed were not part of the structure and therefore accorded no patentable
weight, because claim 17 is an apparatus claim. The Examiner did find that
Janssen’s apparatus searched for rental information, albeit in the real estate rather
than construction equipment industry. The Examiner found that Janssen’s
structure would search for and retrieve rental information in accordance with
the structural limitations of claim 17, and that the specific data, whether in
construction the equipment industry or in a calendar format, were not part of the
claimed structure (Answer 4-8).
The Appellant contends that Janssen cannot anticipate claim 17 because
Janssen fails to use construction equipment information and to display the status of
such construction equipment (Appeal Br. 5:Top ¶), and fails to present data in a
calendar format, relying on the disclosure under a construction under 35 U.S.C.
§ 112, sixth paragraph construction (Appeal Br. 5:First full ¶ - 6:Bottom ¶).
We disagree with the Appellant. Initially, we find that whether Janssen
describes the terminals, server, and structure for searching and providing rental
13
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
information of claim 17 is not under contention. Janssen does describe or imply
the inherent use of these structural limitations (FF 01 - 06). We agree with the
Examiner that claim 17 is directed to an apparatus. Claim 17 is directed to a
system comprising two terminals, a server, and to means plus functions. All of
these are structural elements and a system is generally understood to be a machine.
Thus limitations as to the data being processed are not part of the structure and
therefore are accorded no patentable weight. "Expressions relating the apparatus to
contents thereof during an intended operation are of no significance in determining
patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666, 667 (Bd.
App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a
structure being claimed does not impart patentability to the claims." In re Young,
75 F.2d 996 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937 (CCPA 1963)).
The Appellant argued that the means for providing the data was in means plus
function form and therefore incorporated the structure from the Specification and
equivalents thereof. The only structure that the Appellant actually point out as
corresponding to this means is a network server (Appeal Br. 2:Bottom ¶, referring
to Specification 6:2-6). Although the Appellant also refers to portions of the
Specification at pp. 11, 12, and 19, none of these portions cite structure, but only
describe output data with no recitation of how that data is functionally created or
modified by any structure. The Appellant agreed that there were no flow diagrams
or textual description of algorithms as to how data was created or modified at the
oral hearing (Hearing Transcript 5:26 and 6:1-9). Thus the only structure that
corresponds to the means for providing in limitation [5] is a server. The presence
of a server is not under contention, as we found supra.
Accordingly we agree with the Examiner that all of the structural limitations of
claim 17 are anticipated by Janssen. The Appellant has not sustained its burden of
14
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
showing that the Examiner erred in rejecting claims 17-21 under 35 U.S.C.
§ 102(b) as anticipated by Janssen.
Claims 17-21 rejected under 35 U.S.C. § 103(a) as unpatentable over Janssen.
The Appellants argue these claims as a group. Accordingly, we select claim 17
as representative of the group. The Examiner made this rejection as an alternative
to the anticipation rejection, supra. (Answer 8). The Examiner found that, were
the calendar format to be found to result from a structural limitation and accorded
patentable weight, such a format would have been known due to its notoriety. The
Examiner concluded that in a rental environment, the nature of rental being time
dependent would have suggested a calendar format to one of ordinary skill. The
Appellant again contended that Janssen did not show a calendar format and did not
show the status information in claim 17 (Appeal Br. 7).
We disagree with the Appellant. First, we found that claim 17 was anticipated
by Janssen supra, and anticipation is the epitome of obviousness, Structural
Rubber Products Co. v Park Rubber Co., 749 F.2d 707, 716 (Fed. Cir. 1984).
Second, the Appellant did not traverse the Examiner’s finding as the notoriety of
calendar formats and the knowledge of such formats by those of ordinary skill.
Given the time dependent nature of rental, use of a calendar format was predictable
to one of ordinary skill. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 127 S. Ct. at 1739. Third, status information is not part of the
apparatus structure, and is therefore not accorded patentable weight.
The Appellant has not sustained its burden of showing that the Examiner erred
in rejecting claims 17-21 under 35 U.S.C. § 103(a) as unpatentable over Janssen.
15
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
Claims 17-21 rejected under 35 U.S.C. § 103(a) as unpatentable over Janssen and
PR Newswire.
The Appellants argue these claims as a group. Accordingly, we select claim 17
as representative of the group. The Examiner found that PR Newswire provided
explicit description of an equipment rental with browsing features that would have
suggested adopting Janssen to equipment rental (Answer 11-12).
The Appellant grouped its argument to this rejection with that of the
obviousness rejection over Janssen alone (Appeal Br. 7). Accordingly the
Appellant has not sustained its burden of showing that the Examiner erred in
rejecting claims 17-21 under 35 U.S.C. § 103(a) as unpatentable over Janssen and
PR Newswire for the reasons we found in the obviousness rejection over Janssen
supra.
CONCLUSIONS OF LAW
The Appellant has not sustained its burden of showing that the Examiner erred
in rejecting claims 17-21 under 35 U.S.C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the invention, under 35 U.S.C. § 102(b)
as anticipated by Janssen, and under 35 U.S.C. § 103(a) as unpatentable over the
prior art.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 17-21 under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention is
sustained.
16
Appeal 2008-0765
Application 09/874,057

1
2
3
4
5
6
7
8
9
• The rejection of claims 17-21 under 35 U.S.C. § 102(b) as anticipated by
Janssen is sustained.
• The rejection of claims 17-21 under 35 U.S.C. § 103(a) as unpatentable over
Janssen is sustained.
• The rejection of claims 17-21 under 35 U.S.C. § 103(a) as unpatentable over
Janssen and PR Newswire is sustained.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED 10
11
12
13
14
15
16
17

JRG
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314
17