Ex Parte Scheer

Board of Patent Appeals and Interferences

Sep 27, 2010

09967590 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P 0 Box 1450
Alexandria, Virginia 22313- 1450
www uspto go"
65989 7590 09/29/20 10
KING & SPALDING
1 185 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-4003
APPLICATION NO.
I EXAMINER I
MALHOTRA, SANJEEV
091967,590 09/28/2001 Jan Scheer 03869-105024 4878
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
CONFIRMATION NO.
09/29/2010 ELECTRONIC
usptomailnyc @kslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte JAN SCHEER
Appeal 2009-004662
Application 091967,590
Technology Center 3600
Before JOHN A. JEFFERY, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-004662
Application 091967,590
STATEMENT OF THE CASE
Jan Scheer (Appellant) seeks our review under 35 U.S.C. 5 134 (2002)
of the final rejection of claims 27, 31, 32, and 35-45. We have jurisdiction
under 35 U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.^
THE INVENTION
The invention relates to ordering a product via a computer network.
Claim 27, reproduced below, is illustrative of the subject matter on
appeal.
27. A computer system for ordering products, having a server
accessible to clients over a network, the system comprising:
a server database, for storing a list of products and a price
corresponding to each product in the list;
a web page for a user of a client to select and order a product
from the list of products;
and
means for maintaining an account of the user of the client and
charging to the account the price corresponding to the selected and
ordered product, the means defining at least one credit limit for the
user which, when exceeded, is a basis for issuing at least one of the
group consisting of (i) a warning and (ii) a rejection of the order for
the selected and ordered product;
wherein the server database stores a plurality of product lists,
wherein each product list is associated with a unique key in the server
2 Our decision will make reference to the Appellant's Appeal Brief ("Br.,"
filed Jul. 10, 2008) and the Examiner's Answer ("Answer," mailed Sep. 5,
2008).
Appeal 2009-004662
Application 091967,590
database, and comprises an interface for an administrator to select one
of the plurality of product lists as the basis for selection and ordering
by the client at a selected time;
wherein at least one of the plurality of product lists is associated
with at least one particular supplier of a plurality of different
suppliers; and
wherein the products comprise at least one selected from the
group consisting of: provision of services within the context of
maintenance contracts for installations; provision of services within
the context of maintenance contracts for software; and provision of
services within the context of maintenance contracts for machinery
and delivery of spare parts.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability :
Chelliah US 5,710,887 Jan. 20, 1998
Wagner US 5,742,845 Apr. 21, 1998
Feldman US 200210095342 A1 Jul. 18, 2002
Horn US 7,013,289 B2 Mar. 14, 2006
Valerie Block, Norwest Unit Adds New Twists to Cobranding
Combination Card Plan Seen As Alternative to Private Labels Series:
14, 159American Banker 12 (1994).
The following rejections are before us for review:
1. Claims 27, 31, 32, 35, 36, and 39-41 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Chelliah and Horn.
2. Claims 37 and 38 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Chelliah and Block.
3. Claim 45 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Chelliah, Horn, and Block.
Appeal 2009-004662
Application 091967,590
4. Claims 42 and 43 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Chelliah and Wagner.
5. Claim 44 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Chelliah and Feldman.
FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Znc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
There are two independent claims; claim 27 is drawn to a system, on
which claims 31, 32, 35-44 depend, and claim 45 is drawn to a server
computer.
The system set forth in claim 27 comprises three elements: (a) a server
database; (b) a web page; and (c) a means for performing certain functions.
According to claim 27, the server database (a) is "for storing a list of
products and a price corresponding to each product." The Examiner cited
Chelliah, col. 3,ll. 23-26, as evidence that such a database was disclosed in
the prior art at the time of the invention. Answer 4. This is not being
disputed. Notwithstanding that server databases for storing information
were nevertheless well known to those of ordinary skill in the art at the time
of invention, we take as accepted that Chelliah discloses a server database as
claimed.
Claim 27 further characterizes the server database (a) as one that
"stores a plurality of product lists, wherein each product list is associated
with a unique key in the server database, and comprises an interface for an
Appeal 2009-004662
Application 091967,590
administrator to select one of the plurality of product lists as the basis for
selection and ordering by the client at a selected time." Claim 27 further
defines the product lists stored in the database as follows:
wherein at least one of the plurality of product lists is associated
with at least one particular supplier of a plurality of different
suppliers; and
wherein the products comprise at least one selected from the
group consisting of: provision of services within the context of
maintenance contracts for installations; provision of services within
the context of maintenance contracts for software; and provision of
services within the context of maintenance contracts for machinery
and delivery of spare parts.
The Examiner cited col. 7,ll. 49-63 of Chelliah as disclosing the server
database storing product lists associated with a particular supplier as well as
the interface. Answer 4. But the Examiner conceded that Chelliah does not
disclose a "unique key in the server database" associated with information in
the database. Answer 4. The Examiner relied on Horn for the disclosure of
the identifier missing from Chelliah, citing col. 49,l. 45 - col. 51,l. 49.
Answer 5. The Examiner reasoned that one of ordinary skill in the art given
Horn would have been led to modify Chelliah to provide a key "to provide a
more effective and efficient integrated electronic commerce system serving
buyers applicable worldwide and being able to consummate the sales as soon
as possible by increasing buyers' confidence in buying products across
international boundaries." Answer 5. The Examiner also conceded that
Chelliah does not disclose the product particulars recited in the claim, but
the Examiner deemed the particulars to be nonfunctional descriptive material
and thus patentably inconsequential. Answer 6. The Appellant disagrees,
arguing that the identifier and product particulars are not disclosed and one
Appeal 2009-004662
Application 091967,590
of ordinary skill would not be led to a system that includes them. See, e.g.,
Br. 32-33.
According to claim 27, the system includes a web page "for a user of
a client to select and order a product from the list of products." The
Examiner cited col. 3,ll. 30-45; col. 6,ll. 13-19; and, col. 12,ll. 1-8, as
evidence that such a web page was disclosed in the in the prior art at the
time of the invention. Answer 4. This is not being disputed.
Notwithstanding that web pages for selecting and ordering items were
nevertheless well known to those of ordinary skill in the art at the time of
invention, we take as accepted that Chelliah discloses a web page as
claimed.
Finally, according to claim 27, the system includes a "means for
maintaining an account of the user of the client and charging to the account
the price corresponding to the selected and ordered product, the means
defining at least one credit limit for the user which, when exceeded, is a
basis for issuing at least one of the group consisting of (i) a warning and (ii)
a rejection of the order for the selected and ordered product." There is no
dispute that the limitation is written in means-plus-function form and, given
that the term "means" is used, the presumption is that 35 U.S.C. $1 12,
paragraph 6 applies in construing this claim element. In that regard, "[tlhe
first step in construing a means-plus-function claim limitation is to define
the particular function of the claim limitation. Budde v. Harley-Davidson,
Znc., 250 F.3d 1369, 1376 (Fed. Cir. 2001). "The court must construe the
function of a means-plus-function limitation to include the limitations
contained in the claim language, and only those limitations." Cardiac
Pacemakers, Znc. v. St. Jude Med., Inc., 296 F.3d 1106, 11 13 (Fed. Cir.
Appeal 2009-004662
Application 091967,590
2002). The next step in construing a means-plus-function claim limitation is
to look to the specification and identify the corresponding structure for that
function.
Under this second step, structure disclosed in the
specification is 'corresponding' structure only if the
specification or prosecution history clearly links or
associates that structure to the function recited in the
claim." Med. Instrumentation & Diagnostics Corp. v.
Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003)
(quoting B. Braun Med. Znc. v. Abbott Labs., 124 F.3d
1419, 1424 (Fed.Cir. 1997)).
Golight Znc. v. Wal-Mart Stores Znc., 355 F.3d 1327, 1333-34 (Fed. Cir.
2004). The function is "maintaining an account of the user of the client and
charging to the account the price corresponding to the selected and ordered
product, [and] defining at least one credit limit for the user which, when
exceeded, is a basis for issuing at least one of the group consisting of (i) a
warning and (ii) a rejection of the order for the selected and ordered
product." Looking to the specification to identify the corresponding
structure for this function we find that it is the database. See Specification
[0029] and Fig. 1 which shows database 2 storing an account of the user of
the client, item prices, balance, order and at least one credit limit for the
user. The Examiner cited col. 3,l. 66 - col. 4, l . 15 as disclosing the means
claimed. Answer 4.
Putting it all together, the claimed system is reasonably broadly
construed as comprising a database and a webpage, the database storing
various pieces of information and an identifier associated with some of the
information. The Appellant disagrees, arguing that the means is not
disclosed by the cited prior art, and one of ordinary skill would not be led to
a system that includes it. See, e.g., Br. 32-33.
Appeal 2009-004662
Application 091967,590
ISSUES
The issue is whether the cited prior art discloses or would lead one of
ordinary skill in the art to a system comprising the database as claimed.
ANALYSIS
The rejection of claims 2 7, 31, 32, 35, 36, and 39-41 under 35 U.S. C.
§103(a) as being unpatentable over Chelliah and Horn.
Claims 27, 31, 32, and 39-41
The Appellant argues claims 27, 31, 32, and 39-41 as a group (Br. 32-
33). We select claim 27 as the representative claim for this group, and the
remaining claims 31, 32, and 39-41 stand or fall with claim 27. 37 C.F.R.
5 41.37(c)(l)(vii) (2007).
The Appellant argues that the unique key and product particulars as
claimed are not disclosed and one of ordinary skill would not be led to a
system that includes them. See e.g., Br. 16-24 and 32-33. We disagree.
On the claim limitation "unique key in the server database" (claim
27), Horn expressly teaches keys in a database. The Examiner correctly
pointed out that the keys are disclosed at, e.g., col. 49,l. 45 - col. 51,l. 49.
Answer 5. But they are taught in other places in Wolf. See e.g., col. 46,ll.
39-44, where they are taught as elements of a relational database, without
which the database would be unable to perform relationally. The Appellant
does not dispute that Horn discloses unique keys, but argues that Horn is
inapplicable because Horn corresponds its keys to a different type of
information in the database. According to the Appellant, Horn's keys "are
associated with products selected by the purchaser, which are completely
different from and opposite of the product lists of the present invention . . . ."
Appeal 2009-004662
Application 091967,590
Br. 24. The distinction between the type of information contained in
Chelliah/Wolf databases and that of the claimed database is discussed below.
Suffice it to say, as the Examiner has, that this distinction is patentably
inconsequential. There is no evidence-nor would one of ordinary skill in
the art expect-that there is any structural or functional difference between
the instant key and that of Wolf for corresponding to information differing
only in its content.
The only difference between the claimed database and that of Chelliah
is the content of the information. The distinction between a database that
stores product lists
wherein at least one of the plurality of product lists is associated
with at least one particular supplier of a plurality of different
suppliers; and
wherein the products comprise at least one selected from the
group consisting of: provision of services within the context of
maintenance contracts for installations; provision of services within
the context of maintenance contracts for software; and provision of
services within the context of maintenance contracts for machinery
and delivery of spare parts
and one that functions to "maintain[ ] an account of the user of the client and
charg[e] to the account the price corresponding to the selected and ordered
product, [ ] defining at least one credit limit for the user which, when
exceeded, is a basis for issuing at least one of the group consisting of (i) a
warning and (ii) a rejection of the order for the selected and ordered
product," and "an item database" (Chelliah) is a distinction over the content
of the information in the database, that is, descriptive material. Patentable
weight need not be given to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate
(here the database and system). See In re Lowry, 32 F.3d 1579, 1582-83
Appeal 2009-004662
Application 091967,590
(Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). In that
regard, the Appellant has not come forward with evidence sufficient to show
that the structure of the database and system is functionally affected by a
database having product lists and the ability to maintain an account, a
charge, and a credit limit as opposed to product items (as in Chelliah). The
Appellant's argument that "the assertion that the limitations are not
functional is incorrect on its face; they go to the heart of one of the aspects
of the invention" (Br. 19) is not evidence that the type of information recited
in the claim functionally affects the database and system. Similarly, the
Appellant argued that "Chelliah makes no mention of such a warning
process." Br. 22. This, too, is not evidence that the type of information in
the database, e.g., the credit limits, that would "be a basis for issuing ... a
warning" (claim 27) functionally affects the database and system. Absent
such evidence, it is reasonable to conclude that the claim limitations as to
product lists and the account, charge, and credit limit are descriptive and not
functionally related to any structure of the claimed system and as such falls
under the category of patentably inconsequential subject matter. See Ex
parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005) (informative) (noting
common situations involving nonfunctional descriptive material include (1)
a computer-readable storage medium that differs from the prior art solely
with respect to nonfunctional descriptive material, such as music or a literary
work, encoded on the medium (2) a computer that differs from the prior art
solely with respect to nonfunctional descriptive material that cannot alter
how the machine functions (i.e., the descriptive material does not
reconfigure the computer); or (3) a process that differs from the prior art
only with respect to nonfunctional descriptive material that cannot alter how
Appeal 2009-004662
Application 091967,590
the process steps are to be performed to achieve the utility of the invention).
See also id. (noting that if the prior art suggests storing a song on a disk,
merely choosing a particular song to store on the disk would be presumed to
be well within the level of ordinary skill in the art at the time the invention
was made; the difference between the prior art and the claimed invention is
simply a rearrangement of nonfunctional descriptive material.); Ex parte
Nehls, 88 USPQ2d 1883, 1888-89 (BPAI 2008) (precedential) (holding that
descriptive data contained in database was nonfunctional descriptive
material) and Exparte Mathias, 84 USPQ2d 1276, 1278 (BPAI 2005)
(informative). Nonfunctional descriptive material cannot render nonobvious
an invention that would have otherwise been obvious. 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).
We have reviewed the Appellant's arguments, but do not find they
overcome the rejection of claims 27, 3 1, 32, and 39-41.
Claim 35
Claim 35 call for a "means for dynamically generating the web page
in order to display the list of products on the basis of a list selected by an
administrator." The function is "dynamically generating the web page in
order to display the list of products on the basis of a list selected by an
administrator." The Appellant argues that Chelliah does not disclose such a
means. Looking to the specification to identify the corresponding structure
for this function we find that it is the server which generates the web page
and the database which provides the information displayed on the web page.
Appeal 2009-004662
Application 091967,590
See Specification [0036]. Chelliah discloses a server, a database, and a web
page that displays information from the database. This is exemplified in Fig.
12A is describing the Store Management Dashboard 20. The type of
information displayed on the web page is nonfunctional descriptive material
and thus not patentably consequential. Accordingly, we are not persuaded
that Chelliah does not disclose the means claimed. Accordingly, we do not
find the Appellant's argument to overcome the rejection of claim 35.
Claim 36
Claim 36 calls for a payment module for storing an account balance
for each registered user of the computer system. The Appellant disagrees
with the Examiner's finding that this is disclosed in Chelliah by its
"Customer Accounts Subsystem." Br. 34. The Appellant argues that
Chelliah stores information about customer demographics and payment
habits and not account balances. This not a persuasive argument because
such a distinction is one that is based on the content of the information
stored. As such it is nonfunctional descriptive material that is not patentably
consequential to the payment module. The Appellant also argues that
"Chelliah ... is not associated with any monetary value." Br. 34. This is an
unpersuasive argument because it is not commensurate in scope with what is
claimed. Setting aside the question of whether additional limitation as to
"value" would be of any patentable significance in determining the
obviousness of the claimed system, there is nevertheless nothing in the claim
about monetary values. Accordingly, we do not find that the Appellant's
arguments have overcome the rejection of claim 36.
Appeal 2009-004662
Application 091967,590
The rejection of claims 37 and 38 under 35 U.S. C. $1 03(a) as being
unpatentable over Chelliah and Block.
The Appellant argues claims 37 and 38 as a group (Br. 35). We select
claim 37 as the representative claim for this group, and the remaining claim
38 stands or falls with claim 37. 37 C.F.R. 5 41.37(c)(l)(vii) (2007).
Claim 37 calls for a payment module to be "configured to store a first
credit limit for the user and to store a second credit limit for the user." The
Examiner pointed out that Chelliah teaches the use of a credit card which
"represents a database with a credit limit." Answer 9. The Examiner also
relied on Block which "teaches the use of co-branded credit cards that offer
two separate lines of credit." Answer 9. The Appellant disagrees as to the
applicability of Block to the claimed invention, arguing that "Block
described a completely different and distinct concept, which is merely
separate lines of credit." Br. 35.
We are not persuaded by the Appellant's argument. The Appellant
does not address Chelliah's disclosure of using a credit card. This would
appear to support the view that Chelliah and Horn, both of which suggest
credit limits, are reasonably pertinent to each other, contrary to the
Appellant's argument. (Br. 25) Nevertheless, they are both directed to e-
commerce, and credit limits are a factor in practicing the systems described
in both disclosures. "A reference is reasonably pertinent if, even though it
may be in a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his problem." In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). We should also point out that
the Appellant argues that, even if Block is reasonably pertinent, "the PTO
Appeal 2009-004662
Application 091967,590
has not identified any actual motivation in the relevant art". Br. 25. The
Examiner did articulate an apparent reasoning with logical underpinning.
See Answer 9-10. As to the motivation having to be identified in the cited
prior art, that is not the test for obviousness. "The motivation need not be
found in references sought to be combined, but may be found in any number
of sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself." Dystar Textlifarben GmbH & Co. Deutschland
KG v. C. H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006).
We have reviewed the Appellant's arguments, but do not find that
they overcome the rejection of claims 37 and 38.
The rejection of claims 42 and 43 under 35 U.S. C. $1 03(a) as being
unpatentable over Chelliah and Wagner.
The Appellant argues claims 42 and 43 as a group (Br. 37). We select
claim 42 as the representative claim for this group, and the remaining claim
43 stands or falls with claim 42. 37 C.F.R. 5 41.37(c)(l)(vii) (2007).
The Appellant argues that Wagner does not provide an interface for an
administrator to select a product list as a basis for selection and ordering by
a client. Br. 26. The Appellant also argues that Wagner does not teach
multiple stored credit limits. Br. 26. The remaining arguments are devoted
to Chelliah which have been addressed above with respect to the challenge
of the rejection of claim 27.
We do not find these arguments persuasive to overcome the rejection.
Claim 42 depends on claim 27 and simply calls for "the means for charging
an account of the user is implemented on the client." Accordingly, the
argument as to multiple credit limits is not commensurate in scope with what
Appeal 2009-004662
Application 091967,590
is claimed. As to the interface, the Examiner relied on Chelliah, not Wagner.
See Answer 5 discussing Chelliah's "Store Management Dashboard."
We have reviewed the Appellant's arguments but do not find they
overcome the rejection of claims 42 and 43.
The rejection of claim 44 under 35 U.S. C. §103(a) as being unpatentable
over Chelliah and Feldman.
The Appellant argues that Feldman does not provide an interface for
an administrator to select a product list as a basis for selection and ordering
by a client. Br. 26. The Appellant also argues that Feldman does not teach
multiple stored credit limits. Br. 26. The remaining arguments are devoted
to Chelliah which have been addressed above with respect to the challenge
of the rejection of claim 27.
We do not find these arguments persuasive to overcome the rejection.
Claim 44 depends on claim 27 and simply calls for "the administrator
interface permits the manual entry of orders, payments and payments into
the account of a user." Accordingly, the argument as to multiple credit
limits is not commensurate in scope with what is claimed. As to the
interface, the Examiner relied on Chelliah, not Feldman. See Answer 5
discussing Chelliah's "Store Management Dashboard."
We have reviewed the Appellant's arguments but do not find that they
overcome the rejection of claim 44.
The rejection of claim 45 under 35 U.S. C. §103(a) as being unpatentable
over Chelliah, Horn, and Block.
The Appellant's arguments are the same as those raised against claim
27 and 37 in challenging the applicability of Horn and Block to the claimed
Appeal 2009-004662
Application 091967,590
invention. For the reasons given supra, we find those arguments
unpersuasive to overcome the rejection.
DECISION
The decision of the Examiner to reject claims 27, 31, 32, 35-45 is
affirmed.
AFFIRMED
mev
KING & SPALDING
1 185 AVENUE OF THE AMERICAS
NEW YORK NY 10036-4003