Ex Parte Shafron et al

Board of Patent Appeals and Interferences

Jun 28, 2011

10015816 (B.P.A.I. Jun. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS JOSHUA SHAFRON, QI LU, and ASHISH BALDUA
___________

Appeal 2009-011156
Application 10/015,816
Technology Center 2100
____________

Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE, and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-24, 59 and 60. Claims 25-58 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellants’ invention relates to a method of modifying an Internet
browser interface to provide shopping assistant functionality to facilitate on-
line shopping at a supported merchant Internet site, including a wallet with a
database having various user data stored under certain predetermined field
names. (Spec. Abstract.)
Claim 1 is exemplary (with disputed limitations in italics):
1. A method of facilitating on-line shopping by a shopper at
a supported merchant web site, the shopper having a computer with an
Internet browser installed thereon, said method comprising the steps
of:
(a) communicating computer code to add a shopping
assistant button to a toolbar of the Internet browser;
(b) communicating determination computer code to the
computer, the determination computer code configured to determine if
a merchant web site is a supported merchant web site;
(c) creating a wallet for the shopper in a database on a
server, the wallet being secured by a first security key previously
received from the shopper;
(d) receiving a second security key from the shopper;
(e) comparing the first security key and the second security
key; and
(f) if the first and second security keys are the same,
communicating the wallet to the computer.
Claims 1-14, 16-21, 23, 24, 59 and 60 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over O’Leary (U.S. Patent Application
Publication No. 2002/0077978), Sidles (U.S. Patent Application Publication
No. 2002/0062342) and Wiens (U.S. Patent No. 5,808,894).
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Claims 15 and 22 stand rejected under 35 U.S.C. § 103(a) as being
obvious over O’Leary, Sidles, Wiens and Microsoft Corporation, Band
Objects (1997) (“Band Objects”).
We are not persuaded by Appellants’ arguments (App. Br. 8-16; see
also Reply Br. 6-10) that the combination of O’Leary, Sidles and Wiens
would not have rendered obvious independent claim 11 including the
limitation “communicating determination computer code to the computer,
the determination computer code configured to determine if a merchant web
site is a supported merchant web site.”
The Examiner found that O’Leary does not teach the limitation
“communicating determination computer code to the computer, the
determination computer code configured to determine if a merchant web site
is a supported merchant web site.” (Ans. 3.) The Examiner cited Sidles for
the disclosure of a form fill system 200a or 200b that uses personal
information from a wallet database 1100 (Ans. 3-4; Sidles, ¶ [0055]). The
Examiner also cited Wiens for the disclosure of a central vendor computer
that downloads files to a customer computer (Ans. 4; Wiens, col. 7, ll. 28-
47). The Examiner concluded that independent claim 1 would have been
obvious. (Ans. 3-4.) We agree with the Examiner.
O’Leary describes “a safe, sound, and secure method that allows users
(consumers) to shop on the Internet . . . all without the consumer having to
share account number information with the payee.” (¶ [0018].) The system
of O’Leary features a Web Broker, “a software application that augments

1 Appellants argue independent claims 1 and 18 together as a group. (App.
Br. 6.) Therefore, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii). Claims 1 and 18 recite similar disputed limitations.
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any Internet browser with e-commerce capability” (¶ [0019]) and can
include a “digital Wallet” (¶ [0020]).
Sidles describes “an automatic method for filling out forms in a way
that preserves the privacy of the individual user by keeping personal
information, credit card information, and the like safe and under the control
of the user or the user’s trusted service provider” (¶ [0017]) for Internet
purchasing (¶ [0005]). A secure Internet based form filling system 100, built
to work on the Internet 102, includes a typical vendor web site 104
(¶ [0044]; fig. 1), a form fill proxy 400a or 400b (¶ [0054]; fig. 1), a form fill
system 200a or 200b and a wallet database 1100 (¶ [0055]; fig. 1). After
verifying the authenticity of the vendor web site 104 and the identity of the
user, the form fill proxy 400a or 400b downloads a personal identification
form 126 from the vendor web site 104 that is filled out by the form fill
system 200a or 200b using personal information from the wallet
database 1100. (¶ [0055].)
Wiens describes “computerized ordering of a product or service via
communications media such as telephone lines, local area network (LAN),
satellite or generally any media which may carry digital communications
data.” (Col. 1, ll. 7-11.) Vendor information files are created in the
customer computer such that each time a customer connects to a central
vendor computer to place an order, a new version of the information files is
downloaded. (Col. 6, ll. 56-65; see also col. 7, ll. 28-47.) This information
includes “price schedule, recent ordering and inventory information,
availability of services, and virtually any kind of advertising information.”
(Col. 6, l. 66 to col. 7, l. 2.)
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Thus, the combination of O’Leary and Sidles is nothing more than
combining the known Internet shopping method of O’Leary with the known
Internet based form filling system 100 of Sidles, with predictable results.
See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Similarly, the
combination of O’Leary and Wiens is nothing more than combining the
known Internet shopping method of O’Leary with the known computerized
ordering method of Wiens, including the feature of downloading vendor
information to a customer computer, with predictable results. Id.
Furthermore, as discussed previously, the form fill proxy 400a or
400b of Sidles verifies the authenticity of the vendor web site 104 and the
computerized ordering method of Wiens downloads vendor information to
the customer computer. The limitation to “determine if a merchant web site
is a supported merchant web site” encompasses determining the authenticity
of the website. Thus, the computerized ordering method of Wiens would
download the authenticity status of the vendor web site 104 of Sidles and
thus the combination of O’Leary, Sidles and Wiens renders obvious
independent claim 1 including “communicating determination computer
code to the computer, the determination computer code configured to
determine if a merchant web site is a supported merchant web site.”
Thus, we agree with the Examiner (Ans. 3-4) that modifying O’Leary
to include the Internet based form filling system 100 of Sidles and the
computerized ordering method of Wiens would have been obvious.
Appellants argue that “a ‘supported’ merchant web site is to be
understood as a merchant web site at which the downloaded shopping
assistant functionality for online shopping is available to a user who
navigates to that web site.” (Reply Br. 6.) However, the scope of the claim
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is not so narrow. The portions of the Specification cited by Appellants do
not provide adequate support for requiring a “supported merchant web site”
to include shopping assistant functionality. To the contrary, the
Specification describes that “a shopping assistant button may be added to a
toolbar of the Internet browser interface to facilitate on-line shopping at a
supported merchant web site” (emphasis added) (Spec. ¶ [0122]), creating an
inference that such a shopping assistant button is optional. As such, the
Specification fails to provide a special definition for the term “supported
merchant website” to require shopping assistant functionality and therefore,
the plain meaning of the term controls. Under the broadest reasonable
interpretation, we agree with the Examiner that Sidles teaches a “supported
merchant web site.” A relevant plain meaning of “support” is “to provide
with substantiation.” Webster’s Ninth New Collegiate Dictionary 1186
(1990). As discussed previously, the form fill proxy 400a or 400b of Sidles
verifies the authenticity of the vendor web site 104 and therefore, provides
substantiation or verification of the vendor website 104. Thus, we find the
Examiner’s construction of “supported merchant web site” to be reasonable
and not inconsistent with the Specification.
Appellants also argue that the combination of O’Leary, Sidles and
Wiens is improper because there is “nothing in the Sidles/O’Leary et al.
Internet-related combination suggesting that it would be desirable to make a
three-way combination with a primarily offline system as taught in Wiens et
al.” (App. Br. 15.) However, Wiens describes “computerized ordering of a
product or service via communications media such as telephone lines, local
area network (LAN), satellite or generally any media which may carry
digital communications data” (col. 1, ll. 7-11), which is inclusive of Internet
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communications. In one embodiment, “[e]mploying this step [of compiling
orders] off-line minimizes the time that the customer’s computer and the
central vendor computer are connected by telephone line, thus saving
telephone connection charges.” (Col. 5, ll. 8-10.) Thus, contrary to
Appellants’ arguments, Wiens does not relate primarily to off-line ordering,
but instead teaches that customers may minimize connection charges by
compiling orders off-line before transmitting an order to a vendor computer.
Appellants further argue that the combination of O’Leary, Sidles and
Wiens teaches away from the claimed invention because “Wiens et al.
teaches communicating information files from the merchant to the user’s
computer to inform the user regarding the merchant’s goods and services,
without the need for the user to go on-line” (App. Br. 15) and “discourages
on-line browsing of different merchant sites” (App. Br. 15-16). However, as
discussed previously, Wiens teaches minimizing connection time of the
customer’s computer and the central vendor computer to minimize
connection charges. Therefore, the disclosure in Wiens of the customer
receiving vendor information files without the need to go on-line is related
to reducing connection charges, rather than a teaching away from all on-line
browsing.
Thus, we agree with the Examiner that the combination of O’Leary,
Sidles and Wiens would have rendered obvious independent claim 1
including the limitation “communicating determination computer code to the
computer, the determination computer code configured to determine if a
merchant web site is a supported merchant web site.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 2-11 and 59 depend from claim 1 and have not
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been argued separately. Therefore, we affirm the rejection of these claims
under 35 U.S.C. § 103(a) for the reasons discussed with respect to claim 1.
Claim 18 was not argued separately, and falls together with claim 1.
We affirm the rejection of claims 19 and 20 which depend from claim 18,
for the reasons discussed with respect to claim 1.
Independent claims 12, 21 and 60 recite limitations similar to those
discussed with respect to independent claim 1. We affirm the rejection of
claims 12, 21 and 60, as well as claims 13, 14, 16, 17, 23 and 24, which
depend from claims 12 and 21, for the reasons discussed with respect to
claim 1.
With respect to dependent claims 15 and 22, Appellants merely argue
that Band Objects does not cure the deficiencies of O’Leary, Sidles, and
Wiens. (App. Br. 21.) We are not persuaded by these arguments for the
reasons discussed with respect to claims 12 and 21, from which claims 15
and 22 depend. Accordingly, we sustain the rejection of claims 15 and 22.
DECISION
The decision to reject claims 1-24, 59 and 60 is affirmed.
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

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