Ex Parte Sherwin et al

Board of Patent Appeals and Interferences

Mar 25, 2009

09917143 (B.P.A.I. Mar. 25, 2009)

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte FRANCIS M. SHERWIN, MICHAEL A. KERESMAN III,
RAVISHANKAR S. BHAGAVATULA,
and CHANDRA S. BALASUBRAMANIAN
____________________
Appeal 2008-5161
Application 09/917,143
Technology Center 3600
____________________
Decided: 1 March 25, 2009
____________________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING and DAVID
B. WALKER, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

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 2008-5161
Application 09/917,143

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STATEMENT OF CASE

Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection
of claims 12 to 23. Claims 1 to 11 have been canceled and claims 24 to 28
have been withdrawn from consideration. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
Appellants invented an affinity shopping portal and business model
for generating contributions to charitable, non-profit and other affinity
groups (Specification 1).
Claim 17 under appeal reads as follows:
17. A shopping portal comprising:
means for maintaining a presence on a communications network such
that shoppers employing the communications network can be received;
means for identifying received shoppers;
means for forwarding shoppers to selected shopping sites maintained
on the communications network;
means for monitoring forwarded shoppers activities at the shopping
sites to which the shoppers are forwarded;
means for obtaining click through fees based upon the monitored
activities of shoppers at the shopping sites to which the shoppers were
forwarded;
means for distributing a portion of each obtained click through fee to
an affinity group associated with the shopper responsible for generating the
click through fee;
means for reporting to shoppers an amount distributed to the shoppers'
associated affinity groups by the distributing means; and
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customizing means for a representative of an affinity group to create a
customized web site for the affinity group.
The Examiner rejected claim 17 under 35 U.S.C. § 102(e) as
being anticipated by Bain.
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Bain.
The Examiner rejected claims 13 to 16 under 35 U.S.C. § 103(a) as
being unpatentable over Bain in view of Dorff.
The Examiner rejected claims 18 to 23 under 35 U.S.C. § 103(a) as
being unpatentable over Bain in view of Slatalla.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dorff US 2001/0025263 A1 Sep. 27, 2001
Bain US 2001/0053997 A1 Dec. 20, 2001
Slatalla, Michelle, USER’S GUIDE; Building Web Pages Is Child’s Play
New York Times, NY (Late Ed. East Coast) (May 7, 1998) pp. G.11

ISSUES
Have Appellants shown that the Examiner erred in finding that Bain
discloses a shopping portal that includes a customizing means for a
representative of an affinity group to create a customized web site for the
affinity group?
FINDINGS OF FACT
Appellants invented a shopping portal which includes means for
distributing a portion of collected fees to an affinity group (Specification
[0028 to 0029]). The portal includes a server 12 that includes a portal
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creation application 512 (Specification [0038]. The creation application 512
collects data about the affinity group and the template for the physical
layout, font and color of the website (Specification [0038]). The shopping
portal includes a hyperlink to the website of the affinity groups
(Specification [0028]).
Bain discloses a shopping portal for users who want to shop and
have their cause or organization or affinity group receive credit for their
purchases. The affinity group registers with a preference processing site by
registering their website or by providing a brief summary of information on
the site for review [0030]. The users shop through a preference processing
site [0020]. The preference processing site presents through a graphical,
text, or menu format a number of affinity group selections that the user can
choose from to assign commissions or credits from the purchases [0033].
The menu may include a hyperlink to information about the non-profit
organization or to a site affiliated with the non-profit organization. The brief
summary of information provided by the affinity group to be displayed on
the shopping portal cite is not a separate website for the affinity group.
Bain does not disclose a means to create a customized website for the
affinity group.
A website is a group of World Wide Web pages usually containing
hyperlinks to each other and made available online by an individual,
company, educational institution, government, or organization. Merriam
Webster Online Dictionary, 11 ed., available at th http://www.merriam-23
webster.com/dictionary/website (last visited March 24, 2009).24
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PRINCIPLES OF LAW
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. Inc. v. Union Oil Co., 814 F.2d 628, 631,
(Fed. Cir.), cert. denied, 484 U.S. 827 (1987).

ANALYSIS
We agree with the Appellants that Bain does not disclose a shopping
portal that includes a customizing means for a representative affinity group
to create a customized web site. The information discussed in paragraph
0030 of the Bain reference is a listing of information not a website for the
affinity group. Bain does not include a means to customize a website for
the affinity groups. We do not agree with the Examiner that the information
about the affinity group discussed in the Bain reference is “customized”
by providing additional information. There is no disclosure in Bain that
any information is customized in accordance with the desires of a particular
affinity group. Further, Bain does not disclose that this information about
a particular affinity group is contained on a page dedicated to the affinity
group rather than a list, for example, of information about several affinity
groups on one page. Lastly, there is no disclosure that the information page
is a website as understood by those skilled in the art.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 17 under 35 U.S.C. § 102(e) as anticipated by Bain.
We will likewise not sustain the Examiner’s rejection under 35 U.S.C.
of claim 12, which is dependent on claim 17, as being unpatentable over
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Bain, because Bain does not disclose or suggest the claimed customizing
means to create a customized web site for the affinity group.
We will also not sustain the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 13 to 16 and 18 to 23, which are dependent on claim 17,
because the Examiner relies on Bain for disclosing or suggesting the claimed
customizing means to create a customized website for an affinity group we
have found Bain does not disclose or suggest.
CONCLUSION OF LAW
On the record before us, Appellants have shown that the Examiner
erred in rejecting claims 12 to 23.
DECISION
The decision of the Examiner is reversed.

JRG
Fay Sharpe LLP
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