Ex Parte Stinson et al

Board of Patent Appeals and Interferences

Jul 28, 2006

10473995 (B.P.A.I. Jul. 28, 2006)

The opinion in support of the decision being entered today
was not written for publication and is not binding precedent of
the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte Keith Stinson, David W. Bickford and
Timothy J. Mallos
_____________

Appeal No. 2006-1429
Application No. 10/473,995
Technology Center 3600
______________

ON BRIEF
_______________

Before LEVY, NAPPI and FETTNG Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §134(a) of the final rejection of
claims 1 through 21, which constitute all the claims in the application. For the reasons
stated infra we affirm in part the examiner’s rejection of these claims.

Invention

The invention relates to a system and method for presenting custom labeled
surface material samples over a computer network. See pages 1 and 2 of appellants’
specification. Claim 1 is representative of the invention and reproduced below:

Appeal No. 2006-1429
Application No. 10/437,995

1. A method for presenting custom-labeled surface material
samples over a computer network, the method comprising:
in at least one computer database, associating one or more
surface material samples with a business entity wherein at least one of the surface
material samples is labeled with information specified by the business entity;
receiving a data request for at least one of the surface
material samples wherein the data request includes an identifier of the business
entity; and
responding to the data request wherein the response includes at least one
of the surface material samples and associated label information.

Reference

The references relied upon by the examiner are:

Brockhurst US2001/0047387 November 29, 2001

Eddie Bauer Inc. web pages printed from www.archives.org Jan. 01, 1996 through Dec.
03, 2002.

Rejection at Issue
Claims 1, 2, 6 through 13 and 17 through 20 stand rejected under
35 U.S.C. § 102 (e) as being anticipated by the Eddie Bauer web pages. The examiner’s
rejection is set forth on pages 3 through 7 of the answer. Claims 3 through 5, 14 through
16 and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the Eddie
Bauer web pages in view of Brockhurst. The examiner’s rejection is set forth on pages 7
through 9 of the answer. Throughout the opinion we make reference to the brief, the
answer and the final Office action for the respective details thereof.

Opinion
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of anticipation and obviousness relied upon
by the examiner as support for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, appellants’ arguments set forth in the brief
along with the examiner’s rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
2

Appeal No. 2006-1429
Application No. 10/437,995

With full consideration being given to the subject matter on appeal, the
examiner’s rejection and the arguments of appellants and the examiner, and for the
reasons stated infra we sustain the examiner’s rejection of claims 1, 6 through 13 and 17
through 20 under 35 U.S.C. § 102 and we sustain the examiner’s rejection of claims 3, 4,
14, 15 and 21 under 35 U.S.C. § 103. However, we will not sustain the examiner’s
rejection of claims 2 under 35 U.S.C. § 102, nor will we sustain the examiner’s rejection
of claims 5 and 16 under 35 U.S.C. § 103.

Rejection of claims 1, 6 through 10, 12, 13 and 17 through 20 under
35 U.S.C. § 102

Appellants argue, on pages 4 and 5 of the brief, that Eddie Bauer does not
disclose “functionality for ‘associating’ surface material samples with a ‘business entity,’
or functionality for labeling the surface material samples with ‘information specified by
the business entity.’” Further, appellants assert that because Eddie Bauer discloses
hyperlinks for categories of products but that these hyperlinks identify products not
business entities. Thus, on page 6 of the brief, appellants conclude that Eddie Bauer
“fails to teach or suggest receiving a ‘data request’ including an ‘identifier of the
business entity,’ Eddie Bauer accordingly fails to teach or suggest ‘responding’ to the
data request with at least one of the surface material samples and associated label
information specified by the business entity, as claim 1 recites.”
In response the examiner states, on page 10 of the answer, that the examiner
considers the business entity to be Eddie Bauer, and that the surface material samples are
the web pages and are labeled with information provided by Eddie Bauer. Thus, the
examiner considers Eddie Bauer’s web pages to contain surface material samples which
are labeled by the business entity. The examiner also identifies that the claim is not
limited to a catalog service for more then one business entity.
We concur with the examiner. Claim 1 includes the limitations of “ associating
one or more surface material samples with a business entity wherein at least one of the
surface material samples is labeled with information specified by the business entity” and
“receiving a data request for at least one of the surface material samples wherein the data
3

Appeal No. 2006-1429
Application No. 10/437,995

request includes an identifier of the business entity” and “responding to the data request,
wherein the response includes at least one of the surface material samples and associated
label information.” We note that appellants’ specification, on pages 3 and 4 state:
Content in the form of surface material samples includes a representation
of any material that can be applied to an object to change its physical
appearance (e.g. fabrics, finishes, carpets, laminates, paints, stains,
textures, etc). Typically, surface materials are applied to furniture,
counter-tops, tables, walls, floors, ceilings, and the like to enhance their
appearance. [emphasis added]

Thus, the scope of claim 1 is that the surface material sample is a representation,
including a picture, of a material that can be applied to an object to enhance its physical
appearance.
We find that Eddie Bauer discloses the system described in claim 1. Eddie Bauer,
as appellants’ admit on page 5 of the brief, teaches a web site with hyperlinks; some of
these pages include general listings of products for sale and provide a picture of the
products, see e.g. page 38. Other pages such as 52 are limited to one product and
provide links to view the products in different colors. We note that each of these pages
are linked by hyperlinks. We consider a web page which presents a picture of a product
or a picture of the product with options to change the product’s color, to a be a surface
material sample, i.e. we consider either the teaching of different categories of products or
of the same product in different color, to meet the claim limitation of a surface material
sample. We note that the web pages shown in the cited art sites provide both names of
the product and names of the colors that the product can be displayed, see e.g. page 52
where the product is labeled “Satin-Stitch Tee” and the colors are labeled “dark
charcoal”, “Boysenberry”…etc., we also note that the address/URL contains identifiers.
Clearly, these labels and identifiers are specified by Eddie Bauer as they are displayed on
Eddie Bauer’s web site. We consider these labels to meet the claimed labels. One skilled
in the art would recognize that the hyperlinks on these pages have an address associated
with the link. As shown in pages, 38 and 52 the address or URL of all of these pages
includes the name Eddie Bauer (the name of the merchant) and an identifier of the
product. Thus, by selecting a hyperlink to one of these products/product of a different
4

Appeal No. 2006-1429
Application No. 10/437,995

color, the users are submitting a request for a page, which includes an identifier of the
business entity. In response to this request, the new page with a depiction of the product
or product of a different color, is presented to the user with the label information. We
note, as the examiner identifies, that claim 1 is not limited to a catalog system where
there is more then one merchant. Accordingly, we find ample evidence to support the
examiner’s finding that Eddie Bauer discloses the device claimed in claim 1 and we
sustain the examiner’s rejection under 35 U.S.C. § 102.
Regarding claims 6 and 7, appellants’ only argument directed to these claims
states:
Regarding claim 6, as discussed above, Eddie Bauer does not teach or
suggest “surface material samples.” Regarding claim 7, Eddie Bauer does
not teach or suggest “associated certain surface material samples” with
certain business entity products.

37 C.F.R. § 41.37 (c)(1)(vii) states: “A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the claim.”
Accordingly, we do not consider claims 6 and 7 to be argued separately from claim 1 and
group claims 6 and 7 with claim 1. Nonetheless, as discussed with respect to claim 1 we
find that Eddie Bauer does teach surface material samples associated with a business
entity. Accordingly, we sustain the examiner’s rejection of claims 6 and 7 under
35 U.S.C. § 102.
Appellants have presented no arguments directed to claims 8 through 10, 12, 13
and 17 through 20. Accordingly, we sustain the examiner’s rejection of claims 8 through
10, 12, 13 and 17 through 20 for the reasons discussed supra with respect to claim 1.

Rejection of claim 2 under 35 U.S.C. § 102
Appellants argue, on page 6 of the brief, that Eddie Bauer does not teach or
suggest layered responses to data requests according to supply chain layer as is claimed.
Appellants reason:
Eddie Bauer merely teaches conventional user-selected hyperlinks for
different clothing categories. One skilled in the art would not fairly
consider clothing categories in a conventional online clothing catalog such
5

Appeal No. 2006-1429
Application No. 10/437,995

as Eddie Bauer to teach or suggest layering according to supply chain (e.g.
manufacturers, distributors, retailers etc.), as recited in claim 2.

In response, on page 13 of the answer, the examiner states:

[A]ppellant is not claiming the limitation of catalog services for more
than one business entities. Eddie Bauer teaches or suggests layering
responses to data requests (page 40, 43, Eddie Bauer teaches to support
naming conventions associate with colors) according to supply chain layer
(catalog category).

We disagree with the examiner’s reasoning. While we concur with the examiner
that Eddie Bauer teaches layering, in that as a user clicks on an item, an additional layer
is presented. This is not what is claimed. Claim 2 includes the limitation “wherein the
response to the data requested is layered based upon supply chain layer.” As is apparent
from appellants’ specification, the supply chain refers to the chain of entities involved in
supplying the goods, e.g. manufacturers, distributors and retailers. See for example
discussion of the background of the art on page 1 of appellants’ specification and the
discussion on pages 7 and 8 of appellants’ specification. We do not find any teaching in
Eddie Bauer which discusses the supply chain for the product, rather Eddie Bauer
appears to be concerned with only the retailer. As we do not find that Eddie Bauer
discusses the supply chain, we do not find that it teaches or suggest that the response to a
data request is layered based upon the supply chain layer. Accordingly, we will not
sustain the examiner’s rejection of claim 2.
6

Appeal No. 2006-1429
Application No. 10/437,995

Rejection of claim 11 under 35 U.S.C. § 102

Appellants argue, on page 7 of the brief, that Eddie Bauer does not teach
“mapping” the surface material sample onto a “multidimensional representation of an
object.” Appellants assert that Eddie Bauer merely discloses images of actual objects.
The examiner responds, stating, “Eddie Bauer teaches a photograph. A
photograph is a two-dimensional image of an object.”
We concur with the examiner. Claim 11 is dependent upon claim 1 and adds the
limitation that the surface material samples are mapped onto a multidimensional
representation of an object. As discussed supra, Eddie Bauer teaches a web page which
presents pictures of objects for sale (clothing). On one page 52, Eddie Bauer shows a web
page with the caption “click below to change product color.” Thus, by selecting a color
the selected object will be displayed in the newly selected color. As the object is a
multidimensional object, the picture displayed is a representation of a multidimensional
object. One skilled in the art would recognize that to display the selected color on the
picture of the object, involves mapping the selected color (surface material sample) onto
the representation of the selected object. According, we find ample evidence to support
the examiner’s rejection of claim 11 under 35 U.S.C. § 102.

Rejection of claims 3, 4, 14, 15 and 21 under 35 U.S.C. § 103.

Appellants argue, on page 7 of the brief, “dependent claims 3-5 and 14 through 16
are patentable at least because of they depend from independent claims 1 and 12.”
Appellants’ present no other argument directed to claims 3, 4, 14 and 15.
As discussed supra we sustain the examiner’s rejection of claims 1 and 12.
Similarly, we sustain the examiner’s rejection of claims 3, 4, 14 and 15 under 35 U.S.C.
§ 103.
Appellants argue, on page 8 of the brief, that the examiner did not “consider the
corresponding structure in Applicant’s specification for carrying our the claimed function
7

Appeal No. 2006-1429
Application No. 10/437,995

pursuant to 35 U.S.C. 112, paragraph 6.” Further, appellants incorporate the arguments
directed the other rejected claims toward claim 21.
As discussed supra, we sustain the examiner’s rejection of claim 1 under
35 U.S.C. § 102. Appellants have not pointed to any specific claim limitation alleged as
not taught by the reference, nor have appellants identified the corresponding structure in
appellants’ specification that is claimed under 35 U.S.C. § 112, paragraph 6,1 which is
not taught or suggested by the art of record. Thus, appellants’ arguments have not
persuaded us of an error in the examiner’s decision to reject claim 21 under 35 U.S.C. §
103. Accordingly, we sustain the examiner’s rejection of claim 21.
Rejection of claims 5 and 16 under 35 U.S.C. § 103.
Appellants argue, on page 7 of the brief, that the examiner has presented no
evidence to support the findings concerning service level agreements being well known
in the art.
In response the examiner states on pages 14 and 15 of the answer:
[H]aving business rules to govern service level configurations to a
business entity for presenting their information is known to one of
ordinary skill in the art at the time of the invention. For example, [a] web
hosting service provider may have charges based on amount of data
transferred to user on behalf of business, limitation on data storage used
by a business on web server, location of business link on web page of the
service provider, Quality of Service, Statement of Work, Service Contract
etc.,

We disagree with the examiner’s rationale. Initially we note the examiner has
not presented objective evidence that at the time of the invention it was known that a
hosting service provider may have charges based on amount of data transferred to user on
behalf of business. Further, had the examiner presented such evidence, the examiner has

1 37 C.F.R. § 41.37 (c)(v) states: For each independent claim involved in the appeal and
for each dependent claim argued separately under the provisions of paragraph (c)(1)(vii)
of this section, every means plus function and step plus function as permitted by 35
U.S.C. 112, sixth paragraph, must be identified and the structure, material, or acts
described in the specification as corresponding to each claimed function must be set forth
with reference to the specification by page and line number, and to the drawing, if any,
by reference characters.
8

Appeal No. 2006-1429
Application No. 10/437,995

not shown how this evidence along with the Eddie Bauer reference teaches that the
business rules govern the service level configurations for presenting custom-labeled
surface materials, as claimed in claims 5 and 16. Rather, it would seem that such
evidence would just show that it was known to charge Eddie Bauer based on the amount
of data stored on the server. Accordingly we will not sustain the examiner’s rejection of
claims 5 and 16 under 35 U.S.C. § 103.
Conclusion
In summary, we sustain the examiner’s rejection of claims 1, 6 through 13 and 17
through 20 under 35 U.S.C. § 102 and we sustain the examiner’s rejection of claims 3, 4,
14, 15 and 21 under 35 U.S.C. § 103. However, we will not sustain the examiner’s
rejection of claim 2 under 35 U.S.C. § 102, nor will we sustain the examiner’s rejection
of claims 5 and 16 under 35 U.S.C. § 103. The decision of the examiner is affirmed-in-
part.

9

Appeal No. 2006-1429
Application No. 10/437,995

No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

STUART S. LEVY )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANTON A. FETTING )
Administrative Patent Judge )

10

Appeal No. 2006-1429
Application No. 10/437,995

BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075

REN/jrg
11