Ex Parte Tillman

Board of Patent Appeals and Interferences

May 7, 2008

10386886 (B.P.A.I. May. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte MICHAEL TILLMAN 8
___________ 9
10
Appeal 2007-2846 11
Application 10/386,886 12
Technology Center 3600 13
___________ 14
15
Decided: May 7, 2008 16
___________ 17
18
Before HUBERT C. LORIN, ANTON W. FETTING, and 19
DAVID B. WALKER, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
STATEMENT OF CASE 24
Michael Tillman (Appellant) seeks review under 35 U.S.C. § 134 of a 25
Final rejection of claims 1-24, the only claims pending in the application on 26
appeal. 27
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 28
(2002).29
Appeal 2007-2846
Application 10/386,886

2

We AFFIRM. 1
The Appellant invented a way for hosting centralized online point-of-2
sale ("POS") activities for distributed customers and vendors (Specification 3
1:9-11). 4
An understanding of the invention can be derived from a reading of 5
exemplary claim 1, which is reproduced below [some paragraphing added]. 6
1. A method for centrally hosting online point of sale activities, 7
the method comprising: 8
(i) receiving input from a customer specifying two or more 9
vendors having vendor web sites from which to purchase goods 10
or services during an online shopping session; 11
(ii) passing through the customer to the vendor web sites as a 12
controlling agent during the online shopping session; 13
(iii) receiving input from the two or more vendors indicating 14
that the customer has purchased goods or services at the two or 15
more vendor web sites during the online shopping session; and 16
(iv) outputting a single online receipt to the customer reflecting 17
all goods or services purchased at the two or more vendor web 18
sites during the online shopping session. 19
20
This appeal arises from the Examiner’s Final Rejection, mailed July 7, 21
2006. The Appellant filed an Appeal Brief in support of the appeal on 22
August 28, 2006. An Examiner’s Answer to the Appeal Brief was mailed on 23
January 23, 2007. A Reply Brief was filed on January 19, 2007. 24
Appeal 2007-2846
Application 10/386,886

3

PRIOR ART 1
The Examiner relies upon the following prior art: 2
Van den Berghe WO 00/31657 A2 Jun. 2, 2000 3
Scroggie US ,5,970 469 A Oct. 19, 1999 4
Taricani US 6,347,304 B1 Feb. 12, 2002 5
Cockrill US 6,473,740 B2 Oct. 29, 2002 6
REJECTIONS 7
Claims 1, 3-13, 15-18, and 20-24 stand rejected under 35 U.S.C. 8
§ 103(a) as unpatentable over Van den Berghe and Cockrill. 9
Claims 2 and 14 stand rejected under 35 U.S.C. § 103(a) as 10
unpatentable over Van den Berghe, Cockrill, and Taricani. 11
Claims 7 and 19 stand rejected under 35 U.S.C. § 103(a) as 12
unpatentable over Van den Berghe, Cockrill, and Scroggie. 13
ISSUES 14
The issues pertinent to this appeal are 15
• Whether the Appellant has sustained its burden of showing that the 16
Examiner erred in rejecting claims 1, 3-13, 15-18, and 20-24 under 35 17
U.S.C. § 103(a) as unpatentable over Van den Berghe and Cockrill. 18
• Whether the Appellant has sustained its burden of showing that the 19
Examiner erred in rejecting claims 2 and 14 under 35 U.S.C. § 103(a) 20
as unpatentable over Van den Berghe, Cockrill, and Taricani. 21
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• Whether the Appellant has sustained its burden of showing that the 1
Examiner erred in rejecting claims 7 and 19 under 35 U.S.C. § 103(a) 2
as unpatentable over Van den Berghe, Cockrill, and Scroggie. 3
The pertinent issue turns on whether the art applied describes or 4
suggests passing through a customer to vendor web sites. 5
FACTS PERTINENT TO THE ISSUES 6
The following enumerated Findings of Fact (FF) are believed to be 7
supported by a preponderance of the evidence. 8
Claim Construction 9
01. The disclosure contains no lexicographic definition of “passing 10
through.” 11
02. The ordinary and customary meaning of “pass-through” as a 12
noun is a route through which something is permitted to pass.1 13
Therefore, as a verb, passing through means moving along a 14
permitted route. 15
03. The disclosure contains no lexicographic definition of “receipt.” 16
04. The ordinary and customary meaning of “receipt” as a noun is a 17
written acknowledgment that a specified article, sum of money, or 18
shipment of merchandise has been received.1 19
Van den Berghe 20
05. Van den Berghe is directed to a multi-site shopping cart and 21
cooperative sales system. It provides two or more Web sites with 22
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Application 10/386,886

5

the ability to enter into Cooperative Sales relationships through a 1
Multi-Site Shopping Cart. The invention enables online shoppers 2
to select and purchase items across a network of unrelated 3
Merchant Web sites starting from a Lead Web Site, without 4
having to repeatedly enter their relevant information (Van den 5
Berghe Abstract). 6
06. It provides a Parsing Proxy Server (PPS) and an Application 7
Server (APS) located on distributed computers across a network. 8
The PPS acts as an intermediary between the consumer and the 9
Merchants by parsing pages served by the Merchant to the 10
consumer, and redirecting Universal Resource Locators (URL) in 11
the Merchant's pages back to the PPS. The PPS can thus track, 12
manage, and monitor the consumer's shopping interaction with the 13
merchants (Van den Berghe Abstract). 14
07. The Multi-Site Shopping Cart experience is created by the APS 15
on the Lead Web Site. The APS gathers the consumer's shopping 16
cart information from the PPS, re-creates this information onto the 17
shopping cart located on the Lead Web Site, and displays it to the 18
consumer. When a consumer decides to finalize her purchases, 19
the APS executes the purchases on the various Coop Merchant 20
sites through form filling or through a software robot on the PPS 21
(Van den Berghe Abstract). 22
08. At the beginning of the user's shopping session, Van den 23
Berghe’s APS serves pages with links to the merchant Web sites. 24

1American Heritage Dictionary of the English Language (4th ed. 2000).
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The user's browser requests a page from the PPS, which requests a 1
page from the merchant site, processes this page, and then serves 2
it to the browser. The PPS finds the links in the merchant’s page 3
and modifies them to route through the PPS. If the page to be 4
served is the merchant's shopping cart page, the PPS performs a 5
re-direct to the APS, and the APS displays the Multi-Site 6
Shopping Cart page which includes the item just selected on the 7
merchant site. When the user is ready to execute the purchase, she 8
can select a sub-set of her shopping cart. She can then click on a 9
"buy" button. The APS instructs the PPS to re-create, on the 10
merchant sites, the shopping carts corresponding to the selected 11
items, and then to place an order using the user's billing and 12
shipping information. This interaction is performed by a bot, 13
which is a component of the PPS, either by simulating the user's 14
clicks on the merchant site or by using the merchant's own API, if 15
available (Van den Berghe 3:15-35). 16
Cockrill 17
09. Cockrill is directed to facilitating purchase transactions between 18
any number of customers and any number of merchants 19
participating in the network. The network relieves merchants of 20
the burdens of each maintaining a separate infrastructure for 21
authenticating and accepting payment from customers, delivering 22
goods, and providing customer service. The network provides a 23
single registration process during which the customer provides 24
credit card payment information once for all of the merchants, as 25
well as universal authentication to the Web sites of all of the 26
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merchants through at [sic] single user interaction. The network 1
also provides customers with centralized, automated services for 2
customer account management, product refunds, subscription 3
management, and multiple purchasing accounts linked to the same 4
payment account (Cockrill 3:54 – 4:10). 5
10. Cockrill portrays a written acknowledgement that transactions 6
involving goods or services and money were made to separate 7
vendors on a single document (Cockrill Fig. 21). 8
Taricani 9
11. Taricani is directed to interstate sales tax collection which fairly 10
applies laws to consumers depending on state guidelines, and does 11
not unfairly shift the government's burden of tax collection to the 12
seller (Taricani 3:24-30). 13
12. Taricani receives a collected tax from a seller along with 14
information as to the purchase and purchaser, and stores this data 15
in a database. After organizing and correlating the data, the 16
appropriate transfer of the collected revenue to appropriate 17
revenue agencies is effected (Taricani 3:58-64). 18
Scroggie 19
13. Scroggie is directed to the distribution, via a computer network, 20
of incentives and other related shopping aids useful to retail 21
customers. Importantly, the incentives are distributed in such a 22
way that they may be redeemed only at a specific retailer selected 23
by each customer (Scroggie 1:48-33). 24
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14. Scroggie describes a method for distributing purchasing 1
incentives and other shopping aids to customers over a 2
communication network. Scroggie’s method comprises the steps 3
of: (1) registering as a customer; (2) transmitting a plurality of 4
incentive offers, each of which is exercisable based on the 5
customer's postal region; (3) selecting one or more of the incentive 6
offers; (4) generating at least one purchasing incentive containing 7
in encoded form the identity of the retail store selected by the 8
customer and the identity of the customer; and (5) transmitting at 9
least one incentive to the customer (Scroggie 2:66 – 3:12). 10
PRINCIPLES OF LAW 11
Claim Construction 12
During examination of a patent application, pending claims are 13
given their broadest reasonable construction consistent with the 14
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 15
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). 16
Limitations appearing in the specification but not recited in the claim 17
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 18
1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 19
specification” without importing limitations from the specification into the 20
claims unnecessarily). 21
Although a patent applicant is entitled to be his or her own 22
lexicographer of patent claim terms, in ex parte prosecution it must be 23
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant 24
must do so by placing such definitions in the Specification with sufficient 25
Appeal 2007-2846
Application 10/386,886

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clarity to provide a person of ordinary skill in the art with clear and precise 1
notice of the meaning that is to be construed. See also In re Paulsen, 30 2
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the 3
specific terms used to describe the invention, this must be done with 4
reasonable clarity, deliberateness, and precision; where an inventor chooses 5
to give terms uncommon meanings, the inventor must set out any 6
uncommon definition in some manner within the patent disclosure so as to 7
give one of ordinary skill in the art notice of the change). 8
Obviousness 9
A claimed invention is unpatentable if the differences between it and 10
the prior art are “such that the subject matter as a whole would have been 11
obvious at the time the invention was made to a person having ordinary skill 12
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 13
1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 14
(1966). 15
In Graham, the Court held that that the obviousness analysis is 16
bottomed on several basic factual inquiries: “[(1)] the scope and content of 17
the prior art are to be determined; [(2)] differences between the prior art and 18
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 19
in the pertinent art resolved.” 383 U.S. at 17. See also KSR Int’l v. Teleflex 20
Inc., 127 S.Ct. at 1734. “The combination of familiar elements according to 21
known methods is likely to be obvious when it does no more than yield 22
predictable results.” KSR at 1739. 23
“When a work is available in one field of endeavor, design incentives 24
and other market forces can prompt variations of it, either in the same field 25
or [in] a different one. If a person of ordinary skill [in the art] can 26
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implement a predictable variation, § 103 likely bars its patentability.” Id. at 1
1740. 2
“For the same reason, if a technique has been used to improve one 3
device, and a person of ordinary skill in the art would recognize that it would 4
improve similar devices in the same way, using the technique is obvious 5
unless its actual application is beyond his or her skill.” Id. 6
“Under the correct analysis, any need or problem known in the field 7
of endeavor at the time of invention and addressed by the patent can provide 8
a reason for combining the elements in the manner claimed.” Id. at 1742. 9
Automation of a Known Process 10
It is generally obvious to automate a known manual procedure or 11
mechanical device. Our reviewing court stated in Leapfrog Enterprises Inc. 12
v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007) that one of ordinary 13
skill in the art would have found it obvious to combine an old 14
electromechanical device with electronic circuitry 15
to update it using modern electronic components in order to gain the 16
commonly understood benefits of such adaptation, such as decreased 17
size, increased reliability, simplified operation, and reduced cost. . . . 18
The combination is thus the adaptation of an old idea or invention . . . 19
using newer technology that is commonly available and understood in 20
the art. 21
22
Id. at 1163. 23
ANALYSIS 24
Claims 1, 3-13, 15-18, and 20-24 rejected under 35 U.S.C. § 103(a) as 25
unpatentable over Van den Berghe and Cockrill. 26
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The Appellant argues these claims as a group. 1
Accordingly, we select claim 1 as representative of the group. 2
37 C.F.R. § 41.37(c)(1)(vii) (2007). 3
The Examiner found that Van den Berghe explicitly described 4
limitations (i) and (ii) of claim 1, and implicitly described (iii). The 5
Examiner further found that Cockrill described limitations (iii) and (iv) of 6
claim 1. The Examiner found that one of ordinary skill would have known 7
of the advantages of reducing workload by combining actions and concluded 8
that it would have been obvious to a person of ordinary skill in the art to 9
have combined Van den Berge with Cockrill to achieve those advantages 10
(Answer 4-6). 11
The Appellant contends that Van den Berge’s user does not pass 12
through to the merchant sites. The Appellant argues that, rather than being a 13
controlling agent for passing the customer through to the Vendor web sites, 14
in Van Den Berghe the user only sees what is retrieved by the intermediary 15
site from the merchant site. The Appellant goes on to argue that retrieval 16
and presentation to the user of pages obtained from other sites neither 17
teaches nor suggests the passing through claimed (Br. 5:First full ¶). The 18
Appellant argues that in Van Den Berghe, after the user clicks a "buy" 19
button on the intermediary webpage, the intermediary APS and PPS re-20
create separate shopping carts on each of the merchant sites or they fill in the 21
separate shopping carts at the merchant sites for manual checkout by the 22
user, implying no aggregation of the payment functions (Br. 5:Second full 23
¶). 24
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We disagree. We initially find that the Specification provides no 1
lexicographic definition of “passing through” (FF 01). Accordingly we 2
construe “passing through” according to its usual and customary meaning of 3
moving along a permitted route (FF 02). Thus, the issue is whether Van Den 4
Berghe describes moving the customer to the vendor web sites along a 5
permitted route as a controlling agent during the online shopping session. 6
We further find that this means metaphorically moving a customer, since in 7
a computer system, it is data rather than people that are moved. 8
As the Appellant correctly described, Van den Berghe relies on an 9
intermediate process to administer the dialog between customer and vendors 10
(FF 06 - 08). We take the Appellant’s argument to be that because this 11
intermediary controls the dialog with the customer, the customer is not 12
passed through to the vendor web sites. The Appellant fails to consider that 13
the customer controls the dialog and is fully able to interact with the 14
merchant web site through Van den Berghe’s intermediary. In particular, the 15
customer may access links on the merchant web site and even send a 16
software “bot” through to the merchant web site (FF 08). Such interaction 17
remains under the customer’s control; Van den Berghe’s intermediary is 18
simply acting as a buffer to coordinate visits among multiple merchants (FF 19
06 & 07). Thus, we find that Van Den Berghe describes moving the 20
customer to the vendor web sites along a permitted route as a controlling 21
agent during the online shopping session. 22
The Appellant next contends that Van Den Berghe fails to suggest 23
aggregation of payment and that Cockrill does not remedy this because when 24
making purchases from multiple vendors, Cockrill’s purchaser receives 25
separately enumerated receipts from each vendor. The Appellant goes on to 26
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argue that the system in Cockrill is not a controlling agent for the online 1
shopping session for receiving input from a customer specifying two or more 2
vendors having vendor web sites from which to purchase goods or services 3
during an online shopping session or passing through the customer to the 4
vendor web sites as a controlling agent during the online shopping session 5
(Br. 6:Last full ¶ - 7:Top ¶). 6
We disagree. First, Cockrill does not explicitly use the word 7
“receipt,” so there is no evidence to support the Appellant’s contention that 8
Cockrill’s purchaser receives separately enumerated receipts from each 9
vendor. Next we must construe the word “receipt.” The disclosure contains 10
no lexicographic definition of “receipt” (FF 03). Thus we construe a receipt 11
according to the usual and customary meaning consistent with its usage in 12
the disclosure of a written acknowledgment that a specified article, sum of 13
money, or shipment of merchandise has been received (FF 04). 14
We find that, contrary to the Appellant’s contention, Cockrill portrays 15
a written acknowledgement, that transactions involving goods or services 16
and money were made to separate vendors, on a single document (FF 10). 17
Cockrill refers to this document as a statement rather than a receipt, but as 18
this document is within the scope of a receipt, the difference in nomenclature 19
is of no patentable significance. Further, this consolidation of multiple 20
purchases on a single document, when combined with Van den Berghe’s 21
multi-site shopping cart, would have suggested similarly consolidating 22
purchases on any such document evidencing the purchases made during a 23
common time frame. 24
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As to the arguments that each of Van den Berghe and Cockrill do not 1
describe that which the other reference is applied for, the Appellant is 2
merely attacking the references separately, even though the rejection is 3
based on the combined teachings of the references. Nonobviousness cannot 4
be established by attacking the references individually when the rejection is 5
predicated upon a combination of prior art disclosures. See In re Merck & 6
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 7
The Appellant has not sustained its burden of showing that the 8
Examiner erred in rejecting claims 1, 3-13, 15-18, and 20-24 under 35 9
U.S.C. § 103(a) as unpatentable over Van den Berghe and Cockrill. 10
Claims 2 and 14 rejected under 35 U.S.C. § 103(a) as unpatentable over 11
Van den Berghe, Cockrill, and Taricani. 12
The Appellant argues these claims as a group. Accordingly, we select 13
claim 2 as representative of the group. Claim 2 further requires collecting 14
tax from the customer for goods or services purchased during the online 15
shopping session and disbursing the collected tax to one or more tax 16
authorities. 17
The Examiner found that Taricani described tax payment aggregation 18
(Answer 9). The Examiner concluded it would have been obvious to a 19
person of ordinary skill in the art to have applied Taricani’s tax 20
disbursements to the combination of Van den Berghe and Cockrill to meet 21
legal tax requirements of the merchants. The Appellant contends that there 22
is no centralized host, and accordingly no collection of tax by such a host or 23
motivation to use such a host in tax collection (Br. 7:Bottom ¶). 24
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We disagree. As the Examiner found, Taricani describes disbursing 1
the collected tax to one or more tax authorities (FF 11 & 12). Further, as we 2
found, supra, Van den Berghe describes a centralized intermediary that 3
controls the customer purchase process. Thus, the Appellant is arguing that 4
Taricani fails to describe that which Van den Berghe is applied to describe. 5
Again, nonobviousness cannot be established by attacking the references 6
individually when the rejection is predicated upon a combination of prior art 7
disclosures. 8
The Appellant has not sustained its burden of showing that the 9
Examiner erred in rejecting claims 2 and 14 under 35 U.S.C. § 103(a) as 10
unpatentable over Van den Berghe, Cockrill, and Taricani. 11
Claims 7 and 19 rejected under 35 U.S.C. § 103(a) as unpatentable over 12
Van den Berghe, Cockrill, and Scroggie. 13
The Appellant argues these claims as a group. Accordingly, we select 14
claim 7 as representative of the group. Claim 7 further requires disbursing a 15
credit for one or more purchased goods or services. 16
The Examiner found that Scroggie described credit disbursement 17
(Answer 11). The Examiner concluded it would have been obvious to a 18
person of ordinary skill in the art to have applied Scroggie’s credit 19
disbursements to the combination of Van den Berghe and Cockrill to 20
provide incentives from the merchants. The Appellant contends that there is 21
no centralized host, and accordingly no credit disbursement by such a host 22
(Br. 7:Bottm ¶). 23
We disagree. As the Examiner found, Scroggie describes disbursing 24
the credits (FF 13 & 14). Further, as we found, supra, Van den Berghe 25
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describes a centralized intermediary that controls the customer purchase 1
process. Thus, the Appellant is arguing that Scroggie fails to describe that 2
which Van den Berghe is applied to describe. Again, nonobviousness 3
cannot be established by attacking the references individually when the 4
rejection is predicated upon a combination of prior art disclosures. 5
The Appellant has not sustained its burden of showing that the 6
Examiner erred in rejecting claims 7 and 19 under 35 U.S.C. § 103(a) as 7
unpatentable over Van den Berghe, Cockrill, and Scroggie. 8
CONCLUSIONS OF LAW 9
The Appellant has not sustained its burden of showing that the 10
Examiner erred in rejecting claims 1-24 under 35 U.S.C. § 103(a) as 11
unpatentable over the prior art. 12
On this record, the Appellant is not entitled to a patent containing 13
claims 1-24. 14
REMARKS 15
Claims 20-23 are improper because of what appears to be typographic 16
errors. In particular, system claims 20-22 refer back to method claim 11 and 17
system claim 23 refers back to method claim 1. It would appear, by virtue of 18
the parallel between claims 1-12 and 13-24, that each of claims 20-23 are 19
meant to refer back to system claim 13 in a manner analogous to the way 20
method claims 8-11 refer back to claim 1. 21
DECISION 22
To summarize, our decision is as follows: 23
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• The rejection of claims 1, 3-13, 15-18, and 20-24 under 35 U.S.C. § 1
103(a) as unpatentable over Van den Berghe and Cockrill is sustained. 2
• The rejection of claims 2 and 14 under 35 U.S.C. § 103(a) as 3
unpatentable over Van den Berghe, Cockrill, and Taricani is 4
sustained. 5
• The rejection of claims 7 and 19 under 35 U.S.C. § 103(a) as 6
unpatentable over Van den Berghe, Cockrill, and Scroggie is 7
sustained. 8
No time period for taking any subsequent action in connection with 9
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 10
AFFIRMED 11
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