Ex Parte Verchere

Board of Patent Appeals and Interferences

Mar 29, 2006

09441204 (B.P.A.I. Mar. 29, 2006)

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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is not binding precedent of the Board.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 DAVID VERCHERE
_____________

Appeal No. 2006-0530
Application No. 09/441,204
______________

HEARD: March 7, 2006
_______________

Before FRANKFORT, BAHR and NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the rejection of
claims 10 and 20 through 36, the only claims remaining in the application. For
the reasons stated infra we reverse the examiner’s rejection of these claims.
Invention

The invention relates to a system that provides a real-time exchange for
all participants in the promotional products industry, including customers,
resellers and vendors. See pages 4 and 5 of appellant’s specification.

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Claim 10 is representative of the invention and is reproduced below:
10. A computer implemented system for acquiring branded
promotional products comprising:

a database containing product information wherein the product information
comprises product data and imprinting data related to a plurality of branded
promotional products;

a products web page where a customer or a reseller accesses the
products web page to acquire at least one branded promotional products;

a reseller showcase web page where a customer accesses the reseller
showcase web page to acquire at least one branded promotional products;

a vendor showcase web page where a reseller accesses the vendor
showcase web page to acquire at least one branded promotional products;

a front office module for providing purchase order information and
marketing information and receiving at least one order from one or more
resellers or customers wherein the at least one order is related to the plurality
of branded promotional products;

a bidding module for enabling at least one or more resellers or customers
to present at least one order and enabling at least one vendor to bid on the
presented order wherein the at least one order is related to the plurality of
branded promotional products;

an artwork library for storing customer’s logo and branding artwork
associated with the plurality of branded promotional products; and

a processor for processing orders received from the front office module;

wherein the database, the products web page, the reseller showcase web
page, the vendor showcase web page, the front office module, the bidding
module, the artwork library and the processor are interoperably connected.

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References

The references relied upon by the examiner are:
Conklin et al. (Conklin) 6,141,653 Oct. 31, 2000
(filed Nov. 16, 1998)

Promomart: “www.promomart.com,” Internet Archive Wayback Machine,
www.archive.org,” (January 1998).

Busch, Melanie, “Companies Spin Own Webs with Intranets,” Tulsa World,
(August 25, 1996).

Business Wire, “911gifts.com Expands Features, Service and Merchandise to
Rescue Holiday Shoppers,” (November 16, 1998).

Rejection at Issue

Claims 21 through 36 stand rejected under 35 U.S.C. § 101 as being as
being drawn to non-statutory subject matter. Claims 10 and 20 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Conklin in view of Promomart.
Claims 21, 23 through 26 and 28 through 36 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Conklin in view of Promomart and Busch.
Claims 22 and 27 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Conklin in view of Promomart, Busch and Business Wire

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Opinion
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of obviousness relied upon by the
examiner as support for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, appellant’s arguments set forth in the
briefs along with the examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejections and the arguments of appellant and the examiner, and for
the reasons stated infra we do not sustain the examiner’s rejection of claims 21
through 36 under 35 U.S.C. § 101 or the examiner’s rejections of claims 10 and
20 through 36 under 35 U.S.C. § 103.

Rejection of claims 21 through 36
under 35 U.S.C. § 101

The examiner’s rejection of claims 21 through 36 under 35 U.S.C. § 101 is
set forth on page 5 of the Office Action dated August 10, 2004. The examiner’s
rejection asserts that the rejected claims are directed to an abstract idea and
have “no practical application in the technological arts”. Appellant argues on
pages 8 through 11 of the brief that the claims are drawn to statutory subject
matter as the proper test is whether the claimed steps perform concrete, tangible
and useful results.

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We agree with the appellant. In our recent precedential decision in Ex
parte Lungren, 76 USPQ2d 1385 (Bd. Pat. App. & Int. 2005), we established that
“there is currently no judicially recognized separate ‘technological arts’ test to
determine patent eligible subject matter under §101” Lungren at 76 USPQ2d
1388. Thus, we find that the examiner’s rejection is ill founded. Further, while
the examiner identifies on page 5 of the Office Action mailed August 10, 2004,
that AT&T v. Excel Communications Inc., 172 F3d 1352, 50 USPQ2d 1447 (Fed.
Cir. 1999) sets forth a concrete, tangible and useful test for patent eligible subject
matter, the examiner does not provide any analysis or facts to support a finding
that claims 21 through 36 do not produce a concrete, tangible and useful result.
Accordingly, we hold that the examiner has not established sufficient facts or
analysis to support a rejection under 35 U.S.C. § 101 and will not sustain the
examiner’s rejection of claims 21 through 36 under 35 U.S.C. § 101.

Rejection of claims 10 and 20
under 35 U.S.C. § 103

The examiner’s rejection of claims 10 and 20 under 35 U.S.C. § 103 as
being unpatentable over Conklin in view of Promomart, is set forth on pages 6
through 12 of the Office Action dated August 10, 2004.

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Appellant argues, on page 13 of the brief, that the Conklin reference
teaches a bi-level network between buyers and sellers, which is different than the
claimed invention which provides a multi level network among sellers, resellers
and vendors. Appellant points to the limitations of claims 10 and 20 which recite
a products web page, a reseller showcase web page and a vendor showcase
web page. Appellant further argues:
[T]he Office Action alleges that Conklin’s disclosure of sellers meets the
claim limitation of not only vendors, but resellers. However, by applying
the overly broad definition proposed by the Office Action, the examiner
has combined two distinct limitations into a single element thereby
essentially eliminated [sic] the entire reseller limitation in the claims.

Appellant argues, on pages 16 through 18 of the brief, that Promomart does not
make up for the alleged deficiencies in Conklin and that the examiner has not
established a proper motivation to combine the references.
In response the examiner asserts, on page 4 of the answer, that Conklin
teaches examples of online communities that demonstrate the versatility of a
sponsored community, but is not limited to buyers and sellers, and that Conklin
teaches multiple entry points. The examiner identifies a seller as “any entity
engaged in selling- a reseller, a vendor, or supplier.” Further, regarding the
motivation to combine the references, the examiner states on page 6 of the
answer:
Given the suggestion of potential uses by Conklin, the Appellant is
confusing hindsight reconstruction with creative uses for the Conklin
invention. Conklin and Promomart in combination teach and/or suggest
an online community of participants engaged in the buying and selling of
branded promotional products.

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We disagree with the examiner’s rationale. In rejecting claims under 35
U.S.C. § 103, the Examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984). The Examiner can satisfy this burden by
showing that some objective teaching in the prior art or knowledge generally
available to one of ordinary skill in the art suggests the claimed subject matter.
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if
this initial burden is met does the burden of coming forward with evidence or
argument shift to the Appellant. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444.
See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788. An obviousness
analysis commences with a review and consideration of all the pertinent evidence
and arguments. “In reviewing the [E]xaminer’s decision on appeal, the Board
must necessarily weigh all of the evidence and argument.” Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444. “[T]he Board must not only assure that the requisite
findings are made, based on evidence of record, but must also explain the
reasoning by which the findings are deemed to support the agency’s conclusion.”
In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). In this
case the examiner has presented no objective evidence that the combination of
Conklin and Promomart teach all of the limitations of the claims or that one of
ordinary skill in the art would have been motivated to combine the references as
asserted.

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Claim 10 contains limitations directed to “ a products web page where a
customer or a reseller accesses the products web page”, “a reseller showcase
web page where a customer accesses the reseller showcase web page”, “a
vendor showcase web page where a reseller accesses the vendor showcase
web page” and “a bidding module for enabling at least one or more resellers or
customers to present at least one order and enabling at least one vendor to bid
on the presented order.” Claim 20 contains similar limitations. Thus, claims 10
and 20 recite limitations directed to different access points and actions for three
different entities, customers, resellers and vendors. Vendors bid on presented
orders. Resellers present orders, and can access the vendor showcase web
page as well as the products web page. Customers present orders and can
access the reseller showcase web page and the products web page.
We find that Conklin teaches four entities involved in an interactive system
for processing bids. The four entities are the buyer, seller, sponsor, and the
commerce system provider. See column 14, lines 1 through 4, lines 11 though 14
and 31 through 38. The sponsor establishes standards for the community and
the commerce provider administers the system, neither of which corresponds to
one of the three entities recited in appellant’s claims. We do not find that Conklin
teaches the interactions between the three parties as recited in the claims.
Conklin’s buyer and seller may be equivalent to the claimed customer and
vendor or Conklin’s seller may be a reseller. However, regardless of which
claimed entity Conklin’s seller meets, vendor or reseller, the examiner has not
shown, nor do we find that Conklin teaches an entity which meets the other (i.e. if

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Conklin’s seller meets the vendor there is no entity which meets the claimed
reseller and if Conklin’s seller meets the claimed reseller, there is no entity which
meets the claimed vendor).
We find that Promomart teaches a system whereby a customer can
access a web site to gain information on branded promotional products and
receive a referral to a seller who produces the product. However, we do not find
that Promomart teaches the interactions between the three parties as recited in
the claims.
Additionally, we do not find that either Conklin or Promomart provides
objective evidence that would have suggested the combination asserted by the
examiner. For the forgoing reasons, we will not sustain the examiner’s rejection
of claims 10 and 20.

Rejection of claims 21, 23 through 26 and
28 through 36 under 35 U.S.C. § 103

The examiner’s rejection of claims 21, 23 through 26 and 28 through 36
under 35 U.S.C. § 103 as being unpatentable over Conklin in view of Promomart
and Busch, is set forth on pages 12 through 19 of the Office Action dated August
10, 2004.
On pages 19 and 20 of the brief, appellant states that independent claims
21 and 26 recite a system with a “vendor entry point interface”, “a vendor
showcase module” and “a reseller entry point interface.” Appellant argues that
Conklin teaches a bi-level network between buyers and sellers and fails to
disclose the claimed entry points and modules. Further, on pages 21 through 23

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of the brief appellant argues that Promomart and Busch do not make up for the
alleged deficiencies in Conklin and that the examiner has not established a
proper motivation to combine the references.
In response the examiner states, on page 7 of the answer, that Busch was
cited as teaching the limitation of a company logo store and that Conklin and
Promomart teach multiple entry points and modules as discussed with respect to
claims 10 and 20.
We disagree with the examiner’s rationale. Independent claim 21 and 26
each recite several limitations which are directed to the interrelations between
the vendor, reseller and customer. We consider the scope of claim 21 to include
an entry point which allows the vendor to enter data into the product database,
where the vendor is the entity who supplies the products and imprinting service.
Similarly, claim 21 recites a reseller entry point where resellers can obtain
ordering access to the system where the reseller is the entity that resells
products to customers. Claim 26 contains similar limitations, thus, we find that
independent claims 21 and 26 recite three distinct entities. As discussed supra,
we do not find that the combination of Conklin and Promomart teach a system
where a vendor, reseller and customer interact. The examiner has not asserted,
nor do we find that Busch teaches that the systems of Conklin and Promomart
should be modified to include such an interaction. Accordingly, we will not
sustain the examiner’s rejection of 21, 23 through 26 and 28 through 36

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Rejection of claims 22 and 27
under 35 U.S.C. § 103

The examiner’s rejection of claims 22 and 27 under 35 U.S.C. § 103 as
being unpatentable over Conklin in view of Promomart, Busch and Business
Wire, is set forth on pages 19 and 20 of the Office Action dated August 10, 2004.
Claims 22 and 27 are dependent upon claims 21 and 26, respectively. As
discussed supra, we do not find that the combination of Conklin, Promomart and
Busch teach the limitations of claims 21 and 26. The examiner has not asserted
nor do we find that the Business Wire article provides a teaching or suggestion to
modify the system of Conklin to include the claimed interactions between the
vendor, reseller and customer. Accordingly, we will not sustain the examiner’s
rejection of claims 22 and 27.

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In summary, we do not sustain the examiner’s rejection of claims 21
through 36 under 35 U.S.C. § 101 or the examiner’s rejections of claims 10, 20
through 36 under 35 U.S.C. § 103. The decision of the examiner is reversed.
REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

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