Ex Parte Westphal

Patent Trial and Appeal Board

Nov 17, 2014

12330634 (P.T.A.B. Nov. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEOFFRY A. WESTPHAL
____________

Appeal 2012-008420
Application 12/330,6341
Technology Center 2100
____________

Before MAHSHID D. SAADAT, TERRENCE W. MCMILLIN, and
KIMBERLY J. MCGRAW, Administrative Patent Judges.

MCMILLIN, 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, 3–6, and 8–10. Claims 2 and 7 were cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, the real party in interest is W. W. Grainger, Inc.
(App. Br. 2).

Appeal 2012-008420
Application 12/330,634

2
REJECTION ON APPEAL
Claims 1, 3–6, and 8–10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by U.S. Patent Application Publication 2003/0097357 A1;
published May 22, 2003 to Ferrari et al. (“Ferrari”).2 Ans. 5.

DISCUSSION
The Claimed Invention
The claimed invention is a method of providing identifiers (names,
product numbers, etc.) for use in connection with a catalog of products or
services. Independent claim 1 reads as follows:
1. A method for providing identifiers for use in connection with a
catalog of products, comprising:
providing an identifier as a query term to search engine
associated with an Internet server;
parsing the results obtained from the Internet server as a
result of providing the identifier as the search engine query term
to discern a number of search hits included within the results;
and
when the number of search hits included within the
results is under a predefined threshold, selecting the identifier
as a label to be used in association with one or more products
listed within the catalog of products.

The only other claim argued on appeal is claim 6. Claim 6 is directed
to computer-readable media with instructions for performing the steps of
claim 1 stored on it.

2 Appellant present arguments for the patentability of only claims 1 and 6.
App. Br. 4–8.
Appeal 2012-008420
Application 12/330,634

3
The Section 102 Rejection
Independent claims 1 and 6 are directed to the common business
method of choosing an identifier for a product that is unique or that few
others are using. In the claimed method, the identifier is chosen by doing an
internet search and selecting, as a product identifier, a search term that
returns a number of results under a predefined threshold. Appellant argues
that Ferrari fails to disclose a method that:
provides an identifier as a search query to a search engine and
which selects the identifier (which identifier was itself used in the
search query) as a label to be used in association with one or
more products listed within a catalog of products when the results
returned from the search engine in response to the search query
are under a predefined threshold as claimed.
App. Br. 5–6.
The Examiner relies on (Ans. 10) the following passage from Ferrari
(¶101) as disclosing an identifier as set forth in claims 1 and 6:
Preferably, each entry is associated with a document number
182, which could be a universal identifier, a name 184, and the
associated terms 186. The name is preferably descriptive
information which could allow the collection to be accessed via
a free-text search engine as well as via term-based navigation.

Appellant argues that Ferrari’s document number 182, name 184 and
associated terms 186 cannot be the identifier as used in the instant claims
because they are extracted from the documents themselves. App. Br. 6.
However, this argument is not commensurate with the scope of the claims.
There is nothing in the claims that precludes the identifier used in step 1 of
the claimed method from being a number, name or term that is extracted
from or already related to the product. Ferrari relates to methods by which
Appeal 2012-008420
Application 12/330,634

4
retailers can provide identifiers for use in connection with a catalog of
products (¶100, “a retailer with a product catalog over which the search and
navigation system will operate might provide a set of documents describing
its products as a pre-defined set”) and the documents in Ferrari relate to
goods and services (¶61, last sentence, “Documents may correspond to
goods or services”). Appellant’s arguments do not persuade us that the
Examiner erred in finding that Ferrari discloses an identifier as set forth in
claims 1 and 6.
Appellant argues that the Examiner erred in finding that Ferrari
discloses selecting as an identifier a search term that returns a number of
search hits under a predefined threshold. This argument relates to the
identical, third element of claims 1 and 6 which read (emphasis added),
“when the number of search hits included within the results is under a
predefined threshold, selecting the identifier as a label to be used in
association with one or more products listed within the catalog of products.”
The Examiner cited (Ans. 10) the following passage from Ferrari (¶ 140) as
providing the relevant disclosure:
For example, if a script is intended to return a maximum of 10
supplemental documents for a given navigation state, a variable
may be used to store the number of supplemental documents
returned as the script progresses. In this example, the order of
rules is important, as it may determine which rules supply those
10 documents.

We find no error in the Examiner’s finding that this passage “clearly
discloses the feature of a predefined maximum threshold of returned search
hits.” Ans. 10. We sustain the rejection of claims 1 and 6, as well as
dependent claims 3–5 and 8–10 not argued separately. See 37 C.F.R.
Appeal 2012-008420
Application 12/330,634

5
§ 41.37(c)(1)(iv)(any argument not included in the appeal brief will be
refused consideration by the Board).

CONCLUSION
The rejection of claims 1, 3–6, and 8–10 are 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

tj