Ex Parte Westphal

Patent Trial and Appeal Board

Dec 28, 2018

12421903 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/421,903 04/10/2009 Geoffry A. Westphal
34018 7590 01/02/2019
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
31083.30US1 5418
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
01/02/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chiipmail@gtlaw.com
escobedot@gtlaw.com
j arosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFRY A. WESTPHAL
Appeal2017-008356 1
Application 12/421,903 2
Technology Center 3600
Before ANTON W. PETTING, CYNTHIA L. MURPHY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, 5, 6, 13, 14, 19, 21, and 25. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellant's Appeal Brief ("App. Br.," filed Jan.
11, 2017), Reply Brief ("Reply Br.," filed May 10, 2017), the Final Office
Action ("Final Act.," mailed Sept. 13, 2016), and the Examiner's Answer
("Ans.," mailed Mar. 20, 2017).
2 Appellant identifies the real party in interest as W.W. Grainger, Inc. (App.
Br. 2).
Appeal2017-008356
Application 12/421,903
STATEMENT OF THE CASE
Claimed Invention
Appellant's invention relates to "a system and method for displaying,
searching, and interacting with a two dimensional, electronic version of a
product catalog" (Spec. 3: 1-2 ). Claim 1, the sole independent claim on
appeal, is representative of the claimed subject matter. It recites:
1. A non-transitory computer readable media having stored
thereon computer executable instructions for use in presenting
information relevant to a product catalog, the instructions
performing steps comprising:
presenting to a user via use of a client device in a two-
dimensional format a plurality of links, each of the plurality of
links being a link to a page of a product catalog on which is
listed a plurality of products;
receiving a search request via use of the client device;
in response to the search request, causing the client
device to retrieve from a server device having an associated
search engine a set of product catalog pages wherein each
product catalog page within the retrieved set of product catalog
pages has at least one product that is determined by the search
engine to be responsive to the search request and causing only
those links within the presented plurality of links that are linked
to a product catalog page within the retrieved set of product
catalog pages to be visually altered;
receiving a selection of a one of the plurality of visually
altered links via use the client device; and
in response to the selection, selecting from a memory of
the client device a one of the product catalog pages within the
retrieved set of product catalog pages that is linked to the
selected one of the plurality of visually altered links and
presenting to the user via use of the client device the selected
one of the product catalog pages within the retrieved set of
product catalog pages.
App. Br. 11, Claims Appendix.
2
Appeal2017-008356
Application 12/421,903
REJECTIONS
The following rejections are before us on appeal.
1. Claims 1, 2, 5, 6, 13, 14, 19, 21, and 25 stand rejected under
35 U.S.C § 112, first paragraph, as failing to comply with the written
description requirement.
2. Claims 1, 2, 5, 6, 13, 14, 19, 21, and 25 stand rejected under
35 U.S.C §101 because the claimed invention is directed to a judicial
exception without significantly more.
3. Claims 1, 2, 5, 6, 13, 14, 19, 21, and 25 stand rejected under
35 U.S.C § I03(a) as being unpatentable over Mayle et al. (US
2008/0109327 Al, pub. May 8, 2008) ("Mayle") and Rothey et al. (US
2009/0254455 Al, pub. Oct. 8, 2009) ("Rothey").
ANALYSIS
Written Description Noncompliance
The Examiner finds the Specification does not sufficiently support
Appellant's amendment3 of independent claim 1, in which "recites 'in the
response to the selection, selecting from a memory of the client device a one
of the product catalog pages within the retrieved set of product catalog pages
that is linked to the selected one of the plurality of visually altered links and
presenting to the user via use of the client device the selected one of the
product catalog pages within the retrieved set of product catalog pages.'"
(Final Act. 3).
Appellant argues the rejection is improper because
the subject application describes that the server device may
return to the client device each catalog page in a set of catalog
3 Amendment to the Claims filed June 28, 2016.
3
Appeal2017-008356
Application 12/421,903
pages that meet the provided request. The subject application
then continues that a user may interact with highlighted icons to
navigate between the catalog pages in the returned set. When
navigated to, a catalog page within the returned set is displayed
as a .pdf image, for example, in a pop-up window that lies over
the catalog navigator page. (See, e.g., ,r 0025 of US
2010/0262514).
App. Br. 5.
Responding to Appellant's argument, the Examiner asserts "[t]here is
no discussion, or support, for selecting the product catalog pages from a
memory of the client device, and then presenting the selected catalog pages
on the client device ... [because] the cited portion explicitly states that
activation of the link is communicated to and acted upon by the server, not
the client device." Ans. 3. We disagree.
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. Paulding
Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter
(i.e., using the same terms or in haec verba) in order to satisfy the written
description requirement. Rather, the Specification must convey with
reasonable clarity to those skilled in the art that, as of the filing date,
Appellant was in possession of the claimed invention. See id.
Although Appellant's Specification does not literally disclose
selecting the product catalog pages from a memory of the client device,
those skilled in the art, upon reviewing the Specification, would discern that
4
Appeal2017-008356
Application 12/421,903
Appellant was in possession of the claimed subject matter as of the filing
date. For example, the above-cited paragraph in the Specification discloses
"that a user may interact with highlighted icons to navigate between the
catalog pages in the returned set. i.e., the set of catalog pages that was
provided to the client device by the server device before the icon was
interacted with by the user." Reply Br. 2 (citing Spec. 12:6-13:10). We
agree with Appellant that selecting "catalog pages within the returned
catalog page set" (Spec. 12: 16-17) conveys with reasonable clarity to those
skilled in the art that those catalog pages were provided and stored to the
client device by the server.
Accordingly, we do not sustain the rejection of claims 1, 2, 5, 6, 13,
14, 19, 21, and 25 as failing to comply with the written description
requirement.
Patent Ineligible Subject Matter
Section 101 defines patent-eligible subject matter as "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. Laws of nature, natural
phenomena, and abstract ideas are not patent-eligible matter. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). A
two-step analysis determines whether claim 1 falls outside the realm of
patent-eligible subject matter: (1) whether the claim, as a whole, is "directed
to" patent-ineligible subject matter-here, an abstract idea-and (2) if so,
whether the elements of the claim, considered individually or as an ordered
combination "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78). We
5
Appeal2017-008356
Application 12/421,903
conclude the Examiner has not established that claim 1 is directed to an
abstract idea, and therefore we do not reach the second step.
The Examiner determines "[t]he claims are directed to an abstract idea
of visually altering links presented to a user in a two-dimensional format,
wherein the links correspond to retrieved catalog pages that include products
responsive to a search request, which is an idea of itself." Final Act. 3--4;
Ans. 4. According to the Examiner, "[t]his invention simply requires
presenting data ( e.g. plurality of links); receiving data ( e.g. search request,
retrieved catalog pages); and altering data ( e.g. links that correspond to
retrieved catalog pages). The claim limitations do not add a meaningful
limitation because they can be performed by a human manually." Final
Act. 4--5.
Appellant disagrees and argues the claims are directed to an
application of a concept that "cannot be said to be an uninstantiated concept,
plan or scheme or a mental process (thinking) that can be performed in the
human mind, or by a human using a pen and paper." App. Br. 6; Reply
Br. 3. Appellant contends that "the claims are directed to fixing a problem
that arises from the use of computer systems." Id. at 7; Reply Br. 4.
In response to Appellant's argument, the Examiner repeats the above
characterization of the abstract idea and asserts that "[t]he instant claims are
similar to obtaining and comparing intangible data (see CyberSource); and
collecting information, analyzing it, and displaying certain results (see
Electric Power Group)." Ans. 4--5. As to each step performed in claim 1,
the Examiner indicates:
a. Presenting to a user in a two-dimensional format a plurality
of links, wherein each link corresponds to a catalog page that
6
Appeal2017-008356
Application 12/421,903
lists a plurality of products ( obtaining data, collecting
information);
b. Receiving a search request from the user (obtaining data,
collecting information);
c. Retrieving a set of catalog pages that have at least one
product responsive to the search request ( comparing data,
analyzing information);
d. Causing only those links that correspond to the retrieved set
of catalog pages to be visually altered ( comparing data,
analyzing information);
e. Receiving a selection of the visually altered links ( obtaining
data, collecting information);
f. Selecting catalog pages within the retrieved set of catalog
pages that correspond to the visually altered links, and
presenting those catalog pages to the user ( comparing data,
displaying certain results).
Id. at 5.
Although the Examiner determines that the "abstract idea of visually
altering links presented to a user in a two-dimensional format, wherein the
links correspond to retrieved catalog pages that include products responsive
to a search request" is an idea by itself that can be performed by a human
manually (Ans. 4), the Examiner has not provided a reasoned rationale that
identifies the judicial exception recited in the claim and why it is considered
an exception. In other words, the Examiner does not adequately explain
how visually altering links in the context of claim 1 can be performed by a
human mind or by a human using pen and paper. The Examiner indicates
that each of the steps performed in claim 1 is itself an abstract idea in light
of the court's decision in CyberSource and Electric Power, but the Examiner
fails to articulate how the visually altering links by "[ c ]ausing only those
links that correspond to the retrieved set of catalog pages to be visually
altered" (see "d." supra) constitutes comparing data and analyzing
7
Appeal2017-008356
Application 12/421,903
information. Therefore, the record does not establish, sufficiently, that claim
1 is directed to a judicial exception (i.e., an abstract idea).
Accordingly, we do not sustain the rejection of independent claim 1
under§ 101, including claims 2, 5, 6, 13, 14, 19, 21, and 25, which depend
from claim 1.
Obviousness over Mayle and Rothey
Appellant contends that a prima facie case of obviousness has not
been established because Mayle, on which the Examiner relies, does not
disclose (1) causing the client device to retrieve from a server device a set of
product catalog pages and (2) selecting from a memory of the client device a
one of the product catalog pages with the retrieved set of product catalog
pages that is linked to a selected one of a plurality of visually altered links.
App. Br. 8-9.
However, the Examiner makes explicit findings regarding the
elements taught by the prior art, explains how the elements are mapped to
the respective claim elements, and cites to specific paragraphs in Mayle to
support these findings. As for limitation (1 ), the Examiner finds that "Mayle
discloses causing the client device (client, see [0433]) to retrieve (via a
response, see [0434-0438]) from a server device (server, see [0433]) having
an associated search engine a set of product catalog pages (matching items,
see [0435])." Ans. 8; see also Final Act. 8. And for limitation (2), the
Examiner finds "Mayle discloses selecting from a memory (RAM, see
[0447]) of the client device (client, see [0447]) a one of the product catalog
pages (items, see [0432]) within the retrieved set of product catalog pages
8
Appeal2017-008356
Application 12/421,903
that is linked to the selected one of the plurality of visually altered links4
(highlighted, colored overlay, bounding box, blinking field, see [0441])."
Ans. 8; see also Final Act. 8.
Appellant's arguments are unpersuasive because they are not aligned
with the Examiner's rejection First, Appellant mischaracterizes the
Examiner's findings for limitations ( 1) and (2) by alleging that the Examiner
"again asserted that Mayle discloses the claimed invention in paragraph
0432 thereof' (Reply Br. 4) implying that the Examiner relied only on this
paragraph in rejecting the claim. Second, Appellant proceeds to distinguish
the disputed limitations from paragraphs 77, 78, 94, and 365 of Mayle, none
of which the Examiner relied upon in rejecting the claim. See supra. Thus,
Appellant does not address why the argued claim limitations do not
encompass the prior art disclosure cited by the Examiner. In other words,
Appellant fails to persuade us of reversible error by distinguishing the
Examiner's actual findings in Mayle from the disputed limitations.
Therefore, we are not persuaded of error on the part of the Examiner
in rejecting independent claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Mayle and Rothey. Thus, we sustain the rejection of
claim 1, and dependent claims 2, 5, 6, 13, 14, 19, 21, and 25 for the same
reasons, which are not argued separately.
4 "Note that Appellant has not lexicographically defined 'visually altered
links', so under the broadest reasonable interpretation, Examiner finds that
Mayle's disclosure of a mask, highlighting, colored overlay, bounding box,
and blinking field read on this claim limitation." Ans. 8.
9
Appeal2017-008356
Application 12/421,903
DECISION
The rejection under 35 U.S.C. § 112, first paragraph, is reversed.
The rejection under 35 U.S.C. § 101 is reversed.
The rejection under 35 U.S.C. § 103(a) is 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)(l )(iv).
AFFIRMED
10