Ex Parte Westphal

Patent Trials and Appeals Board

May 31, 2019

13796681 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/796,681 03/12/2013 Geoffry A. Westphal
34018 7590 06/04/2019
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 .54US 1 7263
EXAMINER
CAI,LANCE Y
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/04/2019 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
j arosikg@gtlaw.com
clairt@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
Appeal2018-005423
Application 13/796,681
Technology Center 3600
Before JOHN A. JEFFERY, JOHN P. PINKERTON, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 2, 8, and 21-23. App. Br. 1.2 Claims 3-7 and 9-20
were canceled. 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.
2 Throughout this opinion, we refer to the Final Office Action ("Final Act."),
mailed August 18, 2017; the Appeal Brief ("App. Br."), filed October 18,
201 7; the Examiner's Answer ("Ans."), mailed March 9, 2018; and the
Reply Brief ("Reply Br."), filed May 2, 2018.
Appeal2018-005423
Application 13/796,681
THE INVENTION
Appellant's invention incorporates supply-chain information into
search results from an e-commerce website. Spec. ,i,i 2, 5. Supply-chain
information includes a customer's preferences, purchase history, and
personal organizational lists. Id. ,i,i 4-5. For example, a customer may want
to limit the search results to items from the customer's personal list.
Id. ,i 31. A personal list may be a list associated with a client, a project, an
assembly, among other things. Id. In this example, if the customer wants to
locate a fan motor associated with a project, the invention allows the
customer to refine the search results with the project's parts list. Id.
Claim 1 is reproduced below with our emphasis:
1. A non-transient, computer readable media having stored
thereon instructions for providing access to a contextual-based
search refinement functionality related to a user search within an
electronic vendor system, the instructions performing steps
compnsmg:
receiving from a client computing device data which
functions to identify a one of a plurality of system users;
causing a search access point in which a search term is
enterable to be displayed on a display of the client computing
device;
causing the search term entered in the search access point
to be submitted to a search engine having an associated data
repository to thereby obtain from the search engine a search
result wherein the search result is comprised of a plurality of
items from within the data repository that have been associated
with the search term;
causing the search result to be displayed on a first portion
of the display of the client computing device;
retrieving from the data repository data representative of
each one of a plurality of past purchasing behaviors for the
identified one of the plurality of system users corresponding to
the plurality of items within the search results;
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Appeal2018-005423
Application 13/796,681
causing a plurality of selectable user interface elements to
be displayed on a second portion of the display of the client
computing device, wherein the second portion is adjacent to the
first portion of the display, wherein each of the plurality of
selectable user interface elements is uniquely labeled by using
the data representative of each one of a plurality of past
purchasing behaviors for the identified one of the plurality of
system users corresponding to the plurality of items within the
search results; and
in response to a selection of a one of the plurality of
selectable user interface elements removing from the first
portion of the display of the client computing device all items in
the search results excepting those items from the plurality of
items that have been associated within the data repository with
the search term that have also been associated within the data
repository with the one of the plurality of past purchasing
behaviors for the identified one of the plurality of system users
that corresponds to the one of the plurality of selectable user
interface elements selected while continuing to display in the
second portion of the display the plurality of selectable user
interface elements.
THE EVIDENCE
The Examiner relies on the following as evidence:
Bezos et al. US 8,165,923 B2
Berkowitz et al. US 8,364,695 B2
THE REJECTION
Apr. 24, 2012
Jan.29,2013
Claims 1, 2, 8, and 21-23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bezos and Berkowitz. Final Act. 4-10.
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Appeal2018-005423
Application 13/796,681
ANALYSIS
The Examiner's Findings
The Examiner finds that Bezos teaches every limitation recited in
representative3 claim 1, except for the recited selectable elements that filter
the results by previously purchased products. Final Act. 4-8. In concluding
that the claimed subject matter would have been obvious, the Examiner finds
that Berkowitz teaches this feature. Id. at 8 ( citing Berkowitz 3: 15-20, Fig.
7).
Appellant's Contentions
In Appellant's view, the test for obviousness requires that "one skilled
in the art could have combined the known elements by known methods with
no change in their respective functions, and that the combination would have
yielded nothing more than predictable results." App. Br. 4 (citing KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 415-21 (2007)) (emphasis in original).
Appellant argues that the Examiner has not made a prima facie case of
obviousness because the Examiner's "conclusion relies upon a change in the
functions that are to be performed by the relied upon link elements" in Bezos
and Berkowitz. Id. at 6 ( emphasis removed). According to Appellant,
Bezos's elements link to information about specific past purchases, but
Berkowitz shows all purchases. App. Br. 5-6; Reply Br. 4, 7-8. Appellant
then argues that the link element's function must be changed to arrive at the
claimed system. App. Br. 5-6; see also Reply Br. 2-5.
3 Appellant argues claims 1, 2, 8, and 21-23 as a group. App. Br. 4-7;
Reply Br. 2-9. We select independent claim 1 as representative of claims 1,
2, 8, and 21-23. See 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal2018-005423
Application 13/796,681
Appellant argues that the Examiner's conclusion could have only been
made from knowledge exclusively gleaned from the disclosure. Reply Br. 9.
Appellant also argues that the Examiner's proposed modification
would render Bezos's link elements unsatisfactory for their intended
purpose. App. Br. 7; Reply Br. 5-6.
Issues
Appellant's arguments for representative claim 1 (see App. Br. 4-7;
Reply Br. 2-9) present us with the following issues:
I. Under§ 103, has the Examiner erred in rejecting claim 1 by
concluding that the recited selectable user-interface elements and displayed
search results would have been obvious over the Bezos-Berkowitz
combination?
II. Has the Examiner supported the obviousness conclusion with
articulated reasoning with some rational underpinning?
Analysis
As an initial matter, we disagree with Appellant's characterization of
Berkowitz's teachings. App. Br. 4-7; Reply Br. 7-9. For instance,
Appellant argues that Berkowitz's user selects an element to view all
previous purchases. App. Br. 5 ( citing Berkowitz 3: 15-20, Fig. 7); see also
Reply Br. 4, 7. Berkowitz, however, filters the search results using the past
purchases. Berkowitz 3:16-21. Berkowitz's Figure 7, reproduced below,
illustrates this filtering. Id.
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Appeal2018-005423
Application 13/796,681
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Figure 7 is a screen capture of Berkowitz's user interface. Id. at 3:16-
21.
This interface displays the search path (i.e., "pen, finepoint") and the
results for that path. Id. at 3: 16-21. The user filters the results by selecting
"View Previously Purchased Products Only." Id. The filtered search results
contain products previously purchased by the user or the user's colleague.
Id.; see also id. at 15:24-29.
So contrary to Appellant's argument (App. Br. 5; Reply Br. 4, 7-9),
Berkowitz's interface does not display all past purchases. Rather, it displays
only those past purchases in the search path. Berkowitz 3: 16-21. In this
way, Berkowitz filters the search results (i.e., a search for "pen, finepoint")
by previous purchases. Final Act. 8.
Given this understanding of Berkowitz, we also disagree with
Appellant that the Examiner has failed to adequately support the
obviousness conclusion. App. Br. 6; Reply Br. 9. In short, the Examiner
finds that, although Bezos filters search results and stores information about
past purchasing behaviors, Bezos does not filter the results with the stored
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Appeal2018-005423
Application 13/796,681
information. Final Act. 8; Ans. 3 (citing Bezos 4:43-54). In the
obviousness analysis, the Examiner proposes adding Berkowitz's filtering
criterion-i.e., past purchases-to Bezos's filtering. Final Act. 8; Ans. 3-4.
The Examiner has adequately explained why this modification to
Bezos would have been obvious. Final Act. 8; Ans. 3-4. In particular, the
Examiner supports the obviousness conclusion by reasoning that Bezos
already stores a customer's purchasing history, and Berkowitz teaches that
customers find suggestions from the purchasing history to be useful.
Final Act. 8 (citing Berkowitz 1:63); Ans. 4. We see no error in this
reasonmg.
Specifically, Berkowitz teaches that corporate purchasers repeatedly
buy the same item. Berkowitz 15 :20-21. Berkowitz's system captures how
a corporate department or an entire corporation buys items and shares this
knowledge across departments. Id. at 15: 16-18. By allowing users to filter
the search results by past purchases, Berkowitz's system reduces the time
needed to find the same or similar items for repeated purchasing. See
id. at 15:3-30; see also id. at 15:34-40.
We are not persuaded by Appellant's argument that the Examiner's
proposed modification would render Bezos' s link elements unsatisfactory
for their intended purpose. App. Br. 7. To begin with, we agree with the
Examiner (Ans. 4) that Appellant offers only attorney argument unsupported
by evidence, which has little probative value. See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997). Also, in the Examiner's combination, Bezos
still provides a subset of the search results. See Ans. 3-4. The Examiner is
merely proposing adding Berkowitz's filtering criterion to Bezos's system.
Id. This enhancement uses prior-art elements predictably according to their
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Application 13/796,681
established functions, which is an obvious improvement. See KSR, 550 U.S.
at 417.
Appellant's argument about the differences in how the references
filter (Reply Br. 7-8) is also unpersuasive. For instance, Appellant argues
that Bezos teaches several selectable items, and Berkowitz teaches only a
single element. Id. In Appellant's view, substituting Berkowitz's selectable
element in Bezos would result in a system with one criterion. Id. at 8.
Yet "a determination of obviousness based on teachings from multiple
references does not require an actual, physical substitution of elements." In
re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Nor is the test whether a
reference's features can be bodily incorporated into another structure. In re
Keller, 642 F.2d 413,425 (CCPA 1981). Rather, the test is what the
references' combined teachings would have suggested to an ordinarily
skilled artisan. Id. Here, the Examiner's obviousness conclusion is based on
incorporating Berkowitz's filtering into Bezos (see Ans. 4), not redesigning
Bezos in the way that Appellant describes (Reply Br. 7-8). And for all the
reasons discussed above, the Examiner has adequately supported this
conclusion with articulated reasoning with some rational underpinning. See
Final Act. 8 (citing Berkowitz 1:63).
Thus, we sustain the rejection of representative claim 1. We also
sustain the rejections of claims 2, 8, and 21-23, which are argued together
with claim 1. See supra n.3.
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Appeal2018-005423
Application 13/796,681
DECISION
We affirm the Examiner's decision to reject claims 1, 2, 8, and 21-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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