Ex Parte Wirth

Board of Patent Appeals and Interferences

Jun 12, 2008

10253894 (B.P.A.I. Jun. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN WIRTH, JR.
____________

Appeal 2008-1351
Application 10/253,894
Technology Center 3600
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Decided: June 12, 2008
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Before WILLIAM F. PATE, III, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL
Wirth (Appellant) seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We reverse.
The Appellant’s invention relates to catalog shopping, in particular,
the claimed invention is to a method and system for creating and browsing a
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custom catalog of products via the Internet. (Spec. 1:4-6.) As the Internet
has become an increasing viable vehicle for electronic commerce, many
companies have developed electronic versions of their paper catalogs.
(Spec. 2:6-16.) These electronic catalogs are formed from “web pages”
consisting of hyperlinks and constructed by many hypertext mark-up
language (HTML) files containing text and graphics along with a set of tags
to describe how to present the text and graphics on a customer’s computer
display. (Spec. 2:11-16 and 3:17-25.) At the time of the invention,
customers, at their homes, typically connected to the Internet via a modem
dial-up connection. (Spec. 5:16-17.) Because of limited bandwidth, data
transfer rates with dial-up connections were quite slow as compared to
alternative connection services such as Integrated Services Digital Network
(ISDN) or Digital Subscriber Line (DSL). (Spec. 5:18 to 6:16.) If a
company has a customer who is looking to download multiple catalog web
pages from the company’s electronic catalog, a significant amount of time
can be spent waiting for the web pages to download. (Spec. 5:23 to 6:6.)
The Appellant’s invention overcomes the time limitations associated with
downloading multiple web pages when using a modem dial-up connection to
the Internet. (Spec. 6:18-22.) The Appellant’s invention permits a customer
to create a custom catalog of only those products the customer is interested
therein. (Spec. 6:22 to 7:2.) The custom catalog is created by the customer
first providing identifying information. (Spec. 7:2-5.) Next, the customer
browses the company’s products displayed at a website and selects products
of interest for inclusion into the custom catalog. (Spec. 7:6-8.) Once the
product of interest is in the customer’s custom catalog, the customer can
request detailed information about the product by selecting a hyperlink that
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connects to another file containing such detailed information. (Spec. 7:17-
25.) In the Appellant’s invention, as recited in independent claims 1, 15, and
19, the customer provides information for identifying the customer and
information for identifying a product of interest that has been directly
selected by the customer after browsing the products displayed in the
electronic catalog.
The Appellant seeks our review of the Examiner’s rejections under 35
U.S.C. § 103(a) of:
1) claims 1 and 6 as unpatentable over U.S Patent No. 6,678,695 to
Bonneau and U.S. Patent Application Publication No. US 2005/0091127 A1
of Saltel;
2) claims 2-5, 9, and 10 as unpatentable over Bonneau and Saltel, as
applied to claim 1, and U.S. Patent Application No. US 2002/0040330 A1 of
Kido;
3) claim 7 as unpatentable over Bonneau and Saltel, as applied to claim
1, and Kido and the Microsoft Computer Dictionary pp. 230 and 442 (4th ed.,
1999);
4) claim 8 as unpatentable over Bonneau, Saltel, Kido, and the Microsoft
Computer Dictionary, as applied to claim 7, and U.S. Patent No. 6,061,057
to Knowlton;
5) claims 11 and 12 as unpatentable over Bonneau and Saltel, as applied
to claim 1, and U.S. Patent No. 5,960,411 to Hartman;
6) claim 13 as unpatentable over Bonneau and Saltel, as applied to claim
1, and U.S. Patent Application Publication No. US 2002/0087434 A1 of
Katano;
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7) claim 14 as unpatentable over Bonneau, Saltel, and Katano, as applied
to claim 13, and U.S. Patent Application Publication No. US 2002/0087588
A1 of McBride;
8) claim 15 as unpatentable over Bonneau, Saltel, and U.S. Patent
Application Publication No. US 2002/0156695 A1 of Edwards;
9) claims 16, 17, and 18 as unpatentable over Bonneau, Saltel, and
Edwards, as applied to claim 15, and Kido;
10) claims 17 and 18 as unpatentable over Bonneau, Edwards, and Kido,
as applied to claim 16 above, and Saltel1;
11) claims 19 and 22 as unpatentable over Bonneau and Saltel;
12) claims 20 and 21 as unpatentable over Bonneau and Saltel, as applied
to claim 19, and Kido.
The issue before us is whether the Examiner made a prima facie case
of obviousness with the combined teachings of Bonneau and the remaining
prior art of record used in the Examiner’s rejections.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the

1 We note claims 17 and 18 have been rejected twice with the combination
of Bonneau, Saltel, Kido, and Edwards.
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prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki,
745 F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does
the burden of coming forward with evidence or argument shift to the
appellant. See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at
1472. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. Id.
The Appellant argues that Bonneau in combination with the other
cited references does not teach or suggest the limitations of the customer
providing information for identifying the customer and information for
identifying a product of interest that has been directly selected by the
customer after browsing the products displayed in the electronic catalog as
claimed in independent claims 1, 15, and 19. (App. Br. 16-17.) We agree.
Bonneau describes a maintenance tool to be used by a seller to
develop, for each buyer or group of buyers, catalogs that are customized to
reflect the individual product interests of each buyer or group. The seller is
able to set up buyer accounts that identify buyers uniquely. The seller is
then able to associate the buyers with one of a plurality of custom catalogs,
one of a plurality of pricing profiles, and a browse hierarchy for browsing
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items in the catalogs. (Bonneau, col. 4, ll. 42-53.) In other words, a buyer’s
custom catalog is a subset of the items available in a seller’s catalog
database which the seller has predefined for each buyer. (Bonneau, col. 4,
ll. 63-65.) The seller maintains a master price book. With the maintenance
tool described within Bonneau, the seller is able to establish price
adjustments and provide different groups of buyers with different pricing
profiles, e.g., retail, wholesale, percentage, or absolute values. (Bonneau,
col. 5, ll. 40-50.) Each pricing profile is assigned an identifier. The seller is
then able to assign each buyer to a pricing profile by the identifiers.
(Bonneau, col. 5, ll. 57-59.) Accordingly, customized versions of the
seller’s catalog, including variable pricing, can be provided to buyers by the
seller.
The Examiner and the Appellant disagree as to whether the usage of
Bonneau’s maintenance tool involves “storing a first file containing
information provided by at least one customer for identifying the at least one
customer and a second file containing information for identifying at least
one product of interest to said customer, the at least one product of interest
having been directly selected by said customer browsing the plurality of
products displayed in the electronic product catalog for inclusion in the
second file.” Whether the claim term “customer” is interpreted to mean
“buyer” or “seller,” we do not find anything in Bonneau that would meet the
limitation of storing a file containing information provided by a customer for
identifying the customer and another file containing information for a
product of interest to the customer that has been directly selected by the
customer browsing a plurality products displayed in an electronic product
catalog as recited in claims 1, 15, and 19.
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If a “customer” is considered to be a “seller,” then Bonneau’s
description of the maintenance tool fails to meet the claim limitation because
the Examiner has failed to provide an articulated reason with a rational
underpinning as to why the “seller,” who uses the maintenance tool in
Bonneau, would have a file containing information identifying the customer
as the claims recite. In such a scenario, the customer (seller) would be
identifying itself.
If a “customer” is considered to be a “buyer,” then Bonneau’s
description fails to meet the claim limitation of a product of interest being
directly selected by the customer, because in Bonneau, it is the seller that
selects the products to be placed in the electronic catalog, see supra. Again,
the Examiner has failed to provide an articulated reason with a rational
underpinning as to why one having ordinary skill in the art would have
modified Bonneau such that the buyer, rather than the seller, selects the
product of interest.
The remaining prior art references used by the Examiner do not cure
the deficiency of Bonneau.
We agree with the Examiner that the claim term “customer” is not
necessarily limited to a “buyer.” The Specification appears to lack evidence
that the Appellant intended to limit the customer to just a buyer. In other
words, a “customer” could be “seller.” However, as discussed supra,
whether a customer is viewed as a buyer or a seller, when applying Bonneau
to the claim limitation, Bonneau lacks one or the other portion of the storing
limitation as identified supra.
Accordingly, we do not sustain the Examiner’s rejection of claims 1,
15, and 19 or their dependent claims 2-14, 16-18, and 20-22 as unpatentable
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over Bonneau, Saltel, and the remaining prior art references. The decision
of the Examiner to reject claims 1-22 is reversed.

REVERSED

hh

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